Patent and Trademark Attorneys


July 1, 2017
IPR protection practice: peculiarities of filing fee calculation in view of the changes in Russian IP legislation

In August, 2016, the amendments in the IP legislation on state registration of inventions (Administrative Regulation No.315) entered into force. Said amendments changed the principle of payment of the state fee for a part of an international patent application in respect of which international search or international preliminary examination was not conducted. Previously, the Regulation stipulated that it was required to pay the fee for a group of inventions which were not subject to international search in applications with lack of unity of an invention. The revised legislation does not contain provisions in this regard. Therefore, now it is required to pay the fee for parts which were not subject to international search in applications which do not lack unity of invention. As the new IP legislation does not give the definition of a part of an application, the question arises on what experts at FIPS consider a part of an application.

The first experience revealed that experts at FIPS could not precisely define how many parts an application contained and for how many of said parts the applicant should be charged. As a result, experts often refer to an international search report (ISR) containing the list of claims for which international search was not conducted. Still ISRs do not list parts of the application.

Such an approach seems quite weird as apparently an examiner at an International Searching Authority (ISA) is not aware of the FIPS fee policy and can list claims both through hyphen and commas, which, in its turn, influences the number of parts of the application. For instance, one time the ISA examiner can indicate that search was not conducted in respect of claims 1, 2, 3, 4, 5, the other time he can name them as claims 1-5. Experts at FIPS consider the above-mentioned variants as 5 parts and 1 part correspondingly.

It would be quite logical to presuppose that the number of parts should not exceed the number of independent claims. We consider it to be wrong when a comma or a hyphen turns into some money equivalent, and the amount of fees is defined not by the regulations but by an expertís subjective opinion. In this regard we submitted a request to FIPS asking to clarify the way of calculation of this additional fee and also proposing to define the number of parts of an application by the number of independent claims for which international search was not conducted and the number of independent claims for which international search was conducted but which are referred to by dependent claims for which search was not conducted.

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