Patent fee: concept, classification, features

One of the most important actions from the point of view of jurisprudence is the payment of fees as part of the process of registering a new brand or claiming profits from objects of intellectual property rights. Without timely payment of the fee, Rospatent will not begin a formal examination procedure. In the article, we will consider the classification of patent fees, discuss what regulatory legal acts regulate the process, what is the size 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 prove themselves in a variety of fields - whether it be animal husbandry, literature or economics.

In market conditions, ideas and products of intellectual property are nothing but material value. For an organization, this is (in terms of accounting) an intangible asset. As a rule, employees and managers of scientific and technical enterprises are faced with the need to patent the fruits of their intellectual activity.

For any large organization, the need for patent policy is also brewing sooner or later. Otherwise, competitors can very quickly begin to reap the benefits of someone else's idea. Compliance with patent policy allows for protection from competitors, as it implies registration of monopoly rights (the so-called shield strategy), and also blocks attempts to use the invention to enrich other people (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. Preparation of a patent application, payment of the patent fee in the amount provided for by Appendix No. 1 to the List of Legally Significant Actions that are associated with the filing of a patent for an invention.
2. The selection of suitable objects for the preparation of an application for patenting abroad, the selection of countries and the search for patent attorneys.
3. The system of legal protection of an invention and verification of its effectiveness.
4. Making decisions on the appropriateness of maintaining the existing patents of an organization.

Patent - title document certifying the authorship of an invention at the state level. Also, a patent denotes the exclusive right to use and make profit of the owner of the invention.

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

The concept of patent fees

The patent fee occupies a certain niche in the system of fiscal fees. Obviously, its legal nature is similar to state duty. This fact has been repeatedly considered by the courts, as a result of which a decision was made to establish and levy a patent fee outside the classical tax and legal mechanism. This has led to the fact that the concept of patent fees requires special 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, paying it is also necessary to protect the claims of inventors on their offspring by protecting their rights from third parties. Simply put, paying patent fees is a barrier that separates the interests of an individual and public interests.

The legislator does not provide a clear and final definition of the concept of patent fees. Analysis of Article 1249 of the Civil Code of the Russian Federation helps to distinguish and understand the difference between patent and other duties that should be levied when Rospatent (Federal Service for the Protection of Intellectual Property) takes actions in relation to:

• computer programs;
• integrated circuit topologies;
• service marks;
• names of places of manufacture of goods;
• Databases
• trademarks.

In this case, legally significant actions are divided into two groups:

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

Legal regulation of patent fees

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 be scientific discoveries, the creation of new tools, the selection of new plant species, etc. Inventions made within the framework of the scientific and technical sphere 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 fee exclusively with new industrial designs, inventions, and the fruits of intellectual activity in the field of art, while not paying due attention and even ignoring plant breeding and the withdrawal of animal breeds that were not previously designated in any way in the state register of selection achievements recognized as protected. This approach is incorrect, since it partially contradicts paragraph 2 of Article 1249 of the Civil Code. Also, this approach does not take into account certain provisions of Decree No. 735.

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

Classification of duties and their size

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 size of the patent fee for a utility model will differ from that for an industrial design. Turning to the FIPS Regulation, duties can be classified as follows:

• for registration of a patent for an invention;
• for registering a patent for a utility model;
• related to registration of trademarks;
• for registration of a patent for an industrial design.

There is also a classification of patent fees of the Russian Federation by forms. Such a classification implies what kind of legal action will be charged. It is not 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 - a specialist prepares an application and submits it for consideration to Rospatent (Federal Service for the Protection of Intellectual Property). The size of the patent fee for an invention for the filing and registration of an application is 2805 rubles.
2. If necessary, amending and amending clauses of the application. The cost of the substantive examination fee is 4700 rubles.
3. Registration and grant of a patent - 4,500 rubles.
4. The execution of the steps to file and register a patent abroad are listed below. If this is necessary, then the size of the fee will not be determined by the Regulation on Patent Fees of the Russian Federation, but by the regulatory legal acts of the country that the applicant has chosen.

