Category: News and publications

Romania has officially joined the Unitary Patent system as of 1 September 2024. This means that all European patents with unitary effect will now automatically include coverage for Romania. With a population of around 19 million people, Romania’s inclusion expands the market covered by the UP system to a total of 330 million people.

European patents with unitary effect that are registered by the EPO on or after 1 September 2024 will be applicable in the 18 EU Member States that are part of enhanced cooperation and have ratified the Agreement on a Unified Patent Court (UPC Agreement) by that date. These states include Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden.

Since the Unitary Patent system came into effect on 1 June 2023, the EPO has already received over 34,000 requests for unitary effect and registered 33,000 Unitary Patents. Notably, 32% of all requests for unitary effect in the first half of this year were submitted by small businesses and individual inventors, reflecting a growing interest in this streamlined and cost-effective patent protection option.

The Unitary Patent system, which comprises the Unitary Patent and the Unified Patent Court (UPC), offers advantages such as reduced costs, a simplified process, consistent protection, and increased legal certainty across participating EU Member States. This makes it an appealing choice, particularly for SMEs. The UPC’s jurisdiction covers both Unitary Patents and classic European patents, allowing for a centralized procedure that eliminates the need for expensive parallel court proceedings in multiple national courts.

It is anticipated that more EU Member States will ratify the UPC Agreement in the future, ultimately enabling patent protection in up to 25 EU Member States through a single request to the EPO.

The Eurasian Patent Office has recently received its first one thousand industrial design applications.

Established in 2021, the Eurasian system for patenting industrial designs has quickly gained popularity over the past three years. A wide range of designs can be patented, including packaging, household items, drawings, graphic images, and user interface pages.

Each Eurasian application can encompass up to 100 industrial designs within the same class of the International Classification of Industrial Designs.

Since its inception, the Eurasian Patent Office has examined over 2,300 industrial designs. In 2021, there were 92 applications for 190 designs, followed by 233 applications for 639 designs in 2022, and 369 applications for 860 designs in 2023. This year, more than 300 applications for 700 designs have already been submitted.

This system allows patent holders to protect up to 100 designs with a single patent valid in the territory of the eight states of the Eurasian Patent Organization (Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan), showcasing the efficiency and relevance of the Eurasian system amidst high demand for industrial design protection in the region.

Turkmenistan has officially joined the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention, allowing for the possibility of obtaining a Eurasian patent for industrial designs in the country.

The President of Turkmenistan, Serdar Berdimuhamedov, signed the law on July 13, paving the way for Turkmenistan to become a party to the Protocol. The Protocol, which was adopted in 2019 during a diplomatic conference in Nur-Sultan, Kazakhstan, will now include all member states of the Eurasian Patent Organization (Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan).

This accession also opens up the opportunity for the Eurasian Patent Organization to join the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

Upon depositing the act of accession with the depository, the Protocol will enter into force with respect to Turkmenistan within three months.

President Serdar Berdimuhamedov highlighted Turkmenistan’s commitment to expanding cooperation with international organizations, stating that the country is taking steps to strengthen its ties with authoritative international structures.

For those seeking a Eurasian patent for an industrial design in the future, Turkmenistan is now a viable option to consider.

The Intellectual Property Court reviewed the cassation appeal of the foreign company “Gymworld Inc.” (Republic of Korea) against the decision of the Arbitration Court of the Sverdlovsk Region (Russia) dated 03.05.2023 in case No. A60-30765/2022 and the ruling of the Seventeenth Arbitration Court of Appeal dated 06.09.2023 in the same case concerning the claim of the foreign company “Gymworld Inc.” against 6 organizations and 1 individual entrepreneur for compensation for the infringement of exclusive rights to the trademark “Magformers” under international registration No. 1068369, registered on 24.01.2011 for goods in class 28 “Magnetic toys, toys.” “Gymworld Inc.” is also the exclusive copyright holder for the design of the packaging of the products “Magformers Amazing Police Set,” “Magformers Amazing Construction Set,” “Magformers Amazing Rescue Set,” with the rights confirmed by a certificate of authorship of the design.

A representative of “Gymworld Inc.” stated that during the period from 07.01.2021 to 05.03.2021, products were sold with packaging featuring a verbal&device mark similar to the trademark under international registration No. 1068369, and the design of the packaging of Magformers Police Set (“Amazing Police Set”), “Magformers Amazing Construction Set,” “Magformers Amazing Rescue Set” was also used. The company brought this claim to the Arbitration Court of the Sverdlovsk Region after failed attempts to resolve the issue directly with the infringers.

The claims of “Gymworld Inc.” were upheld for an amount exceeding 200 thousand rubles (approximately 2,200 US dollars).

This case serves as a reminder of the importance of protecting intellectual property and the benefits of taking action to prevent unauthorized use.

A Russian entrepreneur has been fined $250000 for illegally printing copies of the Harry Potter books by British author J.K. Rowling. The rights to publish this series in Russia are held by the Makhaon Publishing House.

