innovatewebbanner2

Innovate Magazine

Innovate is a special compendium of articles written by and for AIPLA members. Designed as an online publication, INNOVATE features magazine-like articles of 500-1,500 words in length on a wide variety of topics in IP law today.

Any current AIPLA member in good standing may submit an article for inclusion in INNOVATE throughout the year. IP law students, in particular, are strongly encouraged to submit articles for publication. 

An ad-hoc sub-committee comprised of volunteers from AIPLA's Special Committee on Publications, the Fellows Committee, and others will review and edit submitted articles prior to publication. 

You can review the Guidelines for Article Submission then email your article to innovate@aipla.org for consideration.

Don't miss this opportunity to be recognized by your peers as a thought leader! 

 

Submit your article to innovate@aipla.org. The deadline for submissions is November 25th, 2019.

 

 

 

PCT National Phase Steps in the Russian-Speaking Region

Most companies with an international patent portfolio have to consider protecting their patents in the so-called “Russian-speaking” region, namely in Russia, Ukraine and other post-Soviet countries, these markets being of interest for nearly all businesses which operate globally. However, it is not rare for foreign applicants to be unfamiliar with basic prosecution steps in this region, due to a language barrier, a lack of clear information readily available online, or their local counsel’s incomplete advice. This is why we will try to elucidate a few general prosecution do’s and don’ts before the Ukrainian and Russian PTOs and before the Eurasian Patent Office (EAPO), as it provides an alternative way to obtain patent protection in Russia and in other post-Soviet countries, such as Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Turkmenistan.

Because the majority of patent applications filed in Russia and Ukraine are filings of national and regional phases under the Patent Cooperation Treaty (PCT), we will focus on national and regional phases of a PCT application in these jurisdictions and before the EAPO.

Filing Date

According to the laws of Ukraine, Russia and the EAPO, a PCT application should enter the national/regional phase within 31 months from the international filing date, or, if the PCT application claims international priority, 31 months from the priority date. Nevertheless, if the PCT application is filed e.g. a month before the calculated deadline for entry into the national phase, the Ukrainian, Russian or Eurasian Patent Office will not consider the application before that date.

If, for some reason, the applicant needs the filing date to be prior to the calculated deadline for entry into the national phase, or if they wish to have the application considered without delay, the law allows this at no additional cost. The easiest way to request this is in Russia – the application form contains a special field for requesting earlier consideration of the application, which the applicant’s local representative should simply mark. In Ukraine and before the EAPO, applicants must file a separate request. If earlier consideration is requested, all the documents required for the PCT national stage entry should be submitted to the PTO along with the request.

Filing a Power of Attorney

A power of attorney (PoA), particularly its original, is strictly required by the Ukrainian PTO. If the PoA is not filed by the calculated deadline for entry into the national phase, the PTO will issue an Office action. The PoA must then be filed within two months from the Office action receipt date.

In Russia and before the EAPO, it is not obligatory to submit a PoA. The application will be accepted and considered without it. However, a PoA might be requested, which is why it is preferable to have it ready for filing.

No notarization or legalization is required for patent prosecution PoA forms in any of these jurisdictions.

Filing Translations

One of the most expensive parts of foreign filing is the translation, and there is sometimes no time to prepare it by the required date.

In Ukraine, a translation of the PCT application should be submitted by the calculated deadline for entry into the national phase. If the translation is not completed by this date, the applicant must request an extension of term and pay the official fee, which will give them two additional months to file the translation.

In Russia, it is somewhat easier. If the translation is not filed along with the other documents required for the national phase entry on the filing date of the application, it is possible to submit it at any time before formal examination ends and before the translation is requested by the PTO itself. Even in case of an Office action on this basis, a response is only due within two months.

The EAPO makes it even easier – the translation can be filed within two months from the calculated deadline for entry into the regional phase. Applicants can also request a two-month extension of this term, which comes at a cost of an official fee.

Amendments When Entering the National Phase Stage

Occasionally, applicants would like to incorporate amendments when entering the national phase of their PCT application, after the international phase and when the International Search Report and/or the International Preliminary Report on Patentability is already available.

