1. General Information
The first attempts to set up the Eurasian patent system date back to the early 1990s when the Soviet Union was on the brink of collapse. On 9 September 1994, the Eurasian Patent Convention was officially signed. The Convention is a special agreement within the meaning of Article 19 of the Paris Convention and Article 45(1) of the PCT on regional patents. It establishes the Eurasian Patent Office (EAPO). EAPO is headed by the President. The official language of EAPO is Russian.
2. What is an Eurasian Patent?
A Eurasian (EA) patent has legal effect in the territory of Russia, Turkmenistan, Belarus, Tajikistan, Kazakhstan, Azerbaijan, Kyrgyzstan and Armenia (“Contracting States”).
The term is 20 years from the date of filing the application. An EA patent can be further extended in the Contracting State, the legislation of which provides for extension of national patents. An EA patent is extended in accordance with the requirements and procedure envisaged by the legislation of this State for extension of a national patent. For example, the term of an EA patent relating to a pharmaceutical, pesticide or agrochemical can be extended in Russia for not more than five years depending on when the first official permission to use this product was granted.
EA patents cannot be granted for:
- scientific theories and mathematical methods;
- presentation of information;
- methods of economic organisation and management;
- symbols, schedules and rules, including rules of games;
- methods for performing mental acts;
- algorithms and computer programs;
- 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;
- plant varieties and animal breeds;
- topologies of integrated circuits; and
- inventions, 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.
Unity of invention
This requirement is similar to that in the PCT. There must be a single inventive concept that is a technical relation between the inventions demonstrated through one or more special technical features.
In practice though, there may be difficulty in interpreting the term “special technical features”. Examiners tend to imply by this features of the invention literally as they are mentioned in the claims. Yet, if there are no such “similarly worded” features in claims, it does not necessarily mean that there is not a single inventive concept.
To maintain infringement, each feature of the independent claim or, if allowed by the national legislation, the feature equivalent thereto must be used. The doctrine of equivalents can, therefore, be applied to an EA patent in a particular Contracting State insofar as it can be applied to national patents of this State. Yet there is no legal definition of the term “equivalent feature”. In Russia, for example, there are only some general recommendations, and the question of whether the feature is equivalent or not is typically up to the expert preparing an infringement opinion for the court.
There is an issue with the subject matter “use” in the EA legislation. “The use” is mentioned among other subject matters that can be protected. Examiners also often suggest changing the preamble of an independent claim to “the use” when they think it better reflects the essence of the invention. Yet, for some reason, what to consider infringement of an EA patent is specified only for “the product” and “the process”. Can “the use” be related to either of these? There has been a lot of controversy about this question in Russia, and now there is a special norm defining infringement of a “use” patent separately from “the product” and “the process”. As for Eurasian patents, courts seem to have no other choice but to relate “the use” to either “the product” or “the process” depending on the situation. There have been no legal cases yet that would shed light on this issue, and the problem remains.
Like in many countries, the Eurasian legislation also provides for indirect protection of the product obtained by the patented process, the right of the prior user (before the priority date) and the right of the subsequent user (from the date on which the right to the application or patent lapsed to the date of publication of the information on the restoration).
There are acts which are not considered infringement; specifically:
- use in the construction or operation of means of transportation of a member State of the Paris Union for the Protection of Industrial Property that is not a Contracting State, when such means of transportation temporarily or accidentally enters the territory of the Contracting State, provided that the invention is used exclusively for the needs of said means of transportation;
- use for scientific research and experimental purposes;
- use for the occasional preparation, in a pharmacy, of a medicine on a medical prescription;
- use for private non-profit-making purposes; and
- use of a product after this product has been marketed by the patent owner himself or with his consent in a Contracting State where the Eurasian patent is valid and in which the product in question was marketed.
- Provisional legal protection of the invention starts from the date of publication of the application in Russian.
3. How to Obtain a Eurasian Patent
Applicants from the countries other than Contracting States must be represented by an EA patent attorney.
Typically, EAPO does not require for the EA patent attorney to submit the Power of Attorney. However, there are certain cases when it is mandatory; for example, if the applicant wishes to withdraw the application or assign the rights. Importantly, the Power of Attorney is also required when a new representative is appointed.
An EA application must contain a request, a description, claims, drawings or other materials if they are necessary for understanding the essence of the invention. A filing fee must also be paid.
During formal examination, the application is checked for compliance with formal requirements. The priority of the application is checked as well.
A search report is sent to the applicant as soon as it is ready, separate from substantive examination.
The application is published within 18 months from the filing date or, if it is a PCT application, from the date of entering it into the regional phase. If the PCT application has been published in Russian at the international phase, this publication replaces the “Eurasian” one. The publication date is important because as soon as the application is published, provisional legal protection of the invention begins.