FIPS Fees Regulation

FIPS is a Regulation listing 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 levied. The following are named in the Regulation:

• actions directly or indirectly related to the registration by the organization of its own trademark, as well as the possible grant to the patent holder or other persons specified in the contract of the right to use it;
• actions for the commission of which the state provides for the payment of fees that relate to state registration of the exclusive right to the patent object.

The 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. An application is a set of documents drawn up in a competent manner:

• an application for the grant of a patent, which must contain the names of the author of the invention and the person for whom the patent application is filed (it can be either one person or two different ones);
• the description of the invention made as fully as possible;
• the claims, which would fully express the essence and possibilities of application in the target field of use;
• if necessary - drawings, photo documents, slides, etc.

An application may be filed by the author of the invention, as well as by the employer of the author or his assignee. 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 reflected in the contract drawn up in civil law. If there is only one patent holder, he can dispose of the brainchild as he sees fit, for example, use it in his own production. Once a patent has been obtained, activities should be undertaken to protect the invention. In large organizations, the so-called patent portfolio is usually created for this, the status 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 with 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 (the inventor is an individual or legal entity) is not notified that the information in the application is a state secret.

You can draw up a simple algorithm, a sequence of actions that must be completed 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 of interest to the applicant, apply for a patent.
3. Conducting 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 paperwork for the application and for the services of patent attorneys.
5. Control in order to prevent possible violations by third parties of the rights of domestic copyright holders and the applicant itself.
6. Obtaining a patent for an invention and its subsequent maintenance in force.

How to pay patent fees?

The patenting process is a rather expensive procedure, especially abroad. A fee is charged for each stage of patenting. From the foregoing, it becomes clear that if the application is completed correctly and Rospatent has no questions for the applicant, then four fees will have to be paid: for filing the application, for conducting an examination, for entering information into the register and directly for granting 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 application and examination) - immediately after application. And two more fees (for entering information into the register and for granting a patent) - after the successful completion of the entire procedure. This payment procedure will 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 with the details of the recipient (they can be received until the moment the application is directly submitted for examination and paid in advance). You can make a payment through e-wallets or an online bank by providing a copy of the payment documents to the accounting department. Some organizations charge these kinds of payments directly to accountants or their assistants.

Accounting patent fees

When an organization registers a patent for an invention (or other type of intellectual property), then an intangible asset arises. This is some kind of action that cannot be seen or felt, but which will bring profit to the organization in the foreseeable future. An intangible asset is recognized at its original cost. This value is equal to the amount of payment in cash (in some cases, the amount of payables) paid by the organization when creating the asset (paragraphs 6, 7 of 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 size of the fee should be included in the cost of the intangible asset, since the amount is reflected immediately, and not in parts.

The patent fee in the first year of its validity is not related to the creation of an intangible asset, so the costs of its payment are taken into account as part of the organization’s expenses in accordance with the requirements of RAS 10/99 “Organization expenses”.

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

Getting discounts and privileges when paying a fee

The legislation provides for the possibility of receiving, in some cases, discounts on the payment of a fee, whether it is a fee for inclusion in the register, for considering an application, and others. If the applicant submits an application for registration of a trademark or for the grant of a patent via the Internet in electronic form on the FIPS website, then the discount on fees will be 30%.

Also, some applicants are entitled to receive a substantial discount when paying a fee:

• in the presence of the sole author of the invention;
• to the author, if he is a disabled person, a pensioner, a student, a scientific worker (in this case, it will be necessary to attach certificates to the package of documents that confirm the status of the applicant);
• organizations with state accreditation for scientific activity.

These categories of applicants can significantly save on payment of fees (up to 60% of the initial cost). If the applicant and the author are one and the same person and at the same time are a research associate, then he can save up to 16,000 rubles in paying fees.