We have analyzed the questions people usually ask and russian foreign filing license prepared information on the most typical ones just to be taken into consideration. Article 35 of the Russian Patent Law regulates, that in case an invention is developed in Russia, the patent application should be first filed in Russia.
The law does not define nationality of the inventors and that is why this provision concerns also the inventions made jointly by the Russian and foreign inventors during collaboration. It also concerns employee’s inventions made under a task of an employer, be it a Russian or a foreign entity. Moreover, a patent application could be filed in another country only after three months from the date of filing in Russia – this is also stipulated by art. 35 of the Russian Patent Law.
35 have been introduced into the Patent Law mostly to ensure that the state has a means to control the possible export of the matters of national significance: state secrets, subject matter falling under export control regulations and the like. In case the applicant receives no notification on prohibition of foreign patenting within the three months after filing application in Russia, he may further file applications abroad. The provisions of the law are fulfilled. When the invention in question was made jointly by inventors from different countries during collaboration, how could it be decided where the invention has actually been developed? Where to file first when the basic concept was conceived in Russia and details were developed abroad? Of major importance should be the fact of where was the working site and equipment used, use of qualified labor, the actual place of working of the team, etc. This should help the authors to resolve the uncertainty.
Also one must take into account the so called “background intellectual property”, the background knowledge, which is often accumulated by the Russian scientists during their practice before the collaboration began. So, if the invention was developed on the Russian site with the use of its facilities, participation of the Russian supporting personnel and, what is of utmost importance, with the use of the background knowledge and experience of the Russian specialists acquired before the collaboration, the invention should be considered created in Russia. If the basic concept is developed in Russia, and details were developed abroad, it is of course a difficult issue to decide where to file first. The degree of the development of the invention in Russia and abroad have to be accounted for. If the developments, made abroad, may constitute a separate invention, the latter could be filed abroad first.
Could a foreign filing license be obtained for the purpose ? The Patent Law of the Russian Federation does not envisage a possibility of granting upon request a license to file the patent application first in other countries. If the invention is made in Russia, it should be filed first in Russia. The law envisages, however, a possibility to obtain a permission to file a foreign patent application before the expiration of the three months term after filing the application in Russia.
However, it is acknowledged that obtaining such permission would take a great effort and considerable time, which would not justify the whole affair, so in most cases it is much better just to wait for the end of the three month term. 35 of the Russian Patent Law are fulfilled, and no prohibitions received after three months, does it mean that the applicant may not bother about secrecy or export control regulations? Actually, it rests with the applicant and inventors to decide whether their invention is subject to export control regulations, whether it is secret, etc. Currently, the list of technologies, for export of which special licenses are needed, is rather long and covers many technological areas.
It is highly advisable that the inventors take pains to check whether their invention falls under this list. If so they should apply for special export license with a competent government body. Notwithstanding point 1, if the inventors choose to file a patent application first abroad, what consequences they might face? Would the Russian application on the same invention be invalidated? What is the penalty for such an action? The patent law itself envisages no punishment whatsoever for violation of article 35.
The Patent law does not directly envisage invalidation of the Russian patent on the same invention filed later in Russia. But such an action could lead to other violations. It should be born in mind that when you file a patent application in Russia, with claiming of foreign priority or not, you never inform the Patent Office where the invention has actually been developed. There is no such box in the Request form. It is unclear how the inventor could legally obtain patent in his home country in this situation. Also violation of article 35 of the Patent Law could lead to deeds and consequences falling under articles of other laws and Codes and those in turn could lead to liability, prosecution, and punishment under the administrative, civil, and criminal procedures commensurate with the damages incurred in accordance with the legislation of the Russian Federation.
Law or other legal acts, is void, unless the Law stipulates that such a deal could be contested or envisages other consequences for the violation. 35 of the Russian Patent Law could invoke liabilities under the Civil Code and put in great jeopardy patent assignments, transactions, licenses, royalties, etc, to say nothing of the reputation of those involved, in Russia and on international arena. Punishment might occur under criminal law also. If the application on invention, made in Russia, is filed first in other countries and then it turns out that the invention should not have been let out of the country because it should have been kept secret, it falls under export control regulations, special government resolution, etc. For example, the new Criminal Code of the Russian Federation enacted from 1 January 1997 has Article 189 “Illegal export of technologies, science and technology information and services”. The punishment under this article ranges from fine in the amount of 700 minimal monthly wages to the seven year imprisonment. And nobody could guarantee, that filing a patent application first in foreign countries with violation of art.
