Dmitry Rogozhin
Deputy Director of the Examination Department,
Head of the Formal Examination Division
of the Eurasian Patent Office
(Moscow)
drogozhin@eapo.org
Abstract: The article written by Dmitry Rogozhin, Deputy Director of the Examination Department and Head of the Formal Examination Division of the Eurasian Patent Office, is focused on the patenting of inventions under the Patent Cooperation Treaty (PCT) system, the role of International Searching and International Preliminary Examining Authorities in the PCT system, the Eurasian Patent Office's functioning as an International Authority, and new opportunities for applicants in the Eurasian region.
Keywords: Eurasian Patent Organization, Eurasian Patent system, international application, international search, international preliminary examination, foreign patenting.
The Eurasian Patent System, created in accordance with the Eurasian Patent Convention (hereinafter "EAPC"), is the most successful project of Eurasian integration in the field of legal protection of industrial property rights. It enables inventors, scientific organizations, and companies to protect innovative technological advancements on the basis of a single Eurasian patent on the territory of eight EAPC Member States. The Eurasian patent has become popular among applicants due to the efficient and cost-effective procedure for obtaining a Eurasian patent, which provides for filing one Eurasian application with one office instead of eight national applications, paying one set of fees, and assigning one representative.
The Eurasian patent system has been actively developing recently, providing its users with new opportunities. In 2021, the Eurasian Patent Office started receiving applications for Eurasian industrial designs. Since July 1, 2022, the Eurasian Patent Office has been functioning as an International Searching Authority and International Preliminary Examining Authority (hereinafter "International Authority") under the Patent Cooperation Treaty system (hereinafter "PCT system"). Applicants have already selected the Eurasian Patent Office to conduct patent searches on 19 PCT applications in the first six months of its new status.
International Authorities play a key role in the functioning of the PCT system established under the Patent Cooperation Treaty (hereinafter "PCT") of June 19, 1970. Currently, inventors and other patent holders use the PCT system as the main procedure for obtaining patent protection in several countries simultaneously. The number of states participating in the PCT system is increasing every year. Now 157 states are parties to the PCT. In addition, four regional organizations also participate in the PCT system, including the Eurasian Patent Organization (EAPO), with the Eurasian Patent Office performing all administrative functions.
The PCT system is popular because it provides a more simplified and less costly way of obtaining patent protection in several states than obtaining patent protection in each state separately. This is accomplished by filing a unified application, called an international application, instead of several national applications in each of these countries. Pursuant to Article 11 of the PCT, an international application with a filing date, referred to in the PCT as the international filing date, have the effect of a regular national application in each State party to the PCT. The international filing date is deemed to be the actual filing date in each such State. The provisions of Article 11 of the PCT are the cornerstone of the PCT system. It makes it possible to legally compare the filing of an international application in one State with the filing of national applications in each State Party to the PCT, with all the consequences arising from such filing under the applicable national law.
The Office with which the international application is filed is referred to as the "receiving Office" in PCT terminology. It may be a national patent office of a State party to the PCT or an office acing for the State in which the applicant is a resident. The Eurasian Patent Office is an office acting for the EAPC Member States, which are all States Parties to the PCT. Accordingly, applicants from all EAPC Member States may file international applications with the Eurasian Patent Office as a receiving office under the PCT system.
The entire PCT procedure consists of two phases: international and national phases. Let us briefly explain what each of these two phases entails. Let us start with the latter.
Although an applicant files an international application, it is unfortunately not possible to obtain an "international patent" based on it. Neither the PCT nor any other international agreements for the protection of inventions provide for the grant of a single patent covering the whole world. Moreover, it is unlikely that there will be worldwide protection for inventions in the near future. Regional patent organizations that provide protection for inventions on the territory of their Member States on the basis of a single regional patent are the highest level of cooperation between countries in this direction. The Eurasian Patent Organization is a vivid example. In this context, an applicant has to apply to national or regional offices to obtain national or regional patents for inventions, respectively. However, one of the advantages of the PCT procedure is that, while it provides the opportunity to obtain such patents, it requires the filing of only one (international) application.
