IP/C/W/589  
 
15 April 2013  
(13-1958)  Page: 1/6  
Council for Trade-Related Aspects of 
Intellectual Property Rights  Original: English  
 
 REVIEW OF LEGISLATION 
 
QUESTIONS POSED BY THE UNITED STATES 
 
By means of a communication from the delegation  of the United States, dated 2 April 2013, the 
Secretariat has received a copy of the following questions that it has communicated to the Russian 
Federation.  
 
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R
USSIAN FEDERATION  
1.  Article 1232 (IP/N/1/RUS/O/2 at page 359): We are concerned that this may impose a 
formality. Do rightsholders have to register alienations of exclusive rights? Would a foreign author 
who sells or assigns a right have to register such sale/assignment in Russia? 
2.  Article 1234 (IP/N/1/RUS/O/2 at pages 360-361): We have two concerns here. 1) Paragraph 1 
seems to require a complete transfer of all the righ ts as the only type of exclusive license that an 
author can give. Can an author provide an excl usive license limited to only one right i.e., 
reproduction and maintain ownership of the other exclusive rights? 2) Paragraph 2 appears to impose a formality ( see the term "subject to state registration."). Do rightsholders have to register 
the contract of alienation of exclusive rights? Would a foreign author who sells or assigns a right 
have to register such sale/assignment in Russia? 
3.  Article 1235 (2) (IP/N/1/RUS/O/2 at pages 361-362): We are concerned that this may impose 
a formality. Do rightsholders have to register license contracts? Would a foreign author enters a 
license contract have to register the license contract in Russia? 
4.  Article 1240 (IP/N/1/RUS/O/2 at page 363): We are concerned that this provision could nullify 
negotiated terms by authors of underlying works. For example, if a musical composition is used in 
a movie – either a pre-existing recording or one created for the movie – the author of the 
composition often maintains some rights, such as the right of public performance. Can a composer's contract require that a film incorporating her music only be shown in 
theatres/transmitted by broadcasters that are licen sed to publicly perform musical compositions or 
would 1240(2) nullify such a contract?  
5.  Article 1245 (IP/N/1/RUS/O/2 at page 367): Please clarify what rightsholders are covered by 
authors, performers and manufacturers in the so und recording context. Chapter 71 addresses the 
manufacturers of and performers on sound recordings, but there is no mention of their author. When you refer to the author of the sound recording receiving 40% of the fee collected, do you mean the author of the musical composition that is recorded? How is the musical composition 
encompassed on a sound recording compensated under Article 1245?  
6.  Article 1249 (IP/N/1/RUS/O/2 at page 369): We are concerned that this may impose a 
formality. Do rightsholders have to register computer programmes or databases for those items to IP/C/W/589 
 
