Review of the revised design patent system

24-11-2016

Irmeli Nokkanen

The design patent system in Russia changed radically two years ago. Since October 1, 2014, a list of claimed essential features has no longer been requested. The protection is based only on pictures.

I predicted last year that this change would increase the number of design patent filings in Russia and make the process easier, cheaper and faster. Have my predictions come true?

Number of filings

The statistics given by Rospatent show that 4,929 applications were filed in Russia in 2015 and 5,184 the year before. So the number of filings decreased by 5% after the changes came into force and did not increase, as I thought.

In my opinion this decrease has more to do with the global political and economic situation than the change of law.

Easier, cheaper and faster process

Nowadays it is quicker and easier for attorneys to prepare an application for filing as the list of claimed essential features is no longer needed. Voluntary amendments to the lists after filing are not necessary either.

The number of office actions issued by Rospatent has decreased dramatically. Previously, an office action was issued for nearly every application, and the examiner requested amendments to the list of claimed essential features in view of novelty and originality. Now, office actions after substantial examination are very rare and mainly relate to multiple design patent applications in cases where the requirements are not fulfilled.

The above facts mean that the costs for applicants have clearly been reduced, by about 30 to 40%.

According to statistics provided by Rospatent, substantive examinations are now conducted a bit more quickly than previously. In 2015 the average time to perform a substantive examination was 6.7 months, while in 2014 it was seven months.

"The registration process is now easier, cheaper and faster, but not as popular as I predicted."

Registration of a design after paying the fee is carried out much more quickly than previously. According to our experience, it can happen as quickly as six days after payment.

Rospatent does not provide information on how quickly registration decisions are made. I went through applications filed by our office after October 1, 2014 and noticed that decisions have mainly been made within ten months of the filing date, sometimes even within five to seven months. So the process is getting faster.

Rejection decisions

According to Rospatent’s statistics, the number of rejection decisions has decreased by 24% from 118 in 2014 to 90 in 2015.

Since October 1, 2014, our company has filed more than 200 design patent applications, and we have not received any office actions incorporating prior art and rejection decisions.

Former design regulations replaced

This year the former design regulations were replaced by new administrative regulations, rules and requirements, which entered into force on January 8 and 27.

According to the new regulations, it is no longer possible to protect a whole article and its visible parts in one application. A group of designs can be filed in one application if the group consists of: 1) a design relating to a set of articles and one or more designs relating to (an) article(s) of said set; or 2) designs which are variants of the same article and differ from each other only by unessential features or features defining a colour combination. All designs must belong to the same class.

Another important amendment relates to the acceptable number of images in the design application. Only seven images per design in an application are now accepted. If the application includes more than seven, Rospatent issues a formal office action and asks the applicant to inform which seven images the applicant wants to keep in the application.

Final thoughts

Currently, Rospatent is preparing for electronic filing of design patent applications. Technical patents can already be filed electronically.

The registration process is now easier, cheaper and faster, but not as popular as I predicted. Although not all my predictions have come true, I’m sure that the number of filings will increase in the future.

Irmeli Nokkanen is a European design attorney at Papula-Nevinpat. She can be contacted at: irmeli.nokkanen@papula-nevinpat.com 

Irmeli Nokkanen, Papula-Nevinpat, design patent applications, Rospatent, application, amendments, class,

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