As noted in our client alert on March 17, 2022, Cooley continues to monitor the ever-changing situation in Russia and Ukraine following Russia’s invasion of Ukraine in February 2022. Provided below is updated information regarding recent intellectual property (IP) developments in Russia and Ukraine. (You can find additional information about financial sanctions and export control restrictions imposed on Russia and Belarus by the United States, the United Kingdom and the European Union in our March 4 client alert.)
Recent developments
Martial law in Ukraine
Martial law in Ukraine has been extended until at least April 25, 2022. The Ukrainian Intellectual Property Office recently issued a notice confirming that any deadlines missed by applicants residing or domiciled in Ukraine during this period of martial law can be reinstated once martial law is lifted. However, because the Ukrainian Intellectual Property Office remains operational, all foreign IP owners should continue to timely satisfy all deadlines.
Accordingly, in the absence of your instructions to the contrary, your Cooley team will work to satisfy all Ukrainian IP deadlines as quickly as possible. Please let your Cooley team know if you decide that you are no longer interested in maintaining any existing IP filings in Ukraine.
Russian patents
While our previous client alert referred to a Russian decree that removed protections for patent holders registered in “unfriendly countries,” we have been informed by local counsel in Russia that this decree may be more limited in scope than has previously been reported.
Specifically, this decree related to the implementation of Article 1360 of the Russian Civil Code, which provides for compulsory licenses of IP rights when necessary to ensure the defense and security of the state, and to protect the life and health of citizens, and requires the payment of appropriate compensation to the owner of the IP. Thus far, only three compulsory licenses have been issued in Russia – all for inventions related to COVID-19 treatments – and, until recently, the compensation amount for such compulsory licenses was set at 0.5% of the sales. On March 6, 2022, however, the Russian government issued its decree setting this compensation rate at 0% for IP owners from “unfriendly countries.”
Therefore, according to our Russian contacts, rather than establishing a 0% compensation scheme for all patents registered to holders in “unfriendly countries,” this decree relates to compensation for compulsory licenses issued in accordance with Article 1360 and was issued in response to the sanctions imposed on Russia. If you are concerned regarding the impacts of these developments on your business, we recommend seeking the advice of local counsel.
Your Cooley team will continue to monitor developments regarding IP protections in Russia.
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