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Approved RULES FOR FILING AND EXAMINING OPPOSITION AGAINST THE GRANT OF A EURASIAN PATENT ON THE BASIS OF ADMINISTRATIVE REVOCATION OF A EURASIAN PATENT As per the EAPO Order of 11.04.2003., #3, the present Rules came into force on 26.06.2003. Meaning of terms used in the Rules 1. Filing of a notice of opposition For the purposes of the present Rules the following terms and notions shall mean: Convention – the Eurasian Patent Convention signed on September 9, 1994, in Moscow; The Eurasian Office – the Eurasian Patent Office as per Article 2(3) of the Convention; Contracting State – a member state of the Convention; Patent Regulations – the Patent Regulations to the Eurasian Patent Convention as per Article 14 of the Convention; Eurasian Application – application for a Eurasian patent filed under Article 15 (1) of the Convention, or an international application, filed under the Patent Cooperation Treaty, designating the Contracting States for the purposes of the Eurasian Patent; Eurasian Patent – patent granted by the Eurasian Office under Article 15 of the Convention; Patent owner – entity holding the exclusive right to the patented invention under Article 9 of the Convention; Opposition – objection against the grant of a Eurasian patent, submitted in accordance with rule 53(1) of the Patent Regulations; Appeal – appeal against a decision adopted as a result of the opposition examination, submitted in accordance with Rule 53(8) of the Patent Regulations. 1. Filing of a Notice of Opposition 1.1 A notice of Opposition may be filed by any person other than the patent owner. Persons, not permanently residing or sitting in the Contracting States, shall file a notice of opposition and participate in the opposition proceedings via Eurasian patent attorneys. Persons, permanently residing or having a permanent seat in one of the Contracting States may file a notice of opposition and participate in the proceedings in their own capacity, or through Eurasian patent attorneys as well as other representatives, non-Eurasian patent attorneys. 1.2 A notice of Opposition shall be filed with the Eurasian Office directly or sent by mail. 1.3. As per Rule 53(1) of the Patent Regulations, a notice of opposition may be filed within six months from the publication of the mention of the grant of a Eurasian patent. Under rule 37(4) of the Patent Regulations the time period for filing a notice of opposition may not be prolonged. A right to file a notice of opposition, lost due to lapse of time for filing, may not be restored, according to Rule 39(3) of the Patent Regulations. A statement demanding the revocation of a Eurasian patent, filed with the Eurasian office before the date of publication of mention of the Eurasian patent grant, shall not be deemed as opposition, and the person, submitting such statement, shall be notified accordingly. 1.4. A fixed fee shall be paid for filing a notice of opposition. If a document, confirming the fee payment, is not submitted together with the notice of opposition, such notice shall not be deemed to have been filed. 1.5. A notice of Opposition shall be filed in writing. It shall be executed in such a form as to ensure its long term keeping and direct reproduction in an unlimited number of copies. Pages of the notice of opposition shall not be crumpled, torn or creased. The notice of Opposition shall be executed on non-rigid, hard, white, smooth, non-glittering, durable paper of A4 format (210x297mm). Minimal margins of the opposition document shall be: 25mm on the left side and 20 mm on other sides. Each page of the opposition, starting from the second one, shall be numbered in Arabic numbers. The text of the notice of opposition shall be typed in black font, with a 1.5 spacing between lines and capital fonts not less than 2.1mm. Graphic symbols, Latin names, Latin and Greek letters, mathematical and chemical formulas may be written in ink, paste or drafting ink of black color. Writing of formulas by both hand and typing is inadmissible. 1.6. The notice of Opposition shall be filed in Russian. If the notice is executed not in Russian, its translation into Russian is to be filed together with the notice of opposition or within two months after the filing. In the event of failure to submit the opposition translation within the prescribed time period, the notice of opposition shall not be deemed to have been filed. 1.7 A notice of opposition shall apply to one Eurasian patent and shall contain the following: data, stipulated in Rule 53(6) of the Patent Regulations; address for correspondence should be stated in accordance with established requirements for quick delivery of the correspondence to the stated address. The notice of opposition may also state phone numbers, faxes, e-mails or other data that will allow to contact the opponent or his representative; request to revoke the Eurasian patent in full or partially and the grounds for opposing the grant, as provided in Rule 53(2) of the Patent Regulations. 