LEGAL PROTECTION AND USE OF COMMON TECHNOLOGIES

Battakhov P.P.
Candidate of Law Sciences, senior research associate of the sector of enterprise and corporate law of Institute of the state and right of the Russian Academy of Sciences (IGP RAS)

LEGAL PROTECTION AND USE OF COMMON TECHNOLOGIES

Abstract

This article describes the provision of legal protection and the use of common technologies of intellectual activity. The procedure for granting such legal protection varies. It is due to objective circumstances that allow to recognize the exclusive right to such result, which ensure the right holder the monopoly to use it.

Keywords: Object, technology, work, results, security, object, law, work, science

Concept of technology, classification of technologies. The term «technology» (from Greek techne — art, skill, ability and logos — the doctrine) was introduced in scientific use by the German scientist Johann Bekkman in 1772 in its application as the scientific discipline read in the University of Göttingen for the first time. In 1777 I. Beckman published the work «Introduction to Technology,» in which he defined technology as a science explaining in general, methodically and definitely, all types of work with their consequences and causes [1]

The unified technology is a form of complex object, which according to Article 1240 of the Civil Code of the Russian Federation means a set of several protected results of intellectual activity[2].
The common technology may also include results of intellectual activity not subject to legal protection on the basis of the rules of this section, including technical data, other information, this object of intellectual rights is complex and includes both protected and non-protected results of intellectual activity in the intellectual property regime. Therefore, common technologies are included in the group of complex intellectual property objects, so the right to use the results of intellectual activity as part of a single technology as part of a complex object belongs to the person who organized the creation of a single technology (the right to technology) on the basis of contracts with holders of exclusive rights to the results of intellectual activity, which are part of a single technology.

Part four of the Civil Code sets out the main provisions of the laws governing relations in the field of intellectual property, verified by practice. At the same time, the need to reflect new categories characteristic of the modern level of development of science and technology is taken into account, so the list of intellectual activity results subject to legal protection includes complex objects and common technologies. The category of unified technology is new to Russian law. There are no similar rules in foreign intellectual property law[3].

The results of intellectual activity listed in the exhaustive list of Clause 1 of Article 1225 of the Civil Code of the Russian Federation (intellectual property) are provided with legal protection. Legal protection is provided to these facilities provided that they meet the requirements set forth in Section of the Civil Code of the Russian Federation. The procedure for granting such legal protection varies. It is due to objective circumstances that allow to recognize the exclusive right to such result, which ensure the right holder the monopoly to use it. In this regard, the results of intellectual activity for which an exclusive right is recognized and protected on the basis of the creation of such an outcome and the results of intellectual activity for which such protection is granted on condition of their state registration differ.

Such results of intellectual activity as inventions, useful models, industrial designs, selection achievements are subject to mandatory state registration.
Without such compulsory state registration or any other formalities, legal protection is granted to the remaining result Intellectual activity. At the same time, the main sign of the protected result is creative character or novelty, in this case presumed. Optional (at the request of the right holder) state registration is allowed for computer programs, databases, integrated circuit topologies. However, this registration is not a ground for recognition of legal protection, it arises at the time of creation of these intellectual property objects.

If the result of intellectual activity requires compulsory state registration, the presumption of its compliance with the requirements imposed on it is not valid, and these results undergo a patenting procedure, including examinations aimed at establishing the declared result to the corresponding requirements.

The legislation of Russia does not provide for registration of a single technology as a complex object of intellectual property by entering relevant records about it in one state register. Legal protection of a single technology arises as a result of registration of each of its constituent results of intellectual activity by entering entries in the relevant register. Thus, information on each of the inventions included in the unified technology is entered in the State Register of Inventions of the Russian Federation, information on useful models – in the State Register of Useful Models of the Russian Federation, information on industrial samples – in the State Register of Industrial Models of the Russian Federation. In the same way, information about optional registered programs for computers, databases, topologies of integrated circuits are entered respectively in the Register of programs for electronic computers, in the Register of databases, in the Register of topologies of integrated circuits.

According to article 1544 of the Civil Code of the Russian Federation, a person who, in accordance with the law, has the right to technology is obliged to accept immediately Measures provided for by the legislation of the Russian Federation to recognize it and obtain rights to the results of intellectual activity included in the unified technology (Apply for patents, state registration of intellectual activity results, To establish a confidentiality regime for the relevant information, to conclude contracts on the alienation of exclusive rights and licensing contracts with holders of exclusive rights to the relevant results of intellectual activity, Are part of a single technology, and take other similar measures, If such measures were not taken before or during the creation of the technology. In cases where the Civil Code allows different ways of legal protection of intellectual activity results that are part of a single technology, the person who owns the right to the technology chooses the method of legal protection that is most in his interests and ensures practical application of the single technology.

