From the Desk of Sean Solberg
March 24, 2022 | Sean Solberg
In addition to the economic steps taken to punish Russia for its invasion of Ukraine, the U.S. government’s actions have now expanded to the patent world, which will ultimately impact U.S. companies with Russian patents.
On March 4, the U.S. Patent and Trademark Office announced that it had terminated engagement with the equivalent patent and trademark office in Russia (called “Rospatent”), along with the Eurasian Patent Organization, which is also based in Russia, and the IP office in Belarus. Subsequently, on March 11, the USPTO terminated its Global Patent Prosecution Highway (“GPPH”) relationship with Rospatent. The GPPH is a program that allows for acceleration of the patent application process in one GPPH member country based on approval of the corresponding application in another member country. As a result of this termination, a U.S. patent application will no longer be fast-tracked based on approval of a corresponding Russian application and any applications previously placed on the fast-track will be removed.
Unsurprisingly, Russia has responded by punishing U.S.-based companies with intellectual property rights in Russia. The Russian government issued a decree on March 5 that all Russian patents owned by U.S. companies (or companies from any of a list of “unfriendly countries”) can be infringed without compensation to the patent holder. In other words, Russian patents owned by U.S. companies are now essentially worthless, and U.S. companies will no longer be able to prevent replication and commercialization of their inventions by third parties in Russia.
Experts speculate that a similar decree may be forthcoming for trademarks and copyrights. In fact, the Ministry of Economic Development in Russia issued a statement that consideration is being given to “removing restrictions on the use of intellectual property contained in certain goods whose supply to Russia is restricted.”
Any U.S. companies with intellectual property rights in Russia need to be prepared for additional retaliatory actions by Russia. Our patent attorneys are monitoring this ongoing situation and will continue to track any additional steps taken by the U.S., Russia and other countries that impact our clients’ intellectual property rights.