Filing and Obtaining a Eurasian Patent
– Eurasian Patent Convention of September 9, 1994.
– Patent Regulations, in force since December 1, 1995, with further amendments.
Applicant: the inventor or his successor in title.
Applicant not residing in a Contracting State: must be represented by a registered representative before the Eurasian Patent Office.
Where to file: (a) at the Eurasian Patent Office; or (b) at a national Office of a member State.
Fees: have to be paid at the Eurasian Office.
Designation of the Contracting States where protection is sought: all member States are automatically designated when filing. The choice of which States in which the patent should extend is made after the grant of the Eurasian Patent.
Designation of the inventor(s): the inventor must be named. The inventor(s) may refuse to be mentioned in the publication.
PCT: the Eurasian Office is a receiving Office for PCT applications and also a designated and elected Office. The time limit for entering the Eurasian phase is 31 months from priority date.
Patentability: inventions which are new, involve an inventive step and are industrially applicable.
Novelty: worldwide. Any information made available to the public before the filing or priority date is considered state of the art; grace period of six months when the disclosure was made available by the inventor.
Inventive step: similar to the EPO’s approach on the base of the so-called “problem-solving approach”.
Exceptions to protection: (1) discoveries; (2) scientific theories and mathematical methods; (3) presentation of information; (4) methods of economic organization and management; (5) symbols, schedules and rules; (6) methods for performing mental acts; (7) algorithms and computer programs; (8) topographies of integrated circuits; (9) projects and plans for structures and buildings and for land development; (10) solutions solely concerning the outward appearance of manufactured goods and aiming at satisfying aesthetic requirements; (11) plant varieties and animal breeds; (12) topology of integrated circuits; (13) solutions that are contrary to the public order or morality, including those dangerous to health and life of people, animals and plants, or those to cause serious damage to the environment.
Unity of the invention, allowable claims: Eurasian application shall relate to a single invention or a group of inventions interrelated so as to form a common inventive concept. The following groups of inventions meet the unity-of-invention requirement: (1) an independent claim relating to a device, substance or microorganism strain, or an independent claim relating to a process specially adapted for making the device or obtaining the substance or strain and an independent claim for use of this device, substance or strain; (2) an independent claim relating to a process and an independent claim relating to a device specially adapted for carrying out the said process; (3) an independent claim relating to a device, substance or microorganism strain, an independent claim relating to a process specially adapted for making the device or obtaining the substance or strain and an independent claim relating to a device specially adapted for carrying out the said process. In addition to the above, more than one independent claim is allowed in the same category on a single patent application, provided that the requirements for unity are met.
Priorities: according to the Paris Convention.
Filing requirements for an application (to be sent to registered Eurasian patent attorney):
1. Specification in singlicate, if filed directly with the Eurasian Patent Office, in English, German or French, for translating into Russian;
3. Power of attorney, no legalization;
4. Drawings in triplicate (A4 format);
5. Marked-up version of the claims in Russian to illustrate amendments to the claims, if any, that were made during entry into regional phase as per Article 41 of the PCT Treaty, and also explanations for said amendments and basis for the same;
6. Priority document(s), if any;
7. Document confirming payment of the unitary procedural fee.
Notes: Russian translation, as well as power of attorney, drawings and the abstract may be filed within two months from the filing date (for PCT applications two months from the national phase entry deadline). This term is extendible once for a further two months. The priority document must be filed within the three-month period after the filing date. This document is not required for the Eurasian regional phase of a PCT application. For other applications, a certified copy of the earlier application may be submitted within sixteen months from the date of filing thereof or later than the specified term, provided that it was requested by the applicant in the Patent Office with which said earlier application was filed within fourteen months from filing thereof, and that an appropriate petition is submitted to EAPO before said sixteen-month period is expired.
Electronic filing: available.
Electronic signatures: are accepted. Scanned copies of wet (manual) signed documents are also accepted, however, the original must be sent at a later date.
Formal examination: the Eurasian Patent Office automatically carries out a formal examination, which begins after all necessary documents have been submitted and the fee has been duly paid.
Search: after the formal examination, a search is carried out. The applicant is provided with either a search report or, when it is established that a Eurasian application does not satisfy the requirements of the Convention and the Regulations to the extent that this does not allow a fully-fledged patent search to be carried out, a statement is issued to the effect that the patent search will not be carried out for this application. In the case of the Eurasian application being a regional phase of a PCT application, this step may be avoided if the corresponding search report is submitted.
Publication: after eighteen months from the filing or priority date, the application is published together with the search report. At the applicant’s request, the publication may appear before the specified term is up.
Substantive examination: is carried out at the request of the applicant. The request has to be filed within six months from the date of publication. For PCT applications, the International publication is considered as the date of publication. As a consequence, the examination request should be made with the entry into regional phase if it occurs later than six months after the international publication. An examination fee depending of the number of independent claims has to be paid.
Accelerated examination: possible using the Patent Prosecution Highway (PPH) or the internal EAPO program.
Objections of the Patent Office: are reported in official letters. Amendments proposed by the applicant are subject to the payment of a fee, those proposed by the Examiner not. The final decision to grant or to reject the Eurasian application is taken by a collegium of three Examiners.
Appeal against a decision to reject an application can be lodged within three months following the date of receipt of the notice of refusal with the Eurasian Office.
Conversion into national patent applications: if a Eurasian application is refused, it may be converted into national applications at the request of the applicant.
Protection: scope of claims.
Granting: the grant of a Eurasian patent is subject to the payment of a fee.
Scope of protection: is defined by the claims, the description and the drawings serving for the interpretation of the claims.
Publication: within six months following the registration date.
Accelerated publication and granting: possible using the internal EAPO program.
Territory validity: a Eurasian patent takes effect on the territory of all Contracting States from the date of its publication.
Annuities: are payable each year following the grant of a Eurasian patent at the date corresponding to the filing date. The amount of the fees depends on the number of designated countries. The fees are paid through the Eurasian Patent Office in Moscow.
Restoration: it is possible to restore the validity of the Eurasian patent in case of non-payment of annuities if a petition is filed by the patent holder within three years from the missed time limit.
Validity: the granted patent will be in force in those countries for which annual fees are paid.
Duration: twenty years from the filing date.
Extension: is provided in respect of Contracting States where domestic legislation provides for extension of the validity term of national patent for inventions related to drugs, pesticides or agricultural chemicals, which use must be authorized. At present, the extension of the validity is possible (not more than five years) in all the Contracting States except the Kyrgyz Republic.
Assignment: may only be effected in respect of all Contracting States.
Licenses: must be registered in accordance with the national legislation of the Contracting States.
Revocation (or so-called administrative invalidation): can be filed within six months from the date of publication on the grounds of lack of patentability or added subject matter. As a result of this procedure the opposed Eurasian patent can be recognized as invalid (in full or in part) in all Contracting States from the date of filing.
Invalidation: only possible on a national scale according to national procedures.
Infringement cases and litigation will be handled nationally in each country. For litigation, translation of the patent into the national language may be requested (for example in Armenia, Azerbaijan or Moldova).
Compulsory licenses: compulsory licenses for the use of a Eurasian patent by third parties may be granted in conformity with the Paris Convention for the Protection of Industrial Property by the competent authority of a Contracting State with effect in the territory of that State. A decision to grant a compulsory license may be contested in the courts.