Все новости от 23 июля 2004 г.

Eurasian and European Patents - similarities and differences

When we speak of European Patent Conventions, what is meant is: European Patent Convention (EPC), adopted in October 1973 in Munich, and Eurasian Patent Convention (EAPC), which was adopted in February 1994 in the WIPO headquarters in Geneva.

The 17-year difference between the terms of existence of the two Patent Offices of course had an effect on the number of countries party to the said patent conventions. But, in the case where these two Patent Offices are given consideration within the frame of the world patent system, then thanks to them the issue of getting patents in Europe on the whole has become significantly simpler and of higher quality. These two conventions provide a patent protection over the territory of about 40 countries.

There are two sides to the experience of Russian and Eurasian patent attorneys cooperating with EPO and EAPO. On the one hand there are 25 years of relationship with European patent attorneys and through them with EPO, but at the same time, taking the specificities of the Russian economy into account, this interaction in respect to particular patent applications, taking their number into account, leaves much to be improved. So, in 2001 and 2002, patent attorneys of "Gorodissky & Partners" sent respectively 16 and 13 European applications to EPO.

At the same time, we have been working with EAPO for a substantially less period of time, but, in the first place, direct ó with examiners of EAPO, and in the second place, with a significantly greater number of patent applications. Thus, during the indicated years we filed 567 and 561 Eurasian applications, respectively, with EAPO.

Both Patent Offices act as centralized offices for filing, searches and examination of applications. Both of the regional conventions are harmonized with international treaties.

Exclusive rights in accordance with European (EP) and Eurasian (EA) patents enter into force from the day of publication of the indication {EP)/information (EA) of the grant thereof in the EP and EA Bulletins, the patents providing the same rights and being subordinate to the same provisions as a national patent, if the conventions do not provide otherwise.

The term of validity of the said patents is 20 years from the filing date of an application. However, European Convention provides party countries with the right to extend the term of validity of a patent in the case where the subject matter of the patent is a product or method of preparation, which was subjected to the Administrative Permission procedure prior to marketing of the patent (Article 63 of the European Convention). Such a provision, unfortunately, is not to be found in Eurasian Convention, although national patent legislation in a number of countries party to that convention, including the Russian Federation, already contains this provision.

In accordance with both conventions, the scope of protection provided by a patent is determined by the content of claims. The specification and drawings are used for interpretation of claims. Both conventions are close in their approach to interpretation of claims, i.e. neither literal nor liberal interpretation is maintained. In our opinion an extremely important feature is that not only the specification, but also the drawings, are used for interpretation of claims. This undoubtedly normalizes a consideration of matters concerning infringement of patentee's rights in controversial situations and provides greater possibilities to applicants and patentees with the proviso that the specification of an application and drawings are properly executed.

In respect to questions relating to infringement of a patent, European Convention does not contain provisions relating to the definition of acts which are an infringement of the patent. Issues concerning infringement and validity of a European patent relate to the competence of national legislation and courts.

Eurasian Convention (Rule 17) contains the aforementioned provisions, although questions relating to infringement and validity of a patent are also given consideration by courts of the party countries and their decisions have force only on the territory of the country in which the matter has been instituted. And there is a comprehensive list in Eurasian Convention of acts which constitute an infringement and this list provides a patentee with wider authority for bringing charges against a patent infrmger as compared with patentees in the majority of countries party to Eurasian Convention, who have been granted national patents.

European applications may be filed with EPO in Munich, The Hague, Berlin or in any national Patent Office of party countries. The applications may be filed in any of the three official languages of EPO, in particular English, French or German. Since EAPO is located only in Moscow, Eurasian applications are only filed with EAPO in Moscow or in national Patent Offices of party countries, if this is provided for by the national patent legislation of these countries. The official language of EAPO is Russian.

The procedures for filing an application, search and substantive examination, publishing the application and granting a patent are similar in a number of respects in EPO and EAPO. The mam differences are due to the three official languages, which may be used in proceedings of EPO, and also to the subsequent procedure for entering a granted European patent into force in countries in which the state language is not one of the official languages of EPO.

