30 January 2020

Is it possible to submit an application for an invention/a utility model directly to a foreign state bypassing the country, of which the applicant is a citizen or resident?

The patent legislation of states has a strictly territorial nature. Foreign patents for inventions or utility models are obtained at the patent Office of the country, where the patent will be valid. In the case, if the technical solution is implemented and commercialized (i.e. it is manufactured, sold), for example, in Germany, according to the patent that is obtained and valid, for example, in the Russian Federation, then these actions will not violate the exclusive rights of the patent holder.

According to Paragraph 1 of Article 1395 of the Civil Code of the Russian Federation “Patenting inventions or utility models in foreign states and in international organizations,” an application for a patent for the invention or the utility model that is created in the Russian Federation, may be filed in a foreign state or to an international organization after 6 months from the date of filing the corresponding application to the Federal Executive Authority on Intellectual Property, if the applicant is not notified within the indicated period that the application contains the information constituting a state secret. The application for the invention or the utility model may be filed earlier than the indicated period, but after carrying out, at the request of the applicant, a check for the availability in the application of the information constituting the state secret. A procedure for carrying out such check is established by the Government of the Russian Federation.

Patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention the invention or the utility model created in the Russian Federation is allowed without prior filing the correspondent application to the Federal Executive Authority on Intellectual Property, if the application under the Patent Cooperation Treaty (the international application), is filed to the Federal Executive Authority on Intellectual Property as a receiving Office and the Russian Federation is indicated in it as the state, in which the applicant intends to obtain the patent, but the Eurasian application is filed through the Federal Executive Authority on Intellectual Property.

After completing the said check, the applicant may file the corresponding convention application to other national Offices directly or by means of the international/regional procedures. This opportunity is available within 12 months from the date of filing the first application to Rospatent and it allows claiming priority according to the date of filing this first application. Or, within 30/31 months, the applicant may transfer the corresponding international application originally filed to the FIPS with the priority under the international application, to the regional/national phases to the selected states. Each particular country has established different deadlines for filing the applications under the PCT procedure: for example, to Russia, the European Patent Office, Sweden and Great Britain – within 31 months from the priority date, but, for example, to the United States of America, China, Germany, Switzerland and Spain – within 30 months from the date of filing the international application.

According to Article 7.28. of the Code of the Russian Federation on Administrative Offences, the violation of the established procedure for patenting the subject matters of industrial property in the foreign countries entails the imposition of an administrative fine on citizens in the amount of from one thousand to two thousand roubles; on legal entities – from fifty thousand to eighty thousand roubles.

Thus, in order to avoid the imposition of the administrative fine and to comply with the requirements of the legislation, only upon the expiration of 6 months, unless an acceleration has been stipulated, from the date of filing the convention application in the Russian Federation or the international application under the PCT procedure, the applicant may transfer this application to the regional/national phases to the selected states, having previously translated the application into English or other official languages of the selected countries.

For the Russian applicant to avoid the stage of filing the application in the Russian Federation, and not to wait during 6 months, while the check for the availability in the application of the information constituting the state secret is being carried out, the fastest way to obtain the patent in another state or region is filing the application simultaneously with the coapplicant/coauthor, who is the citizen or the resident of the state, in which the patent is planned to be obtained. However, in this case, it is important to provide for all the necessary nuances, to stipulate and enshrine with an internal agreement concluded with the coapplicant/coauthor the volume (in percentage) of the exclusive/copyright rights in accordance with the contribution made to the development of the patented technical solution, or, for example, to stipulate, after receiving a positive decision on the grant of the patent, the subsequent procedure for alienating the exclusive right to one of the applicants. Otherwise, when commercializing the patented technical solution, each of the patent holders will have the equal exclusive rights (50% to 50% – in the case of two coapplicants).

In this case, obtaining the patent abroad can be carried out in two ways:

  1. Obtaining the patent for the invention by filing the regional/national applications directly to the domestic state authority of the state of interest that is operating in the field of the defense of the intellectual property rights;
  2. Obtaining the patent by filing the international PCT application and filing subsequently the regional/national application to the state (region) that has entered into the Patent Cooperation Treaty (PCT);

If it is necessary for the applicant to obtain the legal protection for the invention in one of the foreign states, he can obtain both the national patent in the country of interest to him, and the regional patent, such as the EAPO (the Eurasian Patent Office) or the EPO (the European Patent Office) or the less popular – the African Intellectual Property Organization (the AIPO); the African Regional Intellectual Property Organization (the ARIPO); the Gulf Cooperation Council Patent Office (the GCC Patent Office).

For example, it is very convenient to get a single patent for one invention that is valid on the territory of the EAPO member states. The EAPO grants the patent the protection on the territory of eight independent states that were previously a part of the CIS (Azerbaijan, Armenia, Belarus, Kazakhstan, Kirghizia, Russia, Tajikistan and Turkmenistan).

The EPO is on the territory of 38 European countries: such as Germany, Switzerland, Sweden, Great Britain, Italy, Spain, Austria, Greece, Denmark, Finland, France and many others. It is possible to file the application for the patent to the EPO in one of the European languages (English, French, German).

Obtaining the European patent does not limit its holder in any way in comparison with the individual national patents obtained on the territory of each state stated in the list. But one should not think that the patent will be valid automatically on the territory of all European countries. It is intended to grant the patent protection only in some particular countries, as to the others – it will be necessary to go through the national validation procedure within three months after the EPO publishes its decision on granting the patent. This procedure involves translating the documents attached to the application into the languages of the selected countries and paying a state fee for the procedure, the amount of which is different depending on the selected state.

Patent Attorney / Chemical Specialist