1.8 .The notice of opposition may state the following as grounds for revocation of a Eurasian patent: failure of the invention to satisfy patentability conditions, because it: - isn’t novel; - does not have an inventive step; - is not industrially applicable; - is not recognized as an invention per se under Rule (3) of the Patent regulations; - belongs to solutions to which Eurasian patents are not granted under Rule 3(4) of the Patent regulations; -occurrence in the claims of features not presented in the original materials of the Eurasian application, including: - occurrence of features in the claims of a Eurasian patent, granted on the basis of a divisional Eurasian application, having the filing date of the original Eurasian application, that were not included in the original application on its filing date; - Occurrence of features in the claims of a Eurasian patent, granted on the basis of a Eurasian application filed on the terms of paragraph 3, Rule 7(1) of the Patent Regulations, which were not included in the first application on its filing date. Each of the above conditions is separate grounds for revocation of a Eurasian patent. The notice of opposition shall not state other grounds, on which there can be no administrative revocation of a Eurasian patent. In particular, the following are not grounds for administrative revocation of a Eurasian patent: - Incorrect indication of the patent owner or inventor in the Eurasian patent; - Non-compliance of the subject matter of the specification or drawings with established requirements. - failure to comply with the requirement of unity of invention. 1.9. The notice of Opposition shall be admitted for examination on condition that in respect of at least one of the grounds for revocation of the Eurasian patent, mentioned in the notice of opposition, there is sufficient reasoning. The reasoning behind the proposed grounds for revocation of the Eurasian patent shall be sufficient to allow the Eurasian office to examine such grounds without resorting to additional sources of information. Simple reference to patent documents is, as a rule, insufficient, and the notice of opposition shall indicate (except for short documents) that part of the document on which the respective claims are based. When the demand to revoke a Eurasian patent is based on prior use or oral disclosure of the invention, evidence should be presented confirming such instances. 1.10. The notice of opposition shall be signed by the opponent or his authorized representative. Initials or other abbreviations shall not be recognized as signatures. Seals and stamps shall be with personal signatures. Signatures on the notice of opposition shall be transcribed into the family name and initials of the signatory. If the notice of opposition is filed by a legal entity or similar organization, it should be signed by the head of such entity or another authorized person, stating the position of the signatory and stamped with the seal of the entity or organization, if so envisaged under the laws of the state of its seat. The powers of the person, signing a notice of opposition on behalf of a legal entity or similar organization, are determined in accordance with the laws of the state in which this entity or organization are located. When the notice of opposition is filed on behalf of several persons, it shall be signed by each of these persons or their representatives. A power of attorney granted by several persons, filing a notice of opposition, shall be signed by all these persons. 1.11 The following shall be attached to the notice of opposition: -a document certifying the payment of the opposition fee; -a power of attorney, certifying the authority of the representative, if the notice of opposition is filed through a representative. A notice of Opposition shall be filed in writing and does not require certification by a notary public. The notice of opposition shall be signed by the person filing it and shall be in accordance with the terms of Par. 1.10 hereunder. The power of attorney, granted by a represented person, shall explicitly state the right of the representative to sign a notice of opposition, to completely or partially withdraw claims from the notice of opposition, to reassign his power to a third person (reassignment), as well as the right to lodge a complaint against the decision on the opposition by filing an appeal. The power of attorney shall bear the date of its grant. -Documents (or copies) to which the opponent is referring in support of the -arguments to revoke the Eurasian patent, presented in the notice of opposition. Materials of the opposed Eurasian patent need not be attached; -a Russian translation of the notice of opposition and documents, mentioned in subparagraph 3 hereunder, if the originals are not in Russian. -Documents, to which the opponent is referring or their translation into Russian, if the originals are not in Russian, that are not filed together with the notice of opposition, shall be submitted on request of the Eurasian office within a time period established by the Eurasian office. If such documents and/or their Russian translations fail to be submitted within the prescribed time period and a request to prolong the time period has not been made, the Eurasian office may neglect the arguments derived from such documents. 1.12. The notice of opposition and supporting documents, except for a power of attorney and fee payment certificate, shall be filed in two copies. In the event of several notices of opposition being filed in respect of one and the same Eurasian patent, the notice of opposition and attached documents, stated in the paragraph above, shall be filed in two more copies than the number of copies of other filed notices of opposition. In the event of other notices being filed after the filing of the first opposition, the missing copies of the notice of opposition and attached documents shall, on request of the Eurasian office, be filed within a time period stated in the request. 2. Examination of the filed notice of opposition in respect of its compliance with established requirements 2.1. A notice of opposition filed with the Eurasian office shall be registered and given a number. 2.2. Within one month after the filing, the Eurasian office shall examine the notice of opposition in terms of its compliance with requirements set forth in Section 1 of the present Rules. In the event that there are no deficiencies, listed in paragraphs 2.3-2.5, in the notice, the Eurasian office shall notify the opponent that the notice of opposition has been accepted for examination. 