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  receive protection or need to register "legally-significant actions" regarding computer programs 
and/or databases? What must be registered under Article 1249? 
7.  Articles 1273 and 1306 (IP/N/1/RUS/O/2 at pages 379 and 390): These articles appear to 
provide an overly broad permission for reproduction for personal use. Please explain how these 
articles address the three-step test under Article 13 of the TRIPS Agreement, including whether 
and how these provisions permit reproduction of  only one copy for personal use, where that 
reproduction is made from a lawfully acquired copy. 
8.  Article 1274 (1) (1 and 2) (IP/N/1/RUS/O/2 at page 380): These copyright exceptions 
(IP/N/1/RUS/O/2 at 379) appear overly broad. Both Articles 10 (1) and (2) of the Berne Convention, which are incorporated in Article 1274 (1) (1 and 2), require that such use be compatible with fair practice. Please explain how this fair practice limitation is addressed by 
Article 1274 (1  and 2). 
9.  Article 1274 (1)(6) (IP/N/1/RUS/O/2 at page 380): We are concerned that this exception is 
overly broad. Would a non-profit entity be able to use this exception when the copyright owner has 
made the work available in the same format? 
10.  Article 1274(3) (IP/N/1/RUS/O/2 at page 380 ): This exception appears to be overly board. 
Please explain how the exception limits taking only the portion of the work necessary for the 
purposes of the parody. 
11.  Article 1280(4) (IP/N/1/RUS/O/2 at page 382): This language appears to be overly broad. 
Please explain how this article addresses the requ irements of the three-step test under Article 13 
of the TRIPS Agreement. 
12.  Articles 1285 and 1307 (IP/N/1/RUS/O/2 at pages 383 and 391): We are concerned that 
Articles 1285 and 1307 appear to limit a rightsholders ability to enter into exclusive licenses for a specific right and to require the rightsholders to  transfer the "work in full." Can a rightsowner 
transfer one exclusive right, fo r example, e.g., the right to pe rform a work, and still maintain 
ownership of the other exclusive rights, e.g., reproduction, synchronization? 
13.  Article 1334(2) (IP/N/1/RUS/O/2 at page 399): Any copyrighted work or object of related 
rights incorporated into a database must be subj ect to the rightholders' exclusive rights. Please 
explain how Article 1334(2) accounts for the rights of authors of works included in a database. 
14.  We have numerous questions to help us  understand Section 6 of Chapter 71 and how the 
rights of a publisher of a scientific, literary or ar tistic work differ from the rights of the authors and 
the authors' assignees/transferees of those works, as set forth in Chapter 70: 
(a) Please explain the relationship between  the publisher protected here and the 
author/assignees protected in Chapter 70. Specifically, how does this section relate to 
Chapter 70, which gives these rights to the author and her assignees? Who has the 
rights to the work, the author/assignees under Chapter 70, or the publisher under Chapter 71? 
(b) Article 1337(1) (IP/N/1/RUS/O/2 at page 400) appears to take works out of the public 
domain and give the publisher exclusive rights to that work. What works can be removed from the public domain? 
(c) Article 1340 (IP/N/1/RUS/O/2 at page 401) appears to override the copyright term 
provided Article 1281 and override any contract or agreement that an author may have 
entered with a publisher. Please explain. 
15.  We remain concerned that Russian law might not adequately protect foreign works and 
related rights, including pre-existing works and related rights. We have noted that there are 
numerous provisions dealing with this issue (Articles 1231, 1256, 1304, 1318, 1321, 1324, 1328 and 1341), but were unable to confirm the required coverage. Some of our concern may relate to 
translations issues or to the accuracy of IP/N/1/RUS/O/2. Preliminarily, please advise how 
Articles 1256 and 1304 now read.  IP/C/W/589 
 
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  16.  Please advise which specific Article requires coverage for: 
(a) Authors who are nationals of a Berne count ry for published and unpublished works 
(b) Authors who are not nationals of a Berne country for works first published, or published 
within 30 days, in a Berne country 
(c) Authors who are not nationals of a Berne country but who have their habitual residence 
in a Berne country 
(d) Authors of an audiovisual works the maker of which has its headquarters or habitual 
residence in a Berne country 
(e) Authors of works of architecture constructed in a Berne country or artistic work 
incorporated in a building or structure located in a Berne country 
17.  Please confirm that Russian Law provides the owners of musical compositions a public 
performance right when that music is contained in audiovisual works and exhibited in theaters. 
What provision of the law provides this right? 
18.  What is the term of protection for audiovis ual works? The authors of the audiovisual work are 
defined in Article 1263. Is the term of protection  70 years from the death of the last surviving 
author under Article 1281 (1)? If not, what Ar ticle governs the term of audiovisual works? 
19.  Article 1252.1.4 (IP/N/1/RUS/O/2 at page 370 ): Please clarify what is meant by "non-bona 
fide acquirer." 
20.  Article 1252.5: Provision allows equipment and materials used for infringing to be withdrawn 
from circulation and destroyed at infringers expense, "except when being subject to be converted into the revenue of the Russian Federation." In light of Article 46 of the TRIPS Agreement please 
explain the scope of this exception, and when it applies. 
21.  Article 1302 (and Article 1312) (IP/N/1/RUS/O/2 at page 389): The title of this article 
"Security for a claim in a copyright violation case," does not seem to match its contents which 
forbids "using [counterfeit copies of a work] in civil-law transactions." Please clarify, because as 
written it appears that the scope of the article is much larger than its title. 
22.  Paragraph 4 of Article 1349 (IP/N/1/RUS/O/2) provides:  
4. The following shall not be objects of patent rights: 
1) human cloning techniques; 2) the techniques for modifying the genetic integrity of human embryo cells; 3) the uses of human embryos for industrial and commercial purposes; 
4) other developments inconsistent with the public interest and humane and moral principles. 
 
