Strategies of IP Protection in RU & Eurasia:

LES Asia Conference

HangzhouOctober 17, 2013

Gorodissky & Partners Sergey Dorofeev

Ways of IP Protection in Russia

Filing Russian Patent Application? Filing Russian Utility Model Application?

Filing Eurasian Patent Application?

Filing Russian Patent (Utility Model) Application(s)and

Eurasian Patent Application?

EA

RU

EA RU&

8 Member States

. . . . . .

Eurasian Patent System

Eurasian Patent OfficePatent

«Validation»Application for Eurasian Patent

Search, Examination

Same Force of RU and EA patent

Article 13 of the Eurasian Patent Convention provides that:

“2. Each Contracting State shall provide for infringement of Eurasian patent same responsibility as for infringement of national patent.”

Claims: Scope Determining Approach

RU Article 1354, Clause 2

of Civil Code Protection is granted

in the scope determined by claims

Specification and drawings may be used for construing claims

EA Article 10 of

Convention

Scope of protection shall be determined by claims

Specification and drawings shall serve only to interpret claims

Considered When Selecting Geographic Coverage

Scope of Protection Available

Duration of Patent Rights

Patent Obtaining Cost & Time Legislative and Procedural Advantages

EA RU

=

The filing date shall be assigned to a patent application containing:1) cover page with information on

inventors, assignee(s) etc.2) specification of invention- claims3) necessary drawings and other

materials- abstract

Minimal Filing Requirements

Can be submitted later

EA RU

Language of Filing

Cover page

Specification

ClaimsDrawingsAbstract

EA RURussian (mandatory)

Any language !

Translation into Russian

National English

Lost in Translation?

RussianMistakes in translation

National English Russian

EARU

Scheme 1

Scheme 2

RU

EA

Filing

Filing

Translation

Preferable Policy

1) First application should be filed in the national language, if possible

2) English, French, German language version(s) should be used only as an intermediate material for translation

EA RU

General Scheme

Formal Examinatio

n

SearchSubstantive Examination

RU

EARequest for Conducting Substantive Examination

Request for Conducting Substantive Examination

Protectable Subject-Matters

Russian Civil Code

Article 1350. «As invention is protected a technical solution in any field, related to a product (…) or method (…).»

Article 1351. «As utility model is protected a technical solution, related to an apparatus».

EAEAPO Patent RulesPar.1.1: «Subject-matters of inventions can be subjects or

processes created or transformed by a human…»

RU

Excluded from Protection

Discoveries, scientific theories and mathematical methods Aesthetic creations relating to external appearance of

articles Rules and methods of games, intellectual or business

activities Computer programs and algorithms Presentation of information Animal breeds and plant varieties Topographies of integrated circuits Projects and schemes of constructions, buildings and area

layouts Solutions contrary to public interests, humanistic principles

and morality Application for above matter shall be rejected if it relates to such matter only

Eurasian Convention

Multiple dependent claim can not depend on multiple dependent claim.

If not, multiple dependent claim is permitted and is not a subject to additional fees

RU

Mostly Frequent Claim Objection

Claim 1. Apparatus for …Claim 2. Apparatus of claim 1, wherein …Claim 3. Apparatus of any of claim 1-2, wherein …Claim 4. Apparatus of any of claim 1-3, wherein …Claim 5. Apparatus of any of claim 1-4, wherein …Claim 1. Apparatus for …Claim 2. Apparatus of claim 1, wherein …Claim 3. Apparatus of any of claim 1-2, wherein …Claim 4. Apparatus of claim 1, wherein …Claim 5. Apparatus of any of claims 1-2, 4, wherein …

Set of claims with not allowed dependency

Set of claims with proper dependency

RU

Preferable PolicyRU

1) Multiple dependency may be avoided when filing applications with RU PTO

- It gives not much benefit

- Claims for US PTO are acceptable

2) Timely Responses to our recommendation letters will allow to avoid issuing formal examination OA

Legal Meaning of Dependent Claims

Infringement features of dependent claimmay be used for construing independent claim

Invalidation partial invalidation, restricting scope

Preferable policy: Keep only reasonable number ofCommercially valuable embodiments in dependent claims

RU +EA

RU

Invalidation Example RU

Claim 1. Apparatus for ………… Claim 3. Apparatus of any of claim 1,2, wherein

Claim 4. Apparatus of claim 1, wherein …

Claim 1. Apparatus for ……….Claim 3. Apparatus of any of claim 1,2, whereinClaim 4. Apparatus of any of claim 1-3, wherein …

Restricted Claim 1 Claim 1 + Claim 3 + Claim 4

Invalidation ExampleEurasian Patent in the Russian PTO

Claim 1. Cigarette filter for ………..Claim 3. Filter of any of claim 1,2, wherein … may be allowable Claim 4. Filter of any of claim 1-3, wherein … may be allowableClaim 5. Cigarette comprising cigarette filter of any of claims 1-4 allowable

Claim 1. Cigarette filter for…..…………….Claim 3. Cigarette filter……. allowableClaim 4. Cigarette filter….. .. allowableClaim 5. Cigarette comprising cigarette filter ….. features of claim claims 1+2+3+4 allowable

Preferable policy: For EA application please use US claims withseveral independent claims for the same subject-matter

Protectable Utility Model

More narrow scope of protectable subject matters comparing to invention:

“Article 1351. As utility model is protected a technical solution relating to an apparatus”.

“Article 1350. As invention is protected a technical solution relating to a product (in particular apparatus, substance, microorganism strain, plant or animal cell culture)…”.

