Manual how to get Eurasian Patent

Manual how to get Eurasian Patent

Grant proceedings before the Eurasian Patent Office

Effect of Eurasian Patent

The Eurasian Patent Convention (EAPC) enables the applicant to obtain a patent in 8 countries (see chart 1) on the basis of a single application via a single, harmonized procedure in one language (Russian) before the Eurasian Patent Office (EAPO). In each contracting state, the proprietor of the Eurasian patent gains the same rights as he would with a national patent.

Eurasian patent – is an easier, faster and less expensive way to obtain a patent protection for an invention if an applicant is seeking protection in at least 2 contracting states of the EAPC.

Advantages of the Eurasian Patent System

  • The EAPO gives a generous set of flexibilities during the pending period of a Eurasian patent application (easier deadline restoration terms, possibilities to prolong some terms and deadlines, a flexible procedure-accelerating mechanism).
  • The duration of the Eurasian patent grant procedure is 1 – 2 years.
  • As the official language of the Eurasian Patent Organization is only Russian, it provides a chance to avoid any translation costs and misunderstandings.
  • No indication of countries during the filing of the application or prosecution of the application is required.
  • Unitary patent system: after the granting of the patent it need not be validated by national authorities.
  • Easy maintenance of the Eurasian patent by paying all annuities to EAPO. When paying annuities the applicant may select contracting states where the patent should be maintained.
Member states of the EAPC

The number of Signatories up to the present time (2013 year) is 10, the number of currently effective Parties is 8 (Russia, Belarus, Armenia, Azerbaijan, Kyrgyzstan, Kazakhstan, Tajikistan, Turkmenistan).

 

Country
Code
Member
state
The date of Signature The date of
Ratification/
Accession
 The date of
Denunciation
 AM  Armenia  9 September 1994  27 November 1995
 AZ  Azerbaijan  9 September 1994  25 September 1995
 BY  Belarus  9 September 1994  8 May 1995
 GE  Georgia  9 September 1994
 KZ  Kazakhstan  9 September 1994  4 August 1995
 KG  Kyrgyzstan  9 September 1994  13 October 1995
 MD  Moldova  9 September 1994  16 November 1995  26 April 2012
 RU  Russia  9 September 1994  27 June 1995
 TJ  Tajikistan  9 September 1994  12 May 1995
 TM  Turkmenistan  1 March 1995
 UA  Ukraine  9 September 1994

Term of the Eurasian Patent

The term of a Eurasian patent is 20 years from the filing date of the Eurasian application. At the request of the applicant, the 20 year term of the Eurasian Patent may be extended in contracting states whose legislation contains a provision for the extension of the term of national patents. The procedure is performed by the Eurasian office in accordance with the terms of national legislation of each contracting state.

Disclosure

Disclosure of information relating to an invention by the inventor, applicant or any person who has obtained this information from them directly or indirectly is not regarded as prejudicial to the patentability of an invention if the patent application was filed to the Eurasian Office no later than 6 months after the date of disclosure, or the date of priority where priority was sought. The burden of proof of the circumstances of disclosure is reserved for the applicant.

Fees

All fees cited in the text are only EAPO official fees. The Russian Rouble and American Dollar rate is inconstant, therefore we indicate the fees only in Russian Roubles.

All fees relating to the Eurasian Application or a Eurasian Patent are paid to the EAPO, if the applicant is from states other than contracting states of EAP0C.

The amounts of the fees provided in the present Statute on Fees of the Eurasian Patent Organization shall be fixed in Russian roubles. They may also be made in US dollars or euros for the equivalent amounts according to the official exchange rate set by the Central Bank of the Russian Federation on the date of payment.

Annuities for the maintenance of a Eurasian patent in respect of each contracting state (currency and amount) shall be determined by that contracting state.

Languages

The official language of the EAPO is Russian. A request for the grant of a Eurasian patent must be filed in Russian. Other documents for the Eurasian application may be filed in Russian or in another language. However, documents submitted in another language must be accompanied by a translation into Russian. The translation into Russian may be submitted by the applicant within 2 months of the date of the filing of the Eurasian application. If the applicant fails to supply a translation into Russian within this time limit, the translation may be submitted in the course of the following 2 months upon payment of an additional fee.

Representation

Applicants having their residence or principal place of business in a contracting state may act independently or through a representative in proceedings before the EAPO.

Applicants having neither their residence nor their principal place of business in a contracting state must be represented by a Eurasian patent agent.

