Strategies of IP Protection in
RU & Eurasia:
LES Asia Conference
Hangzhou
October 17, 2013
Gorodissky & Partners
Sergey Dorofeev
Ways of IP Protection in Russia
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
RU
Filing Russian Patent Application?
Filing Russian Utility Model Application?
EA
Filing Eurasian Patent Application?
Filing Russian Patent (Utility Model) Application(s)
and
Eurasian Patent Application?
EA
&
RU
Eurasian Patent System
Eurasian Patent Office
Search, Examination
Application for Eurasian Patent
......
8 Member States
Patent
«Validation»
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
 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
EA
 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


EA
Patent Obtaining Cost & Time
Legislative and Procedural Advantages
=
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
Language of Filing
Russian (mandatory)
EA
Cover page
Specification
Claims
Translation into
Russian
Drawings
Abstract
Any language !
RU
Lost in Translation?
Filing
Scheme 1
National
English
Russian
Mistakes in translation
Scheme 2
National
English
Russian
Filing
RU
EA
Translation
RU
EA
Preferable Policy
EA
RU
1) First application should be filed in the
national language, if possible
2) English, French, German language version(s)
should be used only as an intermediate
material for translation
General Scheme
Request for Conducting
Substantive Examination
Formal
Examination
Search
Request for Conducting
Substantive Examination
EA
Substantive
Examination
RU
Protectable Subject-Matters
Russian Civil Code
RU
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».
EAPO Patent Rules
EA
Par.1.1: «Subject-matters of inventions can be subjects or
processes created or transformed by a human…»
Excluded from Protection

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
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

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
Eurasian Convention
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
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
Claim
Claim
Claim
Claim
Claim
1.
2.
3.
4.
5.
Apparatus
Apparatus
Apparatus
Apparatus
Apparatus
RU
for …
of claim 1, wherein …
of any of claim 1-2, wherein …
of any of claim 1-3, wherein …
of any of claim 1-4, wherein …
Set of claims with proper dependency
Claim
Claim
Claim
Claim
Claim
1.
2.
3.
4.
5.
Apparatus
Apparatus
Apparatus
Apparatus
Apparatus
for …
of claim 1, wherein …
of any of claim 1-2, wherein …
of claim 1, wherein …
of any of claims 1-2, 4, wherein …
Preferable Policy
RU
1) Multiple dependency may be avoided
when filing applications with RU PTO
- It gives not much benefit
- Claims for US PTO are acceptable
2) 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
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”.
The Civil Code considers “apparatus” to be narrower than “product”
and other than “substance”:
“Article 1350. As invention is protected a technical solution
relating to a product (in particular apparatus, substance,
microorganism strain, plant or animal cell culture)…”.
General Scheme
For Utility Models
Not conducted
RU
Formal
Patentability
Patent
Examination
Examination
Grant
Under special
request
Search for
State of Art
Application Proceedings Timeline
Hypothetic Application
EA
RU
t
t
Formal Examination – approx. 2 months
Application Proceedings Timeline
Hypothetic Application
RU
t
t
Utility Model decision on grant – approx. 4 months
Preferable Policy
Use Utility Model protection
EA
RU
- 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
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
Examination Request
 Applicant
 Any third party
3 years from (international) filing date
2 month extension term
Abandonment
12 month reinstatement term (excusive
circumstances)
EA
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


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
RU
Vs.
EA
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
RU

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
Amendments are voluntary and may be filed any time before Decision
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 Grant


Decision of Rejection
 Notification of Patentability
Check Results


Reasons of possible Rejection
It is possible to further amend
claims

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
 It is possible to further amend
claims
Application Proceedings Timeline
Examination Request
EA
RU
EA
4-6 months
t
RU
t
10-12 months
First Office Action to be issued (approximately)
Final Rejection
RU


May be appealed within
6 months in the
Chamber of Patent
Disputes of the Russian
PTO
Chamber Decision may
be appealed with court
EA

May be appealed within
3 months in the EAPO

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Divisional application
may be filed before or
simultaneously with
appealing with CPD

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
Confirmation of Rejection
Decision
by President
of Rejection
6 months
RU Filing
Date
3 + 1 years
Laid-open Publication & File History
RU & EA
Formal examination completed
Application is pending
Laid- open Publication
Provisional Protection
File History:
Application form
Specification
Drawings
Claims
Amendments
Only in RU
Patent Publication
Patent Protection
File History:
Application form
Specification
Drawings
Claims
Amendments
All Correspondence (Official Actions,
responses etc.)
Third Party Observation
RU

No stipulations in the legislation
EA
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

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
Examination request may
be filed only by Applicant
No third Party Observation
No way out: just monitor
examination results
After Grant Amendments RU + EA

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Evident and technical errors
Not stipulated



Scope changing amendments
Reissue & Reexamination
Way out: Filing Appeal against your own
Patent

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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
Date of Patent Grant
Patent reinstatement date
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
RU
EA
 Only on the territory of the Contracting State where such prior
use took place and which law allows it
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
RU
 Utility models
Patent is granted for 10 years with possible
extension for extra 3 years
Trends
RU
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US & EP Examination
Results are often used
> 50%  First Official
Action is Decision of
Grant
Litigation matters
increase in near future
EA


US & EP Examination
Results are often
used
Amicable & swift ?
 Indefinite feature
 lack of
Industrial
Applicability
 Sometimes “new
matter” features
are proposed by
Examiners
Filings
Основной
Основной
Основной
EA PO
Основной
RU PTO
US PTO/10
Основной
Основной
Основной
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