In cases where, in accordance with paragraphs 1 and 2 of article 1546 of the Civil Code of the Russian Federation, the right to technology belongs to the Russian Federation or a constituent entity of the Russian Federation, The executor is obliged, in accordance with paragraph 2 of article 1544 of the Civil Code of the Russian Federation, to take measures to recognize it and obtain rights to the corresponding results of intellectual activity for the subsequent transfer of these rights to the Russian Federation and the constituent entity of the Russian Federation, respectively.

The analysis of the “Methodological Recommendations on Recognition of Intellectual Activity Results as a Single Technology” suggests that the identification procedure precedes the commission of legally significant actions, as a result of which a single technology receives legal protection as a complex object of intellectual property. This follows from paragraph 2, paragraph 3, of these recommendations: “Recognition of a single technology means that a person who has the right to a single technology has the obligation to recognize and acquire rights to the results of intellectual activity included in the The composition of a single technology and the performance of other obligations arising from the legal regime of a single technology. “

The common technology may include objects for which the right holder has the right to choose the type of legal protection. Thus, a solution capable of legal protection as a patented invention can be protected without patent as a secret of production (know-how), and a solution capable of legal protection of the appearance of an article as a patented industrial design can be protected without state registration as a work of design art as an object of copyright. Therefore, the management of the rights to common technologies, which includes the implementation of measures to formalize in accordance with the established procedure the rights to the results of intellectual activity included in the common technology, requires a decision on the choice of the method of legal protection in relation to the said intellectual property objects.

Management of the rights of the Russian Federation to the results of intellectual activity is carried out by state customers, on the order of which the specified results are created.
The management of intellectual activity rights of the Russian Federation includes the implementation of measures to formalize the intellectual activity rights of the Russian Federation used and/or created in the execution of state contracts.

These activities include, first, sending in writing to the contracting authority:

1. Notifications on results of intellectual activity with legal protection, belonging to the executor and created by him outside the scope of this state contract, which are planned to be used in Performance of this state contract (sent before the conclusion of the state contract);
2. Notification of the need to use exclusive rights of third parties to the results of intellectual activity;
3. Notification of the result of intellectual activity capable of legal protection, justifying the proposed procedure for its use and a proposal for its legal protection (sent within the time limit established by the State contract).

Secondly, sending the decision on legal protection of the obtained result of intellectual activity to the implementing organization by the state customer.
Third, application for issuance of a patent of the Russian Federation, patents of other countries, application for state registration of results of intellectual activity.

Fourthly, in case of the decision of the State Customer to keep the information on the result of intellectual activity in the mode of trade secrets, to send to them a notification to the executing organization about the registration of the secret of production (know-how) and transfer of this know-how to the State Customer.

In addition, the state customer makes a decision on behalf of the Russian Federation on early termination of the patent for the result of intellectual activity, as a result of which the legal protection of the registered result of intellectual activity ends and it is subject to the regime of public heritage (free and free use by any person).

With regard to intellectual activity results for which there is no state registration as a ground The occurrence of their legal protection, then the time when such legal protection arose should be determined by the time when they were created and given them an objective form of expression. This moment is recorded on the basis of primary documents, which are kept for the purpose of providing information in subsection 4 – information on the grounds of occurrence and scope of rights of the Russian Federation or the contractor of works to objects of accounting of the Unified Register of Research Results.

The “Recommendations on Management of Intellectual Activity Results Rights in Organizations have a Certain Interest in Solving Issues Related to Ensuring Legal Protection of Intellectual Property.

The analysis of the legislation of the Russian Federation shows that it pays less attention to the issues of legal protection of intellectual activity results included in the unified technologies, the rights to which belong to the Russian Federation, which are not subject to mandatory state registration, than to the issues of legal protection of patent law objects. In particular, it is not taken into account that such protection is granted in the field of copyright to an undefined and incomplete object and its part, from the moment they are given the form of objective expression as a result of creative activity, rather than from the moment when, for example, the employee will inform the employer about the creation of the object. It is therefore problematic to establish the time at which such an outcome is granted legal protection and is granted exclusive rights.

The State, while preserving the right to a single technology, cannot independently implement its practical application (implementation) through its authorities, so it must provide a legal opportunity for the practical application of a single technology to another person by transferring the right to it. In addition to the contract on alienation of the right to a single technology, it specifies a license contract or another contract containing elements of both contracts.

The general conditions and procedure for such transfer are contained in Article 1550 of the Civil Code of the Russian Federation, and the more extensive regulation is contained in the Law on Transfer of Rights to Unified Technologies.

