I. EAPC and EAPO

The Eurasian Patent Convention (EAPC) was signed on 9 September 1994 by prime ministers of 10 CIS countries ­ former USSR republics ­ and came into force on 12 August 1995. The main purpose of the EAPC ­ and the Eurasian Patent Organization established by it ­ is to create an international regional system of legal protection for inventions on a basis of a common Eurasian patent covering the territory of all the Convention's Contracting States.

The Convention constitutes a special agreement within the meaning of Art. 19 of the Paris Convention and therefore all provisions of the Paris Convention are applied to a procedure of obtaining a Eurasian patents. The Convention is also a regional patent treaty within the meaning of Art. 45 of the Patent Cooperation Treaty (PCT). Therefore, Eurasian patents may be obtained on the basis of an international application filed in accordance with PCT.

The Eurasian Patent Organization is an intergovernmental organization, which may be joined by any country ­ on condition it is a state-member of the United Nations Organization and is bound by the Paris Convention and the PCT. Till now, 12 countries (all of them former USSR republics) have become signatories to the Eurasian Patent Convention, but only 9 of them (identified in Fig.1) has ratified it. These 9 countries together cover most of the territory of the former Soviet Union and hold the main parts of its population and its economical potential. Three remaining countries which signed the Convention are Georgia, Ukraine and Uzbekistan. The reasons they did not ratified the Convention were ­ and are ­ of a rather political character, and any increase in number of EAPO members is hardly to be expected in the nearest future.

An executive authority of the Eurasian Patent Organization is the Eurasian Patent Office (EAPO) having its seat in Moscow. Today this is a quite smoothly functioning patent office which proceeds each year from 9 to 11 hundreds patent applications coming from more than 30 countries all over the world. More detailed statistical information of the Eurasian Patent Office activities is provided by Fig. 2 and FIG. 3.

Main features of Eurasian Patent Legislation

The base of the Eurasian Patent Legislation is constituted by:

• Eurasian Patent Convention;
  
  
• Eurasian Patent Regulations;
  
  
• Rules for Drafting, Filing and Examination of Eurasian Application in the EAPO.

In the frame of this brief presentation I would like to highlight only a few most important features of the Eurasian Patent Legislation.

First of all, under the Eurasian Patent Convention, any person or entity, by filing a proper Eurasian patent application, can obtain a single patent valid in all contracting states. Such Eurasian patent for all main practical purposes is equivalent to national patents in contracting states. In other words, a Eurasian patent provides in each country protection of a patented invention in accordance with national patent legislation.

All conditions of patentability established by the EAPC are the same as in PCT or European Patent Convention. A procedure of issuing a patent in the EAPO is standard: formal examination is followed by substantive examination with each stage accompanied by payment of official fees (which will be discussed more detailed below)

PCT application according to Chapter I PCT should enter the regional Eurasian phase in 21st month from the priority date, PCT application according to Chapter II PCT should enter the regional Eurasian phase in 31st month from the priority date. By this date a request for Eurasian patent and a document of payment of official filing fee should be filed. All other documents including Russian translation can be filed within two months after filing date. I think such procedure is rather very comfortable for applicants.

When filing an Eurasian application all contracting states must be designated in accompanying request. It means that an applicant is not able at this stage to seek a patent protection only in some of the contracting states. The first opportunity to limit the territory to be covered comes at a moment of paying annuities after the Eurasian patent has been granted. If a patent owner does not pay a due annuity for a certain country, the patent become invalid over a territory of this country. Annuities are not to be paid before a Eurasian patent is granted, and they are paid not in each designated countries, but only to the Eurasian Patent Office.

The Eurasian Patent Regulations make provision for administrative revocation of a patent in the EAPO basing on oppositions of third parties filed in the EAPO within 6 month after patent is published. The EAPC make provision for judicial invalidation of a patent on the territory of any of the contracting state during all 20 years of potential validity of a patent. Such invalidation can be effected upon decision of a court of this country and as a ground for invalidation can be considered follows:

• wrongful grant of a patent because of noncompliance to patentability requirements;
  
  
• availability of features in the claims which features were absent in the originally filed application;
  
  
• untrue designation of an inventor or patent owner.

An official language of the EAPO is Russian. Therefore all applications and documents should be filed or later translated into Russian. All correspondence with the EAPO is to be done in Russian and exclusively through registered Eurasian Patent Attorneys. As a Eurasian patent attorney can be registered a patent attorney from any of contracting states. There are a special qualifying exam in the EAPO for candidates to be registered. As you can see on the table in Fig.4 the most of Eurasian patent attorneys are form Russia and Belarus.

The table in Fig. 5 shows the most important fees, such as filing, examination and granting fees. As can be seen, a sum of filing fees depends to a high degree on a total number of claims, while examination fee is determined basing on number of independent claims only and equals either USD800 or USD1400. Granting fee is fixed, annuities increase each year of a patent's validity. Evidently, there are many other fees, e.g. for extension or reinstatement of terms, late filing of translation, making amendments, filing appeals etc. Please take notice that applicants which are citizens of contracting states are entitled to a reduction of 90% of most Eurasian fees. Applicants which are citizens of states whose per capita national income is below 3,000 US dollars are entitled to a reduction of 80% of certain Eurasian fees.

An annual fee for keeping a Eurasian patent valid is equal to a sum of fees for keeping a Eurasian patent valid in Contracting States. Amount of the fee for keeping a Eurasian patent valid regarding each of Contracting States is established by corresponding State and practically in all countries annuities for Eurasian patents are 20-25% higher as for national patents in these countries. It should be pointed as a disadvantage of Eurasian patents.

Eurasian Regional Phase of PCT Applications vs National Phases in Contracting States.

