Playing the system: the annoyances of Russian utility models
A fact: A Russian utility model must be new over all available written information. However, it is valid even if it relates to a product that was publicly available outside the Russian Federation at registration (Art. 1351, point 2, Civil Code).
A business recipe: New products are released on foreign markets. Pick one. Obtain a Russian utility model for the product. Be quick here – a patent application for the product is probably hiding somewhere and will be published within 18 months. Wait for the introduction of the product in Russia, and then let the owner know about your utility model …
The above is a flagrant abuse of intellectual property rights. But since the opportunity exists, there is always someone who will use it. This practice can in fact be observed rather frequently, as well-reputed colleagues have confirmed to us.
If your company regularly introduces new products on the Russian market, you may want to protect yourself against such frustration. Rather than going to court when presented with a fait accompli, it is probably cheaper in the long run to take the habit of creating prior art that invalidates potential utility models registered in bad faith. A published national Russian or Eurasian application (claiming priority from the first application that you file anyway) or a PCT application that has entered the national phase may be all you need to fight an annoying utility model. Whether your application leads to a patent does not matter, and you may withdraw it after publication to save costs.
Russian patent attorneys are aware of the problems associated with the present utility model legislation (see, e.g., 1, 2, 3). Many argue that public use outside Russia should also count as prior art. China made this law change in 2009. Recent achievements in search and translation technology should by far outweigh this extra burden on examining staff.
It is a pleasure to finish by referring the interested reader to the booklet “Patent System in Russia” (2010), which contains concise and up-to-date information on the subject.
Anders Hansson, European Patent Attorney, Awapatent
