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1 April 2013AsiaMaria Nilova and Elena Tsvetkova

Russia v Eurasia: national and regional differences in patentability

It is common practice to include Russia in the list of countries with European-style patent legislation. That is true in part but when it comes to claims types, it appears that both European-type “use” claims and US-type “method of medical treatment” claims are acceptable in Russia.

As Russia offers two routes to obtain legal protection for an invention (using the Russian national and Eurasian regional patent systems), it is worth mentioning that in both these systems, the use claims and method of treatments claims are acceptable.

The Eurasian patent covers eight countries of the former Soviet Union including Russia, Belarus and Kazakhstan. Russian and Eurasian patents can both be obtained as a part of general Patent Cooperation Treaty (PCT) procedure and therefore, an applicant seeking exclusivity for his invention in this part of the world faces a choice between these two routes. Alternatively, applicants can apply for both, but with different scopes of protection to avoid the double patenting trap.

The most common considerations for applicants when choosing which patent to apply for are the desired geographical coverage and economical aspects.

The Eurasian procedure incurs higher official fees, but when it is desirable to obtain a patent covering Russia and several other counties under the Eurasian convention, the Eurasian procedure can be more cost-effective due to savings from national official fees and translation costs. There are differences, however, which are important, especially for inventions in the field of life sciences.

As an example, let’s consider exclusions from patentability. The Civil Code of the Russian Federation (CCRF) and the Eurasian patent regulations both contain a provision saying that a patent shall not be granted in respect of inventions considered as contrary to ordre public, humanity, or morality.

However, while the corresponding Article 1349 of the CCRF explicitly excludes methods for cloning a human being, methods for modifying the genetic integrity of human germ line cells, and methods of commercial and industrial use of a human embryo from patentability, the Eurasian patent regulations do not include a specific list of the excluded subject matters.

Furthermore, according to Rule 3(4) of the Eurasian regulations, an invention may not be considered contradictory to humanity or morality unless it relates to a subject matter forbidden by the legislation of one or more contracting states.

In practice, this means that an application relating to use of human embryonic stem cells will be accepted and processed by the Eurasian Patent Office (EAPO) without objection, and a Eurasian patent will be granted if it complies with the patentability requirements, whereas Rospatent will object to the claimed invention on the basis of Article 1349 of the CCRF.

“THE CCRF FURTHER EXCLUDES FROM PATENTABLE SUBJECT MATTER BIOLOGICAL METHODS FOR OBTAINING A PLANT VARIETY OR AN ANIMAL BREED, WHILE THE EURASIAN REGULATIONS DO NOT.”

Another difference which may be significant for life sciences inventions is connected with developments in plant and animal breeding. According to the corresponding regulations, neither Russian nor Eurasian patents can be granted in respect of a plant variety or an animal breed.

However, the CCRF further excludes from patentable subject matter biological methods for obtaining a plant variety or an animal breed, while the Eurasian regulations do not. Therefore, in case of an application relating to a plant variety and a method for obtaining thereof, a Eurasian patent for a method can be obtained while in Russia a patent is not likely to be granted at all.

So the existence of the Eurasian patent system allows patents covering Russia for items excluded from patentability by the Russian legislation. The important question is whether a Eurasian patent protecting an invention which is not considered patentable under the Russian legislation is worth obtaining, can be enforced or will be invalidated in opposition proceedings by Rospatent after being issued by the EAPO.

Surely, an alleged infringer can try to invalidate the Eurasian patent for an invention excluded from patentability in Russia, but the opposition proceedings will be based on the Eurasian regulations. Then, in case of infringement, this patent will be treated in a Russian court just as any valid Russian patent. Since the infringement case and the invalidity case are separate, both parties have plenty of space for strategic manoeuvring.

There are also differences in the types of claims accepted in the Russian and Eurasian patent systems, such as requirements for characterisation of each type of subject matter.

As far as inventions in the fields of synthetic chemistry and biotechnology are concerned, it is important to know that the Eurasian patent regulations forbid claiming unpatentable or known products using the features of a process of obtaining it, while the Russian regulations do not comprise this explicit provision, though it is included in the manual for examination.

An experienced professional would also know that there are other differences in treating similar applications between Russian and Eurasian patent offices, such as judging the experimental support required to confirm the claimed scope of invention, assessing unity of invention, and others.

Therefore, we would recommend an applicant consider the peculiarities of Russian and Eurasian patent regulations applicable to a particular invention before entering the national phase in Russia or the regional Eurasian phase.

Maria Nilova is a Russian and Eurasian patent attorney and managing partner at Patentica. She can be contacted at: maria.nilova@patentica.com

Elena Tsvetkova is a Russian and Eurasian patent attorney at Patentica. She can be contacted at: elena.tsvetkova@patentica.com

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