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.
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 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.
Are software methods patentable in Russia?
Computer programs (software) are not considered inventions per se, but a software algorithm may under certain conditions be patented in the form of a method (method of processing, transmitting, converting data, etc.). Under Russian legislation, a patentable method consists in carrying out actions over material objects with the help of material means. An application for the grant of an invention patent may relate to an algorithm of a computer program described in the form of a sequence of actions on signals (material objects) providing a technical result achieved by means of a computer device (material means). In such cases, there are grounds for recognizing the claimed object as a technical solution having a technical result.
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.
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.
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.
What happens if the applicant does not meet the time limit for entering the national phase in Russia?
The rights of the applicant with respect to an international application in Russia can be reinstated within 12 months upon the applicant’s request. The request should state the reasons for not meeting the time limit. The official fee charged for reinstatement amounts to 5,000 RUB.
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