EURASIAN PATENT CONVENTION:

 

Introduction: Subsequent to the disintegration of the USSR in 1991, there arose a huge legal problem relating to the protection of industrial property rights. GOSPATENT, the main authority overseeing matters relating to industrial property was also abolished thereby creating a vacuum regarding industrial property rights. Hence, applicants, rights holders and related stake holders in issues and matters relating to industrial property were left in a lurch.

 

It was this state of uncertainty that led the former USSR states to rigorous discussions to initiate the establishment of an interstate body along with a common and uniform law pertaining to industrial property rights.

 

The Eurasian Patent Convention thus arose from this sense of urgency and rigorous discussions with the monitoring of WIPO and the consensus of participating independent states. The Eurasian Patent Convention came into force on 12th August 1995 with the following main objective:

 

Article 1 : “the setting-up of the Interstate Council on the Protection of Industrial Property for coordinating the joint activities on creating an interstate system for the protection of industrial property, harmonizing the national laws in the field of industrial property protection, and preparing an open Convention for the Protection of Industrial Property”.

 

The Eurasian Patent Organisation was shaped on the following lines:

1. The Eurasian Patent Organization is composed of the Administrative Council and the Eurasian Patent Office;

2. The location of the headquarters of the Interstate Organization is Moscow; the official language is Russian;

3. The Eurasian Patent Office is to be self financed and that its expenses should be derived from the fees and other derived income;

4. The Eurasian Patent Office grants the Eurasian patent for inventions which are: new, involve an inventive step and are industrially applicable;

5. Eurasian patents have a term of 20 years from the date of filing of the application ;

6. National laws of contracting states provide protection to Eurasian patents at par with their national patents.

7. As from the date of its publication the Eurasian patent is valid in all the States party to the Convention.

8. Membership in the Convention is open for any State-member of the United Nations, which is also bound by the Paris Convention for the Protection of Industrial Property and by the Patent Cooperation Treaty.

9. Provision for a simple and inexpensive procedure for obtaining patents with validity in all the conventions’ states party to the convention by way of one Eurasian application on one language that is Russian, one examination and a grant of a common Eurasian patent.

10. Harmonised and uniform protection of the patentees rights within a unitary patent area on the basis of the convention and other related regulations.

 

International Conventions ratified by the Eurasian Patent Convention are: The Paris Convention, Patent Cooperation Treaty, Patent Law Treaty, Budapest Treaty on the deposit of Microorganisms and Strasbourg Agreement on International Patent Classification.

 

Prosecution and Registration of Patents with the Eurasian Patent Organisation :

– Applicants can file directly with the Eurasian patent office or with the National Offices.

– User friendly with regards to time-limits for the grant of patents.

– Applicants may convert Eurasian patent applications to National patent applications through a request with the Eurasian patent office within 6 months in the instance where the Eurasian patent grant has been refused

– Priority date can be retained by the applicants while converting Eurasian patent applications to National patent applications.

– Provisional protection to the Eurasian patent application is provided between the publication and grant of the patent. This protection is applicable to published claims and covers all parties to the Convention.

– Ownership / Title to a Eurasian patent belongs to the inventor or his successor in title.

– Where the inventor is an employee, the ownership in the patent is defined in accordance with the legislation of his main country of employment. Where there is no main country of employment the applicable legislation is that of the country in which the employer pursues the business activity involving the employees.

– Term of the Eurasian patent is for 20 yrs. Regulations regarding usage of Inventions:

– Relationships between several Eurasian patent owners relating to the use of their inventions are governed by the national legislation of the states party to the convention.

– Relationships between the owners of inter related patents are governed by the national legislation of the relevant states party to the convention.

– Disputes concerning infringements of Eurasian patents in a state party to the convention are resolved by that particular country’s courts or other competent authorities on the basis of the patent regulations stipulated in the convention.

 

Applicants wishing to obtain Eurasian patents:

• A Eurasian patent application may be filed by any legal person irrespective of their citizenship, residence or principal place of business.
• A Eurasian patent application may also be filed by a group of persons jointly by a legal person along with a physical person.
• Applicants or Patentees having neither their residence nor their principal place of business in a state party to the convention must be represented by a Eurasian patent agent.
• All representations on behalf of applicants before the Eurasian patent office must be accompanied with power of attorney at the time of filing of the application or within 2 months from the date of filing of application.
•  Failure of non – filing of power of attorney leads to nullification of proceedings before the Eurasian patent office. Hence applicants must arrange for the power of attorney well in time.