The court found that between December 2018 and April 2021, the Kurgan resident organized the production and sale of 43,620 counterfeit copies of the books without permission from the copyright holder.

The businessman was found guilty of illegally using copyrighted materials on a large scale and was sentenced to 2 years of suspended imprisonment with a 2-year probation period. He was also ordered to pay a fine of ₽22,376,000, equivalent to about 258000 US dollars.

The counterfeit books, which were printed in Kurgan and seized in St. Petersburg, were deemed unauthorized copies.

Despite the man’s appeal to overturn the sentence, the court upheld the decision of the suspended imprisonment and the payment of compensation.

On July 16, 2024, the cultural event celebrating the “30th Anniversary of the Eurasian Patent Convention: Advancing the Future” was organized by WIPO in collaboration with the Eurasian Patent Office (EAPO) during the Assemblies of WIPO Member States in Geneva.

Over the past 30 years, more than 71,000 Eurasian patent applications have been submitted, with a current rate of more than 3,600 Eurasian applications annually, more than 45,000 Eurasian patents have been issued, and applicants from more than 130 countries have used the EAPO system.

The exhibition showcased the technological innovations of young inventors and the most remarkable inventions from EAPO member countries. For example, Turkmenistan presented a system for soil decontamination using microorganisms, Belarus exhibited a device for delivering implants through blood vessels, Tajikistan demonstrated a more accurate vision testing method for preschoolers, and Kazakhstan featured a heart pump implantation technique for the left ventricle.

Each Eurasian country that is a member of the EAPO hosted a tasting of their national cuisines.

The exhibition was inaugurated by WIPO Deputy Director General Marco Aleman, alongside diplomats and participants of the WIPO Member States Assemblies meetings.

EAPO President Grigory Ivliev highlighted the presence of over 190 states at the WIPO assemblies, all of whom witnessed the innovative achievements of young inventors from the Eurasian region.

He emphasized the EAPO’s commitment to collaboration and its reputation as a cutting-edge Office operating at the global forefront.

This year hundreds of delegates from WIPO’s 193 Member States have joined the July 9-17 WIPO Assemblies to negotiate the future of the global intellectual property (IP) ecosystem and WIPO’s activities in promoting the economic, social and cultural development of all countries.

Maria Nilova attended the special meeting organized in WIPO headquarters, dedicated to 30th anniversary of the Eurasian Patent Organization. She congratulated the Head of the Eurasian Patent Organization, Grigory Ivliev, on behalf of Patentica Company, its partners, attorneys, lawyers and staff.

From the date of signing the Eurasian Patent Convention in 1994, the Eurasian Patent Organization (EAPO) has been a driving force of the legislative development of the regional patent system and has served as a consolidating basis for facilitating and advancing national patent regulations in the member states of the Commonwealth of Independent States (CIS).

The creation of a regional system in Eurasia similar to the European Patent Organization has come as a brilliant solution to the problems evolved after the disintegration of the Soviet Union.

Thanks to invaluable help of the WIPO, and personally, WIPO Director General Arpad Bogsch, the Eurasian Convention survived already 30 years without changes and nowadays serves as a center point for further expanding the economic progress in the Eurasian region.

Over those 30 years, the level of collaborative activities among member states have increased to cement economic, scientific, technological and ecological relations.

EAPO acts now as an International Searching Authority and an International Preliminary Examination Authority in accordance with the Patent Cooperation Treaty (PCT).

EAPO is also nowadays a member of Patent Prosecution Highway Programme (PPH Programme) and accepts requests from several jurisdictions, including China, Japan, EPO and the Republic of Korea.

In 2019, a protocol to the Eurasian Patent Convention on the protection of industrial designs was signed. The protocol has been in effect since June 2021, and in future, the EAPO is expected to join the Hague system of international registration of industrial designs.

The agreement on Eurasian utility models and the long-awaited agreement on Eurasian trademarks are also something to look forward to.

Further development plans of the Eurasian Patent Organization are impressive and include:

– creating a centralized information and examination database to provide exchange of patent information between the regional and national patent offices;

– complete digitalization of services, including the use of big data;

– development of the Eurasian dispute resolution system;

– further developing the Eurasian Pharmaceutical Register established in 2021 with the information on valid Eurasian patents for inventions related to active pharmaceutical ingredients with international non-patent names.

– expanding educational projects by creating IP commercialization and technology transfer centers in technoparks.

Patentica congratulates the Eurasian Patent Office for these achievements and expresses its support to the Eurasian Patent Organization in its new endeavors to integrate several IP systems within a single intergovernmental body, including patents for inventions, designs and in future, utility models and trademarks.

In order to promote the long-term sustainability of the EPO, a budget-neutral fee policy reform has been implemented, which includes targeted fee discounts to improve access to the patent system for underrepresented micro-entities through moderate fee adjustments.