2.3. A notice of opposition shall not be considered as having been filed, if: -a document certifying the payment of the opposition fee in the required amount fails to be presented within the time limit, provided under Rule 53(1) of the Patent regulations; -in case of the notice of opposition being filed by a Eurasian patent attorney on behalf of a person, not residing permanently or not having a permanent seat in any of the Contracting States, and the power of attorney fails to be submitted together with the opposition or within the time limit, provided under rule 30(2) of the Patent regulations; -the notice of opposition is filed not in Russian and the Russian translation fails to be presented within two months after the filing or within the time period for filing, depending on which period expires later; -the notice of opposition is filed by a person not residing permanently or not having a permanent seat in any of the Contracting States, and a Eurasian patent attorney fails to be appointed within the time period stated in the communication of the Eurasian office; -the notice of opposition is not signed by the opponent or by a Eurasian patent attorney if the notice of opposition is filed by a person not residing permanently or not having a permanent seat in any of the Contracting States, and the deficiency is not remedied within the time period stated in the communication of the Eurasian office. 2.4. A notice of opposition shall not be admitted for examination, if: -the notice of opposition is filed after the expiration of the time period for filing oppositions, stipulated in rule 53(1) of the Patent Regulations; -the notice of opposition does not state those grounds for revoking a Eurasian patent which are envisaged under Par. 53(2) of the Patent regulations; -the notice of opposition fails to justify at least one of the grounds for revoking a Eurasian patent which were presented in the notice; - the notice of opposition does not allow to identify the opponent; - The notice of opposition does not allow to identify the Eurasian patent against which it was filed. Though a simple indication of the Eurasian patent number, as a rule, allows to identify the Eurasian patent; - The notice of opposition is not clear on whether the request to revoke the Eurasian patent applies to all the claims or only some of them; - The notice of opposition does not contain all the necessary data about the opponent, including the name, address, state in which the opponent is permanently residing or has his business seat. All these data are to be provided even if only some of them are sufficient to identify the opponent. - The notice of opposition fails to provide all the necessary data in respect of the Eurasian patent against which it is filed, including the Eurasian patent number, name of patent owner, title of invention for which the patent was granted. All these data are to be provided even if only some of them are sufficient to identify the Eurasian patent; - Requirements to the appearance of the notice of opposition, stipulated in Par.1.5 hereunder, are not complied with; - The notice of opposition fails to specify the name and address of the representative, if such had been appointed by the opponent. Deficiencies, stated in subparagraphs 2-5 hereunder, may be remedied within the time period for filing a notice of opposition prescribed under Rule 53(1) of the Patent Regulations. Deficiencies, stated in subparagraphs 6-10 hereunder, may be remedied within a time period set by the Eurasian Office. 2.5 Upon detection of deficiencies, mentioned in Paragraphs 2.3, 2.4 of the present Rules, for which the possibility of correction still exists, a notification shall be sent to the opponent suggesting to present the missing documents (data) or to perform necessary actions within the specified time period. In the event of detection of such deficiencies, which cannot be corrected due to lapse of time for opposition filing, as well as in cases when the opponent fails to present the missing documents (data) or to perform the necessary actions within the specified time period, the notice of opposition shall not be considered as having been filed or its examination shall be declined, and a relevant communication shall be sent to the opponent. 2.6 In case of absence in the notice of opposition of an address for correspondence in any of the Contracting states, communications, mentioned in Par.2.5 hereunder, shall not be sent. 2.7 In the event that a notice of opposition is not considered as having been filed or in the event of a decision to refuse to examine it, the Eurasian office shall notify the patent owner of this. 3. Familiarization of the patent owner with the notice of opposition and his response thereto 3.1. After registration of the notice of opposition one copy of the notice shall be sent to the patent owner or his representative if such is appointed. 3.2. Given the absence of deficiencies, mentioned in Paragraphs 2.3, 2.4 of the present Rules, which preclude further examination of the notice(s) of opposition as to substance, the Eurasian office shall, without delay, after the lapse of the time period for filing oppositions, provided under Rule 53(1) of the Patent regulations, send a communication to the patent owner inviting him to respond to the notice of opposition and if necessary to make amendments and/or changes in the claims, specification and drawings within a time period stated in the communication. If the deficiencies in the notice of opposition were corrected after the time period for filing oppositions, referred to in Rule 53(1) of the Patent Regulations, but within the time period stated in the communication from the Eurasian office (Par. 1 of item 2.5 of the present rules), then the communication stated in the paragraph immediately above, shall be sent without delay after the correction of the respective deficiencies. 