Two Different Patent Systems

Authors: dr. Jacekas Antulis, Associated Partner and Head of Patent Division at METIDA, Birutė Dauderienė, Patent Attorney at METIDA.

direction-95475_640Currently the most popular way to patent an invention is filing of national and international patent applications. They are followed by a regional patent application. Among regional applications, a well-known patent is a European patent, however, an Eurasian patent, which territorially can protect European and Asian regions is a rare choice. Whilst discussing the similarities and differences between the European and Eurasian patents, we would like to emphasize that the number of the filed Eurasian patent applications increases within each year and this type of patent is becoming more and more attractive due to its strength and its scope of protection.

The European patent system is regulated by the European Patent Convention (EPC) signed in 1973, in Munich and currently has 38 member states. The Eurasian patent system is regulated by the Eurasian Patent Convention (EAPC) signed in 1994, in Geneva and currently has 9 member states. Both patent systems offer centralized patent application, search, examination, granting and opposition procedures.

The European patent application is filed to the EPC in Munich, Hague or Berlin in one of the official EPC languages, i.e. English, German or French. As for Eurasian patent system, its headquarters are based in Moscow and the official language is Russian. Both patent systems allow applicants to apply in any language within 2 months after the filing date of the application in the official language. The package of the required documents to submit is the same in both systems.

Yet, the EPC has stricter conditions, as fees for the designation of states are paid during filing of patent applications, whereas the EAPC does not have this procedure and the filed application comprises every contracting state. If the European patent comprises more than 15 claims, an additional fee is charged which is of the significant amount. As for the Eurasian patent, the additional fee is imposed when the application comprises more than 5 claims.

Procedures between the systems differ in the provisional protection too. The provisional protection for the European patent application becomes valid after its publication date, yet in many countries the provisional protection is valid only after the publication date of the translation of claims n a language of that country. Unlike the European patent, the provisional protection of the Eurasian patent application becomes valid in all contracting states after its publication date in Russian. An applicant does not need to limit the number of countries and spend additional expenses for translations and publications in separate countries.

Another important difference between the systems is the validity of patents in the designated countries. The granted European patent is a fiction, as it becomes valid only after its protection is extended to the designated countries. Specifically, after the grant of the patent, separate requests have to be filed to the different countries and claims have to be translated into the official languages of those countries in a relatively short time (3 months), finally, annual fees must be paid to each designated country’s national patent office. Hence, this registration procedure is both complicated and expensive. Contrary to the European patent, after the grant of the Eurasian patent, it becomes valid in all countries which the annual fees are paid for to the EAPO in a centralized way. This is an attractive side of the Eurasian patent system. In fact, the EPC is now in the process of creating a very similar patent system known as unitary patent, which would be an alternative of the current European patent.

Both European and Eurasian patents are valid for 20 years depending on the payment of the annual fees. Yet, the EPC allows the applicants to extend the patent protection for up to 5 years for medicine and plant protection products. However, this condition is not included into the Eurasian Patent Convention.

Furthermore, the annual fees systems are different. In terms of the European patent, the annual fee must be paid for the third year after the filing date, also, it is not important how long the examination took. But the annual fees for the Eurasian patent have to be paid after its grant, yet, the fees are calculated for the period starting from the application filing date. Therefore, filing the Eurasian patent application is significantly cheaper. This fee system also reduces the patenting expenses in cases when the patent is not granted.

The grant of the Eurasian patent is also much cheaper than the grant of the European patent, as it is issued in Russian, whereas the claims of the European patent must be translated in another two official EPC’s languages.

As for the opposition procedure, both patents include it into their system, i.e. in the EPC system the opposition can be filed within 9 months after the grant of the patent and in the EAPC system the opposition can be filed within 6 months after the grant of the patent. In terms of the appeals, in the EPC system they can be filed in 2 months and in the EAPC system in 3 months after the date of the decision. Also, in the EPC system the Boards of the Appeal has the final say, whereas in the EAPC system the decision of this type of board can be appealed before the president of the EAPC, who can change the members of the board asking them to re-examine the matter or makes a decision by himself/herself.

To decide which system to opt for, i.e. either regional or national one, you should take into account your chosen patenting way, the number of designated countries and the patenting expenses. Thinking reasonably, regional patent is much more expensive than the national patent. Yet, after working out the discounts for the search and concessions for the residents of the certain countries, filing the Eurasian patent application after the international application is one-third cheaper than filing the same application to the Russian patent office.

After analysing these two regional patent systems, we can only rejoice that both regional and national patent systems have been harmonised for more than a year. This has simplified and unified the patenting procedure making it also much cheaper. Indeed, both systems have the same goal, i.e. to encourage the inventors to patent their inventions and to grant strong patents.

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