Inventions and utility models - page 2

Do Russian and Eurasian patent offices require annual payments for keeping patent applications in force?

No annuities are due either in the Russian Patent and Trademark Office or in the Eurasian Patent Office while the patent application is pending.

According to Russian IP law, the first accumulative annuities should be paid together with the grant and registration fee, starting from the 3rd year for Russian invention patents and from the 1st year for Russian utility model patents. The due date is counted from the date of filing the application (international filing date for PCT national phase applications).

The year from which the annuities for a Eurasian patent should be calculated depends on the national rules of each respective country and varies for different countries (1st, 2nd, or 3rd year).

Can I use arguments for invalidity as a defense in an infringing action brought in Russia by the patent’s owner?

The defendant in a patent infringement case brought to a Russian court can challenge the patent validity. However, since the Russian patent system is bifurcated, the defendant cannot assert invalidity of the patent in question to the infringement court, but has to initiate a separate proceeding at the Chamber for Patent Disputes in the Russian Patent and Trademark Office. Accordingly, infringement and invalidity of the patent at issue will be examined in separate proceedings.

The court judgment on the infringement suit is appealable to a local court of appeals and the appeal decision comes into force immediately. The decision of the court of appeals can be challenged before the Court for intellectual property rights as a cassation instance.

The decision of the Chamber for Patent Disputes on the patent’s validity is appealable to the Court for intellectual property rights, and its decision can be challenged before the Presidium of the same Court as a cassation instance.

Therefore, a judgment by an infringement court may come earlier than that by the Chamber for Patent Disputes, and an injunction could be enforced by a patentee even if the patent is invalidated later on.

Do Russian and Eurasian patent procedures include a provision for deferred examination?

Patent examination in Rospatent can be initiated within 36 months from the date of filing the patent application (for PCT national phase applications – from the international filing date).

In EAPO, the examination request can be filed within 6 months starting from the publication of the application (the publication takes place in 18 months calculated from the filing of the application or from the priority date if a priority has been claimed); however, this deferral does not apply to Eurasian PCT regional phase applications for which the examination request should be filed simultaneously with filing the patent application.

How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?

The Russian part of a PCT application (as any Russian patent or patent application) can be transferred/assigned to another party on the base of an agreement between the parties (the recordation of the transfer of rights under a Russian patent takes about two months within the RUPTO plus preparation work).

A transfer/assignment of a Eurasian patent (patent application) can only take place with regard to all the contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, Turkmenistan). Therefore, if the patent holder intends to transfer their patent rights with regard to Russia only, they will be unable to do so as long as the Eurasian patent is maintained in force in other countries.  (And even if the patent holder has recently stopped paying annuities for some countries, the 3-year reinstatement right would be transferred together with the Eurasian patent).

I own a valid Russian patent. What happens if it turns out that somebody has used my invention before my filing the application?

According to Article 1361 of the Russian Civil Code, the person who has in good faith used a solution identical to the patented invention before its priority date, retains the right to use the same solution without increasing the scope of its use (the right of prior use). Therefore, the patent holder is entitled to request from the said person that the volume of use not be increased.

It is important to note that if the other party is able to prove that prior use de facto represented public prior use/open use (which means, in general terms, that the solution has been disclosed to the public in sufficient details), there is a threat of the patent’s invalidation on the grounds of lack of novelty.

What is the deadline for filing a divisional application in Ukraine?

Unlike Russian or Eurasian patent rules (under which a divisional application can be filed before the patent registration or before the lapse of the period allowed for challenging the refusal decision), Ukrainian legislation allows filing a divisional application only before the decision on the initial application is issued (decision of grant or refusal). This limitation is often a stumbling point for applicants familiar with Russian and Eurasian patent regulations.

Do I have any protection after publication of a Russian patent application and before the grant of the patent?

As in most patent jurisdictions, an applicant receives in Russia provisional legal protection of his or her rights during the period between the publication of the patent application and the publication of the granted patent (Article 1392 of the Russian Civil Code).

Any third party having used the invention during the said period shall pay to the patent holder a reasonable compensation. If the parties do not agree about the amount of the compensation, the same should be defined by the court. It is important to understand that the right holder can bring a legal action against such a third party only after the registration and publication of the patent.

Is it mandatory to request a substantive examination in Georgia and what is the deadline for filing the request?

Under Georgian patent regulation, it is mandatory to request a substantive examination. As soon as the formal examination is completed, the applicant receives a notification. The request for a substantive examination should be filed within two months after receiving the notification.

Can the applicant file voluntary amendments during the processing of a Russian invention patent application?

It goes without saying that an applicant can file amendments to the application in response to an office action. In addition, he or she has an opportunity to file voluntary amendments (irrespective of received office actions) once, at any time after receiving the search report.

Does the Russian patent office require metric units in patent applications?

Although in the RUPTO regulation there is a mention that preferably metric units should be used in Russian invention patent applications, there is no prohibition to use imperial or US customary units.

Do I have to prove the legal interest for filing a nullity action against a Russian patent?

According to Russian patent legislation, any person who became aware of violations of patent law can file an invalidation action to the Russian Patent office (or to the court in case the violation relates to the list of the inventors/applicants) during the term of validity of the patent. However, only a person having legal interest in invalidating the patent can file an invalidation request after the expiry of the patent.

Is forum shopping available in patent/trademark litigation in Russia?

For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.

At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.

How can I invalidate a Eurasian patent?

Within 6 months of the publication of the mention of the grant of a Eurasian patent, any person (non-residents of any contracting state – through a registered Eurasian patent attorney) can file an opposition against the grant of the Eurasian patent to the Eurasian Patent Office. After the 6-month period has expired, the Eurasian patent can be invalidated separately in each of the contracting states according to the national procedures. In Russia, for example, the nullity action, in most cases, should be filed with the Russian PTO, the decision of which is appealable to the Court for Intellectual Property Rights.