Representatives must be provided with a power of attorney given in writing. No notarization of power of attorney is required. The power of attorney must be submitted at the time of filing an application or within 2 two months of its receipt by the EAPO.

Conversion of the Eurasian Patent Application into national patent applications

Even if the application is refused or an applicant’s appeal against a decision reached by the EAPO has been refused, the applicant may file a request with the EAPO designating those contracting states in which he wishes to file the patent application according to the national procedure within a term of 6 months from receipt of the Refusal Decision.

In each of such contracting states, the Eurasian application is deemed to be a correctly drawn up national application filed with the national patent office with the same filing date and priority date as the Eurasian application. An application filed with the EAPO may also serve as grounds for establishing Convention priority.

Procedures

Generally the Eurasian patent grant procedure is divided into 2 stages:

The first one includes the determination of the filing date, the formal examination, the search and the publication of the application;

The second one starts with substantive examination and ends with the grant and publication of a patent.

The examiner can invite the applicant to take part in the processing of his application at any stage of the procedure.

Scheme of the development of the Eurasian patent application:

First stage:

  • Filing of application
  • Formal examination
    The formal examination is carried out within 2 months from the date of receipt of an application. The following information will be checked in the process of the formal examination:
    • correct presentation of the application documents;
    • compliance with the requirements regarding filing and taking action before the EAPO by applicants who have no residence or principal place of business in a contracting state;
    • unity of the invention;
    • lawful and proper claims to priority;
    • patentability.

    If necessary, the applicant may be advised to correct the deficiencies of the application within the time limit specified by the EAPO and/or submit the missing documents. If the applicant needs to correct the deficiencies in the application, the time taken to complete the formal examination will be extended as appropriate.

    If the deficiencies have not been corrected within the specified time limit, or documents missing at the time of filing have not been provided, the application is deemed to be withdrawn and the applicant is notified accordingly. If an application fails to satisfy the requirement of patentability, the Board decides to refuse the granting of a Eurasian patent. The applicant may initiate an appeals procedure within 3 months of a decision to refuse the patent grant.

    If the submitted application materials satisfy the requirements, the applicant will be notified of the positive outcome of the formal examination.

  • A search report
    The Eurasian search report is based on the patent claims but also takes into account the description and any drawings or other graphics. The purpose of the search is to establish a prior art, which is then used to assess the novelty and inventive step of the invention. A search report will be transmitted to the applicant by the EAPO as soon as it has been established. At the applicant’s request, and upon payment of the prescribed fee, the search report may be accompanied by copies of documents relating to the subject matter of the patent search, with the exception of applications whose contents are not to be brought to the notice of third parties.
  • Publication of the application
    The Eurasian patent application is published 18 months after the date of filing or the earliest priority date.An application can also be published before the expiry of 18 months based on the applicant’s request upon payment of an additional fee. The invention, for which the application to the EAPO is submitted, obtains provisional protection for the period between the publication and grant of the Eurasian Patent. The protection applies to the published claims and covers all the contracting states.The Eurasian patent application will not be published if it has been withdrawn or has been deemed to be withdrawn, or if it has been deemed not to have been filed, within a period of 2 months before the anticipated date of publication.

Second stage:

  • Substantive examination
    The substantive examination can be undertaken only at the applicant’s request. The request must be filed with the EAPO within a period of 6 months from the date of publication of the Eurasian application, or, if the search report was published separately, from the date of its publication.If the request has not been filed within the 6 months , it may be filed within 2 months of the expiry of said time limit provided the applicant presents legitimate reasons for the delay and pays the prescribed additional fee ( at a level of 50 percent of the fee for the substantive examination).If no request has been received within the above time limit, or if the substantive examination fee has not been paid, the application will be deemed to have been withdrawn.The EAPO will notify the applicant that a request has been received and whether it has been granted or refused. The substantive examination is conducted provided that the results of the formal examination are positive.Substantive examination establishes the patentability of the invention, which is covered by the application.The guiding principle of the substantive examination is the collection of the greatest possible amount of information capable of influencing the objectivity of the decision in any way.In assessing industrial applicability, it is first established whether the invention can be made and used as indicated in the application (usually in the title of invention) by the means described in the application or available in the prior art.In this stage, invitations from the examiner to submit additional explanations and justifications are possible.

    It is also established whether the technical effect claimed in the description can be achieved.

