In 2020, the EAPC Contracting States continued with the domestic procedures related to the ratification of the Protocol on the Protection of Industrial Designs to the EAPC, adopted on September 9, 2019 in Nur-Sultan.
Development of normative legal acts in the field of legal protection of industrial designs
The Protocol on the Protection of Industrial Designs to the EAPC was ratified in the Republic of Azerbaijan, the Republic of Armenia, the Kyrgyz Republic, the Republic of Kazakhstan, the Russian Federation and the Republic of Tajikistan by enacting the respective legal acts. The relevant instruments of ratification were deposited with the Director General of the World Intellectual Property Organization (WIPO), i.e. the depositary of the Protocol, by the authorized representatives of the Kyrgyz Republic, the Republic of Azerbaijan and the Republic of Armenia. The last of the three instruments of ratification was deposited with the Director General of WIPO on December 17, 2020, thus setting the date of March 17, 2021 as the date of the entry into force of the Protocol in accordance with Article 22(4) of the Protocol.
In 2020, the EAPO also continued the drafting of provisions of Part II "Industrial Designs" of the Patent Regulations under the EAPC and the Statute on Fees for legally significant and other actions performed in relation to Eurasian design applications and Eurasian design patents.
Development of normative legal acts in the field of legal protection of inventions
In addition to formation of the system of normative legal acts in the area of industrial designs, the EAPO gave no less attention to further improvement of the legal regulations governing the relations in the field of regional legal protection of inventions. At the thirty-sixth (twenty-seventh ordinary) session of the EAPO Administrative Council amendments and addenda to the Patent Regulations under the EAPC and the EAPO Statute on Fees were approved.
Amendments and addenda made to the Patent Regulations under the EAPC affected the provisions related to the right of priority, extension of the Eurasian patent term, procedures of patent search, formal and substantive examination of Eurasian applications, limitation of Eurasian patents, acquainting the third parties with the materials of Eurasian applications and Eurasian patents.
Thus, in order to harmonize the Patent Regulations under the EAPC with the provisions of the Patent Law Treaty and the Patent Cooperation Treaty (PCT), the procedure for restoration of the right of priority was introduced instead of the procedure for extension of the term of priority claim. The scope of protection of the Eurasian patent for invention in case of extension of its term has been clarified. Patent search procedure has been further harmonized with the patent search procedure carried out under the PCT: there have been regulated the situations when during the patent search the requirement for the unity of invention has not been fulfilled or a patent search cannot be carried out in certain cases. The EAPO provides for the option of an extended patent search in the framework of which a preliminary report on patentability is drawn up, which allows applicants to evaluate the prospects for obtaining a Eurasian patent at an early stage of examination, and to make the necessary changes to the Eurasian application prior to the substantive examination. An exhaustive list of verifications to be carried out at the stage of the formal examination of the Eurasian patent application has been defined. It was proposed that certain verifications be carried out at the stage of patent search and substantive examination of the Eurasian application. The requirements for the claims were clarified, taking into account current examination approaches with respect to certain types of inventions. The legal uncertainty concerning the permissible methods of claim amendment within the framework of the Eurasian patent limitation procedure held upon the patentowner's request has been eliminated. The procedure of acquainting the third parties with the Eurasian patent application files has been improved in order to observe the rights and interests of the applicants and patent owners. A number of other amendments and addenda of clarification nature were made to the provisions of the Patent Regulations under the EAPC.
Amendments to the EAPO Statute on Fees established the amount of additional fee for patent search where the lack of unity of invention is determined, as well as clarified the conditions for reducing the unitary procedural fee when the Eurasian application contains a patent search report prepared by an Office having the status of an International Searching Authority. Besides, amendments were made to the title of the relevant fee following the introduction of the procedure for restoration of the right of priority, as well as the provisions concerning the timeliness for payment of certain fees and the consequences of their non-payment were repealed due to inclusion of such provisions into the Patent Regulations under the EAPC.
The EAPO also developed and adopted in 2020 a number of regulations affecting the granting of legal protection for inventions. One of them is the Procedure to file request for accelerated prosecution of patent application under the Patent Prosecution Highway Pilot Program between the EAPO and the Finnish Patent and Registration Office, approved by the EAPO Order No. 18 of July 21, 2020. The EAPO Order No. 1 of February 10, 2020 which updated the forms of the patent search report, supplementary patent search report, as well as declaration of non-establishment of the patent search report is equally important in terms of improvement of the patent search procedure conducted by the EAPO. Some amendments and addenda aimed at the improvement of the procedure for certification and registration of the Eurasian patent attorneys, as well as delisting from the Register of Eurasian patent attorneys have been introduced to the Statute on the Eurasian Patent Attorneys by the EAPO Order No. 12 of June 5, 2020.