On April 12, 2021, Part II of the Patent Regulations under the Eurasian Patent Convention (EPC) was brought into effect, together with related documents, to govern the legal protection of Eurasian industrial designs — a completely novel type of Intellectual Property (IP) right in the Eurasian patent system.
The EPC currently comprises eight member states: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. The Protocol on the Protection of Industrial Designs to the EPC was adopted on September 9, 2019, and, according to it, the EAPO grants unified Eurasian patents for industrial designs valid within the territory of the EPC member states covered by the Protocol. Currently, those are Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia. Belarus, Tajikistan, and Turkmenistan have not yet finalized their ratification / accession procedures.
It is worth noting that the EAPO is currently not a party to the Hague System for the International Registration of Industrial Designs, meaning applicants may not extend legal protections in the jurisdictions of the EPC member states within the framework of the Hague Agreement. We hope that the integration of these two systems is only a matter of time. Preliminary filings for Eurasian industrial design applications are scheduled to be accepted from June 1, 2021.
Legal protection of Eurasian industrial designs is based on the general principles of the Eurasian patent system: the EAPO in Moscow handles all examination proceedings with respect to Eurasian applications for industrial designs and the granting of Eurasian patents (the 'one-stop-shop' principle). For this reason, all documents and correspondence are in the Russian language while official fees are in Russian RUB. Alternatively, the official fees can be paid in USD and EUR at the exchange rate of the Central Bank of Russia on the payment date.
Examination of Eurasian applications for industrial designs
Eurasian applications for industrial designs are examined in two stages:
During the preliminary examination, the Eurasian application materials are reviewed for compliance with official requirements and the correct classification of each claimed industrial design. In addition, it is also considered whether the industrial design should be treated as contrary to public order or to the principles of humanity and morality. The Eurasian application is published by the EAPO within one month of the successful completion of the preliminary examination.
The EAPO in Moscow handles all examination proceedings with respect to Eurasian applications for industrial designs and the granting of Eurasian patents (the 'one-stop-shop' principle).
In the course of the substantive examination, the claimed industrial design is reviewed for compliance with patentability requirements. Eurasian design regulations further provide for an informal opposition procedure: within two months from the date of publication of the Eurasian design application, any party may oppose the application on the grounds that it contradicts patentability requirements including, inter alia, similarity to prior trademark rights or copyrights.
The implementation of a mediation procedure is new to the Eurasian patent system. If the EAPO receives an objection to an industrial design application, both parties may apply to the Office with a petition to settle the dispute using the mediation procedure. The substantive examination is suspended for the period of the mediation procedure and, if resumed, continues from the point it was adjourned.
It should be noted that the mediation procedure only applies to cases where the Eurasian industrial design application is opposed on the grounds of one or more prior copyrights protected in the territory of at least one EPC member state. Since copyrights are not subject to state registration, they are not revealed in the substantive examination process nor by a preliminary patent search. Therefore, the implementation of the mediation procedure balances the interests of the applicant of an industrial design, on the one hand, and the authors and copyright holders, on the other hand. This is undoubtedly an advantage of the Eurasian regional system of industrial design legal protection.
Eurasian industrial design patent
Industrial design patents granted by the EAPO are recorded in the Register of Eurasian Patents for Industrial Designs. Information on Eurasian industrial designs will also be available in the European Union's DesignView database.
A Eurasian patent for industrial design certifies authorship, priority and the exclusive right to an industrial design, simultaneously valid within the territories of all EPC member states covered by the Protocol, in respect of which the Protocol is effective. A Eurasian industrial design patent is valid for five years from the application filing date and can be renewed simultaneously in all member states for successive five-year terms, not exceeding a maximum period of 25 years. Renewal in selected member states is not permitted. The EAPO may declare a Eurasian patent invalid through an administrative cancellation procedure, or it may be revoked by judicial or other competent authorities in accordance with the procedural legislation of respective member states.
If the EAPO receives an objection to an industrial design application, both parties may petition to settle the dispute using the mediation procedure.
Disposal of the exclusive right to a Eurasian industrial design
The patent owner may dispose of a Eurasian patent for an industrial design, including disposal under assignment-, license- or other agreements. At the same time, assignment and pledge of an industrial design are only possible with respect to all member states as such agreements are subject to centralized registration with the EAPO. License agreements and agreements concluded under national legislations are to be registered by relevant local patent offices.
The patent owner is also entitled to voluntarily abandon the Eurasian patent or restrict its effect by excluding one or more industrial designs from the patent. No territorial limitation of a Eurasian patent for an industrial design is permitted.
The provisions on representation regarding Eurasian applications and industrial design patents conform to the general representation rules under the Eurasian patent system: non-residents of EPC member states must be represented by a Eurasian patent attorney admitted by the EAPO to act as a design attorney.
Power of attorney is required in cases related to limitation or waiver of rights (e.g., withdrawal of a Eurasian application), recordal of changes to a Eurasian patent (e.g., patent assignment), filing objections and appeals and recordal of change of representation.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.