Our patent specialist Aleksandr Belotcerkovskii shares some important insights on patenting in these four countries.
“Belarus, Ukraine, Georgia and Kazakhstan are developing markets with improving and evolving patent systems,” says Belotcerkovskii. “Their court systems are often reformed and are on a clear path to improvement.”
In Georgia and Ukraine, PCT and Paris Convention patent applications can only be filed via the national route. Belarus and Kazakhstan are members of the Eurasian Patent Office (EAPO) and thus offer filing via both the national route and the Eurasian one.
While EAPO’s official fees are higher than those of national patent offices, protection on granted patents automatically applies to six additional Eurasian countries (read more on EAPO in this article).
“In general, patenting in Kazakhstan, Belarus and Ukraine is close to the procedure followed by the Russian and Eurasian patent offices,” says Belotcerkovskii. “In Georgia, the procedure is closer to that of the European patent office. Recent changes in Ukrainian patent law indicate that the country is gravitating towards European norms too.”
How patent applications are assessed
In each of the four countries, the overall procedure for patent prosecution is similar to that of the EU countries and Russia, i.e. formal examination is followed by substantive examination that either leads to a patent being granted or rejected (subject to appeal).
“Absolute novelty, inventiveness, industrial applicability and unity of invention are required in all four countries,” says Belotcerkovskii. “Each patent office conducts a substantive patent search and examination – they do not rely solely on the product of international searches.”
“The more embodiments your invention has, the more technical effects, results and advantages should be indicated in your application,” he says. “If you have a well-drafted European or US patent application, it should be clear enough for the purposes of filing in these four countries.”
The approach to amendments in each of the countries is similar to that used globally, with some differences.
For instance, in Belarus and Ukraine, the claims of a granted patent can only be amended by adding information from dependant claims. In Georgia, post-grant amendments can only be done via re-examination, and in Kazakhstan by removing a group of claims.
None of the countries are parties to the global Patent Prosecution Highway (PPH) and none have bilateral fast-track agreements. But all expect Georgia offer local fast-track options.
In Kazakhstan, examinations can be accelerated automatically in certain technical fields determined by the patent office. In Ukraine and Belarus, examinations can be accelerated for a fee, with the first office action coming within a couple of months of filing.
Filing divisional applications
All four countries offer the option of filing divisional applications. Belotcerkovskii says that apart from pursuing a different scope of protection, divisionals can be an excellent alternative to appeals.
“In our view, filing a divisional application is sometimes a better strategy than appealing a rejection,” he says. “Appeals to rejection typically mean only one opportunity to amend your claims, whereas filing a divisional gives you a whole new examination phase.”
“In Georgia, divisional applications should be filed early, because once an acceptance is issued you can no longer file a divisional,” he says.
Infringement proceedings are heard in court in each of the four countries. The court in Belarus even has a special IP committee.
“This good thing about Belarus having this committee means that cases are handled by IP professionals,” says Belotcerkovskii. “The downside is that the committee’s decision is final – it cannot be appealed as in the other three countries.”
See here the webinar recordal on the topic.