Category: News

New Federal Law No. 390361-8 passed in Russia amends provisions of the Civil Code that concern the administrative consideration of disputes in the field of rights to inventions, utility models, trademarks and other objects of intellectual property, introducing a possibility of reimbursement of expenses of the winning party.

Previously, legislation allowed reimbursement only for the expenses incurred during consideration of the matter at court, including pre-trial costs. The costs of preliminary administrative disputes were not included into this scope, while in a number of cases the interested party was required to begin the dispute with an administrative hearing in the Chamber of Patent Disputes (a branch of the Russian Patent and Trademark Office), and only then go to court. The litigants were left with no ability to ensure their rights at some of the stages of the proceedings.

The Constitutional Court pointed out this omission in the legislation in its Resolution No. 1-P/2023, issued on January 10, 2023, following consideration of the complaint of OOO “NIKA-PETROTEK”. The company’s patent for a group of inventions was partially cancelled by the Board of Chamber of Patent Disputes following an objection filed by OOO “FORES”. Unwilling to accept only partial satisfaction of its demands, OOO “FORES” attempted to appeal the decision of the Chamber in court, but the court refused to satisfy the appeal. OOO “NIKA-PETROTEK”, forced to defend its patent, managed to reimburse some part of the legal costs – however, it was not possible to reimburse the costs of the initial consideration in the Chamber of Patent Disputes. Obviously, this is not the first patent owner to face such a situation.

Following the instructions of the Constitutional Court, a new Federal Law was drafted, intended to amend Article 1248 of the Civil Code of the Russian Federation regarding the consideration of disputes related to intellectual rights. The legislator clarifies that expenses incurred during administrative proceedings can be reimbursed (including official fees, as well as the fees of experts, translators and patent attorneys involved in the proceedings).

The law will come into force on 10 February 2024, after which any party involved in patent or trademark disputes will be able to more effectively protect their intellectual rights.

From January 15, 2024, inventors and businesses are able to validate in Georgia on the basis of the country’s national law their European patent applications and patents granted by the European Patent Office (EPO).

As a result, those European patent applications and patents validated in Georgia under the agreement will have the same effect and be subject to the same conditions as Georgia’s national patents.

The accompanying technical co-operation between the EPO and the National Intellectual Property Center of Georgia, SAKPATENTI, will bolster the development of Georgia’s national patent system and further foster innovation. The validation of European patents is also an important element for attracting foreign investment to Georgia.

The European Patent Organisation has 39 member states, including 27 member states of the European Union and 12 non-EU member states. Georgia will be the 5th country with the validation status and the 45th country where patent protection will be possible on the basis of a European patent application.

Under validation agreements, inventors and businesses are provided with a simple, timely and cost-efficient way of achieving high-level protection for an invention in the validation state, based on one single European patent application and without having to file a corresponding national patent application.

Validation for Georgia may be requested for any European patent or international (PCT) application filed on or after January 15, 2024.

The EAPO has been participating in the WIPO CASE (Centralized Access to Search and Examination) project since 2016, but until now, the EAPO has not sent its own documents for posting on the WIPO CASE web portal. From January 15, 2024, the Eurasian Patent Office (EAPO) began to provide information on the WIPO CASE portal.

At the first stage, the EAPO will provide WIPO with a retrospective array of patent search reports on Eurasian applications and will provide reports on new searches carried out. In the future, based on the results of this stage, the EAPO will consider expanding the range of documents posted on the WIPO CASE web portal.

The WIPO CASE system enables patent offices to securely share search and examination documentation related to patent applications filed in multiple offices in order to facilitate work-sharing programs, therefore, patent examiners can increase the efficiency and quality of their work by sharing their examination results.

The International Bureau in response to a request from the Vancouver Group Offices (the Patent Offices of Australia, Canada and the UK) initially developed the system. Based on their requirements, an initial system was deployed in 2011.

Since June 1, 2015, any patent office may join the system by notifying the International Bureau that it is willing to participate according to the new terms and conditions for the system.

