Nadya Reingand, PhD Washington DC, USA © Copyright. All rights reserved. Патентование в США Patent Hatchery LLC

Patent Hatchery Company Purdue University Southampton University Aston University Kazakhstan State University

Content Current status: facts and speculations Intellectual Property territory: why Russian/US patent is not valid in the other country? Major differences and commons in law Easy way to US market for Russian business Legally using US patents for your benefit

Number of US patents granted to Russians Number of USPTO patents granted to Japan, Germany, France and UK Is there something to worry about?

Current situation with patenting Russian innovations in USA USPTO: 309 US patents of Russian inventors 2009 © Nadya Reingand

Leading companies of “Russian” patents Kaspersky Lab is the third-largest consumer security software vendor in the world RU © Nadya Reingand

Leading technologies software © Nadya Reingand

Leading regions Moscow 60%

Russian Patent Office data: Granted patents per year Total To Russians And how is it back in Russia?

Russian patent Territory: Russian Federation

Eurasian patent Territory -9 countries: Turkmenistan, Republic of Belarus, Republic of Tajikistan, Russia, Azerbaijan Republic, Republic of Kazakhstan, Kyrgyzstan, Republic of Armenia, Republic of Moldova. Filed through PCT Filed directly Filed through PO of contracting states

Patent Cooperation Treaty PCT countries Non-PCT countries

Share of countries in patents filed under PCT procedure 2004 FROM: OECD patent statistics manual By Organisation for Economic Co-operation and Development

Cost analysis (USD) USAPCT Filing, search, examination fees Issue fee480National stage fees, Total: ~200,000 for 6 countries Maintenance fees 3 rd year th year th year 2100 Total: ~4,000 for 20 years protection Annual fees 400 up to 1400 Total: ~20,000 for 20 years

Patent protection is territorial If you file patent application in USA, it is NOT protected in other countries It is easy to learn about your invention since it is published Nobody in other country can get a patent for the invention which copies your patented in USA invention BUT Anyone can produce and sell your invention in other country, for example, produce in China, sell in Germany For example, it is legal to learn about certain technology (nanomaterials or medical treatment or whatever) from US patent and implement it in Russia if nobody patented it in Russia

Patents are granted on Novel Useful Non-obvious inventions or discoveries. Are differences in the new invention compared to the prior art would have been obvious to a person having ordinary skill in the type of technology used in the invention.

Continuity data In the patent:

Software protection by patents Programming of cyclic running machines Software patents are valid on the territory of that country where the patent was granted

Timeline for the patent application publication Provisional Application filing Nonprovisional Application filing 12 months ~ 3 years EU patent application Patent issued Time US patent application must be filed prior to publication I f no publication, 12 months after filing US provisional application If no publication and provisional, 12 months after filing US nonprovisional application Accelerated Examination patent issued

Once again about timing and sequences Generally: Sometimes: Almost never National patent filing PCT patent filing National patent filing Other country patent filing PCT patent filing National patent filing Other country patent filing National patent filing

Importance of US market Number of US patents: - US origin - Foreign origin

U.S., Russian Patent Offices Strike Fast-Track Deal a one-year pilot program on Sept. 1, 2010 to fast-track each other's approved patent applications. Such "Patent Prosecution Highway Programs" allow patent offices to use each other's work to help process applications more quickly.

Patent Prosecution Highway Between USPTO and Rospatent Patent Prosecution Highway for Russians

Conclusions Due to Importance of US market Relatively low cost of filing applications in US Fast track program between our office Fast prosecution compared to PCT We should see much more direct filing of Russian inventions in US Patent Office Why it does not happen and what can be done to improve this?