Strategies of IP Protection in RU & Eurasia: LES Asia Conference Hangzhou October 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? RU EA & EA RU

Eurasian Patent System Eurasian Patent Office Patent Search, Examination «Validation» Application for Eurasian Patent . . . . . . 8 Member States

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 EA 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 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

Minimal Filing Requirements 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 claims 3) necessary drawings and other materials abstract Can be submitted later

Translation into Russian Language of Filing EA RU Russian (mandatory) Cover page Specification Claims Drawings Abstract Translation into Russian Any language !

Mistakes in translation Lost in Translation? Filing Scheme 1 RU National English Russian Mistakes in translation EA Scheme 2 National English Russian Filing Translation RU EA

Preferable Policy EA RU First application should be filed in the national language, if possible English, French, German language version(s) should be used only as an intermediate material for translation

Substantive Examination General Scheme Request for Conducting Substantive Examination EA Formal Examination Substantive Examination Search RU Request for Conducting Substantive Examination

Protectable Subject-Matters RU 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». EA EAPO Patent Rules Par.1.1: «Subject-matters of inventions can be subjects or processes created or transformed by a human…»

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 Eurasian Convention Application for above matter shall be rejected if it relates to such matter only

Mostly Frequent Claim Objection RU 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

Set of claims with not allowed dependency RU 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 … Set of claims with proper dependency 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 …

Preferable Policy RU Multiple dependency may be avoided when filing applications with RU PTO It gives not much benefit Claims for US PTO are acceptable Timely Responses to our recommendation letters will allow to avoid issuing formal examination OA

Legal Meaning of Dependent Claims Infringement  features of dependent claim may be used for construing independent claim RU + EA Invalidation  partial invalidation, restricting scope RU Preferable policy: Keep only reasonable number of Commercially valuable embodiments in dependent claims

Invalidation Example RU Claim 1. Apparatus for … ……. Claim 3. Apparatus of any of claim 1,2, wherein Claim 4. Apparatus of any of claim 1-3, wherein … Claim 1. Apparatus for … ……… Claim 3. Apparatus of any of claim 1,2, wherein Claim 4. Apparatus of claim 1, wherein … Restricted Claim 1  Claim 1 + Claim 3 + Claim 4

Eurasian Patent in the Russian PTO Invalidation Example Eurasian 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 allowable Claim 5. Cigarette comprising cigarette filter of any of claims 1-4  allowable Claim 1. Cigarette filter for….. ……………. Claim 3. Cigarette filter…….  allowable Claim 4. Cigarette filter….. ..  allowable Claim 5. Cigarette comprising cigarette filter ….. features of claim claims 1+2+3+4 allowable Preferable policy: For EA application please use US claims with several independent claims for the same subject-matter

Protectable Utility Model RU 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”:

General Scheme For Utility Models RU Not conducted Formal Examination Patentability Examination Patent Grant Under special request Search for State of Art

Application Proceedings Timeline EA RU Hypothetic Application t ` t Formal Examination – approx. 2 months

Application Proceedings Timeline RU Hypothetic Application t ` t Utility Model decision on grant – approx. 4 months

Preferable Policy Use Utility Model protection EA RU 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 UM perspectives: Substantive Examination; One Independent Claim; No Doctrine of Equivalents

Substantive Examination RU EA Examination Request Applicant Any third party 3 years from (international) filing date 2 month extension term Abandonment 12 month reinstatement term (excusive circumstances) 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 RU EA Vs. 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

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 RU EA

Checking up Patentability RU + EA Industrial Applicability Novelty Inventive Level Office Action Response Final Decision Decision of Grant Decision of Rejection

Checking up Patentability RU EA Decision of Grant Decision of Rejection Notification of Patentability Check Results Reasons of possible Rejection It is possible to further amend claims 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

Application Proceedings Timeline EA RU Examination Request EA t 4-6 months RU ` t 10-12 months First Office Action to be issued (approximately)

Final Rejection EA RU May be appealed within 3 months in the EAPO 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 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 Filing Date Decision of Rejection Lack of Inventive level Deadline for Appeal Utility Model Divisional Decision of Grant

Final Rejection in EA Going Russian Way EA Filing Date Decision of Rejection Confirmation of Rejection by President 6 months RU Filing Date 3 + 1 years

Laid-open Publication & File History RU & EA Formal examination completed Application is pending Laid- open Publication Patent Publication Provisional Protection File History: Application form Specification Drawings Claims Amendments Patent Protection File History: Application form Specification Drawings Claims Amendments All Correspondence (Official Actions, responses etc.) Only in RU

Third Party Observation No stipulations in the legislation RU EA Examination request may be filed only by Applicant No third Party Observation No way out: just monitor examination results 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

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

Right of Post-Reinstatement Use EA RU Right of Post-reinstatement Use t Early termination date Patent reinstatement date Date of Patent Grant Patent Validity Term

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 RU EA EA

Patent validity terms EA RU Inventions Patent is granted for 20 years but the term can be extended for maximum 5 years for medicals, pesticides, agrochemicals Utility models Patent is granted for 10 years with possible extension for extra 3 years RU

Trends US & EP Examination Results are often used Amicable & swift ? RU EA US & EP Examination Results are often used > 50%  First Official Action is Decision of Grant Litigation matters increase in near future US & EP Examination Results are often used Amicable & swift ? Indefinite feature  lack of Industrial Applicability Sometimes “new matter” features are proposed by Examiners

Filings

Thank you Sergey Dorofeev Patent Attorney Partner Gorodissky & Partners Bolshaya Spasskaya str., 25, stroenie 3 Moscow 129090 Russia phone: +7(495) 937 1156 fax: +7(495) 937 6104/6123 e-mail: dorofeevS@gorodissky.ru http://www.gorodissky.com