The introduction of the Eurasian Design protection system is one of the recent notable events in the Eurasian region.
The countries-signatories to Eurasian Patent Convention (EAPC) signed on September 09, 2019 a Protocol on Protection of Industrial Designs (Protocol), which entered into force on March 17, 2021. The Protocol enlarged the functionality of the Eurasian Patent Convention as it now provides for a possibility to obtain a Eurasian patent for industrial design by the way of filing of a single application with the Eurasian Patent Office (EAPO) situated in Moscow, Russia.
As from June 01, 2021 the EAPO started to accept applications for Eurasian industrial designs.
Actually, the Protocol is valid for five countries: Russia, Armenia, Azerbaijan, Kyrgyzstan and Kazakhstan. The other countries signatories to EAPC (Belarus, Tajikistan, Turkmenistan) are supposed to implement respective national procedures for joining the Protocol.
The Eurasian Design protection system can be a good alternative to the national filing of a separate design application in each country of interest or to filing an application through Hague system of international registration of industrial designs, in particular, because the procedure of obtaining an Eurasian Design Patent is expected to be more cost-effective.
What is Eurasian Industrial Design?
According to the Protocol an Eurasian industrial design (EAID) is a solution of an outer appearance of an industrial or handicraft article, which should be patentable according to set criteria, in particular, packaging, label, composite article, set of articles, typeface, as well as an independent part of an article.
The Eurasian Design Patent is issued for an industrial design that is new and original in its essential features, which are the features defining aesthetic peculiarities of the outer appearance of an article, in particular the form, configuration, ornament (pattern), combination of colors, lines, contours, texture of the material the article is made of.
Accordingly, an EAID can obtain protection in case it is:
- new and not known from the information that became publicly available in the world before the filing / priority date of the industrial design;
- original what means that the essential features of the article have a creative character, in particular, if there is no prior known solution with similar purpose which makes the same overall impression on the informed user.
The Patent Instruction to the Protocol provides for a "grace period" of 12 months for filing an application for an EAID without affecting the patentability in case the information related to this design has been disclosed by the author, applicant or other person who received this information from them.
It is important to note that the novelty and originality of the claimed design will be checked by the Examiner of the EAPO at the stage of substantive examination only in case an opposition is filed by a third party (based on non-compliance with said patentability criteria) and only in frames of information and materials submitted with the opposition.
The Patent Instruction provides for a list of solutions that cannot be protected as EAIDs, which will be checked by the Examiner of the EAPO.
Already on the stage of formal examination the Examiner will check if the claimed design is not contrary to public interests or principles of humanity and morality even in one of the Member States of the Protocol.
On the stage of substantive examination the Examiner will check if the claimed design should be considered as non-patentable because:
- it includes, reproduces or imitates official symbols (including state symbols or signs), or their recognizable parts, or names and symbols/signs of international organizations (or their recognizable parts) without the respective consent of competent state bodies or competent bodies of international organizations; or official control, warranty or hallmarks, seals, awards and other insignia (or their recognizable parts). These elements can be included in the Eurasian industrial design as non-protectable elements in case the consent of mentioned competent bodies is obtained;
- all features of the claimed design are determined exclusively by technical function of the article.
The following requirements will be checked by the Examiner on the stage of substantive examination only in case of oppositions by third parties against the claimed design, namely, the proposed solution should be deemed non-patentable in case:
- it includes, reproduces or imitates official names or pictures of cultural heritage sites or their recognizable parts without the consent of respective competent bodies of a Member State or without the consent of the respective right holder (these elements can be included in the Eurasian industrial design as non-protectable elements in case the consent is obtained);
- it is identical or confusingly similar with prior trademarks of third parties (filed and published or already protected on the territory of a Member State) or it includes such trademarks;
- it is identical or confusingly similar with copyrighted objects earlier known on the territory of a Member State or it includes such objects without the consent of the copyright holder;
- it is capable to mislead the consumers in respect of the article or its manufacturer, or place of origin.
An application for an EAID is to be filed with the EAPO on paper or electronically in the Russian language.
The applicants not domiciled in Member States of the Protocol should be represented by Eurasian Patent Attorneys duly registered before the EAPO.
The application must indicate:
- the name and address of the applicant
- the name and address of the author of the design
- the address for correspondence
- the title of the industrial design
- the indication of the article or the product connected with the claimed design
- the class of the International classification of industrial designs (ICID)
- the priority claim (if any)
The application should also include a set of pictures of the claimed design with different views, but no more than seven views for each claimed design. The pictures can be submitted in the form of photos, drawings or computer-generated pictures or as copies thereof.
It is allowed to use dashed lines or color marking in order to show the parts or elements which are disclaimed from claiming protection by the applicant. The parts or elements of the articles that are claimed for protection should be represented by solid lines.
The application can include up to 100 industrial designs provided that they all relate to one class of the ICID. However, in case the pattern is claimed as an industrial design it can be included in one application with other designs relating to a different class of the ICID.
Procedures before the Eurasian Patent Office
LHaving received an application for EAID the EAPO conducts a preliminary (formal) examination and checks if the claimed design and enclosed documents compliy with formal requirements and verifies if the claimed design does not contradict the principles of humanity and morality at least in one Member State.
In case of positive result of preliminary examination the application is published for opposition purposes within a month from the date of forwarding the notification about positive result of formal examination. It is important to note that no deferment of publication is provided.
Within two months from the publication date third parties (and also a national State Patent Office if it is provided by the legislation of the respective Member State of the Protocol) are entitled to file an opposition against the application for EAID on the basis that the claimed design is not new or original or represents a non-patentable solution according to the Protocol / Patent Instruction.
