Features of the Procedure for Patenting Industrial Designs under the Eurasian System

The appearance/design of the product can be patented as an industrial design. An industrial design is an artistic or aesthetic solution of a product. Packaging, labels, various household items, clothing, toys, jewelry, jewelry, cars and their components, original fonts, interface pages, etc. are often patented as industrial designs.

To obtain a patent, it is necessary that the industrial design meets the patentability conditions: world novelty and originality of the product.

Compliance with the "novelty" criterion is determined by the availability of information about an already patented similar product or its open use. According to Clause 2 of Article 1352 of the Civil Code of the Russian Federation, "An industrial design is new if the totality of its essential features reflected in the images of the appearance of the product is not known from the information that became publicly available in the world before the priority date of the industrial design."

Compliance with the criterion of "originality" is determined by the design of the industrial design, the creative nature of the features of the product. According to Clause 3 of Article 1352 of the Civil Code of the Russian Federation, "An industrial design is original if its essential features are due to the creative nature of the features of the product, in particular, if from the information that became publicly available in the world before the priority date of the industrial design, the solution of the appearance of a product of similar purpose is unknown, which makes the same general impression on an informed consumer as the industrial design reflected in the images of the appearance products."

Eurasian Industrial Design Patenting System

Recently, the Eurasian system of patenting industrial designs, which will be discussed in this article, has begun to gain popularity.

Applications under this system are filed through the Eurasian Patent Office, which, along with paper filing, also provides applicants with the possibility of electronic filing, which makes it possible to optimize the procedure related to the execution and filing of applications. The Eurasian Patent Office started accepting Eurasian applications for industrial designs on June 1, 2021 and is constantly modernizing the processes related to obtaining patents.

The main documents regulating the patenting of industrial designs under the Eurasian system are the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention, the Patent Regulations to the Eurasian Patent Convention, as well as the Statute on Fees.

The Eurasian application for an industrial design provides the applicant with a number of advantages, among which the following can be noted:

• The legal protection of the Eurasian industrial design extends to eight countries. To date, these are the following countries: Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Armenia, Belarus, Tajikistan, Turkmenistan. Thus, filing one application covering several countries at once allows you to minimize the costs associated with patenting under the national system (a separate application for each country).
• A Eurasian application may relate to one or more industrial designs, but not more than one hundred industrial designs belonging to one class of the International Classification of Industrial Designs. The inclusion of several industrial designs in one Eurasian application does not require compliance with the requirement of the unity of the industrial design, i.e. such solutions for the appearance of the product should not be so interconnected as to form a single creative idea. For comparison, in the case of national patenting in Russia, due to the requirements for the unity of industrial designs, in most cases, an independent application is drawn up, which significantly affects the increase in the amount of fees associated with filing an application and the subsequent maintenance of the patent, and also complicates the process of processing documents for the applicant.
• The terms of consideration of a Eurasian application are approximately 4-6 months, in the absence of requests, notifications and objections from third parties. The rather short period for consideration of Eurasian applications is due, among other things, to the fact that substantive examination is carried out without conducting an in-depth information search in publicly available patent and non-patent sources.

The patenting procedure under the Eurasian System

In terms of the patenting procedure under the Eurasian system, the main stages can be distinguished:

Preparatory stage – at this stage, the necessary information is being prepared to start the work. Such information includes: information about the applicant, information about the authors, information about the industrial design – its name, definition of the IPC classes, description (the description should not exceed 100 words), images (no more than seven images on a neutral background from all angles in high quality).

The main stage is at this stage an application is drawn up (in paper form or through an electronic system) and submitted to the Eurasian Patent Office, a single procedural fee is paid for the application. Upon filing, the application is assigned a registration number and the examination begins, which in turn consists of the following stages:

• Preliminary examination, during which the correctness of the application materials and their compliance with the established requirements are checked. Based on the results of the successful completion of the preliminary examination, the applicant is sent a notification of a positive result of the preliminary examination.

The procedure for conducting a preliminary examination of an application for a Eurasian patent for an industrial design was approved by the Order of the Eurasian Patent Office dated August 01, 2023 No 30.

• Publication of the application

Within one month from the date of dispatch to the applicant of the notification of the positive result of the preliminary examination, the Eurasian Patent Office shall publish the Eurasian application. The Eurasian application is published in electronic form on the website of the Eurasian Patent Office in the section "Register of Industrial Design Applications" and becomes available for filing an appeal within two months.

