MIKHAILYUK, SOROKOLAT & PARTNERS Patent and Trademark Attorneys ISO 9001 CERTIFIED
MIKHAILYUK, SOROKOLAT & PARTNERS Patent and Trademark Attorneys
ISO 9001 CERTIFIED


EURASIA AND EURASIAN PATENTS

ABOUT EURASIA
EURASIAN PATENT SYSTEM
ESSENTIAL FEATURES OF EURASIAN PROCEDURE
REQUIREMENTS OF PATENTABILITY
FEES AND DISCOUNTS
LEGAL ASPECTS
See also: Patent registration in Eurasia

ABOUT EURASIA

Eurasian patent Eurasia is a large landmass covering about 53,990,000 km ², or about 10.6% of the Earth’s surface. Often considered as a single continent, Eurasia comprises the traditional continents of Europe and Asia.

The Union of Soviet Socialist Republics (abbreviated USSR) was the largest country on the Eurasian Continent that existed from 1922 to 1991. It occupied the eastern portion of the European continent and the northern portion of the Asian continent and covered a total area of approximately 22,402,200 km ², or 41,5 % of the continent.

The former USSR included Russia and 14 other Soviet Socialistic Republics. Officially it disintegrated on 31 December 1991 and was replaced by the Commonwealth of Independent States (CIS).

After the breakdown of the Union of Soviet Socialist Republics the Patent Office of the USSR (Gospatent) had ceased its work. The united Patent Space was broken and the 15 countries of the former USSR (Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Russian Federation, Tajikistan, Turkmenistan, Ukraine, and Uzbekistan), which used to have one united Patent System and Legislation, were obliged to develop their own Intellectual Property Protection Systems.

Nowadays each of the former Soviet Union’s Republics has its own Patent Office and Patent Procedure, which are consolidated by the National Legislation of each country. Some of them are the members of the Eurasian Patent Organization - Regional Patent System, established by the Eurasian Patent Convention. So if one decides to protect Intellectual Property in one, several or all countries of the former USSR, it is possible to apply for a legal protection in each of them, i.e. file the certain number of the national applications.

In order to contract financial expenditure the Eurasian patent system may be used and Eurasian Patent that is valid in 8 countries may be obtained.

Why choose the Eurasian Patent Procedure or its advantages

- filing one application in one language, instead of filing the separate ones to the National Patent Offices
- one representative for all steps during the procedure
- one language that helps to reduce translation costs
- one examination procedure that enables to save time and money
- legal protection covering a large region with relative simplicity: unified legal protection of the invention in all Contracting States by obtaining one Eurasian Patent
- after granting of the Patent it must not be validated by national authorities
- simplified procedure of paying annual fees for every number of countries through the Eurasian Patent Office
- obtaining a strong Eurasia Patent since all Eurasian applications have to undergo substantive examination.


It is also significant that the Eurasian Patent System is flexible and user-friendly in terms of time limits for the grant of the Eurasian Patent, the possibility of extending time limits and restoring rights in an Application or a Patent, where such rights were lost as a result of failure to meet time limits, as well as provision for accelerated processing.


EURASIAN PATENT SYSTEM

History

The necessity of creation of an intergovernmental organization for the legal protection of the industrial property in all of the above-mentioned countries of former USSR has been already realized in 1990.

As a result of the idea of a patent system covering the Territory of Eurasia there was founded an intergovernmental institution – The Eurasian Patent Organization (EAPO) set up by the Eurasian Patent Convention (EAPC) which was signed in 1994 and came into force in 1995.

The main purpose of activity

The main purpose of the EAPO is to create an interstate regional system of legal protection for inventions on the basis of a common Patent of Eurasia having legal effect on the territory of all the Contracting States of the Convention.

Member states

The Eurasian Patent Organization unites the majority of the former Soviet Union Republics. At the present time the States Parties to the Eurasian Patent Convention are: 
- Armenia 
- Azerbaijan
- Belarus
- Kazakhstan
- Kyrgyzstan
- Russian Federation
- Tajikistan
- Turkmenistan.

The territory of these 8 countries together covers most of the territory of the former Soviet Union and consolidates the main parts of its population and economical potential.

Also, it is important to note that the Republic of Moldova was the EAPC contracting state before April 26, 2012, but has deposited a notification of denunciation. Eurasian patents issued before this date will take effect on the territory of Moldova. However, at the moment the patent protection in Moldova is possible only via filing an application to the national Patent Office of the Republic of Moldova. It is also essential that till now 3 countries (Georgia, Ukraine, and Uzbekistan) also have become the signatories of the Eurasian Patent Convention, but have not ratified it.

Data on Eurasian Applications and Patents is available on the site of EAPO at: http://www.eapatis.com/catalog/

Additional information on various topics related to patenting in Eurasia is available on the official EAPO website at http://www.eapo.org/en/  




ESSENTIAL FEATURES OF EURASIAN PROCEDURE

It takes from 2 to 4 years to register the invention in Eurasia.

