Terms and procedures for claiming Eurasian patent

1   Filing in application to national Patent office (PTO). National PTO provides to applicant a reference about application receiving (inclusive with dates of its filing). This procedure plays a vital role in order to request conventional priority regarding to patent application.

2   Filing in Eurasian application to Eurasian Patent Organization (EPO) by Eurasian Patent Attorney:

Following documents/ papers are requested in order to file in Eurasian application:

written request to file in application, description of invention, claims, abstract, graphical and other materials required for clarification of nature of invention (presented in three copies), written request for establishing the priority, verified copy of first application (verified by PTO it was filed in or by notary public. It is important to note, that verified copy of first application shall be presented in a matter of three months after Eurasian application was filed in. Also, it must be remembered that the receiving date of requested materials must be in limit of twelve months from the filing date of first application, otherwise an applicant may lose his priority), the document confirming the payment of official fee (it can be presented in a period of three months from the application receiving date by EPO) and Power of Attorney for authority delegation to Eurasian Patent Attorney (it can be filed in to EPO in two months’ time from the date of application filing).

3   The time-frame for handling formal expertise of Eurasian application is up to 2 months after its receipt by EPO. Being on this stage the applicant is able to introduce elaborations, additions and corrections to the material of Eurasian application as based on applicant’s personal initiative or according to request made by Eurasian Patent Organization. In this case the time frame for handling the formal expertize will get prolonged. Deadlines, provided by EPO for completion of each procedure cannot be less than 2 months or more than 4 months. If a negative decision was made by formal expertise to grant Eurasian patent to applicant, the applicant in three months’ time from the EPO decision posting date has a right to file in for the appeal. The appeal is processed and looked through by appeal expert’s board; the appeal decision is granted in 3 months’ period from the date of its receipt and verified by the President of EPO.

4   The Patent search is based on the claim of invention with consideration of invention’s description and drawings (if such is available). If the breach of unity of invention will be identified during the patent search procedure, the applicant will be acknowledged and offered to identify the invention based on which the search shall be conducted (the time limit for applicant to make up his mind and identify the invention is three months after the acknowledgement/ notification dispatch date). The Patent Search Report will be directed to applicant.

5   Publication of Eurasian application and report about patent search are performed after completion of 18 months from the date of application’s filling, if the priority was claimed from the date of priority or patent attorney has filed in petition prior indicated deadline dates. The publication includes: title page which contains bibliographical data, abstract, description of invention, claims and patent search report.

6   The petition about initiation of Eurasian application expertise (inclusive with official fee payment confirmation document) has to be filed in by applicant to EPO (must be filed in a matter of 6 months from the publication date, but if patent search report is published separately, then the point of 6 months’ period starts from patent search report publication date. However, if petition was not filed in defined time frame, the applicant still has two months to file it, but it subjected to provision of explanatory (reasonable excuse ‘Why did the applicant misses filing deadline?’) documents to EPO and payment of additional official fee. The applicant will be notified about receipt of petition by EPO in a matter of one month after its delivery to EPO. The date of notification postage by EPO, will be accounted as starting point for conducting the Eurasian application’s expertise.

Regarding to international applications, which get transformed to regional level, the applicant’s petition about initiation of Eurasian application expertise has to be filed in by applicant to EPO (must be filed in a matter of 6 months from the search report publication date, as international search report and its publication replaces the Eurasian search report and its publication).      

In the most of the cases the publication of international search report or declaration in correspondence with article 17 (2) (a) PCT performed subsequently with publication of international application, which gets published after 18 months from the international application’s conventional priority date (if such priority was claimed in application’s material) or from the international application’s filing date. Therefore, the petition about conducting the expertise based on international applications, which gets transformed to regional level in EPO (until completion of 21 months from the priority date- Chapter I, PCT), has to be filed in until completion of 24 months from the date of conventional priority or from the international application’s filing date. Based on the Rule 46 (1) of the Patent instruction this petition filing time restriction can be extended further for 2 months period, but it subjected to provision of explanatory (reasonable excuse ‘Why did the applicant misses filing deadline?’) documents to EPO and payment of additional official fee.