In case of positive result of preliminary examination the EAPO conducts a substantive examination with due account of oppositions, if filed by third parties. The novelty and originality of the claimed design will be checked by the substantive examination only in case a third party files an opposition insisting that the claimed design does not comply with these criteria. The Examiner's check in this case will be limited only by the information submitted along with the opposition.
The substantive examination may result in issuance of a decision of grant or decision of refusal. The decision of refusal can be objected by the applicant with the EAPO within three months from the date of forwarding the decision. In case the decision remains negative it can be further appealed with the President of the EAPO within four months from the date of its forwarding to the applicant.
The Protocol provides for a possibility to transform the application for an EAID into national applications in the Member States of the Protocol (per choice of the applicant) in case of refusal to grant a Eurasian Design Patent.
In case of positive decision the EAID is registered in the Register of the EAPO and published in the Official bulletin within two months subject to payment of the respective fees and the Eurasian Design Patent is issued promptly after publication. The Eurasian Design Patent is valid on the territory of all Member States.
Validity and Invalidation
The term of validity of an Eurasian Design Patent is 5 years counting from the date of filing an application and it can be extended for a term of 5 years several times, but the overall term of validity cannot be more than 25 years.
According to provisions of the Protocol and Patent Instruction the Eurasian Design Patent can be challenged and held invalid in full or in part in two ways: as a result of an administrative procedure before the EAPO or as a result of proceedings in the national Court(s) or other competent bodies of Member States.
An administrative invalidation procedure before the EAPO can be initiated by any person as well as by a national State Patent Office (if it is provided by the legislation of the respective Member State) by filing an invalidation action within six months from the date of publication of the Eurasian Design Patent.
The decision rendered as a result of consideration of the invalidation action can be further appealed with the President of the EAPO within four months from the date of forwarding the decision to the party.
The invalidation of the Eurasian Design Patent as a result of administrative procedure before the EAPO concerns all Member States.
The Eurasian Design Patent can be also challenged and held invalid in full or in part by national Court(s) or other competent bodies of Member States. The invalidation procedure is regulated in this case by the legal provisions of the respective Member State.
In case the decision of invalidation is issued as a result of proceedings in national Court(s) or other competent bodies of Member States it will be valid only for the territory of the Member State where such decision was issued.
The Eurasian Design Patent will remain valid on the territory of Member States where the decision of invalidation was not rendered.
Disposal of EAID Exclusive Rights
The Eurasian Patent Convention provides different options for disposal of his exclusive right to the EAID.
The Eurasian industrial design can be assigned but it should be noted that the assignment of the exclusive right to the EAID shall be permitted for the territories of all the Member States within which the patent is valid only and partial assignment shall not be allowed.
Another approach shall be applied when the patent covers several industrial designs. In this case the assignment of the exclusive right for the EAID to another person shall be possible for all or any of the industrial designs specified in the EAID patent.
At that the assignment of an industrial design shall not is allowed if it can be the reason for consumer's confusion with regard to the manufacturer of the product or place of manufacture of the product.
According to the Eurasian Patent Convention the EAID may be as subject of a license agreement concluded with respect to any Member State on the territory of which the EAID patent is valid.
The exclusive right to the EAID may also be a subject of a security of interest (pledge) agreement, in which the parties may specify the date from which the pledge of the exclusive right to the EAID arises. If such a date is not specified in the agreement, the pledge arises from the date of the conclusion of the security of interest agreement by default. The parties are generally free to determine the terms of the agreement provided that it includes the following mandatory provisions: a subject of the agreement, the results of the assessment of the exclusive right to pledged industrial design, substance, value and duration of fulfillment of the obligation secured by the pledge.
After the security of interest agreement is concluded the EAID patent owner shall still have the right to dispose of the exclusive right to the EAID in order to fulfill the pledge obligation if otherwise is not envisaged by the agreement.
Recordals and Publication
According to the Eurasian Patent Convention the assignment and security of interest agreements must be registered before the Eurasian Patent Office and shall be considered valid for third parties only after its registration with the Eurasian Patent Office.
The license agreement must by registered by the national patent office of that Member State in respect of territory of which the relevant agreement has been concluded. At that the national patent office shall immediately after the registration of the license agreement notify the Eurasian Office of such registration.
The Eurasian Patent Office shall publish information about assignments, licenses and security of interest agreements in the official bulletin of the Eurasian Patent Office.
Enforcement of EAID Exclusive Rights
The exclusive right to the EAID is valid within the territory of all Member States, joined to the EAID protection system, and the EAID patent owner shall have the right to enforce his EAID exclusive rights in accordance with the national laws and procedural rules applicable to the national industrial designs in the Member State on territory of which the infringement takes place.
The scope of legal protection afforded by a Eurasian industrial design patent shall be determined by the essential features of the industrial design that are reflected in the images of the product.
Temporary Legal Protection
According the Rule 84 of the Patent Instruction to the EAPC the EAID shall enjoy a temporary legal protection for the EAID in the territory of all Member States. At that the scope of temporary legal protection shall be determined by the all of the essential features of the industrial design, which are reflected in the images of the product published by the Eurasian Patent Office.
The patent owner shall have the right to claim reasonable compensation from the persons who used the claimed industrial design during the period between the date of the EAID application publication and date of the EAID paten publication, in accordance with the national legislation of the Member State in which territory the industrial design has been used. The temporary legal protection shall not be deemed to have occurred if a patent application has been rejected, the possibilities for appeal of which have been exhausted, or if the Eurasian application is considered withdrawn.
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.