Today, patent examiners from 40 intellectual property offices around the world have access to the portal. However, only 18 offices are suppliers of information for this system, including the EAPO.

According to Resolution No. 944 of the Council of Ministers of the Republic of Belarus dated December 27, 2023, which came into force on January 1, 2024, the size of the basic value is increased from 37 to 40 Belarusian rubles.

Therefore, the amount of annual fees for maintaining the validity of Eurasian patents for inventions on the territory of the Republic of Belarus are increased by 8-10% from January 10, 2023.

New annual fees in Belarusian rubles are provided in the table on the website of the Eurasian Patent Organization provided below (1 US dollar equals approximately 3,15 Belarusian rubles):

https://www.eapo.org/en/eapv-news-en/new-annual-fees-for-the-maintenance-of-eurasian-patents-for-inventions-on-the-territory-of-the-republic-of-belarus/

The basic value is one of the key parameters used in the Republic of Belarus to calculate various social and economic indicators, in particular social benefits, pensions, taxes and fees. It is a nominal standard that is not tied to any tangible or intangible objects. The basic value is formed as a result of several factors such as inflation, the general economic situation in the Republic of Belarus, etc”.

On the 7th of December, 2023 the Eurasian Patent Office (EAPO) has issued an official Regulation on the Eurasian Pharmaceutical Register (the EPR Register), which provides a list of international non-proprietary names of drugs and relevant Eurasian and national patents directed to:

– an active chemical compound under the INN,
– pharmaceutical compositions comprising the active compound,
– methods of preparing the active compound or compositions comprising thereof,
– medical uses of the compounds/compositions.
As for now the Register includes 226 INNs (and combinations of INN) and corresponding ca. 700 patents and is updated on a regular basis by the EAPO, which also provides the possibility for the patent owners to submit request for introducing patents into the register upon the patent office examination check.

Why this Register is important?
The establishment of the EPR Register is a further step to the creation of the transparent patent linkage system in the Eurasian region. In particular, it might be used by any interested parties including
– applicants of new drug applications,
– originator companies,
– drug registration authorities in the member states of the Eurasian Patent Convention including countries of the Eurasian Economic Union having unified drug registration rules,
– courts.
The Register is available online by the following link:
https://old.eapo.org/ru/patents/reestr/eafarma.php

The Administrative Council of the Eurasian Patent Organization approved the amendments to the Statute on Fees of the Eurasian Patent Office in part of applications and patents for inventions and industrial designs. The amendments result in a 20% increase of the official fees relating to applications and patents for inventions, in particular for the following actions:

– filing a Eurasian application, substantive examination of the Eurasian application;

– granting a Eurasian patent, making additions, clarifications, corrections and amendments;

– filing Appeals against the Eurasian Office Decisions;

– transfer of the right to a Eurasian application or a Eurasian patent;

– extension of missed term limits and restoration of rights.

Furthermore, there will be a 20% increase in the fees relating to industrial designs, in particular for the following actions:

– filing and consideration of a Eurasian industrial design application;

– registration of an industrial design, publication of information on the Eurasian patent grant and granting a Eurasian patent.

Detailed information can be found on the website of the Eurasian Patent Office using the following links:

Inventions
www.eapo.org/en/eapv-news-en/amendements-of-certain-fees-inventions/

Industrial designs
www.eapo.org/en/eapv-news-en/amendments-of-certain-fees-industrial-designs/

On December 13, 2023, a meeting was held at the Baku Engineering University with the participation of examiners of the Intellectual Property Agency of the Republic of Azerbaijan. The purpose of the event was to educate university employees on the protection of intellectual property rights and increase ingenuity.

The presentations covered the advantages of patenting international applications in the Patent Cooperation Treaty (PCT) system, the government funding of 50 percent of the fees to be paid by applicants who are citizens of the Republic of Azerbaijan for patenting and maintaining for the first three years of inventions and utility models in foreign countries through the international PCT system to stimulate inventive activity.

