panel ii how to protect intellectual property …planned, managed and developed software used by...

PANEL II HOW TO PROTECT INTELLECTUAL PROPERTY

11:35 A.M. – 12:45 P.M. Panel Moderator: Denise G. Darmanian - Gallo & Darmanian, Esq., New York, New York Panel Members:

Lana Akopyan - Mauriel Kapouytian Woods LLP, New York, New York Tiran Parsamyan - Moscow, Russia Mark G. Kachigian - Head, Johnson, Kachigian & Wilkinson, PC, Tulsa, Oklahoma Raffi Zerounian - Hanson Bridgett LLP, Los Angeles, California

11:35 – 11:40 Denise G. Darmanian

o Panel Introductions

11:40 – 11:55 Mark G. Kachigian

o What is Intellectual Property o Copyrights

Copyrightable Subject Matter Copyright Laws

United States Armenia

Copyright Registration Scope of Protection Fair Use Existence of Rights Period of Copyright Protection

Copyright Ownership Exceptions

Copyright Notice Copyright Infringement International Protection

Berne Convention 11:55 – 12:10 Raffi Zerounian

o Trademarks

Trademark Overview

Common Law Federal Trademark Registration Examples of Trademarks

Trademark Infringement Likelihood of Confusion using the Sleekcraft Factors

Trademark Clearance and Prosecution 12:10 – 12:25 Lana Akopyan

o Patents What is Patentable

Exceptions What is in a Patent?

Drawings Description Claims

Patent Dilemma: Words versus Inventions U.S. and Global Patent Protection

International Patent System Filing in U.S. first instead of Europe Relevant International Deadlines

When to File? Patent Protection: What you get? Patent Prosecution Overview Is Software Technology Patentable? Reasons to get Patents Reasons not to get Patents Why should Armenian Companies get U.S. Patents Technology Licensing Cross Border Revenue: Global Trend U.S. Patent Revenue Market

Defensive Strength for Entering U.S. Market Company has no U.S. Patents Company has U.S. Patents

Portfolio Approach to Patents Patent Program Pre-Filing Patent Application Process

12:25 – 12:40 Tiran Parsamyan

o Intellectual Property Protection in International Investment Agreements and Russian and Domestic Legislation

12:40 – 12:45

o Audience Questions

DENISE G. DARMANIAN, ESQ.

CURRICULUM VITAE

Experience 1989 - Present Gallo & Darmanian, Esqs., Partner New York, New Jersey, Switzerland Partner in charge of client development in the U.S. and Europe, servicing corporate, commercial, regulatory and intellectual property needs of clients on a domestic and international level. 1983 – 1989 Federated Corporate Services, Inc. Vice President and General Counsel New York, New Jersey, Switzerland Providing legal and executive management services to U.S. affiliates of foreign entities and providing in-house legal services to diversified holding company FCS Laboratories, Inc. Group (publicly traded), with operating subsidiaries in the fields of health care and electronics, as General Counsel and Corporate Secretary of public parent; Vice President and General Counsel of operating subsidiaries in U.S., Counsel and Responsible Manager for operating subsidiaries in St. Lubin des Joncherets, France. Education Queens College, New York

BA cum laude, Biology St. John's University School of Law, New York

Juris Doctor

Honors: Law School Moot Court Honor Society School wide competition in brief writing and appellate advocacy.

One of four students selected to represent Law School in international advocacy competition.

Student Law Clerk, U.S. Magistrate Judge David F. Jordan, United States District Court Eastern District of New York

Admissions New York State, Second Judicial Department United States Supreme Court Languages English, French and Armenian Other Co-chair, Armenian Bar Association NY/NJ/CT Chapter; Member, Armenian Bar Association, past member Board of Governors, co-chair of Nominations Committee.

Lana Akopyan Attorney 212-529-3356 [email protected]

PRACTICE AREAS

Patent Prosecution Patent Reexamination and Inter-Partes Review (IPR) Patent Due Diligence Patent Analysis and Opinions

LANA AKOPYAN is a patent attorney registered to practice before the United States Patent and Trademark Office. Having spent over 4 years as an engineer in the software industry, Lana brings a wide variety of technical knowledge and experience to her patent work. Lana’s experience in preparing and prosecuting patent applications spans a wide variety of technologies including computer hardware and software, telecommunications, electronics, medical devices and wireless communications.

