PCT Entry, Patent Application In Russia

Invention/utility model patent applications are filed with the Russian Patent and Trademark Office – the Federal Service for Intellectual Property (Rospatent).

Most of the patent filings received by the RUPTO from foreign applicants are national phases of PCT applications or national applications claiming conventional priority from applications filed in foreign countries. In case the invention was made in Russia, it is required that the first application be filed with Rospatent. (Please refer to the First Filing Requirement/Foreign Filing License section below.)

Sojuzpatent processes patent filings electronically, which ensures a 30% discount off the official fees.

For invention/utility model patent applications, the Russian PTO performs both formal and substantive examinations. For invention patent applications, a separate examination request should be filed no later than 3 years from the filing date (for PCT national stages - from the international filing date). The substantive examination for utility model patent applications is started automatically after the formal examination has been completed.

Most of our patent attorneys have prior experience working as examiners in Rospatent, and their extensive technical knowledge is combined with a deep understanding of the Patent Office’s approaches and requirements.

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First Filing Requirement (Foreign Filing License) in Russia

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 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.

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FAQs

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

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.


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How is it possible to speed up prosecution of patent applications in Russia?

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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What is the time limit for entering the national phase in Russia and neighboring countries?

What is the time limit for entering the national phase in Russia and neighboring  countries?


The time limit for entering the national phase in Russia is 31 months from the priority date (the earliest priority date if several priorities are claimed), and, if no priority is claimed, 31 months from the filing date of the international application.

The time limit for other post-Soviet countries are as follows:

Country

Time limit in months

As designated office

As elected office

Armenia,

31

31

Azerbaijan

30

31

Belarus

31

31

Estonia

31

31

Georgia

31

31

Kazakhstan

31

31

Kyrgyzstan

31

31

Latvia

There is no national phase, the application should enter the regional phase before EPO

Lithuania

There is no national phase, the application should enter the regional phase before EPO

Moldova

31

31

Tajikistan

30

31

Turkmenistan

30

31

Ukraine

31

31

Uzbekistan

31

31


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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.

Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?

Can inequitable conduct be a valid defense argument in a patent infringement case in Russia?


Patent infringement litigation and invalidation proceedings in Russia are totally bifurcated and therefore, if an infringement action is initiated, invalidity arguments are not considered in the proceedings and cannot be asserted as a defense in patent infringement cases.

Moreover, currently the courts do not normally suspend infringement litigation if an invalidation action is filed with the RUPTO after the infringement suit has been brought.

As to invalidation proceedings, there is no such grounds for invalidity as inequitable conduct. The applicant does not face any repercussions in terms of patent validity for not disclosing any information known to them that would contradict patentability of the invention.


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