Russian Federation: Eurasian Umbrella Or Russia When Filing Patent Applications

Last Updated: 9 October 2017
Article by Denis Ashikhin

Most Read Contributor in Russian Federation, August 2018

There are no customs borders between members of the Eurasian Economic Union though each country has its own national regime of patent protection. Hence, lawful use of an invention in one of the countries may be infringing in another country in case of filing national patent applications which do not cover all the Eurasian Economic Union countries.

Different ways of getting patent protection in different countries

Statistics show that applicants are mostly interested in Russia. Their second choice is Kazakhstan or Byelorussia, or both. So it is worth considering and comparing the national (taking Russia as an example) and regional – Eurasian - ways of getting patent protection.

Patenting process in Russia can be initiated by filing a conventional/non-conventional Russian patent application or entering the Russian national phase with a PCT (Patent Cooperation Treaty) application. Similarly – an application for an invention can be filed with the Eurasian Patent Office, or the Eurasian regional phase can be entered with a PCT application. The deadlines are 12 months for filing a convention application and 31 months for entering the national/regional phase with the PCT applications.

Article 1350 of the RF Civil Code (hereinafter referred to as the Code) sets forth: "A technical solution relating to a product ... or a process, including the use of a product or a method for a particular purpose in any field of technology ... is protected as an invention". This definition of the invention is harmonized with that stipulated by Article 27 of TRIPS which reads as "...patents shall be available for any inventions, whether products or processes, in all fields of technology..." The following subject matters are excluded from protection: discoveries, scientific theories and mathematical methods, aesthetic creations relating to external appearance of articles (these are protected by design patents), rules and methods of games, intellectual or business activities, computer programs, presentation of information, animal breeds and plant varieties, integrated circuits layouts. Methods of medical treatment, diagnostic and surgery methods are available for protection as inventions in Russia. Computer-implemented inventions aimed at solving a technical problem, demonstrating a technical result and differing from the known solutions by technical features can also be protected as inventions in Russia.

Russia has very applicantfriendly filing requirements where an application can be filed in any language with further submission of its Russian language translation. The only document that should mandatorily be filed in Russian is a petition for granting a patent. Such flexible language of filing requirement surely gives the applicant a chance to take a last moment decision on filing.

There is a two-stage examination procedure for invention applications, which includes formal examination and substantive examination.

During formal examination the application documents are checked for completeness and for compliance with the formal requirements. In order to initiate examination on merits, the applicant should file an examination request. Such a request should be filed within 3 years from the filing date – or international filing date in case of a PCT application. This 3-year term may be extended by 2 months provided that the extension fee is timely paid. If the substantive examination is not requested within said term, the application is deemed to be withdrawn, but may be reinstated within 12 months from the term expiration date if the official fee for reinstatement is paid and the examination request is made.

Upon expiration of 18 months from the filing date an application is published by the Patent Office. Publication of the application entails obligation of the Russian PTO to publish search report - a relatively new legislative provision. In its turn, the publication of the application is related to another new feature of the patent procedure – the opportunity for a third party to submit one's own observations regarding the claimed inventions after the application has been published. The observations - prior art references as well as arguments, are obligatory for considering by the Examiner. The observations practice is clearly intended to become an invitation to any interested party to intervene in examination proceedings at an early stage for preventing improper issuance of a patent instead of merely waiting for issuance thereof to invalidate it thereafter. The law does not impose obligation on the Russian PTO to publish information on submitted observation or lay out or forward a report to the submitting party on the results of consideration of the observation.

There is yet another important point associated with the search report. Peculiarity of the Russian prosecution is that the applicant has only one chance to voluntarily amend the application materials. This chance is given after the issuance of the Search Report. At the same time, the law does not define a deadline that closes the window for voluntary amendments. However, practice shows that the search report is usually issued and sent simultaneously with the first Official Action. Accordingly, in the absence of any regulatory definition, it is reasonable to assume that the deadline for filing voluntary amendments is the term for responding to that first Official Action.

The international law and agreements as well as practice provide other opportunities to file voluntary amendments with the Patent Office:

  • within a month after entering the national phase in Russia pursuant to Rule 78 of the Regulations under the Patent Cooperation Treaty;
  • with the Russian translation of the application for convention applications; and
  • with the PPH examination request - here it should be mentioned that the Russian PTO participates in all PPH projects, including the Global PPH.

In line with the law and regulations of almost all other countries, the Russian patent law does not allow amendments (voluntary or made at the examiner's request) that introduce a "new matter" as well as another invention violating unity requirement.

What should be noted and what is sometimes overlooked by applicants is that a new technical result which is not disclosed in the original application cannot be entered under any circumstances. On the other hand, it should be understood that the new technical result (new aim of the invention) may result in other set of essential features which will require from the examiner a new search, new consideration etc. In other words, being good or bad, "a new technical result" now is a kind of "new matter" in Russia.