3.3. If the Eurasian patent states several patent owners, entitled, in accordance with Article 15 (12) of the Convention, to deal with the Eurasian office independently, who have not appointed a single representative, the Eurasian office shall recognize the first patent owner, mentioned in the Eurasian patent, as their joint representative and shall send the notice(s) of opposition and the communication to this patent owner. 3.4. In the event of several notices of opposition being filed against the grant of one and the same Eurasian patent, the Eurasian office shall notify of them all the persons, who filed the notices, at the same time when it sends the communication, referred to in Par.3.2 of the present Rules. 3.5. The patent owner shall have the right to submit to the Eurasian office his response to the notice(s) of opposition (hereinafter “response”), presenting his arguments against the claims made in the notice(s), as well as to propose changes and amendments to the Eurasian patent, taking into account the requirements set forth in Par. 3.7 of the present Rules. The response and attached documents shall be submitted in two copies. In the event of several notices of opposition being filed in respect of one and the same Eurasian patent, the number of copies of the response with the attached documents shall exceed the number of filed notices of opposition by one. 3.6 The response shall state: - name or company name of patent owner, his place of residence or office location; - Eurasian patent number, title of invention; - Name or company name of opponent or opponents in the event of several notices of opposition; - Arguments of the patent owner against claims made in the notice(s) of opposition The response shall be signed by the patent owner or his representative in accordance with Par.1.6 of the present Rules. In cases, when the patent owner has appointed a new representative, or the power of attorney available in the documents of the Eurasian patent and issued to an earlier appointed representative, does not grant the power to engage in opposition proceedings, another power of attorney shall be attached to a response submitted through a representative. Documents, supporting the arguments provided in the response, shall be attached to the response. Materials of the opposed Eurasian patent need not be attached. Documents, to which the patent owner refers and/or their translation into Russian, if the originals are not in Russian, and which are not submitted together with the response, are to be provided on request of the Eurasian office within a time period specified by the Eurasian office. If such documents and/or their translations fail to be submitted within the specified time and no request to prolong the time period is made, the Eurasian office need not take into account the arguments arising from such documents. 3.7 Together with the response the patent owner may submit his proposals on changes and amendments to the Eurasian patent. The changes and amendments, proposed by the patent owner to the claims, the specification and the drawings, shall be related to the grounds, stated in rule 53(2) of the Patent regulations. The changes and amendments proposed by the patent owner to the specification, claims and drawings, except for correction of technical and obvious mistakes, shall be within the disclosure of the invention in the specification. These changes and amendments shall not lead to broader protection than that provided by the Eurasian patent as granted. The proposed changes and amendments to the claims shall not contain features that are not present in the original materials of the Eurasian application. When making changes and amendments in the claims, the patent owner shall (unless it is obvious) point out those provisions in the specification of the original Eurasian application, on the basis of which such changes and amendments are made. Additionally the patent owner shall give explanations in respect of the invention’s patentability with the proposed amendments, taking into account the state of the art and the grounds presented in the notice(s) of opposition. The proposed changes and amendments shall not run against other requirements set forth in the Patent regulations, except for the requirement of the unity of the invention. Proposals on changes and amendments shall be submitted in the form of substituted pages. 3.8 The Eurasian office shall send the response and the changes and amendments which the patent owner proposed to the Eurasian patent, to the opponent or, if several notices of opposition were filed, to all opponents. The Eurasian office shall, if it considers necessary, invite the opponent to present his considerations in respect of the response and changes and amendments proposed by the patent owner within a time period stated in the communication. 3.9 If, in his response, the patent owner demands that the examination of the notice of opposition be refused due to deficiencies stated in Par.2.5. of the present rules, a communication shall be sent to the opponent inviting him to present his considerations in respect of such a demand within a time period stated in the communication. 