At the meeting, a dialogue was held on the material and technical base of the university, research activities, and activities of laboratories, as well as the future work on increasing inventive activity. The Intellectual Property Agency is ready to support the Baku Engineering University in creating a Technology and Innovation Support Center for patenting and legal protection of intellectual property objects.

Dr. Vadim Chagin (Partner, Russian and Eurasian Patent Attorney) and Ms. Olga Gribanova (Partner, Head of the Trademark Department, Trademark Attorney) were invited to present at the  seminar organized by the KPAA  for Korean patent attorneys on November 28, 2023. The presentations of the Patentica’s attorneys covered various  approaches to the intellectual property protection in Russia and Eurasia. We provided an overview of geographical and economical aspects behind the Russian and Eurasian patent systems and an update on the case law developments in the field of patent and trademark protection.

Patentica considers the seminar  to be an important opportunity to share our knowledge and expertise in protection of IP rights in Eurasia as well as to meet our Korean colleagues in person.

PHOTO (left to right): Mr. Jang-Won Hong, the 42nd President of the KPAA, Mr. Vadim Chagin, Ms. Olga Gribanova, Mr. Tae-Jun Suh, Chairman of the KPAA International Cooperation Committee; KPAA Building, Seoul.

The Second Congress of Technology and Innovation Support Centers of the Republic of Belarus. The Congress was held at the Belarusian State University.

It was attended by representatives of technology and innovation support centers from all over Belarus, as well as examiners from the World Intellectual Property Organization (WIPO), the Eurasian Patent Office, the National Center for Intellectual Property (NCIP), representatives of universities and libraries from Belarus and Russia. The development of the project was discussed, as a result of which recommendations were proposed for improving the project.

Technology and Innovation Support Center is an international project initiated by WIPO in 2009 to provide inventors in developing countries with access to sources of high-quality technical information and other related services at the local level.

A New Project has been Launched to Improve Patent Activity in Georgia. On November 14-16, as part of a joint project (GESIP) of Sakpatenti and the Swiss Federal Institute of Intellectual Property (IPI), a three-day training was held in Mtskheta for examiners of the Department of Inventions and New Varieties and Breeds. The main topic of the training is the freedom to operate (FTO) search in the field of information and communication technologies. The freedom to operate search is the process of identifying in-force patents or published patent applications with claims that cover the technology, process, or product you are targeting.

The training program covered the examination of patent applications related to software, artificial intelligence, and other systems and methods.

The purpose of the event is to improve the capabilities and quality of services that Sakpatenti offers to intellectual property users and the public, as well as to introduce new services. Thus, the exchange of information and deepening of knowledge within the framework of the project will contribute to building the capacity of the Department of Inventions, New Varieties and Breeds of Sakpatenti, which is an important factor contributing to the development of patent systems in Georgia.

Important Update on Divisional Applications Filing Strategy at the RUPTO after Recent IP Court decision.

On 6 October 2023, the Presidium of the Intellectual Property Court of Russia as part of consideration of the case No. SIP-570/2022 between Slovenian pharmaceutical company KRKA and the Russian Patent Office on the validity of AstraZeneca’s Russian patent RU 2643764 on dapagliflozin issued a ruling that has a potential to impact the filing strategy of consecutive divisional applications at the Russian Patent Office.

According to the decision in question upon filing a second, third, etc. divisional application it is now necessary for the original parent application to be pending to establish the same priority date. Once a patent on the parent application is granted the doors for any divisional applications are closed.

In the light of this decision it is advisable filing potential divisional applications all at once before the date of issuing a patent on the original parent application. As usual the substantive examination of a divisional application can be deferred for up to three years from its filing date. Upon requesting substantive examination, the clams can be amended to achieve the desired scope of protection, minimizing the initial costs of filing several divisional applications simultaneously.

The Court’s decision has been made final and entered into force on October 6, 2023. It is however still subject to potential appeal for reconsideration by the Supreme Court until December 6, 2023. Although the finality of this decision remains to be seen, for the time being it should be taken into account when filing any new divisional application to avoid any future complications in the event the decision is upheld by the Supreme Court.