Patents - Eurasia: Lexology GTDT Practice Guides
Patent enforcement proceedings
Lawsuits and courts
- What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?
The Eurasian patent has effect on the territory of eight contracting states of the Eurasian Patent Convention (EAPC) and the Eurasian Patent Organization (EAPO): Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, the Russian Federation, Tajikistan and Turkmenistan. While the Eurasian patent system provides for a uniform application procedure for physical and legal persons to protect their inventions on the basis of a single Eurasian patent, valid in the territory of member states, there is no unified procedure to enforce a Eurasian patent and no unified court for considering related disputes. Disputes arising as a result of patent infringement are considered by national courts or other competent authorities of each contracting state where the infringement took place, providing for the same civil or other liability as in the case of their national patents.
Although civil, administrative and criminal proceedings are available for enforcing patent rights in almost all contracting states, with certain exceptions, the most efficient option remains civil proceedings before national courts. In Armenia, it is the courts of general jurisdiction and in Turkmenistan ordinary courts that try patent infringement cases in the first instance. Russia and Belarus have specialised bodies – the IP Court and the Chamber for IP Cases of the Supreme Court respectively. The specialised IP court in Russia acts as a cassation (third) instance for patent infringement cases tried by commercial courts, whereas courts of general jurisdiction and commercial courts try cases as courts of first instance. The Chamber for IP Cases of the Supreme Court in Belarus acts as a court of first instance.
In some of the contracting states patent enforcement cases are infrequent. For example, in Tajikistan they are extremely rare.
Trial format and timing
- What is the format of a patent infringement trial?
Trials are relatively similar in format across the contracting states. As a general rule, courts set preliminary hearings followed by substantive hearings.
The national courts of the contracting states accept various kinds of evidence, including documents, affidavits or live testimonies. Cross-examination of witnesses might also take place. The disputed issues are normally resolved by a judge or a panel of odd number of judges.
The use of court-appointed experts is relatively common. The conflicting parties in Russia and Belarus may petition for the appointment of an expert with a specialist scientific or technical knowledge. In Belarus, if necessary, the courts rely on a report made by as many as three experts to reach a decision.
The duration of court proceedings varies from country to country and largely depends on the complexity of each case. Normally, patent cases in Russia are tried relatively quickly; even if the first-instance decision is appealed, the total process might take up to a year, but proceedings that last for one to two years are not exceptional either. In Belarus, a trial typically lasts about 10 to 12 months, and one to two years in Armenia.
- What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?
Normally, in infringement cases each party needs to support its claims with evidence. There are notable exceptions, however. For example, in Armenia the burden of proof could lie on the defendant when a product manufactured by the defendant infringes a patented product development process. In the absence of proof that the infringing product was developed through a different process, it is presumed that the patented process had been used to develop it.
Invalidation claims cannot be considered within the same infringement proceedings. An invalidation action should be filed separately before the appellate body of the local patent office (for example, the Chamber of Patent Disputes in Russia; the Appeal Counsel in Belarus, Azerbaijan, Kyrgyzstan; or the Appeal Patent Commission in Turkmenistan). The burden of proof is on the claimant.
Standing to sue
- Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?
In all contracting states, the patent owners and exclusive licensees (unless otherwise is provided in the licence agreement) are entitled to sue for patent infringement. Moreover, any licensee may bring an action against the infringer of a Eurasian patent if it had requested the patent owner to bring such an action, but the latter has not done so within a month. The patent owner can participate in the infringement proceedings initiated by the licensee. Licensees are also entitled to participate in court proceedings initiated by patent owners if they wish to receive their share of damages.
In most contracting states, it is procedurally possible for the defendant to bring a counterclaim against the claimant.
Inducement, and contributory and multiple party infringement
- To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?
- In Armenia, Belarus and Russia, liability is established separately for each infringer in the distribution chain: from the manufacturer, distributor and retailer to the end user. The legislation on civil liability provides no provisions on inducement of infringement or contributory patent infringement. In principle, under Russian law it is possible to impose criminal liability for inducing and contributing to the infringement; however, in practice such facts are hard to prove and the provisions are rarely implemented.
