The Eurasian patent convention in comparison to the
european patent convention
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At
the end of 1991 the Soviet Union split up into 15 individual states. This disintegration
has caused considerable impacts in the field of industrial property protection,
particularly as far as patents are concerned. It became necessary to file 15
individual national patent applications with the respective patent offices for
a region that used to be covered by a single Soviet patent. In addition to
that, Soviet patents and Soviet patent applications were only valid in Russia,
the official successor of the Soviet Union. In each of the remaining states, a
request for extension of the Soviet patent application or of the Soviet patent,
respectively, had to be filed. Estonia even refused to recognize Soviet patents
filed before August 20, 1990. This
situation was dissatisfactory for applicants mainly because of the tremendous
costs involved. A representative had to be appointed in each state. Moreover,
also small countries aligned their official fees with the high fees charged by
the European Patent Office, failing to take into consideration that the costs
incurred for running the European Patent Office are presumably much higher than
those accrued for their own patent offices. In
addition to that, small and less economically viable states, such as Armenia
and Moldova, do not recognize Russian translations of the application
documents. In these countries, a translation of the application in Armenian or
in Romanian, respectively is to be filed. In
Belarus, for example, the examination fee amounted to US$ 1,000 for the first independent
claim and to US$ 800 for each additional independent claim. Another
nuisance was the fact that the organization of the individual patent offices
was utterly unsatisfactory in spite of the high fees charged. In
the case of Kazak patent applications, for example, we had to wait for an
official filing receipt of the Kazak patent office for more than two years.
Only when we repeatedly checked back with the Kazak patent office did it turn
out that the Kazak patent office did not have sufficient paper to print the
filing receipts as the official fees have to be remitted directly to the
government and are not immediately transferred to the Kazak patent office.
Therefore, no new paper could be bought. Furthermore,
since the telecommunications network is very obsolete and there are frequent
power blackouts making telefax transmission impossible, it is still difficult
to get in touch with the representatives appointed in time in urgent cases,
especially if the representatives are located in the southern states of the
former Soviet Union. Reliable delivery of correspondence can only be ensured
by dispatching courier shipments, which raises costs for applicants. All
these adversities created the necessity to establish for a successor patent to
the Soviet patent, which successor was to possibly cover all the 15 republics
of the former Soviet Union. A first attempt aiming at that goal was made on
December 27, 1991, when the so-called Minsk Agreement was agreed upon. Ukraine
was the only state to ratify this agreement. For the Minsk Agreement to take
legal effect, however, the ratification by at least three states would have
been required. The
efforts to create uniform patent laws for the East European or Eurasian regions
were, however, not abandoned. At the instigation of WIPO in particular,
meetings attended by the responsible officials of the individual patent
offices and governments were held in Geneva time and again. These meetings
eventually resulted in the signature of the Eurasian Patent Convention on
September 9, 1994 in Moscow. The Eurasian Patent Convention took effect on
August 12, 1995. The starting date for filing Eurasian applications with the
Eurasian Patent Office was January 1, 1996. The
Eurasian Patent Convention is a regional patent system. For that reason, a
comparison between the Eurasian Patent Convention and the European Patent
Convention suggests itself. The
following states have become party to the Eurasian Patent Convention up to
January 1, 1996: Russian Federation, Kazakhstan, Belarus, Tajikistan,
Turkmenistan and Azerbaijan. The
Eurasian Patent Convention was implemented on January 13 in Kyrgyzstan, on
February 27 in Armenia and on February 16, 1996 in Moldova. The
most important country covered by the protection of a Eurasian patent, of
course, is the Russian Federation with its population of approximately 150
million people. The second largest country is Kazakhstan with a population of
17 million, followed by Belarus with a population of 10 million. The population
count of Tajikistan is 6 million, that of Turkmenistan 5 million, that of
Azerbaijan 8 million, that of Kyrgyzstan 5 million, that of Armenia 4 million
and that of Moldova 5 million. Thus,
the Eurasian Patent Convention presently covers a population of 210 million
people. This is about 70 % of the population of the former Soviet Union. As
you can see, two of the economically most advanced states of the former Soviet
Union, namely Ukraine with its population of 52 million and Uzbekistan, which
