The Eurasian Patent System is an interstate system for the protection of Intellectual Property, and at the present time, includes 8 countries of the former Soviet Union – namely Russia, Belarus, Armenia, Azerbaijan, Kyrgyzstan, Kazakhstan, Tajikistan, Turkmenistan.
The Eurasian Patent Organization (EAPO) is a regional organization set up by the Eurasian Patent Convention (EAPC) which covers the large regional Eurasian market with the following member states: Russia, Belarus, Armenia, Azerbaijan, Kyrgyzstan, Kazakhstan, Tajikistan, Turkmenistan. The Eurasian Patent Convention (EAPC) was signed on September 9, 1994 in Moscow, Russia and entered into force on 12 August 1995. The criteria of patentability for the Eurasian legislation correspond to PCT regulations, European Patent Convention (EPC), and the legislation of developed countries.
We provide the full spectrum of all services related to Eurasian patents, including:
- preparational works before the filing of Eurasian patent application;
- translation works into the Russian language;
- filing/prosecuting the Eurasian patent application to/in EAPO;
- flexible adjusting (restoring and prolonging) the terms;
- initiating formal and substantive examination procedures;
- preparing answers to official actions;
- granting the Eurasian patent application;
- maintaining the granted Eurasian patents paying annuities to EAPO;
- preparation and registration of invention license, assignment agreements;
- representation of client’s interests in disputes regarding patent legal protection.
The main attractive point of Eurasian patents:
If you need patent protection in at least two countries of the aforementioned contacting states, then it is worth choosing the Eurasian patent approach: in many cases it will be cheaper, faster and the most flexible.
We provide the full spectrum of all services related to Eurasian patents, starting from the preparatory work before the filing of the patent application and ending with the payment of annuities for the granted Eurasian patent in all contracting states (Russia, Belarus, Armenia, Azerbaijan, Kyrgyzstan, Kazakhstan, Tajikistan, Turkmenistan).
Preparational works before the filing of Eurasian patent application
Being a Eurasian patent attorneys, our law firm can assist you in qualified preparation of the Eurasian patent applications. Prior to filing the patent application for an invention, it is important to keep in mind and control the deadline for extenting the national invention to EURASIA. A Eurasian patent may be applied for on the basis of a direct Eurasian application (under the EAPC) (after the priority national application or without priority national application) or on the basis of an international patent application (Eurasian-PCT phase). If the priority national application is filed, the Eurasian Patent application must be filed within 12 months from the priority national application date. If a PCT (International patent application) is filed before a Eurasian patent application, then the Eurasian Patent application must be filed within 31 months from the international filing date or from the earliest priority date, where the priority has been claimed.
Our team of professionals controls the terms and ensure that all deadlines and requirements are met.
For filing Eurasian patent application we ask our clients to send us the following information:
- The full text of the description, drawings (in Russian, English, German or French languages);
- Name and address of Applicant(s);
- Name and address of Inventor(s);
- Data of earlier filed applications (applications No, priority date, filing country).
Translation works into the Russian language
A request for the grant of a Eurasian patent must be filed in Russian. Other documents for the Eurasian application may be filed in Russian or in another language. However, documents submitted in another language must be accompanied by a translation into Russian. We can provide high-quality translations into Russian from English, French, German and on the contrary as we have experienced inhouse-translation team and assorted extern translators.
Filing/prosecuting the Eurasian patent application to/in EAPO
To obtain a Eurasian patent with validity in in all member states (Turkmenistan, Republic of Belarus, Republic of Tajikistan, Russian Federation, Republic of Kazakhstan, Republic of Azerbaijan, Kyrgyz Republic, Republic of Armenia) of Convention only one Eurasian application should be filed.
Where to file:
Eurasian patent applications must be filed to the EAPO.
Where an application is filed with the Eurasian Office, the required materials may be submitted either directly to the Office, or mailed or faxed. When the documents are sent by fax, the originals must be submitted within 1 month of the date of receipt of the faxed application.
Eurasian patent applications must contain:
- Request for the grant of the Eurasian patent;
- Description of the invention;
- Drawings referred and any other materials essential to the understanding of the invention;
- Proof of payment of a unitary administrative fee (with the copy);
- A power of attorney (with the copy).
Flexible adjusting (restoring and prolonging) the terms
Eurasian Patent Organization (EAPO) gives a friendly set of flexibilities during the pending period of Eurasian patent application (easier deadlines restoration terms, possibilities to prolong some terms and deadlines, a flexible procedures accelerating mechanisms). The restoration of rights to a Eurasian application or Eurasian patent is subject to payment of additional fees.
A request for the restoration of rights to a Eurasian application can be made within at least 12 months of the expiration of the time limit specified for the procedural action in question, or at least two months after the removal of the cause of the delay at the discretion of the applicant depending on which of the two terms expires later. What is more, the procedural action must have had been performed by the date of the filing of the request.
A request for the restoration of rights to a Eurasian patent, which has lapsed due to non-payment or late payment of maintenance fee, may be made by the patentee before the expiration of three years from the date corresponding to the filing date of the Eurasian application, when such maintenance fee was due to be paid.
The following rights cannot be restored:
- priority right which is lost as a result of failure to observe the time limits for filing a subsequent Eurasian application requesting the priority of the date of filing of the former application, furnishing of additional materials or the start of the public showing of an asset containing the invention at an official or officially recognized international exhibition; and priority right lost as a result of failure to furnish a notarized copy of the former application within a specified period of time;
- right to a Eurasian patent lost as a result of failure to observe the time limit for the payment by the patent owner of an additional annual fee for the grant of an additional six-month grace period for such payment;
- right of appeal against the grant of a Eurasian patent under an administrative patent revocation procedure, lost as a result of failure to observe the time limit for lodging such an appeal.