Joinder of multiple defendants
- Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?
- Multiple parties can be joined as defendants in the same proceedings in all contracting states. However, the requirements for the joint proceedings against multiple defendants differ from state to state. For example, in Kazakhstan and Russia, the claims against multiple defendants can be joined if:
- the same rights or obligations (or both) are the subject of the dispute;
- the co-defendants’ rights and obligations share the same basis; and
- the disputed rights and obligations are of the same nature.
Infringement by foreign activities
- To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?
- Activities that take place outside the Eurasian Economic Union (EEU) cannot support a charge of patent infringement in EEU contracting states. Activities by the same infringer that took place in the EEU in principle could be considered as aggravating circumstances by the courts of the EEU countries.
Infringement by equivalents
- To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?
Not all countries of the Eurasian Patent Convention apply the doctrine of equivalents when evaluating infringements. For example, in Armenia and Azerbaijan there are no legal provisions or judicial decisions that may support the doctrine of equivalents. It is to a certain extent recognised in Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. In these countries, a patent is infringed if each feature of the independent patent claim, or a feature equivalent to it, is used in a product or a method.
Although most contracting countries apply the doctrine of equivalents, there are no legislative provisions that clearly outline how to determine equivalence and the practice of applying the doctrine differs from country to country. Normally, equivalence is determined by the courts (as in Russia) or court-appointed experts (as in Belarus and Kazakhstan). The scope of equivalence is not considered in the mentioned countries: it either exists or does not.
Discovery of evidence
- What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?
Normally, the claimant gathers all the necessary evidence by himself before filing a lawsuit.
In most contracting states, judges have the authority to order the gathering of evidence, if a party does not have access to it. In Armenia, Belarus, Kazakhstan and Russia, the claimant may ask the court to issue an order according to which the defendant or third parties are obliged to provide the evidence. The courts can grant the order, considering the circumstances of the case, and clarify the legal consequences of failure to comply with it. Notably in Kazakhstan, if a party fails to present evidence requested by the court within a stipulated period, the court considers such evidence as being directed against the interests of such a party.
All the contracting states except Turkmenistan are parties to the Hague Convention of 18 March 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters and thus could rely on the mechanism of requesting evidence from abroad when infringement is handled within civil or commercial proceedings.
- What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?
- The litigation timetable depends on the jurisdiction. In most countries, the first-instance proceedings take at least three months (and up to nine or 12 months). Generally, appellate proceedings (if available) are shorter than first-instance proceedings, but the timetable depends on the country and the workload of the appellate court.
- What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?
- The official and attorneys’ fees as well as other related costs (such as translations and expert fees) vary significantly from jurisdiction to jurisdiction and largely depend on the complexity of each case. For example, patent litigation in Kazakhstan and Russia generally tends to be more expensive than in Armenia and Belarus. At the pre-trial stage, the costs depend on the evidence that a party wishes to gather, intention to send a cease-and-desist letter and the willingness to negotiate an out-of-court settlement. At the pre-trial and first-instance trial stages, legal fees start approximately from €8,000 in less costly jurisdictions, whereas in countries like Russia the average cost of first-instance proceedings could be two to three times more expensive. Appeal proceedings are normally about one-and-a-half times less expensive than first-instance proceedings. These figures are provided only for information purposes and accurate estimates should be obtained for each particular case. A lot will depend on the time spent on case analysis – this usually is the most time-consuming part and usually falls under the pre-trial phase. The availability of contingency fees should be checked in each country, as it might depend on the local attorneys and approach of the local courts.
- What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?
- In all contracting states, the parties have a right to appeal the decision at least once. In most countries, it is possible to file both an appeal and, later, a cassation claim. A notable exception is Belarus, where the decision of the Intellectual Property Board of the High Court can only be challenged within cassation proceedings. The acceptance of new evidence during the appeal proceedings depends on the procedural laws of each country. In Kazakhstan and Russia, the courts may accept new evidence at the appellate stage, but only under limited circumstances prescribed by the law, whereas Armenian courts do not accept fresh evidence at the appellate stage.
- To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?
