Securing effective legal protection for patents is a high priority for all businesses who seek the quick but safe entry of their new products into the commercial marketplace. Consequently, any possible means to expedite the national (or regional) examination of their patent applications gets the immediate and positive attention plus interest from such enterprising market players.
It is undisputable that the initial scope of protection provided by patent highly depends on the quality of examination that was conducted for solutions claimed in it. It is similarly clear that the scope may be substantially narrowed, or even disappear later, if the examination is conducted without relevant documents directly influencing such scope. The present article is a historical and critical review of accelerated examinations that have been carried out during past 20 years in the Russian and Eurasian Patent offices.
It is obvious that there is a correlation between the scope of a granted patent's claims and the quality of the examination given to it. Similarly, the lifespan and subject matter scope of those granted claims may easily be jeopardized when documentary materials are mistakenly omitted during the process of prosecuting a patent. As yet, no article has been devoted to a detailed study across a number of jurisdictions of the influence of examination acceleration on the quality of findings made during such examination. The focus of this article is not comprehensive but rather it looks usefully at the experience of accelerated patent application examination in the context of the Russian plus Eurasian Patent Offices, over the past twenty years.
Since 1994, it has been possible and permissible to be granted a Russian patent following a positive substantive examination of a patent application by the Russian Patent Office. This has likewise been the case with Russia's acceptance and confirmation of patents that are granted by the Eurasian Patent Office.
One of the methods applied in some national patent offices to balance concerns about a quality examination being performed within a constrained time period (bearing in mind the further constraint of the limited number of the personnel who are available to perform such accelerated patent application examinations), is to do so under a higher fee schedule or by limiting accelerated examination to specific invention categories e.g., those involving so-called "green" or energy-saving inventions.
An approach involving higher fees was accepted some time ago both in the Russian Patent Office and Eurasian Patent Office. Between 1996 and 2006, in the Russian Patent Office, such "accelerated" examination was conducted using a "Temporary Tariff for Patent Information Services". According to this Tariff the Russian Patent Office offered searches for international patent classification group(s) which the invention(s) in an application were related to. The applicant could select one of three time periods: one, two or three months during which the Patent Office would conduct its searches. The results from this experiment are, however, ambiguous. For example, the correlation between these time periods with the examination of pending applications, in particular, their quality was not clear; petitions for providing services or conducting such examinations contained no definite provisions and merely required the examiner to refrain from doing a search with regard to solutions excluded from patentability on a statutory basis. However, in practice the examination and searches with positive results led the Patent Office to grant patents for the inventions.
Similar expedited time frames were in effect and operated under an Order for Providing Paid Services conducted by the Eurasian Patent Office between 2003 and 2012.
Under this Eurasian Patent Office order, using predetermined timeframes, examiners were required satisfy different and more substantial obligations i.e., to either issue a declaration of readiness to grant an invention patent or an office action elaborating needed amendments to the existing patent claims. The shorter the timeframe that was specified for such determinations, the higher the corresponding fee to be paid by the applicant.
Although such acceleration of the examination procedure in the Eurasian Patent Office was more transparent for the applicant, in relation to the correlation of the fee and accelerated prosecution, both this Eurasian Patent Office order and associated fee schedule for the expedited disposition of patent applications ended in 2012, without being introduced in the new edition of the Order any similar scheme for expedited examination.
It is inferred that the impossibility of insuring and confirming that the examination followed by this approach was of high quality, and it was a significant factor in the winding-up and closing-out of both these acceleration experiments by the Russian and Eurasian Patent Offices.
At present, another approach for accelerating the examination procedure on the international level is underway. It involves the making of bilateral or multilateral contracts between participating offices, and has the goal of reducing the duplication of examiners' services in the patent offices of contracting states.
Specifically, this is a project being conducted under the rubric of a Patent Prosecution Highway (PPH). This PPH originated as a collaborative concept of the USPTO and the lapanese Patent Office in order to eliminate duplicative labor and costs during the patent application examination and it has evolved from bilateral agreement that they initially entered into and now is a global undertaking.
