Patents in Russia Vladimir Biriulin, Partner Gorodissky and Partners Law Firm, Moscow, Russia

2 Types of Patents Inventions - 20 years + up to 5 for chem. Inventions - 20 years + up to 5 for chem. Utility models – 10 years + up to 3 years Utility models – 10 years + up to 3 years Designs – 15 years + up to 10 years Designs – 15 years + up to 10 years

3 Protectable subject-matters Invention V. Invention V. Product (apparatus, substance, microorganism, cell culture etc.) Process (actions on material objects by material means) Use of a product or process on a new or known purpose Utility model Utility model Non- protect able Apparatus Use of an apparatus for a new or known purpose

4 Non-Protectable Subject Matters  Discoveries, scientific theories and mathematical methods  Aesthetic creations relating to external appearance of articles - NB  Rules and methods of games, intellectual or business methods  Computer programs and algorithms - NB  Presentation of information  Animal breeds and plant varieties - NB  Topographies of integrated circuits - NB  Projects and schemes of constructions, buildings and area layouts  Solutions contrary to public interests, humanistic principles and morality

5 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 Minimal Invention Filing Requirements Can be submitted later EA RU

6 UM Criteria Formal Examination Search for State of Art Patentability Examination For Utility Models Patent Grant Under special request Not conducted

7 Which way to file? National Russian or Eurasian? Which way to select: Which way to select: Filing Russian Patent Application? Filing Russian Patent Application? Filing Russian UM, Design Application? Filing Russian UM, Design Application? Filing Eurasian Patent Application? Filing Eurasian Patent Application? Filing Russian Patent (Utility Model) Application(s) Filing Russian Patent (Utility Model) Application(s)and Eurasian Patent Application? Eurasian Patent Application? EA RU EA RU &

8 Eurasian Patent One application One application One unitary patent in 9 countries One unitary patent in 9 countries Combined annuities Combined annuities License and cancellation in individual countries License and cancellation in individual countries 9 Members: Russia, Kazakhstan, Belarus, Turkmenistan, Tadzhikistan, Kyrghyzstan, Armenia, Azerbaidzhan, Moldova 9 Members: Russia, Kazakhstan, Belarus, Turkmenistan, Tadzhikistan, Kyrghyzstan, Armenia, Azerbaidzhan, Moldova Same force as Russian national patent Same force as Russian national patent

9 Considered When Selecting Geographic Coverage Geographic Coverage Scope of Protection Available Scope of Protection Available Duration of Patent Rights Duration of Patent Rights Patent Obtaining Costs Patent Obtaining Costs Patent Obtaining Time Patent Obtaining Time Legislative and Procedural Advantages Legislative and Procedural Advantages EA RU =

10 t Costs and Time t EA Hypothetic Application Expenses and time to grant (approximately, only Official Fees) RU 8-10 months months 5112 USD 1380 USD

11  Rejected Eurasian patent application can be transformed into Russian patent application  within 6 months after the applicant received Decision on Refusal of Patent Grant or  within 6 months from the date on which the applicant received Notification on Dismissing Appeal against Refusal of Patent Grant  Russian application in which the Eurasian application is transformed, receives the same filing and priority dates as of the Eurasian EA Transformation of Eurasian Application

12 When UM recommendable Use Utility Model protection - when fast obtaining of rights for apparatus is necessary (four months to grant) - criteria of patentability are different for Invention and Utility Model - criteria of patentability are different for Invention and Utility Model

13 Conditions of Patentability Invention Utility Model NoveltyNovelty InventiveLevel Industrial Applicability RU EA

14 Variants of Transformation RU Application for Invention Application for Utility Model

15 Examination of Inventions  Deferred type  Request shall be filed within three years for the application filing date*  by applicant  by any interested party  This three-year term can be extended for 2 months according to a petition filed by the applicant  If no request is filed the application is considered withdrawn (can be reinstated under certain circumstances) _______ * - from international filing date for PCT applications RU

16 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 EA RU Vs.

Thank you for attention!