RULES FOR FILING AND EXAMINING OPPOSITION AGAINST THE GRANT OF A EURASIAN PATENT ON THE BASIS OF ADMINISTRATIVE REVOCATION OF A EURASIAN PATENT

Approved
by Order of the Eurasian Patent Office
of April 11, 2003, N^o 3

As per the EAPO Order of 11.04.2003., N^o 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

2. Examination of the filed notice ofopposition in respect of its compliance with established requirements

3. Familiarization of the patent owner with the notice of opposition andhis response thereto

4. Examination of the notice of opposition as to substance

5. Evidence supporting arguments, presentedin the opposition or in the response and new grounds for revoking a Eurasian patent,submitted after the expiration of the fixed time period

6. Suspension of opposition proceedings

7. Resumption of opposition proceedings

8. Decisions based on the results of examination of the opposition

12. Preparation and holding of a meeting of the board with the parties invited

13. Publication of data relating to the filing and examination of opposition

For the purposes of the presentRules 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) ofthe Convention;
Contracting State – a member state of the Convention;
Patent Regulations – the Patent Regulations to the Eurasian PatentConvention as per Article 14 of the Convention;
Eurasian Application – application for a Eurasian patent filed underArticle 15 (1) of the Convention, or an international application, filed underthe Patent Cooperation Treaty, designating the Contracting States for thepurposes of the Eurasian Patent;
Eurasian Patent – patent granted by the Eurasian Office under Article 15of the Convention;
Patent owner – entity holding the exclusive right to the patentedinvention under Article 9 of the Convention;
Opposition – objection against the grant of a Eurasian patent, submittedin accordance with rule 53(1) of the Patent Regulations;
Appeal – appeal against a decision adopted as a result of the oppositionexamination, 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 ofopposition and participate in the opposition proceedings via Eurasian patentattorneys.

Persons, permanently residing orhaving a permanent seat in one of the Contracting States may file a notice of oppositionand participate in the proceedings in their own capacity, or through Eurasianpatent attorneys as well as other representatives, non-Eurasian patent attorneys.

1.2 A notice of Opposition shall be filed with the EurasianOffice 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 ofthe mention of the grant of a Eurasian patent.

Under rule 37(4) of the Patent Regulations the time period for filing anotice 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 Rule39(3) of the Patent Regulations.

A statement demanding the revocation of a Eurasian patent, filed withthe Eurasian office before the date of publication of mention of the Eurasianpatent grant, shall not be deemed as opposition, and the person, submittingsuch statement, shall be notified accordingly.

1.4 A fixed feeshall be paid for filing a notice of opposition. If a document, confirming thefee payment, is not submitted together with the notice of opposition, such noticeshall not be deemed to have been filed.

1.5 A notice of Oppositionshall be filed in writing. It shall be executed in such a form as to ensure itslong 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 leftside and 20 mmon 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, witha 1.5 spacing between lines and capital fonts not less than 2.1mm.

Graphic symbols, Latin names, Latin and Greek letters, mathematical andchemical 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 noticeis executed not in Russian, its translation into Russian is to be filedtogether with the notice of opposition or within two months after the filing.In the event of failure to submit the opposition translation within theprescribed time period, the notice of opposition shall not be deemed to havebeen filed.

1.7 A notice of opposition shall apply to one Eurasianpatent and shall contain the following:

data, stipulated in Rule 53(6) of the Patent Regulations;

address for correspondence should be stated in accordance withestablished requirements for quick delivery of the correspondence to the statedaddress. The notice of opposition mayalso state phone numbers, faxes, e-mails or other data that will allow tocontact the opponent or his representative;

request to revoke the Eurasian patent in full or partially and thegrounds for opposing the grant, as provided in Rule 53(2) of the PatentRegulations.

1.8 The notice of opposition may state the following as grounds forrevocation 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 oncondition that in respect of at least one of the grounds for revocation of theEurasian patent, mentioned in the notice of opposition, there is sufficient reasoning.