Does "inconsistent with the public interest and humane and moral principles" in paragraph (4) 
have the same meaning as "protect[ion of] ordre public  or morality" as used in Article 27(2) of the 
TRIPS Agreement? 
23.  Paragraph 6 of Article 1349 provides: 
6. No legal protection shall be provided to the following as inventions: 
1) varieties of plants, breeds of animals and th e biological methods for producing them, except 
for microbiological methods and products produced by such methods; 2) integrated circuit layout-designs. 
 
(a) Article 27.3(b) of the TRIPS Agreement requires Members to provide for sui generis  
protection for plants, if patents cannot be granted for varieties of plants. How does the 
Russian Federation provide protection for plants? Decree No. 735 of 14 September 2009, 
the Russian Federation Government Approving the Regulation on Patent Fees and Other 
Types of Fees Related to Plant Variety Patents and State Registration of Agreements IP/C/W/589 
 
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  Assigning Exclusive Rights on Plant Variety, is noted, but has this decree been notified to 
the WTO? 
(b) How does the Russian Federation provide protection for integrated circuit designs? 
Order No. 323 of October 29, 2008 of the Mi nistry of Education and Science of Russia 
(Approving the Administrative Regulations to  Govern the Performance by the Federal 
Service for Intellectual Property, Patents and Trademarks of its Functions to Process and Examine Applications for the Registration of Topographies of Integrated Circuits as well 
as to Grant of Certificates of State Registrati on of Topographies of Integrated Circuits in 
accordance with Established Procedure) is noted, has this order been notified to the WTO? 
24.  Article 1359 (IP/N/1/RUS/O/2): Actions Not Deemed an Infringement of the Exclusive Right to 
an Invention, Utility Model or Industrial Design 
 The following are not deemed an infringement of the exclusive right to an invention, utility 
 model or industrial design: 
 2) the carrying out of scientific research of a product or method in which the invention or 
utility model is used or of scientific research of an article in which the industrial design is used or the carrying out of an experiment in respect of such product, method or article; 
 
Would experiments using protected inventions or designs to experiment on other things infringe a protected invention or design? For example, if a me dical instrument is patented or protected as an 
industrial design, would use of a copy of that instrument in medical testing infringe the patent or 
industrial design right? 
 25.  Article 1359 continues, providing: 
3) the using of the invention, utility model or industrial design in emergency circumstances 
(natural calamities, disasters, accidents), with the patent holder being notified of this use as soon as possible and with commensurate compen sation being paid henceforth to the patent 
holder; 
 
According to Article 31(a) of the TRIPS Agreement,  each use without authorization of the rights 
holder shall be considered on its individual merits. Furthermore, Article 31(b) of the TRIPS 
Agreement clarifies that the requirement to make reasonable efforts to obtain permission may be 
waived by a Member if certain conditions apply. How does Article 1359 provide for a decision on a case by case basis? 
 
26.  Article 1359, continues, providing in paragraph 4: 
4) which provides the use of the invention, utility model or industrial design for meeting 
personal, family, household or other needs other than entrepreneurial activity, unless profit-
making or making earnings is the purpose of the use;  
This provision may conflict with a normal exploitati on of the patent and encroach on the legitimate 
interests of the patent owner, where the invention or design is intended for household use. Please 
explain how the provision addresses these concerns.  
27.  Article 1360 (IP/N/1/RUS/O/2). Using an Invention, Utility Model or Industrial Design in the 
Interests of National Security 
In the interests of national security the Government  of the Russian Federation is entitled to permit 
the use of an invention, utility model or industrial  design without the consent of the patent holder, 
with the patent holder being notified as soon as possible and with a commensurate compensation being paid to the patent holder.  
According to Article 31 of the TRIPS Agreement, each use without authorization of the rights 
holder shall be considered on its individual merits. Please explain how this Article addresses consideration on the individual merits. Also, the term "National Security" appears overbroad and 
not well defined. Was "national emergency or ot her circumstances of extreme urgency" intended? 
 IP/C/W/589 
 
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  28.  Article 1362 (IP/N/1/RUS/O/2 at page 408): The Compulsory License for an Invention, Utility 
Model or Industrial Design 
1. If an invention or industrial design is not used or is insufficiently used by the patent holder 
within four years after the issuance of the patent, and a utility model within three years… or 
industrial design -- if the patent holder refuses to conclude a licence contract with this person 
on terms meeting the prevailing practices -- is entitled to file a claim with the court …..   
In paragraph 1, does "terms meeting the prevailing practices" have the same meaning as 
"reasonable commercial terms" as used in Article 31(b) of the TRIPS Agreement? 
 
