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Bulletin of Federal institute of industrial property

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Vol 4, No 4 (2025)
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ISSUES OF INTELLECTUAL PROPERTY RIGHTS PROTECTION AND ENFORCEMENT

286–297 486
Abstract

This article addresses contemporary issues concerning regulatory requirements and intellectual property rights in the context of pharmaceutical manufacturing conducted abroad. In view of the increased interest within the Russian Federation in the application of the legal “exception” provided under article 1359 of the Civil Code of the Russian Federation – which establishes that the one-time preparation of medicinal products in pharmacies pursuant to a physician’s prescription does not constitute an infringement of the exclusive right to an invention – the article undertakes a comparative examination of how this exception is implemented in other jurisdictions. It analyzes prevailing interpretations of the “one-time” criterion in the sphere of pharmaceutical compounding, as well as the observable trend toward relaxing constraints on both the timeframe and volume of such preparation. Furthermore, the article considers international experience with risk-based regulatory approaches designed to ensure the safe and compliant use of individually prepared medicinal products.

298–307 145
Abstract

The article presents the results of a study on problematic issues related to the disclosure of information on inventions and utility models based on the use of AI in a patent application. Based on the analysis of foreign experience and domestic law enforcement practice, substantiated proposals have been developed for adjusting the requirements for application documents and the rules for their examination in the form of draft legal norms. In particular, lists of AI features that can characterize AI in the claims are formulated, as well as requirements for disclosure in the description of the characteristics of training data, training methods, and the AI model validation (verification) strategy.

308–315 79
Abstract

The article provides examples of complex patent protection of objects in the field of chemical compositions, production technologies and equipment. The options for dividing the product into key technologies and auxiliary technologies are analyzed, and the main stages of building legal protection for both specific objects included in the product and the product as a whole are proposed. It is explained that a patent document is not only a source of information, but also a mechanism for maximizing profits in the commercialization of development, as well as a way to solve problems that arise when bringing a product to market. The urgency of building a reliable product legal protection strategy will most likely reduce the financial risks of bringing the product to market and maximize revenue from its sale. The purpose of the study is to review possible options for the legal protection of complex technologies when introducing new technological products to the market, as well as to systematize information in the field of patenting strategy development. General scientific research methods were used in the work: methods of directed and systematic search, formal logical, comparative and systematic analysis, systematization and classification. Information search was carried out using open sources of information. The final selection of materials was carried out by the method of expert evaluation by FIPS staff. The result of the work is the systematization of information on the stages and elements of building a strategically correct integrated protection technology. The most appropriate way is to divide complex technology into protectable objects and choose the most optimal way to protect it for each element, as well as to build a protection strategy in the time range. The information presented in the article will allow both developers and patent attorneys to build reliable legal protection of products, which will help reduce the financial risks of bringing a product to market and increase the reliability of occupying target market niches.

316–325 142
Abstract

The digitalization of public services for intellectual property objects registration is accompanied by the development of specialized services, such as the Rospatent’s public services on state portal “Gos­uslugi”, the ARM “Registrar”, the Personal account on FIPS’s web-site, and “EAPO-ONLINE”. Despite the introduction of new technological solutions, the client-centricity of these platforms remains limited. The purpose of this study was to identify regulatory barriers that hinder the implementation of user scenarios focused on convenience, flexibility, and adaptability. The work uses an online survey method covering professional and non-professional users. The analysis is conducted on a number of parameters: satisfaction, frequency of use, identified problems, emotional response and recommendations. Respondents indicated many difficulties that could not be eliminated within the framework of current administrative regulations. Among them are duplication of input data, lack of personalized interfaces, inflexibility of submission forms and overload of instructional information. The obtained results confirm the hypothesis about the critical role of regulatory restrictions in shaping user experience. The novelty of the study lies in the focus on the regulatory component of digital services and the analysis of its impact on user experience. The practical significance is expressed in the need to revise current regulations in order to create flexible, adaptable and customer-oriented platforms. The conclusions of the article highlight the importance of improving and developing the regulatory framework as a condition for increasing the efficiency of digital services. In the future, it is planned to study the wording of regulations and develop models of regulatory sandboxes for testing flexible interface solutions.