Any person who believes that the claimed industrial design is not new and original or relates to solutions and/or subject matter that are not protected as industrial designs in accordance with Rule 78(6) of the Patent Regulations under the Eurasian Patent Convention, Part II.

An opposition to the grant of a Eurasian patent may be filed, including by the national patent office, if the right to file such an opposition by the national patent office is provided for by the national legislation of the relevant State party to the Protocol for the Protection of Industrial Designs to the Eurasian Patent Convention, within two months from the date of publication of the Eurasian application.

The procedure for filing and considering oppositions against the grant of a Eurasian patent for an industrial design was approved by Order of the Eurasian Patent Office dated July 2, 2021 No 31, as amended and supplemented by Orders of the Eurasian Patent Office dated March 29, 2023 No 10 and dated December 24, 2024 No 79.

In the event that an objection has been filed in the application, the applicant shall be notified accordingly. The applicant is sent a notice of the objection and the materials of the objection. The applicant is given a period to respond to the notification, which is one month and cannot be extended.

Consideration of the received appeal shall be carried out within the framework of the substantive examination of the Eurasian application, based on the results of which a decision shall be taken to grant a Eurasian patent or to refuse to grant a Eurasian patent. The decision to grant a Eurasian patent or to refuse to grant a Eurasian patent shall be taken by the Eurasian Office taking into account the results of the examination of the appeal and the arguments for the applicant's response to the opposition (if filed by the applicant).

It should be noted that if several industrial designs are claimed in one application, and the opposition concerns only one of them, the remaining industrial designs are not affected by this opposition.

• Substantive examination

In the course of the substantive examination of the Eurasian application, the compliance of the claimed product with the patentability criteria – novelty and originality – is checked.

In the course of this examination, verification is carried out without conducting an in-depth information search in publicly available patent and non-patent sources of information about solutions for the appearance of products, which may include the following sources:

1. published Eurasian applications and Eurasian patents;
2. published national applications and national patents for industrial designs (national registrations of industrial designs), subject to searchability in the relevant databases and registers;
3. sources of information posted on the Internet, provided that it is possible to establish the date of publication of the image related to the relevant industrial design.

The procedure for the substantive examination of an application for a Eurasian patent for an industrial design was approved by Order No. 31 of the Eurasian Patent Office dated August 02, 2023, as amended by Orders of the Eurasian Patent Office No. 30 dated May 7, 2024 and No. 76 dated December 24, 2024.

If, based on the results of the examination, it is established that the industrial design complies with the established requirements, the applicant shall be notified of readiness to grant a Eurasian patent.

It should be noted that if several industrial designs are claimed in one application, and during the examination it is established that one of them does not meet the criteria for patentability, the remaining industrial designs are not affected by the refusal. In this case, the applicant is invited to exclude from the application the industrial design that does not meet the established patentability requirements, and the examination continues in relation to the remaining industrial designs. 

The final stage is that upon receipt of the notification of readiness to grant a Eurasian patent, it is necessary to pay the fee for the registration of the industrial design, the publication of information on the grant of the Eurasian patent and the grant of the Eurasian patent. The fee must be paid within two months from the date of dispatch of the notification. It is possible to pay the fee within an additional period of two months from the date of expiry of the above-mentioned two-month period, subject to payment of the additional duty.

Only if the applicant pays the fee for the registration of the industrial design, the publication of information on the grant of the Eurasian patent and the grant of the Eurasian patent, will a decision be made to grant the Eurasian patent.

On the basis of the decision to grant a Eurasian patent and subject to payment by the applicant of the above-mentioned fee, the Eurasian Patent Office shall register the industrial design in the Register of Eurasian Patents for Industrial Designs and make an electronic patent. At the same time, patent owners can obtain a Eurasian patent on paper without paying an additional fee by submitting a corresponding request to the Eurasian Patent Office.

The patent holder receives a Eurasian patent, which is valid on the territory of all countries participating in the Eurasian system.

As for the term of validity of a Eurasian patent, it should be noted that it is five years from the date of filing of the application and can be extended each time for five years, while the total term cannot be more than twenty-five years.

Summarizing the above, it can be noted that patenting under the Eurasian system is a good alternative to filing national applications in each country, since it allows you to minimize costs and patent a product in a fairly short time. This system has its own procedural features, knowing which you can successfully obtain a Eurasian patent for an industrial design.