has a population of 22 million people, are not parties to the Eurasian Patent
Convention. It
is not to be expected that these two states will join the Eurasian Patent
Convention in the near future. In Ukraine the patent attorney's association
maintains good connections with the government departments in charge and thus
exerts its influence to prevent Ukraine from signing the Eurasian Patent
Convention. While
Latvia and Lithuania became extension states of the EPC, Estonia has now become
a full member of the EPC. For
political reasons, Georgia is not to be expected to join the Eurasian Patent
Convention either. The conflict prevailing between Georgia and Russia is too
serious. The
Eurasian Patent Convention (EAPC) is not limited to the countries of the former
Soviet Union. Other countries can join the convention as well. Mongolia, for
example, has manifested its interest in membership. The
EAPC is very concise. It consists of solely 28 articles. Further provisions are
comprised in the Patent Regulations annexed to the EAPC. According
to Rule 2 of the Patent Regulations, a Eurasian Patent is a patent granted by
the Eurasian Patent Office (EAPO). In the case of infringement of a Eurasian
Patent, each contracting state shall provide for the same civil or other
liability as in the case of a national patent (Art. 13(2) EAPC). As
far as patentability is concerned, the EAPC itself stipulates that an invention
be new, involve an inventive step and be industrially applicable. In
contrast to the European Patent Convention, the requirements to be met with
regard to novelty, inventive step and industrial applicability are not
mentioned in the EAPC itself, but in the Patent Regulations. Like
with the European Patent Convention, absolute novelty is a prerequisite. Any
kind of information made available in the world before the priority date of
the application is regarded as destroying novelty. When
the decision about novelty is made, post-published Eurasian patent applications
filed at an earlier date are to be taken into consideration as prior art as
well. There
is a grace period of six months preceding the filing or priority date if the
disclosure of the invention is based on information provided by the inventor or
the applicant. Such a grace period is not contained in the EPC. In this case,
the EAPC has been adjusted to the Russian Patent Law. According
to the current version of the Patent Regulations (valid since March 1, 2002)
the list of patentable subject matters of an invention to be protected by a
Eurasian patent i.e. a device, a process, a substance, a microorganism strain
or plant or animal cells and also the use of a device, process, substance or
strain, has been deleted. This means that from now on, for example, transgenic
plants or animals will be considered to be possible subject matters of an
invention. Like
in Russia a method for medical treatment is patentable, which is excluded by
the EPC (Art. 52 (4) EPC). Like
in the EPC as well as in most other countries, the scope of protection
conferred by a Eurasian patent is determined by the claims, whereas the
specification and the drawings solely serve to interpret the claims. As
in the case of European patents, the duration of a Eurasian patent is 20 years
from the date of filing. In contrast to the EPC (see Art, 63 (2b)) the EAPC
does not contain a provision concerning the extension of the term of a Eurasian
patent for the case that its subject matter requires an administrative
authorization procedure before it can be put on the market. Thus, for example,
a Eurasian patent wherein Kazakhstan is designated and which concerns a
pharmaceutical cannot be extended, whereas a corresponding patent granted by
the Kazak Patent Office can be extended (according to the new Kazak Patent
Law). The
right to a Eurasian patent application can only be transferred centrally with
the EAPO for all Contracting States. A Eurasian patent already granted can also
only be assigned for all Contracting States covered by its scope of protection. Licence
agreements concluded on the basis of a Eurasian patent are registered according
to national legislation effective in the individual Contracting States.
Therefore, licence agreements will only become valid if they have been
registered in the individual contracting states. The national patent offices
will communicate the registration of licence agreements to the EAPO, which, in
turn, makes a corresponding entry in its register. Applicants
who do not have their place of business or residence in one of the contracting
states of the EAPC have to file the Eurasian patent application through a
professional representative at the EAPO in Moscow (Art. 15 EAPC). The
application can be filed in a foreign language if a Russian translation of the
application is filed within two months from the date when the EAPO received the
Eurasian application. This term can be extended by another two months on the
condition that an official fee of $ 100 is paid. If
a priority is to be claimed, the Eurasian patent application is to be filed
within the customary term of twelve months from the earliest priority date.
