Navigating the Eurasian patent system: a view from Kazakhstan15 October 2023
The Eurasian market is becoming increasingly important in a tectonically changing world economy, creating a bridge between West and East, North and South, connecting and uniting economies, peoples and cultures.
Kazakhstan, being an indispensable part of this market, covers substantial territory of it. IP protection in this region should not be underestimated. Although current statistics show that patentees are still mainly interested in Russia, recent tendencies have added to the growth of filings and pending patents in Kazakhstan.
Single unitary patent
In each country of the region, including Kazakhstan, national systems for IP protection are valid and developing. However, IP practitioners, as well as the business entities seeking to cover at least several countries in the region, should take into account the most effective way to protect IP in this territory—the Eurasian patent system, which is tailored as a kind of pattern of the European patent system. The Eurasian patent system may substantially facilitate the protection of inventions by filing a single Eurasian application and getting a single Eurasian patent covering a significant part of the area. This would avoid filling multiple national applications in different languages, encountering different patent procedures and using different national patent attorneys, sometimes in completely unfamiliar environments.
The basis for the Eurasian patent system is the Eurasian Patent Convention, which encompasses Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russia, Turkmenistan and Tajikistan. Five of these countries (Russia, Armenia, Belarus, Kyrgyzstan and Kazakhstan) are also members of the Eurasian Economic Union, where there are no customs borders between them.
The most important thing to mention is the fact that participating countries have agreed to ensure the protection of exclusive rights by Eurasian patents equal to those by their national ones.
The Eurasian Patent Office grants a single, unitary patent without any necessity of further validation thereof in each country. The patent is granted in the Russian language and no translation into other languages is necessary unless an infringement procedure is initiated. Moreover, if the infringement takes place in Kazakhstan there is a possibility of prosecuting the case in the Kazakh language, as well as in Russian if needed.
In accordance with paragraph 1.1 of the Eurasian Rules for compiling and filing patent applications: “the subject-matters of inventions may be, created or transformed by humans, material objects or processes, in particular apparatus, method, substance, biotechnological product as well as their use”.
To be patentable, an invention must be industrially applicable, new and involve inventive step. The above stipulations, as well as the patentability exceptions, are well harmonised with TRIPS and cover the same subject matters.
An additional advantage of Eurasian legislation (which is also true for Kazakhstan) is that in contrast to the majority of the countries in the world, patent protection for methods of medical treatment is available.
One more advantage of Eurasian legislation, in contrast to Kazakhstan, is that the six-month grace period is calculated from the priority date rather than from the date of filling an application with the Eurasian Patent Office, and sometimes filing through the Eurasian Patent Office may be the only option in the event of an undesirable early disclosure of the invention to be protected.
Filing Eurasian applications
Almost any IP practitioner knows that the Eurasian Patent Office is located in Moscow and that a patent is granted in Russian, but not everyone knows that a Eurasian application for foreigners is not obliged to be filed through the Eurasian patent attorneys located in Russia. A Eurasian application can equally be filed through any Eurasian patent attorney domiciled in one of the member countries—Armenia, Azerbaijan, Belarus, Kyrgyzstan, Turkmenistan, Tajikistan and certainly Kazakhstan.
Each Eurasian application for which formal examination has been successfully completed is published in the Official Bulletin of the Eurasian Patent Organization (EAPO) along with the corresponding search report shortly after 18 months from the filing or priority date.
The provisional protection of the invention under a Eurasian application becomes effective from the publication in all eight member countries in the scope of the published claims and is in force until the date of publication of the issued patent. If a patent is not issued the provisional protection is not considered valid or if the patent is not in force in some of the countries the provisional protection is not considered valid therein.
The international publication may substitute the Eurasian Official Bulletin publication only if the former is in the Russian language. Thus, the effect of provisional protection in a PCT application will begin from the publication in the Russian language.
The selection of the countries covered by the patent is made only after issuing of the patent by paying the corresponding maintenance fees for those member countries. The EAPO uses a deferred examination. A request for examination shall be filed within six months from the date of publishing of the search report.