The reasoning behind the proposed grounds for revocation of the Eurasianpatent shall be sufficient to allow the Eurasian office to examine such groundswithout resorting to additional sources of information. Simple reference topatent documents is, as a rule, insufficient, and the notice of oppositionshall indicate (except for short documents) that part of the document on whichthe respective claims are based.

When the demand to revoke a Eurasian patent is based on prior use ororal disclosure of the invention, evidence should be presented confirming suchinstances.

1.10 The notice of opposition shall be signed by the opponent or hisauthorized 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 thefamily name and initials of the signatory.

If the notice of opposition is filed by a legal entity or similarorganization, it should be signed by the head of such entity or anotherauthorized person, stating the position of the signatory and stamped with theseal of the entity or organization, if so envisaged under the laws of the stateof its seat.

The powers of the person, signing a notice of opposition on behalf of alegal entity or similar organization, are determined in accordance with thelaws of the state in which this entity or organization are located.

When the notice of opposition is filed on behalf of several persons, itshall be signed by each of these persons or their representatives. A power ofattorney granted by several persons, filing a notice of opposition, shall besigned 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.
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 theoriginals 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 periodestablished by the Eurasian office. If such documents and/or their Russiantranslations fail to be submitted within the prescribed time period and a requestto prolong the time period has not been made, the Eurasian office may neglectthe arguments derived from such documents.

1.12 The notice of opposition and supporting documents, except for apower of attorney and fee payment certificate, shall be filed in two copies.

In the event of several notices of opposition being filed in respect ofone and the same Eurasian patent, the notice of opposition and attacheddocuments, stated in the paragraph above, shall be filed in two more copies than the number of copiesof other filed notices of opposition.

In the event of other noticesbeing filed after the filing of the first opposition, the missing copies of thenotice of opposition and attached documents shall, on request of the Eurasianoffice, 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 beregistered and given a number.

2.2 Within one month after the filing, the Eurasian office shallexamine the notice of opposition in terms of its compliance with requirementsset forth in Section 1 of the present Rules.

In the event that there are no deficiencies, listed in paragraphs2.3-2.5, in the notice, the Eurasian office shall notify the opponent that the noticeof opposition has been accepted for examination.

2.3 A notice of oppositionshall 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 insubparagraphs 2-5 hereunder, may be remedied within the time period for filinga notice of opposition prescribed under Rule 53(1) of the PatentRegulations. Deficiencies, stated insubparagraphs 6-10 hereunder, may be remedied within a time period set by theEurasian Office.

2.5 Upon detection of deficiencies, mentioned in Paragraphs 2.3, 2.4 ofthe present Rules, for which the possibility of correction still exists, anotification shall be sent to the opponent suggesting to present the missingdocuments (data) or to perform necessary actions within the specified timeperiod.

In the event of detection of such deficiencies, which cannot be correcteddue to lapse of time for opposition filing, as well as in cases when the opponentfails to present the missing documents (data) or to perform the necessaryactions within the specified time period, the notice of opposition shall not beconsidered as having been filed or its examination shall be declined, and arelevant communication shall be sent to the opponent.

2.6 In case of absence in the notice of opposition of anaddress 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 notconsidered as having been filed or in the event of a decision to refuse toexamine 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 thenotice shall be sent to the patent owner or his representative if such isappointed.

3.2 Given the absence ofdeficiencies, mentioned in Paragraphs 2.3, 2.4 of the present Rules, whichpreclude further examination of the notice(s) of opposition as to substance,the Eurasian office shall, without delay, after the lapse of the time periodfor filing oppositions, provided under Rule 53(1) of the Patent regulations,send a communication to the patent owner inviting him to respond to the noticeof 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 ofopposition were corrected after the time period for filing oppositions,referred to in Rule 53(1) of the Patent Regulations, but within the time periodstated in the communication from the Eurasian office (Par. 1 of item 2.5 of thepresent rules), then the communication stated in the paragraph immediatelyabove, shall be sent without delay after the correction of the respectivedeficiencies.