Contrary to the EPC, this term can be extended by two months if the above-mentioned
time limit could not be observed due to circumstances beyond the applicant's
control and an official fee of $ 500 is paid. Simultaneously
with filing the Eurasian Patent Application, a unitary fee for filing, search
and publication of the patent application is to be paid (Art. 15(2) EAPC). This
fee amounts to US$ 800 + US$ 70 for each claim in excess of 5 for a
conventional application, i.e. an application for which an international or
international type search report has not been established. The
Patent Regulations provide for a remarkable reduction (90% for applicants from
a contracting state, 80% for applicants from a non-contracting state) in
official fees for applicants having their place of business or residence in a
state in which the average annual per-capita income is below $ 3000. This
preferential clause is, however, not effective for joint venture companies
directly or indirectly supported by companies having their place of business
in a country where the above prerequisite does not apply. This provision
obviously serves to prevent companies from shirking high fees by launching a
business in one of the countries covered by the preferential clause. According
to the EAPC no contracting states have to be designated upon filing the Eurasian
patent application and no fees for the individual contracting states are to be
paid either. For
one thing, this is a very cost-efficient solution for applicants. For
another, the applicant has the possibility of not deciding about the states in
which he actually wants to obtain protection until the Eurasian patent has been
granted. After
the Eurasian patent application has been filed, it is first subjected to formal
examination. Afterwards,
for a non-PCT application a search for prior art is conducted (by the Russian
Federal Institute of Industrial Property). The EAPC provides that the Eurasian
patent application be published together with the search report immediately
after expiration of a term of 18 months from the filing date or from the
earliest priority date, respectively. The
publication of the Eurasian patent application affords provisional legal
protection within the scope of the published claims in the territory of all
contraction states. According to Rule
10(3), the patent owner shall have the right to claim commensurate compensation
as from the date of publication of the Eurasian patent. The provisional legal
protection shall be considered never to have existed where the grant of a
Eurasian patent has been refused or where the Eurasian application is
considered withdrawn. Contrary
to the EPC, it is not required to file translations of the claims into the
languages of the respective contracting states in order to obtain preliminary
protection. The
request for examination is to be filed within six months from publication of
the search report. The
official fee for examination amounts to US$ 800 for the first invention (i.e.
independent claim) and to US$ 1400 for more
than one invention. Costs can be slashed if the number of independent
claims is reduced. During
the examination procedure, the applicant is at least once given the opportunity
to amend the application documents in view of the prior art cited. Amended
application materials, which may not change the essence of the invention, can
be filed until the date of the decision to grant a patent. The
Patent Regulations provide for a maximum four months term for filing a reply to
an office action issued by the EAPO, which term can as a rule is extended. The
Patent Regulations also include a provision allowing for relief in respect of
the time limits of a Eurasian patent application if a corresponding request is
filed, an official fee (US-$ 200) is paid within two months from the expiration
of the term and all of the requirements in respect of which the time limits for
the action concerned applied be complied with at the same time as the request
is filed (in correspondence with Art. 11(1) PLT). Where
the applicant or patent owner fails to meet a prescribed time limit for
performing a procedural act, in spite of the required due care required, by the
circumstances having been taken and wherein any delay was unintentional, the
application or patent can be saved by filing a substantiated request for reinstatement
and paying a corresponding fee for reinstatement, which amounts to $ 100 (for
patent applications) and $ 300 (for patents). According
to Rule 201 any person who, in a contracting state, in good faith
has started to use or made necessary preparations for using an invention or an
identical solution in the course of the period between the loss of rights of a
published Eurasian patent application or a Eurasian patent and the publication
of the mention of re-establishment of these rights, may without payment
continue such use of said invention or identical solution without extension of
the scope of said use. For
the case that the subject matter of a Eurasian Patent Application is patentable
the EAPO issues a communication wherein the applicant is informed of the text
in which it intends to grant the Eurasian Patent. Within