- The claimant’s potential exposure to unfair competition claims depends on legislation and practice of each of the contracting states. Some countries do not entirely exclude the possibility of such countermeasures; however, in practice they either do not happen or are infrequent (Armenia, Belarus, Kazakhstan and Russia). In other countries, like Turkmenistan, unfair competition and business-related tort claims are not available for parties accused of patent infringement.
Alternative dispute resolution
- To what extent are alternative dispute resolution techniques available to resolve patent disputes?
- Alternative dispute resolution mechanisms, including IP mediation, are available in certain countries (Kazakhstan, Russia and Turkmenistan), whereas in others they are either not available for patent infringement cases (Armenia) or practical implementation of such measures is limited (Belarus).
Scope and ownership of patents
Types of protectable inventions
- Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?
The Eurasian patent can be obtained for material objects or processes created or transformed by humans, in particular, a device, a method, a substance or a biotechnological product, as well as for the use of a device, method, substance or a biotechnological product.
The following cannot be patented (if claimed per se): — discoveries; — scientific theories and mathematical methods; — presentation of information; — methods of economic organisation and management (business methods); — symbols, schedules and rules, including rules of games; — methods for performing mental acts; — algorithms and computer programs; — projects and plans for structures and buildings and for land development; and — solutions concerning solely the outward appearance of manufactured goods and aimed at satisfying aesthetic requirements.
In addition, Eurasian patents cannot be granted for plant varieties and animal breeds; topologies of integrated circuits; and inventions, the commercial use of which would be contrary to public order or morality, or the wellbeing and health of people, animals and plants, or could cause serious damage to the environment. The latter cannot be considered as a basis for refusal just because it is forbidden by law in one or more contracting states.
- Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?
In accordance with the Eurasian regulations, the right to obtain the Eurasian patent belongs to the inventor or its assignee. If the inventor is an employee, the rights to an invention should be determined in accordance with the national law of a contracting state in which the employee is mainly employed.
In general, national legislative provisions stipulate that patent rights to an invention made by an employee within the scope of his or her duties, or as a result of a particular task, belong to the employer, unless an employment contract stipulates otherwise. The national legislation can stipulate different procedures that an employee should follow if his invention is created as a part of his employment (for example, filing a notification to the employer; signing specific documents, etc).
The Eurasian regulations do not regulate particular cases when an invention is created by an independent contractor, multiple inventors or a joint venture. In such cases, the right to obtain a Eurasian patent is determined by national legislation that differs from state to state. For example, in Kazakhstan, if the invention was created by the joint work of several inventors, including an inventor who is not an employee, the rights to this invention are determined by an agreement between the parties involved.
As for the official recording of patent ownership, the applicant identified in the patent application should be deemed entitled to file the Eurasian patent.
If a person other than the applicant is recognised as the one entitled to file the Eurasian patent application in accordance with a court decision issued in one of the contracting states, that person may, provided that the Eurasian patent has not yet been granted, within three months of the decision becoming effective, perform the following acts:
- continue the examination of the Eurasian patent application as his own instead of the applicant, provided that the prescribed fee is paid;
- file a new Eurasian patent application for the same invention, retaining the filing and the priority dates of the initial application, in which case the initial application should be considered to have been withdrawn from the date of receipt of the new Eurasian application; or
- withdraw the Eurasian patent application filed by the non-entitled person.
Assignment of the right to a Eurasian application or patent enters into force only after it has been registered by the Eurasian Patent Office (EAPO). Licence and other contracts with respect to Eurasian patents should be registered in accordance with the national legislation of the contracting states in which the Eurasian patent has effect.
- How and on what grounds can the validity of a patent be challenged? Is there a special court or administrative tribunal in which to do this?
There are two procedures available to challenge the validity of a Eurasian patent – the administrative revocation of the Eurasian patent before the EAPO and invalidation of a granted Eurasian patent under the national law of a particular contracting state.
Under the administrative revocation, any interested party can submit a notice of opposition within six months from the date of publication of information on the grant of the Eurasian patent. The patent may be administratively revoked either entirely or in part, in the following cases:
- the invention does not meet the patentability requirements;
- the claims include features that did not appear in the Eurasian patent application as originally filed; and
- the application does not meet the sufficiency of disclosure requirement.