Thus, the national phase is the second (final) stage of the PCT procedure. It consists of the examination of the international application in national (regional) offices for the purpose of obtaining national (regional) patents. It is up to the applicant to decide in which countries he or she will apply for a patent on the basis of the international application. The selection of a particular country or region for patenting is determined by a number of factors (e.g. the economy of the country or region, the cost of obtaining protection there, the applicant's business needs in the country or region). However, an applicant must first of all evaluate the prospects of obtaining a patent for the invention with a reasonable degree of certainty, i.e. have a fairly clear understanding of its patentability before selecting a patenting territory.
The PCT system provides the applicant with such an opportunity. A report on patentability should be prepared at a high professional level and should cover worldwide sources of information relevant to the claimed invention. In this regard, patent offices (national or regional) that are recognized as International Authorities in accordance with the decision of the PCT Union Assembly, the highest governing body of the PCT Union, where all its Member States are represented, are responsible for conducting patent searches and preparing such reports under the PCT system.
What are the functions of International Authorities in the international phase of the PCT procedure?
The international phase starts with filing of an international application and includes several stages such as international search, international publication, international supplementary search, and international preliminary examination. The last two stages are not mandatory under the PCT procedure since the international supplementary search and international preliminary examination are only carried out upon the applicant’s request.
An international search, which is a mandatory stage of the PCT procedure, includes a search of the world's patent and non-patent databases for prior art relevant to the novelty and inventive step of the claimed invention. An international search results in an international search report with a written opinion of novelty, inventive step, and industrial applicability.
An international preliminary examination of the international application may be conducted upon the applicant's request. Novelty, inventive step, and industrial applicability are further considered during the examination with due regard to any arguments or amendments submitted by the applicant. An international preliminary examination results in an international preliminary report.
Obtaining the results of the international search and the report on the patentability of the claimed invention provides an applicant with a highly professional expert opinion on the prospects of obtaining patent protection. Even an unfavorable international search report and an international preliminary report on the patentability of the invention are of great importance to the applicant. Indeed, in the case of foreign patenting, an applicant has the opportunity to make timely amendments to the scope of protection sought for the invention taking into account the sources of information identified or to refuse to patent the invention in advance of the financial costs incurred in each State.
Furthermore, the time limits under the PCT system for the preparation of the international search report allow an applicant to withdraw an international application before publication and thus avoid public disclosure of the claimed invention.
A favorable result of the international search and patentability assessment for the applicant serves as a basis for a decision to obtain national (regional) protection for the invention and strengthens the applicant's position during the application’ examination in the national (regional) patent offices.
The patent search and examination carried out by an International Authority in the international phase are valuable not only for applicants but also for national patent offices in the national phase. The reason for this is that not all offices, especially small and medium-sized ones, possess the search resources that are available to offices with the status of an International Authority, and not all offices have examiners in all fields of technology.
Major patent offices, including regional ones, are also interested in using the results of work obtained in the international phase of the PCT procedure to reduce duplication of search and examination work in the national phase. By the way, one of the main prerequisites for the development and adoption of the PCT system was a rapid growth in the number of applications filed in the 1960s and the accumulation of a significant number of pending applications in the patent offices. The PCT was intended to address this problem by creating a system that would reduce overlapping work between patent offices in examining applications for the grant of patents for inventions.
I would like to conclude this part of the article by noting that exactly the offices performing the role of International Authorities are the basis for the effective functioning of the PCT system. A crucial requirement for the effectiveness of the entire PCT system is to increase the confidence of different users (applicants, patent offices, and third parties) in the outcomes of the work carried out by the International Authorities in the international phase.