In accordance with the Rule 49 of the Patent Regulations under the Eurasian Patent Convention the applicant has a right to file a Divisional Patent Application. Divisional Eurasian Application may be filed if on it’s filing date the initial application has not been withdrawn or the patent for the initial patent has not been registered.

Executive Authority

An executive authority of the Eurasian Patent Organization is the Eurasian Patent Office, which is located in Moscow (the capital of the Russian Federation).

Language for proceeding

Language for proceeding is Russian. Therefore all applications and documents should be filed or later translated into Russian. All correspondence with the EAPO should be done in Russian and exceptionally through the registered Eurasian Patent Attorney. In spite of seeming complexity, this fact helps to avoid the necessity of drafting documents into the different languages of the States Parties.

Designation of contracting states

In contrast to the European Office’s Procedure, in Eurasia it is not necessary to designate the Contracting States when filing the Eurasian Patent Application.
The opportunity to designate the countries for the legal protection comes only when the Eurasian Patent is granted. If a patent owner does not pay a due annuity for a certain country, the patent becomes invalid on the territory of this country.

Priority

Priority under the Paris Convention should be claimed within 12 months from the filing date of the initial application. If for reasons beyond the applicant’s control the application can not be filed within the specified time limit, an extension for two months may be granted.

Time limit for entry of PCT application into regional phase is 31 months from the priority date.

By this date EAPO should be provided with the request for the Eurasian Patent and a document on payment of official filing fee. All other documents including Russian translation can be filed within two months after the filing date.

Conversion of the Eurasian Patent Application into a national patent application(s)

Even if the application is refused by the Eurasian Patent Office the applicant may file a request with the Eurasian Office designating those Contracting States in which he wishes to file the Patent Application according to the national procedure within a term of six 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 Office with the same filing date and priority date as the Eurasian application.

Convention priority can be also grounded on the application filed to the Eurasian Patent Office.



REQUIREMENTS OF PATENTABILITY

Eurasian patent may be granted only for Inventions. The legal protection of the intellectual property rights in Eurasia is not granted neither for Utility Models nor for the Industrial Designs.

All requirements of patentability established by the EAPC are the same as in PCT or European Patent Convention.
In accordance with the Article 6 of “Eurasian Patent Convention”, Eurasian Patent Office shall grant a Eurasian patent for any invention that is:
- novel
- involves an inventive step
- is industrially applicable.

The following objects are not recognized as inventions: 

  • Discoveries 
  • Scientific theories and mathematical methods
  • Presentation of information 
  • Business organization and management methods 
  • Symbols, schedules and rules 
  • Methods of performing mental acts 
  • Computer programs and algorithms 
  • Topographies of integrated circuits 
  • Projects and plans for structures and buildings and for land development 
  • Solutions concerning solely the outward appearance of manufactured goods and aimed at satisfying aesthetic requirements.

In addition, Eurasian Patents cannot be granted for:

  • Plant or animal varieties
  • Invention, the commercial use of which it is essential to prevent for the purposes of protecting public order or morality, including the protection of the life and health of people and animals or the protection of plants, or in order to prevent serious damage being caused to the environment.
    In that regard, such use may not be considered such, solely on the grounds that it is forbidden by the legislation of one or more Contracting States.

Who may apply for a Patent?

In Accordance with the Article 7 of EAPC the right to the Eurasian Patent shall belong to the inventor or his successor in title. Where the inventor is an employee, the right to the Eurasian Patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has a place of business to which the employee is attached.

Any natural person, legal entity, organization or the group of applicants can file Eurasian Application.

Applicants who do not have their residence or principal place of business in one of the Contracting States of the EAPC have to file application and communicate only with the assistance of the registered Eurasian Patent Attorney.

Required filing information and documents

- Full name and address of the applicant(s)
- Full name and country code of residence of the inventor(s)
- Document confirming the right of the applicant(s) for 80 % discount, in case the applicant(s) has residence in country where per capita Gross National Income is 3000 USD or less (may be filed within four months from the date of the Official Request)
- Detailed description of invention with claims, abstract
- Drawings (if any)
- Sequence listing on CD (if any; can be submitted within four months from the date of the Official Request)
- Priority number, date and country of the first application, if convention priority is claimed (certified copy of the first application may be filed within three months from the filing date)
- International publication, international search report, international preliminary examination report for entry of PCT application into national phase
- Simply signed Power of Attorney (legalization and notarization is not required; the original of signed Power of Attorney must be filed to the Eurasian Patent Office within 2 months from the filing day, otherwise the Official Fee for late filing of the Power of Attorney has to be paid).

Stages of Examination

The procedure of examination is quite common and consists of two stages: formal and substantive examination.
The application undergoes formal examination within 2 months from the filing date.

