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)
THE MAIN WAYS OF LEGAL PROTECTION OF RESULTS OF INTELLECTUAL ACTIVITY IN RUSSIA
Abstract
In article legal regulation of use and protection of intellectual property is analyzed. Formation of the effective national legislation and positive practice of law enforcement in the sphere of protection and protection of intellectual property and also the effective mechanism of the legal regulation of intellectual activity (RIA) has to become result of this process.
Keywords: contract: way, results, exclusive right, patent, protection, applicant
Ways of legal protection of results of intellectual activity depend on features of a type of the result, its essence, those its elements in which the creative beginning is embodied. First of all the nature of creativity is considered owing to what the concrete result is received. In this regard allocate group of results which can be created independently and independently of each other more than one author, and group of results which cannot be created thus. As a rule, in the first case the content of such result as a product of creative processing of objective perception of data on the world around is protected. An example are results of technical creativity, such as inventions created as a result of creative judgment of open laws of the nature which are recognized as objects of patent law. In the second case it is protected, not contents, and a result form as a product of subjective creative processing of these data. It belongs, first of all, to works in the field of literature and art — to subjects of copyright.
As the exclusive right to result of intellectual activity represents a legal prerequisite for monopoly of the owner in the economic sphere, the question of the one who becomes such owner is solved much more simply concerning those results which objectively can be created only by one author or in common two or more authors. In it the question of a priority is not necessary. Moreover, the creative nature of such result is presumed, it does not undergo any testing for compliance of the requirements to it established in the law.
More difficult the situation with results which can be independently created by different authors is. In this case it is necessary to establish a priority of one of such authors for recognition behind it the exclusive right to result. According to the general rule of Article 1381 of the Civil Code of the Russian Federation the priority of an invention, useful model or an industrial sample is established by date of application for the corresponding result in federal executive authority of intellectual property (a national priority) which functions are assigned by the Resolution of the Government of the Russian Federation of March 21, 2012 No. 218 to Federal Service for Intellectual Property (Rospatent). Also the conventional priority which is established by date of submission of the first application for an invention, useful model or an industrial sample in the State Party of the Parisian convention on protection of industrial property of 1883 at a supply condition in federal executive authority on the intellectual property of the application for an invention or useful model within twelve months from the specified date, and the application for an industrial sample — within six months from the specified date (Article 1382 of the Civil Code of the Russian Federation) can be used for these purposes.
In this case legal protection is carried out by means of the patent (patent protection). The patent for an invention, useful model or an industrial sample as the security document at the same time certifies a priority of an invention, useful model or an industrial sample, authorship and the exclusive right to an invention, useful model or an industrial sample. Also the volume of legal protection of the intellectual rights is defined by the patent. So, protection of the intellectual rights for an invention or useful model is provided on the basis of the patent in the volume determined by the formula of an invention which is contained in the patent or according to useful model, and on an industrial sample in the volume determined by set of the essential signs of an industrial sample which found reflection on the images of appearance of a product which are contained in the patent for an industrial sample (Article 1354 of the Civil Code of the Russian Federation).
Unlike subjects of copyright, objects of patent rights undergo testing in the form of examinations (formal and in essence), in the purpose of establishment of compliance of the stated result to that object for which the patent and also those requirements which to it are established by the legislator (patentnosposobnost conditions) is asked. By results of examinations the decision on issue of the patent or on refusal in its delivery is made. On the basis of the decision on issue of the patent for an invention, useful model or an industrial sample Rospatent makes registration of the stated result by entering of an invention, useful model or an industrial sample into the corresponding state register — the State register of inventions of the Russian Federation, the State register of useful models of the Russian Federation and the State register of industrial samples of the Russian Federation and grants the patent for an invention, useful model or an industrial sample.
Features of legal protection of confidential inventions, including the special order of their patenting is provided in Articles 1401, 1402 Civil Code of the Russian Federation (see in more detail Section 3.3.)
In modern conditions when scientific and technical progress attached to the COMPUTER naivazhneyshy significance, the computer programs are used as the main means of an intensification of production and increase in labor productivity. In this regard, it is obvious that the value of legal protection of the computer programs as in most cases considerable financial means are spent for their development, at the same time the computer programs many times increases, having high cost, at the same time are very vulnerable in their illegal use.
However, the question of legal protection of these intellectual property items acquired the relevance much earlier, namely from the moment of creation of the first programs. For ensuring their protection at the level of the law the world practice tried all legal institutes which were possible to be applied to legal regulation with their participation. So, attempts to apply contract law, patent law, the right for trademarks and know-how and also copyright and the right to the protection from unfair competition were made.
Concerning a number of RID their optional state registration in Rospatent is allowed. The computer programs protected by copyright and databases and also topology of integrated chips belong to such objects. In case of their registration Rospatent grants to the applicant the certificate[1].