In case, if international application gets transformed to regional level in EPO in accordance with the Chapter II, PCT, after 31 months from the priority date or international application’s filing date, when the 6 months’ period given to file in the petition about conducting expertise procedure is actually passed over, the above mentioned petition must be submitted (subjected to additional official fees) when transformation of international application to regional level in EPO has taken a place (in accordance with rule 71 (2) of Patent instruction).

In summary, the petition about conducting expertise has to be filed in timeframe of six months from the date of publication of international search report (declaration in accordance with Article 17 (2) (a) PCT) by International Bureau or until the deadline defined in accordance with Articles 22 (3) and 39 (1)b PCT, depends on deadline which gets expired latest.

7     If the expertise of Eurasian application will detect the presence of identical inventions, with the same date of priority or filing date, then for applicants will be issued a single Eurasian patent (subjected to mutual agreement of applicants). In case, if applicants won’t come into agreement, the Eurasian patent won’t be issued.

8     Opposition (filed in by patent attorney) against of refusal decision of EPO to grant Eurasian patent must be filed in duration of three months from the date of refusal notification dispatch by EPO. The opposition is reviewed by the EPO board and it takes up to 4 months to produce a decision from the date of receipt of opposition notification. Patent attorney and applicant have a right to participate in opposition review.

9     Eurasian application may be recalled back by patent attorney based on the applicant’s petition which has to be delivered to EAHB prior to the Eurasian application’s publication date but not later than Eurasian patent registration date.   

Additional materials, based on expert’s request, must be presented by applicant to expertise in a period of 4 months from the date when the expert’s request was dispatched. This period can be prolonged further if applicant request so, but it is subjected to additional fee payment. If copies of materials which used to oppose Eurasian application requested by applicant in duration of 3 months period from the date of decision dispatch or application’s request dispatch, so the deadline for applicant’s response start counting from the dispatch date of copies of opposing materials

10 The publication of Eurasian patent will be made in duration of 6 months after the registration of Eurasian patent in the Register of Eurasian patents.

11 The patent issuance is initiated after payment of official fees in relation to this procedure. The official fee has to be paid in duration of 4 months from the date of EPO notification’s dispatch (about EPO readiness to issue a patent) to patent attorney. If official fees will not be paid in above mentioned timeframe, the applicant still can pay them in duration of next 2 months, but it will be subjected to additional delay fees payment. In case if official fees together with additional fees (fees for late submission if any) will not be paid, as a result the Eurasian patent issuance and publication will not be done by EPO. The application for Eurasian patent will be accounted invalid. The total time period from filing Eurasian application till getting Eurasian patent in average tafes from 1,5 till 3 years (based on practical experience)

12 The period of Eurasian patent being in power constitutes 20 years which starts from the date of Eurasian application filing, while the invention’s exclusive right starts from the Eurasian patent publication date. Eurasian patent experiencing legal power on the territory of all countries (members of Eurasian patent convention), subjected to annual payment of official fees to keep patent into power in territorial jurisdiction of countries-members. Mentioned fees are paid on annual basis after Eurasian patent being granted, the deadline payment date is fall annually on the date of filing of Eurasian application. For continuance of Eurasian patent’s power on the territory of each of the countries-members, the owner of the Eurasian patent shall point to the name of the country- member, where he would like to continue the Eurasian patent being in power. After Eurasian patent’s owner has defined in which countries-members he would like to extend the term of Eurasian patent, the legal patent rights of the owner will be regulated based on national legislation of those countries-members, by other word the unilateral Eurasian patent is get broken to the number of single national patents (based on the number of countries-members of Eurasian patent convention). The period for limitation of actions in cases where violation of Eurasian patent happens, constitutes 3 years and the starting point get counted from the date where the party get acknowledged or assumed being acknowledged about violation of its rights.  

20.01.2021, 25 просмотров.