Patent law regulates issues of legal protection of such intellectual property objects as inventions, utility models and industrial designs, as well as methods of their use, legally based on Part 4 of the Civil Code of the Russian Federation. A patent, the main purpose of which is to legislatively secure the right of the patent holder to use it in a certain country, is issued by the patent office of the Russian Federation (Rospatent) and gives the developer the right to individually produce and sell it. If an invention is granted legal protection provided that it corresponds to the concept of “invention” established in paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation and simultaneously satisfies three criteria for protectability (it is new, has an inventive step and is industrially applicable), then the condition of originality for industrial designs, according to clause 3 of Art. 1352 of the Civil Code of the Russian Federation, has its own peculiarity - the criterion of originality depends on the creative contribution of the developer. That is, an industrial design is original, whose “essential features are determined by the creative nature of the product’s features, in particular, if from the information that became publicly available in the world before the priority date of the industrial design, a solution to the appearance of a product of similar purpose is unknown that produces on an informed consumer the same general impression as that produced by the industrial design reflected in the images of the product’s appearance.”
In other words, an industrial design, by its essential features, is original if its essential features are due to the creative nature of the product’s features, despite the fact that the design of a product for a similar purpose, created by another author, makes the same general impression on the consumer as the declared industrial design. It should be noted that an industrial design does not take into account details of its design, purpose or utility.
The “industrial applicability” criterion for an industrial design, as opposed to inventions and utility models, was removed from the Patent Law in 2003.
The main documents regulating the protection of industrial designs under patent law include:
- Paris Convention for the Protection of Industrial Property (dated March 20, 1883 with amendments and additions, ratified by Decree of the Presidium of the Supreme Soviet of the USSR dated September 19, 1968 No. 3104-VII “On the ratification of the Stockholm Act of the Paris Convention for the Protection of Industrial Property and the Convention establishing the World Intellectual Property Organization”);
- Part four of the Civil Code of the Russian Federation (entered into force on January 1, 2008 by Federal Law of the Russian Federation of December 18, 2006 No. 231-FZ);
Separately, I would like to draw your attention to the fact that within the framework of the Eurasian Convention, it is possible to obtain a single Eurasian patent for an industrial design, valid in the countries participating in the convention, namely, in the Russian Federation, Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan. The parent organization of the convention is Rospatent. The procedure for obtaining a Eurasian patent is somewhat simpler than obtaining a Russian patent. A situation is possible when two patents with identical formulas obtained by different copyright holders will be valid - Russian and Eurasian.
The Hague Agreement Concerning the International Deposit of Industrial Designs provides for simplification of applications and obtaining patents for industrial designs in many countries of the world and allows applicants, by filing a single international application with the International Bureau of WIPO, to obtain protection of an industrial design in countries that are parties to the agreement (Russia joined it in 2017). Under this convention, it is possible to file an international application in the country of interest while maintaining the priority date for the Russian application, if the application requested convention priority.
Based on the above material, the criteria for the protection of industrial designs are somewhat different from those for inventions and utility models. For this reason, when patenting them independently, the author may make shortcomings at the application filing stage, for example, by not doing patent research thoroughly enough or not taking into account the specifics of their patenting. In this regard, in order to save time and finances, it is important to involve specialized specialists who will take into account all the features of patenting industrial designs in accordance with regulatory documents.
