The Russian Government has adopted a decree[1] which will allow local companies and individuals to use inventions, utility models and industrial designs held by owners from “unfriendly countries” without their consent and without paying any compensation.

The decree relies on the provisions in the Russian Civil Code which give the government the right, in case of extreme necessity associated with supporting the defense and safety of the state, the protection of citizens’ life and health, to allow the use of inventions, utility models or industrial designs without a patent owner’s consent at short notice and for “proportional” compensation. The decree envisages compensation in the amount of 0% of the revenue of the person using a patent, payable to patent owners connected with foreign countries which perform unfriendly actions in relation to Russian legal entities and individuals, including:

The decree envisages compensation in the amount of 0% of the revenue of the person using a patent, payable to patent owners connected with foreign countries which perform unfriendly actions in relation to Russian legal entities and individuals, including:

  • patent owners having citizenship of such countries,
  • patent owners having such countries as a place of registration, a principal place of business activities or a principal place of receiving revenues.

The current list of “unfriendly countries” as of today consists of 48 states.[2]

Comments

We believe this new regulation would allow persons who will be granted by the Russian Government the right to use certain patents of third parties without the owners’ consent, not to pay any compensation for the use of the respective invention, utility model or industrial design to patent owners from “unfriendly” countries.

It is likely that this measure will apply to patented developments, devices and technologies that disappear from the Russian market or will be in short supply.


[1] Decree of the Government of the Russian Federation dated 6 March 2022 No. 299 “On Amending item 2 of the Methodology of calculation of compensation’s amount to be paid to patent owner resulted in decision to use invention, utility model or industrial design without patent owner’s consent, and procedure of its payment”

[2] Order of the Government of the Russian Federation dated 5 March 2022 No. 430-р

Author

Denis Khabarov is a partner in the Moscow office of Baker McKenzie and the head of the IP Tech Practice Group of Baker McKenzie in Russia and CIS. For many years, Denis was a member of the Firm's EMEA IP Practice Group Steering Committee. Since 2012, Denis Khabarov is the chairman of the working group on parallel imports of the Association of European Businesses in Moscow. Denis is a member of the International Trademark Association (INTA), actively involved in the work of INTA subcommittees and project groups. Since 2013 Denis was acting as a member of the Parallel Imports Committee of the INTA. Since 2015 Denis is a member of the working group on parallel imports of the Eurasian Economic Commission, a governing body of the Eurasian Economic Union.

Author

Margarita Divina is a partner in the Moscow office of Baker McKenzie. She focuses on intellectual property, including general IP advice and franchising, and heads transactional IP team of the Moscow office’s intellectual property group. Prior to joining the Firm in 2003, Ms. Divina worked at a major Russian intellectual property law firm.

Author