These differences begin to manifest themselves directly at the stage of filing applications in EPO and EAPO. On the whole, both Patent Offices require the presentation of one and the same set of documents when an application is filed.

When a European application is filed, those countries should be indicated in respect to which a European patent will be requested. Such an indication is carried out by paying a fee in respect to each country or paying a fee for seven countries, which automatically means that a European patent is being requested in all the countries party to European Convention. This is a relatively strict requirement of European Convention, since after expiration of the time limit for indicating the countries in which the European patent will be in force, the introduction of countries not already indicated becomes impossible. A similar procedure is not provided for in Eurasian Convention.

Filing an application with EPO without the presentation of a translation of that application into one of the official languages results in that such an application is deemed to be withdrawn, but EPO leaves an applicant with a possibility of presenting the translation within two months following the date of receipt by the applicant of a notification from EPO that the application, which does not contain a translation, is deemed to be withdrawn and that a relatively significant fine (500 euros) should be paid. There is an exception to this requirement - applicants from countries party to European Convention may present the application materials in the state language of their country with the presentation of the translation into the official language of EPO not later than thirteen months following the date of the earliest of the requested priority dates. Furthermore, applicants from such countries enjoy a 20% discount, which is granted in respect to the fees for filing an application, for examination thereof and also for filing an appeal against an Official Action.

An application is filed with EAPO in the Russian language. A translation of the application filed in another language into Russian should be presented within two months following the date of filing the application or, under condition of payment of an additional fee in an amount of $ 100 USD - within two more months following the date of expiration of the preceding two months.

Case proceedings in EPO may be carried out in any of the three official languages, but the main language for the case proceedings, which should be used for introduction of amendments into an application, is that language in which the application is filed. A divisional application should be filed in the same language as the patent application.

EPO stipulates several other requirements in respect to international applications in which EPO is indicated as the receiving Office and which are published in one of the official languages of EPO. It is considered that such applications comply with EPO requirements in respect to the language in which the application materials are presented, but an applicant may present a translation thereof into another official language if he desires to select the latter as the main language for further case proceedings.

An applicant filing an application in accordance with PCT and indicating EPO may go to the European phase within 31 months following the filing (priority) date of the PCT application independent of whether or not a request will be submitted for an international preliminary examination.

EAPO will not begin consideration of an international application or a formal examination in respect thereto until 31 months have passed from the priority date of the international application. However, in accordance with a special request submitted by an applicant, EAPO may begin examination of the international application at any time prior to expiration of the indicated time limit.

In accordance with both Conventions, patents are granted for inventions that are novel, involve an inventive step and are industrially applicable. Both Conventions contain virtually identical lists of exclusions from patentability, differing only in lists of exclusions. In accordance with Eurasian Convention, patents are not granted for plant varieties and animal breeds, nor also for solutions, the use of which is contradictory to public order and morals. European Convention supplements this list with methods of acting on a human or animal organism by means of surgery or therapy, and also methods for diagnosis of a human or animal organism. In accordance with the direct indication of section 4 of Article 52 of European Convention, such solutions are not deemed to be patentable in view of the fact that they are not industrially applicable, but a more detailed interpretation of this provision is provided on a precedential level in the decision G3/95of Board of Appeal, in which, in particular, it is indicated that such an exception is not valid in respect to devices and instruments intended for use in surgery or therapy or to materials intended for producing thereof. Furthermore, this exception does not extend to other methods of acting on a live human or animal organism, for example, for the removal of body tissue, while methods for diagnosis are patentable in the case where they are realized in respect to, for example, body tissues, which after being subjected to the method for diagnosis are not returned to the organism from which they were taken.

