In recent times, the “BRIC countries” have increasingly contributed to the majority of the world’s gross domestic product growth. The BRIC countries are made up of Brazil, Russia, India, and China, and are distinguished by their large, fast-growing economies. A sound intellectual property strategy in the BRIC countries, therefore, is crucial for any company aiming to capitalize on such growth. Here are five ways to maximize the effectiveness of your company’s patent strategy in the BRIC countries.
1. File Utility Model Applications
Utility model applications can be used to protect improvements related to the shape or structure of a product in Brazil, China, and Russia. Priority can be based on traditional patent applications filed in other countries, and the same priority rules apply as when filing a traditional patent application. Utility model applications are much less expensive to file, prosecute, and maintain, and are granted much more quickly than traditional patent applications.
In China and Russia, utility models are granted after formalities are approved without substantive examination. Substantive examination takes place if and when a utility model is challenged. In China, if formal requirements are met, a utility model will be granted four to five months after submitting a request for examination. In Russia, utility models are normally granted in four to six months from filing. In Brazil, utility models are substantively examined but still go through the Brazilian patent system two years faster than traditional patent applications.
While utility models require a level of inventiveness that is lower than a traditional patent, the protection they provide is not as strong as traditional patents. Also, the duration of protection is shorter; in Brazil, the duration of protection is 15 years from the priority date; in China, it is 10 years; in Russia, it is up to 13 years. Therefore, while the advantages of utility models are many, it is often desirable to protect an invention with a traditional patent when possible. However, because of double-patenting rules, the same invention cannot be protected by both a traditional patent and by a utility model.
One effective strategy is to file a traditional patent concurrently with a utility model. If and when the traditional patent application is granted, the utility model can be surrendered. If your invention is being practiced by others in Brazil, China, or Russia, this strategy can be extremely advantageous, as a utility model can be granted and enforced years before a traditional patent is granted.
2. Request Examination of Patent Applications as Soon as Possible in Brazil
Or at least don’t file a traditional patent application in Brazil if the market cycle of your product is less than eight years.
Brazil has a significant backlog of unexamined applications. The backlog can cause delays of up to six or seven years after examination has been requested to obtain a first office action. Examination may be requested in Brazil 60 days after publication, which occurs 18 months from the priority date. Therefore, when filing in Brazil through a PCT application, enter the national phase early and request examination ASAP, since an application does not even enter the examination queue until examination has been requested.
3. Instead of Filing a Patent Application in Russia, Consider Filing in Eurasia
It is more expensive to file a patent application in Eurasia than in Russia alone, but if you also have an interest in protecting your invention in Eastern Europe, then filing a Eurasian patent application is your best bet.
A Eurasian patent provides protection in all “Contracting States” of the Eurasian Patent Convention. Contracting states include Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, the Russian Federation, Tajikistan, and Turkmenistan. A Eurasian Patent normally can be obtained more quickly than a national patent in any of the contracting states. Average total duration of the examination is about 12 months. After the issue fee is paid, it takes four to five months to receive the Letters Patent.
Unlike a European patent granted by the European Patent Office, a granted Eurasian patent is not validated into a bundle of national patents, but is a single patent. A Eurasian patent is equivalent to a national patent in each contracting state for all practical purposes. For example, a Eurasian patent can be enforced in Russia absolutely the same way as a Russian patent. However, a granted Eurasian patent is maintained in each contracting state by paying an annual maintenance fee to the Eurasian Patent Office for each state. If a patent owner does not pay a maintenance fee due in a particular country, the patent becomes invalid in that country.
4. Carefully Follow the Unique Procedural Requirements in India
Under Section 8(1) of the Indian Patent Act, a patent applicant must provide a statement disclosing the detailed particulars of any application filed outside India and corresponding to its Indian patent application. Details such as names of countries, application numbers, and filing dates—including developments in the application such as acceptance, withdrawal, abandonment, or grant—must be disclosed to the Controller General of Patents Design and Trademarks initially within six months of the Indian filing date and continuously updated up to the grant of the Indian patent. Under Section 8(2), the controller can require an applicant to provide details, such as claims allowed in foreign countries in search and/or examination reports. In practice, the controller normally requests these details for offices such as the USPTO, EPO, and JPO. Non-compliance with Section 8 is a ground for pre-grant and post-grant oppositions, and also for revocation of the granted patent.
Many countries have regulations associated with “working” a patented invention, but India’s laws seem to be the most onerous. “Working” of a patent means that the patented product is being manufactured and sold in India, or the process for which a patent has been granted is being exercised in India. A “statement of working” must be submitted to inform the controller whether or not, and to what extent, the patent is being worked in India. The filing of a statement of working is a statutory requirement in India and must be observed for every granted live patent, irrespective of whether or not a patent is being worked in India. Failure to file a statement of working does not result in the patent lapsing or being revoked, but rather makes the patentee liable for a fine of up to one million rupees, about US$18,000.
5. Initiate Patent Infringement Actions Quickly
The results of enforcement actions are inconsistent in China, India, and Russia, and damage awards are typically low. Therefore it is particularly important to seek injunctive relief as soon as infringement is detected.
In China’s two-tiered system of enforcement, a patent infringement action can be brought before an Administrative Authority or pursued in court. An enforcement action brought before an Administrative Authority is inexpensive and quick, and a preliminary injunction may be obtained within 48 hours of application with the posting of a bond. However, monetary damages may not be sought in an administration proceeding. Even when pursuing an infringement action in Chinese courts, there is a two-year statute of limitations on damages, so it makes sense to take action soon after infringement is detected.
Similarly, in India, because injunctions are available and damages awards are low, it is advantageous to bring infringement actions before actual damages grow large.
In Russia, damage awards are generally less than the actual damages and preliminary injunctions are rarely awarded, so it pays to initiate enforcement proceedings quickly. Russian courts handle patent infringement cases quickly, and an enforceable decision can be obtained in four to seven months. Final judgments on injunctions are usually executed by a separate federal service of court enforcement officers, which enjoys a broad range of enforcement tools.