THE PATENT DILEMMA

To maximize the market value of a technology, patent protection that is enforceable in the West is necessary. Most of the new countries have become signatories to the Paris Accord, and have established patent systems compatible with those in the West. These patent systems are new and their legal basis is still evolving. In most licensing situations involving technology developed since the breakup of the FSU, the inventors will have filed for a patent in their respective country. Because of the costs involved, worldwide patents are rarely filed anymore. If the statutory period has not expired, patents can be filed in other countries. Make sure you have all the assignment documents signed before you file for western patents and before you start incurring legal costs. Otherwise, your negotiating position will diminish rapidly as deadlines approach.

Intellectual property developed under the old Soviet regime presents an interesting set of problems. The Soviet Union did not have a patent system that was analogous to those in the West. Instead it had a system of Author's Certificates. Two types of certificates were issued: classified and published. In the published certificate case, it is too late to obtain patent protection in the West if such protection has not already been obtained. In the case of the classified certificate, western protection may be obtainable under certain circumstances. Since the work was not published per se, it may fall into the class of inventions that are in development. If the invention meets the required criteria for patenting -- and is not barred by subsequent publication, offer for sale, and so forth -- patents can be filed in the West. The main difficulty at this stage is locating all the inventors, getting them to sign the documents, or getting full disclosure if some of the inventors cannot be located.


Published: December 1994; WTEC Hyper-Librarian