Why IP Center Skolkovo?
Welcome speech
Anton Pushkov
Managing Partner
Russian Patent Attorney
IP Center Skolkovo
Patentability of Inventions
in Russia
Dmitry Kryndushkin, Ph.D
Leading Expert, US Patent Agent
IP Center Skolkovo
Timing and Documents for the National Phase of your PCT in Russia
Elena Akulenko
Senior Expert, Russian and Eurasian Patent Attorney
IP Center Skolkovo
Patent Examination Procedure in Russia
Dmitry Kryndushkin, Ph.D
Leading Expert, US Patent Agent
IP Center Skolkovo
Making Amendments to the Patent Application
Elena Akulenko
Senior Expert, Russian and Eurasian Patent Attorney
IP Center Skolkovo
Q&A
How to enter the national phase of a PCT application in Russia?
The national phase in Russia starts only if the applicant performs certain acts either before the expiration of a certain time limit or earlier if accompanied by the express request. The applicant should not expect any notification from the Russian Patent Office (Rospatent) inviting him to perform those acts. It is his own responsibility to perform them in due time.

The following acts should be performed:
  • payment of the official filing fee,
  • submitting a special request and a translation of an application into Russian language.

If a decision to enter the Russian national phase is made in a few days before the expiration of the time limit for entering, filing a special request in Russian language or a translation of the PCT request into Russian will be enough to enter. The Russian translation of an application and even an official filing fee in this case may be submitted after expiration of a time limit for entering without necessity of payment any additional fees. The deadlines for these acts are the following: the filing fee must be paid not later than two months from the date of issuing of corresponding notification by Rospatent; the Russian translation of an application must be filed not later than three months from the date of issuing of a corresponding request for Formal examination by Rospatent.

If the applicant wishes to obtain a utility model registration in Russia instead of an invention on the basis of an international application, the applicant should file a special request for entering the national phase as a utility model. Please be aware that in accordance with Russian Patent Law a utility model application shall relate to a single utility model. If your international application contains a group of utility models, you will have to split it up when entering the national phase in Russia, and file a separate application for each utility model.

Another way to cover Russia on PCT national phase is entering the PCT national phase before the Eurasian Patent Office. The term for entry of the national phase before the Eurasian Patent Office is the same as for Rospatent. Eurasian patent provides protection in 8 states: Azerbaijan Republic, Republic of Armenia, Republic of Belarus, Republic of Kazakhstan, Kyrgyz Republic, Republic of Tajikistan, Turkmenistan and Russia. In case of the Eurasian regional phase you can file only a patent application for an invention.
What is the deadline for national phase entry in Russia?
Unlike the 30-months deadline for national phase entry in most countries the deadline for national phase entry in Russia is 31 months from the priority date. The term for entering the regional phase before the Eurasian Patent Office is also 31 months.

If the international application contains a priority claim, the priority date is a filing date of the application whose priority is claimed. If the international application contains more than one priority claims, the priority date is a filing date of the earliest application whose priority is claimed. If the international application does not contain a priority claim, the priority date is a filing date of the international application.

Rospatent do not issue any reminder to applicants that the time limit for entering the national phase is about to expire or has just expired. It is therefore the applicant's responsibility to monitor the applicable time limits in order for the application not to lose its effect before Rospatent.

The national phase in Russia can start before the expiration of 31 months. For that the applicant should file an express request to Rospatent to start the processing and the examination of the international application earlier.

In any case the 31 months period is non-extendable. And if the required act for entering into Russian national phase has not been performed before expiration of the applicable time limit, the international application may no longer be converted into a national application in Russia and the procedure comes to an end in respect to Rospatent. Therefore it is recommended that applicants initiate the process of entering into Russian national phase about two months before 31-months deadline in order to ensure timely preparing required documents and national phase entry.
What if I missed the deadline?
For applicants who has exceeded the time limit for entering the national phase or who failed to perform the acts for entering within the applicable 31 months time limit, Rospatent, as well as the Eurasian Patent Organization (EAPO), provides for the possibility to reinstate the rights of the applicant with respect to an international application.

Where, before Rospatent, the applicant has missed a 31-months time limit, such time limit may be reinstated by Rospatent upon request by the applicant and subject to payment of the reinstatement fee. He must at the same time perform all acts required for entry into the national phase. The application may be reinstated if Rospatent finds that the failure to meet that time limit occurred despite taking of appropriate action under the circumstances of said failure. A request for reinstatement must be presented within 12 months from expiration of the time limit and is subject to the payment of a fee. Reinstatement fee is 5000 RUB or approximately 75 USD.

