Of all types of patent searches, the prior art search is the one that is crucial before filing a priority patent application. This is necessary to evaluate the chances that the patent for the claimed invention/utility model will be granted. To this end, our patent attorney can perform a preliminary search aimed at discovering relevant prior art and assessing whether or not the solution at issue will meet patentability criteria.
Do Russian and Eurasian patent offices require annual payments for keeping patent applications in force?
No annuities are due either in the Russian Patent and Trademark Office or in the Eurasian Patent Office while the patent application is pending.
According to Russian IP law, the first accumulative annuities should be paid together with the grant and registration fee, starting from the 3rd year for Russian invention patents and from the 1st year for Russian utility model patents. The due date is counted from the date of filing the application (international filing date for PCT national phase applications).
The year from which the annuities for a Eurasian patent should be calculated depends on the national rules of each respective country and varies for different countries (1st, 2nd, or 3rd year).
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 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.
Can I get a patent term extension in Russia?
In case more than five years have lapsed between the filing date of an application for an invention related to a medication, pesticide or agrochemical product (if its use requires authorization) and the date of the first marketing authorisation, the term of the patent shall be extended upon request of the patent owner by the Russian Patent and Trademark office. The term shall be extended for the period computed from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.
The request for extension of the term should be submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, whichever comes last.
For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights. For the remaining invalidation/cancellation actions (a few rare types of cases) the venue is defined according to general rules depending on the defendant's address.
At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g. manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.
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