The Civil Code considers “apparatus” to be narrower than “product”and other than “substance”:

RU

General Scheme

Formal

Examination

Search for

State of Art

Patentability

Examination

RUFor Utility Models

Patent

Grant

Under special request

Not conducted

t

Application Proceedings Timeline

t

EA RUHypothetic Application

Formal Examination – approx. 2 months

t

Application Proceedings Timeline

t

RUHypothetic Application

Utility Model decision on grant – approx. 4 months

Preferable Policy

Use Utility Model protection

- when fast obtaining of rights for apparatuses is necessary

- combining Utility Model applications with invention RU and EA applications

Remember – criteria of patentability are different for Invention and Utility Model

EA RU

UM perspectives: Substantive Examination;One Independent Claim; No Doctrine of Equivalents

Substantive ExaminationRU

Examination Request Applicant Any third party

3 years from (international) filing date

2 month extension term Abandonment 12 month reinstatement term

(excusive circumstances)

EA

Examination Request Applicant

6 months from Search Report publishing date

Usually SR is published simultaneously with application

ISR substitutes EA Search Report

Abandonment 12 month reinstatement term

(excusive circumstances)

Grace period

Substantial difference• Under the Russian Patent Law

grace period is calculated back from the RU application filing date

• Under Eurasian Patent Regulations grace period is calculated back from EA application filing or priority date

EARU Vs.

Substantive Examination

Action – Response manner No limiting number of Office Actions to be issued

Term for response to Office Action is 2 months from receiving this Office action and can be extended

Additional extensions available for up to 10 months Amendments are voluntary and may be filed any time before Decision

Term for response to Office Action is 4 months from issuing this Office action and can be extended

No limiting number of extension to be requested Amendments are voluntary and may be filed any time before Decision

RU

EA

Checking up Patentability RU + EA

Industrial Applicability

NoveltyInventive Level

Final Decision

Office Action Response

Decision of Grant Decision of Rejection

Checking up PatentabilityRU

Decision of Grant

Decision of Rejection Notification of

Patentability Check Results Reasons of possible

Rejection It is possible to further

amend claims

EA Decision of Grant

Notification of Readiness to Grant Patent

Claims Examiner is ready to allow

It is possible to further amend claims

Decision of Rejection Conclusion on Patentability

Reasons of possible Rejection It is possible to further amend

claims

t

Application Proceedings Timeline

t

EA

Examination Request

First Office Action to be issued (approximately)

RU

4-6 months

10-12 months

EA RU

Final RejectionRU

May be appealed within 6 months in the Chamber of Patent Disputes of the Russian PTO

Chamber Decision may be appealed with court

Divisional application may be filed before or simultaneously with appealing with CPD

EA

May be appealed within 3 months in the EAPO Decision of Board of

Examiners (at least 2 new Examiners) appointed by President may be appealed with President

Decision approved by President is final and binding

Divisional application may be filed before or simultaneously with appealing with President

Final Rejection RU

Decision of RejectionLack of Inventive level Deadline for Appeal

Utility Model Divisional Decision of Grant

FilingDate

Final Rejection in EAGoing Russian Way

Decisionof Rejection

Confirmation of Rejectionby President

6 months

EA FilingDate

3 + 1 yearsRU FilingDate

Laid- open Publication Patent Publication

Provisional Protection

File History:Application formSpecificationDrawingsClaimsAmendments

Patent Protection

File History:Application formSpecificationDrawingsClaimsAmendmentsAll Correspondence (Official Actions,responses etc.)

Laid-open Publication & File HistoryRU & EA

Formal examination completedApplication is pending

Only in RU

Third Party Observation

RU

Third party may file: 1. Examination request +

patentability bar references Applicant will be informed No obligation for Examiner to

inform third party on course and results of examination

2. Request for search + patentability bar references

Search report will be sent to third party after laid-open publication

Preferable policy: submit and monitor examination results

EA Examination request

may be filed only by Applicant

No third Party Observation

No way out: just monitor examination results

No stipulations in the legislation

After Grant Amendments RU + EA

Evident and technical errors Not stipulated

Scope changing amendments Reissue & Reexamination

Way out: Filing Appeal against your own Patent Strongly not recommended in RU Not possible in EA

t

Date of Patent GrantEarly termination date

Patent reinstatement datePatent Validity Term

Right of Post-Reinstatement Use

RUEA

Right of Post-reinstatement Use

Right of Post-Reinstatement Use

Right of Post-Reinstatement Use – is provided for those persons and entities which after early termination of a patent but before its reinstatement used invention protected by this patent, or made necessary arrangements for such use

Entity enjoying Right of Post-reinstatement use May use invention without remuneration to assignee Without enlarging scope of such use

Only on the territory of the Contracting State where such prior use took place and which law allows it EA

EA

RU

Patent validity terms

InventionsPatent is granted for 20 years but the term can be extended for maximum 5 years for medicals, pesticides, agrochemicals

Utility modelsPatent is granted for 10 years with possible extension for extra 3 years

RUEA

RU

TrendsRU

US & EP Examination Results are often used

> 50% First Official Action is Decision of Grant

Litigation matters increase in near future

EA

US & EP Examination Results are often used

Amicable & swift ? Indefinite feature

lack of Industrial Applicability

Sometimes “new matter” features are proposed by Examiners

Filings

Series1Основной

Основной

Основной

EA PORU PTOUS PTO/10

Thank you

Sergey DorofeevPatent AttorneyPartner

Gorodissky & PartnersBolshaya Spasskaya str., 25, stroenie 3Moscow 129090 Russia

phone: +7(495) 937 1156fax: +7(495) 937 6104/6123e-mail: dorofeevS@gorodissky.ruhttp://www.gorodissky.com