326–333 26
Abstract

The article discusses the procedure for examining applications for state registration of geographical indications (GI) and appellations of origin of goods and (or) granting the exclusive right to such GI or appellations of origin of goods in the Russian Federation. Based on the analysis of the norms of the Civil Code of the Russian Federation and by-laws, the content of the formal examination is disclosed in detail, as well as the requirements for the preparation of applications for GI or appellations of origin of goods. The key stages of the formal examination are analyzed: verification of the completeness of documents, compliance of the form and content of the application with the established requirements. The main research methods are analysis, generalization, comparative and normative methods. The novelty and practical value of the study lie in the fact that based on the analysis carried out, the authors identify typical mistakes of applicants when applying for GI and appellations of origin of goods and suggest ways to prevent them. Therefore, special attention is paid to the typical mistakes of applicants when filling out applications for the GI or appellations of origin of goods, which allows us to formulate practical recommendations for improving the quality of filling out applications for the GI or appellations of origin of goods. The article analyzed the mistakes of applicants using the example of specific applications for GI or appellations of origin of goods from the practice of FIPS, which are faced by government experts in the framework of a formal examination. The most common mistakes of applicants are noted – incorrect filling in of the application form for the GI or appellations of origin of goods. The article suggests specific measures to minimize the risks of sending requests for applications for GI or appellations of origin of goods in order to speed up the process of state registration of GI or appellations of origin of goods, as well as obtaining the exclusive right to such a GI or appellations of origin of goods. The results of the study can be useful for both applicants and specialists in the field of intellectual property.

REGIONAL AND SECTORAL ECONOMICS

334–343 64
Abstract

The article examines contemporary approaches to sociological research as an evidence base regarding the lawful use of trademarks that are confusingly similar in the Russian context. The aim of the study is to systematize and classify new methods applied in the study of trademarks, taking into account their theoretical foundations, data collection, and analysis techniques. A typology of approaches is proposed, including digital methods, big data analysis, visual and network techniques, narrative analysis, and mixed methods. The strengths and weaknesses of each existing approach are described in terms of their applicability to the study of the trademark phenomenon. The conclusion emphasizes the necessity of integrating various approaches to obtain a comprehensive understanding of the processes of using means of individualization in the context of society’s digitalization, as well as the need to develop unified methodological guidelines for conducting sociological research aimed at confirming or refuting the use of trademarks that are confusingly similar.

344–353 118
Abstract

The analytical information on registered appellations of origin (AO) and geographical indications (GI) includes only quantitative indicators. These quantitative indicators allow for an analysis of the registration dynamics of AOs and GIs by the constituent entities of the Russian Federation. However, without additional information, it is difficult to analyze the level of development of the regional brands based solely on this data. The aims of the study are to analyze the trends in the registration of regional brands by the constituent entities of the Volga Federal District (VFD), as well as to develop a normalized coefficient – the regional brands coefficient. The article analyzes the trends in the registration of regional brands by the constituent entities of the VFD based on data from open sources. The international and Russian legislation concerning the registration of AOs and GIs is reviewed retrospectively. Data on the regional brands of the PFO constituent entities are systematized. The novelty of the article lies in the authors’ proposal to use a normalized coefficient – the regional brands coefficient for analyzing the development level of regional brands and for comparing the regions of the Russian Federation based on this indicator. The article provides an example of calculating this coefficient for the VFD regions for the period from January 1, 2023, to January 1, 2025. The applicability of the regional brands coefficient for comparing the level of activity of Russian regions in registering regional brands is demonstrated.

354–363 24
Abstract

A customer-centric approach is considered as a key element in effectively monitoring the use of intellectual property in the business activities of Russian companies. A sociological survey in the form of a questionnaire was used to collect empirical data. The methodology included seven key areas of analysis: completeness and reliability of information, request processing speed, customer effort, quality of the technical solution, interaction culture, subjective assessment, and service development opportunities. The scientific novelty of the study lies in the development and validation of a proprietary digital service evaluation methodology based on adapting customer-centric principles to the specifics of official statistics collection. The practical significance lies in the fact that the obtained results form an evidentiary basis for reengineering the existing service and a justified transition to a unified GIS Digital analytical platform for providing statistical data, focusing developers on the real needs of users.

