Patent fee: concept, classification, features

2024 Author: Howard Calhoun | [email protected]. Last modified: 2023-12-17 10:16

One of the most important actions from a legal point of view is the payment of fees as part of the process of registering a new mark or claiming profit from objects of intellectual property rights. Without timely payment of the fee, Rospatent will not start the formal examination procedure. In the article, we will consider the classification of patent fees, discuss what legal acts regulate the process, what is the amount of fees, etc.

Why is it necessary to patent an invention?

Everything that surrounds each of us in the modern world, in the past was invented by man, his genius. The role of ingenuity and the ability to think outside the box is difficult to overestimate. Moreover, ingenuity and creative genius can manifest themselves in a variety of areas - be it animal husbandry, literature or economics.

Under market conditions, ideas and products of intellectual property are nothing but material value. Fororganization is (from the point of view of accounting) an intangible asset. As a rule, employees and heads of scientific and technical enterprises face the need to patent the fruits of their intellectual activity.

For any large organization, sooner or later, the need for a patent policy is also brewing. Otherwise, competitors can very quickly begin to reap the benefits of someone else's idea. Compliance with the patent policy allows you to protect yourself from competitors, as it implies the registration of monopoly rights (the so-called shield strategy), as well as blocking attempts to use the invention for the enrichment of strangers (the sword strategy).

What is a "patent portfolio" and why is it needed?

A patent for an invention can be obtained by both an individual and a legal entity.

Creating a "patent portfolio" in an organization involves the following innovations and steps:

1. Drawing up a patent application, payment of a patent fee in the amount provided for in Annex No. 1 to the List of legally significant actions that are associated with the issuance of a patent for an invention.
2. Selection of suitable objects for filing an application for patenting abroad, selection of countries and search for patent attorneys.
3. The system of legal protection of an invention and verification of its effectiveness.
4. Deciding whether to keep the organization's existing patents in force.

A patent is a title document certifyingat the state level, the authorship of the invention. A patent also denotes the exclusive right to use and profit from the owner of the invention.

The Patent Fee Regulation is a document that provides a list of legal terms for the implementation of the procedure. Annex No. 1 describes the procedure and amounts in which patent and other non-tax duties are levied. In some cases, an organization or individual may be exempt from paying the fee, the amount of the payment may be reduced, and part of the amount may be returned. All special cases are governed by the Patent Fee Regulation.

Patent fee concept

The patent duty occupies a certain niche in the system of fiscal fees. Obviously, its legal nature is similar to the state duty. This fact has repeatedly been the subject of consideration by the courts, as a result of which a decision was made to establish and collect a patent fee outside the classical tax-legal mechanism. This has resulted in the concept of patent fees requiring particular attention. Patent and state fees are included in the system of fiscal fees. However, on the one hand, the patent fee is a means of satisfying the claims of the state, and on the other hand, its payment is also necessary to protect the claims of inventors to their offspring by protecting their rights from third parties. Simply put, paying patent fees is a barrier that separates the interests of the private individual from the public interest.

The legislator does not give a clearand the final definition of the concept of a patent fee. An analysis of Article 1249 of the Civil Code of the Russian Federation helps to distinguish and understand the difference between patent and other fees that should be charged when Rospatent (Federal Service for the Protection of Intellectual Property) performs actions in relation to:

• computer software;
• topologies of integrated circuits;
• service marks;
• names of places of manufacture of goods;
• databases;
• trademarks.

At the same time, legally significant actions are divided into two groups:

• related directly to the filing of an application for a patent for an invention, then - consideration of the application (conducting a formal examination), subsequent registration and issuance to the patent owner;
• actions related to maintaining the received patent in force.

Legal regulation of the patent fee

In simple terms, the objects of patent rights are, according to Art. 1349 of the Civil Code of the Russian Federation, various inventions. This concept includes the results of intellectual activity in various fields. Whether it is scientific discoveries, the creation of new tools, the selection of new plant species, etc. Inventions carried out within the scientific and technical field can also be patented. However, from a legal point of view, everything is not as simple as it seems at first glance.

Both the Constitutional Court of the Russian Federation and some researchers in the field of jurisprudence (in particular, V. I. Eremenko, A. V. Reut) associate the patent feeexclusively with new industrial designs, inventions, fruits of intellectual activity in the field of art, while not paying due attention and even ignoring the selection of plants and the derivation of animal breeds that were not previously designated in any way in the state register of breeding achievements recognized as protected. This approach is incorrect, as it partially contradicts paragraph 2 of Article 1249 of the Civil Code of the Russian Federation. Also, this approach does not take into account some provisions of Decree No. 735.

The list of legally significant actions that are inextricably linked with the process of paying patent fees is established by the Regulations on patent and other fees, approved on December 10, 2008 by Decree of the Government of the Russian Federation No. 941 (as amended on September 23, 2017). The amount, procedure and sequence of payment, the grounds for exemption from payment, deferment, reduction of the amount or return of the amount already paid are established by the Government of the Russian Federation. Based on this, the Regulations on Patent and Other Fees are amended and amended.

Classification of fees and their amount

The exact amount of the fee will depend on many nuances, so the total amount can be calculated if there is information directly about the invention. For example, the amount of a patent fee for a utility model will differ from that for an industrial design. Referring to the FIPS Regulation, fees can be classified as follows:

• for registering a patent for an invention;
• for the registration of a utility model patent;
• associated withtrademark registration;
• for registering a patent for an industrial design.