The application is normally published together with the search report. If the search report is not ready by the time of publication, it is published separately as soon as ready.
The application is not published if it is withdrawn no later than in 16 months from the filing date.
A request for substantive examination for non-PCT applications must be filed within six months from the publication of the search report. Thus, the applicant has time to analyse the search results and decide if they should request substantive examination. However, the SE request for PCT applications must be filed alongside with entering the application into the regional phase.
The requirements for claims are mostly standard. Claims must be clear and supported by the description. A claim must contain a combination of features necessary to achieve the technical result (“essential features of the invention”).
Unlike, for example, in Russia, “multiple dependency” (Rule 6.4 of the Regulations under the PCT) is allowed, which is certainly an advantage as there is no need to amend the claims.
During substantive examination the invention is examined, in particular, for its compliance with requirements for claims, patentability conditions and the unity requirement.
It is possible to amend the description and claims without modifying the essence of the invention until a decision to grant a patent or a decision on refusal is issued. New features are considered as modifying the essence of the invention if they were not present in the original application materials on the filing date.
The problem with introducing amendments is that recently examiners have not been distinguishing between amendments made on the applicant’s initiative and those made on the examiner’s initiative. Consequently, the examiner is supposed to request payment of the fee for amendments even if these amendments were only made to obviate the examiner’s objections. However, it is obvious that introduction of such amendments must be viewed as part of substantive examination, a fee for which has already been paid. Also, examiners practically always suggest amending claims, and the fees for amendments may be tangible. The EA legislation appears to need some improvement in this respect.
Grant of patent
An EA patent is granted after paying a grant fee within four months from the receipt of notification on readiness to grant the patent.
Refusal to grant patent
A refusal may be issued if:
- The invention does not correspond to patentability conditions.
- The applicant refuses to amend claims as required.
- The claims do not correspond to the other application materials.
- The application materials do not disclose the invention clearly and fully enough to be realised by a skilled person.
An appeal from the refusal can be filed within three months from the date of receipt of the notification on refusal. The appeal is considered within four months by the Board of examiners, at least two of whom have not been in charge of the refusal. The decision of the Board can be further opposed by filing an appeal to the President of EAPO within four months from sending the decision to the applicant. The President’s decision is final.
Conversion of application
An EA application can be converted into a national one, which is a useful option. For example, if an EA application was rejected because the invention did not involve an inventive step, it might make sense to convert it into a Russian application, as, unlike EA legislation, the Russian legislation provides for protection of utility models, which do not have to involve an inventive step.
4. How to Invalidate a Eurasian Patent
To invalidate an EA patent fully or partially in the territory of all Contracting States at once (“administrative invalidation”), an opposition must be filed with EAPO within six months from the publication of the patent. Invalidation is possible if:
- the invention does not comply with patentability conditions;
- there are features in claims that were not in the original application materials; and
- the application materials do not disclose the invention clearly and fully enough to be realised by the skilled person.
- A decision taken during administrative invalidation can be opposed by filing an appeal to the President within four months from the date of sending the decision.
Invalidation in a Contracting State
A Eurasian patent can be invalidated fully or partially in the territory of each Contracting State during the whole term of the patent. Invalidation is possible if:
- the invention does not comply with patentability conditions;
- there are features in claims that were not in the original application materials;
- the application materials do not disclose the invention clearly and fully enough to be realised by a skilled person; and
- there is incorrect indication of the applicant or the inventor.
Thus, the conditions for invalidation are the same as for administrative invalidation with one additional ground. The procedure of invalidation is brought about in accordance with procedural norms of the Contracting State.
5. Choosing a Eurasian or Russian Patent
If the applicant is interested in obtaining protection in all Contracting States at once, one EA patent will be certainly
preferable over several national applications. However, if the applicant is mainly interested in Russia (with only peripheral interest in some of the other countries), then the question may arise of which application is better to file: Russian or Eurasian.
In terms of the protection that Russian and Eurasian patents provide, there are some differences; however, basic principles may be said to be similar.
The fees (and ongoing annuities) for obtaining a Eurasian patent are higher than for a Russian patent, as would be expected, given the protection in eight jurisdictions.
Examination by the Eurasian Patent Office and enforcement procedures in a number of the Contracting States generally appear to be poorer than in Russia. Accordingly, the incremental protection in a number of the States may be limited in practical terms.
These are probably three main things to take account of when deciding between Russian and Eurasian patents. In some cases, it may be worth expending the additional fees to follow the Eurasian patent route; in others it is unjustified. The choice remains the applicant’s.
This is an extract from the International Comparative Legal Guide for Patents 2018.