Strategically located on the border between Europe and Asia, Georgia is, nevertheless, not a member of the regional patent treaties (the European Patent Convention and the Eurasian Patent Convention); accordingly, the only way to obtain patent protection is to file an application directly with the Georgian PTO – the National Intellectual Property Center of Georgia (Sakpatenti).
At the same time, Georgia participates in major worldwide IP conventions/agreements (such as the 1883 Paris Convention and the Patent Cooperation Treaty – PCT). Therefore, an applicant has the possibility to claim priority from an earlier foreign patent application (the Paris route) or enter the PCT national phase. Patent filing limitations and requirements in Georgia are consistent with generally accepted international practices.
Prosecution is conducted in the Georgian language only.
GEORGIAN INVENTION PATENT
Georgian patent examination consists of formal (2 months from the filing date) and substantive examinations (to be requested within 2 months after the completion of the formal examination). Prosecution of a Georgian patent application takes on average 1.5 - 3 years, depending on the volume of the application materials and the complexity of examination.
The Georgian patent term is 20 years; it can be extended by an additional 5 years for Georgian pharmaceutical inventions.
GE patent costs depend on the volume of the patent application, including the number of independent claims. Please provide us with the application particulars so we can calculate the filing costs.
Deadlines for filing a patent application in Georgia are:
Exception to lack of novelty (novelty grace period) in Georgia is 12 months from the first disclosure done before the filing (priority) date 1) by the inventor or his legal successor; 2) to a third party confidentially; 3) by an act of bad faith against the inventor or his legal successor.
Georgian non-resident applicants must be represented by local agents who are registered Georgian patent attorneys. Powers of attorney must be provided in original within 2 months after the patent application has been filed with Sakpatenti.
Patent filing requirements in Georgia:
A GEORGIAN UTILITY MODEL PATENT relates to the same subject matter as an invention patent, i.e. a product, a process, or a new use thereof. The main difference is that a Georgian utility model should only have one independent claim. Only local novelty is checked during the substantive examination, which is carried out within a month of the completion of the formal examination. On average, obtaining a utility model patent may take one year.
A utility model patent (instead of an invention patent) can be requested by the applicant when entering the PCT national stage.
Sojuzpatent will help you to file your patent applications with the Georgian Patent Office in any technical field with assistance of reliable local agents and will help you professionally through each step of the examination and granting. Our attorneys will take on all the substantive issues in every field of art, our state-of-the-art docketing system will help to keep track of the due dates, and our trusted agents will ensure that all the formalities within the Patent Office are fulfilled. We also provide after-grant guidance on annuities, licenses, assignments, recordation of changes, legal enforcement, litigation, negotiations, mediation, and dispute resolution.
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.
What is the deadline for filing a divisional application in the Russian and Eurasian Patent Offices?
A divisional application can be filed with the Russian PTO:
A divisional application can be filed with the EAPO:
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 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.
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.
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