Russian Federation: The Cost Of Doing Business In Russia: An Update On RU PTO And EAPO Official Fees

In Russia, Rospatent, which is the governmental body of executive power for intellectual property, reports the total number of applications filed by foreign applicants in Russia have been growing steadily since its establishment in 1990. Companies today are looking at their patent strategy in a global context. It's important, therefore, to understand changes in fees for filing in this growing intellectual property market.

Russian Patent and Trademark Office (RU PTO)

New fees were introduced August 22, 2012 aimed at eliminating differences between fees paid by national and foreign applicants. The fee for entering an international application into the National Phase in Russia has been reduced to RUR 1,650 (US $53) plus RUR 250 (US $8) per each claim in excess of 25. For each part of the international application where an International Search, or International Preliminary Examination has not been conducted, a supplementary fee of RUR 250 (US $8) is paid.

Introducing a new claim is subject to a fee of RUR 650 (US $21) per claim under certain conditions: a two-month term expired after consideration of the international application at the National Phase had begun, but before the start of examination as to substance of the claim. The fee for introducing amendments no longer applies.

Here is the breakdown of other filing fees:

An official fee for introducing a new, independent claim, after the examination as to substance has started, costs RUR 2,350 (US $76). Therefore, if the set of claims is to comprise substantially more than 10 independent claims, it may be a good idea to temporarily delete these claims and corresponding dependent claims from the set of claims to be filed upon entry into the National Phase, and to reintroduce these claims later during examination as to substance. It is also worthwhile mentioning that introducing new dependent claims during examination as to substance is free.

An official fee for requesting an extension of the term for filing a response to an office action is RUR 200 (US $6) per month for the first five months, then RUR 400 (US $13) per month for months six to 10.

An official fee for reinstatement of a missed term for filing a response to an office action or a request for substantive examination is RUR 650 (US $21) when reinstatement is requested within a six-month period after the missed term. The cost becomes RUR 2,600 (US $84) after the six-month period expires.

A grant and publication fee of RUR 3,250 (US $105) shall be paid within four months after the dispatch of the Grant Decision.

Eurasian Patent Office (EAPO)

Effective January 1, 2013 the new official fees with the EAPO were enacted. These fees apply to all legally significant actions to be effected with any Eurasian application or patent. In striking contrast to the RU PTO, the changes, which are all fee increases, have affected only certain categories of fees. In certain cases, this increase may even compromise the cost-effectiveness of filing a Eurasian application versus direct filing applications with the National Patent Offices of the member states (parties to Eurasian Patent Convention, or EAPC).

Upon filing, the unified fee for the first five claims is RUR 25,500 (US $823). The fee for extra claims in excess of five was raised to RUR 3,200 (US $106) per claim. Subject to availability of ISR, the above two fees shall be reduced by 25 percent.

The fee for examination as to substance was raised dramatically to RUR 25,500 (US $823) for the first independent claim, plus RUR 19,000 (US $613) for the second independent claim, plus RUR 9,500 (US $306) for the third, fourth and fifth independent claim each. However, no additional fee applies to the sixth and further independent claims.

The fee for introducing new independent claims after the examination as to formalities is completed is RUR 19,000 (US $613) for the second independent claim, plus RUR 9,500 (US $306) for each independent claim starting from the third claim. Therefore, if the set of claims already contains five or more claims and an applicant is considering adding additional independent claims, a good tip would be to enter the Regional Phase with the already amended set of claims.

In addition, the Applicant should bear in mind the requirement of unity of invention. The requirement as set forth in the Instruction (Rule 5.3) is similar to that under PCT Regulations (Rules 13.1 and 13.2). Therefore, if a lack-of-unity objection has been raised at the International Phase, it would make sense to file only those claims that do fulfill the unity requirement. The above recommendation does not apply to the claims drawn to a group of inventions that qualify as inventions-variants.

Applicants may also wish to replace a dependent claim of the format, "compound ... for use in the treatment of disease X ...," with a so-called "Swiss style" independent claim from the very beginning.

The fees for reinstatement of the rights of a Eurasian application or patent have increased to RUR 25,000 (US $806) each.

The official fee for extending the term for filing a response is RUR 1,000 (US $32) for the first and the second months each. For each successive month, up to 12 months, the fee progressively increases by 500 RUR (US $16) as compared to the preceding month. Starting with month 13, the fee increases by 1,000 RUR (US $32) as compared to the preceding month.

An important, and rather costly, change is the new fee of RUR 40,000 (US $1,290) for filing an appeal against the decision of EAPO taken on a motion for administrative annulment of a Eurasian patent.

It is important to consider the fee changes at both the RU PTO and EAPO when deciding on a patent strategy. Patent counsel can assist companies in determining which strategies will be most cost-effective and relevant to provide the best intellectual property protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.