3.3 If the Eurasian patentstates several patent owners, entitled, in accordance with Article 15 (12) ofthe Convention, to deal with the Eurasian office independently, who have notappointed a single representative, the Eurasian office shall recognize thefirst patent owner, mentioned in the Eurasian patent, as their jointrepresentative and shall send the notice(s) of opposition and the communicationto this patent owner.

3.4 In the event of several notices ofopposition 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 thepresent Rules.

3.5 The patent owner shall have the right to submit to the Eurasianoffice his response to the notice(s) of opposition (hereinafter “response”),presenting his arguments against the claims made in the notice(s), as well asto propose changes and amendments to the Eurasian patent, taking into accountthe requirements set forth in Par. 3.7 of the present Rules.

The response and attached documents shall be submitted in two copies. Inthe event of several notices of opposition being filed in respect of one andthe same Eurasian patent, the number of copies of the response with theattached documents shall exceed the number of filed notices of opposition byone.

3.6 The response shall state:

name or company name of patent owner, his place of residence or officelocation;
Eurasian patent number, title of invention;
Name or companyname of opponent or opponents in the event of several notices of opposition;
Arguments ofthe patent owner against claims made in the notice(s) of opposition

The response shall be signed bythe patent owner or his representative in accordance with Par.1.6 of thepresent Rules.

In cases, when the patent ownerhas appointed a new representative, or the power of attorney available in thedocuments of the Eurasian patent and issued to an earlier appointedrepresentative, does not grant the power to engage in opposition proceedings,another power of attorney shall be attached to a response submitted through arepresentative.

Documents, supporting the arguments provided in the response, shall be attached to theresponse. Materials of the opposedEurasian patent need not be attached.

Documents, to which the patent ownerrefers and/or their translation into Russian, if the originals are not inRussian, and which are not submitted together with the response, are to beprovided on request of the Eurasian office within a time period specified bythe Eurasian office. If such documents and/or their translations fail to besubmitted within the specified time andno request to prolong the time period is made, the Eurasian office need nottake into account the arguments arising from such documents.

3.7 Together with the response the patent owner may submit his proposalson 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 Patentregulations.

The changes and amendments proposed by the patent owner to thespecification, claims and drawings, except for correction of technical andobvious mistakes, shall be within the disclosure of the invention in thespecification.

These changes and amendments shall not lead to broader protection thanthat provided by the Eurasian patent as granted. The proposed changes andamendments to the claims shall not contain features that are not present in theoriginal 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 theoriginal Eurasian application, on the basis of which such changes andamendments are made.

Additionally the patent owner shall give explanations in respect of theinvention’s patentability with the proposed amendments, taking into account thestate of the art and the grounds presented in the notice(s) of opposition.

The proposed changes and amendments shall not run against otherrequirements set forth in the Patent regulations, except for the requirement ofthe unity of the invention.

Proposals on changes and amendments shall be submitted in the form ofsubstituted pages.

3.8 The Eurasian office shall send the response and the changes andamendments which the patent owner proposed to the Eurasian patent, to theopponent or, if several notices of opposition were filed, to all opponents.

The Eurasian office shall, if it considers necessary, invite theopponent to present his considerations in respect of the response and changesand amendments proposed by the patent owner within a time period stated in thecommunication.

3.9 If, in his response, the patent owner demands that the examinationof 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 invitinghim to present his considerations in respect of such a demand within a timeperiod 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 adecision on it on behalf of the Eurasian office shall be performed by a board consistingof at least three examiners, employees of the Eurasian office, at least two ofwhom 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 theboard.

The chairman of this board shall be appointed from among those examinerswho were not involved in the decision to grant the opposed Eurasian patent. Oneof the examiners shall be in charge of all the proceedings on the notice ofopposition prior to the adoption of a decision on it.

Members of the board and the chairman of the board shall be appointed bythe head of the Examination department of the Eurasian office.

The examiner, who is in charge of the proceedings on the notice ofopposition prior to its examination by the board, shall be appointed by thechairman of the board. This examiner shall have the right to act on behalf ofthe board in his correspondence with the parties to the opposition proceedings.