4. Examination of the notice of opposition as to substance 4.1 Examination of the notice of opposition as to substance and a decision on it on behalf of the Eurasian office shall be performed by a board consisting of at least three examiners, employees of the Eurasian office, at least two of whom were not involved in the decision to grant the opposed Eurasian patent. When necessary, a legal expert of the Eurasian office may be included in the board. The chairman of this board shall be appointed from among those examiners who were not involved in the decision to grant the opposed Eurasian patent. One of the examiners shall be in charge of all the proceedings on the notice of opposition prior to the adoption of a decision on it. Members of the board and the chairman of the board shall be appointed by the head of the Examination department of the Eurasian office. The examiner, who is in charge of the proceedings on the notice of opposition prior to its examination by the board, shall be appointed by the chairman of the board. This examiner shall have the right to act on behalf of the board in his correspondence with the parties to the opposition proceedings. The joint examination of the notice of opposition shall be preceded by the study of the notice of opposition, the reference materials and other documents by each member of the board. 4.2 Examination of the notice of opposition as to substance, during which the validity of the claims presented is decided, shall begin after receipt of the response to the notice of opposition; if the response failed to be provided – after the expiration of the time period for its submission. In cases when the opponent is invited by the Eurasian office, in accordance with Par. 3.8, 3.9 of the present rules, to present his considerations in respect of the response, examination of the opposition as to substance shall begin after receipt of such considerations, or, in the event that they fail to be provided, after the expiration of the time period for their submission. 4.3. If the claims in the notice of opposition apply to the revocation of only a part of the Eurasian patent, examination of the notice of opposition shall be conducted only in respect to that part. 4.4. Examination of the notice of opposition shall be conducted in respect of those grounds for revocation which are supported in the notice. The Eurasian office shall not be obliged to check the validity of the Eurasian patent grant based on other grounds, listed in rule 53(2) of the Patent regulations. The Eurasian office may examine other grounds listed in rule 53(2) of the patent regulations, if it becomes clear from the materials of the opposition and from the Eurasian patent case that such grounds preclude the effect of the Eurasian patent in full or partially. 4.5. If the Eurasian office decides that the Eurasian patent may not be maintained as granted, however its limited maintenance is possible, the patent owner shall be invited to change the claims and, when necessary, the specification and drawings. The Eurasian office may suggest to the patent owner a version of such changes and amendments, indicating that they are only suggestive and the patent owner may disagree with them. 4.6 The changes and amendments proposed by the patent owner to the claims, specification or drawings shall be checked in terms of compliance with the requirements of Par.3.7 of the present rules, including, whether or not the changes and amendments in the claims would lead to broader protection under the Eurasian patent as granted, and whether these changes and amendments contain features that are absent in the original Eurasian application. If the proposed changes and amendments comply with the established requirements, the opposition shall be examined on the basis of the Eurasian patent text taking into account these changes. 4.7. If upon examination of the opposition it is decided that the Eurasian patent may be maintained in the amended form, compliance with the requirement of unity of invention shall not be examined. 4.8 Examination of the notice of opposition as to substance shall be concluded by passing a decision without convening a meeting of the board of examiners and without inviting the parties, unless the parties request to hold such a meeting or the Eurasian office considers such a meeting expedient. 4.9 Preparation and holding of a meeting of the board, as well as invitation of the parties to it shall be in accordance with procedures stipulated in Section 12 of the present rules. 5. Evidence that supports arguments of the opposition or of the response and new grounds for revoking a Eurasian patent, which are submitted after the expiration of the fixed time period 5.1 The Eurasian office shall have the right not to take into consideration evidence in favor of arguments stated in the opposition or in the response, or new grounds for revoking a Eurasian patent, if they are presented by the parties after the expiration of the fixed time period. Taking into account Par.5.2 of the present rules, when deciding on the admissibility of new grounds for revoking a Eurasian patent or of evidence presented after the expiration of the fixed time, their capability of affecting the decision on the opposition is taken into consideration, as well as the stage of the opposition proceedings and the reasons why such grounds or evidence were not provided in time. A refusal to take into consideration new grounds for revoking a Eurasian patent or evidence, that are presented after the expiration of the fixed time, shall be noted in the decision on the opposition. 5.2 New grounds for revoking a Eurasian patent or evidence, that are presented after a decision is passed, in accordance with section 8 of the present Rules, shall not be taken into consideration, except for cases, stated in Par.10.3 of the present rules. 6. Suspension of opposition proceedings 6.1. If, during the opposition proceedings, a third person submits evidence to the Eurasian office that he has brought an action in respect of the right to the opposed Eurasian patent, the opposition proceedings shall be suspended, unless this person consents in writing to continued opposition proceedings. Decision on suspension of the proceedings shall not be made before the opposition is accepted as admissible. In the event of suspension of opposition proceedings the Eurasian office shall without delay inform each party thereon. 