The decision to appoint the Eurasian Patent Office as an International Authority was unanimously adopted on October 7, 2021, at the Fifty-Third (23rd ordinary) session of the PCT Union Assembly on the basis of a positive recommendation of the PCT Committee for Technical Cooperation dated October 6, 2020. The delegations of Russia, Kazakhstan, China, the USA, Great Britain and Northern Ireland supported the proposal to make such a recommendation during the Committee’s meeting. A number of states sent official letters to the PCT Committee for Technical Cooperation in support of the appointment of the Eurasian Patent Office as an International Authority. It must be noted that the number of states expressing support for the Eurasian Patent Office was unprecedented in the recent history of the Committee’s operation.
Additionally, it also must be noted that, as part of the procedure for examining applications from offices seeking the status of an International Authority under the PCT system, two "assisting" offices that already hold this status must evaluate whether the applying office complies with the requirements of the PCT system. The China National Intellectual Property Administration (CNIPA) and the Federal Service for Intellectual Property (Rospatent) valued highly the level of the Eurasian Patent Office’s compliance with such requirements.
The possibility for the Eurasian Patent Office to obtain the status of an International Authority was envisaged from the moment of the establishment of the Eurasian Patent Organization. The EAPC Member States initially assumed the necessity of fully integrating the Eurasian patent system into the global patent system when establishing the Eurasian Patent Organization. First of all, such integration was envisaged with regard to the PCT as the central international agreement in the field of legal protection of inventions.
Article 20 of the Eurasian Patent Convention provides for the participation of the Eurasian Patent Office in the PCT system in any of the five possible functions in which the Office may participate in the PCT system.
Until July 1, 2022, the Eurasian Patent Office functioned as a receiving office, a designated office, and an elected office (i.e. offices where an international application is examined for obtaining a Eurasian patent for invention in the national (regional) phase). As mentioned above, the Eurasian Patent Office has been functioning as an International Searching Authority and International Preliminary Examining Authority since July 1, 2022, thereby ensuring the fullest possible participation in the PCT system.
Thus, it is now possible for applicants from the EAPC Member States to undergo all phases of the PCT procedure at the Eurasian Patent Office: file an international application, conduct an international patent search and international preliminary examination and proceed to the national (regional) phase to obtain a Eurasian patent for invention on the basis of the international application. Applicants can benefit from similar approaches and opportunities within the procedure in the international phase due to their positive experience of patenting under the Eurasian patent procedure, particularly the possibility to use the Russian language and to communicate with the examiners in the languages of the EAPC Member States, which the examiners from other International Authorities do not use.
The status of the Eurasian Patent Office as an International Authority indicates, firstly, that other international patent offices have recognized the high professionalism of its examiner staff. Secondly, it indicates that the quality management system of patent search and examination implemented in the Eurasian Patent Office fully complies with high international standards. The third accomplishment is that the Eurasian Patent Office has acquired technical and information retrieval equipment. Out of a total of more than 150 offices participating in the PCT system, the Eurasian Patent Office became the twenty-fourth office in the world to obtain the status of an International Authority.
It is worth mentioning that the PCT imposes special requirements on International Authorities in terms of their information resources for conducting patent searches on a wide range of world collections of patent documents and non-patent literature, which form the PCT Minimum Documentation. The Eurasian Patent Office, as an International Authority, fully complies with such requirements.
The Eurasian Patent Office uses the patent information system EAPATIS in order to conduct patent searches. This system contains more than 88 million patent documents, including a unique database of patent documents from the Eurasian region and the former USSR in Russian, as well as patent collections of the World Intellectual Property Organization (WIPO), European Patent Office (EPO), patent offices of the USA, Japan, Republic of Korea, China, Germany, Australia and other countries. In addition, for the same purposes the Eurasian Patent Office uses other systems, such as the professional systems EPOQUE Net (EPO) and PatSearch (Federal Service for Intellectual Property), as well as databases of other offices such as J-PlatPat (Japan); K-PION (Republic of Korea); KIPRIS (Republic of Korea); SIPO (China); non-patent databases such as NCBI (BLAST), EBI (FASTA), TKDL (Indian traditional knowledge); free access systems such as PATENTSCOPE, Espacenet, Google Patents.
