Correspondence from Russian Patent Office: what shall the applicant do if he received a request from
Introduction: The article describes the procedure for the applicant in case of receiving a request or notification of the specialists of Rospatent when examining the trademark applied for registration. Also substantiates the need for communication between the experts of Rospatent and the applicants and gives advices on the content of the response that the applicant directs to the patent office.
If the owner of an intellectual property object decided to register it in Russia and obtain an official certificate of his own exclusive rights, then the first step on this path is to apply to the patent office with the necessary package of documents.
After the specialists of Rospatent accept the application for consideration, the submitted documents and information should be checked during a two-phase examination. At each of these phases, various difficulties and ambiguities may arise, that’s why an expert request will be sent to the applicant. It should be noted that in this way the owner of the result of intellectual activity gets the opportunity to clarify the issues that have arisen and save time, which otherwise would have to be spent on re-submitting documents for a new examination.Expert request during formal examination
In accordance with the provisions of the Civil Code of the Russian Federation, at the stage of formal examination, Rospatent specialists can send the applicant a request in the following cases:• When there are no documents confirming the payment of the official fee.• If you need to amend the information or provide missing documents.If the person who submitted the documents for registration of the intellectual property object responded to the request of Rospatent and submitted the documents and information required, the experts will examine these materials and, in case of a positive decision, send an application for substantive examination.An expert request during the substantive examination of the declared object
The second stage of the examination is the study of the claimed intellectual property object for its compliance with the requirements of patentability. The list of such conditions is contained in part 4 of the Civil Code of the Russian Federation.So, during the examination, experts can send a request to the applicant with a proposal to:• Clarify the list of goods and services. When the application contains a list that is not correctly grouped in accordance with the ICGS classes. Its presence allows specialists to conduct a full and objective examination of the designation in the future.• Provide additional materials (for example, various types of holographic, three-dimensional trademark), without which a full verification of the object is impossible. It is important to know that there can be several such requests, and each of them can be crucial in making the final decision on the basis of substantive examination.
In conclusion, worth to note that the applicant who received the examination request should be aware of the following circumstances:• The expert request is primarily aimed at supporting the applicant and interacting with the state authority.• Thus, experts are trying to help a person obtain the registration of the intellectual property object that he applied for.• It is important to comply with the specified deadlines for sending a response to a received request.• It is worth paying special attention to the correctness of the information specified in the answer and the completeness of the materials provided.• The absence of the applicant’s response to the request within the specified period leads to the withdrawal of the application and the termination of further prosecution.• In the case of sending a request or response using postal service, it is possible to skip the acceptable deadlines due to circumstances beyond the control of the parties to the correspondence. In this case, a subsequent appeal to Rospatent with a request for acceptance of documents and restoration of missed deadlines is acceptable. If this does not help, then the applicant has the right to file an objection with the Rospatent Chamber for Patent Disputes on the decision to declare the application withdrawn.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63