The joint examination of the notice of opposition shall be preceded bythe study of the notice of opposition, the reference materials and otherdocuments by each member of the board.

4.2 Examination of the notice of opposition as to substance, duringwhich the validity of the claims presented is decided, shall begin afterreceipt of the response to the notice of opposition; if the response failed tobe provided – after the expiration of the time period for its submission.

In cases when the opponent is invited by the Eurasian office, inaccordance with Par. 3.8, 3.9 of the present rules, to present his considerationsin respect of the response, examination of the opposition as to substance shallbegin after receipt of such considerations, or, in the event that they fail tobe provided, after the expiration of the time period for their submission.

4.3 If the claims in the notice of opposition apply to the revocationof only a part of the Eurasian patent, examination of the notice of oppositionshall be conducted only in respect to that part.

4.4 Examination of the notice of opposition shall be conducted in respectof those grounds for revocation which are supported in the notice.

The Eurasian office shall not be obliged to check the validity of theEurasian patent grant based on other grounds, listed in rule 53(2) of thePatent regulations. The Eurasian office may examine other grounds listed inrule 53(2) of the patent regulations, if it becomes clear from the materials ofthe opposition and from the Eurasian patent case that such grounds preclude theeffect of the Eurasian patent in full or partially.

4.5 If the Eurasian office decides that the Eurasian patent may not bemaintained as granted, however its limited maintenance is possible, the patentowner shall be invited to change the claims and, when necessary, thespecification and drawings. The Eurasian office may suggest to the patent ownera version of such changes and amendments, indicating that they are onlysuggestive and the patent owner may disagree with them.

4.6 The changes and amendments proposed by the patent owner to theclaims, specification or drawings shall be checked in terms of compliance withthe requirements of Par.3.7 of the present rules, including, whether or not thechanges and amendments in the claims would lead to broader protection under theEurasian patent as granted, and whether these changes and amendments containfeatures that are absent in the original Eurasian application.

If the proposed changes and amendments comply with the establishedrequirements, the opposition shall be examined on the basis of the Eurasianpatent text taking into account these changes.

4.7 If upon examination of the opposition it is decided that theEurasian patent may be maintained in the amended form, compliance with therequirement of unity of invention shall not be examined.

4.8 Examination of the notice of opposition as to substance shall beconcluded by passing a decision without convening a meeting of the board ofexaminers and without inviting the parties, unless the parties request to holdsuch a meeting or the Eurasian office considers such a meeting expedient.

4.9 Preparation and holding of a meeting of the board, as well asinvitation of the parties to it shall be in accordance with proceduresstipulated in Section 12 of the present rules.

5. Evidence that supports arguments of the opposition orof 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 intoconsideration evidence in favor of arguments stated in the opposition or in theresponse, or new grounds for revoking a Eurasian patent, if they are presentedby the parties after the expiration of the fixed time period.

Taking into account Par.5.2 of the present rules, when deciding on theadmissibility of new grounds for revoking a Eurasian patent or of evidencepresented after the expiration of the fixed time, their capability of affectingthe decision on the opposition is taken into consideration, as well as thestage of the opposition proceedings and the reasons why such grounds orevidence were not provided in time.

A refusal to take into consideration new grounds for revoking a Eurasianpatent 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 presentedafter 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 ofthe present rules.

6. Suspension of opposition proceedings

6.1 If, during the opposition proceedings, a third person submitsevidence to the Eurasian office that he has brought an action in respect of theright to the opposed Eurasian patent, the opposition proceedings shall besuspended, unless this person consents in writing to continued oppositionproceedings. Decision on suspension ofthe proceedings shall not be made before the opposition is accepted asadmissible. In the event of suspension of opposition proceedings the Eurasianoffice shall without delay inform each party thereon.

6.2 Upon receipt of proof that a final court decision has been passed inthe abovementioned dispute on the right to the patent and that it has come intoforce, the Eurasian office shall notify the parties that opposition proceedingsshall be renewed as of the date stated in the notification. In the event that the court decides in favorof the third person, opposition proceedings shall be renewed three months afterthe court decision’s coming into force, unless the third person requests inwriting to renew the opposition proceedings earlier.

