Protection by Design15 November 2021
The introduction of the Eurasian Industrial Designs System is one of the recent notable events in the Eurasian region.
The Protocol on Protection of Industrial Designs (Protocol) to the Eurasian Patent Convention entered into force on March 17, 2021, and provides for a possibility to obtain a Eurasian patent for industrial design by way of filing a single application with the Eurasian Patent Office (EAPO) situated in Moscow, Russia.
The Protocol is valid for five countries: Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan, and Russia. Beginning June 1, 2021, the EAPO started to accept applications for Eurasian industrial designs.
What Is a Eurasian Industrial Design?
A Eurasian industrial design (EAID) is a solution of an outer appearance of an industrial or handicraft article, which should be patentable according to set criteria.
An EAID can obtain protection when it complies with the criteria of worldwide novelty and worldwide originality in its essential features. The novelty and originality of the claimed design will be checked by the examiner of the EAPO at the stage of substantive examination only in case an opposition is filed by a third party (based on non-compliance with said patentability criteria) and only in frames of information and materials submitted with the opposition.
There is a “grace period” of 12 months for filing an application for an EAID without affecting the patentability when the information related to this design has been disclosed by the author, applicant, or other person who received this information from them.
At the formal examination stage, the examiner will check whether the claimed design is not contrary to public interests or principles of humanity and morality in any of the member states of the Protocol.
During the substantive examination the examiner will check if the claimed design should be considered as non-patentable because:
- It includes, reproduces, or imitates official symbols or signs, or names and signs of international organizations without the consent of competent state bodies or competent bodies of international organizations; and/or
- All features of the claimed design are determined exclusively by technical function of the article.
The following requirements will be checked by the examiner on the stage of substantive examination only in case of oppositions by third parties against the claimed design, namely, the proposed solution should be deemed non-patentable if:
- It includes, reproduces, or imitates official names or pictures of cultural heritage sites without the consent of competent bodies of a member state or the right holder;
- It is identical or confusingly similar with prior trademarks of third parties or includes such trademarks;
- It is identical or confusingly similar with copyrighted objects earlier known on the territory of a member state or includes such objects without the consent of the copyright holder; and/or
- It is capable of misleading consumers in respect of the article or its manufacturer, or place of origin.
An application for an EAID is to be filed with the EAPO on paper or electronically in the Russian language. The applicants not domiciled in member states of the Protocol should be represented by Eurasian patent attorneys duly registered before the EAPO.
The application must indicate:
- Name/address of the applicant;
- Name/address of the author of the design;
- Address for correspondence;
- Title of the industrial design;
- Indication of the article or the product connected with the claimed design;
- Class of the International Classification for Industrial Designs (ICID); and
- Priority claim (if any).
The application should also include a set of pictures of the claimed design, but no more than seven views for each claimed design.
Dashed lines or color marking are acceptable to show the parts/elements which are disclaimed from claiming protection. The application can include up to 100 industrial designs provided they all relate to one class of the ICID. In case the pattern is claimed as an industrial design it can be included in one application with other designs relating to a different class.
Procedures Before the EAPO
During preliminary examination the claimed design and documents are checked for compliance with formal requirements and the requirement not to contradict the principles of humanity and morality at least in one member state.
In case the preliminary examination is positive the application is published for opposition purposes within a month from the date of forwarding the notification about positive result of formal examination. No deferment of publication is provided. Within two months from the publication date third parties are entitled to file an opposition against the EAID application.
After positive preliminary examination the EAPO conducts a substantive examination with due account of oppositions, if filed by third parties. The novelty and originality of the claimed design is checked by the substantive examination only in case of opposition, and the examiner’s check in this case is limited only by the information submitted along with the opposition.
A refusal can be objected by the applicant at the EAPO and further with the president of the EAPO.
The EAID application can be transformed into national applications in the member states (per choice of the applicant) in case of refusal to grant a Eurasian Design Patent.
In cases where there is a positive decision, the EAID is registered in the register and published subject to payment of the respective fees. The Eurasian Design Patent is issued promptly after publication, and it is valid in the territory of all member states.
Validity and Invalidation
The term of validity of a Eurasian Design Patent is five years from the date of filing an application and can be extended for a further five years several times, up to an overall term of validity of 25 years.
The Eurasian Design Patent can be held invalid in full or in part in two ways: as a result of an administrative procedure before the EAPO or as a result of proceedings in the national court(s) or other competent bodies of member states.
The invalidation of an Eurasian Design Patent because of an administrative procedure before the EAPO concerns all member states.
When the invalidation is the result of proceedings in national court(s) or other competent bodies of member states it will be valid only for the territory of the member state where the invalidation decision was issued.
Disposal of EAID Exclusive Rights
The EAPC provides various options for disposal of the exclusive right to the EAID, including assignment, licensing, pledge, and other options available under the local law of the member states.
The assignment of the EAID shall be permitted for the territories of all the member states within which the patent is valid only, while the license may be granted with respect to any member state. Partial assignment shall not be allowed.
In case the EAID covers several industrial designs, the assignment of the exclusive right for the EAID to another person shall be possible for all or any of the industrial designs specified in the EAID patent. The assignment of an industrial design shall not be allowed if it can be the reason for consumer’s confusion regarding the manufacturer of the product or place of manufacture of the product.
According to the EAPC, the assignment and security of interest agreements must be registered before the EAPO, while the license agreement must be registered by the national patent office of that member state in respect of the territory of which the relevant agreement has been concluded. After the registration of the license agreement, the national patent office shall immediately notify the EAPO of the registration.
Enforcement of EAID Exclusive Rights
The exclusive right to the EAID shall be recognized and valid within the territory of all member states and the EAID patent owner shall have the right to enforce its EAID exclusive rights in accordance with the national laws and procedural rules applicable to the national industrial designs in the member state where the infringement takes place.
According to Rule 84 of the Patent Instruction to the EAPC, the EAID shall enjoy a temporary legal protection for the EAID in the territory of all member states. The scope of temporary legal protection shall be determined by all the essential features of the industrial design, which are reflected in the images of the product published by the Eurasian Patent Office.
The patent owner shall have the right to claim reasonable compensation from the persons who used the claimed industrial design during the period between the date of the EAID application publication and the date of the EAID patent publication, in accordance with the national legislation of the member state in which territory the industrial design has been used. The temporary legal protection shall not be deemed to have occurred if a patent application has been rejected, the possibilities for appeal of which have been exhausted, or if the Eurasian application is considered withdrawn.