A Eurasian patent may be entirely or partially invalidated throughout the term of its validity, under the national laws of contracting states, in the following cases:
- the invention does not meet the patentability requirements established by the Eurasian Convention and the relevant regulations;
- the claims include features absent from the Eurasian patent application as originally filed;
- the application does not meet the sufficiency of disclosure requirement; and
- the inventor or patentee do not have the right to be mentioned as such.
If the administrative revocation procedure is ongoing before the EAPO, the invalidation decision can be issued by a contracting state only after the administrative revocation procedure is completed.
National patent offices should send copies of their decisions to the EAPO (along with a Russian translation of the relevant parts of the decisions) and the corresponding information will be entered into the Eurasian Patent Register.
Absolute novelty requirement
- Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?
The Eurasian legislation provides for an exception from the ‘absolute novelty’ requirement for patentability – disclosure of information related to the subject matter of the invention by the inventor, applicant, or other person that received this information directly or indirectly from them, should not be taken into account when determining patentability if it occurred within six months before the filing or priority date.
As for the national ‘absolute novelty’ requirement for patentability, all contracting states of the Eurasian Patent Convention, except Turkmenistan, have exceptions from the ‘absolute novelty’ requirement and provide grace periods. Armenia, Azerbaijan, Belarus, and Kyrgyzstan have one-year grace periods, whereas Kazakhstan, Russia, and Tajikistan stipulate six-month grace periods.
Obviousness or inventiveness test
- What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?
The laws and regulatory acts that can be used for determining whether a Eurasian patent is ‘obvious’ or ‘inventive’ in view of the prior art include the Eurasian Patent Convention, the Patent Regulations under the Eurasian Patent Convention, as well as the Rules for compiling, filing and examining Eurasian applications at the EAPO.
Under these laws and regulations, the assessment of inventive step involves identifying and analysing:
- the closest analogue (prototype) to the claimed invention;
- the features that distinguish the claimed invention from the closest analogue (distinguishing features);
- the prior art solutions with features that match the claimed invention’s distinguishing features; and
- the impact of the prior art’s distinguishing features on the technical effect indicated by the applicant.
- Are there any grounds on which an otherwise valid patent can be deemed unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?
The legislation regarding patent unenforceability varies from country to country.
In Armenia, a patent may be considered invalid owing to the patentee’s illegal behaviour, for example the person had no right to obtain a patent.
In Turkmenistan, a patent can be deemed unenforceable if the patent owner’s actions contradict moral principles or the state’s economic or defence interests.
Neither Belarus, Kazakhstan nor Russia’s legislation have grounds on which valid patents can be deemed unenforceable owing to misconduct by the inventors or patent owners. However, under the Kazakh legislation, the rights to the valid patent cannot be enforced if a patentee did not bring a lawsuit against the infringer during the statute of limitations period.
Under Eurasian regulations, any person who began to use an invention or an identical solution, or made the necessary preparations to use it, between the Eurasian patent’s validity termination date and the restoration date, can continue its free use without expanding the scope of the use (the right of subsequent use).
Prior user defence
- Is it a defence if an accused infringer has been privately using the accused method or device prior to the filing date or publication date of the patent? If so, does the defence cover all types of inventions? Is the defence limited to commercial uses?
- An accused infringer can try to assert the prior user rights defence on the territory of the contracting state in which the prior use occurred. Under the Eurasian regulations, any individual or legal entity that used an invention or carried out the necessary preparatory work for it prior to the filing date or priority date of the Eurasian application, retains the right to use it free of charge, provided that the scope of such use is not expanded.
Monetary remedies for infringement
- What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be nominal, provide fair compensation or be punitive in nature? How are royalties calculated?
- The types of available monetary remedies depend on the national legislation of a particular contracting state where the Eurasian patent was infringed. In certain countries, like Kazakhstan and Russia, a patentee can claim statutory compensation instead of damages. The amount of compensation is awarded at the court’s discretion based on the circumstances of each case. Unlike with damages, in order to claim statutory compensation, the claimant is not obliged to present proof of his losses. Royalties are typically calculated in view of the current market situation.
