Compulsory licensing in Russia

A court decision granting an interested party (i.e. an applicant) the right to use intellectual property owned by another party.

Currently, there are three types of compulsory licences named as such by the law:

1. Compulsory licence to the patented invention, utility model or industrial design in case of non-use or insufficient use by the patent holder.
2. Compulsory licence to the patented invention or utility model in favour of the owner of the dependent invention, who are not able to use its invention without licence.
3. Compulsory licence in respect to breeding achievement (e.g. plant variety or animal breed).
   In addition, Russian law also provides for some additional cases of use without the direct consent of the patent holder, although it does not name this as a compulsory licence. These cases include:
4. Use of the invention, utility model or industrial design for reason of force majeure (e.g. during natural disasters, accidents and emergencies) shall not be qualified as a patent infringement.
5. Government of the Russian Federation has the right to allow the use of invention, utility model and/or industrial design without the consent of the patent holder in the interests of defence and security.  

The Civil Code of the Russian Federation (Part 4).

Generally, no limitation on the types of products or technologies to which compulsory licensing is applicable. However, in respect to semiconductor technologies, a compulsory licence under p. (A) above can be granted only for non-commercial use in state, social or any other public interest or to change the status quo that has been recognised as anti-competitive. 

3.1 Has any compulsory licence ever been issued in your jurisdiction? If yes, on what type of technology? 

Yes, in respect to medicines under compulsory licence. 

Depending on the type of compulsory licence, described above:

1. Any person, including foreigners or foreign companies, can apply for a licence under the patent, if this person can prove its wish and readiness to use the patent.
2. An owner, including a foreign person or entity, of the invention patent (i.e. dependent patent), which cannot be used without the use of the patent, owned by a third party and subject to a compulsory licence.
3. Any person, including foreigners or foreign companies, can apply for a licence under the patent, if this person can prove its wish and readiness to use the breeding achievement.
4. Any person, including foreigners or foreign companies, although there have been no cases in practice.
5. Any person, including foreigners or foreign companies, could apply to the Russian government, although the procedure is not regulated.

Depending on the type of compulsory licence, described above:

1. Failure of the patent holder to use or sufficiently use the invention or industrial design within four years, and utility model within three years, from the day of the granting of the patent, which results in the insufficient amount of goods or services on the market (unless the patent holder proves that such failure is justified by the legitimate excuse); and refusal of the patent holder to enter into the licence agreement on the general market conditions.
2. Impossibility of the owner of the dependent patent to use the invention without a licence; refusal of the patent holder to enter into the licence agreement on the general market conditions; and the dependent patent shall be proved to be an important technical development and to have significant economic advantages compared to the invention/utility model to be compulsory licensed.
3. After three years from the day of the granting of the patent to the breeding achievement, the patent owner refuses to enter into the licence agreement on the general market conditions.
4. Existence of force majeure (e.g. natural disasters, accidents and emergencies); notification of the patent owner regarding such use; and subject to payment of the adequate compensation.
5. Decision of the government made in the interests of defence and security; notification of the patent owner regarding such use; and subject to payment ofadequate compensation.

6.1 Any negotiation required between the applicant and the right holder before applying for a compulsory licence? 

Negotiation requirement:

• Refusal to grant the licence is required for licences under p. (A) - (C).
• Not required for cases under p. (D) and (E).

6.2 Any urgent situation required in order to grant a compulsory licence?

Urgent situation requirement:

• Not required for licences under p. (A) - (C).
• Not explicitly required, but could be implied in certain cases, for p. (D) and (E).

6.3 Any minimum number of years required for the patent to be granted and/or implemented in order to be subject to compulsory licensing?

Minimum number of years:

• Required for licences under p. (A) and (C), as indicated above.
• Not required for cases under p. (B), (D) and (E).

Not specified.

For licences under p. (A) – (C), the relevant scope of the licence shall be determined by the court, including limitations of the scope of use. Limitation of the term and territory are theoretically possible, but has not been indicated in practice.

Not specified for cases under (D) and (E), but it is fair to assume that such limitations can be imposed.