6.2 Upon receipt of proof that a final court decision has been passed in the abovementioned dispute on the right to the patent and that it has come into force, the Eurasian office shall notify the parties that opposition proceedings shall be renewed as of the date stated in the notification. In the event that the court decides in favor of the third person, opposition proceedings shall be renewed three months after the court decision’s coming into force, unless the third person requests in writing to renew the opposition proceedings earlier. 6.3 When deciding to suspend opposition proceedings, or after the decision, the Eurasian office may fix a date on which it intends to resume the opposition proceedings, irrespective of the stage of the court proceedings, whereof the parties shall be informed. If no proof, mentioned in par.6.2 hereunder, is received by that date, the Eurasian office may resume the opposition proceedings. 6.4 Opposition proceedings shall be suspended in the event of the patent owner’s demise, his legal incapacity or limited legal capacity or his untraceability, and if the patent owner is a legal entity – in case of its liquidation. After the appointment of a person, authorized to participate in the opposition proceedings on behalf of the patent owner, and, in certain cases, after the registration of the transfer of patent rights, the Eurasian office shall notify the parties of the resumption of the opposition proceedings as of the date stated in the notification. 6.5 Opposition proceedings shall be suspended in the event of the patent owner representative’s demise, legal incapacity, limited legal capacity or untraceability. After receipt by the Eurasian office of a communication from the patent owner about his appointment of a new representative, the opposition proceedings shall be resumed as of the date when the opponent receives the respective communication. In the event that within three months from the date of the opposition proceedings’ suspension the patent owner fails to appoint a new representative, the Eurasian office shall inform the patent owner of: - The need to appoint a Eurasian patent attorney within two months from the date of the communication in cases when the patent owner does not permanently reside in and does not have a permanent seat in any of the Contracting states; - Resumption of opposition proceedings as of the date of such communication in cases when the patent owner is entitled to deal with the Eurasian office independently. 6.6 Duration of the time periods fixed by the Eurasian office for submission of opposition documents shall be suspended as of the date of suspension of the opposition proceedings. After resumption of opposition proceedings, duration of the suspended time periods shall also be resumed. If the remaining time period is less than two months it shall be extended to two months. 7. Duration of opposition proceedings 7.1 If during the opposition proceedings the Eurasian patent lapses in all the Contracting states, the opposition proceedings may continue based on a request from the opponent, provided that such request is submitted within two months from the Eurasian office’s communication to this person on the lapse of the Eurasian patent. In the event that such a request fails to be lodged within the abovementioned time, the opposition proceedings shall be terminated without any decision on the opposition. 7.2 In the event of the opponent’s demise, legal incapacity, limited legal capacity or untraceability, or if the notice of opposition is filed by a legal entity, in the event of its liquidation, the opposition proceedings may be continued at the discretion of the Eurasian office even without the involvement of the opponent’s heirs, successors or representatives, if by that stage of the proceedings it is established that a decision to revoke the Eurasian patent or to amend it may be passed. 8. Decisions based on examination of opposition 8.1 The procedure of administrative revocation of a patent may be finalized by adopting one of the decisions listed in rule 53(8) of the Patent regulations. Decisions may be adopted only on the basis of such grounds and evidence on which the parties had had a possibility to comment. 8.2 If the Eurasian office concludes that the grounds, referred to in rule 53(2) of the patent regulations, preclude the effect of the Eurasian patent, a decision to revoke the patent shall be adopted. A decision to revoke a Eurasian patent shall also be adopted in cases, when the patent owner: - Fails to express his agreement with the text of the proposed amendments to the Eurasian patent; - Fails to pay a fee for the publication of a new specification to the Eurasian patent in due time. 8.3 If the Eurasian office concludes that the opposition’s (s’) grounds, referred to in rule 53(2) of the patent regulations do not prejudice the maintenance of the Eurasian patent as granted, a decision to decline the opposition(s) shall be passed. 8.4 If the Eurasian office concludes that given the changes and amendments proposed by the patent owner to the invention, protected by the Eurasian patent, it now meets the requirements of the Patent Convention and the patent regulations, a decision is passed to introduce the changes and amendments to the Eurasian patent, provided that the patent owner agrees with the amended text of the claims, specification and amended drawings, proposed by the Eurasian office. The decision on the maintenance of the amended Eurasian patent shall come into effect on condition that the fee for the publication of the new invention specification to the Eurasian patent is paid in due time. In the event of failure to pay in due time the fee for the publication of the new specification, a decision shall be passed to revoke the Eurasian patent in accordance with Par.8.2 of the present rules. The amended Eurasian patent shall remain in force under the same number. 