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

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


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Do foreign applicants need a Russian or Eurasian attorney?

Do foreign applicants need a Russian or Eurasian attorney?


It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is listed in the Russian Register of Patent Attorneys.

Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.

To be successfully guided through the intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.


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What are possible ways of accelerating prosecution of patent applications in the Eurasian Patent Office?

What are possible ways of accelerating prosecution of patent applications in the Eurasian Patent Office?


There are three different ways of accelerating prosecution of patent applications in Eurasian Patent Office:

  1. PPH pilot programs between EAPO and EPO, between EAPO and the Patent Offices of Japan and China have been launched. A PPH pilot program with the Korean Intellectual Property Office of the Republic of Korea (KIPO) started in 2019.
  2. In addition to the signed PPH programs, the Eurasian Patent Office adopted a Pilot Program of accelerated processing of PCT regional phase applications. On the applicant’s request, the substantive examination of the application shall take into consideration work products of the international phase prepared by several major Patent Offices including some of those with which EAPO does not have PPH programs. EAPO shall issue the first office action or allowance/rejection decision within 3 months from the acceptance of the request.
  3. Accelerated prosecution of Eurasian patent applications is available to applicants for an additional fee. The formal examination can be completed in 5-10 days. In case accelerated substantive examination is requested, the Eurasian patent office undertakes to dispatch the first official communication within 3 months from the acceptance of the request.

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


What is the deadline for filing a divisional application in the Russian and Eurasian Patent Offices?

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:

  • at any time during the prosecution and, if the patent is granted, before the date of the registration of the patent;
  • in case of refusal, during the statutory time period allowed for challenging the decision of refusal, i.e.:
    • 7 months from the date of the dispatch of the decision of refusal or
    • 7 months from the date of the dispatch of the cited references provided that they have been requested within three months from the dispatch of the decision of refusal.

A divisional application can be filed with the EAPO:

  • at any time during the prosecution and, if the patent is granted, before the date of the registration of the Eurasian patent;
  • in case of refusal, during the time period allowed for challenging the decision of refusal, that is within three months of the date of receipt by the applicant of the notification of refusal.

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