In addition, the Russian government has decreed that owners of Russian patents from designated “unfriendly” countries will not be entitled to any compensation for use of their patents.
The U.S. government has enacted a myriad of new sanctions through executive orders that prohibit U.S. and non-U.S. companies from engaging in a wide range of activities with numerous government-related and private entities and individuals in Russia, Belarus and parts of Ukraine. These actions include designating certain Russian financial institutions, entities and persons as specially designated nationals (SDNs) and ensuring that selected Russian banks are removed from the Society for Worldwide Interbank Financial Telecommunication (SWIFT) messaging system, which effectively serves to cut them off from the U.S. market and much of the global financial system.
Companies with IP holdings in Russia and elsewhere in Eurasia may want to monitor this situation in the event that the financial sanctions make it difficult or impossible to pay for annuities or IP services in those countries, which could result in lapse of patent rights. For example, one major patent annuity payment service recently announced that it has suspended sending payment lists to its Russian associate in connection with payments for Russian and Eurasian cases. It further noted that the Russian and Eurasian patent offices are continuing to operate. Therefore, in the absence of payment of annual fees by the due dates (or within the six-month grace period), IP protection will lapse.
In addition, the Russian government has decreed that owners of Russian patents from designated “unfriendly” countries will not be entitled to any compensation for use of their patents. This may allow the uncompensated use of patents owned by citizens of countries taking unfriendly actions against Russian entities or individuals, and patents owned by entities registered for business or having a principal place of business in a designated “unfriendly” country. The list of designated countries includes, among others, the United States, Canada, European Union states, the United Kingdom and Japan.
Thus, even if a Russian patent can be maintained, it may not be possible to enforce the patent until the decree and/or sanctions are lifted.
United States Patent and Trademark Office (USPTO) Breaks Ties with Russian Patent Office (Rospatent) and Other Patent Offices in Eurasia
Based on guidance issued by the U.S. Department of State, on March 22, 2022, the USPTO announced that it terminated engagement with Rospatent, the Eurasian Patent Organization and the Belarus intellectual property office. As a result, effective March 11, 2022, and retroactive for pending cases, the USPTO will no longer grant or maintain special Global Patent Prosecution Highway (GPPH) status for any applications based on work performed by Rospatent. With respect to cases that have already received GPPH status based on work by Rospatent, the USPTO applications will remove those applications from GPPH status and return them to the regular processing and examination queue. This may also impact U.S. national stage applications based on PCT applications where Rospatent is or was selected as the international search authority.
If you have questions about this Alert, please contact Vicki G. Norton, Ph.D., Deborah L. Lu, Ph.D., Thomas J. Kowalski, any of the attorneys in our Intellectual Property Practice Group or the attorney in the firm with whom you are regularly in contact.
If you have any questions regarding the Russia sanctions, please contact Geoffrey M. Goodale, any of the attorneys in our International Practice Group or the attorney in the firm with whom you are regularly in contact.
 The Eurasian Patent Organization includes the Russian Federation and Republic of Belarus as parties to the Eurasian Patent Convention.
Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.