MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

PATENT OFFICE PROCEEDINGS

Patent in Russia | Frequently Asked Questions
1.  Patenting timetable and costs
2.  Expedited patent prosecution
3.  Patent application contents
4.  Prior art disclosure obligations
5.  Pursuit of additional claims
6.  Patent office appeals
7.  Oppositions or protests to patents
8.  Priority of invention
9.  Modification and re-examination of patents
10.  Patent duration




How long does it typically take, and how much does it typically cost, to obtain a patent?

The procedure of invention registration lasts approximately two years, but it may take up to about five years to obtain an invention patent in Russia in case examination is deferred and considering time required to filing responses to possible Office Actions.

Official fees in Russia depend on the number of claims in the application and the number of independent claims. The official filing fee in Russia is fixed for the first 25 claims. The official filing fee for extra claims starts from the 26th claim and each further claim. The official examination fee should be paid for each independent claim, with a discount being available for applications that are national phases of PCT applications, in respect of which the International Search Report was established. The official grant fee is fixed for any application.

The minimum official fees associated with filing a patent application up to grant in Russia for a national phase PCT application are only about 100 EUR (about 120 USD).

Payment of annuities is not stipulated for pending applications, the first annuities for a patent starting from the third year till the year when the grant decision is issued are paid simultaneously with payment of the official grant fee. All subsequent annuities are counted starting from the filing date and are paid before the beginning of the next year. A missed payment is payable within six months after the due date provided that a 50 per cent fine is paid.

The cost of services of a professional patent attorney and the cost of preparing the Russian translation of the application required for prosecution are additionally incurred.





Are there any procedures to expedite patent prosecution?

It is not possible to expedite patent prosecution according to a separate national procedure, however, it is possible to request the accelerated patent prosecution according to the Patent Prosecution Highway (PPH) programme. At the present time, Russia has signed mutual PPH agreements with China, Denmark, Finland, Japan, Korea, Spain, Portugal and the United States. No separate official fee is stipulated for requesting accelerated patent prosecution according to the PPH programme. However, it is necessary to provide a number of additional documents.





What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

An application for the grant of a patent for an invention shall relate to one invention or to a group of inventions so linked as to form a single inventive concept (requirement of unity of the invention).

An application for an invention shall contain:

  • a description of the invention, disclosing it in sufficient detail for it to be carried out;
  • claims stating its essential features and fully supported by a description;
  • drawings and other materials, if they are necessary for understanding the essence of the invention;
  • an abstract.




Must an inventor disclose prior art to the patent office examiner?

The applicant is not obliged to disclose prior art, although it may be cited in the corresponding description section of the application.





May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Additional claims disclosed in an earlier application may be protected by filing divisional applications. Divisional applications can be filed before registration of a patent on the parent application or before the possibility of filing an appeal against the refusal to grant a patent on a parent application is exhausted. The content of the divisional application shall not go beyond the scope of the parent application.





Is it possible to appeal an adverse decision by the patent office in a court of law?

A decision of refusal to grant a patent for an invention may be opposed by the applicant by submitting an opposition to the Chamber for Patent Disputes within seven months from the date of forwarding of the decision or of receipt of copies of materials referred to in the decision on refusal of the grant of a patent. The decision of the Chamber of Patent Disputes enters into force from the date of approval thereof. It may be in turn contested in the Court for Intellectual Property Rights.

The Court for Intellectual Property Rights considers disputes relating to the protection of intellectual property rights as a court of first instance and cassation instance. Cases of this category are considered by the Court regardless of whether the parties are organisations, individual entrepreneurs or citizens.





Does the patent office provide any mechanism for opposing the grant of a patent?

A decision to grant a patent for an invention may be opposed by the applicant by submitting an opposition to the Chamber for Patent Disputes within seven months from the date of forwarding of the decision. The decision of the Chamber of Patent Disputes enters into force from the date of approval. It may be contested by judicial procedure.

The grant of a patent for an invention may be also opposed at any time during its validity or after expiration of the validity term by submission of an opposition to the Chamber for Patent Disputes by any person who has become aware of the following violations:

  • failure of the invention to meet the requirements of patentability;
  • incompliance of the initially filed application documents with the requirement of disclosure of the essence of the invention in a scope sufficient for implementation of the invention by a skilled person;
  • the claims for the invention cited in the decision to grant the patent contain features that were missing on the filing date of the application, in the description of the invention or in the claims of the invention;
  • grant of a patent in the case of several applications for identical inventions having the same priority date in breach of the conditions provided by the law.

The grant of a patent for an invention may be opposed by judicial procedure by any person who has become aware of grant of a patent listing as the author or patent holder of a person who is not the author or patent holder or without indication as to the author or patent holder.





Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The first-to-file system is adopted under the Russian patent system. Namely, where an invention has been made independently by two or more persons at the same time, the right to a patent will belong to the person who files the first application or who can claim an earlier priority date.

According to the Russian Civil Code, in the event that the examination process reveals that several applicants have filed applications for identical inventions and that these applications have the same priority date, a patent for the invention shall be granted only for one of these applications, namely, to the person determined by agreement among the applicants.

Within 12 months from the date of receipt from the federal executive authority for intellectual property of the respective notification, the applicants should inform the federal agency of the agreement reached among them. Upon the grant of the patent on one of the applications, all the authors indicated in the applications shall be recognised as the co-authors with respect to identical inventions. If the aforementioned communication or request for extending the established time period fails to be received from the applicants within the established time period by the federal executive authority for intellectual property the applications shall be considered as withdrawn.





Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

According to Article 1398 of the Civil Code of the Russian Federation, a patent for invention may be revoked as a whole or in part at any time during the validity of the patent. For this purpose, an opposition with the reasons for invalidation of a patent is filed with the Chamber of Patent Disputes. During opposition procedure the Chamber of Patent Disputes may suggest modifying a set of claims of the granted patent. In this case, the final decision of the Chamber of Patent Disputes will be taken with consideration of an additional informational search. Also, during opposition procedure the patent owner has a right to file a request for conversion of the patent for an invention into a patent for a utility model, if the validity term of the patent for an invention has not exceeded the stipulated validity term for a patent for a utility model.

Meanwhile, it should be noted that patent claims cannot be modified during a lawsuit.





How is the duration of patent protection determined?

The maximum duration of a patent is 20 years counting from the filing date. Meanwhile, according to Russian legislation, the patent with an object relating to medication, a pesticide or an agrochemical, the use of which requires duly granted permission of the competent authorities, may be extended. Maximum duration of a supplementary protection certificate is five years. The request for the term extension should be filed within six months from obtaining the first permission from the relevant authorities or issuance of the patent, depending on which term comes last.


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Moscow, 123290

Russia

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