Author: pat

At the end of 2024, as the year comes to a close, it is time to reflect on the past year, analyze the results achieved, and make plans for the upcoming year.

Patentica company expresses gratitude to each of its clients for their trust, valuable experience, and challenging tasks that contribute to our growth. We are thankful for the feedback and recommendations to colleagues, which are highly valued by us. We are committed to making your experience working with us productive, comfortable, and seamless, and we strive to exceed your expectations in the coming year.

Looking ahead to 2025, we anticipate further advancements in artificial intelligence, cloud technologies, and their integration into our daily lives. With the increasing volume of data and the need for rapid processing and deriving insights from it, these technologies play a crucial role. Similarly, the development of artificial intelligence, blockchain, and the metaverse presents complex challenges related to the protection and ownership of digital assets and innovations, necessitating legislative changes. As intellectual property specialists, we remain at the forefront of such developments to address these challenges and provide solutions for our clients.

Furthermore, we foresee a surge in innovations focused on renewable energy, waste reduction, and eco-friendly solutions, as the world shifts towards sustainability. We are excited about the potential for positive change and progress in the new year.

Patentica extends heartfelt wishes for a joyous New Year to all. May the coming year be filled with discoveries, the realization of dreams, positive experiences, and personal growth, both spiritually and materially.

In 1995, the Eurasian Patent Convention (EAPC) was established to create a unified patent space, simplifying and reducing the cost for inventors to obtain a patent across multiple countries simultaneously. Under the EAPC, a regional system for legal protection of inventions has been now developed, based on prosecution of applications in the Eurasian Patent Office.

Presently, there are 8 countries that are signatories to the Eurasian Patent Convention: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan, that have a total population of more than 210 million that are covered by EA patents for inventions. Besides inventions EAPO now also granting patents for industrial designs, and starting 2025 Turkmenistan will join other seven EAPC countries in acceptance of the EA patent for industrial designs.

Notably, five of the EAPC countries: Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia are also member states of the Eurasian Economic and Customs Unions, which provides a direct link between IP protection in the region and economic and customs regulations.

As regards obtaining EA patent for an invention, the core of the Eurasian Patent System lies in the issuance of a regional patent, based on just one application filed with the Eurasian Patent Office (EAPO), which holds validity in all member countries’ territories simply upon payment of renewal fees.

As of 2023, the processing times for Eurasian patent applications have continued to decrease: the average time for a first action stands at 8.91 months (compared to 10.94 months in 2022), while the average duration of application review by the Examiner is 3.19 months (down from 5.32 months in 2022).

Other benefits of obtaining a Eurasian patent through this procedure, as opposed to pursuing national patents in individual EAPC countries, include:

– The need for single patent application to obtain a Eurasian patent across the eight member states, eliminating the requirement for multiple national filings and independent examinations in each country;

– The harmonization of the patenting process within the unified patent space established by the Eurasian Patent Convention, removing the need to navigate specific legislations of member countries;

– Cost competitiveness as compared to multiple national filings;

– Utilization of a single language for all submitted documents;

– The option to submit a Eurasian application in electronic format;

– The same Eurasian patent attorney can represent the applicant throughout the patent prosecution procedure;

– The EAPO offers expedited examination services for Eurasian applications, allowing for a quicker issuance of a Eurasian patent for an invention.

If you have any questions or need our assistance in obtaining IP protection through EAPO, please do not hesitate to contact us at info@patentica.com.

Olga Gribanova and Eduard Shablin of Patentica were in attendance at the 76th Asian Patent Attorneys Association Council Meeting (APAA 2024) in Manila, Philippines from November 18 to 21, 2024.

The event brought together intellectual property professionals from various industries and sectors around the world, offering a valuable platform for collaboration, knowledge exchange, and networking. It showcased the shared expertise and dedication to advancing the field of intellectual property.

One of the conference’s highlights was the opportunity to stay updated on regulatory changes and procedural advancements, including strategies for expediting examination processes across multiple jurisdictions. These insights underscored the importance of adaptability and proficiency in navigating the rapidly evolving global IP landscape.

The Asian Patent Attorneys Association (APAA) is a non-governmental organization committed to promoting and strengthening intellectual property protection in the Asian region with over 2,500 members.

Attending such events enables our specialists to gain invaluable insights into numerous legal aspects of business protection across different countries.

Dear colleagues, we would like to inform you about the weekends and holidays in 2025 that will impact the workflow at the Eurasian and Russian Patent Offices.

