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Russian and Eurasian invention patent. What patent is the best to protect your decision?

14 Mar 2022 (updated at 18 Jun 2024)
#Legislation on patents
Head of Department / Patent Attorney / Mechanics Engineer

Our clients, having learned about the existence of a Eurasian patent, more and more often ask themselves the following question - which patent is better to protect their decision, Russian or Eurasian? It is important to note that a patent has a territorial effect and is valid only on the country's territory in which it was issued. The Russian patent covers only the territory of the Russian Federation. And on what territory is the Eurasian patent valid? The Eurasian patent unites 8 countries of the former Soviet Union, namely, Russia, Belarus, Kazakhstan, Kyrgyzstan, Tajikistan, Turkmenistan, Azerbaijan and Armenia. It, therefore, is valid on the territory of all these countries. However, a condition under which a Russian and a Eurasian patent will be valid in a particular country - is the mandatory payment of annual fees for maintaining the patent in force. If the fees are not paid, the patent expires. As for the Eurasian patent can be supported not in all eight countries, but it is necessary to select several - one, two, etc., namely, the countries of interest. The amount of the selected countries depends on the fees that must be paid: the more countries are selected, the higher the fees. We will return to the financial aspect a little later, but now let's try to answer which countries are or may be of interest. The answer to this question can be found in the definition of a patent: a patent for an invention is a document that certifies the priority of an invention, authorship and exclusive right to a patented solution. What is an exclusive right? An exclusive right is the right to authorize or prevent a third party from using the patented solution without your consent.

Thus, without your permission, no one has the right to use the patent to obtain economic benefits. It follows from this that if you want to prohibit someone from using a patented solution in a particular country, it is necessary to obtain a patent in that particular country. As a rule, these countries are the countries of the product production and its export.

Let's give an example based on which it will be possible to understand the need to obtain a Russian or Eurasian patent. So, let’s suppose you are a Russian developer of an innovative product, such as an internal combustion engine for vehicles (ICE), which is subject to patenting by all criteria. In addition, you are planning to manufacture a product in the territory of the Russian Federation, and to sell not only in Russia, but also in Kazakhstan, Belarus and Azerbaijan. Therefore to eliminate competitors in these countries and become a monopolist in the production and sale of the specified product, patents must be obtained in each of these countries. Since the Eurasian patent combines all the countries mentioned, it is recommended to kill four birds with one stone by filing one application for an invention with the Eurasian Patent Office. The application is submitted in Russian, the paperwork for it is also conducted in Russian. After receiving notification of readiness to issue a Eurasian patent, the applicant must pay the patent granting fees and annual maintenance fees in the selected countries. The amount of fees is set by each state separately, but all fees are paid to the Eurasian Patent Office (EAPO) in a single payment, and then the EAPO sends payments to the national patent offices. In the above example, it will be necessary to pay fees for maintaining a patent only in the Russian Federation, Kazakhstan, Belarus and Azerbaijan. There is no need to pay fees for the patent's validity in the other 4 countries participating in the Eurasian patent. Thus, in this part, there is a saving of monetary resources.

Besides, both Russian and Eurasian patents have a validity period of 20 years. After the validity expiration, the patent goes into the public domain and anyone can use it without any consequences for themselves. If during the validity of the patent, in a certain time period, interest in one of the countries disappears, for example, due to some circumstances, the export of the patented product to the territory of Azerbaijan is terminated, then there is no point in supporting and paying for the Eurasian patent in Azerbaijan, but it is necessary to continue to support its operation in the Russian Federation, Belarus and Kazakhstan.

The next example: if the country of manufacture of the internal combustion engine and the country of sale of the product is the same, in our case - Russia, then it is more expedient to issue a Russian patent, which will cover only the territory of the Russian Federation. If it is supposed to export goods only to one of the countries, for example, to Kazakhstan, then in accordance with the Russian patent legislation, it is necessary to obtain the first patent in your country and then in any foreign state. As applied to the example in Kazakhstan, a patent application must be submitted in the Russian Federation, and then in Kazakhstan, bypassing Eurasia, directly to the patent office of Kazakhstan. Of course, it is possible to submit one application to Eurasia, thereby covering the Russian Federation and Kazakhstan. Still, it is necessary to weigh the financial side and understand how it is more economically profitable to proceed. This requires a specific calculation, which we will not give, but we note that for each specific decision, depending on the volume of application materials, the number of claims and other factors, the preponderance can be either in the direction of filing two national applications or filing one Eurasian application.

Regarding the financial component of the issue, not only should patents be obtained in the countries of interest, but it should be economically feasible. Let us give this estimate using the example of the fees that will need to be paid to one or another patent office.

The fee for applying, examining essence, obtaining a Eurasian patent, and maintaining it is higher than the same fees when applying with the Russian Patent Office. However, do not forget that fees cover all 8 countries of the Eurasian Patent Convention when filing a Eurasian application. It will be much cheaper if you submit a separate application to each of the 8 national offices. In addition, do not forget about the benefits and discounts that patent offices provide for fees.

For example, the Russian Patent Office provides discounts to the following categories of applicants: disabled person, pensioner, student, scientist, scientific and pedagogical worker (the group of these persons); sole author; small business entity, educational organization with state accreditation, scientific organization; individual entrepreneur. The size of the discounts can vary from 50 to 90%, depending on the privileged category of persons.

As for the Eurasian Patent Organization, it also provides benefits for paying several fees to specific categories of persons. These categories include individuals from the Contracting States who pay only 10% of the fees; state scientific and educational organizations from the Contracting States, which pay 30% of the fees; and legal entities from the Contracting States, who pay 90% of the fees.

The analysis shows that it is difficult or almost impossible to say which patent is better to protect your decision, Russian or Eurasian. Therefore, it is necessary to consider and evaluate each situation separately, weigh the pros and cons. However, there is a certain set of conditions, criteria, such as countries of production, sale, export of the product, the number of countries, as well as the financial component, which in a particular case will help to make the right balanced decision and make a choice in favor of a Russian or Eurasian patent.

Head of Department / Patent Attorney / Mechanics Engineer