Russia - IMPORTANT UPDATE - Patenting in Russian Federation
In connection with the economic sanctions imposed by the international community on Russia, it was previously unclear to which extent patenting in Russia would fall under the scope of sanctions, and what exceptions to the sanctions would be permitted. Though there was no per se prohibition on filing for patents through the Russian Patent Office, payments of official fees to the Russian Patent Office can be carried out through the Central Bank of the Russian Federation only, and this bank is specifically targeted with sanctions by the US, specifically by Directive 4 under Executive Order 14024 of the Treasury Department of February 28, 2022. General License No. 13 of March 2, 2022, in turn, provides a temporary transition period until June 23, 2022, to wind down certain activities which have been sanctioned, which includes the payment of official fees for IP rights.
In this context, the U.S. Department of the Treasury on May 5, 2022 issued General License No. 31, which authorizes certain IP-related transactions in Russia that would otherwise be prohibited by the Russian Harmful Foreign Activities Sanctions Regulations, 31 CFR part 587 (RuHSR), specifically after June 23, 2022. The authorized transactions include:
- The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
- The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
- The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
- The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.
In short, the general license authorizes, without limitation in time, the filing and prosecution of any application to obtain a patent, trademark, or copyright, as well as the renewal and maintenance fees, and also litigations in connection with patents, trademarks copyrights and other IP rights.
However, clause (b) explicitly stipulates that the general license does not authorize opening or maintaining of a correspondent account or payable-through account. Also, the general license does not authorize any debit to an account on the books of a U.S. financial institution of the Central Bank of the Russian Federation.
Such methods of payment could probably represent a route by means of which, e.g., internationally operating annuity providers could make their payments of annuity fees to the Russian Patent Office. IP owners should therefore seek confirmation from their Annuity providers that they can pay annuities without violation of the US sanctions, specifically under consideration of General License No. 31 of May 5, 2022, clauses (b)(1) to (b)(3).
Similarly, Patent Attorneys and Patent Attorney law firms involved in the prosecution of IP rights before the Russian Patent Office should double check that their payment mode for the official fees does not involve any of the options itemized under clause (b) of General License No. 31.
Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer