Applying for a patent
What are the criteria for patentability in your jurisdiction?
The Eurasian Patent Organisation (EAPO) grants a Eurasian patent for any invention that is new, involves an inventive step and is industrially applicable. The essential criteria do not differ from those used in most advanced patent offices worldwide.
What are the limits on patentability?
The following cannot be patented (if claimed per se):
- scientific theories and mathematical methods;
- presentations of information;
- methods of economic organisation and management;
- symbols, schedules and rules, including game rules;
- methods for performing mental acts;
- algorithms and computer programs;
- projects and plans for structures, buildings and land development; and
- solutions concerning solely the outward appearance of products and aimed at satisfying aesthetic requirements.
To what extent can inventions covering software be patented?
Software (ie, a computer program) is not patentable if claimed per se. However, a storage medium comprising a program (instructions) expressed as a set of actions executable by an apparatus/system when executing the program and which achieves a technical result is patentable. Also, a computer program may be expressed as a method with a set of such actions.
To what extent can inventions covering business methods be patented?
Business methods are not patentable per se. However, if they are described as a set of operations implemented by technical means and intended to achieve a technical result, a patent may be obtained.
To what extent can inventions relating to stem cells be patented?
There are no direct restrictions on patenting stem cells. However, such inventions could be considered contrary to moral principles (eg, solutions relating to human embryonic stem cells, for modifying the human germ line genetic identity or using human embryos for industrial or commercial purposes).
Are there restrictions on any other kinds of invention?
A patent will not be granted for:
- plant varieties and animal breeds;
- topology of integrated circuits; and
- inventions whose commercial use would be contrary to public order or morality, or the wellbeing and health of people, animals and plants, or could cause serious damage to the environment.
Does your jurisdiction have a grace period? If so, how does it work?
Under the Eurasian Patent Regulations, public disclosure of information relating to an invention does not affect the invention’s patentability if disclosure is made within six months before the application filing date or priority date, and by the inventor, applicant or any person who directly or indirectly received the information from the inventor or applicant.
The priority of an invention may be determined according to the date on which the product containing the invention begins to be openly displayed at an official or officially recognised international exhibition, organised in the territory of any state party to the Paris Convention for the Protection of Industrial Property, provided that the invention is disclosed in the product exhibited and the Eurasian application for this invention is filed at the latest within six months of the date in question.
What types of patent opposition procedure are available in your jurisdiction?
There are two procedures available under the Eurasian Patent Convention – the administrative revocation (opposition) of a Eurasian patent before the EAPO and invalidation of a granted Eurasian patent under the national law of a particular contracting state.
Under the administrative revocation, any interested party can submit a notice of opposition within six months from the date of publication of information on the grant of the Eurasian patent. The patent may be administratively revoked either entirely or in part in the following cases (applies to patents granted from applications filed from 1 October 2017):
- The invention does not meet the patentability requirements.
- The claims include features that did not appear in the Eurasian patent application as originally filed.
- The application documents do not meet the disclosure requirements as established by the Eurasian legislation.
The EAPO should consider the opposition notice within six months of its filing. The administrative revocation procedure may result in a decision to revoke the Eurasian patent, reject the notice of opposition, or correct or amend the Eurasian patent. The EAPO’s decision can be appealed within four months from the date of its issue. The appeal is to be submitted to the president of the EAPO. The president’s decision is final. The special commission for processing oppositions was established in 2011. From 2011 until the end of 2017, the EAPO received and processed only 16 oppositions against granted Eurasian patents. According to the EAPO website:
- seven oppositions were upheld and the opposed Eurasian patents were revoked;
- the claims of three Eurasian patents were amended; and
- six oppositions were rejected (according to the EAPO Annual 2017 Report).
Another option is filing an invalidation action against the Eurasian patent in each contracting state under the respective national legislations and procedures. In addition, if the term of a patent is extended for any of the contracting states, any party may challenge the validity of the patent term extension by filing an appeal with the EAPO, at any time during the extension term. The decision may be further appealed by filing a request with the president of the EAPO within four months from the date on which the decision was issued. The president’s decision is final.
Apart from oppositions, are there any other ways to challenge a patent outside the courts?
There are no other administrative proceedings to invalidate a Eurasian patent in all contracting states simultaneously.
However, a Eurasian patent can be challenged in accordance with the national legislation in each contracting state where the patent is valid. In any contracting state, the invalidation action should first be filed with the appellate body of the local patent office (eg, the Chamber of Patent Disputes (CPD) of the Russian Patent and Trademark Office; the Appeal Counsel in Belarus, Azerbaijan and Kyrgyzstan; or the Appeal Commission in Turkmenistan). To contest the appellate body decision, a party to the proceeding can file an appeal only with the relevant court (there are specialised IP bodies in certain countries – eg, the IP Court in Russia and the Chamber for IP Cases of the Supreme Court in Belarus).
According to the Russian CPD’s web portal, it has received 78 invalidation actions, 21 of which were revoked. Consideration of the remaining 57 actions resulted in invalidation of 23 Eurasian patents in Russia; the claims of 11 Eurasian patents were amended; and 23 invalidation actions were rejected.
The practice in other contracting states is rather scarce. For instance, the Appeal Counsel of the Belarus Patent and Trademark Office received and processed only one invalidation action against a patent in 2016 (according to its website). It is unclear whether it was a national or Eurasian patent, but this figure shows that patent invalidation actions in certain contracting states are infrequent. The same applies to Kyrgyzstan – according to the Appeal Counsel web portal, in 2018 the counsel received five appeals against decisions of the local IP office (mainly trademarks) and no patent invalidation actions.
How can patent office decisions be appealed in your jurisdiction?
EAPO decisions to refuse an application, as well as decisions on an applicant’s request filed during prosecution, can be appealed. An appeal may be filed before the EAPO within three months from the date of receipt of the refusal decision or within three months from the date on which the decision on the applicant’s request was issued. An appellate body decision may be further challenged by filing an appeal with the EAPO president within four months from the date on which the decision was issued. The president’s decision is final and cannot be further challenged before the EAPO or in court.
Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?
In practice, a patent is usually granted within two-and-a-half to three years from the filing date. However, the Eurasian Patent Convention does not set deadlines for the various stages of the examination process or for the total duration of the process of examination. In addition, the term for filing a response to an office action may be extended for an unlimited number of times, provided that the related fee is paid (the fee increases for each month of extension).
The official fees depend on the number of claims. For example, the official fees for obtaining a patent with one independent and four dependent claims would amount to approximately $1,200 (without the first annuities or any amendments made during the prosecution). In practice, this amount could be higher due to office actions (up to five to eight actions on the average can be expected), which usually require introducing amendments and incur additional official fees (approximately $125 per requested amendment). Translation costs also must be considered. Applicants are advised to obtain