There is also a classification of RF patent fees by forms. Such a classification implies for which legal action the amount will be charged. It will not be possible to list all the actions in the field of patent law in one article, but here are the most common ones:

1. Registration of a patent application - drawing up an application by a specialist and submitting it for consideration to Rospatent (Federal Service for the Protection of Intellectual Property). The amount of the patent fee for an invention for filing and registering an application is 2,805 rubles.
2. If necessary - making corrections and changes to the items of the application. The cost of the fee for conducting an examination on the merits is 4,700 rubles.
3. Registration and issuance of a patent - 4500 rubles.
4. Performance of actions for registration and registration of a patent abroad are listed below. If this is necessary, then the amount of the fee will no longer be determined by the Regulations on Patent Fees of the Russian Federation, but by the regulatory legal acts of the country chosen by the applicant.

FIPS Fee Regulations

FIPS is a Regulation that lists the types of legally significant activities in the field of registration and preservation of patents for an invention, any other intellectual property, industrial design, etc., for which patent and other fees are charged. In the Regulations, these are called:

• actions directly or indirectly related to registrationorganization of their own trademark, as well as the possible granting to the patent owner or other persons specified in the contract, the right to use it;
• actions for which the state provides for the payment of fees related to the state registration of the exclusive right to the object of the patent.

Procedure for patenting an invention in the Russian Federation

It is necessary to draw up and send a patent application to the Federal Institute of Industrial Property. The application is a set of documents properly executed:

• application for a patent, which must contain the names of the author of the invention and the person for whom the patent is requested (this can be either one person or two different ones);
• description of the invention as complete as possible;
• a claim that would fully express the essence and possibilities of application in the intended area of use;
• if necessary - drawings, photographic documents, slides, etc.

An application can be filed by the author of the invention, as well as by the author's employer or his legal successor. If questions arise during the examination, you will have to make changes to the application. Each of the patent holders can use their right to dispose of the invention as it is reflected in the contract drawn up in a civil law manner. If the patent holder is alone, he can dispose of the brainchild as he sees fit - for example, use it in his own production. After the patent wasobtained, activities should be carried out to protect the invention. In large organizations, this is usually done by creating a so-called patent portfolio, the state of which is monitored by individual employees.

Patenting inventions abroad

An application for an invention or industrial design created by a private or legal entity in the Russian Federation may be filed in foreign countries. You can also apply to international organizations. The main condition is that more than six months have passed since the filing of a similar application with Rospatent, if during these six months the applicant (inventor - an individual or legal entity) is not notified that the information in the application constitutes a state secret.

You can make a simple algorithm, a sequence of actions that must be done to patent an invention abroad:

1. Preparation of a package of documents in accordance with the requirements for the application of foreign patent law.
2. Through patent attorneys in the country that interests the applicant, apply for a patent.
3. Conducting the necessary negotiations and correspondence in order to process possible mistakes made. The process is carried out during the examination of the application in the country chosen by the applicant.
4. Payment of the patent fee during the examination of the application, if necessary - payment for the implementation of office work on the application and for the services of patent attorneys.
5. Control to prevent possible violations by third partiespersons of the rights of domestic copyright holders and directly the applicant.
6. Obtaining a patent for an invention and then keeping it in force.

How to pay patent fees?

The process of patenting is quite expensive, especially abroad. A fee is charged for each stage of patenting. From the foregoing, it becomes clear that if the application is correctly drawn up and Rospatent has no questions for the applicant, then you will have to pay four fees: for filing an application, for conducting an examination, for entering information into the register and directly for issuing a patent.

It is optimal to pay duties in two steps, and not in four, as it may seem to an inexperienced person in this area. The first two (for filing an application and examination) - immediately after filing an application. And two more fees (for entering information into the register and for issuing a patent) - after the successful completion of the entire procedure. This payment procedure will help save time during the registration of the application and the examination of documents. The registrar will not have to send the applicant for payment and wait for the transfer of the required amount.

Direct payment is made either at the cash desk of any bank indicating the details of the recipient (they can be obtained until the moment when the application is directly submitted for examination and paid in advance). You can make a payment through electronic wallets or an online bank by providing a copy of the payment documents to the accounting department. Some organizations charge this kind of payments immediatelyaccountants or their assistants.

Patent fee accounting

When an organization registers a patent for an invention (or other type of intellectual property), it has an intangible asset. This is some action that cannot be seen or felt, but which in the foreseeable future will bring profit to the organization. An intangible asset is taken into account at its original cost. This cost is equal to the amount of payment in cash (in some cases, the amount of accounts payable) paid by the organization when creating the asset (clauses 6, 7 PBU 14/2007).

The posting of the patent fee in this case will be reflected in the debit of account 08. In this case, the amount of the fee should be included in the value of the intangible asset, since the amount is reflected immediately, and not in installments.

The fee for a patent in the first year of its validity is not related to the creation of an intangible asset, so the cost of paying it is taken into account as part of the expenses of the organization in accordance with the requirements of PBU 10/99 "Expenses of the organization".

You can fix the payment of fees for a patent in the accounting department and in another way - the transaction will be reflected in expenses for standard activities (on accounts 26, 44). It is also possible to account for even amounts during the first year of the approved patent. In this case, the amounts will be taken into account on account 97.

Getting discounts and benefits when paying duties

Legislation provides for the possibility of obtaining in some cases discounts on the payment of fees, whether it be a fee for inclusion in the register, forconsideration of the application and others. If the applicant submits an application for registration of a trademark or for the grant of a patent via the Internet electronically on the FIPS website, then the fee discount will be 30%.

Also, some applicants are eligible for a substantial fee reduction:

• if there is a single author of the invention;
• to the author, if he is a disabled person, pensioner, student, researcher (in this case, you will need to attach certificates to the package of documents confirming the status of the applicant);
• organizations with state accreditation for scientific activities.

These categories of applicants can save quite a bit on fees (up to 60% of the original cost). If the applicant and the author are the same person and at the same time are a researcher, then he can save up to 16,000 rubles on paying fees.