Russia: A new way to protect designs
The Eurasian Patent Office started accepting Eurasian design patent applications on June 1, 2021. At the moment, an applicant can file a single application with the EAPO and obtain protection in five countries: Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia. These countries are the member states of the EAPO in which the Protocol to the Eurasian Patent Convention on the Protection of Industrial Designs is now in force.
A Eurasian design patent application can be filed with the EAPO on paper or electronically. The EAPO is located in Moscow and the application must be filed in the Russian language. An applicant who is not a resident of the member states must be represented by a registered Eurasian patent attorney—currently, only 45 registered Eurasian patent attorneys have specialised in industrial designs.
Requirements and process
The requirements for materials of a Eurasian design patent application are very similar to those for Russian design patent applications, including the requirement according to which only seven figures per design are allowed.
The Eurasian design patent application, however, may include up to 100 designs provided that they all relate to one and the same Locarno class, an international classification used for the purposes of the registration of industrial designs. A multiple design patent application may include a group of designs relating to one article, or a set of articles and one or more articles of the set, or a whole article and its part(s). So the multiple application can be used in practice more often than in Russia.
The EAPO conducts a formal examination to check if the filed design complies with formal requirements and does not contradict the principles of humanity and morality. After the formal examination is completed, the design patent application will be automatically published by the EAPO. Deferment of the publication of a Eurasian design patent application is not possible.
“The Eurasian design patent is in force for five years from the filing date and can be renewed in five-year periods.”
In case of a positive result of the preliminary examination, third parties (including a national patent and trademark office if it is allowed by the legislation of the respective member state) can file an objection against the Eurasian design patent application within two months after the application is published, on the basis that the claimed design is not new or original or represents a solution which cannot be registered as a design according to the protocol.
The patentability requirements—novelty and originality—are checked during the substantive examination, which may result in issuance of a decision to grant or a refusal decision.
In regard to the novelty requirement, there is a grace period of 12 months available from the first publication.
Temporary legal protection is granted for the period starting from the publication of the application until the publication of a Eurasian design patent.
If an application includes several designs, they are protected by a single patent number. The applicant has a right to limit the scope of the issued patent later by filing a corresponding request, and therefore pay only for those designs which they want to keep in force.
If a refusal decision is issued, there is a possibility to transform the application into national applications in the member states per the applicant’s choice.
The Eurasian design patent is in force for five years from the filing date and can be renewed in five-year periods, the maximum term of protection being 25 years from the filing date.
Popularity of the new system and the future
At the time of writing this article, the EAPO has published eight design patent applications (five applications from Russian applicants, one from Bulgaria, one from Germany and one from the US).
It will be interesting to see how popular this new way to protect designs will be in the near future. It seems that not a large number of applications have been filed yet. It is clear that when the EAPO can be designated later in the international design registration applications filed through the World Intellectual Property Organization, it will increase the number of Eurasian design patent applications rapidly.
For applicants it is very positive to have several ways to get protection in the Eurasian countries, so applicants can choose the best way to suit their own purposes.
Irmeli Nokkanen is a European design attorney and European trademark attorney at Papula-Nevinpat. She can be contacted at: Irmeli.Nokkanen@papula-nevinpat.com
Mariya Beltyukova is a Eurasian patent attorney specialising in industrial designs at Papula-Nevinpat.
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