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FAQ

Is a Power of Attorney mandatory? Is a scanned copy sufficient?

In Russia: Filing a Power of Attorney is mandatory. It can be submitted after the filing date, but must be executed by the applicant before the filing date. A scanned copy is sufficient. A Power of Attorney may be also signed using enhanced electronic signatures issued by Russian accredited centres.

 

In Eurasia: Filing a Power of Attorney is mandatory. It can be submitted after the filing date, but must be executed by the applicant before the filing date. Electronic signatures are formally not accepted, but a scanned copy of a signed Power of Attorney is sufficient.

Is the 31-month deadline for entering the Regional phase an absolute deadline? Can this deadline be extended? Under which motifs?

In Russia: According to Art. 1396(1) of the Civil Code, if the deadline for the national phase entry is missed, it can be restored provided that the applicant explains the reason. The Civil Code makes no provision regarding the deadline for the restoration. According to the Regulations under the PCT (Rule 49(6) of the Regulations), if the deadline for the National entry was missed unintentionally, the applicant’s rights can be reinstated within a year from the missed deadline subject to payment of the restoration fee.

 

In Eurasia: According to the Regulations under the PCT (Rule 49(6) of the Regulations), if the due date for the Regional entry was missed unintentionally, the applicant’s rights can be reinstated within a year from the missed due date subject to payment of the restoration fee.

Can a PCT application enter the Regional Phase earlier? What are the consequences on the other deadlines?

In Russia: A PCT application can enter the National Phase earlier. As for the consequences, only the due date for filing voluntary amendments, i.e. one month from the entry date, will be counted from the new established entry date.

 

In Eurasia: A PCT application can enter the Regional Phase earlier. In that case the deadlines that are counted from the entry date (e.g. deadlines for filing voluntary amendments and translations and for payment of the official fees) will be counted from the actual (earlier) entry date.

What is the deadline for filing the Russian translation? Can this deadline be extended?

In Russia: A Russian translation of an application shall be filed at the time of filing. In practice, if a translation is not filed within about one month from the date of filing, the patent office issues a formal office action requesting filing a translation. The term for providing a translation is three months from the issue date of the office action. This term can be extended for up to 10 months provided that extension fee is paid. Failure to provide translation within that term results is abandonment of the application.

 

In Eurasia: The Russian translation shall be filed within two months from the filing date. Extension of this term for additional two months is also possible subject to payment of the additional fee. Failure to provide translation within that term results is abandonment of the application.

What is the deadline for submitting an amended claim set? Can this deadline be extended?

In Russia: Voluntary amendments may be filed (i) together with the request for substantive examination (ii) during a one-month period from the national entry date based on the Regulations under the PCT; (iii) in response to an office action; (iv) in response to a report on accelerated search, if requested by the applicant; and (iv) together with the request for patent prosecution highway (PPH) procedure.

 

In Eurasia: Voluntary amendments to the claims, description and abstract of the application may be filed any time before issuance of a patent. If the amendments are filed within the period of 2 months from the entry date, no official amendment fee applies.

Is PPH available? With which offices? Must PPH be requested at the filing? Which documents are requested?

In Russia: The Russian Patent Office participates in the Global Patent Prosecution Highway (GPPH) program including PPH-MOTTAINAI and PCT-PPH programs. The GPPH program allows accelerating prosecution of a Russian patent application based on a positive work product, including a PCT work product, issued by another participating patent office with respect to a parallel patent application. The following patent offices currently participate in the GPPH program: AU, GB, HU, DK, ES, CA, IL, KR, NO, PT, RU, US, FI, SE, JP, IS, SG, AT, DE, EE, PL, CO, NZ, NPI, and VPI. The Russian Patent Office also has bilateral agreements within the frames of the Patent Prosecution Highway program with the Patent Office of China (PPH and РСТ-РРН) and the European Patent Office (РРН-Mottainai and РСТ-РРН).

 

In Eurasia: The Eurasian Patent Office has bilateral agreements under the PPH program. In this program substantive examination of an Eurasian application can be accelerated provided that there is a counterpart application with respect to which a positive opinion on the patentability was expressed by one of the following offices (acting either as national patent office or as ISA/IPEA under the PCT): JPO, EPO, CNIPA, KIPO, and PRH. PPH may be requested after filing an application, but at the date of filing a PPH request substantive examination of the application shall not have been started.

What is the deadline for submitting an Examination request? Can this deadline be extended?

In Russia: The substantive examination shall be requested before expiration of the 3 years period from the international filing date. A two-month extension of the deadline is available.

