There are four legal instruments that allow the Russian state to limit the patent monopoly of the holder:
- Use in emergency situations (art. 1359 (3) of the Russian Civil Code (“RCC”));
- Use in the interests of national security (art. 1360 of the RCC);
- Compulsory license for non-use of a patent (art. 1362 (1) of the RCC); and
- Compulsory license to use a dependent invention (art. 1362 (2) of the RCC).
Use in emergency situations
Under art. 1359 (3) of the RCC, use in emergency situations does not constitute a violation of the exclusive right to an invention, utility model or industrial design. The article refers to natural disasters, catastrophes and accidents as examples of emergencies. However, we assume that epidemics and epizootics can also be recognized as extraordinary circumstances.
At the same time, one who begins to use a patented solution is obliged to: (1) promptly notify the patent holder about such use and (2) subsequently pay him commensurate compensation.
The procedure for determining the amount of compensation and the term for its payment are not specified in the law. In any case, the proportionality of compensation can be challenged in court, which will determine the amount of fair payment to the patent holder.
Use in the interests of national security
Art. 1360 of the RCC states:
“The government of the Russian Federation has the right, in the interests of defense and security, to allow the use of an invention, utility model or industrial design without the consent of the patent holder, notifying him as soon as possible and paying him commensurate compensation.”
Currently, the procedure for issuing such permits, the timing of payment and the amount of compensation are not specified. Throughout modern Russian history, the state has not had to apply this article. However, a draft methodology for determining the procedure of issuance and commensurate compensation exists.
Under this methodology, the Government may, on a competitive basis, grant a third party the right to use a patent without the consent of the patent holder. The Government also determines the amount of remuneration “taking into account the circumstances in each case and the economic value of the permit.” Remuneration is paid annually by the person who exercised the right of use.
Compensation is determined by the Government of the Russian Federation in the amount of:
- 1 million rubles – for patent holders whose proceeds from the sale of the product for the previous calendar year amounted to less than 1 billion rubles;
- 2.5 million rubles – for patent holders whose proceeds from the sale of the product for the previous year amounted to 1 to 5 billion rubles;
- 5 million rubles – for patent holders whose proceeds from the sale of the product for the previous calendar year amounted to more than 5 billion rubles.
Payment is made once, and, by default, the amount is not subject to review between the patent holder and the person using it.
Compulsory license for non-use of a patent
Under art. 1362 (1) of the RCC, any person has the right to sue the patent holder for a simple (non-exclusive) compulsory license to use the patent in Russia.
To do so, several conditions must be met simultaneously:
- An invention or industrial design is not used or not used enough by the patent holder for four years from the date of grant of the patent, and a utility model – for three years from the date of grant of the patent, which leads to insufficient supply of relevant goods on the market;
- The claimant must first apply to the patent holder with an appropriate proposal on terms “consistent with established practice” and receive a refusal to execute a license agreement;
- The claimant must be prepared to use the patent;
- The claim must indicate the proposed conditions for granting such a license, including the amount of use of the invention, utility model or industrial design, and the amount, procedure and terms of payments.
Compulsory license to use a dependent invention
This applies to dependent inventions – inventions that cannot be used without the use of another patent-protected invention with an earlier priority date.
Under art. 1362 (2) of the RCC, the holder of the second (dependent) patent has the right to file a claim with the holder of the first patent for a compulsory (non-exclusive) license to use the invention or utility model of the holder of the first patent in Russia.
In court, the claimant must prove that his dependent invention represents an important technical achievement and has significant economic advantages over the invention or utility model of the first patent holder.
In this case, the total amount of payments for a compulsory license should be set in a court decision not lower than the price of the license, determined in comparable circumstances.
If such a license is granted, the holder of the patent for the original invention in return receives the right to use the dependent invention under conditions consistent with established practice.