Prior to joining Mauriel Kapouytian Woods, Lana was an associate at a law firm in Melville, New York where she drafted and prosecuted patent applications and managed a docket of more than 200 pending patent applications in wireless telecommunications including LTE, 3G and 4G systems, mobile devices and applications, medical devices, digital media broadcasting, security, software and GUI technologies. Additionally, Lana counseled and advised clients and foreign associates on claim drafting, interpretation, appeal procedures and licensing.

While at Brooklyn Law School, Lana was a student associate at the Brooklyn Law Incubator and Policy Clinic where she managed a patent legal team of four interns in providing legal services to emerging technology companies. Lana was also a legal intern for Elizabeth Arden, the United Nations, and the U.S. Attorney’s Office. Lana was also the founder and president of the Eastern European Law Students Association.

Prior to law school Lana was a lead software engineer at Selerant Corporation. She planned, managed and developed software used by Consumer Packaged Goods companies for formulation management and regulatory compliance. The software utilized C#, .NET, HTML, XML and SQL. Prior to that, Lana was a software developer for a New York City government agency.

Lana is fluent in Russian and proficient in Armenian.

Education

Brooklyn Law School J.D., 2010 Intellectual Property, Media, and Information Law Certificate Hunter College B.A., cum laude, Computer Science, 2004

Bar Memberships

Admitted in New York and New Jersey United States Patent and Trademark Office registered

Parsamyan Tiran

Cell: 89165837282; 89651280611.

E-mail: [email protected] Skype: t.parsamyan.lawyer

Adress: 129085, Russian Federation, Moscow, Zvezdnij blvd, 5, ap. 46

Education:

University Period Qualification

Russian-Armenian (Slavic) State University, Yerevan, Armenia 2001-2006

Lawyer

Moscow State Academy on Patent Rights 2016 Specialist on patent law

Moscow State University on Foreign Relationships (MGIMO University)

2017 – till now

Magister on international law and translating from English to Russian.

Thesis:

Intergovernmental regulation of foreign investment in Republic of Armenia (comparative analysis).

(The defense is scheduled for end of 2019).

Experience:

Employer Time Position

LLC «SPEHRE» LAW FIRM» 01.2016 – till now Head of Legal Department

LLC «Strojindustrija» 12.2012 – 08.2013

Lawyer

LLC «Virtus-stroj» 03.2012 – 03.2013 Lawyer

LLC «Vneshgenaudit» 12.2009 – 12.2011 Head of Legal Department

CC «Bank VTB (Armenia) » 09.2007 – 08.2008 Senior Specialist at Legal Department

CC «BTA InvestBank» 06.2007 – 09.2007 Specialist at Crediting of SME Department

Armenian Apostolic Church 12.2006 – 06.2007 Head of Legal Department

LLC «Germek» 07.2006 – 12.2006 Head of Legal Department

Additional information:

- Author of 18 scientific articles; - Participated as consultant during the development of internal standard acts on personnel problems - Report on Problems of current industrial law was awarded at the international conference “Lomonosov

2008” (1st rank, Moscow State University); - Leader of the Student Community at the Russian-Armenian (Slavic) State University for the period from

2003 to 2004. - Awarded with special state grant of Russian Federation Government; Order #167 of Federal Agency of

Education dated 14 October 2004.

Mark Kachigian Mark Kachigian is a shareholder at Head, Johnson, Kachigian & Wilkinson, PC in Tulsa, Oklahoma, USA. He has extensive intellectual property law experience in patents, trademarks, copyrights and other intellectual property both in the U.S. and worldwide. He is a former adjunct intellectual property law professor at the University of Tulsa College of Law. He designed a law school intellectual property law course curriculum at Yerevan State University in Armenia (the first post-Soviet era IP curriculum) through the ABA Rule of Law Initiative. He is a member of the International Trademark Association and its Leadership Development Committee and chairs one of the subcommittees. He has been a table topic leader at the INTA annual meeting. He has also spoken at the American Intellectual Property Law Association (AIPLA) annual meeting.

