EAPO

The Eurasian Patent Convention and the Eurasian Patent Organization (EAPO), came into force to create a regional system for the protection patents in the Eurasian countries which are party to the convention. This automatically covered the eight (8) states of Turkmenistan, Belarus, Tajikistan, Russia, Kazakhstan, Azerbaijan, Kyrgyzstan and Armenia.

Notice: Since April 26, 2012, Moldova officially withdrew from the EAPO.

What Can Be Protected As An Invention?

Any inventions which are new, involve an inventive step, and are industrially applicable.
Swiss-type claims (the first, second or subsequent medical use of a known substance or composition).
Also technical solutions (products and/or methods) from any field of technology which after examination have been proven to be new (of novelty), inventive (possessing the inventive step), and industrially applicable.

What Cannot Be Protected As An Invention?

Discoveries;
Scientific theories and mathematical methods;
Business organization and management methods;
Presentations of information;
Computer programs and algorithms;
Notations, schedules and rules;
Rules and methods of performing mental acts;
Designs and layouts of buildings, installations and spaces;
Treatments relating only to the external
Plant or animal varieties;
Topologies of integrated circuits;
Any other invention contrary to morality or public policy.

There are several options regarding filing and search fees with the EAPO:

Applicants resident or having their place of primary business in a state party to the Paris Convention on the Protection of Industrial Property where the per capita Gross National Income is $3,000 or less, are entitled to select fees at an 80% discount.
Applicants from States party to the Convention are entitled to a 90% discount.

Formal Examination: The process for the examination of PATENT Applications to the EAPO includes a formal examination within two (2) months after filing, for the crosschecking of required documentation. In the case of accurate documentation, a notification of the positive outcome of the formal examination will be issued. It is required that the substantive examination be requested at the time of the filing of the application.

Substantive Examination: The substantive examination is executed on the request of the applicant and must be within six (6) months from the date of publication of the application. If the six months lapses, it may be filed within two months of its expiration, as long as the time limit was missed for a valid reason and that an additional fee has been paid. The substantive examination examines the patentability of the invention. If successful, the decision to grant a patent will be made. If however the invention does not meet the requirements for patentability, it will be refused.

Office Action: In case of an Office Action, our EAPO Patent Attorney will carefully review the Office Action to provide a Legal Opinion and discuss with the Applicant options available in overcoming said Office Action.

Translation: Application materials should be translated and filed in the Russian language.

Duration: The procedure for registration of a patent in the EAPO usually takes between two (2) and four (4) years.

Priority Deadline: To claim priority from an earlier application in any member state of the Paris Convention or World Trade Organization, the application is required to be filed with the Eurasian Patent Office (EAPO), within twelve (12) months from the earliest filing date of the priority application.

Fees: The patent is issued after payment of the relevant fees for which the deadline is four (4) months from the date of receipt of the decision.

Validity: A Eurasian patent is valid for twenty (20) years after the initial filing date. It is however possible for applications for pesticides, agrochemicals and pharmaceuticals to apply for and receive an extension of five (5) years on their patent.

Representation: Any applicant not resident or having their place of primary business in a state party to the convention must be represented at the EAPO Patent office by a registered Eurasian Patent Attorney.

Late Entry: There is no provision for late entry to the EAPO under Eurasian Patent Legislation. Under the regulations of the Patent Cooperation Treaty however, if the due date was missed involuntarily, the rights of the applicant can be restored with the payment of a restoration fee within twelve (12) months from the missed due date.

Late Filing: Late filing of documents in Russia for Power of Attorney or Patent translation does not incur any extra charges or cause any delay in the examination.

How to convert a Eurasian Patent Application into National Patent Applications

In an event that the application for a Eurasian Patent is refused by the EAPO or an appeal against a decision on the application is refused, it is possible for the applicant to file a request to the EAPO in which he/she would indicate the countries in which he/she would like to file the patent application in line with their individual national procedures. This request should be made within six (6) months from the receipt of the Refusal.

In each country the Eurasian Patent Application is treated as a national application with filing and priority date exactly the same as those of the Eurasian Application. It is possible also to establish priority from an application filed with the EAPO.

Required documents for Filing a Patent Application in EAPO:

Applicant’s information (name and address);
Inventor’s information (name and address);
Description, claims, abstract and drawings, disclosing the invention;
POA signed by applicant(s). Notarization or Legalization is not required.

Please be informed that Ukraine, although the second largest market in the CIS is not included in the EAPO. Kindly find quotations and further details on filings to the Ukrainian national phase here.