Using interpretation provided on a precedential level as an example, one more specificity of the procedure for obtaining a European patent in particular and of European Convention in general should be noted. In particular - at the moment a relatively large portion of European Convention is provided in addition to material and procedural norms by precedential norms developed by the Board of Appeal. These precedential norms provide the necessary interpretation of virtually all the provisions of European Convention, which makes it possible for EPO to develop a homogeneous practice, and for all those engaged m patenting inventions in accordance with the procedure of that Convention - to act in accordance with that practice.

Together with carrying out preliminary (formal) examination of applications, EPO and EAPO carry out a patent search in respect thereto and send the results of the search to an applicant. In respect to original applications filed with EPO, it has stated that they do everything possible to send the applicant the results of a patent search within six months following the date of filing the application. EAPO has not made such statements, but practice shows that in respect to original applications filed with EAPO, the results of the search are sent within virtually the same six-month time limit. The early dispatch of results of the search to an applicant makes it possible for him to make a conclusion on the advisability for further examination proceedings in respect to the filed application or for supplementation of the application. Since the results of the search come to the applicant before the official publication of the original application, the applicant may also withdraw the application without any consequences and, for example, after revising it file it again.

The results of the patent search are published by EPO and EAPO together with the application itself 18 months after the filing date or priority date, if the latter is requested. In EPO, this is publication A1. In the case where there is no search report, only the application is published - publication A2. The search report may be published separately, but with indication of the application to which it relates - A3. There is a slightly different procedure carried out in respect to PCTapplications. Rule 70 states that the international search report and its publication replace the international search report and its publication which are stipulated by Eurasian Convention. A similar provision is provided by Article 157 of European Convention, but with indication that EPO carries out an additional search in respect to all international applications.

Provisional legal protection, granted to a claimed invention within the scope of the published claims, enters into force from the date of publication of the application. However, the conditions in accordance with which a provisional legal protection enters into force are different for European and Eurasian applications. In respect to a published European application, provisional legal protection accrues only for designated states, the selection of which is confirmed by payment of a corresponding fee when the application was filed. Furthermore, a provisional legal protection for an invention according to a European application does not accrue in respect to those countries, the state language of which is not one of the official languages of EPO, and a translation of the claims published in that state language was not presented.

As distinctive therefrom, the publication of a Eurasian application in Russian in accordance with Rule 10 causes the accruement of provisional legal protection of an invention within the scope of the published claims over the territory of all states party to Eurasian Convention.

The accruement of provisional legal protection in respect to European and Eurasian applications filed with those offices in accordance with the PCT procedure is regulated in an identical manner-for EPO, a provisional legal protection accrues from the date of publication of the European application in the international phase in one of the official languages of EPO, for EAPO - accordingly in the Russian language.

Both Conventions stipulate that an applicant should submit, within a six-month time limit from the date of publication of the search report, a request that substantive examination of the claimed mvention(s) be carried out. In respect to international applications filed with EPO and EAPO on the 31st month-completion of the PCT international phase the aforesaid time limit is missed for sure. Therefore, in respect to these applications, the request for conduction of substantive examination should be submitted by payment of corresponding fees when such applications are filed.

The period of time that passes before the first Official Action is issued after a request is submitted for the conduction of examination may depend on the backlog of an examiner of EPO. This period of time may be reduced if a request for acceleration of proceedings in respect to the application is submitted.

Further proceedings in respect to examination in EPO and EAPO differ mainly only in respect to the approach of these Offices to the question of a possibility of introducing further changes into the application materials. Both Offices undoubtedly exclude the possibility of changing the essence of the claimed inventions. However, the procedure adopted by EPO is more strict as compared with the procedure of EAPO in respect to a number of other amendments. According to EPO procedure, amendments, which are introduced into the claims and relate to subject matters that were not given consideration in the process of the search and are not related to the subject matters claimed in the original claims by one and the same inventive concept, are not accepted. Furthermore, subject matters that were withdrawn from consideration in the course of examination cannot be subsequently restored.

