Approved
by Order of the Eurasian Patent Office
of March 5, 2009, ¹8
With amendments approved by Order of the Eurasian Patent Office
of April 8, 2010, ¹13
With amendments approved by Order of the Eurasian Patent Office
of March 30, 2011, ¹8
With amendments approved by Order of the Eurasian Patent Office
of December 17, 2013, ¹50

1. General

1.1. The present Procedures regulate the relations between a patent holder and the Eurasian Patent Office (hereinafter – Eurasian Office) in respect of the extension of the term of a Eurasian patent.

1.2. In accordance with Rule 16(5) of the Patent Regulations to the Eurasian Patent Convention, the term of a Eurasian patent, stated in Article 11 of the Eurasian Patent Convention, may be extended in relation to such a country – party to the Eurasian Patent Convention (hereinafter – country- party to the Convention), the legislation of which provides for the extension of national patents.  In such cases, the Eurasian patent shall be extended by the Eurasian Office in relation to this state, on conditions stipulated in the national legislation of this state for extending national patents.

1.3. The term of a Eurasian patent shall be extended under the following conditions:

   - the term of a Eurasian patent shall be extended in a specific member-state of the Convention in respect of such subject matter of inventions, for which extension of a national patent’s term is allowed in this member state of the Convention;

   - the extension period, which is being sought for and granted to a Eurasian patent in a specific member state of the Convention, shall not exceed the period by which the term of a national patent may be extended in this state;

   - the grounds for extending the term of a Eurasian patent in respect of a certain member state of the Convention shall comply with the grounds (conditions) for extending the term of a national patent for invention in this state;

   -  the documents, providing evidence of the grounds for extending the term of a Eurasian patent in respect of a certain member state of the Convention, shall match up with the documents, which are to be filed with the national patent office of this state to provide evidence of such grounds (conditions);

   - the time limit for lodging a request with the Eurasian Office to extend the term of a Eurasian patent in respect of a certain member state of the Convention shall correspond to the time limit for filing a request to extend the term of a national patent in this state, if a time limit for such a request is prescribed under the laws of this state.

1.4. The term of a Eurasian patent in respect of a certain member state of the Convention shall be extended, provided that, as of the filing date of the request to extend the term of the Eurasian patent, the term of the patent has not expired in this state.

2. Conditions under which the term of a Eurasian patent may be extended in respect of certain member states of the Convention

2.1. Under Par. 4, Article 4, Law on Patents of the Republic of Armenia of December 8, 2004, pharmaceutical preparations, substances or components, which are the subject matter of patented inventions, and which have prophylactic or therapeutic effect on humans or animals; chemical or biological substances aimed at protection of plants, methods of their production, as well as the preparations, substances or components, required for their production, and the methods of their production may be granted additional protection for a period, corresponding to the period between the filing date of the application and the date, on which the relevant competent authority issued a marketing authorization in respect of the Republic of Armenia for this subject matter,  but not more than for 5 years.

The request for additional protection, together with the marketing authorization, issued by the competent authority, mentioned in Par. 1 hereunder, shall be filed with the appropriate authority within six months from the grant of the marketing authorization or within 6 months from the grant of the basic patent, if the said authorization is granted earlier than the basic patent.

2.2. Under Par. 3, Article 10, Law on Patents of the Azerbaijan Republic, if the subject matter of a patent relates to products or to methods of producing products, which, under the legislation, are subjected to administrative procedures, patent protection may be extended by five years upon request of the patent owner.  Such a request shall be filed while the patent is still in force.

2.3. Under Par.3, Article 1, of the Law on Patents for Inventions, Utility Models and Industrial Designs, Republic of Belarus, December 16, 2002, if the exploitation of means, which embody an invention, requires a permission from an authorized body in accordance with the legislation, the term of the Eurasian patent for this invention may be extended by the patent office upon request of the patent owner, but not more than for five years.

2.3.1. Under Par. 1.17, Decree of the President of the Republic of Belarus of August 24, 2006, On Patent Fees, a document confirming the payment of a patent fee shall be submitted together with the request for extending the patent term during the last year of the patent’s validity.  Such a document may be presented within six months from the patent lapse, and the patent fee in such a case shall be increased by 50%.

2.4. Under Par. 3, Art.5, Patent Law of the Republic of Kazakhstan of July 16, 1999, the term of a patent for an invention, the exploitation of which, in accordance with the legislation, requires the permission of a competent body, may be extended by an authorized body upon request from the patent owner, but not more than for five years.

2.5. Article 4 of the Patent Law of the Kyrgyz Republic, of January 14, 1998, states that the term of a Eurasian patent for an invention relating to pharmaceutics may be extended by Kyrgyzpatent upon request from the owner, but not more than for five years.