    • Assessment of the novelty of an invention consists in checking that it does not form part of the state of the art. This check includes all the features included in the independent claims. An invention will not be deemed to be new if prior art is found to an item whose features are identical to all the features included in the claims.
    • Assessment of the inventive step includes the following checks: Identification of the invention’s prior art;
    • Identification of the features which distinguish the invention from its closest analogue (prototype);
    • Identification of the technical solutions characterized by these distinguishing features individually or in combination, including in combination with known features;
    • Identification of the solutions similar to the solutions in the prior art.

    If an invention covered by a Eurasian patent application is patentable, the EAPO decides to grant a Eurasian patent. Duration from application to grant is unspecified, very approximately it takes about 1-2 years.

    If substantive examination has revealed that the invention does not meet at least one of the requirements of patentability, the application will be refused.

    The Eurasian application may be withdrawn at the applicant’s request, which must be filed to the EAPO not later than the date of registration of the Eurasian patent.

    During examination procedure, at the examiner’s invitation, the applicant may participate in a discussion with an expert. During the examination procedure, up to the completion of the technical preparations for the publication of the Eurasian patent, the applicant has a right to add to, specify or correct elements of the Eurasian application. Any amendments or corrections to the Eurasian application proposed by the applicant on his own initiative shall be made after the payment of the prescribed additional fee.

    The applicant has the right to study the documents cited by the examiner against his application. Where the applicant has requested copies of the documents cited against the Eurasian application within 3 months of the date on which the decision or request relating to the application has been dispatched to him, the time limit afforded him for his reply shall be computed from the date on which copies of the documents concerned have been dispatched to him.

    If the examiner requests the applicant to submit any additional material, it shall be furnished within 4 months of the date of sending the request. If the applicant fails to observe the time limit for furnishing the requested additional material or fails to request an extension of the period for its submission, the Eurasian application shall be considered withdrawn.

  • The publication and grant of a Eurasian patent
    Eurasian patents granted by the Eurasian Office are registered in the Eurasian Patent Register with numbers assigned to them. The publication of a Eurasian patent takes place within 6 months of the date of its registration. The Eurasian Office grants the Eurasian patent on receipt of the fee for the grant of such a patent and for publication. The patent grant date is the date of its publication in the Eurasian Office Gazette. The grant and publication fee must be paid within 4 months of the date on which the EAPO has transmitted to the applicant notification that it is ready to grant the Eurasian Patent. If the applicant fails to pay this fee within the above mentioned time limit, he may also pay within 2 months of the expiry date of the 4 month period provided an additional fee is paid. Upon publication, a single copy of the patent is handed over to the applicant. If the grant and publication fee is not paid, the Eurasian Patent is not granted or published and the application is deemed to be withdrawn.The granted Eurasian Patent is valid in all contracting states from the date of its publication. No national validation in the contracting states has to be filed. The applicant can limit the territory of legal protection for the invention by not paying the annuities in these countries.Annuity feesAfter the grant, the applicant must designate, by name, each contracting state in which he wishes to maintain the patent. The maintenance of a Eurasian patent is subject to the payment of annual fees. Such fees must be paid to the EAPO annually in respect of each of the contracting states in which the applicant wants to maintain protection.The amount of the fee is the sum total of annual maintenance fees in all the contracting states. The start of the payment of annual fees is different in different contracting states. The applicant must start to pay all fees for the maintenance of the Eurasian patent only after the granting of the Eurasian patent. If an annuity fee is not paid in due time the fee may still be paid up to 6 months late provided that a 50% surcharge is also paid.If the applicant does not pay a due annuity for a certain country, the patent becomes invalid on the territory of this country.

Legal facet:

  • Opposition
    A notice of opposition may be filed to the EAPO by any person (except by the proprietor of the patent) within 6 months from the publication of the mention of grant in the Official Bulletin . Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid. The notice of opposition may state the following as grounds for revocation of a Eurasian patent:
    • The invention does not meet patentability requirements
    • The claims include features that did not appear in the Eurasian Application as originally filed.

    Each of the above conditions is separate grounds for revocation of a Eurasian patent.
    The interested party may lodge an appeal against the decision of opposition to the president of the EAPO within 4 months of the date when the written decision of the opposition is sent out.

  • Appeal
    At any stage in the processing of a Eurasian application, the applicant may appeal to the president of the EAPO against the actions of the examining Board. An applicant disagreeing with the EAPO’s refusal of an application may appeal against it within 3 months of the date of the notification of refusal. An applicant’s appeal must be heard within 4 months of the appeal being filed by a Board of the Eurasian Office. The applicant has a right to participate in the hearings. The resolution approved by the President of the EAPO, on an appeal against the decision of the Eurasian Office concerning a Eurasian application, is final.