During the whole term of consideration of a European application by EPO, annual fees should be paid for maintaining the application in force. Such fees in EAPO are paid after the grant of a Eurasian patent and are calculated by adding the fees for maintaining a granted patent in states party to Eurasian Convention EAPC from [he filing dale of ihe application

In EAPO, as in EPO, the procedure of substantive examination is completed either with the agreement of an applicant with a notification being sent to him by the examiner containing a final draft of specification and claims with which a patent may be granted or with a decision issued by the examiner to refuse the grant of a patent.

After the publication of information on the grant of a patent, EPO provides a third party nine months, EAPO -six months, in which an appeal against the grant of the patent may be sent. Grounds for satisfying such an objection are the same - nonconformity of the granted patent with the conditions of patentability or the presence of features in the patent which were not mentioned in the original application.

An Official Action of EPO and EAPO to refuse the grant of a patent may be appealed.

In accordance with Eurasian Convention, an appeal against a decision to refuse the grant of a Eurasian patent shall be filed within a three-month time limit from the date of receipt of a notification of such a decision. A appeal shall be given consideration by a Board of Appeal consisting of three examiners, at least two of which did not earlier be involved in examination of the application in respect to which the refusal decision was issued.

In accordance with European Convention, an appeal against a decision to refuse the grant of a European patent shall be filed within a two-month time limit from the date of notifying an applicant of such a decision. An originally submitted appeal shall be given consideration by Examination Department that issued the refusal decision, and in the case where the appeal is sufficiently well-founded, this Department is empowered with the right to reconsider its decision. In the case where the decision remains without change, the appeal is forwarded to the Board of Appeal. The Board of Appeal gives consideration to the essence of the appeal and issues a decision thereon. In the case where a decision is issued to satisfy the appeal and to return the application for further examination.

Article 21 of European Convention stipulates the makeup of the Board of Appeal. In accordance with the provisions of that article, the Board of Appeal giving consideration to an appeal against a refusal decision is given consideration by three examiners who have a legal qualification.

Appeals against decisions adopted by an Examination Department consisting of less than four examiners are given consideration by the Board of Appeal with a makeup of two examiners who have a technical qualification and one expert who has a legal qualification.

Appeals against decisions adopted by an Examination Department, consisting of four examiners, or appeals, the essence of which so requires, are given consideration by the Board of Appeal with a makeup of three examiners who have a technical qualification and two examiners who have a legal qualification.

Appeals against all other decisions adopted by an Examination Department are given consideration by the Board of Appeal with a makeup of three examiners who have a legal qualification.

Appeals against the grant of a European patent are given consideration by the Board of Appeal with a makeup of two examiners who have a technical qualification and three examiners who have a legal qualification.

In order to resolve particular legal questions during the consideration of appeals or in accordance with a decree of the President of EPO, and also with the aim of ensuring an identical practice of application of rights during examination of applications, Article 22 of European Convention introduces the structure of an Expanded Board of Appeal. The Expanded Board of Appeal consists of two experts who have a corresponding technical qualification and five experts who have a legal qualification. One of the experts who has a legal qualification is designated as a Chairman of the Expanded Board

European Convention provides particular conditions that guarantee the independence of the examiners drawing up the decision of the Board of Appeal.

Decisions issued by the Board of Appeal are subject to obligatory publication and become, as was already mentioned above, a source of precedential right, i.e., interpretations obligatory for all participants of the process of patenting inventions according to the EPC procedure.

As regards a decision in respect to an appeal, which has been issued by the Board of Appeal of EAPO, this decision may also be appealed by filing an appeal in the name of the President of EAPO. The President either designates another Board of Appea or independently issues a final decision, which is not subject to further appeal.

Administrative revocation of European and Eurasian patents may be carried out at the request of any person. Wherewith grounds for revoking in accordance with the conditions of both Conventions virtually coincide. However, a decision is issued on the basis of legislation of a party state and is valid on the territory of the party state where the request for revocation was filed.

In the case where this is allowed by national legislation, the revocation may relate to a part of the patent, not the whole, i.e., limitation of the patent is declared.

A comparative analysis of Official fees of EPO and EAPO is presented below.

