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What should one do, if the deadline is missed at the consideration of the application for an invention in the Russian Federation?

May 14, 2019

In order to obtain protection for one’s invention on the territory of the Russian Federation, it is necessary to take into account a number of nuances, one of which is the observance of deadlines at the consideration of the application. Now, let us take a closer look at what deadlines can be violated. 

When filing an application for an invention, it is necessary to pay a patent fee for the registration of the application for the grant of a patent of the Russian Federation for an invention and for making a decision according to the results of a formal examination, and also, if desired, the applicant may pay immediately the fee for making a decision on the results of a substantive examination of the application for an invention parallel to forwarding the relevant request for carrying out the substantive examination. However, the fee for filing the application may be paid after filing the application. In this case, the Office will forward a request for a need to pay the patent fee for filing the application, for which the Office provides a deadline of two months, and without the payment of which the consideration of the formal examination will not start. After the timely payment of the fees for filing the application (and subject to the observance of all formal requirements), the Office will forward a notification on a positive result of the formal examination.

 If the application for an invention does not comply with the established requirements for the application documents, then according to Article 1384 of the Civil Code of the Russian Federation, the Federal Executive Authority on Intellectual Property shall forward to the applicant a request with a proposal to eliminate the shortcomings, which are present in the application, within three months from the date of forwarding the request and to submit the corrected or missing documents. Subject to the timely submission of a response to the request of the formal examination and the correction of the errors, the Office shall make a decision on a positive result of the formal examination, in which it shall also indicate whether the request for the application’s transfer to the substantive examination stage has been filed, and in the case of failing to file the request according to Article 1386 of the Civil Code of the Russian Federation, the deadline of 3 years from the date of filing the application to the Federal Executive Authority on Intellectual Property shall be established for filing such request. The said deadline may be extended by the Federal Executive Authority on Intellectual Property, but not more than for two months at the applicant’s request filed before the expiration of three years from the date of filing the application for an invention, subject to the submission together with such request the document confirming the payment of the patent fee for the indicated extension of the deadline in the established amount.

In the case of filing timely the request for carrying out the substantive examination and the payment of the fees for carrying out the substantive examination, if the applicant desires, the document confirming the payment of the patent fee in the established amount shall be submitted.

If the request for carrying out the substantive examination of the application is not filed by either the applicant or a third party within the established deadline, the application shall be deemed withdrawn, of what the applicant shall be notified. Despite this, in accordance with Article 1389, the deadline for filing the request for carrying out the substantive examination of the application for an invention missed by the applicant may be restored by the said Federal Executive Authority on Intellectual Property, provided that the applicant indicates the important reasons due to which the deadline has not been observed. In this case, the request for the restoration of the missed deadline may be filed by the applicant within 12 months from the date of the expiration of the established deadline. The request shall be filed to the Federal Executive Authority on Intellectual Property parallel to the request for carrying out the substantive examination of the application for an invention and the payment of the relevant fee. 

After filing this request and the payment of the relevant fees, the Office shall forward a notification on the consideration of the request for carrying out the substantive examination of the application for an invention. This means that the experts of the Office proceed to the check of the compliance of the claimed invention with the requirements and conditions of patentability, sufficiency of the disclosure of the essence of the claimed invention. In the process of the examination of the application for an invention, the Federal Executive Authority on Intellectual Property may request from the applicant the additional materials, without which it is impossible to carry out the examination or to make a decision on granting a patent for the invention. In this case, the additional materials without amending the application substantially should be submitted within three months from the date of filing the request according to Paragraph 6 of Article 1386 of the Civil Code of the Russian Federation. This deadline may be extended, but not more than for 10 months parallel to filing the relevant request for the extension, in which the deadline of the extension (from 1 month to 10 months) shall be indicted and upon the payment of the established fee. If the applicant fails to submit the requested materials within the established three-month deadline, or if he fails to submit the request for the extension of this deadline, the application shall be deemed withdrawn.

I would also like to draw the applicant's attention to the fact that at the formal examination stage, in the case of receiving the request, it is also possible to extend the deadline for the response, but not more than for 10 months, and if there is no response to the request within the established deadline, the application shall be deemed withdrawn. However, according to the above mentioned Article 1389, the deadline for submitting the documents or additional materials missed by the applicant may be restored by the Federal Executive Authority on Intellectual Property, provided that the applicant indicates the important reasons due to which the deadline has not been observed, and files the request to restore the deadline missed by the applicant within 12 months from the date of the expiration of the established deadline. The request for the restoration of the deadline shall be submitted to the Federal Executive Authority on Intellectual Property parallel to the documents or additional materials in response to the request.

If, as a result of the substantive examination of the application for an invention, it is established that the claimed invention complies with the conditions of patentability and the essence of the claimed invention is disclosed fully enough to implement the invention, the Federal Executive Authority on Intellectual Property shall make a decision to grant a patent for the invention and it shall forward it to the applicant, who in turn, must pay the relevant patent fees within 2 months. In the absence of the payment of the fees within the established deadline, the applicant shall be given an opportunity to pay the fees for the registration of the patent within an additional deadline of 12 months, subject to the payment of the fee before the expiration of the first 6 months in the amount increased by 50 percent, and after 6 months, but not later than 12 months – in the amount increased by 100 percent. If the fees are not paid within the established deadline and in the established amount, the application for an invention shall be deemed withdrawn. Subject to the payment of the relevant patent fee, the state registration of the invention and the grant of the patent shall be carried out.

Based on the foregoing, I would like to conclude that it is better not to violate the deadlines at the consideration of the application for an invention in the Russian Federation in order to avoid delaying in the paper work and the overpayments of the fees. However, if the applicant has missed the deadline due to the emergency circumstances, then you should not be discouraged, the application will be restored, if the applicant has not missed the deadlines too much. 

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Author of article

Kristina Zaytseva

Kristina Zaytseva

Assistant to Patent Attorney