From Russia with love:
disposing commercial & IP
strategy in Russia and Eurasia
Evgeny Enbert
Russian and Eurasian
Patent Attorney
PATENTICA © 2014
Russian AUTOMOTIVE market
 Russian Automotive Market: $69 bln in 2013
 High growth potential: 156 cars/1,000 Russians (525 in UK)
 2013: 9% growth in sales of locally produced foreign cars
Local factories:
Ford (2002)
Renault (2005)
Volkswagen
(2007)
Toyota (2007)
GM (2008)
Nissan (2009)
Peugeot/Citroen/
Mitsubishi (2010)
Hyundai (2011)
Top 10 brands, 2013




Lada (456 309)
Renault (210 099)
KIA (198 018)
Hyundai (181 153)





Chevrolet (174 649)
Volkswagen (156 247)
Toyota (154 812)
Nissan (146 196)
Ford (106 734)
Russian TELECOMMUNICATION market
The telecom
market value
reached $42bn
in 2013, that is
2% of Russia’s
GDP
Growing sectors:




Fixed and mobile internet access
pay TV services
broadband internet access
3G-LTE development vs. WiMAX and CDMA
Russian PHARMACEUTICAL market
• Russian Pharma market grows 10% in average
annually
• Expenditure per capita in RU is 170$,
in US it is 770$, in JP – 730$, in EU –400$
2/3 of medicine in Russia cost less than $5
$ 24.2 bln
$ 28.1 bln
$ 29.7 bln
PUBLIC RTU DRUG
SECTOR
(ca.25%)
COMMERCIAL
PARAPHARMA
SECTOR (CA. 17%)
COMMERCIAL
RTU DRUG
SECTOR
(ca.58 %)
Source: DSM group 2012
Russian MEDICAL DEVICEs & MEDICAL
TECHNOLOGY market
In 2013, the Russian medical device market was $6.7bln, or
$47 per capita, with import being $4,8 bln, i.e. 72%.
1,200 manufacturers are engaged in medical device
production
40% of equipment obtained via budget funds is not fully
used
$ 4.1 bln
$ 3.6 bln
$ 3.0 bln
PUBLIC
SECTOR
(ca. 80%)
12 %
16 %
COMMERCIAL
SECTOR
(ca. 20%)
Source:
Ministry of Industry
and Trade
2010
2011
2012
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


Regional patents:
TREND FOR COMMERCIAL
INTEGRATION
CIS free trade agreement between
Armenia, Belarus, Kazakhstan,
Kyrgyzstan, Moldova, Russia, Tajikistan
signed in 2011
Customs Union of Russia, Belarus and
Kazakhstan signed in July 2010
Car sales in 2013:
Russia 2,777,000
Belarus: 24,966
Kazakhstan: 48,327
Ukraine: 261,001
Uzbekistan: 94,400
Two patent offices to file with


Russian Patent Office (Rospatent)
Eurasian Patent Office
IP objects

EAPO: inventions only (Art. 6 of
the EAPC)

RUPTO: Inventions and other IP
objects
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What does Russian IP legislation
 Inventions
offer?
 Utility models
 Designs
 Selection achievements
 Integrated micro-circuits
topologies
 Trade Secrets (Know-How)





Works of science, literature and art

Computer programs

Databases

Performances

Audio records

Broadcasting or radio- or television
programs by cable
Company names
Trademarks
Geographical Indications
Commercial designations
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9
OVERVIEW
The Eurasian Patent Organization
consists of
Administrative council and
the Eurasian Patent Office.
8 Contracting states:
EA: RU, BY, KZ, AM,
AZ, KG, MD, TJ, TM
with total population 200 mln.
Headquarters:
Moscow, M. Cherkassky per., 2
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LEGAL BASIS

The EAPC (signed September 9,
1994, came into force August 12,
1995)

EA Patent Regulations

Patent Rules for Drafting, Filing and
Examining a EA patent application
http://www.eapo.org/en/documents/norm/
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Clear benefits of the EAPO:

patent protection in up to 8 countries

single prosecution procedure

protection by one single patent in Russian
language

no designation of contracting states until the
grant

no validation/translation after grant is
required
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B. PATENTABLE CLAIMS IN RU/EA = US+EP
Compound A [for treatment of disease Y]

Crystalline/amorphous forms of compound A

A composition [for treatment of disease Y]

A combination of compounds A and B for Y

A method of treatment of disease Y using compound A

Use of compound A or method B for purpose Y
(Art.1350, 01.10.2014)

Apparatus for purification of substance A

A Kit containing composition A and instruction for use.
YES
YES
YES
YES
YES
YES
YES
YES
Statistics: applications file
30% filed by foreign applicants
45000
41849
38564
40000
42500 41414
44211 44914
35000
30000
25000
RUPTO
20000
EAPO
15000
10000
5000
3066
2801
3329
3560
3946
3435
0
2008
2009
2010
2011
2012
2013
14
Eurasian applications by
country of residence in 2013
1000
900
800
921
779
700
600
500
400
300
200
100
0
368 353
212 189
175
129 121
95
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Recent Developments in the
Russian/Eurasian patent system
23 August 2012, as result of Russia’s access to
WTO, the official Rospatent patent and TM fees
were equalized for both resident and nonresident entities and physical persons

1 July 2013 Russian IP court started to operate
to ensure qualified IP enforcement mechanism

01 Oct 2014 amendments to IP legislation,
CCRF Part 4, have come into force to
harmonize the legal IP provisions in Russia with
legislation of other WTO countries and generate
better opportunities to protect IP rights in Russia.