2.6. Par. 3 Article 18 of the Law of the Republic of Moldova On Protection of Inventions, March 7, 2008, states that medical and phytopharmaceutical products, which are the subject matter of patents, may be granted supplementary protection under conditions stipulated in Part 2, Chapter V.  Articles 69-71 of this part read as follows:

"Article 69 (1). The owner of a patent, maintained in the Republic of Moldova, the subject of which is a medical or phytopharmaceutical product (basic patent) and which has been authorized for marketing, may, on conditions provided for under the present Law and in the Regulations, obtain a supplementary protection certificate (hereinafter – Certificate) for those parts of the basic patent, which are covered in the marketing authorization.

(2). The certificate shall come into force as of the date of expiration of the legal term of the basic patent for a period equal to the period between the patent application filing date and the date of issue of the first marketing authorization as per Part (1), reduced by 5 years.

(3) Without prejudice to Part (2), the term of the Certificate shall not exceed five years from the lapse of the basic patent.

(4) Within the protection granted by the basic patent, protection, granted under the certificate, shall apply only to the product, which was the subject matter of the authorization under Part (1), and to any use of this product as a medical or phytopharmaceutical product, allowed for the term of the certificate."

"Article 70 (1) A request for grant of the Certificate shall be filed with the Agency for Intellectual Property within six months from the date of issue of the authorization, stipulated in Article 69.  If the authorization was issued before the grant of the basic patent, the request shall be filed within six months from the grant of the basic patent."

"Article 71. A Certificate shall be granted if, on the date of filing of the request, the following is observed:

à) the product is protected by a basic patent valid in the Republic of Moldova;

b) the product is covered by a valid marketing authorization as a medical or phytopharmaceutical product;

c) the product has not been earlier the subject of a Certificate in the Republic of Moldova;

d) the authorization, mentioned in b) is the first authorization in the Republic of Moldova for marketing the product in the Republic of Moldova as a medical or phytopharmaceutical product."

2.7. Under Par. 2, Article 1363, Part IV, Civil Code of the Russian Federation, December 18,2006, ¹230-FZ, if more than 5 years have lapsed between the filing date of an application for an invention relating to a medication, pesticide or agrochemical, the use of which requires authorization, and the date of the first marketing authorisation, the term of the exclusive right to the respective invention and of the patent, certifying this right, shall be extended upon request of the patent owner by the federal executive body on intellectual property. The term shall be extended for a period counted from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.

The request for extension of the term is submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, which ever comes last.

2.8. Par. 2, Article 4 of the Law of Turkmenistan On Inventions and Industrial Designs, November 14, 2008, states that a patent for an invention relating to a medicinal product, pesticide or agrochemical, for the exploitation of which a permission is to be issued in accordance with procedures established under the legislation, may be extended by Turkmenpatent upon request of the patent owner for a term up to five years.

2.9. The national legislation of the Republic of Tajikistan does not provide for an extension of the term of a Eurasian patent in the Republic.  In the event that changes and amendments are made in the national legislation of this state in respect of an extension of the term of a national patent, the relevant information will be added to Section 2, Procedures on Extending the Term of a Eurasian Patent.

3. Lodging of Request for Extension of the Term of a Eurasian Patent

3.1. A request to extend the term of a Eurasian patent (hereinafter – request) shall be lodged with the Eurasian office by the patent holder or his representative.  In cases when the patent holder does not have a permanent residence or a permanent seat in any of the member states of the Convention, the request shall be lodged, in accordance with Art. 15(12) of the Eurasian Patent Convention, through a Eurasian patent attorney, whose powers shall be certified by a power of attorney.

If the patent holder’s representative has not been authorized under a power of attorney, presented to the Eurasian Office earlier in relation to proceedings on a Eurasian application or a Eurasian patent, to lodge such a request, a new power of attorney, stipulating such powers, shall be attached to the request.

3.2. The request and its annexes shall be lodged in Russian in one copy.  If the annexes are executed in a different language, their translation into Russian shall be attached to the request.

3.3. The request shall contain the following:

   - name (title) of patent holder and, where relevant, the name of his representative;

   - number of the Eurasian patent and title of the invention;

   - designation of member states of the Convention, where extension of the Eurasian patent is being sought;

   - claims, in respect of which extension of the Eurasian patent term is being sought;

   - indication of the product, which has been authorized for application (marketing);

   -  number and date of issue of the first authorization by a respective body on a certain use of the subject matter;

   -  time period, for which the extension of the Eurasian patent is being sought;

   -  list of annexes to the request.

The recommended form of such a request is shown in Annex 1 to the present Procedures.

3.4. The following shall be attached to the request:

   - a copy of the official document, issued by an authorized body of a Contracting State, authorizing the use of the subject matter;

   -  a document, or a copy of it, confirming the payment of the fee for the extension of the Eurasian patent  term;

   - power of attorney in cases, provided for under Subparagraph 2, Par. 3.1. of the present procedures.

