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.
What is the time limit for entering the Eurasian regional phase? Can this term be reinstated?
The time limit for entering the regional phase before the Eurasian Patent Office is 31 months from the priority date or the earliest priority date of several claimed priorities; if no priority is claimed, the time limit is 31 months from the filing date of the international application. The said time limits can be reinstated within 12 months on the applicant’s request in case the Patent office acknowledges the validity of the reason for the delay. The official fee for the reinstatement amounts to 25,000 RUR.
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 it true that the examination request should be filed with the Eurasian patent office on the date the application is filed?
This requirement (to file the request for substantive examination within the same time limit as the application) only applies to PCT Eurasian regional phase applications. For other types of applications, the examination request should be filed within 6 months of the date of publication of the patent application.
How is it possible to speed up prosecution of patent applications in Russia?
One of the ways to accelerate patent prosecution in Russia is the Patent Prosecution Highway (PPH). Currently, the Russian Patent and Trademark Office (RUPTO) has pilot PPH programs with the European Patent Office and the Patent Offices of Japan, US, Korea, Finland, Spain, Denmark, China and Portugal. According to the signed agreements, RUPTO’s patent examiners will take into consideration PCT and national/regional work products. Filing the PPH request, the client may count on receiving fewer office actions and consequently decreasing the term of prosecution.
Another way is the RUPTO’s paid service allowing the applicant to receive the search report within 10 working days. The search results allow decreasing to two months the term of issuing the first office action or the decision of grant. The official tariff charged for this service amounts to 94,400 RUR.
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.
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