On Patent Protection In BRIC. Part 2

The definition of the state of art, which in all BRIC countries is directly associated with novelty and inventiveness conditions, includes any information which became publicly available in the world before the priority date of the claimed invention or utility model, every granted national patent and filed application with early priorities.

In Russia prior art for inventions is altered from these standard definitions due to Russia participation in the Eurasian Patent Convention which is a regional convention including now 8 member-states (all of them being former USSR republics). This Convention allows obtaining a regional patent, which after its grant becomes valid in all member-states without necessity of its national validation what is required for e.g. granted European patent in relevant jurisdictions. Since examination proceedings are independent in Russian and Eurasian patent offices and both offices have access only to own backlogs of filed but not published applications it was necessary to foresee measures avoiding collision of rights granted by the regional and national patent offices. With such purpose the Eurasian Patent Regulations got provisions aimed at avoidance of «double protection» setting forth that in any member-state a Eurasian application or patent with an earlier priority date shall prevail over the subsequent national application or a national patent for an identical invention and vice versa. In its turn the Russian Patent Regulations contain provisions requiring inclusion of granted Eurasian patents in the state of art together with patents granted by the Russian PTO. In the modern world information spreads with amazing speed being provided by all tools for electronic communication. In such environment leakage of information becomes a usual thing even not because somebody steals or intentionally disseminates it but rather because people making open disclosure yet cannot imagine that such disclosure made in one hemisphere may become almost immediately known in another. In order to give the inventor or applicant a chance to cure consequences of invention disclosure occurred before the application for such invention is filed all four legal systems introduce the concept of the grace period. Under this concept a public disclosure of information about an invention can be excluded from the prior art with regard to which patentability is estimated if the disclosure meets certain requirements and an application for invention or utility model is filed after it within pre-defined time frame.

Brazilian and Russian legislations are unanimously lenient to the reasons why the disclosure occurred and who made it — an inventor, an applicant or somebody else who obtained information about an invention or a utility model directly or indirectly from the inventor or the applicant. Even publications made by the patent offices are also recognized as falling under the definition of the one who obtained information directly from the applicant. Therefore in these two countries any disclosure is excusable if it can be at least indirectly associated with an inventor or an applicant. Brazil and Russian laws excuse both national and international disclosures, what in practice means, for example, that a patent granted in Russia can be excluded from the prior art if the same applicant or inventor files for the same invention an application in Brazil within the grace period as defined by the Brazilian law.

In China and India the provisions regarding excusable disclosures are more strict. Chinese patent legislation considers as excusable only first disclosures made at international exhibitions recognized by the Chinese Government or disclosures made at prescribed academic technological meetings. «Prescribed» can hardly be interpreted substantially broader than also «recognized by the Chinese Government».

Indian Patent Law excludes from the prior art under the grace period concept also limited types of disclosures. Such disclosures are: a display of an invention with the consent of the inventor or the applicant at an industrial or other exhibition recognized by the Central Government by notification, use of an invention with the consent of the inventor or the applicant for the purpose of an exhibition in the place where the exhibition is held; publication of any description of the invention in consequence of the display or use of the invention at any exhibition of the mentioned kind; the use of the invention, after it has been displayed or used at a recognized exhibition as and during the period of the exhibition, by any person without the consent of the inventor or the applicant; and a description of an invention in a paper read by the inventor before a learned society or published with the inventor’s consent in the transactions of such a society. As an excusive circumstance the Indian patent law also adds public working in India.

Time frames for filing an application benefitting from the grace period are 6 months in China and Russia and 12 months in India and Brazil.

The grace period concepts provided by the legislations of BRIC counties are from time to time used not only by local but also by foreign applicants allowing them to obtain patent rights otherwise lost due to their own previous disclosure of the invention or utility model. However, no one of the four compared legal systems, even those providing most lenient requirements, are capable of addressing the situations with the intervening disclosures of the inventions that occurred without any association to an inventor or an applicant. One example of such intervening situations occurs when after the own disclosure of the information related to the invention according to a later filed application occurs an independent disclosure of the same invention but by another party. After such disclosure the whole concept of grace period in any of the compared legislation fails since the later occurred independent disclosure becomes forming the general prior art for further application. Moreover, a mixture of prior disclosures and filed applications can even form a legal deadlock when no right can be granted to either party, including the one that was hoping to benefit from the grace period exception. This and another deficiencies of the grace period concepts not only in BRIC countries became apparent after America Invents Act (AIA 2011) provisions carefully addressing these issues. Grace period regulations in AIA and BRIC countries legislations detailed Information Bulletin #4 (94) 2013 comparison is, however, a topic going beyond the frames of the this article and shall become one of the coming articles.