Raffi specializes in intellectual property and commercial litigation, with anemphasis on trademark and copyright litigation.

Trademark Litigation and Prosecution

Raffi has a 360-degree trademark practice, handling all facets ofcounseling, clearance, prosecution, enforcement, and litigation. Raffi haspursued hundreds of trademark-enforcement disputes and has been leadcounsel in many federal-court trademark-infringement actions. Raffi hasalso extensively litigated opposition and cancellation proceedings beforethe United States Patent and Trademark Office's Trademark Trial andAppeal Board, as well as domain name disputes through the UniformDomain Name Resolution Policy (UDRP).

As part of his practice, Raffi also manages domestic and internationaltrademark portfolios, and has overseen opposition and cancellationproceedings in countries and jurisdictions outside the United States withhis network of trusted local attorneys.

Raffi also has experience in stopping the sale of counterfeit goods. Thisranges from investigating and stopping the counterfeiting at its source(often internationally) through litigating counterfeiting disputes in federalcourt.

Raffi is active in the International Trademark Association. He has been aSenior Editor for The Trademark Reporter since 2012, is currently chair ofthe Editor Training Subcommittee, and has served on the journal’sEditorial Board since 2008.

Raffi is a recommended expert in the World Trademark Review, and isranked in the silver category for “Individuals: enforcement and litigation”and the bronze category for “Individuals: prosecution and strategy.”“Concise and hands-on”, Zerounian possesses “superior knowledge oftrademark law, including the procedures for both trademark prosecutionand litigation.” Enforcing and protecting a brand’s value is his specialty:“He is dogged about going after infringers and always gets results.” “Heis the type of fierce advocate that a client wants on its side – yet he isalways practical and affable, keeping the client’s business and interestsat the heart of his efforts.” Raffi has been named to SuperLawyers andpreviously SuperLawyers Rising Stars for Intellectual Property Litigation.

Copyright Litigation and Prosecution

Los Angeles

Hanson Bridgett LLP555 S. Flower St, Suite 650Los Angeles, CA 90071

213-395-7621 Direct Phone213-395-7615 Fax

[email protected]

Practices/IndustriesPractices/IndustriesPractices/IndustriesPractices/Industries

Intellectual Property

Litigation & Dispute Resolution

Raffi V. ZerounianPartner

Raffi has significant experience with copyright litigation, including handling matters ranging from cutting-edgecopyright infringement litigation involving technology to stopping the sale of knock-off art. He also has significantexpertise in using copyright law to stop infringement on the Internet. Raffi has experience with fair use claims, literaland non-literal copying claims, secondary liability, and contributory infringement. Raffi also has experience withcopyright prosecution and counseling.

Commercial Litigation

Raffi has significant experience in a variety of domestic and international commercial litigation disputes, including instate and federal courts as well as in arbitration. His experience includes disputes involving breach of contract, fraud,business torts, partnership disputes, trade secret misappropriation, and adversary proceedings in bankruptcy court.

Raffi began his legal career as a law clerk to The Honorable Ernest M. Robles, U.S. Bankruptcy Judge for the CentralDistrict of California. Prior to joining Hanson Bridgett, Raffi practiced at Townsend and Townsend and Crew LLP (nowKilpatrick Townsend & Stockton LLP) and founded a boutique intellectual property law firm in Beverly Hills.

Publications

"Attorney Spotlight On Julio Avalos, Chief Business Officer and General Counsel of GitHub," CMCP Diversity MattersNewsletter (Summer 2016)

"Revised California Rules Intended to Streamline Demurrer Process With New Meet-And-Confer Requirements," co-author, CMCP Diversity Matters Newsletter (Spring 2016)

"Northern District of California Grants Motion to Dismiss TCPA Case against WhisperText with Prejudice,"Cyberspace Law Committee E-Bulletin (September 2015)

"The FTC’s Revised .com Disclosures Guidelines and Celebrity Endorsements in Space-Constrained Ads UsingSocial Media," Cyberspace Law Committee E-Bulletin (2013)