According to Clause 1 of Article 1551 of the Civil Code of the Russian Federation, the unified technology should have practical application (introduction) mainly in the territory of Russia. The use of unified technology in the territories of foreign States is permitted only with the consent of the State customer or manager of budgetary funds for the transfer of the relevant right. The relations for granting such a right are regulated by the legislation on foreign economic activity. The procedure for obtaining such consent is established in Resolution No. 515 of the Government of the Russian Federation of 14 July 2010. By virtue of Clause 2 of Article 1551 of the Civil Code of the Russian Federation, transactions providing for the use of a single technology outside Russia are subject to mandatory state registration in Rospatent under the fear of invalidity. Taking into account changes of Chapter 9 of the Civil Code of the Russian Federation about transactions, and, in particular, new approach to regulation of invalid transactions, in edition of Subparagraph 2 of Paragraph 2 of Article 1551 of the Civil Code of the Russian Federation it is expedient to replace the word “invalidity” with the word “negligibility”.

Although the legislator regulates relations over the right to a single technology, the relevant norms of Russian law do not explicitly state what the nature of this right is. In some cases, it is specified that this is the right to use a single technology. However, this right may be absolute as a right of the right holder, constituting the content of the exclusive right, and may be relative as a licensing right. In addition, the common technology also includes the result of intellectual activity, which is not protected under the intellectual property regime, and therefore intellectual rights cannot arise on them at all. Consideration should also be given to the essential distinction between intellectual property objects that are part of a single technology, which give rise to each of them-specific uses, remedies and protections.

Rights to individual results, which are part of a single technology, are not accumulated in a single new right of independent legal nature, they are combined into the sum of rights only in order to ensure the possibility to use each of the results for the common purpose – in carrying out certain practical activities.

All the above leads to the conclusion that the use of the term “right” in the singular in relation to a single technology is incorrect, because, first, each of the results of intellectual activity, both protected and not protected under the intellectual property regime, gives rise to independent rights, and, second, the nature of the right to each of them acquired by the person who organized its creation is heterogeneous. In this regard, it seems appropriate to use this term in the plural form – “rights to a single technology,” and accordingly to make systemic changes to Chapter 77, other norms of the Civil Code of the Russian Federation, which refer to common technologies, as well as to other federal laws, for example, the law on the transfer of rights to common technologies, as well as to by-laws[4].

One of the most important tasks of the right to technology is to ensure the state interests in the creation and introduction of science and technology in Russia. The Russian Federation has the right to technology in at least three cases:

1. when the unified technology is directly related to the defense and security of the Russian Federation;
2. When, even before or after the creation of the unified technology, the Russian Federation financed work on bringing the unified technology to the stage of practical application, i.e. work on preparation of design and technological documentation, production of prototypes, test stands, etc.;
3. when the contractor has failed to provide all those actions necessary to recognize him or acquire exclusive rights to the results of intellectual activity included in the common technology. The law devotes six months to these actions, calculated from the moment of completion of the work on the creation of a unified technology[5].

Similar rules are established to fix the right to technology to the subject of the Russian Federation. Each of these entities has the right to technology created at the expense or with the involvement of funds of the budget of the subject of the Russian Federation. However, the right to technology may apply to the constituent entities of the Russian Federation.

Lie not in three, but only in two cases. We refer only to cases, first, to the acceptance by the subject of the Russian Federation of the financing of works to bring the unified technology to the stage of its practical application, carried out both before the creation of this technology and in the future, and second, to the failure of the executor to provide within the framework of the six months allocated by law (After completion of works on creation of unified technology) all actions necessary either to recognize it or to acquire exclusive rights to the results of intellectual activity included in the technology.

At the same time, the contractor does not remove the obligation to take measures to recognize him and obtain rights to the corresponding results of intellectual activity and then transfer them to the Russian Federation or its entity.

References:

1. Salomon I. What is Techology? The Issue of its origin and difinitions // History of technology. 1984. Vol. 1. P.113-156.
2. Anishimov, A. P. Civil Law of Russia. General part: textbook for academic baccalaureate/A. P. Anishimov, A. Y. Ryzhenkov, S. A. Charkin; Under the general edition of A. Y. Ryzhenkova. — 3rd ed., Redraw. And additional — Moscow: Yurayt Publishing House, 2014. — 504 p.
3. Cities O. A. Legal protection and use of common technologies created at the expense or with the involvement of budgetary funds. — Volters Kluver, 2010. P.45.
4. Commentary to the Civil Code of the Russian Federation (article-by-article). Part Four/E. P. Gavrilov, O. A. Cities, S. P. Grishayev, etc. M, 2007. P.123.
5. ConsultantPlus: legal news. Special issue «Commentary on the draft amendments to the Civil Code of the Russian Federation»//ATP