DESIGNS FORENSIC EXAMINATION

Judicial procedures of violated intellectual rights protection are provided for in p. 1 Article 1248 of the Russian Civil Code. Intellectual rights to industrial designs, also named as “patent rights” are listed among other intellectual rights in the Civil Code (p. 1 Article 1345 of the Civil Code).

An industrial design is described by the law as an artistic design solution of a manufacture or handicraft production defining its external appearance. A design may be three-dimensional or plane. According to the Russian law a design is protectable if in its essential characteristics it is new and original.

Response to the question of design actual use, being subject to judicial deliberation, is a vital part of trial (pretrial) proceedings.

The up-to-date practice shows that the courts are inclined to appointment of specialized patent forensic examination in order to give answer to this question. Thus, the courts appoint a forensic examiner being an expert in the area of patent rights and at the same time having expertise in the art to which an industrial design, being the subject of consideration, relates. The result of such examination will be an examiner’s written opinion which is regarded by the law as an independent judicial evidence.

In accordance with p. 3 of Article 1358 of the Civil Code, a design shall be considered used in a product if the product contains all the essential characteristics of the industrial design that found expression in the illustrations of the product and that were stated in the list of essential characteristics of the industrial design.

In the Russian Federation designs are currently protected by patents containing the illustrations of an industrial design and indicating the essential features in the special List of essential features describing basic elements of the design characterizing the patented subject-matter (unlike most countries of the world where the scope of legal protection is defined by the representations only). Therefore a very detailed List of essential features included in the patent substantially limits the scope of legal protection and reduces chances for successful enforcement in cases of infringement.