ESSENTIAL FEATURES OF EURASIAN PROCEDURE
It takes from 2 to 4 years to register the invention in Eurasia.
However there exists the possibility to extend this term.
In accordance
with the Rule 49 of the Patent Regulations under the Eurasian Patent Convention
the applicant has a right to file a Divisional Patent Application. Divisional
Eurasian Application may be filed if on it’s filing date the initial application
has not been withdrawn or the patent for the initial patent has not been
registered.
Executive Authority
An executive authority of the Eurasian Patent Organization is the Eurasian
Patent Office, which is located in Moscow (the capital of the Russian
Federation).
Language for proceeding
Language for proceeding is Russian. Therefore all applications and documents
should be filed or later translated into Russian. All correspondence with the
EAPO should be done in Russian and exceptionally through the registered Eurasian
Patent Attorney. In spite of seeming complexity, this fact helps to avoid the
necessity of drafting documents into the different languages of the States
Parties.
Designation of contracting states
In contrast to the European Office’s Procedure, in Eurasia you do not have to
designate the Contracting States when filing the Eurasian Patent Application.
The opportunity to designate the countries for the legal protection
comes only when the Eurasian Patent is granted. If a patent owner does not pay a
due annuity for a certain country, the patent becomes invalid on the territory
of this country.
Priority
Priority under the Paris Convention should be claimed within 12 months from
the filing date of the initial application.
If for reasons beyond the
applicant’s control the application can not be filed within the specified time
limit, an extension for two months may be granted.
Time limit for entry
of PCT application into regional phase is 31 months from the priority date.
By this date EAPO should be provided with the request for the Eurasian
Patent and a document on payment of official filing fee. All other documents
including Russian translation can be filed within two months after the filing
date.
Conversion of the Eurasian Patent Application into a national patent
application(s)
Even if the application is refused by the Eurasian Patent Office the
applicant may file a request with the Eurasian Office designating those
Contracting States in which he wishes to file the Patent Application according
to the national procedure within a term of six months from receipt of the
Refusal Decision.
In each of such Contracting States, the Eurasian
Application is deemed to be a correctly drawn up national application filed with
the national Office with the same filing date and priority date as the Eurasian
application.
Convention priority can be also grounded on the application
filed to the Eurasian Patent Office.
REQUIREMENTS OF PATENTABILITY
Eurasian patent may be granted only for Inventions. The legal protection of
the intellectual property rights in Eurasia is not granted neither for Utility
Models nor for the Industrial Designs.
All requirements of patentability
established by the EAPC are the same as in PCT or European Patent Convention.
In accordance with the Article 6 of “Eurasian Patent Convention”, Eurasian
Patent Office shall grant a Eurasian patent for any invention that is:
-
novel
- involves an inventive step
- is industrially applicable.
The following objects are not recognized as inventions:
- Discoveries
- Scientific theories and mathematical methods
- Presentation of information
- Business organization and management methods
- Symbols, schedules and rules
- Methods of performing mental acts
- Computer programs and algorithms
- Topographies of integrated circuits
- Projects and plans for structures and buildings and for land
development
- Solutions concerning solely the outward appearance of manufactured goods
and aimed at satisfying aesthetic requirements.
In addition, Eurasian Patents cannot be granted for:
- Plant or animal varieties
- Invention, the commercial use of which it is essential to prevent for the
purposes of protecting public order or morality, including the protection of
the life and health of people and animals or the protection of plants, or in
order to prevent serious damage being caused to the environment.
In that
regard, such use may not be considered such, solely on the grounds that it is
forbidden by the legislation of one or more Contracting States.
Who may apply for a Patent?
In Accordance with the Article 7 of EAPC the right to the Eurasian Patent
shall belong to the inventor or his successor in title. Where the inventor is an
employee, the right to the Eurasian Patent shall be determined in accordance
with the law of the State in which the employee is mainly employed; if the State
in which the employee is mainly employed cannot be determined, the law to be
applied shall be that of the State in which the employer has a place of business
to which the employee is attached.
Any natural person, legal entity,
organization or the group of applicants can file Eurasian Application.
Applicants who do not have their residence or principal place of
business in one of the Contracting States of the EAPC have to file application
and communicate only with the assistance of the registered Eurasian
Patent Attorney.
Required filing information and documents
- Full name and address of the applicant(s)
- Full name and country code
of residence of the inventor(s)
- Document confirming the right of the
applicant(s) for 80 % discount, in case the applicant(s) has residence in
country where per capita Gross National Income is 3000 USD or less (may be filed
within four months from the date of the Official Request)
- Detailed
description of invention with claims, abstract
- Drawings (if any)
-
Sequence listing on CD (if any; can be submitted within four months from the
date of the Official Request)
- Priority number, date and country of the
first application, if convention priority is claimed (certified copy of the
first application may be filed within three months from the filing date)
-
International publication, international search report, international
preliminary examination report for entry of PCT application into national phase
- Simply signed Power of Attorney (legalization and notarization is not
required; the original of signed Power of Attorney must be filed to the Eurasian
Patent Office within 2 months from the filing day, otherwise the Official Fee
for late filing of the Power of Attorney has to be paid).
Stages of Examination
The procedure of examination is quite common and consists of two stages:
formal and substantive examination.