four months from the date of said communication the applicant has to state his
approval of the text notified and a grant fee of US$ 500 is to be paid. This
grant fee does not depend on the number of independent claims. Furthermore, a
publication fee of US$ 5 for each page in excess of 35 has to be paid. According
to Rule 51(1) of the Patent Regulations, the EAPO shall grant the Eurasian
patent on receipt of the fees for grant of the Eurasian patent and publication
thereof. The date on which the mention of grant of the patent is published in
the Bulletin of the EAPO shall be deemed the date of grant of the Eurasian
Patent. Subject to the payment of maintenance fees a Eurasian Patent shall have
effect on the territory of all contracting states from the date of its
publication. Please
note that a divisional application enjoys the filing date and priority date of
the initial application provided it has been filed before the registration date
of the Eurasian patent deriving from the initial application or (in case of a
refusal of the initial application) prior to exhaustion of the possibility of
appeal against the decision, and the initial application has not been withdrawn
or is deemed to be withdrawn. Like
with the EPC, three examiners make the decision on whether or not the subject
matter of a particular application is allowable. These examiners must,
however, be nationals of three different contracting states. In
case the examining division considers the subject matter of the application not
allowable, a decision of refusal will be issued, against which an appeal can be
lodged with the EAPO within a three-months term from receipt of the decision of
refusal. In
contrast to the EPC, however, the instance in charge of the appeal is not an
Appeal chamber, but a different examining division consisting of three
examiners, at least two of who must not have taken part in making the preceding
decision. According
to the EAPC the decision of the second examining division (after confirmation
by the President of EAPO) cannot be contested. If the application is definitely
refused by the EAPO, the applicant can file with the EAPO a petition
designating the contracting states in which it is intended to proceed with the
grant procedure nationally within a term of six months from receipt of the decision
of refusal. In this way, the Eurasian patent application can be turned into
national applications, which claim the priority of the Eurasian application and
are treated in accordance with the legal provisions prevailing in the
individual countries. According to the EAPC, the
possibility of filing an opposition against a Eurasian patent (administrative
revocation) is mentioned in Art. 19 (xiii). Rule 53 of the Patent Regulations
provides that an opposition is to be filed within six months from publication
of the mention of grant in the Official Bulletin and an opposition fee of $
800 is to be paid. Thus, the term for filing an opposition is three months
shorter than with the EPC. According to Rule 53(2) of the
Patent Regulations, the Grounds for Opposition are: a) lack
of patentability (according to Rule 3: Novelty, inventive step, industrial
applicability, patentable subject matters of an invention); b) the
claims include features that did not appear in the Eurasian application as
originally filed There is the possibility of lodging
an appeal to the President of the EAPO against the decision made by the
opposition division of the EAPO within four months from the mailing date of the
decision. The President shall either order a renewed hearing of the opposition
by the opposition division or take a final decision on the opposition. If no opposition has been filed
within the opposition term, nullity action can be brought in the individual
contracting states during the entire term of the Eurasian patent, stating that
the Eurasian patent is invalid on the territory of the contracting state in
question. According to Art. 13(1) EAPC, a Eurasian patent may only be nullified
on the basis of the EAPC and the Patent Regulations. Rule 54(1) of the Patent Regulations
provides that the Grounds for Nullity Action are: a) National
applications or patents with an earlier filing date or priority published at or
after the filing date of the Eurasian Patent (Rule 52 titled "Exclusion of
Dual Protection"); b) lack
of patentability (novelty, inventive step, industrial applicability, patentable
subject matters of an invention); c) the
claims include features that did not appear in the Eurasian application as
originally filed; d) the
name of the inventor or of the owner is not correctly entered on the Eurasian
patent. A vital advantage of the EAPC over
the EPC is the fact that after grant of a Eurasian patent no national
validations in the individual contracting states have to be initiated, i.e. no
translations into the respective languages have to be prepared and no fee for
entry into the national validations in the individual states is charged. The applicant decides on the states
in which protection is to be maintained merely by indicating said states and
paying annuities. The annuities are determined by each individual Contracting
State. Settlement is to be effected centrally with the EAPO. According to Art.