 

In Eurasia: Substantive examination of a PCT application shall be requested at the filing as required by the Eurasian patent rules. If for some reason the request has been not filed, the EAPO will issue a corresponding notification and there will be two months for payment of the fees. In case the deadline is missed, the applicant’s rights can be reinstated within a year from the missed due date subject to payment of the restoration fees and providing reasons for omission.

When can we expect receiving the first Office Action (OA)?

In Russia: Normally, the first office action is issued in a year after the examination is requested. As there are often several office actions issued, examination typically takes from 1 to 3 years.

 

In Eurasia: Normally, the first office action is issued in 4 to 6 months after the examination is requested. Normally examination takes from 1 to 3 years in the Eurasian Patent Office.

Is there a limit in the number of OAs that can be issued?

In Russia: Normally up to three.

 

In Eurasia: As many office actions as necessary can be issued.

Is there a limit in the number of extensions available?

In Russia: Non-final Office Actions can be extended for 1 to 10 months by submitting a request, which shall be filed before the due date for filing a response. Final Office Actions cannot be extended.

 

In Eurasia: No limit. But the extension fee increases progressively each month.

Can the issue fee payment be deferred? Until when?

In Russia: The Grant Fee is paid within 2 months from the date the Decision to Grant is issued. Alternatively, the grant fee can be paid within the 12 month grace period subject to payment an extra fee that is: either 50% of grant and renewals fees if the fees are paid within the first six months; or 100% of grant and renewals fees within the final six months. The patent is issued within 3-4 months from the date when the grant fee is paid.

 

In Eurasia: The Grant Fee is paid within 4 months from the date the Notification on Readiness to Grant a Patent is issued. Alternatively, the grant fee can be paid within the 2 month grace period subject to payment an extra fee. Also, a restoration is possible within one year from the expiration of the grace period.

Can the claim set be amended after receiving a decision on readiness to issue a patent?

In Russia: Only technical and obvious corrections are possible.

 

In Eurasia: The claim set can be amended before payment of the issue fee. Depending on the specific amendments made , the application may be returned to the examination stage.

What is the deadline for filing an opposition?

In Russia: An opposition could be submitted to the RUPTO by any party anytime time during patent life, or by an interested party after patent expiry period.

 

In Eurasia: An opposition could be submitted to the EAPO within 6 months from the date of patent publication in the EAPO Official Bulletin. If the opposition is satisfied, the patent will be invalidated on the territory of all contracting states. Alternatively, a notice of opposition can be filed in one or several contracting states individually according to the procedural rules acting in that state.

What is the last deadline for filing a divisional application?

In Russia: A divisional application may be filed any time if on its filing date the parent application has not been withdrawn or is not considered to have been withdrawn, and its filing date is accorded prior to the date of registration of the Russian patent for the parent application or, where a refusal decision has been taken on the parent application – before the possibility for appeal has been exhausted.

 

In Eurasia: A divisional application may be filed any time if on its filing date the parent application has not been withdrawn or is not considered to have been withdrawn, and its filing date is accorded prior to the date of registration of the Eurasian patent for the parent application or, where a refusal decision has been taken on the parent application – before the possibility for appeal has been exhausted.  If the parent application is considered withdrawn and the time limit for filing a request for restoration has not expired, a divisional application may be filed only after the restoration of this parent application.

What is the deadline for paying the annuities? Can a missed deadline be restored?

In Russia: No annuities are paid during the formal and/or substantive examination of a Russian application. The accumulated annuities beginning with the third year and each subsequent anniversary of the filing date that occurs prior to grant of the application are due upon grant of the application. Further renewals are paid for each year, which follows after the patent is granted by the date corresponding to the filing date. Belated payment is possible within 6 months after the due date with 50% fine. Restoration of a patent is possible within 3 years from the last missed due date.

 

In Eurasia: A renewal fee for a Eurasian Patent is equal to the aggregate sum of renewal fees established by each country party designated by the Applicant. The Applicant can pay renewals for all or for some countries, or even for one country. The first renewal is payable when the patent was granted. The first renewal is equal to the sum of the renewals for the current and all preceding years. Belated payment is possible within 6 months after the due date with 50% fine. Restoration of a patent is possible within 3 years from the last missed due date.

Are letters of consent accepted for overcoming citations of similar trademarks?

Generally, yes. Letters of consent are not accepted for well-known marks, in cases when the filed and cited trademarks are identical and in relation to marks applied for pharmaceuticals in cases when the similarity degree is high.

Are there trademark use requirements?

There are no use requirements at the filing or registration stage. However, a trademark that is not used for three years can be cancelled for non-use.

Is multi-class filing available in Russia?

