Olga Bezrukova on Intellectual Property

Excitingly, IP laws are different in almost every country, and while the EU has its own directives for member states, Russia boasts its own procedures, regulations and harmonization in this respect. Here to give Lawyer Monthly her thoughts on the Russian IP landscape is Olga Bezrukova, European Partner at Squire Patton Boggs Moscow LLC.

What IP matters do you find are most commonly disputed in Russia?

The most relevant issues debated in relation to IT are the following.

A specific concern for the trademark owners in Russia is the issue of socalled ‘parallel import’. Unlike many other jurisdictions, Russia adheres to the principle of national exhaustion of exclusive rights to a trademark – even if the goods were lawfully purchased outside Russia, importation of such goods and other actions related with the introduction of the goods into circulation in Russia are subject to consent of the trademark owner. Presently the Russian anti-monopoly authority and business associations are lobbying to make parallel imports legal. Amendments are being drafted that would make the parallel imports of drugs, medical products and auto parts legal.

In addition, another relevant topic is the one of improvement and harmonization of the regulatory framework and enforcement practices within the Eurasian Union, which now includes Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. The Eurasian Economic Commission is currently drafting: (1) the Trademark Agreement, which provides for the establishment within the EEU of the Union-wide system for registration of trademarks and service marks; (2) Agreement on common process for administering copyrights and neighbouring rights on a collective basis, to establish the process for administration of copyrights and neighbouring rights within the EEU member states; and (3) Agreement on the coordination of activities to protect intellectual property rights, regulating the cooperation between the law enforcement agencies of EEU member states in the area of IP rights protection.

Is there particular IP legislation under Russian jurisdiction which you believe impedes your work? How would you see this changed?

Overall, in our view, Russian legislation on the protection of IP rights has been largely harmonized with the relevant international rules over the past few years. The principal issues that arise relate to the subordinate legislation needed for implementing the procedures in accordance with the new law or describing the technicalities of the document flow process, which have been delayed or have sometimes been inconsistent.

As a thought leader in this field, what are your aims for the development of further IP regulation in relation to patents?

Given that many companies that develop IT products, including international ones, are active in the Russian market, we believe that Russian patent law should be amended to permit patentability of certain ITrelated items.

What are the particular disadvantages of the IP legal frameworks in Russia and how do you think this can change?

We believe that the key issues with Russia’s IP protection laws have to do with the unstable and frequent changes, in particular, with regard to technicalities and procedural matters. At the same time, in certain areas which should be in focus due to their current relevance, new rules have not been introduced in a timely manner, leaving entire areas with gaps. While IT has been developing at a fast pace, relevant legislation has been updated insufficiently and its development fails to keep pace with the development of technologies and the appearance of new products.

In the years you have been practicing, how has the advent in IP technology and infrastructure changed the way you work in this field?

IP-related technology has developed now to the point where it is possible to track the current status of proceedings on applications. The Russian Patent Office permits reviewing public databases on many IP types, which show their current status. In addition, electronic filing of applications and exchange of documents with applicants is now available, which to a great extent has facilitated and expedited the IP registration and administration process.

What are your key points for clients to avoid waste and make the most of their IP protection in terms of value across jurisdictions?

Most of our clients are major international companies doing business in Russia and having significant IP assets. The efforts, which we consider advisable to protect our clients’ interests, including protection of their IP assets, comprise the registration of rights to such IP assets in Russia, including the registration of trademarks and patents, etc. as the rights to such patents can only be protected if the same are registered. Also we consider it important to perform special patent research to identify patents, which may be infringed by our clients’ products, when they start marketing these products in Russia. Our recent experience shows that the latter is most relevant for pharmaceutical companies.