"Ethical Implications of Attorneys’ Use of the Cloud," Cyberspace Law Committee E-Bulletin (2012)

"Practice Tips for Dealing with Brand Misuse in Social Media," co-author, American Bar Association, Section ofLitigation, Corporate Counsel (2011)

"Foreword of the Annual Review of Law and Technology," 18 Berkeley Tech. L.J. 1 (2003), Berkeley Technology LawJournal (2003)

"Note, Bonneville International v. Peters," 17 Berkeley Tech. L.J. 47, Berkeley Technology Law Journal (2002)

Presentations

“Basic Legal Skills to Advise Clients Doing Business Online,” State Bar of California's Sections Conventions (August2017)

“Ethics of Lawyering in a Digital Age,” State Bar of California Webinar (February 2017)


"Cyberspace Law 101: Representing Clients on the Internet," California State Bar Annual Meeting (September 2016)

"Basic Legal Skills Necessary for Advising Clients Doing Business Online," State Bar 88th Annual Meeting (October2015)

"Hot Topics: Digital Evidence at Trial," State Bar of California Cyberspace Law Committee Webinar (June 2015)

"Cyberspace Law: Recent Developments in Intellectual Property, eCommerce and Privacy," panelist, California StateBar Annual Meeting (September 2014)

"Review of Recent and Pending Trademark Cases and Predicting Their Effect," panelist, Intellectual Property Instituteof the Pennsylvania Bar (March 2014)

"Review of Recent and Pending Trademark Cases and Predicting Their Effect," panelist, American Bar AssociationAnnual Meeting (August 2013)

"Cyberspace Law Boot Camp," panelist, California State Bar Annual Meeting (2013)

“Ethical and Practical Implications of Cloud Computing,” First District Appellate Project’s Annual Seminar (2013)

“Legal Ethics in the Cloud and Practical Tips for Intellectual Property Enforcement in Social Media,” California StateBar Hot Topics Series (2012)

“Top 10 Ethical and Practical Implications of Moving to the Cloud,” LegalTech Conference (2012)

“Intellectual Property and Social Media: What You Need to Know,” panelist, Armenian Bar Association (2011)

Honors & Awards

World Trademark Review, Silver category - "Individuals: enforcement and litigation" (2017)

World Trademark Review, Bronze category - "“Individuals: prosecution and strategy” (2017)

Southern California Super Lawyers, Intellectual Property Litigation (2014-2017) Raffi V. Zerounian

Southern California Super Lawyers, Rising Star, Intellectual Property Litigation (2013)

Professional Affiliations

Cyberspace Law Committee, Business Law Section of the State Bar of California (2011-2015), Co-Chair(2014-2015), Co-Vice Chair (2013-2014)

The Trademark Reporter® – International Trademark Association, Senior Editor (2012-present)

The Trademark Reporter® – International Trademark Association, Editorial Board (2008-present)

Los Angeles Intellectual Property Law Association, Member


Armenian Bar Association, Member

Association of Business Trial Lawyers, Member

Judicial Clerkships

Law Clerk for the Honorable Ernest M. Robles of the U.S. Bankruptcy Court for the Central District of California

Extern to The Honorable Andrew J. Wistrich, Magistrate Judge for the United States District Court for the CentralDistrict of California

Academic Distinctions

Berkeley Technology Law Journal, Annual Review Editor and Articles Editor

Boalt Hall Student Association, 3L Class Co-President

McBaine Honors Moot Court Competition, Co-Director; Moot Court, Board Advisor; Law & Technology WritingSeminar, Advisor

Education

J.D., University of California, Berkeley Boalt Hall School of Law (2003)

B.A., high honors, University of California, Santa Barbara (1999)

Admissions and Courts

California


Armenian Bar Association 2018 Mid-Year Meeting

US and International Trademark Law

Raffi V. Zerounian, Partner, Hanson Bridgett LLP Los Angeles/San Francisco

Trademark Law Overview

Trademarks identify the source of a product or service.

Common law rights:

geographic area; some states have protection but provides little more than common law.

Federal trademark registrations in the US and abroad.

Examples of Trademarks

Trademark Overview

Continuum of trademark strength

• The strongest marks: fanciful, arbitrary, or suggestive like EXXON, KODAK, or COPPERTONE.