Let us now take a look at an applicant selecting the best way to protect his invention in contracting states of the EAPC (EAPC countries for short).
Two options open to him evidently are:

1. to file an Eurasian application, or
   
   
2. to file an appropriate number of national applications.

We will consider two extreme cases falling under option 2: (a) filing a single national application, or (b) filing national applications in all 9 contracting sates. The country of choice in case (a) is in our example Russia.

Focus points of our comparative assessment are qualitative comparison and financial comparison. We will start with qualitative comparison as shown on Fig.6

Organizational efforts

Eurasian way obviously has great advantages over an option 2(b). Everybody present knows what does it mean to file 9 applications in different countries. Please notice that a reliable communication (e.g. by fax) with countries like Tadjikistan, Turkmenistan, Kirgizstan is very, very difficult. Further please take into account that in such countries like Armenia, Azerbaijan and Moldova all application materials must be in a national language, so our hypothetical applicant, having selected an option 2(b), shall prepare additional three translations into native languages for these countries. According to EAPC, total examination procedure is conducted in Russian language and all publications are in Russian language. Theoretically any country can request a translation of the specification and claims into a native language, but no one such request is known to be made till now.

As you probably know, in some Eurasian contracting states there are two type of patents for inventions: preliminary patent and regular patent. For example in Kazakhstan, after formal examination is completed, a preliminary patent must be requested and official fee of USD200 must be paid even if the applicant requested a regular patent. Preliminary patent is valid within 5 years. A fee for grant a regular patent is also USD200. It is my personal opinion, that it makes the whole procedure a little too complicated.

Speed

EAPO procedure is the fastest. Nowadays a formal examination of an application in the EAPO, on average, takes two months. A substantive examination begins exactly in 6 months after publication of a Eurasian application. In case of PCT application it means that for applications under Chapter I the substantive examination begins in 2 - 3 months after completing the formal examination. For PCT applications under Chapter II the substantive examination begins as soon as the formal examination is completed. Our experience shows that the examination in the EAPO is conducted rather rapidly. Usually it takes 6 to 8 months to have a first Office Action from the EAPO and an average total duration of the examination is about 12 months. After a granting decision is taken and issue fee is paid, it takes 4 to 5 months to have a Letters Patent.

Among the contracting states only the Russian Patent Office has comparable duration of examination procedure though it is, on average, somewhat longer than in the EAPO. In majority of other contracting states formal examination takes 4-6 months and even an official receipt comes only after several months has passed since a filing date.

Patent regulations

In all important practical aspects, Rules for Drafting, Filing and Examination of Eurasian Applications are similar to PCT Regulations. However, these Rules were introduced only recently, so practice of applying them consistently is only developing, which brings an element of slight unpredictability into results of patent examination. On the whole, however, a probability to obtain a patent on the base of an international application which was favourably evaluated at the preliminary international examination stage is very high. In comparison, Russian Patent Rules are more detailed, and practice of their application becomes more and more predictable. However, this practice has important peculiarities (which are out of the scope of this presentation), which in many cases makes proceeding of international applications more complicated. The main problem with Patent Rules in other EAPC countries lies in inconsistency of their employment by patent examiners.

An important problem of Eurasian patents which is not solved yet legislative, is a possibility of coexistence in one and the same state a national patent and an Eurasian patent for the same invention with the same priority date. Another point an applicant should take into consideration is that an Eurasian patent can be assigned only in all countries where it is valid. Of course licensing agreements have no such limitation.

Examination reliability

Patent Offices in all EAPC countries (with exception of Russia) are very young (less than 10 years old) and very small, and so the number of skilled patent examiners is limited. The EAPO is also young, but it drew its main human resources from the Russian Patent Office, with the result that some of best Russian examiners are working now at the EAPO. I may also add that a special agreement between the Russian Patent Office and the EAPO has been signed, under which all searches for the Eurasian applications are conducted by the Russian Patent Office. We estimate quality of such searches as high enough.

Costs

For our brief financial analysis, let us assume that the hypothetical (non-PCT) patent application comprises 25 claims (including two independent ones) and 30 pages of description, and there are no penalties for late filing etc. Ensuing expenses for all three cases under consideration will be as follows. In the EAPO case the total sum of filing, examination and granting fee will be amounting to USD4100. The total sum of fees in Russia will be USD1140, while for all 9 EAPC states it will be amounting to USD7440. Naturally all these figures are rather approximate since they do not include possible costs of real examination procedure. Please do not forget attorney charges and translation costs!

Revocation, invalidation etc.

According to the newest information from the EAPO no one case of administrative cancellation or judicial invalidation is known up to the date of October 10, 1999. It can be explained by following reason. In all contracting states the real patent system is still a new institution. For more than 70 years inventors and applicants from these countries could obtain only Author's Certificate, instead of a patent. Therefore most local businesspeople are not accustomed to employ such an instrument like a patent in their activity as well as to protect their rights in courts. It is correct both to national and Eurasian patents. Still it is to be noted that an amount of licensing agreements registered in these countries is growing up rapidly and in my opinion it means that in the nearest future we have to await for increasing of number of patent cases in courts.

Summing up

It can be concluded from above, that when thinking about patent protection in the Eurasian countries, the main issue to decide is: what procedure to choose in order to optimize expenses and scope of protection in the Eurasian region? If a decision to patent in Eurasian region is made, then evidently obtaining a Eurasian patent is the first choice. Indeed, a detailed study conducted by our company showed that, except in cases of very large applications (e.g. having 80-100 claims or even more) a Eurasian application costs less than filing separate applications in 3 EAPC countries (especially if a translations into 2 or 3 different languages must be done). And if we add to our analysis considerations of reliability and quality of patent examination and protection, an employment of the Eurasian Patent Organization seems to be the best for most of practically important situations of legal protection of new inventions in the territory of the Eurasian region.