 

Our Attorneys are at hand to assist you with representations before the Eurasian patent office. Processing of Eurasian Applications: There are 2 stages in processing the Eurasian patent applications : The 1st stage comprises of:

• Determination of the filing date
• The Formal examination
• The search
•  Publication of the application

 

The 2nd stage comprises of:

• Substantive examination regarding patentability of the invention
• Invitation by the examiner to the applicant asking the applicant to take part in the processing of the application at any stage of the process till the grant of the patent.

Note: as regards patentability of inventions for a Eurasian patent right, kindly refer our country guides on obtaining Eurasian patent.

 

The 1st stage of the Eurasian patent prosecution:

A patent application filed at the Eurasian patent office must contain :

• Description of the invention
• Claims
• Drawings
• Abstract
• Power of Attorney in case representation required by a patent agent
• Inventions relating to nucleotides and / or amino acid a sequence listing must be attached to the application.
• Applications filed directly with the Eurasian office must be in triplicate, filed with the national offices must be in quadruplicate.
• Language of the applications must be in Russian, else, translations must be provided by the applicants. Translations into Russian may be submitted by the applicants within 2 months of the date of filing of the Eurasian patent application failing which, the translations may be submitted in the course of the following 2 months upon payment of additional fee.
• The request form for grant of patent must be filled out in its totality and signed by the applicant or his representative. Where the request is signed in the name of legal person the signature must be accompanied by the indication of the signor’s post.
• Priority may be claimed with the previous application as per the Paris Convention Agreement within 12 months of the first date of filing. However, the applicant must furnish certified priority documentation in their totality adequately translated into Russian.
• The Eurasian patent application must sufficiently and succinctly disclose the invention in a manner sufficient for it to be carried out by a person skilled in the art.
• Drawings / graphics as relevant must be included in the application if the applicant deems them necessary.
• Prior to the examiner’s decision regarding either grant or refusal of the Eurasian patent application, the applicant is accorded one opportunity of amending claims if deemed so, however, care should be taken to ensure that such amendments do not go beyond the scope of the disclosure of the patent application by way of claims.
• Unitary nature of the Eurasian patent application must be maintained at all times by the applicant which means that the Eurasian patent application must relate to a single invention only or to a group of inventions so linked as to form a single inventive concept.
• Eurasian patent applications pertaining to Biological Inventions have to be deposited per the Budapest Treaty with the depository institution.
• Claims form the most important crux of the invention as they capture the essence of the invention, if they include all the essential features necessary to produce the technical effects as claimed for the invention.
• Description and Drawings play a supporting role to Claims in interpreting claims. Along with the description and drawings an Abstract constitutes another important aspect of the patent application encapsulating a brief description of the technical field to which the invention belongs.
• Upon receipt of the Eurasian patent application at the Eurasian patent office, the 1st stage of patent prosecution that is, formal examination pertaining to the form and documentation of the application is commenced along with search for prior art.
• Any deficiencies, discrepancies and lacunae found during this stage, the applicants are notified of the same and are informed to rectify the same, within the stipulated time period failing which, the application is deemed to be withdrawn.
• Once all the formality compliances are in place, the Eurasian patent office publishes the patent application within 18 months from the date of filing.
• Post formality examination the application proceeds to the 2nd stage. The 2nd stage of the Eurasian patent prosecution:

The 2nd stage of the Eurasian patent prosecution begins with substantive examination by way of a request from the applicant requesting the patent office to conduct the substantive examination.

• This request must be filed within 6 months from the date of publication of the Eurasian patent application.
• Upon receipt of the request for substantive examination, the patent office conducts the examination pertaining to :

 

Novelty, Inventive Step and Industrial Application of the invention.

Once the patentability of the application is established patent is granted.

• Applicants disagreeing with the Eurasian office’s refusal of patent grant, may appeal against such refusal within 3 months from the date of the notification of the refusal. Publication and Grant of the Eurasian Patent:

 

– Patents granted by the Eurasian patent office are numbered and registered in the Eurasian patent register.

– Eurasian patent office then publishes the Eurasian patent within 6 months from the date of registration of the patent in the Eurasian patent office Gazette.

 

– A Certificate of Patent Grant is issued to the applicant. Our Attorneys are at hand to assist Applicants with the drafting of claims and abstract along with other requirements for the Eurasian patent application.

 

The Regional Phase Entry of the PCT application international application:

• For the PCT application to enter the regional Eurasian phase via the Eurasian patent office is 31 months from the date of priority.
• Applicants proceeding to file the international PCT application to the Eurasian regional phase have an opportunity to clarify or amend the claims, description and drawings.
• These clarifications or amendments must be filed separately from the main application documentation in Russian.

• These amendments must be presented within 2 months else, additional fee is incurred. • Once the PCT international application enters the Regional Phase the above patent prosecution comprising of the 1st & 2nd stages apply accordingly.