1 RUSSIAN IP LAWS AND COMMERCIALIZATION : The New Part IV of the Civil Code Peter B. Maggs University of Illinois ABA Russia Eurasia Committee International Law Section October 1, 2008

2 Why Codification, What are the Changes? Debate over whether the Civil Code should: include no intellectual property provisions, only summary intellectual property provisions, or a complete recodification Initial drafts had summary provisions that serious conflicted with existing intellectual property legislation

3 Why Codification, What are the Changes? De facto power struggle between the President's Civil Law Research Institute (primary drafters of the Civil Code) and the Russian Patent Office (traditional drafter of IP legislation)

4 Why Codification, What are the Changes? Compromise – drafting committee with representatives from both the Civil Law Institute and the Patent Office Rejection of unworkable idea of inclusion of only summary intellectual property provision in the Code.

5 Why Codification, What are the Changes? Patent, Trademark, Copyright and other branches of intellectual property law fully included in the Civil Code; individual laws repealed, except for Law on Trade Secrecy Badly prepared draft chapter on Internet domain names was dropped from the final version of Part IV.

6 Об авторском праве и смежных правах: Copyright Russia is a party to the Berne Convention The Copyright Provisions of the Fourth Part of the Civil Code were designed to fully implement Russia's obligations under the Berne Convention, so as to meet requirements of TRIPs Part IV closed a loophole that allowed crooked rights enforcement agencies to license rights without permission of the owners of the rights.

7 Об авторском праве и смежных правах: Copyright Software and databases are protected by copyright With the exception of registration of computer programs and databases there is no system of registration of copyright in Russia

8 Об авторском праве и смежных правах: Copyright Registration of a computer program or database creates a rebuttable presumption that information submitted at the time of registration is true Under regulations of the Russian Patent Office, registration of a computer program or database requires only the submission of identifying material. This means that portions constituting trade secrets can be withheld.

9 О секретном производстве (ноу-хау): Trade Secrets Russia is not a member of the World Trade Organization, and so is not required to meet TRIPs requirements for its trade secret protection. WTO membership is not likely to happen soon for Russia because Georgia will veto membership and the U.S. and the European Union will support the Georgian veto.

10 О секретном производстве (ноу-хау): Trade Secrets Contrary to the wise decision to put all of patent law in one place, all of copyright law in one place, etc., … the unwise decision was made to put part of trade secret law in Part IV of the Code, but to leave part in the existing Law on Trade Secrecy, but with amendments to prevent conflicts with Part IV.

11 О секретном производстве (ноу-хау): Trade Secrets A provision already in the Code dealing with "commercial secrets" was repealed. Part IV uses the confusing language "knowhow" and "secrets of production." While these terms appear narrow, they are given a broad definition in Part IV and in the amended version of the Law on Trade Secrecy

12 О секретном производстве (ноу-хау): Trade Secrets Part IV gives the government broad powers to demand trade secret information from businesses. Government employees are required by the Law on Trade Secrets to keep such information secret, but in the Russian context protections from disclosure are weak and in possible violation of TRIPs.

13 О секретном производстве (ноу-хау): Trade Secrets Part IV protects trade secrets only if the company owning them has included them in a trade secret inventory and labeled all documents containing them. These requirements seriously conflict with TRIPs. Few Russian companies meet these requirements. Foreign licensors must ensure that these requirements are met or secrets will be unprotected.

14 RUSSIAN IP LAWS AND COMMERCIALIZATION : The New Part IV of the Civil Code Peter B. Maggs University of Illinois ABA Russia Eurasia Committee International Law Section October 1, 2008