In Ukraine, the national phase application should be filed as published by the World Intellectual Property Organization (WIPO). Amendments can be requested at the moment of entering the national phase in Ukraine, but applicants must pay the official filing fee based on the number of claims of the WIPO publication. Because of this, it is not possible to reduce costs by simply reducing the number of claims at the time of entering the national phase. If the amendments result in an increased number of claims, the PTO will request the applicant to pay a fee for the additional claims. Therefore, if the applicant would like to reduce the number of claims in order to reduce filing fees, it is better to do so in the PCT international phase, and then simply file the amended materials while entering the national phase in Ukraine.

Again, Russia and the EAPO have somewhat simpler procedures. Amendments can be made when entering the national/regional phase and the official fees are paid only for the new set of claims. Russian legislation requires applicants to file an explanation of the incorporated amendments (e.g. whether a new claim was formed from an old claim, or where the examiner can find support for this new claim in the specification).

The EAPO allows amendments to be made within two months from the application date without payment of an additional fee.

Multiple Dependent Claims

Both the Ukrainian PTO and the EAPO allow multiple dependent claims, for which there is no extra fee.

Several years ago, the Russian PTO did not allow multiple dependent claims, and applicants were required to amend claims before substantive examination began in order to avoid an Office action.

For instance, if a set of claims was drafted as:

  1. An apparatus consisting of….
  2. The apparatus of claim 1…
  3. The apparatus of any of claims 1 to 2…
  4. The apparatus of claim 3…
  5. The apparatus of any of claims 3 to 4…
  6. The apparatus of any of claims 3 to 5…
  7. The apparatus of any of claims 2 to 6…



it would be advisable to redraft the claims as follows:

  1. An apparatus consisting of…
  2. The apparatus of claim 1…
  3. The apparatus of any of claims 1 to 2…
  4. The apparatus of claim 3…
  5. The apparatus of claim 4
  6. The apparatus of claim 3…
  7. The apparatus of claim 2, 4, or 6…



Now, however, the Russian PTO allows multiple dependent claims if they do not result in many feature combinations, which would make it difficult to identify the scope of protection and the achievement of the claimed technical result. At the same time, if a dependent claim refers to several other dependent claims, it would be allowed only if the dependency were expressed as an alternative (by using “or”, “one of claims” etc., and if no other claims are dependent on this claim; this could be allowed if clarity is maintained).

At the filing stage there will therefore be no questions regarding multiple dependency. During the substantive examination, questions will arise in case the examiner finds the combination of claims difficult to analyze, or if they don’t find all the possible variants of claim combinations to be sufficiently supported in the specification. The Russian PTO does not charge an extra fee for multiple dependent claims either.

Here is an example of the allowed set of claims with multiple dependency:

  1. A panel consisting of…
  2. The panel of claim 1…
  3. The panel of one of claims 1 to 2…
  4. The panel of one of claims 1 to 3…
  5. The panel of one of claims 1 to 4…
  6. The panel of one of claims 1 to 5…



Apart from the filing stage, contrary to the European Patent practice, it is worth noting that the Ukrainian, Russian and Eurasian PTOs consider methods of medical treatment claims acceptable.

While each jurisdiction has its own particularities, which seemingly complicates prosecution in this region, it is in fact quite feasible to go through this process smoothly, as long as the right information and the right advice is available at the right time. The better prepared one is, the less time one will need to obtain patent protection, and this is true for all jurisdictions.



Olga Kudoyar is a Patent Consultant in the PETOŠEVIĆ Ukraine office. Olga coordinates patent prosecution in Ukraine, Russia and the Russian-speaking region, as well as before the Eurasian Patent Office. She conducts searches, translates patent documents and assists in preparing patent applications and responses to office actions. She has a background in biotechnology, which is an advantage when handling patent applications for clients from pharmaceutical, food, agriculture and related industries.

Slobodan Petošević is PETOŠEVIĆ Group founder, Chairman and CEO. With more than 30 years of experience in IP, Slobodan has built a successful network of boutique, full-service IP firms throughout Eastern Europe and the former Soviet Union and has significantly contributed to the development of the IP profession in the region. Slobodan’s practice ranges through all areas of IP and currently concentrates on IP related contentious and negotiating strategies, innovative IP rights prosecution strategies, strategic brand development, enforcement of IP rights in general, and copyright law. 

 

 

Please login to see the content.
Register now

Patent Seekers

CPI