Yes, a trademark application can include any number of classes. The number of positions within each class is not limited either.

Is it obligatory to register a license or transfer agreement with RUPTO (Rospatent)?

Yes, it is an obligatory procedure in order to make the disposal of trademark rights valid on the territory of Russia.

Is double trademarking allowed?

No, the Russian Civil Code does not allow registration of identical trademarks for identical goods/services in the name of the same company.

Can a trademark have multiple owners?

As for Russian trademarks, currently no, although it can change. The only possibility is to apply for a collective mark from an association with a common charter, but this is a separate procedure with its own nuances.

At the same time, international registrations with multiple owners can designate Russia.

How long does it take to register a trademark?

It usually takes from 6 to 18 months to register a trademark. 18 months is the maximum period allowed to Rospatent by the internal regulations.

Accelerated examination is also available, which takes 2 months from the application filing date. This term can be extended if an Office Action is issued, in which case the examination is put on hold until the Applicant files a response to the Office Action. Generally, it takes about 3-4 months from the filing date till the registration certificate issuance.

Please bear in mind that accelerated registration may potentially lead to controversy. For instance, the trademark search will not cover trademark applications filed after the search has been initiated but having an earlier priority date (via conventional or exhibition priority). In this case, the registered trademark can be contested in the future. That said, applications with claimed priority are rather few in number, which means the risks are minimal.

Is there an opposition procedure in Russia?

Russian pending trademark applications (or pending international registrations designating Russia) are not published for opposition by third parties, and search among prior rights is carried out by examiners of the Russian PTO. In case an examiner finds a trademark(s) protected in Russia and/or a trademark application(s) with earlier priority, which is considered confusingly similar to the claimed mark, an Office Action shall be issued.

Nonetheless, if one makes watching and reveals a conflicting trademark application, any interested person can file with the Russian PTO third party observations containing reasons impeding registration of the trademark – pursuant to Article 1493 of the Code. Such observations will be taken into account by an Examiner, and an Office Action is usually issued in connection thereto. Third party observations shall be filed before the substantive examination of the trademark application in question is finalized (substantive examination is usually terminated in 4-12 months from the application filing date).

The opposition procedure is stipulated by virtue of Article 1512 of the Russian Civil Code and refers to registered in Russia trademarks. If a trademark, which is confusingly similar to a prior trademark(s), has been registered in Russia through national procedure or in the framework of Madrid Agreement, it is possible to file an opposition to grant of protection to such trademark within 5 years from the publication date of the trademark subject to opposition. The opposition shall be filed with the Chamber for Patent Disputes of the Russian PTO, and an oral hearing is appointed for consideration of the opposition. Usually, the hearing is appointed in about 3-5 months after the filing date. Normally, the final decision of the Chamber is taken within one hearing. The decision taken by the Chamber shall be reviewed by the head of the Russian PTO within 2-3 months thereafter.

Are letters and numbers registrable as trademarks under the Russian law?

Simple letters and numbers as well as combination of consonant letters devoid of verbal nature are not registrable as trademarks. Such elements can be included as a part of trademarks in the nature of non-protectable ones.

Such marks can be registered in case they have an original design or if they have acquired distinctiveness through active use in Russia.

If the claimed mark contains a date, apart from a disclaimer, Rospatent will request a document proving the applicant’s right to use the date.

Is it necessary to file original documents with the Russian Patent Office (POA, etc)?

It depends on the proceedings.

Such documents as priority documents, agreements (assignment, license, franchise), letters of consent should always be provided in original format.

As for the POA, in the majority of cases a scanned copy is sufficient. However, in some cases it is necessary to provide the original:

  • upon a request from Rospatent (usually when the disposal of rights is recorded, and trademarks attorneys sign the documents on behalf of the parties)
  • when appeals and oppositions are considered by the Chamber for Patent Disputes (Rospatent’s department).
Is there accelerated trademark registration in Russia?

Accelerated examination is available, which takes 2 months from the application filing date. This term can be extended if an Office Action is issued, in which case the examination is put on hold until the Applicant files a response to the Office Action. Generally, it takes about 3-4 months from the filing date till the registration certificate issuance.

Please bear in mind that accelerated registration may potentially lead to controversy. For instance, the trademark search will not cover trademark applications filed after the search has been initiated but having an earlier priority date (via conventional or exhibition priority). In this case, the registered trademark can be contested in the future. That said, applications with claimed priority are rather few in number, which means the risks are minimal.

Are electronic trademark certificates available?

Yes, it is possible to choose the form of the certificate – either a paper one or an electronic one. It also slightly affects the amount of state fees.

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