The amendments and addenda to the Patent Regulations under the Eurasian Patent Convention (Patent Regulations) come into force on January 1, 2024.
The main amendments concern the establishment of a time limit for the submission of claims that are not included in the Eurasian application files received by the Eurasian Patent Office (EAPO), modified time limits for filing oppositions within the administrative revocation procedure of Eurasian patents. The list of verifications carried out by the EAPO in respect of a claimed industrial design as part of the substantive examination of a Eurasian application is expanded.
The amendments and addenda to Part I “Inventions” and Part II “Industrial Designs”of the Patent Regulations, adopted by the Administrative Council of the Eurasian Patent Organization on the forty-third (thirtieth ordinary) session on December 5-7, 2023, shall be effective from January 1, 2024.
The time limit for the submission of claims is established. New Rule 211(61) of the Patent Regulations establishes a time limit for the submission of claims when such a document is missing from the Eurasian application file received by the EAPO, including from the file of a divisional Eurasian application. If the claims are not submitted within the abovementioned time limit, the Eurasian application shall be deemed withdrawn. Please note that the Patent Regulations do not provide for an extension of this time limit at the request of the applicant filed before the expiry of the time limit. However, if the time limit is not met, the applicant is entitled to benefit from the procedure for continuation of the prosecution provided for in Rule 37(3) of the Patent Regulations.
From January 1, 2024, the continuation of the prosecution procedure shall also be available in respect of divisional Eurasian applications for which the applicant has missed the two-month time limit for the submission of the claims requested from the applicant prescribed by Rule 41(5) of the Patent Regulations, which comply with the requirements of Rule 49(6) of the Patent Regulations.
The time limit for filing oppositions is increased. From January 1, 2024, the time limits for filing oppositions on the grant of a Eurasian patent for invention under Rule 53(1) of the Patent Regulations and oppositions to the invalidation of a Eurasian patent for industrial design under Rule 116(2) of the Patent Regulations will be increased. The time limits for filing such oppositions shall now be three years from the date of publication of the grant of a Eurasian patent.
Industrial designs. The amendments made to Part II “Industrial Designs” of the Patent Regulations expand the list of verifications carried out by the EAPO in respect of a claimed industrial design during the substantive examination irrespective of the presence or absence of filed oppositions by third parties against the grant of a Eurasian patent for industrial design. In particular, the EAPO will verify the compliance of the claimed industrial design with the patentability criterion of “novelty” within the scope of publicly available information at the disposal of the EAPO and (or) information obtained by the EAPO when carrying out other verifications provided for by the Patent Regulations during substantive examination of the Eurasian application. Furthermore, from January 1, 2024, the EAPO will also verify whether each industrial design claimed in a Eurasian application does not relate to the solutions referred to in sub-paragraphs e), f) and g) of Rule 78(6) of the Patent Regulations.
Mediation is also possible in case of identity or confusing similarity of an industrial design with trademarks with an earlier priority.
The amended versions of Part I “Inventions” and Part II “Industrial Designs” of the Patent Regulations, with additions and amendments effective from January 1, 2024, are available on the EAPO website.