Patents in Eurasia

Applying for a patent

Patentability

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):

• discoveries;
• 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.

Grace period

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.

Oppositions

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 accurate cost estimates from the patent attorneys handling the prosecution of their applications.

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

There is no unified procedure to enforce a Eurasian patent and no unified court for considering related disputes. Disputes and infringement matters are considered in each contracting state separately, following the local legislation and practice. Both the legislation and practice vary from country to country. In most contracting states, patent enforcement cases are infrequent. Some countries (eg, Russia) require sending a cease and desist letter before bringing the case before the court (if damages are requested). Patent owners can consider administrative and criminal proceedings (under the Code on Administrative Offences and the Criminal Code, respectively) if provided for by the local legislation of the relevant contracting state.

What scope is there for forum selection?

Because there is no unified enforcement procedure and no unified forum for resolving disputes, forum selection is limited to each contracting state under the local legislation and practice.

Usually, depending on the character of the dispute and legal status of the parties (claimant and defendant), a case will be considered by a commercial court or a court of general jurisdiction. All disputes between legal entities and/or sole proprietors, and appeals against patent office decisions (including decisions of the appellate bodies), are considered by commercial courts. But invention authorship disputes, for instance, are considered by courts of general jurisdiction.

In some jurisdictions, patent infringement cases can be considered by administrative bodies for the protection of competition (eg, in Russia and Belarus). Decisions of these bodies can be appealed before commercial courts.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

Collecting evidence of infringement (ie, making trap purchases) is the first recommended step, followed by analysis of the purchased samples and collecting information on the infringer and the infringing product from public sources (eg, state registers, official publications and relevant state bodies). An inspection of the infringer’s premises in the presence of a notary public, or the infringer’s website printout notarisation, would be the next step. Although in most jurisdictions sending a cease and desist letter is not obligatory, the letter can always be sent to the alleged infringer. Russian law mandates the sending of a cease and desist letter if a patent owner intends to claim statutory damages. The claim can be filed with the court within 30 days of sending the letter, provided that the alleged infringer has not met the request of the injured party or has done so only partially.

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Court practice varies from country to country, but there are some commonalities. For example, a defendant can, to some extent:

• evade receipt of the court’s notification of the hearing date;
• fail to appear before the court due to health issues (proof should be provided in the form of a medical certificate);
• request to postpone or suspend hearings in order to study documents; or
• file counterclaims.

Being well informed and undertaking a proper and thorough investigation of the infringer is the best way to prepare and anticipate its moves.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Under the contracting states’ legislations, an invalidation action against a Eurasian patent can be filed with the appellate body of the local patent office. Consideration of the invalidation action could take from six to 12 months. The courts may take into account the pending invalidation action and even stay the proceedings in the infringement action; however, this is unlikely to happen in practice.

At trial

What level of expertise can a patent owner expect from the courts?

It largely depends on the jurisdiction in question. In countries where specialised IP courts have been established (eg, the IP Court in Russia or the Chamber for IP Cases of the Supreme Court in Belarus), the level of expertise is generally higher, despite the fact that the judges have only a legal (rather than technical) background. Consequently, when considering patent disputes, they often rely on experts’ opinions. The parties (usually claimants) are required to prove infringement, which is usually substantiated by a court expert’s opinion. Clearly, authorised court experts play an important role and should be chosen carefully, where possible.

Are cases decided by one judge, a panel of judges or a jury?

It depends on the country and the court instance, but in most jurisdictions it is a single judge in the first instance and a panel of judges at higher instances.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials for such disputes do not exist in these countries.

What role can and do expert witnesses play in proceedings?

Expert witnesses play a vital role because judges are mostly lawyers who usually possess no particular knowledge or expertise in scientific or technical fields. A court decision must be based on the opinion of a certified expert.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Not all of the countries involved provide for a doctrine of equivalents when evaluating infringement. In accordance with Rule 12 of the Patent Regulations under the Eurasian Patent Convention, a set of claims defines the scope of protection of the Eurasian patent. Due account should be taken of every feature of the invention included in the independent claim and in cases provided for under the national legislation of a contracting state, and of features equivalent thereto.