The Eurasian Patent Office’s examiners use the resources of the Elsevier Reaxys system, including the largest structured database on medicinal chemistry and pharmacology, Elsevier Reaxys Medicinal Chemistry, as well as the STN and NCBI (PubMed) databases in order to conduct patent searches on chemical substances and reactions.
The main priority of the Eurasian Patent Office as an International Authority is the quality of international search and international preliminary examination. The quality management system based on the priorities and principles outlined in the Quality Management Policy of the Eurasian Patent Office should achieve this goal.
The quality management system in the Eurasian Patent Office provides for multi-stage quality control of the examiner's work findings prior to submission to the applicant. It also focuses on all factors affecting the quality of the work findings of the Eurasian Patent Office, including the system of professional training and advanced training of the examiners staff, the development of the material and technical base and information infrastructure of the Eurasian Patent Office, and the methodological maintenance of the search and examination processes. The quality management system of the Eurasian Patent Office is fully compliant with the standards set out in the PCT International Search and Preliminary Examination Guidelines.
Since the first day of its functioning as an International Authority, the Eurasian Patent Office has concentrated on performing the whole international application prosecution procedure fully digitally, primarily through the ePCT system developed and maintained by WIPO. Through the ePCT system, the Eurasian Patent Office, firstly, receives electronic documents of international applications required for the international search and, secondly, prepares an international search report, a written opinion of the International Searching Authority, an international preliminary report, as well as various notifications necessary for the procedure. The digitalization of workflow benefits due to the fast and secure receipt of correspondence sent by the Eurasian Patent Office. In addition, the ePCT system allows the Eurasian Patent Office to monitor the workflow’s progress, including compliance with timeliness for the preparation and transmittal of search and examination reports. The Eurasian Patent Office prioritizes timely preparation of the required documentation in addition to ensuring the completeness and quality of the international search and preliminary examination results.
The Eurasian Patent Office, as an International Authority, is actively promoting the Russian language in the ePCT system in order to enhance the opportunities and ease of use of the ePCT system for applicants in the Eurasian region. This includes the improvement of the Russian interface of the ePCT system and the translation of the electronic notification forms used in the PCT procedure into Russian.
The fees for international search and international preliminary examination payable to the Eurasian Patent Office are set in the amount affordable to applicants in the Eurasian region. The Eurasian fees reflect the current level of fees imposed by the Federal Service for Intellectual Property, which serves as the competent International Authority for applicants from EAPC Member States along with the Eurasian Patent Office. Thus, the fee for conducting an international search on international applications in the Russian language is 9,000 rubles. At the same time, applicants who have designated the Eurasian Patent Office to conduct an international search may subsequently benefit from reductions when paying Eurasian fees at other stages of the application procedure, specifically when paying the fee for Eurasian Patent Office’ international preliminary examination (30% reduction) and when paying a unified procedural fee when obtaining a Eurasian patent (40% reduction).
Functioning as an International Authority provides the Eurasian Patent Office with an opportunity to increase the number of applications accepted under the Patent Prosecution Highway (PPH) program jointly implemented by the Eurasian Patent Office and foreign partner offices. Earlier applicants could only apply to partner offices for participation in the PPH Program on the basis of a favorable examination report on Eurasian applications. As soon as the Eurasian Patent Office has acquired the status of an International Authority, applicants are also eligible to participate in the PPH Program on the basis of a favorable report on patentability prepared by the Eurasian Patent Office on international applications. The first such amendments were introduced on April 1, 2023, in the PPH Program implemented by the Eurasian Patent Office in cooperation with the national patent office of China.