When submitting applications and communicating with the Patent Offices, it is crucial to consider non-working days and any corresponding transfers to ensure accurate deadline calculations and prevent missing important dates:

– if deadlines fall on weekends or non-working days, they will be transferred to the first following business day;

– if Saturday is considered a business day and a deadline falls on that day, documents shall be submitted on Saturday without any transfers.

It is important to note that certain missed deadlines cannot be restored or may require the payment of additional fees for restoration. Thus, it is advisable to meet all deadlines, but if any are missed, please contact us to determine if restoration is possible.

The non-working days in 2025 that will impact the Eurasian and Russian Patent Offices are:

January 1-8 (New Year holidays from December 29 to January 8)

May 1-4

May 8-11

June 12-15

November 2-4

December 31

Additionally, there will be shortened pre-holiday business days on:

March 7 (Friday)

April 30 (Wednesday)

June 11 (Wednesday)

November 1 (Saturday)

We recommend considering these dates when preparing and submitting applications, responses to Office Actions, and other actions related to safeguarding your intellectual property.

We monitor and remind our clients of impending deadlines to ensure they are not overlooked.

Maria Nilova and Nikolai Kovkov from Patentica recently participated in the AIPLA 2024 Annual Meeting at the Gaylord National Resort and Convention Center in National Harbor, MD. This three-day event included Committee Business Meetings, CLE (Continuing Legal Education) panels, Skills Workshops, and social events focused on promoting learning, networking, and collaboration among IP professionals worldwide.

The meeting featured discussions on various aspects of IP law, such as:

– Updates on the Unified Patent Court;

– Trademark Counterfeit Enforcement;

– March-In Rights Under the Bayh-Dole Act;

– Copyright preemption / Website and social media scraping;

– Design Patent law;

– Harmonization, Patent Litigation, and DEI in IP.

The American Intellectual Property Law Association (AIPLA) is a national bar association made up primarily of practitioners in private and corporate practice, government service, and the academic community. AIPLA represents individuals, companies, and institutions involved in patent, trademark, copyright, and unfair competition law, as well as other fields affecting intellectual property.

Maria Nilova and Nikolai Kovkov from Patentica recently took part in the LES USA-Canada Annual Meeting from October 20 to October 23, 2024. This event is a key gathering for professionals working in the fields of intellectual property, licensing, and technology transfer. This year’s meeting brought together more than 500 attendees from all corners of the globe.

The four-day conference showcased over 30 panel sessions and 15 roundtable discussions. The topics covered a wide range of issues, including utilizing the International Trade Commission for IP enforcement, branding, IP ownership in Life Sciences, Life Sciences spinouts, data usage in complex SEP licensing, the U.S. manufacturing requirement of the Bayh-Dole Act, utilizing Big Data for R&D improvements, negotiation strategies, common licensing pitfalls, content tailored for Emerging Leaders, career guidance for newcomers to the licensing field, and cutting-edge topics in AI, cross-industry partnerships, brand valuation trends, litigation finance, and the latest legal and legislative updates from both the U.S. and Europe.

Founded in 1965, the Licensing Executives Society (U.S.A. and Canada), Inc. (LES) is the largest of 32 global affiliated international societies under the umbrella of LES International (LESI). LES boasts a membership of over 1,600 professionals, while LESI has more than 6,500 members who are all dedicated to the creation, development, and transfer of intellectual property rights, as well as the protection, management, and standardization of intellectual capital.

On October 9, a meeting of the Advisory Committee on Intellectual Property under the Board of the Eurasian Economic Commission (EEC) was held. The main purpose of the Eurasian Economic Commission is to ensure the conditions for the functioning and development of the Eurasian Economic Union (EAEU), to develop proposals for the further development of integration.

Ernar Bakenov, Director of the Department for the Development of Entrepreneurship of the EEC, reported that in 2023, 5.8 million counterfeit goods were identified in the Eurasian Economic Union countries. He also noted that the leading positions in counterfeiting in the EAEU member states are occupied by clothing and footwear, games and toys, car parts, food products, alcoholic beverages, household appliances and electronics, accessories.

A number of analytical documents were submitted for consideration by the Committee participants, including statistical indicators from 2019 to 2023. The documents include an analytical review for the last five years with proposals for the development of the intellectual property sphere within the Union and recommendations for improving the legal framework in the states, as well as a report on monitoring law enforcement practices in the field of protecting intellectual property rights in the EAEU countries for 2023.

