MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

New Rules for Resolving Administrative Disputes in Russia



September 9, 2020

On September 6, 2020, the "Rules for Consideration and Resolution of Administrative Disputes by the Federal Executive Body for Intellectual Property" came into force. As of this date, Rospatent's order of 22 April 2003 No. 56 "On the Rules of Filing Objections and Applications and the Consideration thereof by the Patent Disputes Chamber" is no longer applicable.

The innovations establish the procedure for resolving disputes concerning various decisions of Rospatent, including decisions on refusal to register an intellectual property object, as well as decisions on registration of such objects. Also, the Rules now apply to disputes concerning Rospatent`s decisions as to geographical indications.

One of the key innovations is the granting of a right to the person who submitted an objection or a statement to present additional arguments as well as supporting documents and materials during consideration of the dispute. The other party shall be notified of such arguments and shall be given the right to present its opinion of them.

Additionally, the hearings of the board will be accompanied by audio and (or) video recording thereof, which will be kept for at least four months from the date of the hearing. An audio recording may be provided to the parties to the dispute within five working days from the date of receipt of the relevant request.

The new Rules also describe in more detail the procedure for interacting with Rospatent through the official website thereof and e-mail. This innovation is justified by a number of reasons, including reduction of time for digitization of paper documents, and, consequently, all stages of consideration of the dispute. In addition, all documents and materials related to consideration of disputes should be published on the Rospatent`s website within five working days after their receipt by the relevant board.

It should be noted that the procedural deadlines have also changed. Thus, a formal review of an objection or statement should take no more than five working days, instead of a month, as it was envisaged in the previous version of the Rules. If at the stage of the formal review a request is sent to the applicant with an indication of the need to eliminate certain deficiencies, the applicant must eliminate them and notify Rospatent within a period not exceeding two months from the date of sending this request to him. After that, within ten days, the applicant`s response is considered and a decision in result of such consideration is made.

Moreover, according to the updated rules if the communication with Rospatent is carried out through the electronic workflow, the presence of an electronic signature of the applicant on the materials sent to Rospatent is not required.

The professionals of "Mikhailyuk, Sorokolat and Partners" follow all changes in the legislation of Patent Offices around the world. To order a free consultation, please contact us in any way convenient for you.