It should be noted that the World Intellectual Property Organization (WIPO) approved Standard provisions on protection of the software of computers. The purpose of these provisions consisted in assistance to various countries in addition of their national laws directed to protection of the software, at the same time the called provisions were based on the way use of standards of copyright and norms on suppression of unfair competition. It is necessary to tell that any of the countries of members of VOIS as a result did not use contained in Standard provisions of the recommendation in the laws[2].
At the regional level on May 14, 1991 the EU Council accepted Directive No. 91/250/EEC O to legal protection of the computer programs which defined the basic provisions intended for obligatory inclusion in the national legislation under copyright of EU member states. It is interesting to note that many provisions of the called Directive were apprehended when developing the domestic legislation on legal protection of the computer programs.
Such registration of the computer programs and databases is not the title legal fact as the rights for them arise at the time of their creation (the actual way), and the owner during the term of their action can register voluntarily such program or such base. Registration has character in some way of the right confirming legal fact as the data entered in the Register of the computer programs or in the Register of databases are considered as reliable as other is not proved. Therefore, Rospatent does not guarantee absolute reliability. It leans at registration for the information provided by the applicant. Therefore the applicant bears responsibility for reliability of the information (Article 1262 of the Civil Code of the Russian Federation) provided for the state registration.
Similar conclusions can be drawn concerning the state registration of topology of integrated chips on the basis of the analysis of standards of Articles 1452 of the Civil Code of the Russian Federation.
The computer programs, databases and topology of integrated chips which contains the data which are the state secret are not subject to the state registration. The person who submitted the application for the state registration (applicant) bears responsibility for disclosure of data on the computer programs, databases, topology of integrated chips which contain the data which are the state secret according to the legislation of the Russian Federation[3].
The mode of privacy plays a large role when choosing a way of protection of RID used in products This mode is defined by the nature of data to which there is no access legally to an unlimited circle of people. For RID it is two modes – the state secret and a trade secret. If the owner has the right to set or remove the mode of a trade secret at discretion, then the mode of the state secret is set without fail, and change of degree of privacy is also carried out in cases and in the order established by the law. At the same time establishment of the mode of a trade secret which is defined by the provisions of the law about a trade secret concerning such results of intellectual property which fall under the mode of the state secret which is defined in the Law on the state secret is not allowed.
Establishment and observance of the mode of a trade secret for legal protection of results of intellectual activity in the scientific and technical sphere representing an alternative of subjects RID, information on which is in open (unlimited) access and concerning which it is impossible to introduce the privacy regime as, for example, concerning confidential inventions. However, to provide the mode of a trade secret, a product in which it is used should not give the chance to open this secret by simple survey or commission of actions which allow not to cause it damage (for example, dismantling on device components, carrying out the chemical analysis of substance).
The choice of an open way of protection of RID in the scientific and technical sphere, for example inventions by its patenting when data on an object become available to an uncertain circle of people from the moment of the publication of data on the submitted applications, or such way at which these data are protected in the mode of a trade secret depends on the owner. And he has to realize all consequences of this choice, both positive, and negative[4]. The fact that RID protected in the mode of a trade secret in the presence of other conditions of protectability will be qualified as know-how (know-how) is positive. To such conditions treat, first, presence of the real or potential commercial value at an object owing to uncertainty to the third parties, secondly, lack of access to it of an uncertain circle of people as information legally.
Thus, it is easy to see that the choice of protection in know-how mode concerning result, potentially capable to patent legal protection, significantly reduces risk of unauthorized use by other persons, and, therefore, and risk of emergence of the counterfeit products competing with products of the owner. But at the same time there is a risk that identical technical solution will be patented by other person, and access to information about him will be available to anyone. In this case it is necessary to be ready to the fact that it will be necessary to prove the rights to such result based on the right of a prezhdepolzovaniye in court. According to Paragraph 1 of Article 1361 of the Civil Code of the Russian Federation the person who before date of a priority of an invention, useful model or an industrial sample honestly used in the territory of the Russian Federation the identical decision created irrespective of the author or the decision different from an invention only equivalent signs or made necessary preparations to it, keeps the right for further gratuitous use of the identical decision, but without expansion of volume of such use.
The question of what in that case it is necessary to understand as use volume was considered at a meeting of Scientific and advisory council at Intellectual Property Rights Court. By results of this meeting the court prepared the Reference on the questions concerning disputes on the right of a prezhdepolzovaniye in which paragraph 2 two approaches for determination of such volume are used at the same time: legal and economic.
Legal approach is caused by use of provisions of Paragraph 1 of Article 1361 of the Civil Code of the Russian Federation use of an invention, useful model or an industrial sample is established in relation to Paragraph 3 of Article 1358 of the Code:
- the invention is recognized used in a product or a way if the product contains, and in way each sign of an invention given in independent point of the invention formula which is contained in the patent is used;
- the useful model is recognized used in a product if the product contains each sign of useful model given in independent point of the formula of useful model which is contained in the patent;
- the industrial sample is recognized used in a product if this product contains all essential signs of an industrial sample or the set of signs making a pas of the informed consumer the same general impression what makes the patented industrial sample provided that products have similar appointment.