17(2) EAPC the maintenance fees shall be payable in each of the year following
the grant of the Eurasian patent by the date corresponding to the filing date
of the Eurasian application. It is not necessary to appoint
representatives in the individual contracting states. One single
representative authorized to act before the EAPO is sufficient for all steps to
be taken during the procedure, which lowers the costs incurred by applicants
considerably. According to Rule 57 of the Patent
Regulations, the applicant may request the EAPO to correct clerical or obvious
errors in the Eurasian patent, provided that the correction does not extend the
scope of legal protection. According to Rule 55 of the Patent
Regulations, the patent owner may surrender the Eurasian patent in respect of
all or some of the contracting states. Surrender of the Eurasian patent may not
be limited to certain claims. Legal action based on infringement
of a Eurasian patent must be brought before the national courts of the
contracting states in question and be based on the EAPC and the Patent
Regulations. The decision passed by these courts is only effective for the
territory of the contracting state in question (Art. 13 EAPC). The national
courts can request that the plaintiff submit a translation of the Eurasian
patent into the national language. According to Rule 19 of the Patent
Regulations inter alia the following case shall not constitute an infringement
of the Eurasian patent: an act with respect to a product after it has been put
on the market by the patent owner or with his consent in that contracting
state on the territory of which the Eurasian patent has effect and the product
has been put on the market (national exhaustion). According to Rule 20 of the Patent
Regulations, any person who in good faith before the time rank of the Eurasian
application has been using a solution identical to the patented invention on
the territory of a contracting state, or has made the necessary preparations
for such use, shall have the right to proceed with that use free of charge,
provided that the scope thereof is not increased. The right of the prior user
shall apply only on the territory of the contracting state in which such prior
use has occurred. Since January 1, 1996 it has been
possible to both file international patent applications with the EAPO and to
designate the EAPO in international applications. The term for entry into the regional
phase before the EAPO is 31 months
from the earliest priority date. Upon the entry into the regional
phase the unitary fees and for the case that the six-months term from the
international publication of the application already expired the examination
fee have to be paid and the examination request has to be filed at the EAPO.
The Russian translation of the application documents can be filed within two
months from expiration of the term for entry into the regional phase. Furthermore, it should not go
unmentioned that the unitary fee and the claim fee are reduced by 25 % (due to
the presence of an international search report). A reduction of the examination
fee is not provided for. Now
the question arises about the number of countries for which it makes sense
economically to file a Eurasian patent application instead of several national
applications. By way of example, I therefore compared the costs accrued for a
Eurasian patent application to the costs arising for national applications
filed in the Russian Federation, Kazakhstan and Belarus. The
example refers to a conventional patent application (35 pages) comprising 5
claims, including two independent claims and that claims one priority. The
costs include the average fees of the respective representatives in the
individual states and the official fees. The costs accrued for translation work
has been excluded because a Russian translation is sufficient for all these
applications.
Thus,
you can see that filing a Eurasian patent application is economically rewarding
even if protection of the application is sought in two countries only, for
example in Russia and in Belarus. SUMMARY To
sum up with, it can be stated that the EAPC presents some advantages over the
EPC, which advantages primarily consist of reducing the costs incurred by the
applicant. The
first advantage is that no designation fees for any individual Contracting
State are to be paid upon filing the Eurasian patent application. A further
lowering of costs is achieved by the fact that no translations into the
respective national languages have to be filed with the individual patent
offices, as is the case with the EPC. This provision serves to take a
huge chunk off the financial burden imposed on the applicant. Finally, it is
not necessary to appoint representatives in the individual contracting states. Granting history of a Eurasian patent application 1. Filing
the application in Russian or a foreign language. Paying the unitary fee for filing,
search and publication. Fee: USD
800 + USD 70 for each claim in excess of 5 for a conventional application USD 600 + USD 52.5 for each
claim in excess of 5 for a PCT- application 1a. Filing the translation of the application in
Russian within two months from the date of receipt of the Eurasian application
by the EAPO , if the application was filed in a foreign language. 2. Formal
examination 3. Publication
of the application after 18 months from the filing date or from the earliest
priority date together with the search report. 4. Filing
the examination request and paying the examination fee within 6 months from
the date of the publication of the search report. Fee: USD 800 for the first invention USD 1,400 for a group of
inventions 5. Substantive
examination 6. Notification
on the readiness to grant a Eurasian patent 7. Paying
the grant fee within four months from receipt of the notification |