GENERAL ISSUES OF THE PATENT CASE

364–375 257
Abstract

The Russian economy is faced with the tasks of technological renewal of the basic sectors of the economy, modernization of the scientific and technical base of scientific organizations and defense enterprises, and the formation of elements of a new technological order. Solving such problems requires the legal system to adequately regulate relations and maintain a balance of interests between economic entities and employees as participants in technological transformations. Society needs legal institutions that would facilitate the involvement of employees in the modernization of organizations and enterprises. Similar tasks were solved by the Soviet economy, and the Institute for legal protection of rationalization proposals functioned in the USSR. The purpose of this work is to determine the possibility and expediency of including in Russian legislation the legal norms in force in the USSR on innovation, on the protection of rationalization proposals. In preparing the article, the institute for the protection of rationalization proposals was considered as a phenomenon at the intersection of economics and law. General scientific, private scientific and private law methods were applied, as well as institutional and neo-institutional approaches. The provisions of regulatory legal acts on the protection of rationalization proposals in the USSR, Russian legislation in the field of intellectual property rights, the model law of the Commonwealth of Independent States (CIS) on rationalization activities, the provisions of regulatory acts of organizations on rationalization proposals and on bonuses for rationalization proposals, scientific publications are analyzed. As a result, the conditions and features of functioning of the institute of legal protection of rationalization proposals in the USSR were identified, and the problems of the institute of rationalization proposals during the transition period during the formation of new socio-economic conditions were shown. The local nature of the rationalization proposals came into conflict with the absolute nature of the exclusive right, with the need not to violate the exclusive rights of others when using the proposals. The author concludes that it is impossible and untimely to restore the institution of protection of rationalization proposals in the legal system. In modern conditions, for business entities, organizations and enterprises, instead of restoring the protection of rationalization proposals at the state level, it is necessary to use the legal regime for the protection of production secrets (know-how) when collecting, reviewing and using employee proposals for industrial and organizational improvements, creating an internal corporate environment for innovative development, a system of incentives and bonuses for personnel, linked to the effectiveness of the consideration of proposals.

III. ЭЛЕКТРОННЫЕ СЕРВИСЫ ПАТЕНТНОЙ ИНФОРМАЦИИ

376–385 26
Abstract

This article presents an analysis of practical experience and the development of a strategy for decommissioning legacy information systems using the example of replacing the PatDoc system with modern digital services: the ARM “Registrar” system and “Online Rospatent”. Operational statistics for 2019–2022, materials of R&D “Study of user experience in receiving services in the field of intellectual property in electronic form and preparation of recommendations for modernization and development of digital services” and methods for comparative analysis of system functionality are used. Critical limitations of the legacy PatDoc system are identified, including the inability to process the growing volume of incoming applications and the lack of electronic interaction during application examination. Key factors for successful system replacement are identified: advance user notification, ensuring functional parity with the new system, and implementing innovative functionality. It was established that the final stage of an information system’s lifecycle can last several years. The qualitative advantages of the omnichannel “Online Rospatent” system, which allows access to intellectual property information regardless of the chosen client paths, were demonstrated. It was shown that passive user resistance was overcome by the advance notification strategy regarding the end of PatDoc support. The study concludes that it is critical to consider negative customer reactions when decommissioning systems. This requires not only adapting new software to user needs but also ensuring its unconditional superiority in functionality and quality. The study’s findings may be useful for company and IT managers planning information system decommissioning.

386–395 37
Abstract

This article addresses a pressing issue faced by the Federal Institute of Industrial Property (FIPS) – the need to create a domestic tool for patent search on chemical compounds. The relevance of this task is determined by the complexity and high importance of such searches for patent examination, as well as that many foreign commercial systems leaved Russian market in 2022. Conducting a high-quality patent search in the field of chemistry is a non-trivial task, since the same compound can be represented in documents in various ways: by a structural formula, chemical name, molecular formula, etc., which requires the expert to use specialized tools. The Russian artificial intelligence platform for organic chemistry, “Syntelly”, was chosen as a solution to this problem. As part of a joint project between FIPS and “Syntelly” with the support of the “Skolkovo” foundation, the platform was refined and integrated into the Rospatent Digital Search Platform. A key task was the creation of a tool for extracting chemical information from patent texts and scientific articles. For this purpose, a pipeline based on Named Entity Recognition (NER) technology was developed, enabling the identification of Russian-language chemical names in documents and their conversion into machine-readable structural formulas. To ensure a comprehensive search, modules for substructure search, chemical similarity search, and text search were enhanced. The main result of the work was the successful integration of the “Syntelly” service into the Rospatent Platform, providing the agency’s experts with a modern and independent tool for searching patent and non-patent literature based on chemical structures. The implementation of such a domestic solution helps to strengthen the country’s technological sovereignty. Future plans include further development of the system, including improved structure recognition, implementation of Markush structure search, and reaction search.

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ISSN 2782-5086 (Print)
ISSN 2959-2432 (Online)