Russia Establishes Specialised Court For Intellectual Property RightsPublished on 1 March 2013 @ 4:05 pm
By Daria Kim for Intellectual Property Watch
As of 1 February 2013, a specialised court for intellectual property rights (the IPR Court) is instituted within the system of commercial (‘arbitrazh’) courts of the Russian Federation.
The IPR Court was established by the Federal constitutional law of 6 December 2011 N 4-FKZ that amended the Federal constitutional law “On the Judicial System of the Russian Federation,” and the Federal constitutional law “On Commercial Courts of the Russian Federation.”
According to Article 26.1 of the amended Federal constitutional law of 1 December 1996 N 1-FKZ “On the Judicial System of the Russian Federation”,
[t]he court for intellectual property rights is a specialized commercial court that, within its competence, considers cases regarding protection of intellectual property rights as a court of first instance and cassation instance.”
In a recent interview, Lyudmila Novoselova, the newly appointed head of the IPR Court, discussed the advantages of a specialised court and, generally, acclaimed the idea of specialisation, without which “we would still be enjoying wearing the clothes that we had sewn ourselves out of the animal skin.”
According to Ms. Novoselova, experiences of other jurisdictions that have specialised IP courts have been studied and taken into consideration when elaborating the concept of the IPR Court of the Russian Federation. The German Federal Patent Court especially served as a model.
(The video of the interview, in Russian, is available here)
In 2008, at the meeting of representatives of commercial courts, Anton Ivanov, head of the Supreme Commercial Court of the Russian Federation, presented the initiative of establishing a specialised court – the Patent Court – within the system of commercial courts of the Russian Federation. Later on, the concept of the specialised court was broadened to encompass jurisdiction over the cases related to other categories of intellectual property rights.
The idea of setting up a specialised IPR court can be traced back to the Soviet Union times: the Law of the USSR of 31 May 1991, “On Inventions in the USSR” provided for the establishment of the Patent Court. Being introduced shortly before the collapse of the Soviet Union, the idea of the Patent Court was not implemented in practice, nor was the draft law “On Patent Court of the USSR” ever adopted.
Upon the establishment of the Russian Federation, the idea of the Patent Court was revisited when drafting and adopting the new legislation, but the Patent Law of the RF of 23 September 1992 instituted another body: The Supreme Chamber for Patents of the Russian Federation, which had functions, inter alia, to consider appeals of the decisions of the Board of Appeals of the Rospatent and to grant compulsory non-exclusive licences.
In 1997, the functions of the Supreme Chamber for Patents were transferred to the Russian Agency for Patents and Trademarks (presently, the Rospatent). Thus, the Supreme Chamber for Patents, as a separate entity, was abolished and the functions of reviewing the decisions on the grant or invalidation of protection for IPRs were vested within the same authority that had granted such rights.
The Present System for Adjudicating IPR Disputes
Currently, cases related to the protection of IPRs can be considered and resolved by courts (as provided under Article 1248 (1) of the Civil Code of the Russian Federation – CC RF). In practice, courts of general jurisdiction hear cases on IP if one of the parties is a natural person; whereas commercial (‘arbitrazh’) courts adjudicate disputes between legal entities.
In certain cases prescribed by the law, disputes regarding protection for IPRs can be resolved by administrative procedure, e.g., cases related to: (i) the submission and examination of applications for patents on inventions, utility models, industrial designs, achievements of breeding, trademarks, service marks, and designations of places of origin of goods; (ii) the state registration of such results of intellectual activity and means of individualization; (iii) the issuance of the corresponding right-establishing documents; and (iv) contesting the grant of protection for these results of intellectual activity and means of individualization (Article 1248 (2) of the CC RF).
In particular, the regulation of such disputes is within the competence of the Federal executive authority for intellectual property (presently, the Rospatent) and the Federal executive authority for achievements of breeding (presently, the Ministry of Agriculture of the Russian Federation).
As far as patents on inventions, utility models, industrial designs as well as registrations of trademarks are concerned, decisions of the granting authority related to their protection can be contested by filing an objection at the Chamber for Patent Disputes, a subdivision of the Federal Institute for Industrial Property, which, in turn, is a subordinate institution within the Rospatent.
The Jurisdiction of the New IPR Court
As a specialised court, the new IPR Court has jurisdiction to adjudicate cases related to protection of intellectual property rights as a court of first instance and cassation instance.
According to Article 43.3 of the amended Federal constitutional law of 28 April 1995 N 1-FKZ “On Commercial Courts in the Russian Federation,” as a court of first instance, the IPR Court has competence over the following exhaustive list of cases (unofficial translation):
(1) cases on contesting legislative acts of federal executive authorities that affect a claimant’s rights and legitimate interests in relation to the protection of results of intellectual activity and means of individualization equal thereto, including patents, rights for achievements of breeding, integrated circuit layouts, secrets of production (know-how); rights for means of individualization of legal persons, goods, work, services, and enterprises; rights to use the results of intellectual activity within the system of unified technology;
(2) cases regarding the grant or invalidation of the protection for results of intellectual activity and means of individualization equal thereto of legal persons, goods, work, services, and enterprises (except for author’s and neighboring rights and integrated circuit layouts), inter alia,
- cases contesting non-normative legal acts, decisions, actions (lack of actions) of the federal executive authority for intellectual property (presently, the Rospatent); the federal executive authority for achievements of breeding (presently, the Ministry of Agriculture of the RF) and their officials, as well as the authorities empowered by the Government of the RF to consider applications for patents for secret inventions;
- cases contesting decisions of the federal antimonopoly authority finding actions, related to acquisition of the exclusive right for means of individualization of judicial person, goods, work, services, and enterprises, as violating unfair competition law;
- cases on determination of a patent holder;
- cases on invalidation of a patent for an invention, utility model, industrial design or achievement of breeding; or of a decision to grant protection for a trademark, a designations of the place of origin, if the federal law does not provide for another procedure of their invalidation;
- cases regarding cancellation of a trademark registration as a consequence of its nonuse.”
Both categories of cases shall be heard by the IPR Court, irrespective of whether a party to a dispute is a natural person or a legal entity.
As a court of cassation instance, the IPR Court has jurisdiction over
(1) cases decided by it at first instance (at this stage, the case will be heard by the Court’s Presidium);
(2) cases regarding protection of IPRs decided by commercial courts of the constituent entities of the Russian Federation at first instance and commercial appeal courts.
The Commencement of Operations
The IPR Court of the Russian Federation is expected to start functioning upon the official announcement of the decision of the Plenum of the Supreme Commercial Court of the Russian Federation on the commencement of operation. Currently, the judiciary is being formed that, in total, will consist of, at least, 30 judges.
In the interview, the head of the IPR Court stated that the composition of the judiciary presents one of the main challenges as specialists with both, legal and technical, expertise are rare. According to Lyudmila Novoselova, although the technical background is desirable, it is not mandatory, and, when choosing between a judge experienced in cases on IPRs and a judge with good technical knowledge but without particular expertise in IP, the preference is likely to be given to the former.
The IPR Court is located in Moscow. Future decisions are expected to be available on its website here (the English version is not activated yet): http://ipc.arbitr.ru/.
Daria Kim may be reached at firstname.lastname@example.org.
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