8.5 When the decision is passed at a board meeting, it may be announced orally. Later on the Eurasian office shall issue a written decision which shall be sent to all the parties concerned. The decision on the opposition shall be grounded and shall state the dates and procedure for its appeal. 8.6 Taking into account Par.8.4 of the present rules, decisions on oppositions shall come into force after the expiration of the time for filing appeals, unless they are appealed in accordance with section 9 of the present rules. In the event of an appeal being filed, no acts related to the implementation of the decision on the opposition, including the entry of changes into the Register of Eurasian patents, publication of information on the decision on the opposition in the Eurasian office Bulletin, shall be performed until a decision is passed on the appeal. 9. Filing of an appeal 9.1 In the event of disagreement with the adopted decision, any party in the opposition examination may contest the decision by filing an appeal to the President of the Eurasian office. The other party in the opposition examination may be involved in the appeal examination procedure. Persons, whose notices of opposition are not deemed as having been filed or are not accepted as admissible, shall not have the right to be involved in the appeal examination procedure. 9.2 A patent owner’s successor may file an appeal and engage in the appeal examination procedure only after appropriate registration of the transfer of right to the Eurasian patent. The right to file an appeal and to participate in the appeal examination procedure may be transferred to other persons in the order of general succession (inheritance, reorganization of a legal entity). In such a case, documents confirming the succession of rights shall be presented. Successors to persons who are involved in opposition proceedings, who do not permanently reside, nor have a permanent seat in any of the Contracting states, may file an appeal and engage in its examination procedure provided that they comply with the established requirements in respect of mandatory representation. 9.3 An appeal may be filed within four months from the date when the written decision on the opposition is sent out. The time for filing an appeal shall not be extended, and the right to file an appeal, lost due to lapse of this time, shall not be restored. 9.4 An appeal shall state: - The first and second names, patronymic (if used) or company name of the person filing the appeal, his permanent residence address or permanent seat address; - The appealed decision on the opposition(s) and what part of the decision should be annulled or changed. The appeal shall also provide arguments in favor of the annulment or change of the opposition decision. 9.5 Requirements, referred to in paragraphs 1.2, 1.5, 1.6, 1.10, 1.12 hereunder, shall apply to the appeal and its filing procedure. 9.6 An appeal shall not be deemed as having been filed if: - The appeal is executed not in Russian and the Russian translation fails to be provided within two months after the appeal is filed with the Eurasian office or within the time period for filing appeals, depending on which is later; - The appeal is not signed by the person who files it nor by a Eurasian patent attorney, when the appeal is filed by a person not permanently residing, nor permanently seating in any of the Contracting states, and this deficiency fails to be remedied within the time period stated in the communication from the Eurasian office; - In cases when appeals are filed by persons, referred to in subparagraph three of Par.9.2 hereunder, if the requirements on mandatory representation are not complied with. 9.7 An appeal shall be rejected as inadmissible, if: - The appeal is filed after the lapse of time, stipulated in rule 53(8) of the Patent regulations; - The appeal if filed by a person not entitled to file appeals according to Par. 9.1, 9.2 hereunder; - The appeal does not have data, requested under subparagraph 2) of paragraph 9.4 hereunder, and these data fail to be provided during the time for appeals filing; - The appeal does not have data, requested under subparagraph 1) of paragraph 9.4 hereunder, and these data fail to be provided during the time stated in the communication from the Eurasian office. 9.8 A communication on the receipt of the appeal, with its attached copies, shall be sent out to persons engaged in the appeal examination procedure. The communication shall invite the respective party to present its comments and proposals in respect of the appeal within a fixed time, stated in the communication. 10. Examination of appeals 10.1 Provisions of the present rules, regulating the opposition examination procedures, shall apply respectively to the appeal examination procedure. 10.2 An appeal, that meets the requirements set forth in section 9 of the present rules, shall be examined by a board appointed by the President of the Eurasian office. 10.3 Presentation, during the appeal examination, of new grounds for revoking a Eurasian patent, out of those provided under rule 53(2) of the patent regulations, which are not stated in the notice of opposition, shall be allowed only on consent of the patent owner. 10.4 Based on the results of the appeal examination, the President of the Eurasian office shall either order a secondary examination of the opposition, or shall issue a final decision on the opposition. 