These documents will be published on the official website of the EAEU.

The meeting considered the practice of providing legal protection for information constituting production secrets (“know-how”) in the EAEU countries, the specifics of implementing the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Union.

The Committee participants also discussed the launch of a unified customs register of intellectual property objects, the formation of coordinated approaches to combating violations of intellectual property rights on the Internet, and the creation of a search service for industrial property objects protected in the EAEU states.

The Russian Patent and Trademark Office has issued clarifications regarding some typical questions on the new Statute on Fees, effective in the Russian Federation from October 5, 2024.

1. Payment of fees for patent maintenance

Under the new Statute, patent maintenance fees are paid in five-year increments. The fee for the first five-year period shall be paid alongside the registration, publication, and issuance fees. Fees for each subsequent period are due during the last year of the previous five-year period or within an additional six-month grace period at a 50% surcharge.

This new payment procedure also applies to patents issued before October 5, 2024.

If part of the maintenance fee has been paid for an incomplete five-year period, the remaining amount shall be settled during the year of the patent’s validity for which the patent maintenance fee has already been paid, or within the additional six-month grace period.

2. Payment of fees during the transition period

Many applicants may face confusion as to whether to pay the new fees, or follow the previous rules.

Generally, the due fee amount is to be determined by the date of receipt of the relevant document (application, request, objection).

For example, a patent application filed on October 1, 2024 requires payment based on the Statute on Fees effective that day (i.e. the previous version). An electronic filing qualifies for a 30% discount. The same will be true for any patent, utility model, industrial design or trademark application filed on or before October 4, 2024.

If a request for substantive examination on a patent application is submitted on December 6, 2024, i.e. after the new Statute on Fees takes effect, the fee will follow the Statute on Fees as amended, and no discount will apply.

For the registration, publication, patent and certificate issuance with respect to inventions, utility models, industrial designs, and trademarks, the due fee amount is determined by the payment date.

However, if a payment notice specifying the required amount had been sent to the applicant before the amendments came into force, the fee shall be paid as indicated in the payment notice. Such payment notice, for example, is usually included into trademark registration decisions.

If the fee is paid incorrectly before October 5, 2024, the applicant shall make an additional payment up to the amount valid on the date of the first payment.

3. Fee Privileges for Applicants

The list of applicants eligible for fee privileges has been expanded.

For example, fee privileges are available for groups of applicants that are small businesses, accredited educational institutions, or scientific organizations.

Mixed teams of applicants (e.g., a pensioner and an individual entrepreneur) can also receive privileges, allowing the group to benefit from the maximum fee reduction applicable to any member. Previously, mixed teams were not eligible for such privileges.

Patentica’s patent attorneys, Victor Lisovenko and Ksenia Emelianova have successfully represented Sun Pharmaceuticals in opposing Novo Nordisk’s patent RU 2421238.

On September 30, 2024 the Board of a Chamber for Patent Disputes at the Russian Federal Service for Intellectual Property (RUPTO) partially revoked the patent. Specifically, as a result of the inter partes opposition proceedings Claims 1-11, relating to a formulation comprising a GLP-1 agonist—such as liraglutide (marketed as Victoza and Saxenda) or semaglutide (Ozempic and Wegovy) — were cancelled. Additionally, Claims 12-15, which covered methods for preparing the formulation, were also revoked.

Patent RU 2421238 covered pharmaceutical formulations comprising a GLP-1 agonist, an incretin mimetic that stimulates insulin production. Initially developed to treat type 2 diabetes, these formulations have also been approved for managing obesity and weight loss.

This case is notable as it reaffirms the RUPTO’s established approach to assessing the “novelty” requirement under Art. 1350 of the Russian Civil Code. A lack of novelty can be determined not only when a prior art document explicitly teaches a claimed object, but also when features disclosed in the prior art can be combined to arrive at the claimed object. In this instance, despite 15 prior art documents submitted RU 2421238 was mainly revoked for failing to meet the novelty criterion due to an earlier patent application filed by the same patentee. This repeatedly highlights the critical importance of a well-planned intellectual property strategy and filings throughout the R&D process and drug development cycle.

Patentica attorneys have extensive experience representing clients before the Chamber for Patent Disputes and the Intellectual Property Court. If you need assistance with your patent-related matters, please reach out to us at info@patentica.com.