The structure of the fees for filing applications with the Offices is somewhat different:

The following is usually paid when an application is filed with EPO:

1. basic fee = EUR 125
2. fee for each claim over 10 = EUR 40
3. fee for search = EUR 690
4. fee for indication of countries = EUR 75*N (N=1, 2...7, where N is the number of designated countries) = EUR 525.

Wherein it should be taken into account that the fee for indication of the countries may be paid later when the request for conduction of the examination is filed. The fee for the search is not paid if the search was carried out by EPO.

The fee for the search is reduced if the search in respect to an international application was carried out by some Patent Offices, including the Russian Patent Office.

As an example let's take an application with about 50 pages of specification, 2 independent claims and the total number of claims - 20. The maximum total sum to be paid when filing the application is EUR 125 + EUR 690 + EUR 525 + EUR 400 - EUR 1740 .

When the application is filed with EAPO, the following is paid:

1. basic fee = EUR 734
2. fee for each claim above five = EUR 64.

The basic fee and the fee for each claim above five are reduced by 25% in the case where there is an international search report and by 40% in the case where the search in respect to an international application was carried out by the Russian Patent Office.

The total sum to be paid when this application is filed is EUR 734 + EUR 960 = EUR 1694.

Thus, the sums for filing applications are comparable.

In EPO, when an application is filed, a one-month delay in payment of the basic fee, the fee for more than 10 claims and the fee for the search is permissible with payment of a 50% fine.

In EAPO, when an application is filed, a two-month delay in payment of the basic fee and the fee for more than 5 claims is permissible with payment of a 20% fine.

The fee for examination should be paid within six months following the date of publication of the European Fee Report.

When a request that examination be carried out is filed with EPO, a fee in the amount of EUR 1430 is paid.

When a request that examination be carried out is filed with EAPO, a fee in the amount of EUR 733 is paid for one independent claim and EUR 1284 for several independent claims.

The first fee for extension in EPO corresponds to the end of the second year following the filing date of a European application and annually after that if the application is still under consideration. In the case where the first fee for extension is paid prior to the entering of a PCT application into the European phase, the next fee may be paid during the transition (i.e., after 31 months following the priority date) without payment of a fine.

In EPO, when a patent is granted, a fee is paid for the grant and publication of the patent in an amount of EUR 715 for the first 35 pages of the application and EUR 10 for each page above 35.

In EAPO, when a patent is granted, a fee is paid for the grant and publication of the patent in an amount of EUR 500 for the first 35 pages of the application and EUR 5 for each page above 35.

A delay in payment of this fee is not provided for in EPO.

A two-month delay in payment of this fee or a three-month delay from the date at which an additional notification is sent is provided for in EAPO. In the last two cases a EUR 92 fine is paid.

In EPO, an annual fee is paid for maintaining the application in force, beginning with the third year after the filing date of the application, in an amount of from EUR 380 to EUR 1020.

A delay in payment of this fee in EPO is provided for with a 10% fine.

In EAPO the payment of a fee for maintaining an application in force is not provided for.

In EPO an annual fee is paid for maintaining a patent in force, beginning from the third year of validity of the patent (in some cases from the first or second) in an amount of from 37 euros to EUR 1147 for each of the countries in which the patent is maintained in force,

A six-month delay in payment of this fee is provided for in EPO with a 50% fine.

In EAPO an annual fee is paid for maintaining a patent in force, beginning with the third year from the filing date of an application (in some cases from the first or from the second) in an amount of from EUR 37 to EUR 1147 for each of the countries in which the patent is maintained in force.

A six-month delay in the payment of this fee in EAPO is provided for with a 50% fine.

In EPO a return of the fee is provided for acts which are not carried out by EPO during a search in respect to the application or during of substantive examination.

In EAPO a return of the fee is provided for in the case where payment of that fee was carried out in an amount exceeding the prescribed amount or when the act for which the fee was paid was not carried out.

In EAPO countries party to the Paris Convention with low incomes of the population, a 90% discount is granted in respect to all official fees of EAPO.