A patentable invention must be industrially applicable, sufficiently disclosed, new and must involve inventive step. The invention is industrially applicable if the purpose of the invention is achieved and means for carrying out the invention are disclosed in the description or publically available from the prior art before the priority date of the invention.

To satisfy sufficiency of disclosure requirement, the description shall disclose the essence of the invention in all necessary detail for its being carried out by a person skilled in the art. The description of the invention should contain each and every feature of the claims and preferably as many embodiments and examples as possible.

Previously this requirement was covered by the industrial applicability criterion. But nowadays it is considered to be independent and is thought to be of great importance. The message from the PTO is that the examiners will pay careful attention thereto. In any case it should be noted that non-compliance with the sufficiency of disclosure requirement is (along with the other three criteria) both a reason for rejection as well as for invalidation of a patent.

The invention is new if it is not anticipated by a single prior art reference. The characteristic of the purpose of the invention should be considered as a feature of the invention.

The invention involves inventive step if it is not obvious for a person skilled in the art.

The prior art comprises any information publicly available in the world including any printed publication as well as information about open use of the invention anywhere ("absolute world novelty"). For the purpose of novelty consideration, the prior art includes published earlier priority applications for inventions, utility models and industrial designs filed in Russia, and Russian and Eurasian patented inventions with earlier priorities.

Applicable is a 6-month grace period which is calculated back from the filing date of the application. The grace period includes disclosure of information concerning the subject matter of the invention made by the inventor, applicant or third party who has directly or indirectly obtained information therefrom.

Getting back to the inventive step criterion, it is necessary to highlight the approach of the Russian patent office in determining thereof. The examination of inventive step is conducted in accordance with the following procedure: the examiner determines the closest prior art, identifies the features distinguishing the invention from the closest prior art and identifies the prior art references having the features coinciding with the distinguishing features of the invention. However, the examiner cannot reject an invention as lacking inventive step merely basing such rejection on actual existence of prior art references together disclosing the entire combination of features that defines the claimed invention. Any rejection should prove that the identified references teach the same influence of the distinguishing features disclosed therein on the technical result of the invention. According to the Russian PTO regulations under technical result is understood, a characteristic of a technical effect, phenomenon, property etc. objectively exhibited when a method is executed or a product is made or used. The Russian PTO regulations require that all technical results that a claimed invention is capable to demonstrate should be mentioned in the description. The applicant's failure to mention a technical result or mentioning irrelevant one allows examiner to conduct inventiveness examination without establishing influence of the distinguishing features on the technical result, otherwise necessary.

If the invention meets all the patentability requirements, the Examiner will issue a Decision of Grant. After issuing the Decision of Grant, any amendments to the claims and description except for corrections of obvious and technical errors become impossible.

In case of non-compliance of the invention with at least one patentability requirement the Examiner issues a Decision of Rejection. An appeal on the Decision of Rejection may be filed with the Patent Office. The board of Examiners considers the appeal and confirms or reverses the Decision of Rejection. The Decision of the board of Examiners may be further appealed in the IP Court.

The main specifics of the appeal are that it cannot comprise any amendments to the rejected claims. Therefore, going into appealing procedure, the applicant can only set forth reasons why the rejected set of claims should be granted, but cannot suggest e.g. an amended set of claims in case the Board rejects the reasons brought in the appeal. Therefore, as an option to an appeal, or together with is, a divisional application may be used. Although being a separate application a division allows continuing prosecution after issuing a Decision of Grant/Rejection for its parent application. Such divisional application or even several such applications will provide an opportunity to introduce same or amended sets of claims as those in the rejected parent application. Divisional application should be filed before registration of a patent in the State Patent Register (in case of allowance) and before filing an appeal against Decision of Rejection with the PTO.

A new and very useful option available during invalidation proceedings is transformation of the invention patent into a utility model patent. The difference in the patentability criteria may allow retaining protection of the invalidated invention as a utility model.

However, such a transformation should be made within the validity period of the utility model patent which is 10 years.

In comparison to that - the validity term of an invention patent is 20 years from the filing date of the application. The term of an invention patent relating to a medicine, pesticide or agrochemical substance can be extended for up to 5 years in case of obtaining a marketing approval but only in respect of the product for which the approval was obtained.

Utility models as a form of protection differ from inventions not only by substantially narrowed validity term, but by generally overall restricted protectability. Another restriction consists in that according to Article 1351 of the Code "A technical solution relating to an apparatus is protected as a utility model". No other types of subject-matters but apparatuses are admissible. The most recently enacted amendments to the Code further significantly reduce the scope of obtainable utility model rights. After those amendments, a utility model application may contain only one independent claim. No alternative features can be recited in the claims and no doctrine of equivalents is applicable to the utility models while establishing the infringement. Further, all utility model applications become subject to substantive examination, while earlier they were granted protection after conducting formal examination only. A patentable utility model must be industrially applicable, sufficiently disclosed and new. Although no "inventive step" patentability requirement is applicable to utility models, successful examination of its novelty is not an easy task. Examination of novelty of utility models is conducted only with regard to their essential features – the only features that contribute to the utility model technical result. Needless to state that such examination approach highly increases importance of choosing and disclosing in the application materials the proper technical result (only one technical result may be mentioned).