10.5 The board, appointed for the appeal examination or for the secondary opposition examination, shall consist of at least three persons, employees of the Eurasian office, out of which at least two were not involved in the decision on granting the Eurasian patent, against which the notice of opposition was filed, nor in the decision on the opposition, against which the appeal was filed. When necessary, a legal expert of the Eurasian office may be included in the board. 11. Withdrawal of opposition 11.1 If a notice of opposition is withdrawn prior to a decision on it, all the opposition proceedings shall be terminated without passing any decision, irrespective of the stage of opposition proceedings at which it is withdrawn. The Eurasian office shall notify the patent owner of the withdrawal of the notice of opposition and termination of the proceedings on it. 11.2 Withdrawal of notice of opposition after the patent owner’s filing of an appeal against a decision to revoke the patent shall not affect further examination of the appeal. The person who withdraws the opposition, shall not be entitled to further participate in the appeal examination. 11.3 If the appeal is filed by the person who filed the opposition, withdrawal of the opposition shall lead to termination of the appeal proceedings. 12. Preparation and holding of a meeting of the board with the parties invited 12.1 A meeting of the opposition examination board or of the appeal examination board (hereinafter – board meeting) with invitation of the parties shall be appointed by the Eurasian office if it considers it expedient, or on request of either of the parties. 12.2 The purpose of the board meeting shall be to clarify technical or legal issues, which were not fully clarified after examination of the documents presented by the parties or which require further discussions. 12.3 When the date of the board meeting is set, the parties are informed of the time and venue of the meeting. An attachment to this communication may list the issues, which the Eurasian office believes need to be discussed to reach a decision on the opposition or the appeal. In this communication the Eurasian office may set a date by which the parties may submit written statements, remarks and proposals on the abovementioned issues. 12.4 Failure of any persons, involved in the opposition or appeal examination and informed of the time and venue of the board meeting, to appear before the meeting shall not preclude the holding of the meeting. The board may consider it impossible to examine an opposition or an appeal due to the no-show of the persons involved in the opposition or appeal proceedings and may set the board meeting for another date. 12.5 Given a grounded request of either of the parties the board meeting may be postponed. If such request is satisfied the parties shall be informed of the new date of the board meeting. The board meeting may be postponed by the Eurasian office if there are reasons precluding the holding of such meeting on the planned date. In such a case the parties shall be notified of the change of the date of the meeting as soon as these reasons become known. 12.6 The opposition or appeal examination shall begin with a report on the case by either the chairman or one of the board members. Further, the opposition proceedings shall run, as a rule, in the following order: the first to speak shall be the person who filed the opposition or his representative, then the patent owner or his representative. The appeal proceedings further shall run, as a rule, in the following order: the first to speak shall be the person who filed the appeal or his representative, then the other parties or their representatives. After the oral submissions of the persons involved in the opposition or appeal proceedings, they shall answer questions from the board. 12.7 Persons, having the right to deal directly with the Eurasian office and who do not speak Russian, may make statements, give explanations, speak and make requests in their native languages. In such a case these persons shall ensure interpretation of all their oral statements into Russian. 12.8 Minutes of the board meeting shall be kept. The minutes shall state: - The time and venue of the board meeting; - The title and number of the notice of opposition or appeal; - Information about those present at the opposition or appeal examination. The minutes shall give an account of the main items of the board meeting, in particular, information about newly filed requests, on presentation of new grounds, evidence, proposals on amendments to the Eurasian patent, as well as legally significant statements of the parties pertaining to the case. The minutes shall be in writing. The minutes shall be signed by the chairman of the board and the member who keeps the minutes. 12.9 The Eurasian office shall have the right to use sound recording equipment during the board meeting. The use of sound recording equipment by persons involved in the opposition or appeal proceedings shall not be allowed. Copies of the tracks recorded during the board meeting shall not be provided to the parties. 12.10 The board meeting shall end with the announcement of the operative part of the ruling or with the announcement of further procedures for opposition or appeal examination. 13. Publication of data relating to the filing and examination of opposition 13.1 The Eurasian office shall publish in the Eurasian Office Bulletin the filing date of the opposition, the decision date on the opposition and its substance and the date of invalidation of the Eurasian patent due to its administrative revocation. 13.2 At the time of the publication in the Eurasian office Bulletin of information about changes and amendments to the Eurasian patent, the new specification of invention, claims and drawings shall be published, if they are amended. |