NOVELTY OF UTILITY MODEL, Art 1351
CCRF, Art 1351,
01.10.2008
CCRF, Art 1351, 01.10.14
1. Prior art for
Utility Model includes:
- published information
world-wide and
- public use in Russia
before the priority date
1. Prior art for
Utility Model includes:
- any information
including prior use
world-wide before
the priority date
2. Formal examination only
2. Examination in
essence: novelty,
industrial applicability,
sufficiency of disclosure
PATENTABILITY OF INDUSTRIAL DESIGN,
Art. 1352 CCRF
Art. 1352 (01.01.2008)
Art. 1352 (01.10.2014)
1. A set of essential features of 1. A set of essential features of
industrial design includes
industrial design includes
aesthetic and ergonomic
aesthetic features, such as
features, such as shape,
shape, configuration,
configuration, ornament,
ornament, combination of
combination of colours.
colours, lines, contour, texture.
2. The industrial design is new if 2.The industrial design is new if
the set of features reflected on the set of features reflected
the drawings and indicated in on the drawings is not known
the list of essential features is
in the prior art.
not known in the prior art.
NOVELTY AND ORIGINALITY OF INDUSTRIAL
DESIGNS, Art. 1352 CCRF
Art. 1352 (01.01.2008)
For the purposes of
novelty of the ID, the prior
art includes all the
information available
world-wide and all ID
applications filed in Russia.
Grace period 6 months for
disclosure by inventor or
other person
Art. 1352 (01.10.2014)
For the purposes of novelty
and originality of the ID, the
prior art includes all the
available information worldwide and all applications for
inventions, UMs, IDs, TMs filed
in Russia.
Grace period 12 months for
disclosure by inventor or
other person
B. INVENTIVE STEP
Rule 19.5.3 (RU) & EA
(1) “An invention shall be considered to involve an inventive
step if, having regard to the prior art, if it is not obvious to a person
skilled in the art”, in particular,
- where no technical solutions are found having features
coinciding with the characterizing features of the invention, or
- when such solutions are found, but the influence of these
features on the claimed technical effect is not described.
Thus, in RU/EAPO inventive step objections can/shall be argued by
proving that a different technical effect is achieved in comparison to
“a problem solution approach” under EPO.
The new regulations, Art. 1378 CCRF, limits the freedom to change
formulation of technical effect after filing of the application.
DEPENDENT INVENTION/UTILITY
MODEL/INDUSTRIAL DESIGN, Art. 1358’ CCRF,
01.10.2014
1. A patent for invention, utility model, industrial
design, which cannot be used without using
another patent for invention, utility model,
industrial design, having earlier priority, is called
a dependent invention, utility model,
industrial design.
Example 1: Use for a new purpose of a product
protected by a patent having earlier priority
Example 2: A patent for a product or method
having claims which differ in a new purpose only.
NEW GROUNDS FOR INVALIDATION OF A
PATENT/ UTILITY MODEL, Art.1398 CCRF
Art. 1398 (01.01.2008)
Art. 1398 (01.10.2014)
A patent for invention or A patent for invention or utility
a utility model can be model can be deemed invalid if
deemed invalid if the the invention or utility model:
invention or utility model: - does not comply with one of
patentability criteria;
- does not comply with
one of patentability
- does not correspond to
criteria;
patentable subject matter;
- contains features in
- disclosed insufficiently for its
claims absent from
implementation;
original application
- contains features in claims
materials
absent from original application
INFRINGEMENT OF A PATENT/ UTILITY
MODEL, Art. 1358 CCRF
Art. 1358 (01.01.2008)
A patent for invention or
a utility model is
considered as used in a
product if the product
contains all the features
indicated in an
independent claim, or a
feature equivalent thereof
and become known as
such before the priority
date of the invention.
Art. 1358 (01.10.2014)
A patent for utility
model is considered
as used in a product if
the product contains
all the features
indicated in
independent claims,
or a feature
equivalent thereof.
TWO WAYS TO ENFORCE THE IP IN RUSSIA
ADMINISTRATIVE
Fast, cheap and easy to stop
the infringement BUT the
damages cannot be collected
JUDICIAL
Compensation of damages
and lost profits is possible
Administrative Authorities to Apply and Enforce:
ROSPATENT
Chamber for Patent
Disputes
Municipal and
Economic
Police
Customs
Federal
Antimonopoly
Service (FAS)
State Patrol for
Commerce
Russian Commercial Courts and procedure
First instance court
(i.e. Moscow
Commercial Court)
Appeal
Court of appeals
(i.e. 9th Commercial
court of Appeals)
Cassati
on
Cassation court (i.e.
Moscow District
Court)
2nd
cassation
Supervisio
n
Common case
Intellectual rights
court
Pure IP case
IP related case
Cassati
on
Economic Disputes
Bench of the
Supreme Court
Cassation
(no
appeal)
Presidium of the
Intellectual rights
court
2nd
cassatio
n
Presidium of the
Supreme Court
Two ways for patent in Russia
each providing equal enforcement rights
Do not know which patent to choose?
APPLY FOR BOTH!
With all the amendments to the
legislation, possibility to get EA and RU
identical patents having the same
priority date – collision which still has to
be solved!
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THANK YOU!
Evgeny Enbert, MSc. Optoelectronics,
MSc. Economics
Russian and Eurasian Patent Attorney
Head of the Mechanics & Electronics Team of
BOX 1125, Saint Petersburg, 190000, Russia
15 Malaya Morskaya Street, Office 5,
St. Petersburg, 190000, Russia
Phone: (007) 812 6002427, Fax: (007) 812 314 4569
www.patentica.com
evgeny.enbert@patentica.com
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