The court for licences under p. (A) – (C).

No decision is required under p. (D). The notification of the patent holder is required.

The government of the Russian Federation under p. (E).

For licences under p. (A) – (C):

1. Written application to the court requesting a compulsory licence.
2. Evidence confirming compliance with the requirements for the compulsory licence indicated above (e.g. confirmation of refusal to grant a licence from the patent owner, dependence of the applicant’s patent under p. (B), etc.).
3. Not specified, but the first instance proceeding can take around one year with the possibility of appeal.

For p. (D):

1. Notification of the patent holder regarding free use of the patent.
2. N/A.
3. N/A.

For p. (E): the procedure is not regulated.

No, for licences under p. (A) – (C).

Not applicable for cases under p. (D), since a person/entity can start use without any decision.

Not regulated under p. (E), but theoretically it is possible.

For licence under p. (A):

1. Yes, under a written application to the court from the patent holder requesting a termination of the compulsory licence.
2. If the circumstances under which the compulsory licence has been granted have terminated and are unlikely to appear in future.
3. This should be specified in the court decision.

For licence under p. (B):

1. Not specified in the law, but there is a general right of the patent holder to request the court to terminate the compulsory licence.
2. Not specified.
3. This should be specified in the court decision.

For licence under p. (C):

1. Yes, under a written application to the court from the patent holder requesting a termination of the compulsory licence.
2. If the circumstances under which the compulsory licence has been granted have terminated or if the licensee breaches the compulsory licence.
3. This should be specified in the court decision.

For p. (D):

1. Not specified by the law, but the patent owner is generally allowed to challenge the use of the patent by a third party under this case.
2. Not specified, but it can be assumed that the patent holder can try and prove that the use without consent is no longer justified.
3. Not specified.

For p. (E):

1. Not specified by the law, but the patent owner is generally allowed to challenge the decision of the government granting the permission to use the patent.
2. Not specified, but it can be assumed that the patent holder can try and prove that the use without consent is no longer justified.
3. Not specified.

For licences under p. (A) – (C):

1. Yes.
2. The court shall indicate the amount of the royalty.
3. No.

For p. (D) – (E):

1. Person/entity using the patent or the government shall pay adequate compensation.
2. Not specified how to determine adequate compensation.
3. No.

For licences under p. (A) – (C): the court decision granting the compulsory licence can be further appealed.

Use of the patent under (D) and the decision of the government under (E) can be challenged through the court procedure.

For licences under p. (A), (B), (D) and (E): not specified in the law.

For licence under (C): on the basis of a court decision the patent owner shall provide the samples of breeding achievement (e.g. seeds) to the licensee in order to allow the latter to use the compulsory licence.  

Not specified by the law.

Theoretically, it is possible that the court will impose some confidentiality obligations, if any of the parties apply for this.

If such obligations are included in the compulsory licence, the patent owner has the right to prosecute the breach of relevant obligations committed by the licensee.

For licences under p. (A) – (C): this could be indicated in the court decision, if the scope of compulsory licence demanded by the licensee includes the right to export.

For cases under (D) and (E): theoretically, it is possible if export is necessary for the relevant purposes for which the patent is used (i.e. in case of force majeure and in the interest of defence and security).

No.

Use of the patent under p. (D) is theoretically possible, if the COVID-19 pandemic is duly recognised as force majeure and the use of the patent is properly justified for this purpose.

No, but during COVID-19 pandemic the government has tried to amend the provision of law related to p. (E) to allow the export of medical products under a government decision without consent of the patent owner. This initiative has not resulted in any actual amendments so far.

For licences under p. (A), (C): not specified.

For licence under p. (B): no, except for the case of assignment of the dependent patent, which is a basis for the compulsory licence.

For cases under (D) and (E): not specified but given that this is the permission rather than the licence, it is unlikely that this can be transferred or assigned.

Not specified.

Not specified.

Not specified.

For licences under p. (A) – (C): the court can theoretically limit the scope of compulsory licences to some specific distribution channels.

N/A