6.3 When deciding to suspend opposition proceedings, or after thedecision, the Eurasian office may fix a date on which it intends to resume the oppositionproceedings, irrespective of the stage of the court proceedings, whereof theparties shall be informed. If no proof, mentioned in par.6.2 hereunder, isreceived by that date, the Eurasian office may resume the oppositionproceedings.

6.4 Opposition proceedings shall be suspended in the event of the patentowner’s demise, his legal incapacity or limited legal capacity or hisuntraceability, and if the patent owner is a legal entity – in case of itsliquidation.

After the appointment of a person, authorized to participate in theopposition proceedings on behalf of the patent owner, and, in certain cases, afterthe registration of the transfer of patent rights, the Eurasian office shallnotify the parties of the resumption of the opposition proceedings as of thedate stated in the notification.

6.5 Opposition proceedings shall be suspended in the event of the patentowner representative’s demise, legal incapacity, limited legal capacity oruntraceability.

After receipt by the Eurasian office of a communication from the patentowner about his appointment of a new representative, the opposition proceedingsshall be resumed as of the date when the opponent receives the respectivecommunication.

In the event that within three months from the date of the oppositionproceedings’ suspension the patent owner fails to appoint a new representative,the Eurasian office shall inform the patent owner of:

The need toappoint a Eurasian patent attorney within two months from the date of thecommunication in cases when the patent owner does not permanently reside in anddoes not have a permanent seat in any of the Contracting states;

Resumption ofopposition proceedings as of the date of such communication in cases when the patentowner is entitled to deal with the Eurasian office independently.

6.6 Duration of the time periods fixed by the Eurasian office forsubmission of opposition documents shall be suspended as of the date ofsuspension of the opposition proceedings. After resumption of oppositionproceedings, duration of the suspended time periods shall also be resumed. Ifthe remaining time period is less than two months it shall be extended to twomonths.

7. Duration of opposition proceedings

7.1 If during the opposition proceedings the Eurasian patent lapses inall the Contracting states, the opposition proceedings may continue based on arequest from the opponent, provided that such request is submitted within twomonths from the Eurasian office’s communication to this person on the lapse ofthe Eurasian patent.

In the event that such a request fails to be lodged within theabovementioned time, the opposition proceedings shall be terminated without anydecision 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 isfiled by a legal entity, in the event of its liquidation, the oppositionproceedings may be continued at the discretion of the Eurasian office evenwithout the involvement of the opponent’s heirs, successors or representatives,if by that stage of the proceedings it is established that a decision to revokethe 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 befinalized by adopting one of the decisions listed in rule 53(8) of the Patentregulations.

Decisions may be adopted only on the basis of such grounds and evidenceon which the parties had had a possibility to comment.

8.2 If the Eurasian office concludes that the grounds, referred to inrule 53(2) of the patent regulations, preclude the effect of the Eurasianpatent, a decision to revoke the patent shall be adopted. A decision to revokea Eurasian patent shall also be adopted in cases, when the patent owner:

Fails toexpress his agreement with the text of the proposed amendments to the Eurasianpatent;

Fails to pay afee for the publication of a new specification to the Eurasian patent in duetime.

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 themaintenance of the Eurasian patent as granted, a decision to decline theopposition(s) shall be passed.

8.4 If the Eurasian office concludes that given the changes andamendments proposed by the patent owner to the invention, protected by theEurasian patent, it now meets the requirements of the Patent Convention and thepatent regulations, a decision is passed to introduce the changes andamendments to the Eurasian patent, provided that the patent owner agrees withthe amended text of the claims, specification and amended drawings, proposed bythe Eurasian office.

The decision on the maintenance of the amended Eurasian patent shallcome into effect on condition that the fee for the publication of the newinvention specification to the Eurasian patent is paid in due time. In the event of failure to pay in due timethe fee for the publication of the new specification, a decision shall bepassed to revoke the Eurasian patent in accordance with Par.8.2 of the presentrules.

