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Strategies of IP Protection in RU & Eurasia: LES Asia Conference Hangzhou October 17, 2013 Gorodissky & Partners Sergey Dorofeev.

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Presentation on theme: "Strategies of IP Protection in RU & Eurasia: LES Asia Conference Hangzhou October 17, 2013 Gorodissky & Partners Sergey Dorofeev."— Presentation transcript:

1 Strategies of IP Protection in RU & Eurasia: LES Asia Conference Hangzhou October 17, 2013 Gorodissky & Partners Sergey Dorofeev

2 Ways of IP Protection in Russia Filing Russian Patent Application? Filing Russian Patent Application? Filing Russian Utility Model Application? Filing Russian Utility Model Application? Filing Eurasian Patent Application? Filing Eurasian Patent Application? Filing Russian Patent (Utility Model) Application(s) Filing Russian Patent (Utility Model) Application(s)and Eurasian Patent Application? Eurasian Patent Application? EA RU EA RU &

3 8 Member States... Eurasian Patent System Eurasian Patent Office Patent «Validation» Application for Eurasian Patent Search, Examination

4 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.”

5 Claims: Scope Determining Approach RU Article 1354, Clause 2 of Civil Code Article 1354, Clause 2 of Civil Code Protection is granted in the scope determined by claims Protection is granted in the scope determined by claims Specification and drawings may be used for construing claims Specification and drawings may be used for construing claims EA Article 10 of Convention Article 10 of Convention Scope of protection shall be determined by claims Scope of protection shall be determined by claims Specification and drawings shall serve only to interpret claims Specification and drawings shall serve only to interpret claims

6 Considered When Selecting Geographic Coverage Geographic Coverage Scope of Protection Available Scope of Protection Available Duration of Patent Rights Duration of Patent Rights Patent Obtaining Cost & Time Patent Obtaining Cost & Time Legislative and Procedural Advantages Legislative and Procedural Advantages EA RU =

7 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 - claims 3) necessary drawings and other materials - abstract Minimal Filing Requirements Can be submitted later EA RU

8 Language of Filing Cover page SpecificationClaimsDrawingsAbstract EA RU Russian (mandatory) Any language ! Translation into Russian

9 NationalEnglish Lost in Translation? Russian Mistakes in translation National English Russian EA RU Scheme 1 Scheme 2 RU EA

10 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

11 General Scheme Formal Examination Search Substantive Examination RU EA Request for Conducting Substantive Examination

12 Protectable Subject-Matters Russian Civil Code Article «As invention is protected a technical solution in any field, related to a product (…) or method (…).» Article «As utility model is protected a technical solution, related to an apparatus». EA EAPO Patent Rules Par.1.1: «Subject-matters of inventions can be subjects or processes created or transformed by a human…» RU

13 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

14 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

15 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

16 Preferable Policy RU 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

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20 Protectable Utility Model  More narrow scope of protectable subject matters comparing to invention: “Article As utility model is protected a technical solution relating to an apparatus”. “Article As utility model is protected a technical solution relating to an apparatus”. “ Article As invention is protected a technical solution relating to a product (in particular apparatus, substance, microorganism strain, plant or animal cell culture)…”. “ Article 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

21 General Scheme Formal Examination Search for State of Art Patentability Examination RU For Utility Models Patent Grant Under special request Not conducted

22 t Application Proceedings Timeline t EA RU Hypothetic Application Formal Examination – approx. 2 months

23 t Application Proceedings Timeline t RU Hypothetic Application Utility Model decision on grant – approx. 4 months

24 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 - combining Utility Model applications with invention RU and EA applications Remember – criteria of patentability are different for Invention and Utility Model EA RU

25 Substantive Examination RU Examination Request Examination Request Applicant Any third party 3 years from (international) filing date 3 years from (international) filing date 2 month extension term 2 month extension term Abandonment Abandonment 12 month reinstatement term (excusive circumstances) 12 month reinstatement term (excusive circumstances) EA Examination Request Examination Request Applicant 6 months from Search Report publishing date 6 months from Search Report publishing date Usually SR is published simultaneously with application ISR substitutes EA Search Report Abandonment Abandonment 12 month reinstatement term (excusive circumstances) 12 month reinstatement term (excusive circumstances)

26 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 EA RU Vs.

27 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

28 Checking up Patentability RU + EA

29 Checking up Patentability RU Decision of Grant Decision of Grant Decision of Rejection Decision of Rejection Notification of Patentability Check Results Reasons of possible Rejection It is possible to further amend claims EA Decision of Grant 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 Decision of Rejection Conclusion on Patentability Reasons of possible Rejection It is possible to further amend claims

30 t Application Proceedings Timeline t EA Examination Request First Office Action to be issued (approximately) RU 4-6 months months EA RU

31 Final Rejection RU May be appealed within 6 months in the Chamber of Patent Disputes of the Russian PTO May be appealed within 6 months in the Chamber of Patent Disputes of the Russian PTO Chamber Decision may be appealed with court Chamber Decision may be appealed with court Divisional application may be filed before or simultaneously with appealing with CPD Divisional application may be filed before or simultaneously with appealing with CPD EA May be appealed within 3 months in the EAPO 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 Divisional application may be filed before or simultaneously with appealing with President

32 Final Rejection RU

33 Final Rejection in EA Going Russian Way

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35 Third Party Observation RU Third party may file: 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 Examination request may be filed only by Applicant No third Party Observation No third Party Observation No way out: just monitor examination results No way out: just monitor examination results

36 After Grant Amendments RU + EA Evident and technical errors Evident and technical errors Not stipulated Not stipulated Scope changing amendments Scope changing amendments Reissue & Reexamination Reissue & Reexamination Way out: Filing Appeal against your own Patent Way out: Filing Appeal against your own Patent Strongly not recommended in RU Strongly not recommended in RU Not possible in EA Not possible in EA

37 t Date of Patent Grant Early termination date Patent reinstatement date Patent Validity Term Right of Post-Reinstatement Use RUEA Right of Post-reinstatement Use

38 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 RU

39 Patent validity terms  Inventions Patent is granted for 20 years but the term can be extended for maximum 5 years for medicals, pesticides, agrochemicals  Utility models Patent is granted for 10 years with possible extension for extra 3 years RU EA RU

40 Trends RU US & EP Examination Results are often used US & EP Examination Results are often used > 50%  First Official Action is Decision of Grant > 50%  First Official Action is Decision of Grant Litigation matters increase in near future Litigation matters increase in near future EA US & EP Examination Results are often used US & EP Examination Results are often used Amicable & swift ? Amicable & swift ? Indefinite feature  lack of Industrial Applicability Sometimes “new matter” features are proposed by Examiners

41 Filings

42 Thank you Sergey Dorofeev Patent Attorney Partner Gorodissky & Partners Bolshaya Spasskaya str., 25, stroenie 3 Moscow Russia phone: +7(495) fax: +7(495) /


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