Memo for patent holders and their representatives on restoration of a right to a Eurasian patent

1.1. The present Memo is intended for patent owners and their representatives and is aimed at streamlining the procedure for restoring rights and paying fees on patents that have become void in all member states of the EAPC or lost effect in a certain state, for the purpose of abiding by the established procedures of reinstatement of rights to Eurasian patent (Rule 39, Patent Regulations).

1.2. The Memo is based on the norms of the EAPC, the Patent Regulations and the Statute on Fees.

1.3. Fees may be paid by the patent owner, another concerned person or their representative (Rule 30, Patent Regulations).

2. Conditions under which rights to a forfeited Eurasian patent may be restored

A Eurasian patent, which was forfeited in all EAPC member states, or became void in respect to a certain EAPC member state due to non-payment at the appropriate time of the Eurasian patent maintenance fee, may be restored, provided that all the following conditions are met:

the right was lost after 28.02.2002;
the request to restore the right and payment of respective fee are made before the expiration of a three years period, counting from the date of termination of right (Rule 39(2), subparagraph two);
reinstatement of right shall be in respect to those states, the laws whereof provide for such reinstatement (Rule 39(1), subparagraph two)(see Annex 1);
the right was lost due to non-compliance with fee payment due dates despite all the measures taken by the patent owner, unintentionally;
the annual and additional fees are paid (Rule 39(1), subparagraph three and 39(2), subparagraph four) (see Annexes 2 and 3 and item 4.1, subparagraph three of the present Memo).

3. Currency for payment of fee for restoration of right to a Eurasian patent

3.1. Payment of the fee to EAPO may be in Russian Rubles, US Dollars or Euros (item 1(4), Statute on Fees).

3.2. Payment shall be at the exchange rate of the Central Bank of Russia fixed for the day of payment in respect to the currency of the payment (item 1(4), Statute on Fees).

4. Amount of fee paid for the restoration of right to a Eurasian patent

4.1. The amount of the fee paid for the restoration of a right to a Eurasian patent shall be the sum total of the following:

fees for the missed year(s) of the patent’s effect in the EAPC member states (in compliance with the provisions of item 2 of the present memo) (Rule 39(2), subparagraph four) (see Annex 2);

50% of the amount of the fee for the first missed year of effect (Rule 40(7), subparagraph one and item 10(1), subparagraph five, Statute on Fees);

additional fee for filing the request to restore the right to a Eurasian patent (Rule 39(1), subparagraph three and item 8(2), subparagraph two, Statute on Fees) (see Annex 3).

4.2. The fee shall be deemed as paid correctly if its amount corresponds to the amount of the fee fixed for the day of the payment (item 12(5), Statute on Fees).

5. Documents to be presented by the patent owner to the Eurasian Patent Office for the restoration of a right to a Eurasian patent

To restore the right to a patent the patent holder (or his representative) shall fill in the Request form (Annex 4), in which he shall designate the EAPC member state in which he wants to restore his right to the patent in compliance with provisions of item 2 of the present Memo. A payment document, certifying the fee payment, shall be attached to the Request. This document may be a copy of a payment order, receipt from a savings bank or other credit institution (item 12(1), Statute on Fees). A power of attorney, certifying the authority of the patent holder’s representative, shall also be attached to the Request, if it failed to be presented earlier. All of these are to be submitted to the EAPO. The request and the payment document shall apply to the same patent (item 12(3), Statute on Fees).

Bank details of the Eurasian Patent Organization for the purposes of fee payments are given in Annex 5.

Samples of receipts from the savings bank for settlements in cash in the Russian Federation are given in Annexes 6 and 7.

6. Time limit for presentation of documents to the Eurasian Patent Office for the purpose of restoring a right to a Eurasian patent

The request together with the payment document and the power of attorney, confirming the authority of the representative, shall be presented to the EAPO not later than within three months from the date of payment stated on the payment document (item 12(2), Statute on Fees). The payment itself shall be effected not later than three years from the date of the right forfeiture in respect to a specific EAPC member state.

7. Effects of incorrect fee amount payment for patent holder(s)

7.1. In the event of incompliance of the paid fee with the required amount, EAPO shall send a notification on the need of an additional payment to the person, stated in the request, and shall grant a three months period to effect the payment (item 10(1), subparagraph six, Statute on Fees).

7.2. In the event of failure to observe the time limit and to pay the correct amount of fee, proceedings to restore the right to such a patent shall not be launched (item 10(1), subparagraph seven, Statute on Fees).

8. Form filling procedure

Request for restoration of right to a Eurasian patent

The request shall state the patent number, application number, application filing date and year(s) for which the payment is made.

Then the EAPC member states in which the patent holder wishes to restore his patent rights are designated, and the total amount of the fee for the respective year(s) of patent effect with a 50% surcharge on the fee for the first omitted year is indicated, as well as the amount of the additional fee (item 8(2) subparagraph two and item 1(5), Statute on Fees).

The request shall also indicate the person in charge of the patent maintenance proceedings, address for correspondence and other details that would allow to contact this person, it shall bear the signature of this person and the date the request was sent.

9. Patent holder’s further steps after reinstatement of Eurasian patent rights

Further maintenance of a patent, the rights whereto are restored, shall be in accordance with the Memo for patent holders and their representatives on the payment of annual maintenance fees for Eurasian patents

10. Eurasian Patent Office web site

All the necessary forms for payment of fees to restore rights can be found at the EAPO web site. In the Section “Reinstatement of rights” –a form “Request for reinstatement of Eurasian patent rights” can be drawn up for a specific Eurasian patent, to which rights may be restored.

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