The substantive examination is conducted provided that the results of the formal examination are positive.

Please note that substantive examination request has to be filed within 6 months from the date of publication of PCT Application or simultaneously with entering of PCT application into regional phase.

Publication and Provisional Protection

The Eurasian Patent Application is published by the Eurasian Patent Office after the expiration of a 18 months period starting from the filing date or, if priority has been sought, from the date of priority. It may, however, be published earlier at the applicant’s request upon payment of an additional fee.
The invention, which is applied to the Eurasian Patent Office, obtained Provisional Protection for the period between the publication and grant of the Eurasian Patent.

The Publication of the Eurasian Patent Application affords provisional legal protection within the scope of the published claims on the territory of all the Contracting States.

Grant

If the invention meets the requirements of patentability, the Decision of the readiness to grant the Patent is issued. After payment of the registration fee the Final Decision to grant the Patent is issued within 2-4 months. Term for payment of the prescribed fee is 4 months from the date of issue of the Decision.

The granted Eurasian Patent is valid on the territory of all Contracting States from the date of its publication, i.e. such a patent is equivalent to national patents in all of the Contracting States.

No national validation in the Contracting states has to be initiated. The Patent Owner can limit the territory of legal protection for the invention by not paying the annuities in these countries.



FEES AND DISCOUNTS

Most fees relating to the Eurasian Application or Patent are paid to The Eurasian Patent Office.

Statute on Fees of the Eurasian Patent Organization may be found at: http://www.eapo.org/en/documents/norm/poshlina_txt.html

Please note that:
- official fee for filing the application depends on the quantity of independent claims and may be reduced by 25 % if International Search Report is submitted.
- official fee for examination depends on the total quantity of independent claims.
- granting fee is fixed.
- the sum of Annuities depends on the number of chosen for validity of the Patent countries.

Applicant(s) have the right for 80 % discount for the official fees, in case the applicant(s) has residence in country party of the Paris Convention where per capita Gross National Income is 3000 USD or less.

The right to the discount should be confirmed by the appropriate document (may be filed within four months from the date of the Official Request).

The list of States Parties to the Paris Convention on the protection of industrial property eligible for reductions in fees may be found at: http://www.eapo.org/en/documents/norm/prilposh_txt.html

Renewals (Annuities)

The maintenance fees shall be payable for each year which follows after the grant of the Eurasian Patent by the date corresponding to the filing date of the Eurasian application.

Annuities are to be paid in designated by the applicant Contracting States in which he decides to obtain the legal protection for the invention.

The maintenance fees are paid not in each designated country, but only to the Eurasian Patent Office.

The start of the payment of annual fees differs from state to state. In the Republic of Azerbaijan, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz Republic, the Russian Federation and the Republic of Tajikistan annual maintenance fees are payable starting from the third year of a Eurasian patent’s validity. In the Republic of Armenia they are payable from the second year. In Turkmenistan they are payable from the first year.

In spite of this fact, all fees for maintenance of the Eurasian Patent are not to be paid until the Eurasian Patent is granted. The missed Annuities should be paid after the Grant and only if the Patent Owner decides to choose this country as a territory for validation of the Patent.


LEGAL ASPECTS

Validity term

The validity term of the Eurasian Patent is 20 years from the filing date of the application.
Upon the request of the patentee, the twenty-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.

Opposition

Rule 53 of the Patent Regulations provides that an opposition is to be filed within six months from publication of the mention of grant in the Official Bulletin and an opposition fee is paid. Thus, the term for filing an opposition is three months shorter than with the EPC.
The following cases are the reasons for opposition:
- the grant of the Eurasian Patent had no legal basis owing to the invention not meeting the patentability requirements
- the claims include features that did not appear in the Eurasian Application as originally filed.

Amendments

Amendments to the Patent Application can be made upon the request of Eurasian Examination Board or of the own volition of the applicant. Such amendments may not expand the scope of the Patent and may be made before a decision on granting a Patent is taken.

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.

After the patent is granted technical or obvious errors in the Eurasian Patent may be corrected upon payment of the prescribed fee.

The patent owner also may request the Eurasian Patent Office to change the list of inventors. Change of list of inventors is the subject to payment of a prescribed fee and can be made only by approbation of all the parties.

Disclosure

Any kind of information made available in the world before the priority date of the application is considered to be destroyable for the novelty of the invention.

However there is a grace period of 6 months. 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 not later than six months after the date of disclosure, or the date of priority where priority was sought. Proof of the circumstances of disclosure is reserved with the applicant.


Patent attorneys of Eurasian patent firm - “Mikhailyuk, Sorokolat & Partners” will assist you with Eurasian patent matters and would be pleased to provide you with the professional assistance regarding obtaining of the Eurasian patent.

see also:
Registered Eurasian Patent Attorneys of MSP

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