In case of the Eurasian regional phase the reestablishment of rights may be requested where the applicant lost his rights because he was unable to observe a 31-month time limit before the EAPO. The EAPO reinstates the rights if it finds that any delay in meeting that time limit was unintentional. A request for reestablishment must be filed in writing within two months from the removal of the cause of non-compliance with the time limit but not later than one year from the expiration of the time limit which has not been observed. Within the said time limits, the omitted act must be completed, the fee for reestablishment of rights must be paid and the request must state the grounds on which it is based and must set out the facts on which it relies.

If a 31-months time limit is exceeded because of the delayed arrival of a document or letter, it is generally excused if it was caused by a delay in the mail or by an interruption of the mail service, provided that sufficient evidence is provided.
What is the amount of official fees to be paid? How can I pay the official fees?
The official fees for a national phase application in Russia are as follows.

The official fee for filing of application is 3300 RUB or approximately 50 USD. It is the basic fee, which includes examination of up to 10 claims. Each claim in excess of 10 requires additional payment of 700 RUB or approximately 12 USD.

The official fee for substantive examination is 4700 RUB or approximately 72 USD. It is a basic fee, which includes examination of one independent claim. Each of the following independent claims requires additional payment of 2800 RUB or about 43 USD, and 5400 RUB or about 83 USD, when the amount of independent claims exceeds 5. The examination fee shall be reduced by 30% for electronic filing and additionally by 10% where the international search report has been established by any of the other International Searching Authorities.

The total official grant fee is 4500 RUB or approximately 70 USD.

During examination Rospatent might issue one or more Office Actions rejecting one of the claims in the application, and then addition of new claim(s) may be needed. The fee for each new independent claim after the start of substantive examination is 4700 RUB or approximately 72 USD. As a comparison, the fee for each new claim before the start of substantive examination is 700 RUB or approximately 12 USD. Therefore, when necessary, it is less expensive to make amendments to claims before the start of substantive examination.

Overall, the fees required to pay when entering the national phase in Russia are modest. For example, if an applicant filed a total of 10 claims, including one independent claim, applicant would be required to pay approximately 125 USD in total.

The payment of fees must be provided in Russian rubles (RUB). All payments must indicate the application number (national, if already known; international, if the national application number is not yet known), the name of the applicant and the category of fee being paid. Foreign applicants can pay official fees via local patent attorney registered to practice before Rospatent.


Can I submit my patent application online?
Rospatent provides an electronic service ("e-filing system") for online filing of applications for inventions and utility models, including those applications that are filed within the frame of PCT national phase. In accordance with the Russian legislation, applications of foreign applicants may be submitted by Russian patent attorneys (users of e-filing system) on behalf of the applicant. The detailed description of the e-filing system is presented at the Rospatent website but only in Russian language:

http://new.fips.ru/podacha-zayavki/

The Eurasian patent application that is filed as a regional phase application under PCT procedure also can be submitted electronically via electronic filing system («EAPO-online») by Eurasian patent attorneys (users of e-filing system) on behalf of the applicant. The detailed description of «EAPO-online» is presented at website of EAPO but only in Russian language: http://portal.eapo.org/olf/

The legal status of patent application filed in electronic form is equal to the patent application filed on paper. Payment of additional fees for electronic submission is not required.
Do I need a local patent attorney?
Foreign applicants must use a patent attorney registered with Rospatent to handle the filing of a patent application. The filing of a Power of Attorney form executed by the applicant is not required. But when needed it may be requested by Rospatent. The list of registered Russian patent attorneys may be obtained at the Rospatent website:

https://rupto.ru/ru/patent-attorneys

With regard to the Eurasian regional phase application, applicants having their residence outside the territory of the States that signed the Eurasian Patent Convention (EAPC) must appoint patent agents registered to practice before the Eurasian Patent Office. The filing of a Power of Attorney form executed by the applicant is required. The list of registered Eurasian patent attorneys may be obtained at website of EAPO:

http://www.eapo.org/en/attorneys.php
Can I file it in English language?
The international patent application may be filed with Rospatent in English language except for a request for entry into the national phase which has to be filed in Russian (or a translation of the PCT request in Russian needs to be provided). Nevertheless, a Russian translation of an international patent application must be provided not later than three months from the date of issuing of a corresponding Office Action of Formal examination by Rospatent. Payment of additional fees for later filing in such case is not required.

If submission of a Russian translation is delayed by any reason, the term for the filing can be extended based on the applicant's request. Extension is possible for up to 10 months. For each month of extension an official fee should be paid:

  • in the amount of 800 RUB or approximately 14 USD for each month up to 6 months;
  • in the amount of 1100 RUB or approximately 17 USD for each month from 7 up to 10 months.
Eurasian application can be filed in English language with further submission of translation into Russian.
What are the translation requirements?
A translation of the international application into Russian language must be provided. Translation accuracy is an important issue for patent applications filed by foreign applicants in Russia, helping to avoid issuing a Formal Examination Request from Rospatent and therefore accelerating the prosecution.

