 Know the main procedural steps one has to make to obtain a patent  Understand the role played by the Patent Office  Understand the basic considerations to be made before making patenting decisions  Understand various routes to grant a patent  Know major features of the application process National and International Patent Systems: Procedure for Granting

Basic Terminology Considerations En Route to Patent Grant: Preliminary Considerations, Making Patenting Decisions, Considerations during Examination Various Routes to Patent Grant National and International Patent Systems: Procedure for Granting

First-to-file Examination procedure Formal examination Substantial examination Patent search Patent agent Regional patent system Requirements of registration National and International Patent Systems: Procedure for Granting

1 Before you apply 2 Filing an application 3 Examination 4 Rejection or grant of the patent National and International Patent Systems: Procedure for Granting

1. The need to keep your invention secret 2. The importance of getting professional advice 3. Preliminary patent search 3. Deciding to Patent Before you apply National and International Patent Systems: Procedure for Granting

Exclusive right up to 20 years Enables invention to be included in the balance sheet Attracts fund for research Recognition as an inventor secret ?? Disclose the invention Imposes additional costs Let competitors design around the invention ?? Pros Cons National and International Patent Systems: Procedure for Granting

Filing an application 1. How to make a well-drafted application 2. Which route to chose 3. Seeking professional advice (patent agents) National and International Patent Systems: Procedure for Granting

Direct route: National patent offices (ROSPATENT in Russia) – National patent valid only in the country where it is granted – Non-residents can also apply for a patent via patent agents – One year of "priority" for subsequent applications Regional route: Regional Patent Office (Eurasian in Russia) – A regional patent is equivalent to national patents in the countries where it is granted (the applicant chooses the countries members of the Eurasian Convention) Routes to grant

Paris Convention route: Filing with priority to earlier application in the country member to Paris Convention PCT route Via the Patent Cooperation Treaty – Just one application for up to 148 countries – After the initial application phase, the international application leads to multiple national patent examination procedures – Decisions with cost implications can be delayed until months after filing (e.g. choice of countries to file in) There is no such thing as an international patent! Routes to grant Cont.

Examination 1. Whether is it justifiable to proceed with the application 2. Which route to chose in proceeding with the application 3. Time management is important Formal Substantial (postponed) National and International Patent Systems: Procedure for Granting

Patent Procedure at the Russian Patent Office Application Formal Examination Publication of application Publication of grant Withdraw ? 18 months Approx. 2-3 years Substantial examination The layout is taken from the site

After Grant Amendments 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 National and International Patent Systems: Procedure for Granting

Registration Amendment, Argument Notice of allowance Request for examination within 3 years Inquiry (office actions) Filing Application Appeal 18 month publication Decision of Refusal National and International Patent Systems: Procedure for Granting

 Patent can be obtained only when a certain procedure is followed  There are several considerations to be made at various stages of patent procedure  A number of routes are available for patentee to be granted a patent  Whatever the route chosen, three major functions of the patent system are to be operative National and International Patent Systems: Procedure for Granting

1.Pravo intellectualnoi sobstvennosti (Intellectual Property Law) Text-book edited by Dr.-Prof. I. A. Bliznets, Prospect, 2010 (in Russian) 2.Lionel Bently and Brad Sherman Intellectual Property Law, 3d edition, Oxford University Press, 2009, pp. 370 – Civil Code of the Russian Federation, Part IV 1.Dzhermakyan V. Yu., Patentnoe pravo po Grazhdanskomu Kodeksu Rossiiskoi Federatsii (Patent Law By the Civil Code of the Russian Federation) (clause-by-clause comments, enforecement practice, considerations,ОАО INITs «Patent», М., 2009 (in Russian) National and International Patent Systems: Procedure for Granting

5. Administrative Regulation for performing the government functions of organizing the acceptance of applications on inventions, their examination and grant in the established order of patents of the Russian Federation on inventions by the Federal Service for Intellectual Property, Patents and Trademarks, by order No.327 of the Ministry of Education and Science of the Russian Federation of , in force since June 5, “How to get a Eurasian Patent” at National and International Patent Systems: Procedure for Granting

Acknowledgement note: Special gratitude to Kristina Lyu, a Lead IP expert, Ural Branch of the Russian Academy of Sciences, for working on the design of the lecture presentations and for being the first attentive listener of the contents National and International Patent Systems: Procedure for Granting