Injunctions against infringement
- To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?
The possibility of obtaining a preliminary or a final injunction depends on the law of a particular contracting state where a Eurasian patent was infringed.
In most contracting states, obtaining a preliminary injunction is challenging in practice even when they are provided for by the local law. Judges are often hesitant to accept the responsibility linked with injunctive relief and prefer to remain neutral, avoiding steps that may be seen as too radical.
In principle, in Kazakhstan the court may grant an injunction if is consistent with the declared claim. If a claim has been filed for the recognition of rights, or for the restoration of the situation that existed before the infringement, the court may prohibit the defendant from distributing the product and seize the goods in question.
In Belarus and Russia, a temporary injunction can be granted if the claimant can prove that the enforcement of the final judgment will be either impossible or unreasonably difficult in the absence of injunctive relief. The injunction may be obtained against the defendant who is a vendor or a supplier or other persons who undertake actions such as import, manufacture, offer for sale, sale, storage of patented products and any other actions aimed at marketing the patented products.
The final injunction is granted only after hearing the case on the merits, within the scope of the claim stated in the lawsuit. The court might also issue an injunction aimed at preventing further infringing actions and actions that might create a threat of infringement. Moreover, the court might issue an injunction that allows for the seizure of infringing products from manufacturers, importers, stores, transport companies, sellers or other persons who unfairly obtained the infringing goods.
Banning importation of infringing products
- To what extent is it possible to block the importation of infringing products into the country? Is there a specific tribunal or proceeding available to accomplish this?
IIt is possible to block the importation of infringing products at the borders of some contracting states. In Armenia, a patent can be registered with the customs authorities. If a potentially infringing product appears at a border crossing point, it will be detained to determine its origins. In Belarus, if a patent owner becomes aware of an expected importation of infringing goods, he or she can notify the customs office and provide all relevant details about the importer, while the customs authorities can inform the patent owner when the goods reach the border, so that the patent owner can initiate a lawsuit before the goods are cleared. Turkmenistan’s legislation provides for border measures that extend to products that infringe patents; however, in practice it is not well enforced by customs authorities.
There are no specific tribunals for this purpose in any of the mentioned states.
- Under what conditions can a successful litigant recover costs and attorneys’ fees?
- The exact conditions depend on the country and the outcome of the case (if the claim is fully or partially granted). In Belarus and Russia, a successful litigant should be able to recover costs and attorneys’ fees if they are reasonable and proved by supporting documents. The courts might compare the requested compensation with the fees normally charged in similar cases and adjust the claimed amount. In Kazakhstan, a successful litigant may recover all costs and attorneys’ fees if the claim is fully satisfied and if he can prove the incurred expenses. However, if the claim is only partially satisfied, the costs are awarded to the claimant in proportion to the part of the claim that has been satisfied.
- Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate? Are opinions of counsel used as a defence to a charge of wilful infringement?
- Normally, most countries do not offer additional remedies for deliberate infringement. In Belarus and Russia, however, willful infringement will be taken into account when assessing the amount of statutory compensation; the courts tend to award higher compensations in cases of willful infringement.
Time limits for lawsuits
- What is the time limit for seeking a remedy for patent infringement?
- The time limit for seeking a remedy is stipulated by the local law of the country where patent infringement took place. In most of the contracting states, the general term is three years from the date when the patentee learned or could have learned about the infringement.
- Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark? What are the consequences of false patent marking?
- There are no special provisions regarding marking of the patented products in most of the contracting states (eg, Armenia, Belarus, Russia and Turkmenistan). The laws of some member states (Kazakhstan and Tajikistan) provide for the possibility of marking patented products, but given that this is an option and not an obligation, there are no legal consequences for failing to mark a patented product.
- Are there any restrictions on the contractual terms by which a patent owner may license a patent?
- Licences and other contracts related to Eurasian patents should be concluded in compliance with the national laws of the contracting states, both in form and substance, and thus restrictions should be checked at the national level. In most cases, the agreement should be made in writing. In Belarus, Kazakhstan and Russia, licence agreements should be registered with the national Intellectual Property Office.
- Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?