29.  The Article also provides "A compulsory simp le (non-exclusive) licence may be terminated in a 
judicial procedure at a claim of the patent holder, if the circumstances due to which the licence has 
been issued are no longer existing and it is unlike ly that they are going to appear again. In this 
case the court shall establish a term and procedure for termination of the compulsory simple 
(non -exclusive) licence and of the rights that have come into being due to the receipt of the 
licence." 
Article 31(c) of the TRIPS Agreement states that  the scope and duration of such use shall be 
limited to the purpose for which it was authorized. This Article appears to require the patent holder 
to sue for termination of the compulsive license. Is this correct? 
 
30.  Furthermore, the Article provides "If the patent holder having an exclusive right to such 
dependent invention manages to prove that it is an important technical achievement and that is 
has significant economic advantages over the invent ion or utility model of the holder of the first 
patent, the court shall take a decision on granting a compulsory simple (non-exclusive) licence 
thereto. The right of using the invention protected by the first patent obtained under such licence 
shall not be assigned to other persons, except fo r the case of alienation of the second patent." 
Article 31(l)(ii) of the TRIPS Agreement provides conditions for when a patent owner is entitled to 
a cross license. Please explain how this si tuation is addressed in the Russian system. 
 31.  Article 1362: Article makes the provisions of compulsory licenses equally applicable to industrial designs as patents, and results in comp ulsory licensing (forfeiture) of rights if the 
patented invention or design is not used or worked within a set time. Article 5(B) of the Paris 
Convention provides that the protection of indust rial designs, "shall not, under any circumstances 
be subject to any forfeiture, either by reason of failure to work or by reason of importation of 
articles corresponding to those which are protecte d." Article 2(1) of the TRIPS Agreement requires 
compliance with Article 5, among other parts, of the Paris Convention. Please explain how Article 1362 addresses the requirements of Arti cle 5(B) of the Paris Convention. 
32.  Finally, as to Article 1362, Articles 31(i) and (j) of the TRIPS Agreement requires that judicial 
review by a distinct higher authority be availa ble. How does the Russian Federation provide for 
such judicial review? 
33.  Article 1508 (IP/N/1/RUS/0/2 at page 463): Article 1508 (1) states that a trademark may be 
considered generally-recognized in the Russian Federation as the result of intensive use. Can the 
Government of the Russian Federation clarify whet her "intensive use" includes knowledge in the 
Russian Federation which has been obtained as a result of the promotion of the trademark?  
34.  Article 1515 Second sentence (IP/N/1/RUS/O/2 at page 466): "If the placing of the goods in 
transactions is required for the public interest the right holder is entitled to demand removal at the infringer's expense of the illegally used trademar k...." The provision appears to allow for a broad 
exception. Article 46 of the TRIPS Agreement allows  for the removal of infringing marks only in 
"exceptional circumstances." (Article 46 of the TRIPS Agreement: "In regard to counterfeit trademark goods, the simple removal of the trad emark unlawfully affixed shall not be sufficient, 
other than in exceptional cases, to permit releas e of the goods into the channels of commerce.") 
Please explain how proposed Article 1515, which allows for removal of infringing marks for claims 
of "public interest," addresses Article 46 of the TRIPS Agreement. IP/C/W/589 
 
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  Other laws (which seem not to have yet been notified) 
 
35.  Article 18.6 of the Law on Circulation of Medicines (as last amended on June 25, 2012) states: "The results of the nonclinical trials of medicinal products and clinical trials of medicinal products 
submitted by the applicant for state registration of the medicinal products shall not be obtained, 
disclosed, used for commercial purposes and for purposes of state registration without applicant's permission within six years from the date of th e state registration of the medicinal product. 
Violation of the prohibition specified by this Clause shall entail the responsibility in accordance with 
the legislation of the Russian Federation. The circulation of medicines in the Russian Federation registered with violation of this Clause shall be prohibited." 
How this provision is implemented? Is the six-ye ar term of protection in force? Are there any 
implementing regulations that would explain (1) wh at procedures the MOH would follow in order to 
protect originator's data from both disclosure and from reliance by generic companies and (2) what procedures would generic companies follow to obtain state registration for medical 
products. Please explain the relationship of Article 18.6 with Article 26 of the same law, which 
allows for the accelerated review of the marketing authorization applications for generic drugs. 
 
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