On 1 June 2021 the Eurasian Patent Office (the EAPO) accepted its first application for a Eurasian design patent. Once granted, this patent will provide design protection in the following five EAPO member states: Republic of Azerbaijan, Republic of Armenia, Republic of Kazakhstan, Kyrgyz Republic and Russian Federation. It is anticipated that EAPO design protection will eventually extend to Tajikistan, Belarus and Turkmenistan.
History of Eurasian Patent Protection
The Eurasian Patent Convention (EAPC) came into force in 1995, with the aim of preserving the system of IP protection which had been in place prior to the collapse of the USSR.
The EAPO began accepting applications for Eurasian patents on 1 January 1996, and by the end of 2020 had received over 60,000 patent applications. Of these, 3,377 were filed in 2020, the vast majority (almost 74%) via the PCT system, under which the EAPO acts as a receiving office, designated office and elected office. Around 29% of the 2020 patent applications originated in the US, and the most popular technology areas were organic chemistry, pharmaceuticals and medicines.
Eurasian patents are unitary in nature and provide protection in all eight EAPO member states: Republic of Azerbaijan, Republic of Armenia, Republic of Belarus, Republic of Kazakhstan, Kyrgyz Republic, Russian Federation, Republic of Tajikistan and Turkmenistan.
The Eurasian system includes substantive examination for novelty and inventive step; a post-grant opposition procedure; the ability to submit third party opinions; and the opportunity to appeal against EAPO decisions. The requirements for patentability under the EAPC "correspond to PCT Regulations, European Patent Convention (EPC) and to legislation of the world developed countries".
Industrial Design Protection
The creation of a Eurasian design system has been underway since at least 2017. A Memorandum of Understanding between the EAPO and the EUIPO (the European Union Intellectual property Office) was signed in 2019, providing cooperation between the two offices and enabling the EAPO to study the EUIPO's procedure for examination of industrial designs, training of examiners and use of technology.
The EAPC Industrial Designs Protocol was signed at a conference in Nur-Sultan, the capital of Kazakhstan, on 9 September 2019 and entered into force on 17 March 2021 in respect of the Kyrgyz Republic, the Republic of Azerbaijan and the Republic of Armenia, and on 11 and 12 April 2021 in respect of the Russian Federation and the Republic of Kazakhstan.
The Eurasian Industrial Designs System
According to the EAPC Industrial Designs Protocol, an industrial design for which protection will be granted "shall be a design of the external appearance of an industrial or artisanal product that is patentable in accordance with the Patent Regulations to the Convention". Explicitly excluded from protection are designs which are contrary to public order; or reproduce or imitate official symbols or official names or images of cultural heritage. The right of priority will be recognised in accordance with the Paris Convention, and a twelve month grace period will be available. An industrial design patent will have a maximum term of 25 years.
Eurasian industrial designs should be filed at a national office of one of the contracting states. The application will be subject to a preliminary examination by the EAPO, to check that the criteria for establishing a filing date have been met. The application is then published; deferment of publication is not currently possible. Subsequently, the EAPO will perform a substantive examination of the application.
Further details of how novelty and individuality of a Eurasian design will be determined are expected shortly. Given the EAPO's cooperation with the EUIPO, we may see some similarities with the EUIPO system. However, since EU (Community) Design applications are not currently subject to substantive examination, there may also be significant differences.
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