Sanctions against Russia: Whether patent services are consulting services

published on 8 March 2023 | reading time approx. 2 minutes

The past twelve months have had a significant impact on the intellectual property market in the Russian Federation. Many large companies such as McDonald's, Coca-Cola, H&M, IKEA and Netflix gone out of business in Russia. The number of applications to register foreign trademarks in Russia decreased by 16 percent.

The eighth batch of sanctions against Russia includes a direct ban on the provision of legal services to Russian legal entities and state bodies in the Russian Federation. Considering the provision of trademark registration services and patent attorney services, the question arises whether the said restriction also applies to the provision of intellectual property services.

"Legal services" include legal advice to clients in non-contentious matters, including commercial transactions involving the application or interpretation of law; participation with or on behalf of clients in commercial transactions, negotiations and other dealings with third parties; drafting and reviewing legal documents. According to the supplements to the Directive "legal services" do not include representation, advice, drafting or review of documents in the context of legal representation services, in particular in matters or proceedings before administrative authorities, courts, other duly constituted official tribunals or in arbitration or mediation proceedings^[1].

Consultancy services in the field of intellectual property (patents, trademarks, etc.) therefore only appear to be admissible if they are legal representation services. Consultancy services in the context of matters or proceedings before patent offices should therefore continue to be possible, as these are administrative authorities. Such advisory services are not affected according to recital 19. Also excluded from the prohibition is the provision of services intended for the exclusive use of legal persons, entities or bodies established in Russia which are owned or solely or jointly controlled by a legal person, entity or body incorporated or constituted under the law of a Member State, a country belonging to the European Economic Area, Switzerland, the United States of America, Japan, the United Kingdom or South Korea^[2].

However, it should be taken into account that a clear statement on patent services can neither be found in the FAQs of the European Commission on Russian sanctions, nor on the website of the European Patent Office or the German Patent and Trademark Office. The case law on sanctions issues is also not yet sufficiently consolidated.

[1] Quelle: Erwägungsgrund 19 der VO 2022/1904, LI2022259DE.01000301.xml (europa.eu)

[2] Quelle: Artikel 5n Abs. 7 mit Anhang VIII der VO 2022/1904, LI2022259DE.01000301.xml (europa.eu)