For example, based on available case law and what can be seen prima facie from the local laws, the doctrine of equivalents can be applied in Russia, Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Turkmenistan, but seemingly not in Armenia or Azerbaijan.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

In most contracting states it is a struggle, in practice, to obtain preliminary injunctions, even when preliminary injunctions are clearly provided for by the local law. Judges are often hesitant to accept the responsibility linked with injunctive relief and prefer to remain neutral, avoiding steps that may be seen as too radical. This situation will change in the future, with more case law helping to establish a sound practice.

How are issues around infringement and validity treated in your jurisdiction?

Patent infringement and validity cases are usually complex, so it takes time and effort to prove one’s position before the state bodies reviewing the matter. Patent invalidation and enforcement actions are not particularly frequent in most contracting states. More case law is needed in order to establish stable patterns.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

There is no simple answer to this question. The Russian courts and administrative bodies are hesitant to officially consider decisions from other jurisdictions. Other contracting states of the Eurasian Patent Convention are more likely to take into account decisions of the Russian courts, rather than those from other jurisdictions. That said, decisions in other jurisdictions concerning the same invention should always be brought to the attention of the court.

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, costs can be requested and approved by the court.

For example, in Kyrgyzstan a patentee can:

• claim damages;
• collect income received by an infringer instead of the compensation for losses;
• claim statutory damages within the range of Kyrgyzstan’s 10 to 50,000 minimum monthly wages (the specific amount is to be determined by a court) instead of compensation for damages or collecting income; or
• seize for its benefit the patent-infringing products being introduced into the market or stored for this purpose.

In Russia a patent owner can:

• claim damages;
• claim statutory damages (from Rb10,000 to Rb5 million); or
• receive a lump-sum payment which is twice the amount that the alleged infringer would have paid if it had been authorised to use the infringed right.

However, the collection of damages can be problematic. It often happens that the defendant closes one company and establishes another one.

What are the typical remedies granted to a successful plaintiff?

The typical remedies can include either compensation for losses, statutory damages or lump-sum payments. Apart from this, a successful plaintiff can benefit from the confiscation and destruction of infringing products and/or equipment used to manufacture the products. In some jurisdictions, a successful plaintiff can request publication of the court decision in newspapers.

How are damages awards calculated? Are punitive damages available?

It depends on the local law and practice, but typically damages must be substantiated with proof, which is difficult in most cases because a patent owner should prove or demonstrate a connection or association between the defendant’s activities and the patent owner’s damages. This is why claiming statutory damages is a more convenient option, provided that they are stipulated by the local laws (eg, as they are in Russia and Kyrgyzstan). However, the plaintiff should still substantiate the claim with evidence proving the extent of damages and the court can decrease or increase the final amount depending on the circumstances of infringement.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are common in successful patent enforcement lawsuits. A permanent injunction is issued where it is proved that the defendant’s product infringes the plaintiff’s patent.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

It depends on the laws of each contracting state, but typically proceedings at the first instance take a minimum of three months (and up to nine to 12 months) because of their complexity and the evaluation by court experts, which could consume three to four months in itself.

How much should a litigant plan to pay to take a case through to a first-instance decision?

The official and attorneys’ fees, as well as other costs (eg, translations and court expertise), depend on the jurisdiction and the complexity of the case. The average cost per jurisdiction should range from $20,000 to $50,000 or more. Where there is simultaneous litigation in several jurisdictions, the average cost per jurisdiction would likely decrease, since the legal systems are similar and the Russian language is widely applicable across the region. A more accurate estimate should be obtained in each particular case – the amount stated here is merely for orientation purposes.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

In all contracting states the losing party can appeal the decision of the first-instance court. The appeal proceedings will take two to six months, depending on the jurisdiction.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

IP mediation is available (eg, in Russia the IP Court promotes and practises mediation), as is arbitration if the parties agree to bring the case before a special arbitral panel – although this is uncommon.

By Ivan Nagornykh, Eurasian Patent Attorney at PETOŠEVIĆ Russia and Tatyana Kulikova, Head of Office at PETOŠEVIĆ Russia and Belarus

This patent guide first appeared on Lexology.