The following provides a summary, as of May 6, 2022, of intellectual property rights affected by Russia's invasion of Ukraine.

Deepening Economic Sanctions Prevents Payments After June 24, 2022, to Russian Entities:

Prior to the invasion of Ukraine, Russia was under sanctions established by Executive Order 14024.¹  On March 11, 2022, the US Government expanded Executive Order 14024 as part of the sanctions imposed against Russia in response to its invasion of Ukraine. In particular, the Treasury Department issued Directive 4 ^{2 3} , which prohibits, in part, payments, directly or indirectly, to the Government of the Russian Federation or any person located in the Russian Federation. This includes payments made to the Russian Patent Office (Rospatent) and foreign associates. These sanctions directly impact patent and trademark rights of U.S. entities. On April 6, 2022, the U.S. Government imposed further sanctions, prohibiting indirect transactions with Russian entities. ⁴   These sanctions are incorporated into 31 C.F.R. § 587.⁵  

Based on these sanctions, US entities have a limited window, through June 23, 2022, to wind-down business with the Russian Patent Office and foreign associates.⁶  Importantly, from June 24, 2022 and onward, US entities will be legally prevented from paying any fees directly to the Russian Patent Office as well as to foreign associates handling matters before the Russian Patent Office.

Update: 

On May 5, 2022, the Office of Foreign Assets Control of the US Treasury authorized certain transactions relating to Patents, Trademarks, and Copyrights, as General License No. 31.⁷  These include the filing and prosecution of an application for as well as receiving, maintaining, and defending a patent, trademark, copyright, or other intellectual property protection. The May 5 announcement clarified that General License No. 31 does not authorize opening or maintaining an account in any foreign financial institution prohibited by Executive Order 14024.⁸  Thus, the May 5 General License No. 31 permits the acquisition and maintenance of intellectual property rights, as well as the filing of opposition or infringement proceedings. Section (b) does not authorize direct payments to prohibited financial institutions; we contacted OFAC for clarification. A representative of the OFAC confirmed that transactions with Russian counsel for the purpose of providing legal services and transferring funds to Rospatent and other Russian governmental agencies for the purpose of acquiring, maintaining, and enforcing IP rights of US entities is permitted under section (a) of the General License 31. For further clarification, please contact the OFAC directly via email or phone (1-800-540-6322).

Failure to Respect Intellectual Property Rights of non-Russian Entities:

The value of intellectual property in Russia owned by non-Russian entities is in question based on decrees and remarks made by the Russian Government and its officials. The Russian Government enacted Decree No. 299 of 6 March 2022.⁹ The Decree states that compensation for infringement of a utility patent, a utility model, or a design shall be zero percent for patent holders associated with foreign countries which commit unfriendly actions against Russian legal entities and natural persons. This includes situations where patent holders are citizens of unfriendly countries or the patent holders’ place of registration, main place of business, or the place of their main revenues are located in unfriendly countries.

Whether this Decree actually reduces the damages value to zero of intellectual property rights of non-Russian entities as infringed in Russia is unclear. One comment¹⁰ points out that Clause 2 of the Decree of the Government of the Russian Federation No. 1767 of 18 October 2021 is limited to compulsory licenses relating to the defense and security of the state and for the protection of the population’s life and health, e.g., identifying how right holders of intellectual property are to be compensated where a compulsory license is granted in accordance with TRIPS Article 31.¹¹  While clearly eviscerating all intellectual property rights of non-Russian entities, Decree No. 299 of 6 March 2022, at a minimum, reflects an encroachment on the intellectual property rights of non-Russian entities.

A Russian judge has determined that the imposition of sanctions against Russia by a nation allowed the Russian court to decline to not protect the trademark rights of an owner from an unfriendly nation.¹² 

Thus, in addition to being legally prohibited from transacting with the Russian Patent Office and/or Russian citizens after June 24, 2022, there is a risk, at least in these unsettling times, that IP rights of non-Russian entities would not be enforced by a Russian court.

Implications of Recent USPTO-Actions Against Russia:¹³

On March 4, 2022, the USPTO suspended communications with the Rospatent.

On March 11, 2022, the USPTO stopped granting requests to participate in the Global Patent Prosecution Highway "when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH." Further, the USPTO  retroactively rescinded the previously granted special status under GPPH to applications based on work performed by Rospatent and returned them to the normal examining queue.

On March 22, 2022, the USPTO terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus. The USPTO further advised that selecting Russia as the International Searching Authority or International Preliminary Examining Authority "may prevent successful processing of the of international applications under the PCT, including the transmittal of required fees through financial institutions" in view of the inability to pay the required fees.  

Based on these recent positions of the USPTO, prosecuting applications from Russia will become increasingly difficult. Similarly, the USPTO's changes will increase the difficulty of filing and prosecuting patent and trademark applications in Russia. For questions, the USPTO directs the public to contact the Office of Foreign Assets Control of the US Treasury:  

"Questions from the public regarding dealings with Rospatent should be directed to the U.S. Department of the Treasury’s Office of Foreign Assets Control (OFAC) via email at OFAC_Feedback@treasury.gov." ¹⁴
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1. https://www.govinfo.gov/content/pkg/FR-2021-04-19/pdf/2021-08098.pdf
2. https://home.treasury.gov/system/files/126/eo14024_directive_4_02282022.pdf
3. https://home.treasury.gov/system/files/126/14068.pdf 
4. https://www.federalregister.gov/documents/2022/04/08/2022-07757/prohibiting-new-investment-in-and-certain-services-to-the-russian-federation-in-response-to
5. https://www.ecfr.gov/current/title-31/subtitle-B/chapter-V/part-587
6. General License No. 13, "Authorizing Certain Administrative Transactions Prohibited by Directive 4 under Executive Order 14024," Office of Foreign Assets Control of the U.S. Department of the Treasure, 02 Mar. 2022. https://home.treasury.gov/system/files/126/russia_gl13.pdf 
7. https://home.treasury.gov/system/files/126/russia_gl31.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=
8. Id.
9. https://www.natlawreview.com/article/kremlin-s-intellectual-property-cold-war-legalizing-patent-theft-decree-299 http://publication.pravo.gov.ru/Document/View/0001202203070005?index=0&rangeSize=1
10.  https://www.lexology.com/library/detail.aspx?g=b5a3b872-58dc-40e8-b428-339b6556d4fc
11.  https://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm 
12.  https://www.firstpost.com/world/the-peppa-pig-revenge-explained-how-russia-is-retaliating-to-sanctions-by-encouraging-copyright-infringement-10459191.html 
13.  https://www.uspto.gov/about-us/news-updates/uspto-statement-engagement-russia-and-eurasian-patent-organization 
14.  Id.

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Summary prepared through the efforts of the International and Foreign Law Committee.

Disclaimer: AIPLA is a nonprofit national bar association. The sole purpose of this summary is to provide educational and informational content. AIPLA does not provide legal services or advice. The opinions, views and other statements expressed by contributors to this summary are solely those of the contributors. These opinions, views and statements of the contributors do not necessarily represent those of AIPLA and should not be construed as such.