Compulsory licensing of Eurasian patents is subject to the national laws of the contracting states. While there are subtle differences, the legislation of most of the contracting states (Armenia, Kazakhstan, Kyrgyzstan, Belarus, Tajikistan and Russia) provide for similar requirements for obtaining compulsory licences. Generally, if an invention is not used or is not sufficiently used within a specified period of time (which differs among the states) and the patentee refuses to grant a licence to an entity under reasonable conditions, this entity can file a court claim for obtaining a compulsory (non-exclusive) licence.
Moreover, if a patentee is unable to use the patented invention (second patent) because it infringes on another’s patent (first patent), and the patentee of the first patent refuses to grant a licence to the patentee of the second patent, the patentee of the second patent can file a court claim to obtain a compulsory licence. In that case, the patentee of the second patent should prove a significant technical and economical (business) advantage of his or her invention over the first one.
The terms and conditions of the compulsory licence are determined by courts.
Patent office proceedings
Patenting timetable and costs
- How long does it typically take, and how much does it typically cost, to obtain a patent?
The Eurasian legislation does not set deadlines for the various stages of the Eurasian patent examination or for the total duration of the examination, but in practice, a Eurasian patent is usually granted within two-and-a-half to three years from the filing date.
The total cost to prosecute an average application with five independent claims, 20 claims in total, 35 pages of specifications and two office actions during the prosecution ranges from €6,000 to €7,000.
The total cost of obtaining a patent includes official fees and patent attorney’s fees. Translation and other costs (eg, extension of the term for filing a response to an office action) are not included in this estimate.
Official fees mostly depend on the number of claims and amendments incorporated into an application during prosecution. For example, the lowest possible official fees paid would be for an application with one independent claim and five claims in total, provided that no amendments were made during prosecution. In this case, the total official fees would be approximately €1,200. The attorney’s fees vary significantly from jurisdiction to jurisdiction and further within them. In Russia, a Eurasian patent attorney’s costs associated with filing, prosecution and the grant of a patent could be from €3,000 to €4,000 for an average application.
Expedited patent prosecution
- Are there any procedures to expedite patent prosecution?
- The Eurasian Patent Office (EAPO) has Patent Prosecution Highway programmes with Korean, Chinese, EU, Japanese and Finnish patent offices. In addition, the EAPO provides acceleration of formal and substantive examination as well as the acceleration of publication and grant. Accelerated formal examination is to be conducted within five days (the fee is approximately €250) or 10 days (the fee is approximately €125), and the first office action under the accelerated substantive examination (the fee is approximately €700) is issued within three months from the date of the notice of allowance regarding the corresponding request. Accelerated patent publication and grant procedures are conducted within 14 working days of the date of the notice of allowance (the fee is approximately €250).
Patent application contents
- What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?
- The Eurasian patent application should comprise a description, drawings and other materials if they are necessary for understanding the essence of the invention. The description should contain the following sections:
- the technical field to which the invention relates;
- the description of the prior art and information about analogues known to the applicant, with indication of the closest analogue to the claimed invention, if possible;
- the disclosure of the invention that should facilitate understanding of a technical problem that the invention sets out to solve, the specification of a technical result that the invention intends to achieve, as well as advantages of the claimed invention over the related prior art;
- a brief description of figures, drawings or other materials; and
- information proving the possibility to implement the invention to achieve the claimed technical effect.
Prior art disclosure obligations
- Must an inventor disclose prior art to the patent office examiner?
- Applicants can disclose as much or as little information regarding prior art as they consider necessary. There is no strict obligation in the EAPO procedure to inform the examiners about all prior art relevant to the application that became known to an applicant.
Pursuit of additional claims
- May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?
A patent applicant can file one or more divisional patent applications to pursue different or new claims to those disclosed in the parent application.
The divisional application can be filed at any time either voluntarily or in response to an objection based on a lack of unity during the examination of the parent application, provided that: — the parent application is still pending (ie, it is not withdrawn or considered withdrawn); — the divisional application is filed prior to the publication of the parent patent; or — the divisional application is filed before the possibility of objecting against the rejection decision regarding the parent application has been exhausted, namely within three months from the day of receiving the rejection decision.
