Russian v. Eurasian Design Systems: Procedure and Fee Comparison
The Eurasian Patent Office started accepting Eurasian industrial design applications on June 1, 2021, when the Eurasian design protection system under the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention became operational, allowing applicants to obtain protection simultaneously within the territory of the states where the Protocol so far entered into force – Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia.
In order to illustrate the differences between filing a design application directly in a participating jurisdiction and filing a Eurasian design application, as well as the potential advantages and disadvantages of these two options, we prepared the following table comparing the Russian and Eurasian design system procedures and requirements:
|Geographical coverage||Russia||Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia
|Unity requirement||Very strict unity requirement; it is almost impossible to file several designs under the same application||Designs filed under the same application should refer to the same Locarno class (up to 100 designs in the same application)
|Novelty grace period||12 months
|Publication||After the issuance of the grant decision and payment of the grant fees (i.e. 7-9 months after the filing date), unless expedited publication is requested
||Within one month from notifying the applicant of the positive result of the preliminary examination|
|Oppositions||N/A||Oppositions can be filed within two months from the publication date; applicants have one month to file their arguments against the opposition
|Invalidation actions||Invalidation actions against registered designs can be filed with the Chamber of Patent Disputes (CPD) of the Russian IPO
The CPD’s decisions can be appealed in the IP Court.
|A Eurasian design can be invalidated if an action is filed with the Eurasian Patent Office within six months from the design publication date.
A decision on the invalidation action can be further appealed by submitting arguments to the President of the Eurasian Patent Office.
The decisions of the Eurasian Patent Office and its President are valid within the territories of all Contracting Parties.
After the expiration of the six-month period, invalidation actions should be filed separately in each Contracting Party. In case of invalidation by one Contracting Party, a Eurasian design remains valid in other Contracting Parties.
|Recordations||Amendment, assignment, merger and license recordation requests should be filed with the Russian IPO.||Requests to record an assignment, merger or pledge of rights should be filed with the Eurasian Patent Office.
Requests to record a license should be filed with the IPO of the Contracting Party where the license agreement is made and where it is valid.
|Term of validity||Maximum total of 25 years||Maximum total of 25 years
|Renewal Fees||The renewal fee amount does not depend on the number of designs
||The renewal fee amount depends on the number of designs|
|Enforcement||According to the national legislation, an infringement action should be filed with the competent court
||An infringement action should be filed where the infringement took place, according to the substantive and procedural law of the Contracting Party
The differences in official fees when choosing the national and the Eurasian routes can be seen in the tables below:
|All fees in EUR||Filing a design application (one design)||Publication and granting fees + 3-5 years of validity (one design)
||6-10 years of validity (one design)|
|All fees in EUR||Filing a design application (one design)||Publication and granting fees, including 3-5 years of validity (one design)
||6-10 years of validity (one design)|
Besides Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia, where the Eurasian design system became operational on June 1, 2021, the three remaining EAPO member states – Belarus, Tajikistan and Turkmenistan – have yet to complete their ratification procedures.
According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.
As EAPO announced on their website, the first Eurasian design application was submitted by the Roscosmos State Corporation for Space Activities, a state corporation of the Russian Federation responsible for space flights, cosmonautics programs, and aerospace research.
By: Tatyana Kulikova
For more information, please contact Tatyana Kulikova at our Russia office.
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