The revised fee structure, effective from 1 April 2024, offers micro-enterprises, natural persons, non-profit organizations, universities, and public research organizations a 30% reduction on all main fees in the patent granting process. To date, eligible micro-entities have saved more than €1 million through this scheme, benefiting over 1,900 applications and resulting in over 4,000 reduced fees. Over 70% of all requests come from users based in EPC Member States, with the top ten countries being Italy, Germany, UK, France, Switzerland, Spain, Finland, Poland, Sweden, and Austria. The overall percentage of beneficiaries among applicants remains at 2%.

Through targeted fee discounts, the EPO assists underrepresented key players in the innovation ecosystem in safeguarding their most valuable inventions at a lower cost, which have resulted from significant investments of time and effort over many years. These fee discounts are just one part of complementary measures aimed at improving the accessibility of the patent system. These measures include established language-related fee discounts as well as the Deep Tech Finder – a free digital tool designed to help investors identify and evaluate European startups that are bringing inventions to market in critical technology areas.

The fee reduction for micro-entities is applicable to new and pending applications, as long as the micro-entity has not filed five or more previous applications within the past five years. It can be combined with other fee reductions, especially language-related fee reductions.

The first scientific and practical conference organized by the Assembly of Eurasian Patent Attorneys (AEPA) and dedicated to the 30th anniversary of the Eurasian Patent Convention was successfully held on June 13-14.

IP professionals and R&D and industry representatives discussed important issues relating to the development of the Eurasian patent system including various aspects of introducing unified protection of a Eurasian trademark, patenting of utility models and technology licensing in the Eurasian space. The speakers has also considered case-law of the EAPC member countries.

Patentica’s patent attorneys actively participated in the conference.

Eduard Shablin, the President of the AEPA and partner at PATENTICA, presented his view on significance of the essential features in the claims of a utility model and its assessment when opposing utility model patents in administrative proceedings.

Ekaterina Petrova, Eurasian patent attorney, partner at PATENTICA, revealed difficulties which applicants face when applying for Eurasian patent term extensions in the field of pharmaceuticals.

Maxim Ikonnikov, patent attorney at PATENTICA, presented a comparative analysis of a national and Eurasian system requirements for protecting industrial designs.

We thank the AEPA and the Eurasian Patent Office for the opportunity to share our knowledge and experience in the field of intellectual property protection.

The European Patent Office (EPO) and National Institute of Industrial Property of Chile (INAPI) have signed a Memorandum of Understanding on the Patent Prosecution Highway (PPH) pilot programme on July 11, 2023. It came into effect on June 1, 2024, and will operate for a period of three years, concluding on May 31, 2027 with the potential for adjustments along the way based on mutual agreement.

In addition to the new program with Chile, the EPO PPH programmes currently established with the following countries:

the European Patent Office (EPO),

the Japan Patent Office (JPO),

the Korean Intellectual Property Office (KIPO),

the National Intellectual Property Administration of the People’s Republic of China (CNIPA) and the United States Patent and Trademark Office (USPTO), as well as with the national Patent Offices of Australia, Brazil, Canada, Colombia, Israel, Malaysia, Mexico, Peru, the Philippines, Singapore and Saudi Arabia.

On June 4, 2024, the Supreme Court of Russia ruled in favor of AstraZeneca (patentee) against KRKA (opponent) regarding the validity of AstraZeneca’s patent RU2746132 for “Forxiga” (INN: dapagliflozin), which is used to treat heart failure and chronic kidney disease in type 2 diabetic patients. This patent was extended by RUPTO based on “Forxiga’s” first marketing authorization, and remains valid until May 15, 2028.

This decision is obviously significant for AstraZeneca, which is currently involved in lawsuits against several generic manufacturers in Russia. Moreover, it holds substantial importance for the validity of approximately 600 other drug-related enforceable Russian patents granted on divisional applications.

By reversing the earlier IP Court decision, the Supreme Court thereby confirmed the legal correctness of RUPTO’s approach to acknowledging the priority dates of consecutive patent applications based on the first original parent application.

As a result, the divisional filing strategy at RUPTO remains as usual, maintaining a more convenient and innovator-friendly approach compared to potential alternative, which might have been appeared otherwise.

Representatives of Patentica, Denis Yachmenenko, Kseniya Golyatkina and Dmitriy Stakhiy, visited the Suzhou Intellectual Property International Service Center in China on May 28, 2024. Denis Yachmenenko, a lawyer and head of foreign filings, conducted a workshop titled “Intellectual Property Response to Exhibitions” for local Suzhou enterprises, organized by the Center.

During the workshop, Denis covered various topics such as the importance of IP protection before participating in exhibitions, preparation procedures, priority dates, application filing dates, exhibition priorities, exceptions to lack of novelty, and special aspects of applying exceptions to lack of novelty in countries like Russia, Eurasia, and CIS.

The Suzhou Intellectual Property International Service Center (SIPISC) was established as a pilot project to assist entrepreneurs and individual inventors in protecting their intellectual property overseas. Since its inception, the center has facilitated a number of exchange activities to foster collaboration between enterprises, citizens, and international IP service providers in Suzhou.