• The weakest marks: merely descriptive, geographic, or personal names.

Trademark Overview

The Test for Trademark Infringement: Likelihood of Confusion using the Sleekcraft Factors

Strength of the mark Generic, descriptive, suggestive, arbitrary or fanciful.

Similarity of the Marks Similarity of the marks as encountered in the marketplace

Proximity of the goods Complementary, sold to same class of purchasers, similar in use and function.

Evidence of actual confusion Marketing channels used Sophistication of consumers Intent in selecting the mark Likelihood of expansion of product lines

Trademark Clearance and Prosecution

• Trademark law is territorial.

• The laws of each jurisdiction are different.

• Clear and register in key jurisdictions, including where the trademark will be used, where products are manufactured, and where bad faith filings are common.

Trademark Clearance

• Is the trademark available for use and registration?

– Run searches online (e.g.,http://www.wipo.int/branddb/en/index.jsp) or online vendor searches (e.g., Clarivate, or Corsearch)

• Is the mark inherently registrable?

• Have local lawyers run formal trademark searches in each jurisdiction.

Trademark Prosecution

• Decide what jurisdictions to cover and budget.

• First-to-file versus first-to-use jurisdictions.

• Direct filings versus Madrid Protocol:– The Madrid Protocol may be a cost effective way to secure broad coverage in signatory

countries

– Risk of “central attack”

• Timeline for filing through registration.

Trade Secret Overview

“Three people may keep a secret if two are dead”

Benjamin Franklin

Trade Secrets—What is a Trade Secret?

Under California Civil Code sections 3426.1-3426.11 and the Defend Trade Secret Act of 2016, trade secrets include common, every-day pieces of data if a company takes reasonable measures to protect its information and that information derives economic value from not being generally known.

This may include customer lists, business plans, spreadsheets, corporate minutes and agendas, and bid specifications can be afforded protection as trade secrets.

Any information that may be used in the operation of a business and that is sufficiently valuable to afford an actual or potential economic advantage.

Examples: Formula for Coca-Cola; compilations of information that provide a competitive advantage, such as customer databases, advertising strategies; customer lists, business plans, spreadsheets, corporate minutes and agendas, and bid specifications.

Armenian Bar Association 2018 Mid-Year MeetingThe StartUp Revolution: What Are Your Rights and How to Protect Them

U.S. and International Patent LawIntroduction to Protecting Innovation in the U.S. and Around the World and Issues

Faced by Companies Doing Business in the U.S.

October 13, 2018

Lana Akopyan, Esq.Mauriel Kapouytian Woods [email protected]

Mauriel Kapouytian Woods LLPLana Akopyan, Esq.

U.S. Patent Protection: What you get• Right to exclude others from

• making, using, selling, or importing • for 20 years from the earliest filing date

• Does NOT mean you have the right to make use or sell the invention

• Example• You have a patent on a device containing

elements A, B, and C• Competitor has a patent on device containing

elements A and B

2


What is Patentable?

3

• A process, machine, manufacture, or composition of matter that is:• New (35 U.S.C. § 102)• Useful (35 U.S.C. § 101)• Non-Obvious (35 U.S.C. § 103)

• NOT• Laws of Nature (gravity)• Natural Phenomenon (water)• Abstract Ideas (often applied to block certain types of

software patents)


What’s in a Patent?

4

Description

Drawings

Claims


What’s in a Patent?• Description

• Detailed writeup of your invention

• Claims• Listing of items in technical

terms that define which subject matter is protected by the patent

• “the name of the game is the claim”

• Drawings• Flow charts• Diagrams

5


U.S. and Global Patent Protection

6


U.S. and Global Patent Protection• Patent rights are country-specific

• Filing in the U.S. gives you protection in the U.S.• Good idea to file in each country your invention is sold or manufactured

• Patent Cooperation Treaty (“PCT”)• Patent filing in any one of the 152 PCT countries can be the basis for

pursuing protection in all other PCT countries• Company from anywhere in the world can initiate global patent

protection in the U.S. (or any other PCT country)• May later pursue protection under the PCT in other countries

