On October 5 2017 the Russian Patent and Trademark Office (Rospatent) officially announced that expedited examination will be available for all applications. Rospatent had abrogated its former expedited examination practice in 2012. Since then, patent law has allowed accelerated examination through the Patent Prosecution Highway (PPH) system, but no expedited procedure has been in place for trademarks. Therefore, the annoucement is especially important for trademark practitioners.
Under the standard examination system, trademark registration typically takes about one year. However, as expedited examination offers a more flexible approach to trademark portfolio development and application prioritising, registration times are expected to halve.
Applicants must request an official search and pay a tariff. The search request must be made at least one day before an application is filed. The tariff varies from a minimum of $1,000 for simple word trademarks to $5,000 or more for combined trademarks.
Table 1. Extended version of tariffs
Expedited examination requests should be made by the applicant itself or by an appointed trademark attorney. The applicant or its representative must sign a contract for conducting expedited examination with Rospatent. An additional motion for an expedited examination is required after the application is submitted.
Compared to the standard examination system, expedited examination results are much quicker – the entire registration process for a straightforward case is expected to take around six months. The term is flexible and may be negotiated depending on applicants’ needs. For example, if an applicant wishes to cover trademark applications with a priority claim under the Paris Convention, the term may be longer.
Under the new expedited regime, trademark applications will remain subject to all formal and procedural requirements relating to registrability; restrictions are fully applicable to designations filed under the expedited procedure.
According to Rospatent, expedited registration has already been tested in practice.
While the re-launch of expedited examination presents a number of opportunities for varying the tactics of trademark registration, the system has obvious risks. In particular, the new rules could increase the risk of losing a trademark application with a six-month priority claim. Expedited examination also increases the need to pay closer attention to new third-party applications. One possible solution may be to monitor such applications and establish softer and shorter deadlines (three months) compared to the previously recommended six to eight months.
Implications for patent practice in Russia
The re-launch of expedited examination also affects patent practice. Under the new system, applicants can request to expedite the examination of their applications in respect of inventions, utility models and industrial designs. In contrast to the PPH system, fee-based expedited examination will apply to any application. Compliance with PPH requirements is unnecessary.
Table 2. Extended version of tariffs schedule including inventions, utility models and industrial designs
This article first appeared in IAM. For further information please visit www.IAM-media.com.