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 announcedorally. Later on the Eurasian officeshall issue a written decision which shall be sent to all the partiesconcerned.

The decision on the opposition shall be grounded and shall state thedates and procedure for its appeal.

8.6 Taking into account Par.8.4 of the present rules, decisions onoppositions shall come into force after the expiration of the time for filingappeals, unless they are appealed in accordance with section 9 of the presentrules.

In the event of an appeal being filed, no acts related to theimplementation of the decision on the opposition, including the entry ofchanges into the Register of Eurasian patents, publication of information onthe decision on the opposition in the Eurasian office Bulletin, shall beperformed 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 anappeal to the President of the Eurasian office. The other party in theopposition examination may be involved in the appeal examination procedure.

Persons, whose notices of opposition are not deemed as having been filedor are not accepted as admissible, shall not have the right to be involved inthe appeal examination procedure.

9.2 A patent owner’s successor may file an appeal andengage in the appeal examination procedure only after appropriate registrationof the transfer of right to the Eurasian patent.

The right to file an appeal and to participate in the appeal examinationprocedure may be transferred to other persons in the order of generalsuccession (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 donot permanently reside, nor have a permanent seat in any of the Contractingstates, may file an appeal and engage in its examination procedure providedthat they comply with the established requirements in respect of mandatoryrepresentation.

9.3 An appeal may be filed within four months from the date when thewritten decision on the opposition is sent out. The time for filing an appealshall not be extended, and the right to file an appeal, lost due to lapse ofthis time, shall not be restored.

9.4 An appeal shall state:

The first andsecond names, patronymic (if used) or company name of the person filing theappeal, his permanent residence address or permanent seat address;
The appealeddecision on the opposition(s) and what part of the decision should be annulledor changed.

The appeal shall also provide arguments in favor of the annulment orchange of the opposition decision.

9.5 Requirements, referred to in paragraphs 1.2, 1.5, 1.6, 1.10, 1.12hereunder, shall apply to the appeal and its filing procedure.

9.6 An appeal shall not be deemed as having been filed if:

The appeal isexecuted not in Russian and the Russian translation fails to be provided withintwo months after the appeal is filed with the Eurasian office or within thetime period for filing appeals, depending on which is later;
The appeal isnot signed by the person who files it nor by a Eurasian patent attorney, whenthe appeal is filed by a person not permanently residing, nor permanentlyseating in any of the Contracting states, and this deficiency fails to beremedied within the time period stated in the communication from the Eurasianoffice;
In cases whenappeals are filed by persons, referred to in subparagraph three of Par.9.2hereunder, if the requirements on mandatory representation are not compliedwith.

9.7 An appeal shall be rejected as inadmissible, if:

The appeal isfiled after the lapse of time, stipulated in rule 53(8) of the Patentregulations;
The appeal iffiled by a person not entitled to file appeals according to Par. 9.1, 9.2 hereunder;
The appeal doesnot have data, requested under subparagraph 2) of paragraph 9.4 hereunder, andthese data fail to be provided during the time for appeals filing;
The appeal doesnot have data, requested under subparagraph 1) of paragraph 9.4 hereunder, andthese data fail to be provided during the time stated in the communication fromthe Eurasian office.

9.8 A communication on the receipt of the appeal, with itsattached copies, shall be sent out to persons engaged in the appeal examinationprocedure. The communication shall invite the respective party to present itscomments and proposals in respect of the appeal within a fixed time, stated inthe communication.

10. Examination of appeals

10.1 Provisions of the present rules, regulating the oppositionexamination procedures, shall apply respectively to the appeal examinationprocedure.

10.2 An appeal, that meets the requirements set forth in section 9 ofthe present rules, shall be examined by a board appointed by the President ofthe Eurasian office.

10.3 Presentation, during the appeal examination, of new grounds forrevoking a Eurasian patent, out of those provided under rule 53(2) of thepatent regulations, which are not stated in the notice of opposition, shall beallowed only on consent of the patent owner.