The application undergoes formal
examination within 2 months from the filing date.
The substantive
examination is conducted provided that the results of the formal examination are
positive.
Please note that substantive examination request has to be
filed within 6 months from the date of publication of PCT Application or
simultaneously with entering of PCT application into regional phase.
Publication and Provisional Protection
The Eurasian Patent Application is published by the Eurasian Patent Office
after the expiration of a 18 months period starting from the filing date or, if
priority has been sought, from the date of priority. It may, however, be
published earlier at the applicant’s request upon payment of an additional fee.
The invention, which is applied to the Eurasian Patent Office, obtained
Provisional Protection for the period between the publication and grant of the
Eurasian Patent.
The Publication of the Eurasian Patent Application affords
provisional legal protection within the scope of the published claims on the
territory of all the Contracting States.
Grant
If the invention meets the requirements of patentability, the Decision of the
readiness to grant the Patent is issued. After payment of the registration fee
the Final Decision to grant the Patent is issued within 2-4 months. Term for
payment of the prescribed fee is 4 months from the date of issue of the
Decision.
The granted Eurasian Patent is valid on the territory of all
Contracting States from the date of its publication, i.e. such a patent
is equivalent to national patents in all of the Contracting
States.
No national validation in the Contracting states has to be
initiated. The Patent Owner can limit the territory of legal protection for the
invention by not paying the annuities in these countries.
FEES AND DISCOUNTS
Most fees relating to the Eurasian Application or Patent are paid to The
Eurasian Patent Office.
Statute on Fees of the Eurasian Patent Organization
may be found at: http://www.eapo.org/eng/documents/poshlina.html
Please
note that:
- official fee for filing the application depends on the quantity
of independent claims and may be reduced by 25 % if International Search Report
is submitted.
- official fee for examination depends on the total quantity
of independent claims.
- granting fee is fixed.
- the sum of Annuities
depends on the number of chosen for validity of the Patent countries.
Applicant(s) have the right for 80 % discount for the official fees, in
case the applicant(s) has residence in country party of the Paris Convention
where per capita Gross National Income is 3000 USD or less.
The right to
the discount should be confirmed by the appropriate document (may be filed
within four months from the date of the Official Request).
The list of
States Parties to the Paris Convention on the protection of industrial property
eligible for reductions in fees may be found at: http://www.eapo.org/eng/documents/prilposh.html
Renewals (Annuities)
The maintenance fees shall be payable for each year which follows after the
grant of the Eurasian Patent by the date corresponding to the filing date of the
Eurasian application.
Annuities are to be paid in designated by the
applicant Contracting States in which he decides to obtain the legal protection
for the invention.
The maintenance fees are paid not in each designated
country, but only to the Eurasian Patent Office.
The start of the
payment of annual fees differs from state to state. In the Republic of
Azerbaijan, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz
Republic, the Russian Federation and the Republic of Tajikistan annual
maintenance fees are payable starting from the third year of a Eurasian patent’s
validity. In the Republic of Armenia they are payable from the second year. In
the Republic of Moldova and Turkmenistan they are payable from the first year.
In spite of this fact, all fees for maintenance of the Eurasian Patent
are not to be paid until the Eurasian Patent is granted. The missed Annuities
should be paid after the Grant and only if the Patent Owner decides to choose
this country as a territory for validation of the Patent.
LEGAL ASPECTS
Validity term
The validity term of the Eurasian Patent is 20 years from the filing date of
the application.
Upon the request of the patentee, the twenty-year term of
the Eurasian Patent may be extended in Contracting States whose legislation
contains a provision for the extension of the term of national patents.
Opposition
Rule 53 of the Patent Regulations provides that an opposition is to be filed
within six months from publication of the mention of grant in the Official
Bulletin and an opposition fee is paid. Thus, the term for filing an opposition
is three months shorter than with the EPC.
The following cases are the
reasons for opposition:
- the grant of the Eurasian Patent had no legal
basis owing to the invention not meeting the patentability requirements
-
the claims include features that did not appear in the Eurasian Application as
originally filed.
Amendments
Amendments to the Patent Application can be made upon the request of Eurasian
Examination Board or of the own volition of the applicant. Such amendments may
not expand the scope of the Patent and may be made before a decision on granting
a Patent is taken.
Any amendments or corrections to the Eurasian
application proposed by the applicant on his own initiative shall be made after
the payment of the prescribed additional fee.
After the patent is
granted technical or obvious errors in the Eurasian Patent may be corrected upon
payment of the prescribed fee.
The patent owner also may request the
Eurasian Patent Office to change the list of inventors. Change of list of
inventors is the subject to payment of a prescribed fee and can be made only by
approbation of all the parties.
Disclosure
Any kind of information made available in the world before the priority date
of the application is considered to be destroyable for the novelty of the
invention.
However there is a grace period of 6 months. Disclosure of
information relating to an invention by the inventor, applicant or any person
who has obtained this information from them directly or indirectly is not
regarded as prejudicial to the patentability of an invention if the patent
application was filed to the Eurasian Office not later than six months after the
date of disclosure, or the date of priority where priority was sought. Proof of
the circumstances of disclosure is reserved with the applicant.