A Eurasian patent cannot be granted based on the divisional application if the claims are identical in their scope to those in the parent application.
Patent office appeals
- Is it possible to appeal an adverse decision by the patent office in a court of law?
- The EAPO’s rejection decision can be appealed before the EAPO’s appellate board within three months from the date of its receipt. The appellate EAPO decision may be further challenged by filing an appeal with the EAPO’s president within four months from the date of its issue. The president’s decision is final and cannot be further challenged before the EAPO or in a court of law.
Oppositions or protests to patents
- Does the patent office provide any mechanism for opposing the grant of a patent?
- There are no procedures for opposing the grant of a patent according to the Eurasian legislation. However, after an application is published, any party can submit comments regarding the patentability of the claimed invention.
Priority of invention
- Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?
- If identical inventions have the same filing date or, if priority is claimed, the same priority date, the applicants will, subject to their consent, be granted only one Eurasian patent. If no agreement has been reached between the applicants, no Eurasian patent will be granted.
Modification and re-examination of patents
- Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?
The Eurasian patent can be modified by removing one or several claims, excluding one or several features from claims, or including one or more features from a dependent claim into an independent claim upon patentee’s request, provided that the modification does not expand the scope of exclusive rights. The Eurasian patent could be also modified by correcting technical or apparent errors.
There is no re-examination procedure stipulated by the Eurasian legislation.
The administrative revocation of the Eurasian patent before the EAPO is possible within six months from the date of the patent publication. The patent can also be revoked under the national law of a particular contracting state. The Eurasian patent claims may be amended during invalidation proceedings in Russia and Belarus if the patent is invalidated in part.
- How is the duration of patent protection determined?
- The term of validity of the Eurasian patent is 20 years from the application filing date if properly maintained. This 20-year term can be extended in accordance with the national legislation of a contracting state. For instance, the overall term, with granted extensions, is up to 25 years in Russia or Kazakhstan for inventions related to medicines or pesticides that require a marketing authorisation.
Update and trends
Key developments of the past year
- What are the most significant developing or emerging trends in the country’s patent law?
The Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention was adopted by EAPO member states on 9 September 2019, introducing the Eurasian system of protection for industrial design patents, along with the already existing regional protection for inventions.
Five EAPO member states ratified the Protocol. The first three member states to ratify it were Armenia, Azerbaijan and Kyrgyzstan, and in these countries the Protocol will enter into force on 17 March 2021. At the beginning of January 2021, Russia and Kazakhstan also deposited their ratification instruments; the Protocol will enter into force on 11 April 2021 in Russia and on 12 April 12021 in Kazakhstan. From the remaining three member states that did not ratify the Protocol (Belarus, Tajikistan and Turkmenistan), Tajikistan is the only state that signed it.
According to the Protocol, Eurasian design patent applications will be filed with the EAPO either directly or through the national patent office of an EAPO member state. All applicants will follow uniform examination requirements, use only the official language of the EAPO – Russian, and pay a uniform procedural fee. Once granted, Eurasian design patents will be valid for five years counting from the application filing date, and will be renewable for additional five-year periods up to four more times, so that the maximum term of protection does not exceed 25 years from the application filing date.
As of 1 March 2021, the Pharmaceutical Register of the Eurasian Patent Office is available on the EAPO website. The Register contains information on Eurasian patents related to active pharmaceutical ingredients that have been assigned International Nonproprietary Names. The Register provides up-to-date information on the legal status of these patents in all member states, supplementary protection certificates, licensing agreements and drugs registered in the member states.
- What emergency legislation, relief programmes and other initiatives specific to your practice area has your state implemented to address the pandemic? Have any existing government programmes, laws or regulations been amended to address these concerns? What best practices are advisable for clients?
- The EAPO took no particular actions in response to covid-19. In this regard, it would be advisable to consider filing national patent applications, particularly in Russia or Kazakhstan, where accelerated examination programmes for inventions related to covid-19 were launched.
Reproduced with permission from Law Business Research Ltd. This article was first published in Lexology GTDT – Patents 2021. For further information, please visit: https://www.lexology.com/gtdt.