3.5. If the information contained in the attached official document does not allow to identify, whether the subject matter described in it is identical to that of the claims of the Eurasian patent, in respect of which extension of the term is being sought, the patent holder shall present additional materials, which shall allow to identify whether the subject matter, authorized for use, is the subject matter characterized in the patent claims.

3.6. The request shall be signed by the patent holder or by his representative.   The surname and initials of the signatory shall be printed beside the signature. If the patent holder is a legal entity, or an equivalent organization, the request shall be signed, on behalf of the patent holder, by the CEO or another authorized person, with an indication of his position.

4. Proceedings on Request to Extend the Term of a Eurasian Patent before the Eurasian Office

4.1. When a request to extend the term of a Eurasian patent is filed with the Eurasian Office, the payment of a relevant fee is checked.

4.2. If the fee, stated in the payment document, is not received by the Eurasian Office together with the request or within 2 months, as prescribed under Par.12(4), Regulations on Fees of the Eurasian Patent Organization, the Eurasian Office shall send a notice to the patent holder on the need to take measures to effect the payment within three months from the notice date.

4.3. If the patent holder fails to effect payment within the prescribed time limit, the request shall be considered as not having been filed, and the patent holder shall be notified respectively by a letter from the Eurasian Office.

4.4. Upon confirmation of receipt by the Eurasian Office of the fee, paid for filing the request, and of its correct amount, the legal status of the Eurasian patent in respect of the member state of the Convention, where extension is being sought, shall be determined.

4.4.1. Observance of the following conditions for filing the request, and of the requirements set to it, shall be checked:

   - observance of the time limit for lodging the request, if it is provided for under the legislation of the respective member state of the Convention,

   - whether the term of the Eurasian patent has already been extended in respect of this member state of the Convention;

   -  correct form of presentation of the request;

   - documents, which are to be attached to the request: a certified copy of the official document, issued by an authorized body of the member state of the Convention, with a permission to use the product; a declaration that the said permission is the first one in respect of this product;

   - Russian translations of the documents, if they are executed in another language;

   - documents, which allow to identify the authorized product, if the identity is not clear from the above mentioned documents.

4.5. In case of compliance with the conditions for lodging, set forth in Par. 4.4.1 hereunder, the Eurasian Office shall consider whether the subject matter, authorized for use, corresponds to the subject matter, characterized in the claims.

4.6. In case of non-observance by the patent holder of requirements set to the request documents, a notice shall be sent to him, stating the need to present the missing documents within three months from the date of the notice.

4.7. If conditions for lodging the request are not observed and/or the missing documents are not presented within the prescribed time limit, a notice shall be sent to the patent holder on a refusal to satisfy his request.

4.8. When necessary, the Eurasian Office may inquire for additional materials and clarifications from the patent holder. A reply from the patent holder/representative to such an inquiry shall be given within three months from the date when the respective inquiry was sent by the examiners.

4.9. In case of a positive decision on the possibility of extending the term of the claims of the Eurasian patent, stated in the request, or on the possibility of extending the patent term only in respect of some of the claims, as well as in the case of a refusal to satisfy the request, the Eurasian Office shall send a relevant notice to the patent holder.

4.10. The patent owner shall have the right to lodge an appeal within three months from the date of sending of the Eurasian Office’s decision under Par. 4.9 of the present Procedures, stating the grounds of his objection and paying the respective fee.

4.11. An appeal, lodged with the Eurasian Office, shall be considered by the Office within one month from the date of receipt.

4.12. Upon examination of the appeal, a decision shall be taken and shall be communicated to the patent holder.

4.13. In case of a positive decision to extend the term of a Eurasian patent, the Eurasian Office shall enter data on the extension of the term of the Eurasian patent into the Register of Eurasian patents and shall publish in the Bulletin of the Eurasian Office the following information:

   - the number of the Eurasian patent;

   - name or title of the patent holder;

   - title of the invention;

   - indication of the claim(s), in respect of which the term of the Eurasian patent is extended, with indication of the product, for which received permission for application and in respect of which the extension of the patent term is being applied;

   - indication of the State Party to the Convention, in respect of which the term of the Eurasian patent is extended;

   - the expiry date of the Eurasian patent in the abovementioned member state of the Convention.

4.14. At the time of publication of data on the extension of the term of the Eurasian patent, a respective Annex to the Eurasian patent shall be sent to the patent holder, which shall be the official document, certifying the extension of the Eurasian patent in the member states of the Convention (see Annex 2 to the present Procedures).

4.15. In the event on non-payment of an annual maintenance fee, the extension of the term of the Eurasian patent shall be forfeited and the effect of the Annex in respect of this member state of the Convention shall cease.

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