Starting October 5, 2024, significant changes will take effect in Russia’s patent fee structure, following Resolution No. 1278 of September 27, 2024 by the Government of the Russian Federation.

The key updates include:

– general official fee increase across various services associated with IP matters by an average of 20%;

– rise in official patent term extension fees for pharmaceuticals, pesticides, and agrochemicals to 100,000 RUB ($1,110);

– removal of the 30% discount for electronic filings;

– introduction of a one time 5-year payment system for patent maintenance, replacing previously used annual payments.

Please feel free to contact us for further clarification at info@patentica.com.

During the industry conference “Book Market of Russia – 2024” at the Moscow International Book Fair, Evgeny Zaitsev, the head of the Department for Control and Supervision in the field of electronic communications at Roskomnadzor (The Russian Federal Service for Supervision of Communications, Information Technology and Mass Media), reported that since 2018, more than 301 million links to pirated content have been taken down from search results as part of the anti-piracy memorandum.

In 2018, a memorandum was signed between copyright holders and search engine operators to collaborate on protecting exclusive rights in the digital era. This agreement allows for direct cooperation in removing links to illegal content from search results, ensuring that pages infringing copyright and related rights are excluded promptly. With the memorandum in place, pirated links are eliminated within 15-20 minutes of detection.

In 2023, an expansion of the memorandum included representatives from the book and music industries in its efforts to combat piracy.

Furthermore, Roskomnadzor has engaged with the World Intellectual Property Organization (WIPO) through the implementation of a memorandum signed in September 2020. This collaboration involves the use of Wipo Alert, an online platform where national authorities can upload and update lists of copyright-infringing websites. This enables advertisers, advertising agencies, and intermediaries to access these lists either manually or through an API, providing a comprehensive view of infringing sites globally.

Zaitsev revealed that Roskomnadzor has contributed approximately 2.8 thousand domain names to the Wipo Alert database since the beginning of this partnership, with ongoing efforts to expand and update the WIPO database.

On August 8, 2024, the Patent Disputes Chamber of Rospatent upheld AstraZeneca’s objection to the validity of the Eurasian Patent No. 40996 for the medication Osimertinib by “AxelPharm” in the Russian Federation. The Chamber’s decision was announced in the Rospatent database of decisions on August 15, 2024.

In the objection, “AstraZeneca” presented arguments supporting the fact that the δ-form of osimertinib mesylate specified in Eurasian Patent No. 40996 does not exhibit any unexpected advantages over known forms of osimertinib mesylate and does not comply with the inventive step criterion of patentability.

Moreover, “AstraZeneca” is contesting 10 tenders for the supply of osimertinib.

Several contracts were signed with various government clients for the supply of the medication “Osimertinib” in June 2024. However, in August 2024, the Federal Antimonopoly Service (FAS) deemed the outcome of the regional auction for the purchase of osimertinib, where the application for the supply of “Osimertinib” was declared as the winner, unlawful.

Osimertinib is utilized in the production of the drug “Tagrisso”, which is utilized in the treatment of lung cancer and is manufactured by “AstraZeneca” at its own facility in the Kaluga Region (Russia) in quantities that adequately meet the demands of the Russian market. The medication has been provided to government clients under the contract system for the acquisition of goods to fulfill state and municipal needs from 2017 to the present time. “AstraZeneca” asserts that there has been, and continues to be, no scarcity of this medication.

“AstraZeneca” has stressed that patent disputes frequently occur because the responsibility for adhering to the requirements for safeguarding exclusive rights when introducing pharmaceuticals into circulation lies solely with the applicant, with regulators having no duty to verify the existence of a patent and the trustworthiness of any guarantees provided, if any.

“AstraZeneca” highlights potential measures to enhance the situation, including: firstly, compulsory oversight by regulators over the adherence to exclusive rights when registering a medication, and when determining the maximum retail price for a medication – imposing a postponed effective date until the expiration of patent protection. Secondly, it is crucial to establish an approach for the widest possible utilization of interim measures when addressing disputes related to the infringement of patent rights for medications, while establishing minimal deadlines for their enforcement by regulatory bodies.

According to “AstraZeneca”, these measures will help prevent the breach of intellectual property rights and swiftly halt any infringement that may occur. Bolstering patent protection is crucial not only for the advancement of the Russian pharmaceutical industry, but most importantly for patients, who must have confidence in the quality of the medications supplied and the consistency of their availability.