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Dear colleagues:
Under the 1973 Soviet Union statute, in force from 1978, patent term was 15 years. When the 1991 law was brought in, the term was set at 20 years from filing.
The Decree of the USSR Supreme Soviet enacting the 1991 law states (at Article 5) that ‘patents for inventions issued prior to 1 July 1991 whose terms have not expired are equated by legal status to the patent issued on the basis of the USSR Law: “On inventions in the USSR”’. [i.e. the new 1991 law].
Should this be interpreted to mean that all in-force 1973 law patents were automatically extended to 20 years? If so, the last cases to be granted, just before 1 July 1991, would not be due to expire until late 2010 or early 2011 (assuming a filing date of late 1990 or early 1991 - prosecution times were quite short). Can anyone comment?
Thanks
Stephen
1 Comment
Hide/Show CommentsSep 02, 2011
Aleksandr Belinskiy
Dear Stephen,
It is well-accepted legal interpretation, that the language of Art. 5 of The Decree of the USSR Supreme Soviet enacting the 1991 “On inventions in the USSR”’ is the legal basis for patent term extension from 15 to 20 years for patents granted under 1973 Soviet Statute of Inventions. The validity of these patents is confirmed in Art. 3 of the introductory law of 1992 Russian Patent Law (Decree No. 3518-1 of the Supreme Soviet of the Russian Federation, dated Sep. 23, 1992) with “ a prior use” restriction imposed by paragraph 2 the Art. 3 which granted free use of the invention after expiration of 15-year term for those who, prior to July 1, 1991, “made the necessary preparations for the use of an invention which is protected by a patent of the USSR”).
For detail discussion of transitional issues of former SU patent documents see: Sergeev A.P. On enactment of Patent Law of Russian Federation [full text in Russian]. Pravovedenie, 1993. - № 2. - pp. 18 – 25. (or Sergejew, A. Aktuelle Rechtsprobleme im Zusammenhang mit der Einführung des russischen Patentgesetzes. WIRO Wirtschaft und Recht in Osteuropa, 2(6), 1993, p. 185-89 (biblio)). See also a statement of Russian Government on validity period of patents granted in the former USSR in Accession of the Russian Federation. Treatment of Trade-Related Aspects of Intellectual Property Rights. Supplement to the Memorandum on the Foreign Trade Régime of the Russian Federation (L/7410) (WT/ACC/RUS/7, 25 October 1995, Sec. 2 (e), para. 1 and 2 at p.15 and Sec.2 (d), the last paragraph at p.15).
Thus, as you pointed out, patents granted under 1973 Soviet Statute should all expired by now, unless they are patents for for pharmaceuticals, pesticides and agrochemicals and were subject of patent extent term extensions under Par. 2 of Art. 3 of 2003 Revision of 1992 Russian Patent Law (Art. 1363(2) of Civil Code of Russian Federation (Part IV)). I do not aware about SU patents granted under pre-1991 law which were extended, but know an example of still-in-force RU pharmaceutical patent which was based on a continuation of application filed under 1973 Statute and later was extended under above 2003 provision.
As a different legacy example of 1973 Statute, look at a patent RU 1621449 C (SU 1621449 A1). The inventor certificate SU 1621449 A1 was awarded under pre-1991 law (but not published until 10.09.1996, application 4682415 being filed 24.04.1989). In 1997, this inventor certificate was converted to a patent of Russian Federation (under 1992 Russian Patent Law with the same number as author certificate) on the remaining term 20-year term (see Art. 7 of above-mentioned Decree No. 3518-1), i.e. until 25.04.2009. RU 1621449 C should be expired after that day, however, in 14 month later, in August 2010, Rospatent announced that RU 1621449 was extended for additional five years until 25.04.2014.
Regards,
Alex
Aleksandr Belinskiy
Patent Information Consultant
Arlington, VA
E-mail: abelinskiy at aol dot com