The review of further development of IP legislation

The first half of 2012 has been low key in terms of the further development of IP legislation. That said, work has continued on the amendments to the Russian Civil Code, with the corresponding draft law passed in its second reading.

Unfortunately, the working group which prepared the amendments did not take account of many of the amendments that were proposed by informal associations of IP specialists. Work on the draft law continues, and it will probably soon be possible to say exactly which amendments will be discussed in the third reading.

The Russian government’s Resolution No. 218 dated March 21, 2012, approved the regulations for the Federal Service for Intellectual Property, which is the legal successor to the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent), and also the legal successor to the Russian Ministry of Justice in relation to the legal protection of the state’s interests in the process of the economic and civil law circulation of results of research, development, and technological work of a military, specialist and dual-purpose nature, including in relation to obligations arising from the enforcement of court decisions.

Having received its new functions, Rospatent ceased to be a patent authority in the traditional sense of that term. However, it has retained the functions of providing state services in the area of legal protection for inventions, utility models, industrial designs, computer programs, databases and configurations of integrated microcircuits, trademarks, service marks, appellations of origin of goods, and the legal regulation of issues relating to the control and supervision of this area.

Cooperation continues between courts and administrative authorities, including rights holders, to improve the enforcement of IP legislation. In particular, various activities were undertaken in the context of the enforcement monitoring function vested in the Ministry of Justice. Unfortunately, federal executive authorities cannot provide a full picture of the enforcement of legislation in the area of IP. In relation to this, it is important to support the course taken by the Ministry of Justice to work together with private business in terms of monitoring enforcement.

Evidence for the correctness of this decision is the two academic and practical conferences held by the Ministry of Justice, one of which, in St Petersburg, covered IP. Those taking part in the event gave presentations on various IP topics, including litigation, expert witnesses, bad faith, and parallel imports, based on the results of independent monitoring of the application of IP legislation. Participants came up with a series of proposals aimed at improving IP legislation, including:
• Amending the Russian Arbitration Procedure Code in relation to the status of an ‘expert’, to meet the requirements of the Intellectual Rights Court in examining disputes;
• Creating, for copyright and related rights disputes, a dedicated judicial structure or panels of judges in the courts of general jurisdiction;
• Supplementing Federal Law No. 229-FZ on enforcement proceedings so as to expand the list of instances that constitute grounds for counterfeit property to be seized; 
• Putting forward on behalf of the Ministry of Justice and other interested federal authorities proposals to amend the Civil Code further, including: an expansion of the list of methods of disposing of exclusive rights by way of transferring them directly; the possibility of entering into licence contracts in relation to items of intellectual activity distributed via the Internet or in electronic form; the establishment of a general procedure for sending to an information broker a rights holder’s statement regarding the violation of intellectual rights on the Internet; and the repeal of the provision regarding the exhaustion of an exclusive right in relation to service marks;
• Working up proposals for the additional regulation of the territory in which the principle of the exhaustion of a right has effect; and
• Working up proposals for the additional regulation of the content of opinions annexed to applications for registration and/or the grant of a right to use an appellation of origin in relation to a product such as ‘vodka’.