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New patent regulations for patenting isomers, polymorphs and derivatives of known chemical compounds established by the Russian Patent Office

On June 8, 2021, an order of the Ministry of Economic Development of the Russian Federation No 155 will come into force introducing significant clarification amendments to the patent regulations governing the assessment of the inventive step and sufficiency of disclosure of the inventions relating to new forms and derivatives of the known chemical compounds.

In particular, Rule 77 of the Rules (inventive step) has been amended to include the paragraph as follows:

Inventions are not acknowledged as meeting the inventive step criterion if they are based, in particular:

“- on the creation of a chemical compound, which is a form of a known chemical compound (in particular, an isomer, stereoisomer, enantiomer, amorphous or crystalline form) or its derivative (in particular, a salt, solvate, hydrate, complex compound or ether/ester), if such a compound does not exhibit new properties from qualitative or quantitative perspectives as compared to the known compound, which do not follow to a specialist explicitly from the prior art.”

Rule 47 of the Requirements was supplemented by a new subclause 6, specifying that:

“6) if the invention relates to a chemical compound, which is a form of a known chemical compound (in particular, an isomer, stereoisomer, enantiomer, amorphous or crystalline form) or its derivative (in particular, a salt, solvate, hydrate, complex compound or ether/ester), the information about its new qualitative or quantitative properties as compared to the known compound, which do not follow to a specialist explicitly from the prior art, as well as information that reliably supports the existence of such new properties shall be provided.”

These legislative amendments are essentially aimed at legalizing the actual patent office and court practice that has developed in recent years, according to which, in order to acknowledge the non-obviousness of new forms and derivatives of a chemical compound, it must exhibit new unexpected properties as compared with the known forms and derivatives of the compound, while such properties must be supported by the reliable experimental data.

In view of the above-mentioned amendments, whenever a patent application pertains to a new derivative or form of a known chemical compound applicants are recommended to disclose the experimental support of any advantageous properties of such a new derivatives and/or forms in the specification, or at least be ready to submit the additional experimental data during substantive examination.

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Eurasian system for the protection of industrial designs: update

Since early 1995 the Eurasian Patent Convention (the EAPC) has been effectively used to obtain Eurasian patents for inventions in up to eight former USSR countries via single prosecution procedure conducted by the Eurasian Patent Office. The popularity of this unified patenting system has been recongnized by many professionals from the EAPC contracting sates suggesting to generilize the system with respect to other objects of the intellectual property.

As a result of this process the Protocol on the Protection of Industrial Designs under the EAPC was adopted during international diplomatic conference on September 9, 2020 in Nur-Sultan, the capital of Kazakhstan. The Protocol was singned by six out of eight of the EAPC Contracting States including Azerbaijan, Armenia, Kazakhstan, Kyrgyzstan, Russia and Tajikistan.

According to the established procedure the Protocol will come into force with respect to the first free countries, which are going to ratify the Protocol (Kyrgyzstan, Azerbaijan and Armenia) on March 17, 2021. In Russia the Protocol was ratified on November 10, 2020 and will come into force on April 11, 2021.

The Eurasian Patent Office is going to announce a starting date of the Eurasian system for the industial designs during the fist half of 2021.

Similarly to inventions the Protocol establishes the Eurasian system for the protection of industrial designs, which will allow to obtain a legal protection for an industrial design simultaneously in all of the Contracting States based on a single application submitted to the Eurasian Patent Office. Once a Eurasian patent on industrial desing is granted it can be made valid in any of the EAPC Contracting States upon payment of annuties fees.

New Rules for Opposition procedure in Russia

By the joint Order of the Ministry of Science and High Education and Ministry of the Economic Development No.644/261, new Rules for Dispute Resolution of the Chamber for Patent Disputes of the Russian Patent and Trademark Office were introduced and came into force on the 6th of September 2020. The new rules has substantially changed the procedure to resolve appeals and oppositions submitted to the Chamber for Patent Disputes harmonizing the overall procedure with that applied by the Russian courts.

Legalizing the widely adopted unofficial practice of arranging for online meetings and hearings, partially due to continued COVID-19 pandemic outbreak, the Rules now formally allow parties to attend the proceedings via video conference calls. This shall only require a request from a respective participant two weeks before the hearing. Audio and video recordings of all hearings shall be available to all parties if requested within 4 months form the hearing.

All kinds of official correspondence, including notices of appeals and oppositions, requests, and responses may now be filed via the official RUTPO website by using a personal account. The official website information will include receipts of opposition filed and official notifications to participants shall contain necessary coded identifiers, allowing to access all case materials from their personal accounts.

Formality check of submitted documents shall be shortened from 1 month to just 5 business days. Upon payment of the official fee for opposition or appeal, the first hearing must be set within 1 month for appeals against the RUPTO’s decisions, and 2 months for other oppositions.

Possible postponements of hearings are now more specific and shortened. The board of examiners now may only postpone hearings for 1 month at most in case of additional questions or arguments presented by parties, or whether an opposition is accompanied by a significant number of documents. The same applies for a sudden sick leave of a member of the board. Hearing may be also postponed for no longer than 2 months due to participant’s motivated request and for no longer than 3 months if the board seeks for an independent expert’s opinion.

In contrast to the previous version of the Rules patent owners can now independently request the board to consider the amended claims during the procedure. Claims can be amended on the basis of application materials without broadening the patent scope before the opposition, which is supposed to provide patent owners more flexibility and freedom to keep patents in amended form. On the other hand, petitioners submitting oppositions may raise new grounds as a course of opposition procedure in response to patent proprietor’s line of arguments or suggested amendments.

To recap the new Rules substantially clarify the procedure at the Chamber for Patent Disputes making it more suitable and transparent for all participants and general public.

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