On June 24, 2024, the European Union adopted its 14th package of sanctions against Russia (Regulation (EU) 2024/1745). The package introduced new obligations for EU companies, including a mandatory clause for intellectual property rights and trade secrets related to common high priority goods and technologies listed in Annex XL. This clause applies to licensing agreements and other contracts involving the transfer of intellectual property rights. The regulation also prohibits Russian nationals and residents from filing new applications for trademarks, designs, patents, utility models, geographical indications, and protected designations of origin.

“No Russia” Clause

As part of the expanded “No Russia” clause, EU companies must contractually prohibit their non-EU counterparts from using intellectual property rights for the sale, transfer or export of sanctioned goods to Russia. This aims to indirectly extend the sanctions to non-EU countries that are not otherwise obligated to follow EU regulations. The clause must be included in general contracts with buyers or in separate declarations attached to the contract.

Restrictions on Intellectual Property Applications

The newly introduced Article 5s prohibits intellectual property offices and other competent institutions from accepting new applications for registration of trademarks, patents, industrial designs, utility models, protected designations of origin, and geographical indications filed by Russian nationals, residents, or legal entities. This applies to registration procedures before such offices.

Since the European Patent Office (EPO) is not an EU body, the regulation requires the EPO to refuse requests for unitary patent effect filed by the above-mentioned Russian persons, including jointly with non-Russian persons. EPC Contracting States must also ensure the EPO does not accept new European patent applications from Russian persons. Similar measures apply to World Intellectual Property Organization (WIPO) designations, with Member States obligated to use best efforts to prevent WIPO or national intellectual property offices from accepting such applications.

However, these provisions do not apply to nationals of EU Member States, EEA countries, or Switzerland, or to persons with residence permits in these countries. Therefore, Russian nationals legally residing in these states are not subject to these limitations.