There are great varieties of foreign patenting strategies varying in ingeniousness, cost, and conformity to the tasks set; the choice of the best possible one depends on many circumstances.
The cost of obtaining legal protection for an invention, a utility model or an industrial design abroad is impacted by many factors and, in general, the cost consists of the expenses for preparing and filing the applications in the country of origin, for translation into the working language of the patent office, payment for services of a foreign patent attorney and official fees.
In order to assist you in obtaining a patent in the countries and regions of your interest, our experts will advise you on the specifics of legal protection for any industrial property items in Russia, in former Soviet republics and far-abroad countries, will help you to develop the best cost- and time-efficient strategy for patent protection abroad, will prepare the description of the invention, the utility model or the industrial design, formula of the invention, the utility model or the list of essential features of the industrial design in accordance with the requirements of Russian and foreign legislations, will adapt the application files to the requirements of a patenting country or a regional patent organization, will conduct clerical works with foreign patent attorneys and foreign patent offices, will conduct patent information retrieval to assess the patent perspectives of the application, taking into account the requirements of Russian and foreign legislations, and will help you to assess the prospects and risks related to exhaustion of rights, parallel import, freedom-to-operate and other issues arising in connection with international trade in patent intensive products.
Regional patent organizations, applications and patents
The existing national and regional patent protection systems are completely independent of each other. Nowadays, there is no any international agreement for mutual recognition of patents by all or most entities under international law, that is why the existence of a national or a regional patent does not in any way prevent the use of your development beyond the protected area. To expand the area you should timely submit the applications to each of the national patent offices or regional patent organizations, you are interested in.
Currently only five international and intergovernmental organizations grant regional patents based on a single application:
1. Eurasian Patent Organization
grants patents for inventions valid in the territory of Turkmenistan, Belarus, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Moldova and Armenia;
2. European Patent Organization
grants patents for inventions valid in Austria, Albania, Belgium, Bulgaria, Switzerland, Cyprus, the Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, the Great Britain, Greece, Croatia, Hungary, Ireland, Iceland, Italy, Lithuania, Liechtenstein, Luxembourg, Latvia, Monaco, the former Yugoslav Republic of Macedonia, Malta, the Netherlands, Norway, Poland, Portugal, Romania, Sweden, Slovenia, Slovakia, San Marino and Turkey;
3. Office for Harmonization in the Internal Market of the European Union
grants patents for industrial designs valid in the territory of all States of the European Union): Austria, Belgium, Bulgaria, the Great Britain, Hungary, Germany, Greece, Denmark, Ireland, Spain, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Finland, France, the Czech Republic, Sweden and Estonia
4. African Intellectual Property Organization
grants titles of protection for all types of industrial property items valid in the territory of Benin, Burkina Faso, Gabon, Guinea, Cameroon, Congo, Cote d'Ivoire, Mauritania, Mali, Niger, Senegal, Togo, CAR and Chad.
5. African Regional Industrial Property Organization
grants titles of protection for all types of industrial property items valid in the territory of Botswana, Ghana, Zambia, Zimbabwe, Kenya, Lesotho, Malawi, Swaziland, Sudan, Uganda.
Citizens and legal entities registered in Ukraine, Kyrgyzstan, Armenia, Georgia, Moldova, the European Union and some other countries can obtain legal protection for an industrial design in the entire territory covered by the system of international deposit of an industrial design under the Hague Agreement by submitting a single application to the International Bureau of the World Intellectual Property Organization (WIPO).
Where are the utility models protected?
Unfortunately, currently there are no agreements for a regional utility model patent (except for the African regional patents), so in order to obtain legal protection, you should apply to each of the country where this type of protection exists:
- Armenia, Azerbaijan, Belarus, Georgia, Tajikistan, Kazakhstan, Kyrgyzstan, Russia, Ukraine, the Republic of Moldova, Uzbekistan.
- Albania, Austria, Bulgaria, Denmark, the Czech Republic, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Poland, Slovakia, Spain and Portugal.