If a utility model meets all the patentability requirements, the Examiner issues a Decision of Grant. The validity term of a utility model patent cannot be extended over 10 years.

The above part of this article was an introduction of the most frequently used national system in the Eurasian Economic Union region and described only those features of the system where comparison with the alternative way – using the Eurasian Patent Office instead – is the most illustrative. The Eurasian way is the proper way in case the applicant is not ready to go ahead with a number of national applications in different national languages, be engaged in different patent procedures and communicate with different national patent attorneys, sometimes in completely unknown environment. All these and other potential problems may be removed just by filing a single Eurasian application.

Patent protection through Eurasian Patent Convention

As has been mentioned above, a Eurasian Patent Convention covers 8 member states that agreed to ensure same protection for the rights conferred by Eurasian patents as to those by their own national ones.

The Eurasian Patent Office is located in Moscow and operates on the basis of the Eurasian Patent Convention. The Eurasian Patent Office grants a single, unitary patent without any necessity of further validation thereof in each country. The patent is granted in the Russian language and no translation in other languages is necessary unless an infringement procedure is initiated in a country.

In accordance with paragraph 1.1 of the Eurasian Rules for compiling and filing patent applications: "the subjectmatters of inventions may be, created or transformed by humans material objects or processes, in particular apparatus, method, substance, biotechnological product as well as their use". Being a bit different from the definition of invention given in the Russian law, the wording of the invention definition according to the Eurasian law in principle covers the same subject-matters.

Methods are understood as processes of implementing actions resulting in creation of new or changing of known material objects or in their exploitation. In contrast to Russia where the invention can be used for any purpose, the use in Eurasia is understood as being implemented for a previously unknown purpose only. To be patentable, an invention must be industrially applicable, new and involve inventive step. In Eurasia the sufficient disclosure requirement is considered to be a separate patentability requirement though it is rather a part of the industrial applicability requirement. The exceptions from patentability and the availability of patent protection for methods of medical treatment are the same as mentioned above with regard to the Russian national patent law.

Like the Russian PTO, the EAPO uses a deferred examination procedure. A request for examination shall be filed within 6 months from the date of publishing a Search Report. The search report is published together with the application and this usually takes place after expiration of 18 months from the filing date. The International publication and International Search Report substitute those of the EAPO. If no request for examination is filed, the application is deemed to be withdrawn. Like in Russia, the application may be reinstated within 12 months from the missed term provided that the Official fee is paid and excusable reason for missing the set term is provided.

In contrast to Russia, a 6-month grace period in Eurasia is calculated back from the Eurasian filing date or from the priority date, if any. Thus, if an invention was disclosed before e.g. PCT filing date and there is a priority application on which conventional priority is claimed for this PCT case, filing the Eurasian application may be the only way to protect the invention in the region.

The substantive examination system in Eurasia is quite similar to the Russian one. However, a substantial advantage of prosecution in Eurasia is that amendments can be voluntarily made at any prosecution stage before issuing the final Decision – on patent grant or rejection.

The accelerated examination is available and includes the PPH program with the JPO and the EA-PCT program covering the EPO, JPO, USPTO, KIPO and RUPTO and working similarly to PPH.

The rejected Eurasian patent applications can be transformed into Russian patent applications within 6 months after the applicant received Decision on Refusal of Patent Grant or within 6 months from the date on which the applicant received a notification on dismissing the Appeal against refusal of patent grant. The Russian application in which the Eurasian application is transformed, receives the same filing and priority dates of the Eurasian application.

Important to know is that in accordance with Article 1397 of the Code the Eurasian patent and Russian patent for identical invention (identical invention and utility model) with the same priorities may validly co-exist. However, if the assignees are different, such inventions shall be used with due account for the rights of each, and if the assignee is the same, such assignee may grant a license only for all such inventions.

Comparing the prosecution time and cost, the following should be taken into account. Time required for obtaining a patent in Russia and Eurasia is quite comparable. The cost for obtaining the patent in Eurasia is, of course, significantly higher than that in Russia but may be comparable with corresponding national applications covering two or three member countries.

Summarizing the above, it should be noted that both the Russian and Eurasian systems are not much different from the world leading patent systems.

The Eurasian market being created to upgrade, raise competitiveness of and cooperation between the national economies has enormous innovative potential and importance of adequate IP 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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions