By Sergey Medvedev, Vladimir Biriulin, Viacheslav Rybchak, Alexey Kratiuk – Partners at Gorodissky & Partners
Eurasian invention patents
Regional patent systems came into life and became popular many years ago. After the collapse of the USSR back in 1991 and the emergence of new independent countries there was an understanding of the need for a common patent territory. In 1993, several former USSR countries signed an Agreement on Protection of Intellectual Property and Creation of an Interstate Council for Protection of Intellectual Property (Agreement). This Agreement paved the way for setting up a Eurasian Patent Organization. The Eurasian Patent Convention was signed in September 1994 by several now independent countries. After several formal meetings and events the Eurasian Patent Office was set up and received the first Eurasian patent application on January 1, 1996. Now, members of the Eurasian Patent Convention are eight (8) countries: Armenia, Azerbaijan, Belorussia, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. They all protect the key intellectual property (IP) asset in Eurasia – Eurasian invention patent.
From its inception, the Eurasian patent is a unitary regional patent and is valid in all member countries immediately after grant. There is no need to transfer it into a national stage. There is only one language for patent application and Eurasian patent – Russian. So, there is no need to validate it or translate the texts into national languages. This is at striking variance with the European patent requiring translation into national languages after grant.
What are other benefits of obtaining the Eurasian invention patent?
- An invention in respect of which a Eurasian application has been filed enjoys provisional protection within the scope of published claims during the period between the date of publication of the application and the date of publication of the Eurasian patent
- Eurasian patent application may be converted into a national application if the Eurasian Patent Office refuses to grant a patent or allows an appeal. In this case, the applicant may file a request with the Eurasian Patent Office designating those Contracting States in which he wishes to obtain national patents according to the national procedure. The Eurasian application in respect of which such a decision has been taken will be treated in any Contracting State as a regular national application filed with the national Office and having the filing date and the priority date, if any, of the Eurasian application
- When the patent owner needs to grant a license he may do that in respect of any territory of participating countries
- In case of infringement of a Eurasian patent the patent owner shall initiate court proceedings in that particular country where infringement took place. Only in that case national authorities may require translation of documents into national language
- Patent examination fees and maintenance fees shall be paid to the Eurasian patent office. No national fees are required
- Unlike the Russian patent system, where the 6 months novelty grace period is calculated back from the date of filing the application in the Russian patent office, the Eurasian 6 months novelty grace period is calculated from the priority date. This means that the said grace period may be 18 months instead of 6 months.
Other details of the Eurasian patent are the same or similar that characterize a patent in any country.
Eurasian design patents
A design is one of the most effective IP tools that can play a significant role in creating and protecting the company’s brand and positively influence commercial success of its products. One of possible routes for obtaining design registration and protection in Eurasia is provided by the Eurasian design protection system, which includes Russia, Belarus, Tajikistan, Armenia, Azerbaijan, Kyrgyzstan and Kazakhstan. Eurasian design, when granted, will be protected in all these seven (7) countries, without the necessity to validate it by respective national Patent Offices. Eurasian design protection system is an advantageous instrument for applicants who wish to obtain design rights in Eurasia. More specifically, it provides the following main benefits:
- Public disclosure of a design will not affect patentability in case Eurasian design application is filed within 12 months from the date of disclosure
- A single Eurasian design application may cover up to 100 designs provided they all belong to one and the same class of Locarno International Classification (‘unity of class’ requirement)
- Partial designs are allowed (the elements of a design for which protection is not claimed should be shown with dotted lines or color marking)
- The substantive examination is rather limited; in particular, novelty and originality of the claimed design is checked by the examination only in case an opposition is submitted by a third party and only within the frame of opposition materials (exception for designs which are already well-known from the publicly available information and / or which are obviously not a result of a creative activity)
- Eurasian design application can be transformed into national design applications in respective Member States of the Protocol in case of refusal of grant of Eurasian design patent
- the term of validity of the Eurasian design patent constitutes five (5) years counting from the application filing date and can be extended for a further period of five (5) years (the maximum term of validity is 25 years), the extension is made in respect of all Member States where the patent is valid
- Eurasian design is subject to a temporary legal protection within the period starting from the publication of the design application till publication of the granted Eurasian design patent
- Assignment of the Eurasian design patent shall be permitted only for the territories of all Member States where the patent is valid, while license in respect of the same may be granted with respect to any Member State where the patent is valid.
The Eurasian Design protection system is developing constantly. Starting from December 01, 2021, the priority documents are accepted by the Eurasian Patent Office through the WIPO DAS. Furthermore, starting from November 01, 2022, the Eurasian Patent Office accepts submission of 3D models for designs as an illustrative material, which is however not used for the purpose to determine the scope of protection of the design.
Eurasian trademarks
Recently a brand new regional trademark protection system has been introduced ‘on paper’ and this (new) system is based on the Eurasian trademark which represents itself a regional trademark being effective on the whole territory of the Eurasian Economic Union which currently covers Russia, Belarus, Kazakhstan, Kirgizstan and Armenia – five (5) countries. Eurasian trademark system has not yet started its operation in practice, and for the time being it is not possible to file Eurasian trademark applications. However, this tool should be kept in mind for future cases when businesses develop brand protection strategies aimed at seeking brand protection in Eurasia.