- Turkey and Kuwait.
- China, Hong Kong, Macao, Taiwan, Japan, Malaysia, Philippines, the Republic of Korea and Laos.
- Mexico, Argentina, Brazil, Bolivia, Chile, Colombia, Guatemala, Honduras, Peru, Aruba, Costa Rica, Trinidad and Tobago, Uruguay, Belize and Ecuador.
- Australia and Indonesia.
- Angola and Ethiopia.
Where is the first application submitted to?
According to Clause 1 of Article 1395 of the Civil Code of the Russian Federation, applications for inventions and utility models created in Russia can be submitted to a foreign patent office only after verification for information constituting a state secret (it usually takes from 2 to 6 months from the date of filing the application). That is why not only Russian, but also international and Eurasian applications are initially submitted to the Russian patent office. Failure to comply with this procedure gives rise to administrative (Article 7.28 of the Administrative Offences Code) or criminal (Article 283 of the Criminal Code) liability.
Although this restriction does not apply to industrial designs, nevertheless, it is also advisable to submit the first application in Russia, as this will reduce the costs related to claiming Convention priority.
How to obtain and not lose the Convention priority?
According to Article 4 of the Paris Convention of 1883 for protection of industrial property, establishing Union for the Protection of Industrial Property, all members of the Union shall recognize your priority right as of the date of filing the first application to any of the member countries of the Union or to any of the regional patent organizations, if the corresponding convention application for an invention or a utility model is filed within 12 months, and the application for an industrial design - within 6 months from the date of filing the first application. If there are valid reasons, these terms can be extended for no more than 2 months.
Currently, all existing entities under international law are members of the Union, except for Afghanistan, Brunei, Cape Verde, Eritrea, Ethiopia, the Federated States of Micronesia, Fiji, Hong Kong (WTO legislation applies), Kiribati, Kuwait, Maldives, the Marshall Islands, Myanmar, Nauru, Palau, Samoa, Solomon Islands, Somalia, Taiwan (WTO legislation applies) and Vanuatu.
What is an international patent application for?
If, in order to reserve the priority right, you for some reason have no time to make a decision on filing applications abroad within 12 months after filing the first application in Russia, there is only one way – to file an international application in accordance with the Washington Patent Cooperation Treaty of 1970 (PCT) and to get an additional delay of 18-19 months, with the possibility to extent for a maximum of 12 months, if there are valid reasons.
You will be able to spend this time for researching foreign markets, fund raising for patenting and implementing developments abroad, entering into agreements with contractors, searching for investors and potential licensees in the patenting countries. If necessary, the right to submit an application in certain countries and regions may be transferred to third parties.
In accordance with the Washington Patent Cooperation Treaty of 1970 (PCT) within 9 months after filing the international application, the Russian patent office or the European patent office (at your discretion) conducts international search, and the results, together with the application text and a written opinion on patentability, are published by the International Bureau of the World Intellectual Property Organization (IB WIPO) approximately in 18 months after the first application is filed, whereupon you receive temporary legal protection for the invention in the countries recognizing the language of publication.
The results of the international search reveal the problems awaiting the applications in the national and regional phases, help to solve them in a timely and cost-efficient manner, and guarantee the discounts in some patent offices.
Before or immediately on the day of completion of the international phase, you should submit the applications to the national patent offices and regional patent organizations you are interested in. No titles of protection are issued under an international application.
How to obtain a patent in CIS countries?
The Eurasian Patent Convention allows you to obtain a Eurasian patent valid in the territory of Turkmenistan, Belarus, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan, Moldova and Armenia by submitting a single application for an invention to the Eurasian Patent Office (EAPO).
The official fees of the EAPO for legally significant actions in accordance with the Eurasian Patent Convention are approximately twice higher than those of the Russian Patent Office.
In order to obtain legal protection for an invention, a utility model or an industrial design in Ukraine, Uzbekistan, Georgia and the Baltic States, separate applications shall be submitted.