7


Patentability search

(optional)$2,000+

Pre-filing patent

application process

Initial filing in

U.S.$8,000 -$30,000+

File PCT application (preserves international rights)$3,500 -$4,000

1st Office Action$3,000-$5,000+

Applicant response due in 3-6

months

2nd Office Action$3,000-$5,000+

Applicant response due in 3-6

months

Begin filing in other

jurisdictions via PCT

($$)

Allowance and issue

Patent Prosecution Overview

8


When to file? • IF ONLY FILING IN THE U.S. : within one year of public disclosure or offer for

sale

• If planning to file anywhere else in the world, then must file first application (in U.S. or other jurisdiction) BEFORE ANY PUBLIC DISCLOSURE

• U.S. is a “first to file” rather than “first to invent” system for determining priority, so better to file sooner rather than later

• You do not need to have implemented an actual working prototype of the invention prior to filing• HOWEVER, you do need to have figured out enough detail so that one “skilled in the art”

could make and use the invention based on your patent application disclosure

9


Reasons to get Patents• Potentially strongest form of IP protection

• Protects against a competitor independently developing the same technology (as defined in the claims)• Note: copyright and trade secret do NOT provide this protection

• Generally not limited to a particular implementation• Provides defensive arsenal against competitor patents• Leverage for technology partnerships (“don’t do this yourselves,

we have the patents on it, so pay us to do it for you”)• The process itself builds and systematizes a company culture of

innovation

10


Why Should Armenian Companies Get U.S. Patents?

(1) Revenue opportunity(2) Defensive strength allowing safer

entry into new product markets(3) Safer disclosures and leverage in

partnership, financing, and business development interactions

11


Defensive Strength for Entering U.S. MarketScenario 1: Company has no U.S. patents

12

Armenian tech company enters U.S. product market

Competitor (U.S. or non-U.S.) threatens Armenian company w/

U.S. patents

Lawsuit valid

Armenian company

shut out of market

Potential damages or settlement

payment: $5-50 million +

Armenian company spends $2-10 million on

legal fees

Lawsuit invalid

Armenian company spends $1-5 million on

legal fees


Defensive Strength for Entering U.S. MarketScenario 2: Company has U.S. patents

Armenian tech company enters U.S. product market

Competitor threatens Armenian company w/ U.S. patents

Armenian company counter threatens competitor with U.S. patents

Companies analyze respective threats, negotiate cross-license Legal

fees < $500K

13


Strength / Leverage in Dealings with Potential Partners, Funders, Acquirers

• Many large companies and venture capital firms in U.S. will not sign non-disclosure agreements with small companies

• Even if non-disclosure agreement signed, relatively weak protection• Time-limited• Difficult to prove necessary facts for enforcement

• General expectation of sophisticated entities that you will rely on your intellectual property rights rather than a non-disclosure agreement for protection

• With patent rights in place, can be more confident in discussing technical details with other entities

• For large company potential acquirer, if target has patents, more incentive to buy rather than copy protectable investment

14

Intellectual Property Protection in International Investment Agreements and Russian National Law

By Tiran Parsamyan

The inclusion of IP rights in the definition of ‘investment’ in investment treaties reflects the importance of protecting such intangible assets in many investment operations. IP may be significant strategic asset, and is all the more important in the light of the rapid development of advanced industries, such as biotechnology and pharmaceuticals, which rely on patent and know-how protection.

Every international investment, whether in the form of equity, debt or IP, is based on the bargain, a ‘deal’ between the foreign investor and the host government of the country in which the investment is made. For the foreign investor, the terms of that bargain are to be found in three basic sources:

1. The national legal framework of host country laws and regulations;

2. Contracts that the investor has specifically entered into with the host government and other relevant parties; and

3. International obligations of the host country, usually found in treaties that it has made.

Of the three sources, the significant extent it influences that bargain’s other elements. For one thing, investor property and contractual rights, the basic legal building blocks of their investments, are creatures of national law. National law not only creates the rights, but it may also modify or cancel them. For another, all the basic rules governing the operations of the investment, from taxation to environmental protection, from labor relations to the important raw materials, and of course protection of IP, are matters subject almost exclusively to national regulation.

