In August 2016 Rospatent has initiated a public discussion on provisional applications and licensing of unregistered patents in Russia.
In Rospatent’s view, provisional applications are designed to establish an effective 12-month term, within which applicants may file their non-provisional (“ordinary”) applications. In order to register a provisional application an applicant should disclose a technical decision of the invention or utility model and pay a patent fee.
Along with above mentioned, Rospatent proposed to introduce licensing of unregistered patents in Russian Civil Code (currently licensing of technical decisions of unregistered patents is not prohibited).
Since 1995 provisional applications have become available in the US. Provisional applications here establish an effective 12-month term that cannot be extended. Within these 12 months (14 months in case of an unintentional delay) an applicant should file a non-provisional (“ordinary”) application. To get registered provisional applications shall disclose a technical decision and meet a 12-month term following a public disclosure of an invention, while examination of the grounds for refusal is not conducted.
Nevertheless, provisional applications are often criticized for numerous reasons, in particular, reduction of the period of patent protection for 12 months; inapplicability to design patents; inability to amend an application in substance (unless provided otherwise in applicable legislation).
In our opinion, Russian Civil Code and Rospatent regulations should be amended as to tackle certain unsettled questions: is an applicant authorized to extend the period of a provisional application and license it; how does the rejection of a patent application impact on a license agreement; how to pay royalties for unregistered patents.
Nowadays article 1392 of Russian Civil Code provides for the temporary legal protection of patent claims in the period between the publication of application and registration of patent. If the application is revoked or rejected by an applicant or Rospatent, the temporary legal protection is eliminated.
We suppose that Rospatent’s initiative may positively effect on commercialization and proliferation of IP assets in Russia.