A patent or a utility model application is considered in a national language. But in what language shall it be initially filed? Such question is sometimes very critical for foreign applicants willing to get protection for their industrial property rights in various jurisdictions because failure to observe the language of filing requirement in some of them leads to fatal consequences to the sought patent right. And naturally any urgent translation is capable to increase the filing expenses in times comparing to «in time» preparations.

First of all — a few words about the deadlines for entering BRIC countries with applications filed under the Convention procedure and by using the PCT route. Under the Paris Convention patent and utility model applications can be filed in BRIC countries within 12 months from their earliest priority date. National phases of these countries when using the PCT system shall be entered within 30 months from the earliest priority date in Brazil and China and within 31 months in India and Russia.

Applications filed with the Brazilian Patent office via the Convention procedure shall be presented in English with translation in Portuguese submitted together with the English version or no later than 2 months from the filing date. When a PCT application enters the Brazil national phase it shall contain claims in Portuguese. Applications filed with the Indian Patent Office shall be presented in English or Hindi, applications filed with the Chinese Patent Office are accepted only if filed in Chinese. The Russian Patent Office accepts applications submitted in any language, the only requirement is that the main (front) page that contains all necessary identification data shall be submitted in Russian. Then, if an application needs translation it can be conveniently submitted within two months from the filing date without any official fee or later on, up to 12 months later, but with payment for extension of term for responding to a formal examination office action objecting lack of the Russian language translation.

After an application has been properly filed it shall undergo substantive examination — if this is an application for invention in any of BRIC countries or a utility model application in Brazil, or formal examination — if it is a utility model application in China or Russia. The scheme of substantive examination is similar in all the compared systems: an examination is triggered by an applicant’s request; the patent office substantive examination checks the claimed subject-matter on its statutory admissibility, compares to the prior art, issues office actions and finalizes the substantive examination by a decision to grant or not to grant a patent. Interestingly, the Chinese patent law reserves for the patent office administration a right of triggering a substantive examination. Indeed, according to article 35 of the Chinese Patent Law the Patent Administration under the State Council may on its own initiative proceed to examine any application. It is yet unclear under which circumstances such right can be used since at the date of preparing the present article there was no one such case reported, but most likely this right was reserved for situations when clearness with grant or non-grant is required, especially with an invention being of significance to public or State interest.

Duration of examination — although defined in no one of the compared patent systems cannot be muted in this article at least because asked in vast majority of queries sent to local patent attorneys by potential applicants. Figures given in this article were obtained by averaging prosecution terms over a number of applications regardless of their technical fields. Certainly these figures may vary depending on the complexity of inventions, it is almost a rule that e.g. biotech applications are examined longer than mechanical ones. Moreover, all the four patent offices do much to reasonably shorten prosecution times without reducing the quality of a search and an examination. Finally, these figures reflect time frames from requesting an examination to issuing the first office action or the decision on grant if latter is issued without intermediate office actions. The shortest timeframes are in procedures with the Chinese or Russian Patent Offices — the first office action or the decision on grant may be expected within 1 year from the date of requesting a substantive examination. Then goes India where such timeframe is within 2–3 years, and Brazil still demonstrates the longest timeframe — up to 10 years. With the utility models the timeframes are estimated from the filing date to the grant date for all the three BRIC jurisdictions that grant utility model patents. Shortest timeframe is in Russia where a utility model can be obtained within 7–8 months from the filing date; then goes China with about 12 months timeframe and again Brazil closes this list with at least 5 years long duration of utility model proceedings. In order not to leave Brazil with a «bad leader» seal in this comparison it should be mentioned that the Brazilian Government undertakes lots of efforts to increase and educate the examining staff so as to deal with the substantial backlog of yet not examined applications and it is believed that coming years will show speeding up the examination proceedings. And the length of timeframe with utility model patent grants in Brazil is naturally explained by the same lack of examining staff since utility models in that country are examined on merits in the similar to inventions way.

(To be continued)