Currently, the Eurasian Patent Office is an International Authority for international applications filed by applicants from all EAPC Member States. It must be noted, however, that applicants from Kazakhstan may designate the Eurasian Patent Office as an International Authority only by selecting the Eurasian Patent Office itself or the WIPO International Bureau as the receiving office.
Such restrictions will hopefully soon be eliminated. In this case, applicants from Kazakhstan will be able to designate the Eurasian Patent Office as an International Authority in international applications filed with the national patent office of Kazakhstan (National Institute of Intellectual Property) as the receiving office under the PCT. This will happen when the receiving office of Kazakhstan submits a letter to WIPO designating the Eurasian Patent Office as the competent International Authority.
Apart from the above-mentioned advantages for applicants, the designation of the Eurasian Patent Office as an International Authority will certainly make a significant contribution to the development of the Eurasian system for legal protection of inventions and will positively influence the legal protection of inventions in the Eurasian region as a whole.
One of the strategic goals of the Eurasian Patent Organization for the next five years is to create a unified examination and information space where the Eurasian Patent Office is expected to gain a key position and become a center of competence in the field of legal protection of inventions for the entire Eurasian region. The status of the Eurasian Patent Office as an International Authority under the PCT fully corresponds to the accomplishment of this goal. This goal is closely linked to increasing the Eurasian Patent Office’s role both in the PCT system and promoting the use of the PCT system among applicants in the Eurasian region.
Improved patent examiner qualifications, the dissemination of best practices for patent search and examination in the national patent offices of EAPC Member States, and increased exchange of patent information and non-patent literature with these offices should all be significant outcomes of the Eurasian Patent Office's activities as an International Authority.
Furthermore, the Eurasian Patent Office's operation as an International Authority will ensure a high level of harmonization of practices for granting legal protection to inventions under the Eurasian procedure with approaches under the PCT system.
The Eurasian Patent Office's status as an International Authority has enhanced its ability to participate in the various working bodies created within the PCT system that consider various aspects of improving the PCT system (e.g., meeting of International Authorities under the PCT, PCT Minimum Documentation Task Force). This enabled the Eurasian Patent Office to promote and defend the interests of the Eurasian region and EAPC Member States when discussing various issues of the PCT system’s functioning.
According to the Agreement between the EAPO and WIPO in relation to the functioning of the Eurasian Patent Office as an International Authority under the PCT, the Eurasian Patent Office may be the competent International Authority for the receiving office of any State that so informs WIPO. This means that the Eurasian Patent Office does not impose any restrictions upon such a selection. It is open to all receiving offices of PCT Member States its selection as the competent International Authority. Considering that the EAPO provides the possibility of conducting international search and international preliminary examination in English, the selection of the Eurasian Patent Office as a competent International Authority is possible for almost any patent office in the world.
Literature:
1. Patent Cooperation Treaty, done at Washington on 19 June 1970, amended on September 28, 1979, modified on February 3,1984, and on October 3, 2001 / WIPO: https://www.wipo.int/pct/en/texts/articles/atoc.html.
2. Regulations under the PCT: https://www.wipo.int/pct/en/texts/rules/rtoc1.html.
3. Report of the Assembly of the International Patent Cooperation Union (PCT Union), Fifty Third (23rd Ordinary) Session, Geneva, 4-8 October 2021 / WIPO: https://www.wipo.int/edocs/mdocs/govbody/en/pct_a_53/pct_a_53_4.pdf.
4. Eurasian Patent Convention signed on September 9, 1994 in Moscow: https://www.eapo.org/en/documents/norm/convention_txt.html.
5. Patent Regulations under the Eurasian Patent Convention. Part I. Inventions: https://www.eapo.org/en/documents/norm/instr202211_eng.pdf.
6. Statute on Fees for legally significant and other actions performed in relation to Eurasian design applications and Eurasian design patents: https://www.eapo.org/en/documents/norm/poshlina_ogl.html.