Russia Permits Uncompensated Use of Certain Patents without Patentee Consent

By Donald Zuhn --

In a Resolution issued on March 6, 2022, the Russian Federation introduced an amendment to the methodology for determining the amount of compensation to be paid to certain patent holders for the use of an invention, utility model, or industrial design without the patent owner's consent.  In particular, for patent holders who are "associated with foreign states" that commit "unfriendly actions" in relation to Russian legal persons and individuals, the amount of compensation to be awarded to the patent holder for the unauthorized use an invention, utility model, or industrial design shall be "0 percent of the actual proceeds" derived from the production and sale of goods or performance of work and provision of services related to the use of the invention, utility model, or industrial design.  The Resolution, which took effect as of the date of its publication, specifies that patent holders will be considered to be associated with foreign states for the purposes of the Resolution when the patent holders have citizenship of such states or their place of registration, primary business activities, or primary profit-making activities are located in such states.

A list of states that Russia has deemed to have committed "unfriendly actions" in relation to Russian legal persons and individuals is set forth in an Order that was issued by the Russian Federation on March 5, 2022.  In particular, the Order indicates that the following foreign states and territories committed unfriendly actions:

Australia
Albania
Andorra
Great Britain -- including the island of Jersey and the territories of Anguilla, British Virgin Islands, and Gibraltar
Member States of the European Union
Iceland
Canada
Liechtenstein
Micronesia
Monaco
New Zealand
Norway
The Republic of Korea
San Marino
North Macedonia
Singapore
United States of America
Taiwan (China)
Ukraine
Montenegro
Switzerland
Japan

A machine translation of the Resolution can be found here, and a machine translation of the Order can be found here.

Hat tip to fellow MBHB partner Aaron Gin for alerting us to the Resolution and Order and for obtaining machine translations of the documents, and to the Baker McKenzie Sanctions & Export Controls Update blog for reporting on the Resolution and Order (see Denis Khabarov, Margarita Divina, and Maxim Kalinin, "Russia adopts zero compensation to patent owners from unfriendly countries," Sanctions & Export Controls Update, March 10, 2022).

Comments

[skeptical]

Thanks for the substantive materials.

As I wondered earlier, do the esteemed authors of this blog have any views of the resolution/order in view of Russia's prior treaty (and the like) commitments?

Would such de facto renunciation of those responsibilities harbor retaliatory actions under participation in WTO or GATT/GATS?

[SirChecker]

Has anyone identified any Russian patent firms on the SDN List?

[Donald Zuhn]

SirChecker:

Thank you for raising this issue, which we are looking into.

Don

[Martin H Snyder]

Oh now they've done it....