Transfer of IP rights in Russia

A patent can be assigned through a legal transaction, such as sale or merger, or by law, such as in the case of succession, bankruptcy or execution of a court decision.

An assignment deed must be executed in written form. No notarisation or legalisation of the assignment deed is required, however it must be registered with the Federal Service for Intellectual Property (“Rospatent”). The assignment takes effect on the date of its registration. 

To record a patent assignment, the following documents are to be filed with Rospatent:

1. In case of application being filed by one party to the assignment agreement:
   1. application under a special form signed by a party to the patent assignment agreement (original);
   2. patent assignment agreement (original) OR notarised extract from the patent assignment agreement OR notification signed by the parties to the agreement confirming assignment of the patent (original);
   3. power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
   4.  proof of payment of state fees (original or a copy).
2. In case of application being filed by both parties to the assignment agreement:
   1. application under a special form signed by both parties to the patent assignment agreement (original);
   2. power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
   3. proof of payment of state fees (original or a copy).

2.1 Are original supporting documents essential or are copies sufficient?

In most cases originals are required (please see above).

2.2 Are there any legalization and/or notarization and/or translation requirements?

All documents are to be provided in Russian or with a translation into Russian certified by a notary. No other legalisation or notarisation requirements are imposed

2.3 Is there a must to use a specific form?

Yes, a special application form is to be used.

Failure to register the patent assignment entails its invalidity. 
The record in the patent register of Rospatent has a constitutive effect.

No, but the assignment cannot be made without the consent of all proprietors (i.e., the assignment agreement is to be signed by all proprietors).

If the applicant is registered outside of Russia, he must appoint a professional representative (patent attorney) to handle his affairs.

3,300 RUB (EUR 36.5) for a patent + RUB 1,700 (EUR 19) for each additional patent assigned under the same agreement.

Russian law provides for exclusive and non-exclusive licences. In addition, a proprietor may grant to the public the right to use an invention, utility model or industrial design through an open licence. Compulsory licences may also be granted by a court decision. All of these must be recorded with Rospatent to become effective.

To record a patent licence, the following documents are to be filed with Rospatent: 

• application under a special form signed by a party to the patent licence agreement (original);
• patent licence agreement (original) OR notarised extract from the patent licence agreement OR notification signed by the parties to the agreement confirming licensing of the patent (original);
• power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
• proof of payment of state fees.

8.1 Are original supporting documents essential or are copies sufficient?

In most cases originals are required (please see above).

8.2 Are there any legalization and/or notarization and/or translation requirements?

All documents are to be provided in Russian or with a translation into Russian certified by a notary. No other legalisation or notarisation requirements are imposed.

8.3 Is there a must to use a specific form?

Yes, a special application form is to be used.

Failure to register the patent licence entails its invalidity. 

The record in the patent register of Rospatent has a constitutive effect.

If the applicant is registered outside of Russia, he must appoint a professional representative (patent attorney) to handle his affairs.

3,300 RUB (EUR 36.5) for a patent + RUB 1,700 (EUR 19) for each additional patent licensed under the same agreement.

Yes, patents can be pledged. In order for the pledge to become effective, it must be registered with Rospatent.

A trademark can be assigned through a legal transaction, such as sale or merger, or by law, such as in the case of succession or bankruptcy or execution of a court decision. 

To become effective, registration of the assignment with Rospatent is required. 

To record a trademark assignment, the following documents are to be filed with Rospatent:

1. In case of application being filed by one party to the assignment agreement:
   1. application under a special form signed by a party to the trademark assignment agreement (original);
   2. trademark assignment agreement (original) OR notarised extract from the trademark assignment agreement OR notification signed by the parties to the agreement confirming assignment of the trademark (original);
   3. power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
   4. proof of payment of state fees (original or a copy).
2. In case of application being filed by both parties to the assignment agreement:
   1. application under a special form signed by both parties to the trademark assignment agreement (original);
   2. power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
   3. proof of payment of state fees (original or a copy).

2.1 Are original supporting documents essential or are copies sufficient? 

In most cases originals are required (please see above).

2.2 Are there any legalization and/or notarization and/or translation requirements?

All documents are to be provided in Russian or with a translation into Russian certified by a notary. No other legalisation or notarisation requirements are imposed.

2.3 Is there a must to use a specific form?

Yes, a special application form is to be used.

Failure to register the assignment entails its invalidity. 

The record in the trademark register of Rospatent has a constitutive effect.

No, but the assignment cannot be made without the consent of all proprietors (i.e., the assignment agreement is to be signed by all proprietors). 

However, Russian law also features the notion of collective mark. A collective mark is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise. Collective marks cannot be assigned or licensed to third parties.

In case a trademark is only partially assigned (so-called trademark division), the main requirement is that the goods or services in the divisional registration may not overlap with the goods or services that remain in the original registration. The divisional registration preserves the filing date and the priority date of the original registration.

If the applicant is registered outside of Russia, he must appoint a professional representative (patent attorney) to handle his affairs.

13,500 RUB (EUR 149) for a trademark + RUB 11,500 (EUR 127) for each additional trademark assigned under the same agreement.

A trademark can be subject of exclusive or non-exclusive licences for all or part of the goods or services for which it is registered and for the whole or part of the Russian territory. A trademark licence agreement must be executed in written form.

To become effective, registration of the licence agreement with Rospatent is required.

To record a trademark licence, the following documents are to be filed with Rospatent: 

• application under a special form signed by a party to the trademark licence agreement (original);
• trademark licence agreement (original) OR notarised extract from the trademark licence agreement OR notification signed by the parties to the agreement confirming licensing of the trademark (original);
• power of attorney for the signatory in case the application is signed by a party’s representative (original; notarisation is not required);
• proof of payment of state fees.

9.1 Are original supporting documents essential or are copies sufficient? 

In most cases originals are required (please see above).

9.2 Are there any legalization and/or notarization and/or translation requirements?

All documents are to be provided in Russian or with a translation into Russian certified by a notary. No other legalisation or notarisation requirements are imposed.

9.3 Is there a must to use a specific form?

Yes, a special application form is to be used.

Failure to register the trademark licence entails its invalidity. 

The record in the trademark register of Rospatent has a constitutive effect.

A trademark can be licensed for all or part of the goods or services for which it is registered and for the whole or part of Russia. Such limitations are to be prescribed in the licence agreement, otherwise no specific formalities are imposed. 

If the applicant is registered outside of Russia, he must appoint a professional representative (patent attorney) to handle his affairs.

13,500 RUB (EUR 149) for a trademark + RUB 11,500 (EUR 127) for each additional trademark licensed under the same agreement.

Yes, trademarks can be pledged. In order for the pledge to become effective, it must be registered with Rospatent.