Eurasian Application: Requirements of Patentability

In increasing frequency, inventors have been asking questions about obtaining patents in the countries of the ex-USSR, in particular in Belarus, Kazakhstan, Kyrgyzstan and Ukraine. However, only few inventors and/or applicants are aware of the existence of a Eurasian patent. In case our clients are interested in patenting in the above-mentioned countries, we offer to obtain a Eurasian patent. So, what is a Eurasian patent, where to apply, what it protects, and what features it has. Let’s look at everything in order.

Eurasian patent system provides for a regional patent, as it combines, so to speak, eight national patents. If the inventor obtains a patent and pays the appropriate patent maintenance fees, it will be valid in all countries such as Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic and Armenia. As it follows from the list of the member countries of the Eurasian Convention, Ukraine does not belong to it. Thus, the inventor also wants to be protected in Ukraine, there is a need to submit a separate application directly to the State Enterprise “Ukrainian Institute of Industrial Property” or Ukrainian Patent Office (Ukrpatent).

Only inventions are protected by Eurasian patents. In accordance with paragraph 1.1 of the Rules for Drafting, Filing and Cxamination of Eurasian Applications with the Eurasian Patent Office: “The objects of invention may be man-made or transformed material objects or processes, in particular, a device, method, substance, biotechnological product as well as application of the device, method, substance, biotechnological product.

Apparatus as object of an invention include embodiments and articles of manufacture.

Methods as objects of an invention include processes of performing actions, i.e., operations and techniques leading to the creation of new or change of known material objects or their research.

Substance as object of the invention includes:

·      Chemical compounds, which contain high-molecular-weight compounds;

·      Compositions and mixtures;

·      Products of nuclear transformation.

Biotechnological products as objects of the invention include products isolated from their natural environment or obtained by other means.

Biotechnological products are divided into living products, in particular plants and animals, microorganisms, plant and animal cells, microorganism strains, plant and animal strains and cell lines, other plant and animal elements, and non-living products, in particular proteins, peptides, antibodies, nucleic acids, genetic constructions. An invention relating to a plant or animal is protectable if its essence is not limited to a particular variety of plant or breed of animal.

The use of a device, method, substance, biotechnological product means its use for an unknown purpose”[1].

A patent for an invention must meet the criteria of novelty, essentially referring to the originality of the idea, have an inventive level and be industrially applicable. Only if all three conditions are met is it possible to obtain a Eurasian patent. Eurasian patent is valid for 20 years from the date of filing the Eurasian application.

The Eurasian application is filed with the Eurasian Patent Office or to the national patent office of the country which is a party to the Eurasian Convention, i.e., to one of the patent offices of the mentioned eight countries, if the legislation of this country provides for it, namely to the country, the applicant is a resident of. For example, if the applicant is a resident of the Russian Federation, then the application shall be filed with the Russian Patent Office, and if the applicant is a resident of Kazakhstan, then with the RSE “National Institute of Intellectual Property” of the Ministry of Justice of the Republic of Kazakhstan (KAZPATENT).

Thus, for all eight member states of the Eurasian Convention there is one application, which undergoes formal examination, a search to assess patentability, an examination on the merits, and one decision is made for all these countries. It is worth noting that the application is filed in Russian language and there is no need to translate it into other national languages of Eurasian member states.

Submission of the Eurasian application and obtaining a Eurasian patent is a rather expensive procedure, given the level of the established fees. For instance, the fee for filing an application only shall be 28,000 rubles. However, only few applicants are aware of the benefits they are entitled to. Let’s consider this point in detail and say that applicants who are individuals and residents of countries party to the Eurasian Convention, pay only 10% of a fixed fee. That is, they are given a discount of 90% (e.g., for an application, they would be required to pay only 2,800 rubles instead of the fixed fee of 28,000 rubles), public research and educational organizations shall be discounted 30%, and legal persons from the member countries have a 90% discount. As a result, it turns out that the applicant belongs to one of the differential categories, then applying to Eurasia does not seem to be very expensive.

The application can be submitted by the applicant itself or its representative, who must necessarily provide the Office with a power of attorney confirming the authority. The power of attorney must be filed simultaneously with the submission of the Eurasian application materials. There are situations when the applicant is unable to promptly submit the power of attorney. In this case, it is possible to send the power of attorney later, but later submission of the power of attorney entails the payment of the relevant fee to the Office. If the application is filed through a Eurasian patent attorney, the power of attorney is not required.

Thus, if an applicant wants to avoid unnecessary costs, it is indispensable to take care of timely preparation of the power of attorney.

An issued Eurasian patent is valid in all eight countries and has the same legal effect in each particular country, as a national patent.

In order for a Eurasian patent to be valid, annual patent maintenance fees must be paid. The patent can be maintained in all eight countries, and one or more countries of interest can be selected. If fees are paid in these countries, the patent will be valid only in the selected countries, in all other countries it will cease to be valid. In most countries, maintenance has to be paid starting from the third year of the patent, exceptions are Kazakhstan and Turkmenistan, as well as Armenia, where maintenance is paid from the first and second year of the patent, respectively. Fees increase every year, i.e., the older the patent, the higher the fees, but in some countries, there are differential categories who can pay reduced fees. Such categories include, in particular, applicants/owners who are individuals.

In conclusion, the peculiarities of revocation or invalidation of a Eurasian patent have to be noted. Since a patent, in fact, is a national patent in each individual country, it should and can only be invalidated in each country separately in accordance with the national patent legislation of that country. If a patent is invalidated entirely in one country, this does not mean that it will automatically be invalidated in all other countries.