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 Utility Model Application?
Filing Eurasian Patent Application?
Filing Russian Patent (Utility Model) Application(s)
and
Eurasian Patent Application? RU EA
& EA RU

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

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 ApproachRU EA
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
Article 10 of Convention
Scope of protection shall be determined by claims
Specification and drawings shall serve only to interpret claims

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

7. Minimal Filing RequirementsEA 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
claims
3) necessary drawings and other materials
abstract
Can be submitted later

8. Translation into Russian
Language of Filing EA RU
Russian (mandatory)
Cover page
Specification
Claims
Drawings
Abstract
Translation into Russian
Any language !

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

10. Preferable Policy EA RU
First application should be filed in the national language, if possible
English, French, German language version(s) should be used only as an intermediate material for translation

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

12. Protectable Subject-MattersRU
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…»

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
Eurasian Convention
Application for above matter shall be rejected if it relates to such matter only

14. Mostly Frequent Claim ObjectionRU
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

15. Set of claims with not allowed dependencyRU
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 …
Set of claims with proper dependency
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 …

16. Preferable Policy RU
Multiple dependency may be avoided when filing applications with RU PTO
It gives not much benefit
Claims for US PTO are acceptable
Timely Responses to our recommendation letters will allow to avoid issuing formal examination OA

17. Legal Meaning of Dependent Claims
Infringement  features of dependent claim
may be used for construing independent claim
RU + EA
Invalidation  partial invalidation, restricting scope RU
Preferable policy: Keep only reasonable number of
Commercially valuable embodiments in dependent claims

18. Invalidation Example RU
Claim 1. Apparatus for … …….
Claim 3. Apparatus of any of claim 1,2, wherein
Claim 4. Apparatus of any of claim 1-3, wherein …
Claim 1. Apparatus for … ………
Claim 3. Apparatus of any of claim 1,2, wherein
Claim 4. Apparatus of claim 1, wherein …
Restricted Claim 1  Claim 1 + Claim 3 + Claim 4

19. Eurasian Patent in the Russian PTO
Invalidation Example
Eurasian 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 allowable Claim 5. Cigarette comprising cigarette filter of any of claims 1-4  allowable
Claim 1. Cigarette filter for…..
…………….
Claim 3. Cigarette filter…….  allowable
Claim 4. Cigarette filter….. ..  allowable
Claim 5. Cigarette comprising cigarette filter ….. features of claim claims  allowable
Preferable policy: For EA application please use US claims with
several independent claims for the same subject-matter

20. Protectable Utility ModelRU
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 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”:

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

22. Application Proceedings TimelineEA RU
Hypothetic Application t ` t
Formal Examination – approx. 2 months

23. Application Proceedings TimelineRU
Hypothetic Application t ` t
Utility Model decision on grant – approx. 4 months

24. Preferable Policy Use Utility Model protectionEA RU
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
UM perspectives: Substantive Examination;
One Independent Claim; No Doctrine of Equivalents

25. Substantive ExaminationRU EA
Examination Request
Applicant
Any third party
3 years from (international) filing date
2 month extension term
Abandonment
12 month reinstatement term (excusive circumstances)
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)

26. Grace period Substantial differenceRU EA
Vs.
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

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 RU EA

28. Checking up Patentability RU + EA
Industrial Applicability
Novelty
Inventive Level
Office Action
Response
Final Decision
Decision of Grant
Decision of Rejection

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

30. Application Proceedings TimelineEA RU
Examination Request EA t
4-6 months RU ` t
10-12 months
First Office Action to be issued (approximately)

31. Final Rejection EA RU May be appealed within 3 months in the EAPO
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
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

32. Final Rejection RU Filing Date Decision of Rejection
Lack of Inventive level
Deadline for Appeal
Utility Model Divisional
Decision of Grant

33. Final Rejection in EA Going Russian Way
EA Filing
Date
Decision
of Rejection
Confirmation of Rejection
by President
6 months
RU Filing
Date
3 + 1 years

34. Laid-open Publication & File History
RU & EA
Formal examination completed
Application is pending
Laid- open Publication
Patent Publication
Provisional Protection
File History:
Application form
Specification
Drawings
Claims
Amendments
Patent Protection
File History:
Application form
Specification
Drawings
Claims
Amendments
All Correspondence (Official Actions,
responses etc.)
Only in RU

35. Third Party Observation
No stipulations in the legislation RU EA
Examination request may be filed only by Applicant
No third Party Observation
No way out: just monitor examination results
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

36. 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

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

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 RU EA EA

39. Patent validity terms EA RU 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

40. Trends US & EP Examination Results are often used Amicable & swift ?RU EA
US & EP Examination Results are often used
> 50%  First Official Action is Decision of Grant
Litigation matters increase in near future
US & EP Examination Results are often used
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: (495) /6123