The defence of inventions within the framework of filing an application to the Eurasian Patent Office

The modern defence system of the exclusive right to an invention allows defending one’s technical solution within the framework of filing an application to the Eurasian Patent Office.

The main purpose of the Eurasian Patent Office is to create an international regional system of the legal protection of inventions based on a single Eurasian patent being valid on the territory of all member states of the Eurasian Convention.

Currently, the member states of the Eurasian Convention are the Russian Federation, the Republic of Azerbaijan, the Republic of Armenia, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz Republic, the Republic of Tajikistan.

As in the majority of Offices, the Eurasian patent for an invention is granted provided that the claimed solution is new, it has an inventive step and it is industrially applicable.

At the same time, the Eurasian Patent Office shall not recognize as the inventions the subject matters that are actually: discoveries; scientific theories and mathematical methods; the information representation; the methods for arranging and managing the economy; conventional symbols, schedules, rules, including the rules of games; the methods for performing mental operations; the algorithms and programs for electronic computing machines; the projects and schemes of the layout of constructions, buildings, territories; the solutions relating only to an appearance of products aimed at meeting the aesthetic needs. The above subject matters shall not be recognized as inventions in the cases, when the Eurasian application or the Eurasian patent refers only directly to any of these subject matters as such. The Eurasian patents shall not be granted for: plant varieties and animal breeds; integrated microcircuit topologies; the inventions, whose commercial usage must be prevented in order to protect the public order or morality, including the protection of the life and health of people and animals or the protection of plants or to avoid doing serious damage to the environment. At the same time, such use can not be considered as such only by virtue of the fact that it is forbidden by the legislation of one or several member states of the Eurasian Convention.

Essentially, the procedure for filing and considering an application in the Eurasian Patent Office does not differ from the procedures in the majority of the national Offices.

However, there are a number of differences from the procedures for considering an application for an invention, which are habitual to an applicant. Such differences include carrying out a patent search with forwarding the report about it to the applicant prior to the beginning of the substantive consideration of the application. Thus, the applicant is given a possibility to assess the prospects of obtaining a Eurasian patent. If by the result of the search carried out, the applicant understands that he has no chances to overcome the sources of the information identified in the prior art, he can discontinue the consideration of the application prior to filing a petition for a substantive examination, and therefore, he will not incur expenses to the payment of the relevant fees for filing the petition for the substantive examination.

The Eurasian patent procedure also provides the applicants a possibility of carrying out an accelerated examination of the Eurasian application, both as a paid service and within the framework of the PPH program on the basis of the treaties signed by the Eurasian Office with a number of the leading patent Offices of the world, in particular with the European Patent Office, the Patent office of Japan, the State Intellectual Property Office of the People's Republic of China, the Republic of Korea.

The Eurasian patent may also be obtained based on the international application filed in accordance with the Patent Cooperation Treaty (PCT).

When filing an application with the Eurasian Patent Office, the applicant has a possibility of getting discounts, provided that:

– if the Eurasian application contains the international search report prepared by one of the international search authorities, the fee for filing the Eurasian application shall be reduced by 25% with respect to those inventions, regarding which the report has been prepared, if such reports are prepared by the Federal Service for Intellectual Property (the Russian Federation) – the fee shall be reduced by 40%.

– if the applicants are the individuals, who are citizens and who have a permanent residence on the territory of the state, which is included in the list of the countries that meet the criteria established for providing benefits regarding the payment of the international fees within the framework of the Patent Cooperation Treaty, they shall pay the fees connected with filing the Eurasian application, obtaining the Eurasian patent, transferring and recovering the rights to the Eurasian application or the Eurasian patent according to the discounted rate reduced by 50%. Usually this list includes the individuals from the countries of the “third world.” This kind of the fee reduction is also stipulated for a number of the legal entities from the countries of the “third world.”

– if the applicants are the individuals from the member states of the Convention, then the fees connected with filing the Eurasian application, obtaining the Eurasian patent, transferring and recovering the rights to the Eurasian application or the Eurasian patent shall be reduced by 90%.

– if the applicants are the legal entities from the member states of the Convention, the fees depending on the categories of the legal entity may be reduced up to 70%.

If there are several applicants, the relevant benefits shall be applied only in the cases, when each applicant is entitled to the benefit sought.

The Eurasian patent shall be granted for a period of 20 years from the date of filing the Eurasian application for granting a Eurasian patent for an invention.

The validity period of the Eurasian patent in any of the above states shall be extended with respect to the subject matters of the inventions, for which the extension of the validity period of the national patents is permitted – such subject matters are mainly drugs, pesticides and agrochemicals. At the same time, the extension of the validity period of the Eurasian patent with respect to such state shall be carried by the Eurasian Office according to the conditions stipulated by the legislation of this state for the extension of the validity period the of the national patent for an invention.

 Currently, the extension of the validity period of the Eurasian patent is possible with respect to all member states of the Eurasian Convention, with the exception of the Republic of Tajikistan and the Republic of Kyrgyzstan, as well as with respect to the Republic of Moldova, with the Government of which the Eurasian Patent Office concluded a Treaty on the Legal Protection of the Inventions on the Territory of the Republic of Moldova after the denunciation by the Republic of Moldova of the Eurasian Patent Convention of April 12, 2012. According to Article 1 of the International Treaty, the Republic of Moldova recognizes the validity on its territory of the Eurasian patents granted according to the Eurasian applications having the filing date prior to April 26, 2012.

Another difference in considering the Eurasian applications is a possibility to convert the Eurasian applications into the national patent applications. Before the expiry of six months from the date of the receipt by the applicant of the notification of the Eurasian Office on a refusal to grant the Eurasian patent or from the date of the receipt by the applicant of the notification of the Eurasian Office on a refusal to satisfy the objections, the applicant may file a petition with the Eurasian Office indicating the Contracting States, where he wishes to obtain a patent according to the national procedure. In each Contracting State indicated in such a way, the Eurasian application with respect to which such decision has been made and which is a subject of such petition, shall be considered to be a properly executed national application, which has been filed with the national Office with the same filing date and, if any, the priority date as the Eurasian application, with all the consequences stipulated by the national legislation and it shall be further processed in the national Office, provided that the applicant pays the required national fees to the national Office.

With the entry of the Eurasian Convention into force, a single patent space was formed on the territory of the member states, which ensures:

– simplifying and cheapening the procedure for obtaining the protection document, which is valid in all member states of the Convention (one Eurasian application is in one language (Russian), one examination, a single Eurasian patent);

– a system of a mandatory check of the examination of the Eurasian applications and, as a consequence, obtaining reliable Eurasian patents for inventions;

– harmonizing the protection of the rights of the patent holders within the single patent space on the basis of the Convention and other normative legal acts connected with it.