strategies of ip protection in ru & eurasia: les asia conference hangzhou october 17, 2013...
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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: [email protected]://www.gorodissky.com