The international search report shall substitute that of the EAPO and therefore it is important to remember that for any PCT application entering the regional Eurasian phase, a request for examination should be filed simultaneously with the date of entering, otherwise the corresponding six-month term to request examination will be missed.
If no request for examination is filed, the application is deemed to be abandoned. As in Kazakhstan, an application may be reinstated within 12 months from the missed term provided that the official fee is paid and an excusable reason for missing the set term is provided.
The substantive examination system in Eurasia is quite similar, for example, to the European one. However, an important advantage of the prosecution in Eurasia is that substantial amendments to the claims may be voluntarily made at any prosecution stage before issuing the decision of readiness to grant a patent or before issuing the final decision on rejection.
The term for responding to an official action is four months and may be extended unlimitedly, although the extension fees increase steadily and might become quite expensive after a length of time. The Patent Prosecution Highway (PPH) programme is available with the European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and China National Intellectual Property Administration (CNIPA) and works quite effectively.
The system of filing divisional applications is also similar in Kazakhstan and the Eurasian Patent Office. A divisional application may be filed voluntarily at any time before the issuing date of a patent on the parent application or, in case of issuing a final rejection, before filing an appeal with the President of EAPO. In Kazakhstan, in the event of a final rejection before the end of the possibility of appeal, it is theoretically possible to file a divisional application before the court makes a decision.
Both the Patent Office of the Republic of Kazakhstan and Eurasian Patent Office allow the filling of a subsequent divisional application separated from the previous divisional application, provided that one of the previous applications is still pending.
A peculiarity of the EAPO system is that in case the subject matter of the divisional application was previously searched within the frame of the parent application and the six-month term from the date of search has already expired, the examination request on the divisional application should be filed simultaneously with the filing of the application. One more thing is that, if the claims of the divisional application contain an invention identical to one of the parent applications, to traverse the objection the amended claims should be filed no later than two months from the issuing date of the corresponding official action and the deadline is not extendable. Otherwise, the application will be considered abandoned.
Oppositions and terms
A finally rejected Eurasian patent application can be converted into a national patent application in any member country within six months from the date of receipt by the applicant of the decision of final rejection or within six months from the date of receipt by the applicant of a notice on dismissing the appeal against the decision of final rejection.
The national application, into which the Eurasian application is transformed, receives the same filing and priority date as those of the Eurasian application. As in the EPO, in the EAPO any person (except for the patent owner) may file an opposition against issuing a Eurasian patent within nine months from the date of its issuing. After the expiry of this period, the patent may be invalidated only through the national route separately in any of the member countries during the whole validity period of the patent.
The validity term of a Eurasian patent may be extended in respect of any member country where such an extension is provided.
In the majority of member countries, this is possible for inventions related to medicine, pesticides and agrochemicals. In Kazakhstan, an extension for Eurasian patents is applicable only for the inventions related to medicine and pesticides for the term from the filing date till the date of getting the first permission of use minus five years. A license agreement for a Eurasian patent in Kazakhstan should be obligatory and registered in the Patent Office of Kazakhstan.
A security agreement for a Eurasian application and patent is possible in respect of a member country where the security institute is possible. In Kazakhstan, security agreements are not admissible at the moment. When comparing the time and cost of litigation, the following should be taken into account. The time required to obtain a patent in Kazakhstan and Eurasia is quite comparable.
The cost for obtaining the patent in Eurasia is, of course, significantly higher than in Kazakhstan, but may be comparable with two or three corresponding national applications in the member countries.
To summarise the above, we can conclude that the Eurasian patent system is not much different from the world’s leading patent systems. The Eurasian Patent Convention, which covers a wide variety of countries, was created to comprehensively enhance competitiveness and co-operation between the national economies of these countries, as well as to raise the importance of adequate IP protection therein. The Eurasian Patent Convention has enormous potential for innovation, which will undoubtedly increase every day.