10.4 Based on the results of the appeal examination, the President ofthe Eurasian office shall either order a secondary examination of theopposition, or shall issue a final decision on the opposition.

10.5 The board, appointed for the appeal examination or for thesecondary opposition examination, shall consist of at least three persons,employees of the Eurasian office, out of which at least two were not involvedin the decision on granting the Eurasian patent, against which the notice ofopposition was filed, nor in the decision on the opposition, against which theappeal was filed. When necessary, a legal expert of the Eurasian office may beincluded 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 anydecision, irrespective of the stage of opposition proceedings at which it iswithdrawn. The Eurasian office shall notify the patent owner of the withdrawalof the notice of opposition and termination of the proceedings on it.

11.2 Withdrawal of notice of opposition after the patent owner’s filingof an appeal against a decision to revoke the patent shall not affect furtherexamination of the appeal. The person who withdraws the opposition, shall notbe 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 appealproceedings.

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 theappeal examination board (hereinafter – board meeting) with invitation of theparties 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 orlegal issues, which were not fully clarified after examination of the documentspresented by the parties or which require further discussions.

12.3 When the date of the board meeting is set, the parties are informedof the time and venue of the meeting. An attachment to this communication maylist the issues, which the Eurasian office believes need to be discussed toreach a decision on the opposition or the appeal. In this communication theEurasian office may set a date by which the parties may submit writtenstatements, remarks and proposals on the abovementioned issues.

12.4 Failure of any persons, involved in the opposition or appealexamination and informed of the time and venue of the board meeting, to appearbefore the meeting shall not preclude the holding of the meeting.

The board may consider it impossible to examine an opposition or anappeal due to the no-show of the persons involved in the opposition or appealproceedings and may set the board meeting for another date.

12.5 Given a grounded request of either of the parties the board meetingmay be postponed. If such request is satisfied the parties shall be informed ofthe new date of the board meeting.

The board meeting may be postponed by the Eurasian office if there arereasons precluding the holding of such meeting on the planned date. In such acase the parties shall be notified of the change of the date of the meeting assoon as these reasons become known.

12.6 The opposition or appeal examination shall begin with a report onthe case by either the chairman or one of the board members.

Further, the opposition proceedings shall run, as a rule, in thefollowing order: the first to speak shall be the person who filed theopposition or his representative, then the patent owner or his representative.

The appeal proceedings further shall run, as a rule, in the followingorder: the first to speak shall be the person who filed the appeal or hisrepresentative, then the other parties or their representatives.

After the oral submissions of the persons involved in the opposition orappeal proceedings, they shall answer questions from the board.

12.7 Persons, having the right to deal directlywith 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 ensureinterpretation of all their oral statements into Russian.

12.8 Minutes of the board meeting shall be kept.

The minutes shall state:

The time andvenue of the board meeting;
The title andnumber of the notice of opposition or appeal;
Informationabout those present at the opposition or appeal examination.

The minutes shall give an account of the main items of the boardmeeting, in particular, information about newly filed requests, on presentationof new grounds, evidence, proposals on amendments to the Eurasian patent, aswell as legally significant statements of the parties pertaining to the case.

The minutes shall be in writing. The minutes shall be signed by thechairman of the board and the member who keeps the minutes.

12.9 The Eurasian office shall have the right to use sound recordingequipment during the board meeting. The use of sound recording equipment bypersons involved in the opposition or appeal proceedings shall not be allowed.Copies of the tracks recorded during the board meeting shall not be provided tothe parties.

12.10 The board meeting shall end with the announcement of the operativepart of the ruling or with the announcement of further procedures foropposition 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 Bulletinthe filing date of the opposition, the decision date on the opposition and itssubstance and the date of invalidation of the Eurasian patent due to itsadministrative revocation.

13.2 At the time of the publication in the Eurasian office Bulletin ofinformation about changes and amendments to the Eurasian patent, the newspecification of invention, claims and drawings shall be published, if they areamended.

page top