Should future events lead a government to believe that an increase in the tax rate, a strengthening of environmental standards, to modification of the intellectual property regime is necessary to improve the lives of its citizens, it will normally proceed to make such changes despite the fact that investors – whether foreign or domestic – have relied on the previous national laws in making their investments.

Russian IP legislation consists for the most part of the Civil Code of the Russian Federation, specifically Part IV put into force by Federal Law No. 230-FZ, dated 18 December 2006. Part IV of the Civil Code along with Federal Law No.

231-FZ “On Enacting Part IV of the Civil Code of the Russian Federation,” dated 18 December 2006, have replaced or amended all preceding individual IP laws as of 1 January 2008. Part IV of the Civil Code is a codification of pre-existing IP laws, which have been compiled as chapters in Part IV of the Civil Code with some significant amendments. Parts I–III of the Russian Civil Code also set out certain general provisions pertaining to legal protection of IP rights. Federal Law No. 35-FZ, dated 12 March 2014, introduced a vast set of amendments to Part IV of the Civil Code, part of which entered into force on 1 October 2014 and the second part — on 1 January 2015. Any foreign legal entity or individual may seek protection for its/his/her intellectual property rights in Russia, provided that the requirements of the law are satisfied. Russia is a signatory to major international treaties on intellectual property rights, including the Universal Copyright Convention, the Berne Convention for the Protection of Literary and Artistic Works, the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty, the Madrid Agreement on the International Registration of Trademarks, the Protocol to the Madrid Agreement, the Singapore Treaty on the Law of Trademarks, the Trademark Law Treaty, the Patent Law Treaty, the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, the Brussels Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, the Nairobi Treaty on the Protection of the Olympic Symbol, the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, the Strasbourg Agreement Concerning International Patent Classification, the Locarno Agreement Establishing an International Classification for Industrial Designs, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, the WIPO Performances and Phonograms Treaty, the WIPO Copyright Treaty and the WIPO Beijing Treaty on Audiovisual Performances.

Besides, the development of Russia’s legislation on foreign investments began in 1991, when the first law on foreign investments was enacted. This was replaced in 1999 by the currently effective Federal Law ‘On foreign investments in the Russian Federation’ (Foreign Investments Law).

The Foreign Investments Law generally defines the status of a foreign investor, the legal regimes for foreign investments, and guarantees and benefits provided to foreign investors active in Russia, and contain provisions regulating the establishment and operation of companies with foreign investments and branch offices of foreign companies. The Federal Law ‘On investment activity in the Russian Federation in the form of capital investments’ (Capital Investments Law)

regulating the investment activities of both national and foreign companies was also adopted in 1999. Provisions concerning foreign investments are also contained in banking, insurance, currency control, foreign trade and other legislation. With the increased flow of foreign investments into Russia, it became clear that the process of investment in strategically important sectors of the economy required more precise control by the state authorities. For this purpose, the Federal Law ‘On procedures for foreign investments in companies having strategic importance for the national security and defense’ (Strategic Investments Law) was enacted, and a special governmental commission with control over foreign investments (Governmental Commission), chaired by the Prime Minister, was formed. Normative acts adopted by the government also constitute a substantial part of the country’s foreign investment legislation, and usually contain guidelines on the implementation of the foreign investment control rules.

Within the framework of international cooperation, the Russian Federation has concluded more than 60 bilateral investment treaties (BITs) with the governments of various countries. Some of these were concluded during the time of the Soviet Union, such as the BITs with Germany and the Netherlands, which were both signed in 1989. Other BITs have been concluded quite recently, such as the BIT with Indonesia, signed in 2007, and the BIT with the United Arab Emirates, signed in 2010.

