The Eurasian Patent System allows applicants to take advantage of a Eurasian regional patent that is valid not only in Russia, but also in the other seven member countries of the Eurasian Patent Convention (EAPC): Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Turkmenistan, and Tajikistan.
Patent applications are filed with the Eurasian Patent Office (EAPO, located in Moscow) in a single language (Russian) and are processed by the EAPO until granted. The patent issued is immediately valid in all the member states. Although the Eurasian official fees are considerably higher than those charged by any national Patent Office, the processing of one Eurasian application is usually more cost-effective than separate prosecution of two or three national applications.
The Eurasian Patent System is traditionally popular among foreign applicants who represent a vast majority of the filers (despite the large discounts on official fees offered to applicants from member states). Accordingly, most Eurasian patent applications are regional stages of PCT applications, or else they claim priority from earlier foreign applications.
Initial (priority) applications are filed with the Eurasian Patent Office through the national Patent Offices in accordance with national first filing requirements. (Please refer to the First filing Requirement/Foreign Filing License section below.)
The way the Eurasian Patent Convention works is very similar to the European Patent Convention; it is even more convenient and applicant-friendly in some respects: for example, there is no special validation procedure and the Eurasian patent holder chooses the countries where the patent should be maintained by merely paying the respective annuities. All the annuities are paid directly to the Eurasian Patent Office.
Our Eurasian patent attorneys will help you to file your patent applications with the Eurasian Patent Office for any industry sector and will professionally guide you through each step of the examination.
First Filing Requirement (Foreign Filing License)
The term “foreign filing license” is not directly mentioned in Russian IP legislation. At the same time, Russian regulations contain provisions similar to those set forth in countries that oblige national applicants to receive special permission before filing patent applications abroad.
In case the invention has been developed in the Russian Federation, the applicant is required by Russian law to file their first application in Russia (direct national filing or international application filed with the RUPTO as the International receiving office).
Any subsequent application can only be filed abroad after a six-month check performed by the Russian Patent Office. The check is meant to reveal state secrets the invention may eventually contain. Rospatent does not issue any special permission to file foreign applications (as compared to the US foreign filing license, when PTO issues a corresponding notification). The lapse of the said six-month term automatically allows the applicant to file subsequent applications with foreign Patent offices. The term may be reduced by filing a request explaining that the application materials do not contain state secrets. Reduction of the term lies then within Rospatent’s discretion. It may normally be reduced to 3-4 months.
If, in breach of said rule, the applicant files the patent application with a foreign Patent office, Russian law stipulates administrative liability (monetary penalties). At the same time, if, after an unauthorized foreign filing, a state secret is revealed in the invention, both the applicant and the inventor become criminally liable.
We will be happy to provide more information and perform an analysis of a specific situation involving the first filing requirement.
Which countries are covered by a Eurasian patent?
Currently: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan are members of the Eurasian Patent Convention. Moldova left the Convention on February 27, 2012, but the patents registered on the basis of applications filed before that date, are valid.
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.
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.
Can one and the same person hold Russian and Eurasian patents based on the same priority application?
Yes, Russian and Eurasian patents based on the same priority application may coexist with slightly different or even identical sets of claims. However, it is important to note that a Eurasian patent covers eight countries, including the Russian Federation (in case of timely payment of patent annuities in the relevant countries). That is why obtaining both Russian and Eurasian patents based on the same priority application is usually redundant and it entails additional rightholder expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions in respect of which the risk of opposition is very high.
Can the PCT national stage start before the expiration of the time limit?
In both Russian and Eurasian Patent Offices, the processing of a PCT national (regional) stage application may start before the expiration of the 31-month time limit in case the applicant makes an express request to the Patent Office.
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