Russia is Expecting Establishment of Intellectual Property Court
By Valery Guerman
Posted: 11th December 2012 09:37Russia is on the threshold of significant changes in the system of legal protection of intellectual property rights. On the 1 February 2013, a new judicial authority called Intellectual Property Court will commence its work. This new structure will be awarded the status of a specialised arbitration court. An arbitration court in Russia is a judicial authority in charge of resolving disputes related to professional involvement in business transactions; in particular, disputes, which may arise in the course of economic activities. The Intellectual Property Court (hereinafter the IPC) will consider cases pertaining to obtaining and enforcement of intellectual property rights, regardless of the legal status of parties involved - legal entities or individual entrepreneurs, physical persons or other organisations. Currently, all disputes related to protection of intellectual property rights are being resolved by arbitration courts and courts of common jurisdiction.
IPC will be the only authority in Russia, which, within the limits of its competence, will examine disputes related to protection of infringed or opposed intellectual property rights, acting as the court of first instance and the court of appeal.
All intellectual property disputes will be divided into two categories: cases related to actual proprietary of IP rights and cases related to infringement of IP rights.
The first category of cases will include:
1) Cases related to contestation of regulatory legal acts of federal executive authorities affecting the rights and legitimate interests of applicants in the field of legal protection of IP rights;
2) Cases related to granting or cancellation of IP rights, in particular:
- Contestation of non-regulatory acts, resolutions or actions (omissions) of the Federal Executive Agency on Intellectual Property, Federal Executive Agency on Selective Breeding Achievements and their officials, as well as agencies authorised by the Government of the Russian Federation for examination of patent applications for secret inventions;
- Contestation of decisions of the Federal Anti-Monopoly Authority on recognising actions aimed at obtaining of exclusive rights for means of individualisation of legal entities, goods, works, services or enterprises as unfair competition;
- Invalidation of patents for invention, utility model, industrial design or selective breeding achievement; cancellation of trademarks and/or appellations of the goods origin, or any exclusive rights for such names, unless federal laws foresee another procedure of acknowledgement of their invalidity; and
- Cancellation of legal protection of a trademark due to its non-use.
Cases of the first category will be considered by the IPC acting as a court of the first instance and any decision so adopted will become effective and enforceable immediately. No appeals may be lodged in relation to such cases. However, cassation complaints on cases examined by the Court of the first instance may be reviewed by the Presidium of the IPC.
Cases of the second category on disputes related to infringements of intellectual property rights, both in the first and appellate instances, will be considered by existing arbitration courts and arbitration courts of appeal. Cassation complaints on such cases may be lodged to the IP Court for review in a collegial composition. Any decision taken by the IPC in cassation proceedings may be appealed to the RF Supreme Arbitration Court in exercise of supervisory authorities.
In addition to that, the IPC may lodge a request to the RF Constitutional Court for examination of constitutionality of any law applied or to be applied to the case in hand. The IPC will have 30 judges, all meeting the requirements of seniority, age and appointment procedures in analogy with federal arbitration courts of the regions.
For the purpose of examining a case by the IPC, the law introduces a new participant of the proceedings – the so called “Specialist”. The main function of such an expert in the proceedings is in expressing his/her opinion in a certain field of business activities (thus rendering assistance to the IPC). For this purpose a Specialist will participate in proceedings verbally only. The Specialist may be either outsourced or elected from the pool of legal advisers of the IP Court, provided that they possess relevant expertise and specific knowledge (for instance, in the sphere of selective breeding, microchip’s topography etc.).
The IPC will have a right to make inquiries or consult with scientists, researchers, experts etc. with the view to obtain specific inferences or opinions on relevant issues and, using such inferences or opinions, will define its final position or attitude in relation to the case in question.
Therefore, the IPC will be considering the major part of disputes on protection of intellectual property rights. Exclusion will be made to disputes related to legal protection of copyright or allied rights and rights for microchip’s topography, which will be resolved in accordance with applicable rules of arbitral jurisdiction.
It should be noted that in spite of various opportunities provided by applicable legislation, so far no specialised court has been established in Russia yet. Experts believe that establishment of the IPC and introduction of international standards in Russia will add to the efficiency of intellectual property protection. Many of them predict streamlining of the process and proceedings in various instances and improved accessibility of relevant cases to the IP Court through lodging of claims by Internet and extensive use of videoconferences. Great importance will be given to improved quality of proceedings because of specific qualification of judges, obligatory involvement of specialists and an opportunity of ensuring uniformity of judicial practice in part related to the intellectual property rights nationwide.
Valery Guerman is Patent and Trademark Attorney of the Russian Federation who has been working in the IP area for 35 years already. His practice focuses on industrial property, mainly on trademarks and patents.
Valery Guerman has founded and headed the first private Russian IP firm “INTELS Agency of Intellectual Property”. He is the President of the Chamber of Russian Patent & Trademark Attorneys since its foundation in 1995. He has taken an active part in the continuing development of the Russian industrial property legislation. He is an author of a whole number of articles in national and international IP editions.
Valery Guerman can be contacted by phone on +7 495 9214080or alternatively via email at firstname.lastname@example.org