According to the Foreign Investments Law, the legal regime for foreign investments is generally equal to that for the investment activities of national (local) investors to the extent particularly indicated in the federal laws. Restrictive exceptions to the foreign investments regime may be introduced only for protection of the constitutional fundamentals of morality, health and other rights of persons, or to ensure state security and defense. A foreign investor or commercial organization with foreign investments set up on Russian territory, where the foreign investor owns at least 10 per cent of interest in the authorized capital of an organization, shall enjoy in full the legal protection, guarantees and privileges established by the Foreign Investments Law while performing the reinvestment. A Russian commercial organization acquires the status of a commercial organization with foreign investment from the date when a foreign investor becomes the shareholder thereof. From that moment, the commercial organization with foreign investments and the foreign investor shall enjoy the legal protection, guarantees and privileges established by the Foreign Investment Law. Foreign investors are fully protected against nationalization or expropriation, unless such action is mandated by the federal laws. In such case, foreign investors are entitled to receive compensation for any investment and other losses. However, any affiliated and

dependent companies of a commercial organization with foreign investments shall not enjoy the legal protection, guarantees and privileges established by the Foreign Investments Law. The Foreign Investments Law provides a number of guarantees for foreign investors. Inter alia, it guarantees the right of foreign investors to:

a. make investments in any forms permitted by the law;

b. acquire private and government securities;

c. take part in privatizations; and

d. acquire land plots, subsoil resources, buildings and other immoveable property.

In defining the nature of covered investments, most treaties provide a general definition of investments covered by the treaty and the proceed to impose on that definition certain limitations such as the area of the investment’s economic activity, the time when the investment is made, and prescribed legal requirements. The general definition of investment usually includes property rights.

And a fundamental, practical question, of course, is whether countries actually respect their treaty commitments and, if not, whether an injured investor has effective legal redress against a host country’s treaty violations. For foreign investors and their governments, one of the great deficiencies of customary international law has been its lack of effective and binding mechanisms to resolve investment disputes. One aim of the investment treaty movement has been to remedy this situation.

Most investment treaties, provide for two distinct dispute settlement mechanisms: one for disputes between the two contracting states, and another for disputes between a host country and another for disputes between host country and an aggrieved foreign investor. With respect to the former, contemporary investment treaties usually stipulate that in the event of a dispute over the interpretation or application of the treaty, the states concerned will first seek to resolve their differences through negotiation and then, if it fails, through international arbitration.

For the latter, the trend among more recent investment treaties is to provide a separate international arbitration procedure, often under the auspices of the International Center for Settlement of Investment Disputes, for disputes between an aggrieved foreign investor and an offending host country government. Granting a private party the right to bring an action against a sovereign state in an

International tribunal is a revolutionary innovation that now seems to be largely taken for granted.

But the situation is different in Russian Federation. In December 2015 in Russia was adopted a law allowing the Constitutional Court of Russia to decide whether or not to comply with judgments made by international courts. The law permits the court to review rulings of international bodies and pronounce them “non-executable” if the court deems they contradict Russian constitution.

This law was drafted in response to a decision by the Constitutional Court in July 2015 stating judgments of the ECHR would not be implemented if they contradicted Russia’s constitution. The decision also stated the Russian constitution would take priority over international law.

This means, that any type of investors which are interested in making business in Russia, must take in to account, that they might be able to protect their investments, including IP in Russian domestic courts, and in case of IP The Court for Intellectual Property Rights (“IP Court”), which is the first IP-dedicated civil judicial body in Russia. It became operational on 3 July 2013. It has exclusive jurisdiction to consider disputes involving intellectual property rights and acts both as the court of first instance and the court of cassation.

As the court of first instance, the IP Court resolves disputes involving challenges of acts of federal state authorities in the IP area as well as various disputes related to granting or terminating the legal protection of IP, including decisions of the federal antimonopoly authority on recognizing actions related to the acquisition of exclusive rights to the means of individualization of legal entities, goods, works, services and businesses as unfair competition;

Within its capacity as the court of cassation, the IP Court considers cases it had previously resolved as a court of first instance as well as cases related to the protection of IP resolved by other arbitrazh courts across the country;

The court is authorized to resolve all disputes mentioned in federal legislation regardless of the parties involved in the case;

Judicial decisions passed by the IP Court as the court of first instance cannot be appealed other than by way of cassation appeal and come into force immediately after adoption. The IP Court resolves IP disputes collegially in the first instance and in cassation, while the

Presidium of the IP Court reviews cassation appeals in cases considered by the IP Court in the first instance.

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