On May 5, 2022, the Office of Foreign Assets Control of the U.S. Department of the Treasury issued General License No. 31 (“GL31”), which authorizes transactions in connection with the filing and prosecution of patent applications, or the maintenance of issued patents, in Russia. GL31 also authorizes activities related to the filing and prosecution of any opposition or infringement proceeding.
Because this license only applies to U.S. sanctions, anyone prosecuting a Russian patent application or maintaining a Russian patent (or Eurasian patent validated in Russia) should remain cognizant of sanctions imposed by the EU, the UK, and other countries.
The Russian patent office (commonly referred to as “RosPatent”) and the Eurasian Patent Organization (or “EAPO”) have not tolled the deadlines for making any required payments. If an applicant wishes to continue to halt payments of any necessary fees, they can make use of certain pre-existing extensions applicable to certain deadlines; however, these are limited in time and pending Russian or Eurasian patent applications or granted patents may lapse for non-payment of fees.
When deciding whether to file a Russian patent application or maintain a Russian patent (including a Eurasian patent validated in Russia), applicants should consider the value of patents in Russia in view of Russia’s recently enacted law that limits compensation for infringement of patents held by patentees of certain “unfriendly” countries, including the United States, Canada, EU Member States, the UK, and Australia, to 0% of actual revenue of the individual/person who has exercised the right to use the invention.
Richard L. Matheny IIIPartner