Papula-Nevinpat patent attorney and partner Erik Viik talks us through the dynamics of filing patents in a region that’s home to more than 200 million people.
“The patent systems in the Eurasian countries and Russia are well developed and there is no significant backlog,” says Viik, who grew up in a bilingual family speaking both Finnish and Russian. He has a background in particle physics and joined Papula-Nevinpat in 2007 to advise clients on filing patents in the region.
“It’s important to note that for something to be patentable in Eurasia or Russia it needs to include three things: absolute novelty, a clear inventive step and industrial applicability,” says Viik.
The Eurasian Patent Organization (EAPO) covers eight countries: Azerbaijan, Armenia, Belarus, Kyrgyzstan, Kazakhstan, Russia, Tajikistan and Turkmenistan. When a patent is granted by EAPO, the patentee has the option of keeping the patent in force in just some of these countries or in all eight. Annuities correspond to the number of countries.
For patent coverage in Russia only, there is also the option of filing with Rospatent: the Russian Federation’s intellectual property organization, headquartered in Moscow. Rospatent operates under Russia’s Ministry of Economic Development.
Both EAPO and Rospatent conduct independent searches and substantive examinations of all filings. Applicants are allowed to use both routes at the same time and can file identical applications. Identical patents can be held too. The examination phase of each organization is typically between one and three years.
Highlighting the technical result
“The Russian and Eurasian examiners use a similar approach for assessing the inventive step,” says Viik. “The typical strategy in each case is to show the examiner that the features distinguishing a claim from the prior art provide an unknown and unexpected technical result.”
“EAPO’s official fees are five to 10 times higher than those collected by Rospatent, but EAPO offers more flexibility and you get coverage in Russia too,” he says.
In the countries covered by EAPO, applications filed by foreign companies in 2020 numbered 2698 – corresponding to some 80% of all Eurasian patent applications. Those related to organic chemistry, pharmaceuticals and veterinary practices accounted for more than 50% of total EAPO filings in 2020.
Foreign applicants account for some 1200 filings per year in Russia. The most active companies are from the US, Germany, Japan and China.
“Filing applications with Rospatent is pretty straightforward,” says Viik. “There is no need to submit documents from the inventors and power of attorney is not required. Russian translations can be filed after applications have been submitted. Rospatent’s fees are also at a reasonable level.”
Russian examiners require that the purpose or function of the claimed subject matter be indicated in the filing. This is especially important for claims related to pharmaceuticals. A summary of the relevant prior art should also be included in the description.
Both Rospatent and EAPO offer several fast-track options.
Russia has been a party to the various Patent Prosecution Highway (PPH) programs for more than 10 years. Rospatent also has bilateral agreements with EAPO and the patent office of China. Russia offers a fee-based fast track program too, with the first office action happening within two months of filing.
“Since last spring, the Russian patent office has offered fast-track examinations at no additional cost for solutions aimed at combatting the Covid-19 pandemic. This includes antiviral drugs, test systems, medical devices, protective equipment and more,” says Viik. “I’m aware of several cases with Russian companies where patents have been granted in less than two months.”
While EAPO is not a party to the Global PPH, the Eurasian organization has direct PPH agreements with patent offices in China, Japan, Korea and Finland, as well as with the European Patent Office. EAPO also offers expedited examinations for an additional fee.
See here the webinar recordal on the topic.