On February 24, 2022, Russia launched an attack on Ukraine. To this day, the conflict continues unabated. It is also illustrated in the field of industrial property.
Since the early days of Russia’s invasion of Ukraine, many countries and companies have announced economic and legal sanctions against the Russian state. On March 6, 2022, the government of the Russian Federation adopted a decree authorizing the use of innovations protected by patents from non-allied countries. This use would then take place without any obligation to pay compensation to the owners of these patents.
The patent, a national industrial property title
A patent is an industrial property right designed to protect technical solutions. The owner(s) of the patent obtain(s) the right to exploit the processes described, and above all, enjoy a 20-year monopoly. The latter allows the inventor(s) to exploit the invention themselves and/or grant licenses to third parties. In all cases, licenses are subject to contractual negotiations.
Important fact: a patent is a title of ownership valid on a national territory. A patent issued in France by the INPI is valid for France. While PCT procedures for foreign patents and European patents make it easier to protect an invention in several territories, industrial property rules are governed by national governments. As such, the World Intellectual Property Organization (WIPO) is a United Nations (UN) institution that regulates IP rules worldwide.
What does the Russian decree of March 6, 2022 say?
The Russian Civil Code allows the government, in cases of extreme necessity, to authorize the use of utility certificates, patents and designs without the consent of the owners. To do so, so-called “proportional” compensation must be paid. This is an exceptional measure designed to speed up innovative initiatives in cases of force majeure.
The decree of March 6, 2022 provides for an amount of 0% when the owners of industrial property titles are from countries that commit hostile actions against Russia and Russian nationals. In this sense, countries that issued sanctions against the Russian Federation following the attacks on Ukraine no longer have patents valid in Russia. More precisely, the patent is valid, but does not give the right to any compensation as would be the case in a classic licensing contract. In this case, the Russian state is imposing a free license on all owners of IP titles from the 48 non-allied countries listed.
Non-compensation for the use of innovations applies to :
- with a nationality on the list of 48 countries,
- of patents whose principal place of registration is in one of the 48 countries.
This provision also extends to inventions whose revenues are mainly generated in a territory that appears on the list of countries considered hostile by the Russian government.
The legal battle extended to trademark law
On another front, the “Peppa Pig” and “Papa Pig” characters popular with children were the subject of an infringement action brought by Hasbro against entrepreneur Ivan Kozhevnikov, who had allegedly drawn his own versions of the characters on Russian territory.
In Kirov, Russia, Judge Andrei Slavinsky ruled in favor of Kozhevnikov, authorizing him to use Peppa Pig and Papa Pig. The counterfeit images of the two characters may be used without risk of penalty for intellectual property infringement. Judge Slavinsky said the decision was a response to Western sanctions on Russia.