Further Intellectual Property Rights Court notes that «according to Paragraph 2 of Article 1354 of the Civil Code of the Russian Federation the formula which is contained in the patent determines the volume of protection of the intellectual rights for an invention or useful model.
Therefore expansion in any way of volume of use of an invention, useful model (change of signs, change of application on a certain purpose of a product, change of purpose of a product or way, change of ways of receiving a product, etc.) or an industrial sample (change of essential signs of a product or set of signs) attracts need of receiving with a prezhdepolzovatel of permission of the owner of the patent for use of the invention protected by the patent, useful model or an industrial sample, including in case of creation by a prezhdepolzovatel of a dependent invention or useful model (Article 13581 of the Civil Code of the Russian Federation)».
Economic approach was shown that the above conclusion was followed by the instruction on the fact that «at the same time quantitative change of output (in pieces, kilograms, meters, etc.) should not exceed use volume (necessary preparation for use) taking place before date of a priority of an invention, useful model or the industrial sample including established by court at recognition of the right of a prezhdepolzovaniye[5].
For determination of such quantity the arbitration court according to the petition of the person participating in business or with the consent of the persons participating in business can appoint financial and economic examination according to Part 1 of Article 82 of the Arbitration procedural code of the Russian Federation».
It is also necessary to note that the right of a prezhdepolzovaniye excludes a possibility of its free turn as owing to Paragraph 2 of Article 1361 of the Civil Code of the Russian Federation the right of a prezhdepolzovaniye can be transferred to other person only together with the enterprise at which use of the identical decision took place or necessary preparations to it were made.
The order of protection of inventions, useful models and industrial samples by their patenting creates a serious problem. It is that in the law there is a legal uncertainty concerning the moment of emergence of the exclusive right.
In this regard in legal community there was a discussion and positions were seriously shared as each of supporters considered such moment the terms specified in Chapter 72 «Patent law» which had absolutely other appointment. It is an application term, term of the publication of data on the submitted applications, term of making decision on issue of the patent, term of the state registration of the stated result, term of issue of the patent, term of the publication of data on the granted patents. It is obviously necessary to analyse only three options. The first option: the term of registration of the stated result since in this date it is recognized as the protected object, and, therefore, concerning it at the same moment arises the exclusive right of the applicant. However at this moment still there is no patent, and, therefore, the applicant did not receive the status of a patenoobladatel yet. The second option: issues of the patent, because at this moment at the applicant on hands the patent which certifies presence at it of the exclusive right. However this fact does not become property of an uncertain circle of people yet. The information about the subject of the exclusive right (patent holder) will become available to other persons only after publication of data on the granted patents.
Therefore for the benefit of other persons the publicity of such action as issue of the patent is necessary. And in this case the third option is represented acceptable: date of publication of data on the granted patent. This third option is used abroad, for example, in China. However, many Russian civilians including the presiding judge by the intellectual rights, believe reasonable to resolve this legal uncertainty, having pointed to date of issue of the patent, as for date of emergence of the exclusive right to an invention, useful model or an industrial sample. Really, from the moment of the publication Rospatent of data on the submitted applications until issue of the patent, to the stated result provides temporary legal protection which can turn into patent protection. Means, any person acting honestly and reasonably has to realize risk of violation of the rights to this result.
In this regard the word is recommended in Paragraph 1 of Article 1358 of the Civil Code of the Russian Federation «Exclusive Right to an Invention, Useful Model or Industrial Sample» to «Patent holder» to add the words «from date of publication of data on issue of the patent for an invention, useful model, industrial sample according to the paragraph of Article 1394 of the present Code». In this case the complemented norm will sound so: «1. The patent holder from date of publication of data on issue of the patent for an invention, useful model, industrial sample according to the paragraph of Article 1394 of the present Code possesses the exclusive right of use of an invention, useful model or industrial sample according to Article 1229 of the present Code in any way (the exclusive right to an invention, useful model or an industrial sample) which is not contradicting the law, including in the ways provided by Paragraph 2 of the present article. The patent holder can dispose of the exclusive right to an invention, useful model or an industrial sample».
References:
- Eremenko V.I. About legal protection of the computer programs in the Russian Federation//the Legislation and economy. 2010. No. 8. Page 51 — 70.
- Model Provisions on the Protection of Computer Software / WIPO Publication N 814 (R). WIPO, 1978.
- Определение Верховного Суда РФ от 07.06.2019 N 304-ЭС19-7700 по делу N А70-7180/2018. «КонсультантПлюс».
- Sklovsky K.I. Property in civil law. 4 prod. M, 2008. Page 296.
- Contract on harmonization of the rights of industrial property / WIPO Doc. N PLT/DC/3 (dec. 21, 1990).