EAPO Amends Patent Regulations under the Eurasian Patent Convention

Significant amendments to Patent Regulations under the Eurasian Patent Convention entered into force on January 1, 2021. The amendments relate to the right of priority, the Eurasian patent term extension, formal and substantive examination and patent search procedures, while they also clarify certain other issues. On April 24, 2021, further amendments to the Regulations entered into force, mostly concerning formal changes and requirements for Eurasian patent attorneys.

A detailed review of the most important amendments is provided below. In our view, the amendments concerning the sufficiency of disclosure and the industrial applicability requirements are the most significant as they may strengthen the position of Eurasian patent holders in invalidation actions against their patents in Russia.

Right of Priority

The requirements for restoring the right of priority have been clarified. The Eurasian Patent Office (EAPO), which acts as the receiving office for international patent applications, now applies the “unintentional” criterion. Applicants may file a request to restore the right of priority within two months from the priority period expiration date. While the reasons for the failure to file an international application within the priority period previously had to be filed along with the Eurasian application, applicants can now provide these reasons after filing the application either (i) along with the request to restore the right of priority or (ii) after filing this request and within the time limits indicated in the notification from the EAPO. The official fee for making this request is EUR 178 (USD 218).

Term Extension

Extending the patent term is now only possible with respect to claims related to a product and its use. According to the amendments, a Eurasian patent term can be extended only if the extension applies to the invention related (i) to the product protected by the Eurasian patent, the use of which has been permitted by the authority of the relevant Contracting State, and (ii) to the use of that product specified in this permission.

Claim Drafting

Two amendments have been made to claim drafting requirements:

• Indications such as “pharmaceutical” or “therapeutic” can now be used as generic terms reflecting the purpose of inventions relating to medical products;

• Product-by-process claims are now allowed – it is now possible to protect a product through the process by which it is obtained, provided that the product has new or enhanced characteristics due to this process. Product-by-process claims must include both the process and the product characteristics which distinguish this product from those obtained by other methods known in the prior art.

Formal Examination

According to the amended Regulations, the following additional aspects will be checked by the EAPO during the formal examination:

• Representation according to Rule 30 of the Regulations;
• Establishment of the Eurasian application filing date according to Rule 33 of the Regulations; and
• Priority claim according to the amended Rule 6 of the Regulations.

The EAPO used to check if the subject matter is not patentable according to Rule 3(3) of the Regulations, but now this part of the examination has been excluded. Therefore, applications covering non-patentable inventions cannot be rejected during the formal examination. Instead, non-patentable subject matter will merely be excluded from patent search, which will be specified in the patent search report. The patent search report may be replaced with a declaration stating that it is impossible to carry out a meaningful search.

Patent Search Procedure

It is expected that the EAPO will serve as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty (PCT) system. For this reason, most amendments in the Regulations concern patent search procedures.

Copies of the documents specified in a patent search report will now be provided to the applicant in electronic form. Simultaneously with the patent search report, the EAPO may prepare a preliminary opinion on the claimed invention’s compliance with the patentability criteria and the Eurasian application’s compliance with the requirements of the Eurasian Patent Convention and the Regulations. The opinion will be sent to the applicant along with the patent search report but it will not be published.

Examiners may now carry out an additional patent search for international applications at their own discretion. Additionally, it is now possible to carry out a patent search for all groups of inventions if they do not meet the unity requirement, provided that an additional fee of EUR 100 (USD 122) is paid for each group.

Substantive Examination

Under the amendments to Rule 47(2) of the Regulations, the sufficiency of disclosure requirement according to Rule 21¹(3) was clarified and expanded. A Eurasian application meets the sufficiency of disclosure requirement if the specification or the prior art documents contain information on the means and methods allowing the implementation of the invention and the achievement of the technical effect indicated in the specification. The industrial applicability requirements were also amended – an invention is now considered industrially applicable if the intended purpose of the claimed invention and the possibility of realizing this purpose by means of the invention are indicated in the Eurasian application. It turns out that, while insufficient experimental evidence in the specification was previously considered incompliant with the industrial applicability requirement, it will now be considered incompliant with the sufficiency of disclosure requirement.

This new approach to assessing sufficiency of disclosure and industrial applicability may change the current practice of invalidating Eurasian patents in Russia. Because insufficient disclosure is not applicable as an invalidity basis for Eurasian patents before the Russian IPO’s Chamber of Patent Disputes and the amended Regulations no longer provide for challenging industrial applicability based on insufficiency of disclosure, the position of Eurasian patent holders in Russia is now strengthened.

Voluntary Restrictions

The amended regulations provide more options for voluntary restrictions of a Eurasian patent under the post-grant amendment procedure. While it was previously only possible to restrict a Eurasian patent by excluding one or more claims or alternatives, it is now permitted to restrict the scope of an independent claim with the features of dependent claims, provided that such restrictions do not expand the scope of exclusive rights. Also, if the patent was invalid in a Contracting State on the date of filing the request for voluntary restriction, the amendments made to this patent will be effective in this Contracting State after the patent restoration.

Other Changes

Both the four-month term in an appeal procedure and the six-month term in an administrative revocation procedure are now calculated from the date the EAPO sends the notification of the acceptance of the objection or the appeal, and not from the date the EAPO receives the objecton or the appeal.

The EAPO also clarified the terms and reasons for withdrawing a Eurasian application and added new grounds for rejecting an application. Now, a final rejection can also be issued in case the applicant refuses to eliminate the parts of the claims which do not comply with the Regulation requirements, or in case the applicant refuses to implement the EAPO’s suggested amendments.

The following additional official fees have been introduced:

• For the late payment of the grant fee; and
• For publishing a new specification of the Eurasian patent if the new specification contains more than 35 pages.

By: Natalia Osipenko

For more information, please contact Natalia Osipenko at our Russia office.