The Supreme Arbitration Court says higher patent fees for non-residents contradict Russia’s international commitments.

08.06.2012

Legal Update No. 355

(Resolution No. ВАС-308/12 of the Supreme Arbitration Court of Russia dated 11 April 2012)

Goltsblat BLP advises that the Supreme Arbitration Court of Russia (the SAC), pursuant to a claim filed by a businessman from the Czech Republic, considered the lawfulness of higher fees that non-residents have to pay to have their objections to patents examined. The fees for non-residents are currently almost seven times higher than those for residents.

The claimant believed that higher fees for non-residents infringed their rights and interests by hampering access to the competent authority for resolving disputes over the protection of these exclusive rights and, consequently, discriminated against non-residents. 

In its response, the Russian Government indicated that higher fees for non-residents contradicted neither the aliens equality principle, effective for non-residents with respect to intellectual property, nor the national legislation and international commitments of the Russian Federation.

After considering the case material, the SAC satisfied the claimant’s claims and concluded that higher fees for non-residents do run counter to Russian legislation, in particular the Russian Civil Code that prescribes for the national treatment of foreign citizens, and the international commitments of the Russian Federation, under:

  • Partnership and Cooperation Agreement 1994, between the Russian Federation and the European Communities, by which the parties undertook to ensure that both the natural and legal persons of the other party have access free of discrimination in relation to its own nationals to the competent courts and administrative organs of the parties for defending their individual rights and their property rights, including those concerning IP,
  • Paris Convention 1883, requiring member states to refrain from any discriminating provisions, i.e., any differences in legal regulations affecting non-nationals that create a disproportionate competition in the IP market, or extend an unfair advantage to nationals compared to foreigners. 

The SAC thus recognised the practice of setting higher fees for non-residents as illegal, since it was based on an unjustified discrimination between residents and non-residents, affected competition and ran counter to the international commitments of the Russian Federation.

One may reasonably expect that, once Russia is admitted to the WTO, Government Resolution No. 781 of 15 September 2011 will take effect, amending the Regulations on Fees and levelling the fee rates effective for residents and non-residents.              

For additional information, please contact:

to Elena Trusova
Partner,
IP Practice,
Goltsblat BLP
T: +7 (495) 287 44 44,
E: info@gblplaw.com

Larisa Lysenko
Senior associate,trademark and patent attorney,
Head of consultation and registration group,
Goltsblat BLP
T: +7 (495) 287 44 44,
E: info@gblplaw.com

Anton Nefedev
Associate,
IP Practice,
Goltsblat BLP
T: +7 (495) 287 44 44,
E: info@gblplaw.com
 

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