The Russian Patent Office has continuously moved forward through all of the phases of the PPH project, and is now a full-fledged participant in the so-called "Global PPH Project." The precondition for an application's, in the Russian Patent Office, being included in this project is that patent application's receipt of:
- a positive decision on the patentability of at least one independent claim in a counterpart patent application filed in another national or regional patent office which is a PPH participant. Reference is made to procedures [PPH, PPH-MOTTAINI, Global PPH]) or;
- a positive conclusion regarding patentability in a written ISR or IPRP communications.
If either of these two alternative preconditions are satisfied, the examination process of the PPH is followed. It should be noted that the Russian Patent Office will admit an application for PPH-type of examination when the regular substantive examination of this application has not already been started.
While Russia is a full-fledged PPH project participant, the Eurasian Patent Office only began its PPH collaboration in February 2013 and so far this is only with the Japanese Patent Office.
In Russia, an applicant seeking a PPH accelerated patent application examination must submit the following to the Russian Patent Office, among other documents:
- a tabular presentation of the correspondence of the claims in the underlying Russian patent application with the family application that has received a positive conclusion on its patentability from another PPH participating patent office, and;
- translations of those claims into Russian.
No additional or special fees are charged for electing the PPH process, the applicants that decide to use it must pay only a regular examination fee. Usually, the first office action or a decision to grant a patent for the application under the PPH project is forwarded to the applicant, not more than six months from the date of filing the PPH examination petition.
When the claims presented for examination under the PPH project do not correspond with those considered in the earlier and other PPH patent office, in order to continue the applicant must bring, upon receipt of notification from the patent office, his pending Russian national office claims into conformity with the claims previously allowed at the other patent office within the time period prescribed in the corresponding notification, usually within one month.
At this point what should be discussed is a collision between provisions of new Civil Code of the Russian Federation brought into force since 2008, and particularly, with its later 2014 amendments. An explanation of this collision requires a review of the recent history of Russian patent examination.
Previously, under the 1992 Russian patent legislation, a patent examiner was not obliged to send a prior art search report to the applicant. This leads to the situation of surprises occurring when an applicant scrutinized the list of relevant documents there were attached to the decision granting him an invention patent that included new prior art documents similar to his invention.
At the same time, these new Civil Code provisions were a consequence of the Russian patent office's intention to simplify the work of examiners which was complicated when an applicant filed amendments to the claims at any time of prosecution, on the basis of the previous patent law. The examination workload and duration were burdensomely increased when amendments were filed whenever the applicant wished.
Now, the 2014 amendments to Part Four of the Civil Code provide for the prior art search report to be sent to the applicant and voluntary amendments by the applicant are allowed at that point in time.
At present the PPH examination that is conducted by the Russian Patent Office, pursuant to the standard examination fee, is the only accelerated examination that can be recommended to foreign applicants wishing to have their patent applications speedily examined. As for the Japanese applicants having the same aim, i.e. to obtain a patent in Russia, PPH examination conducted either Russian Patent Office or Eurasian Patent Office (EAPO) may likewise be advisable - since up to now JPO is the only participating office for PPH with the EAPO.
This article would be incomplete without at least brief mention of the initiatives associated with examination acceleration that are yet under development by the Russian Patent Office. These initiatives suggest that the Russian Patent Office wants to offer certain opportunities to speed up the procedure when an applicant wishes to.
On the one hand, delays in the standard (non-PPH) patent application examination process as well as delays involving applicant petitions to make claim amendments in light of a prior art search report -made expedition impracticable.
But, on the other hand, it appears quite likely that there will be a proposed new mechanism to amend one's patent claims without the receipt of the prior art search report, together with some means for an applicant to expedite the examination of his application.
Unfortunately, the exact particulars of these likely changes in the patent application examination process are still unclear.
And, it always bears remembering that an affirmative decision on a patent application by a foreign patent office does not compel an affirmative decision from a Russian Patent Office examiner.
In summary, changes for the betterment and potential expedition of the patent application examination process are in the works, and when any concrete developments occur, Gorodissky will surely keep you informed.
Originally published by The Patent Lawyer