Unstable equilibrium or a clear aim?

Currently, scientific-technical activity is one of the main directions in the development of international economic cooperation. This cooperation embraces interaction aimed at the creation and implementation of the latest developments in various spheres of science and technology, licensing agreements are concluded concerning the use of inventions and other objects of patent law, there is exchange of technical information and production secrets, so-called “know-how.”

The foundations of this type of cooperation were established back in the times of the USSR, which had a large scientific-technical potential and extensive experience in conducting external economic activity. It must be noted that in the USSR, any relations with foreign countries were centralized and carried out through external trade associations created by directive on the basis of orders issued by the Minister of Foreign Trade. The system of protecting inventions and other scientific-technical achievements differed significantly from current practice. Legal norms for the protection of inventions did not measure up to world demands or standards.

The development of scientific-technical cooperation began to change to a qualitatively different level with the adoption of Patent Law No. 3517-1 of 23 September 1992 (hereinafter- Patent Law) of the Russian Federation, which regulates property and relevant personal non-property relations arising in connection with the creation, legal protection and use of inventions, useful models and industrial samples on the territory of the RF. The adoption of the Patent Law broadened the scope for the development of international scientific-technical cooperation. Thus, article 36 of the Patent Law provides that foreign natural and juridical persons enjoy the rights envisaged by the Patent Law on equal terms with natural and juridical persons of the RF in view of international agreements to which the RF is party, or on the basis of the principle of mutuality. In this way, natural and juridical persons of a foreign state are endowed with certain rights on the condition that Russian natural and juridical persons will enjoy the same rights in the corresponding foreign state unless otherwise stipulated by international agreements of the RF.

The USSR was a member of the Paris Convention on the protection of industrial property, the Agreement on Patent Cooperation. The Russian Federation became the legal successor of the USSR in these agreements,
having established that participation in all conventions, agreements and other international legal documents signed by the USSR within the framework of the World Organization on Intellectual Property (WOIP) or under its aegis, will be carried on by the Russian Federation. Moreover, after the disintegration of the USSR, Russia and a number of CIS states became members of the Eurasian Patent Convention of 1994.

Russia also concluded bilateral agreements aimed at establishing cooperation in the sphere of protecting industrial property with Kyrgyzstan, Uzbekistan and the Republic of Belarus, Kazakhstan, Armenia, Azerbaijan and Ukraine.

The legal foundation established should assist in the further development of international scientific-technical cooperation, the process of exchange of new technologies which, in turn, is one of the most important conditions for the expansion of scientifically copious branches of economics and facilitates the further integration of Russia into the global community.

However, the development of this kind of cooperation complicates a number of problems in the sphere of the legal regulation of relations connected with the protection of objects of industrial property patented in the Russian Federation. The Patent Law, while paying particular attention to the registration of inventions, useful models and industrial samples, the specifics of the action of the patent, does not set down any special rules for the protection of the rights of the patent holders and authors of inventions and other objects of patent law, as a result of which the latter must defend their interests in the order envisaged by the general provisions of the Civil Code of the Russian Federation. Moreover the patent holders and authors must proceed in the first place from the provisions of chapter 2 of the Civil Code, which envisage various means for the defense of civil rights (art.12).

It is quite clear that the measures for the defense of civil rights indicated in art.12 of the Civil Code must be concretized with respect to the defense of the rights of patent holders and other subjects of patent law bearing in mind the specifics connected with the defense of intellectual property. Furthermore, it is necessary to proceed from the fact that in accordance with art.138 of the Civil Code, intellectual property is acknowledged as a combination of exclusive rights to the results of intellectual activity, moreover the exclusive rights are of both property and non-property nature. The extremely tight bond between property and non-property rights must be taken into account in their court and extra-court defense.

Another problem is the lack of clarity in the matter which courts should examine issues arising from the violation of patent rights. The Higher Patent Chamber of the Russian Federation had not been established, and the acting system of court defense of patent rights is insufficiently effective because patent and licensing relations have their own specifics arising from the complexity of the given legal institution. Literature contains varying views concerning which legal bodies should resolve such disputes. The most preferable is that of A.P. Sergeyev, who suggested the creation of a special college in the Supreme Court and the Supreme Arbitration Court to handle patent disputes.

Internal legislation, which is an integral part of the legal basis created for the broadening of the sphere of international scientific-technical cooperation, has other specifics that distinguish it from national patent laws in a number of other countries. This detains the development of international relations in this area. Furthermore, the existing court practice on certain questions connected with the protection of industrial property, still maintains positions that were in force in the times of the existence of the USSR. It is particularly important that some clarifications by courts are applied in interpreting provisions of the law concerning group inventions, resulting from the creative efforts of several authors. After all, any cooperation, including that on an international level, is based on the combined efforts of different subjects.

P.2 of art. 7 of the Patent Law states that if several natural persons had taken part in the creation of an object of industrial property, they are all deemed to be its authors… Those natural persons who did not make any personal creative contribution to the object of industrial property but offered only technical, organizational or material assistant to the author(s) or assisted only in the formulation of rights to it and its use, are not deemed to be authors. This provision of the Patent Law is applied by courts with allowance for clarifications made earlier by the Plenum of the Supreme Court of the USSR. In p.3 of the Resolution No. 22 of the of the Plenum of the Supreme Court of the USSR of 15 November 1984, it is stated that in examining disputes relating to co-authorship of inventions, the court should determine the nature of participation by every one of the persons claiming co-authorship, in the creation of the technical solution the combination of which found expression in the formula of the invention.

The bilateral international agreements, concluded formerly by the USSR and now the Russian Federation, set other- “softer” criteria for co-authorship. In this instance, it is customary to apply the criteria of creative and material input. It is likely that excessive “formalization” of creative input i.e. acknowledging it only in such cases where it is included into the formula of the invention would not facilitate the development of joint work on inventions.

Of special interest in this connection are the “Guidelines on joint work on inventions” drawn up in 1984 with the support of the World Organization on Intellectual Property. These guidelines state, among other things, that an invention is considered a joint effort when at least one of the inventors was co-opted by one of the participating parties and at least one other inventor was co-opted by another participating party irrespective of where the invention was created. Thus, the determination of a joint invention goes beyond the determination of co-authorship. Therefore, international practice established a new, more appropriate category of joint invention, which had been by-passed by the Patent Law, following a more narrow interpretation of the institution of co-authorship.

The existence of these and other problems is a significant hindrance to the application of the provisions of internal legislation concerning scientific-technical activity in practice, which influences international cooperation in this area.

However, it must be noted that Russian legislation has secured a number of provisions that create conditions for the development of scientific-technical activity in the country. This includes extending the period of concessions regarding novelty up to six months and the procedure for permitting use of the invention by way of concluding licensing agreements and establishment of rules concerning conventional priority, priority by date of receipt of supplementary materials, priority on early application and a number of others.

These rules are intended to facilitate the realization of reliable protection of patent rights and the development of the market of the sale of licenses based on the principle of mutually profitable cooperation. The sale of licenses is one of the basic means for the development of industry, the overcoming of various customs barriers, and also a method for the exchange of scientific-technical achievements. Moreover, the profits from the sale of licenses on the international market are sufficiently high to enable the realization of this kind of activity to become one of the basic criteria of Russia’s economic growth.

A.V. Popov

Source publication: Business Lawyer [Biznes-advokat] 2000, No.12