Some questions re Intellectual Property Licence Agreement among Russian company and business from abroad of Russia
Here is another matter we touched in email correspondence with our client, which I believe might be of interest to others.
Our client wrote:
Q: I have prepared an Intellectual Property Licence Agreement for my client from UK. It is proposed that a licence will be granted to a Russian company which will be for a business venture in Socci. The Agreement is in English. The Licensee will probably get legal advice in Russia and issues relating to Russian law may arise.. And I don’t know whether a translation of the Agreement will be required.
Do you do work of this nature?
A: Yes, we can do it. First, the Agreement can be signed not sooner than after the date of the registration – this is not available yet (but should be soon). Second, it does require to be translated in to Russian – we’ll have to submit three copies of the executed bilingual agreement to Rospatent, and pay fees.
Q: Is registration a prerequisite to achieving enforceability of the IP licence in Russia?
A: Yes.
Q: With regard to the translation, what happens if there is a discrepancy between the two versions? Can we include a provision which says that the English language version will prevail in the event of any inconsistency between the two versions?
A: You can do that, I think it will not prevent registration of the agreement in Rospatent, but as in the case of judicial
trial what court will decide, I do not know.
Q: Can we choose the jurisdiction and the applicable law?
A: Russian trademark will be only valid on the territory of the Russian Federation. What might be other jurisdictions? Legal relations connected with the Russian trademark will be governed by Russian legislation.
See also:
Filed under: registration of trade marks in Russia
Dear Editor, I am closely following your blog for russian patent information. I am basically work in generic and speciality pharmaceuticals and i want to know details about patent regime of Russia.
I mean
when russia started granting pharmaceutical patent (chemical per se)
whether use claims are granted or not?
patent term extension applicable or not?
Regulatory exclusivities granted or not?
As i am patent attorney in India, i can provide you any information on India patent regime, if you need.
Thanks
Dear Gunakkunru,
Thank you for following our blog.
OK, let’s see:
> when russia started granting pharmaceutical patent (chemical per se)
> whether use claims are granted or not?
Invention, which application was filed with Rospatent, from the date of publication of an application prior to the date of publication of a patent is granted temporary legal protection in the volume of published claims
A person using the claimed invention within the specified period
shall pay the patent holder a refund (once the patent owner receives a patent).
> patent term extension applicable or not?
If the date of filing for a patent for an invention before the date of receipt of the first permission for its use has been more than five years,
the validity of the exclusive rights to this invention and patent certifying this right is extended at the request of the patent owner filed in Rospatent.
This applies to inventions relating to medicines, pesticides and agrochemicals, for applications that require getting in the authorization procedure established by law.
The specified period is extended for the time elapsed from the date of filing for a patent for an invention before the date of receipt of the first permit application of the invention, minus five years. In this case, the term of the patent for invention can not be extended for more than five years.
> Regulatory exclusivities granted or not?
There are such a terms in our law.
Thanks for your response
Some more question
1) is there any patent litigation in Russia in Pharmaceutical domain? (give me examples)
2) If any patent term extension is granted, How i come to know of that? (is there any gazette publication)
1) is there any patent litigation in Russia in Pharmaceutical domain? (give me examples)
Here is example (in Russian) – an article published in “Patent Attorney” magazine in Feb 2010: http://www.patentica.com/news.phtml?nid=697
“Currently, in the Moscow Arbitration Court there is a lawsuit of ZAO NPK “Kombioteh” to the company “Serum institut of India, Ltd.”(hereinafter – “Serum”) to declare the last infringing the patent of Russian Federation ? 2238105
This patent protects a recombinant vaccine (hereinafter – the vaccine RU2238105) for prevention of hepatitis B.
The patent holder NPK Kombioteh believes that the patent is implemented in a recombinant hepatitis B vaccine (rDNA), sold by “Serum” in Russia.”
2) If any patent term extension is granted, How i come to know of that? (is there any gazette publication)
Applications and patents are published in the registers at Rospatent’s site. No special announcements are publsihed.
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