On 7 March 2022 a decree of the Russian government took effect, announcing that compensation need not be paid for the unauthorised use of Russian patents, utility models and designs to rights holders connected with foreign countries committing “unfriendly acts” against Russian legal entities and individuals.
In the case of patents, the citizenship of the Russian patent holder, the place of business, or the principal place where revenue is generated determines whether the holder of a Russian patent is connected with an unfriendly country.
The current list of countries deemed to have been committing “unfriendly acts” by the Russian government includes, among others:
- South Korea.
With the exception of China, what is immediately apparent is that the list covers the most active patenting countries.
The effect of the new decree is essentially to impose a free compulsory licence for most foreign IP rights covered by a Russian registration.
So far, the new rules do not relate to trade marks, but similar rules for trade marks are under consideration.
Patent applicants with currently pending applications should take note that 23 June 2022 is the last day on which a U.S. business may pay the Russian patent office (Rospatent). While Rospatent itself is not a sanctioned entity, applicants may not have a method to pay Rospatent due to the sanctions on the Central Bank of the Russian Federation (which has been targeted by sanctions).
In addition to the challenges of paying Rospatent, applicants should consider whether it is worth the expense of pursuing patent rights in Russia. Instead, applicants may choose to focus patent filings and budget on pursuing patents in countries to which Russia exports in hope of gaining some protection if Russia manufactures patented products and then attempts to export them.
Holders of issued Russian patents should consider tracking activity in Russia that, absent the decree, would entitle compensation. If and when sanctions are lifted and commerce with Russia resumes, patent holders will then have documentation available should Russia allow compulsory licensing payments for activity occurring while the decree was in effect.