Average term for consideration of application in Eurasian patent office is from the date of its filing to patent reception and usually prolongs for 12-18 months. In payment of additional tariffs it is possible to accelerate procedure for consideration of the Eurasian application.
Our law firm may assist the applicant in restoration terms, prolongation terms and dedalines, also in accelerating procedures.
Initiating formal and substantive examination procedures
The formal examination is carried out within 2 months from the date of receipt of an application. The following information will be checked in the process of the formal examination:
- correct presentation of the application documents;
- compliance with the requirements regarding filing and taking action before the EAPO by applicants who have no residence or principal place of business in a contracting state;
- unity of the invention;
- lawful and proper claims to priority;
If necessary, we help the applicant to correct the deficiencies of the application within the time limit specified by the EAPO and/or submit the missing documents. If the submitted application materials satisfy the requirements, the applicant will be notified of the positive outcome of the formal examination.
The aim of the substantive examination is to establish the patentability of the invention covered by the application. The request for substantive examination must be filed with the EAPO within a period of 6 months from the date of publication of the Eurasian application, or, if the search report was published separately, from the date of its publication. If no request has been received within the set time limit, or if the substantive examination fee has not been paid, the application will be deemed to have been withdrawn. The substantive examination is conducted provided that the results of the formal examination are positive. If substantive examination has revealed that the invention does not meet at least one of the requirements of patentability, the application will be refused.
Preparing answers to official actions
During examination procedure, at the examiner’s invitation, the applicant may participate in a discussion with an expert. During the examination procedure, up to the completion of the technical preparations for the publication of the Eurasian patent, the applicant has a right to add to, specify or correct elements of the Eurasian application.
The applicant has the right to study the documents cited by the examiner against his application.
Our experts may assist you in studying Official Actions issued by the experts, preparing and filing the answers to the Official Actions.
Granting the Eurasian patent application
Eurasian patents granted by the Eurasian Office are registered in the Eurasian Patent Register with numbers assigned to them. The publication of a Eurasian patent takes place within 6 months of the date of its registration.
The date of the patent grant is considered to be the same as the date of the publication of the patent grant data. Eurasian patents are granted by the Eurasian Office on payment of the grant and publication fees. A single Letters Patent is issued regardless of the number of joint patentees. Upon publication, a single copy of the patent is handed over to the applicant.
The granted Eurasian Patent is valid in all contracting states from the date of its publication. No national validation in the contracting states has to be filed. The applicant can limit the territory of legal protection for the invention by not paying the annuities in these countries.
Maintaining the granted Eurasian patents paying annuities to EAPO
After the grant, the applicant must designate, by name, each contracting state in which he wishes to maintain the patent. The maintenance of a Eurasian patent is subject to the payment of annual fees. Such fees must be paid to the EAPO annually in respect of each of the contracting states in which the applicant wants to maintain protection. The amount of the fee is the sum total of annual maintenance fees in all the contracting states. If the applicant does not pay a due annuity for a certain country, the patent becomes invalid on the territory of this country.
Annuities are not to be paid before a Eurasian patent is granted, and they are paid not in each designated countries, but only to the Eurasian Patent Office, which carries out in transfer of the corresponding paid sums to each of the member states in which the Eurasian patent is valid. Member States have established various terms, initiating with the annual duties on maintenance of the Eurasian patent in force.
Our profesionals help to monitor and to pay annuities of selected countries, which are paid according to the requirements applicable in each country. We continue to renew and pay the annuities until the client notify us otherwise.
Preparation and registration of invention license, assignment agreements
After the patent application successfully passes all the relevant stages, the applicant is granted the patent, which entitles the inventor to all of the aforementioned exclusive rights to the invention. It is namely the patent that offers the opportunity to successfully start a business and compete on the international market, to develop production and attract capital through third-party licensing.
The licensing activity paves the way for revenue increase which subsequently allows further building the capital and contributing to the development of the innovative state industry sector.
We may assist you in preparing, registering, analysing and consulting on issues pertaining to licensing, assignment agreements.
Representation of client’s interests in disputes regarding patent legal protection
A notice of opposition may be filed to the EAPO by any person (except by the proprietor of the patent) within 6 months from the publication of the mention of grant in the Official Bulletin .
The notice of opposition may state the following as grounds for revocation of a Eurasian patent:
- The invention does not meet patentability requirements;
- The claims include features that did not appear in the Eurasian Application as originally filed.
Each of the above conditions is separate grounds for revocation of a Eurasian patent.
Our law firm may assist the client in lodging an appeal against the decision of opposition to the president of the EAPO and representing client’s interests during the procedures.
In the event of a opposition brought against our client’s Eurasian patent, our law firm may assist the client in lodging an appeal against the decision of opposition to the president of the EAPO and representing client’s interests during the proceedings.
At any stage in the processing of a Eurasian application, the applicant may appeal to the president of the EAPO against the actions of the examining Board. The applicant has a right to participate in the hearings. The resolution approved by the President of the EAPO, on an appeal against the decision of the Eurasian Office concerning a Eurasian application, is final.
Our profesionals may help the client in participating in the proceedings on his appeal; in addressing the President of the Eurasian Office with a grounded complaint against the actions of the board during the proceedings on the appeal, or against the board’s decision; in withdrawing the appeal prior to the board’s decision on it.