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Last year new patent regulations entered into legal force in the Russian Federation. These new regulations include:
- “Administrative regulations for providing services by Federal Institute of Industrial Property on state registration of invention and issuance of a patent on invention, and its duplicate”;
- “Rules for compiling, filing, and examining documents that are basis for legally significant actions on state registration of inventions”;
- “Requirements for documents of an application for issuance a patent on invention”.

These documents replace old “Administrative regulations” that were in force until 26 July 2016.
The new regulations apply to non-PCT patent applications filed after 14 August 2016 and to PCT patent applications entered national phase in the Russian Federation after 14 August 2016.

Multiple dependency of claims is allowed

In the new regulations, multiple dependency of claims is allowed provided that the claims clearly express the essence of an invention. Because the essence of an invention is examined during substantial examination, the presence of multiple dependency in the claims no longer leads to issuance of an office action of formal examination.
Thus, for new applications being filed or entering national phase in the Russian Federation it is unnecessary to eliminate multiple dependency in the claims.
This is the good news for all the applicants, especially for our European clients as the amendment brings the Russian patent legislation in harmony with the European patent law.

Rules to file amendments to claims and specification clarified

On 1 October 2014, changes to the patent legislation (Chapter 72 of the Civil Code of the Russian Federation) came into force. These changes limited the applicants’ right to file voluntary amendments to patent applications.

The new patent regulations as in force of 14 August 2016 provided further details about when and how applicants can file amendments to their applications. The new regulations apply to non-PCT patent applications filed after 14 August 2016 and to PCT patent applications entered national phase in the Russian Federation after 14 August 2016.
According to the regulations currently in force, applicants have the right to file amendments to application materials in response to an office action from the Patent Office.

Applicants also have the right to file voluntary amendments in the following situations: 

1. PCT applications can be amended within 1 month from the entry date. Currently the Patent Office accepts amendments filed in original language with subsequent filing of a translation.

2. Voluntary amended claims and correspondingly amended description can be filed once after receiving a search report issued by the Patent Office.
The Patent Office conducts a search as part of substantive examination and issues a search report, but according to the new regulations the report on such search shall come together with the first office action and, therefore, is not useful for filing amendments.
As an alternative, applicants themselves can request a patent search. After receiving a report on such search, applicants can file voluntary amended claims and correspondingly amended description, but only once.
The official fee for conducting a search requested by applicants is 6500 rubles (currently about 110 USD) plus 6200 rubles (currently about 102 USD) for each independent claim over one. Applicants can choose independent claims that they wish to be searched. According to the regulations, the search shall be complete within 4-5 months from the date of filing a request.

3. If voluntary amended claims are filed within PPH program they will be accepted. In this case, standard PPH restriction applies that the scope of the amended claims cannot be broader than that of corresponding allowed claims from another jurisdiction. PPH can be requested before substantive examination starts.

4. Finally, applicants often wish to file amended claims to reduce official fee for examination by cancelling certain independent claims. In that case, the fee can be reduced without actually filing amendments. To do so, applicants can just request substantive examination of a subset of independent claims instead of examining complete set of claims.

Patentica tracks the changes in patent regulations in Russia and is glad to inform its client on the new possibilities.