Translation shall not change the subject matter of the claimed invention. To be more definite, it shall not contain additional materials that are important for patentability of the invention, but were absent in the originally filed application.

The required content of the translation: description, claims, any text matter in the drawings, abstract. A Russian translation of the application materials can be filed together with the request for entry or within 3 months after issuing of a corresponding notification (said term can be extended up to 10 months).

Terminology and notifications shall be consistent throughout all the application materials

Filing claims should not comprise a multiple-dependent claim forming the basis for a further multiple-dependent claim. If claims violate this requirement, there are several ways how to correct it. One option is to split multiple dependent claims into separate single dependent claims covering reasonable numbers of embodiments. Please note, however, that the official fee in the amount of 700 RUB or approximately 12 USD should be paid for each added claim. The other option is just to delete multiple dependency and/or to limit number of multiple dependent claims by reasonable quantity.

Russian examiners are famous for drawing the applicant´s attention to translation errors. In any case, errors in the Russian translation of the international application can be corrected with reference to the text of the international application as filed.
What is the examination procedure at Russian Patent Office?
There is a two-step examination procedure for patent applications: a formal examination procedure followed by a substantive examination procedure.

If Rospatent finds during the Formal Examination that the application documents are complete and comply with the established requirements, it will publish the patent application 18 months after the starting national phase of the PCT application in Russia.

To start a substantive examination of the application, the corresponding request shall be submitted by the applicant or by a third party, upon which the Patent Office will examine the patentability of the claims. There is no special form for the request. Examination must be requested within three years from the international filing date. The time limit may be extended for not more than two months on filing a request prior to the expiration of three years from the international filing date. The request for examination is only effective if a fee for requesting examination has been paid.

If the applicant fails to request substantive examination within said terms, the application will be deemed to be withdrawn. But please be aware that the expired time limit for the request for examination may be reinstated within 12 months on payment of the reinstatement fee accompanied by a statement containing a valid excuse for failure to submit on time.

During the examination applicant can amend the application documents unless the essence of the invention is changed. Additional materials are deemed to change the essence of an invention if they comprise features that may affect patentability of the claims but had not been disclosed in the priority documents.

For a utility model patent application, there is also a two-step examination procedure as for an invention except that the applicant is not required to make a request for starting an examination after passing a formal examination. For this reason, the examination of a utility model application cannot be deferred.

Please be aware that before publication of the application for an invention but not later than the date of the decision to issue the patent, a patent application for an invention can be transformed into a utility model application. In the same way, until the date of the decision to issue a utility model patent, the utility model application can be transformed into a patent application for an invention.
What are the main steps of patenting process in Russia?
There are three main steps of patenting process in Russia. The first step is the filing procedure. Foreign applicants must use a patent attorney registered with Rospatent to handle the filing of a patent application. The request for entry into the national phase in Russia shall be filed in Russian language. A Russian translation of the application materials can be filed together with the request for entry or 3 months after issuing of a corresponding notification by Rospatent (said term can be extended up to 10 months).

The second step is the examination procedure. There is a two-step examination procedure for invention patent applications in Russia: formal and substantive. The formal examination starts immediately upon filing if the filing fee has been paid. After passing the formal examination procedure that lasts about 2-4 months the applicant is required to make a request for substantive examination within three years from the international filing date, upon which Rospatent will examine the patentability of the claimed invention. For utility model patent applications substantive examination will start automatically after passing the formal examination.

To be patentable, the claimed subject matter of an invention or utility model patent application must be novel over the prior art. A document is considered novelty destroying if it discloses all features of the claimed invention or the entirety of the significant features of the utility model. The prior art includes any information known to the public in the world before the priority date ("absolute novelty").

To be patentable, the claimed invention must also contain an "inventive step" over the prior art. Regarding invention patent applications, inventive step means that for an average specialist in the corresponding field of technology the invention does not obviously ensue from the prior art. Utility model patent applications do not have to fulfil the patentability requirement "inventive step".

Inventions and utility models have to fulfil also an additional patentability requirement called "industrial applicability". An invention and utility model are deemed industrially applicable if it can be used in industry, agriculture, public health and other branches of economy or in the social life.

Finally, the third step is the granting procedure. If no ground for rejection can be found during examination that lasts about one year, Rospatent issues a patent certificate.
When will I get my patent?
A patent for an invention is granted if the claimed invention (or group of inventions) satisfies the patentability requirement of worldwide novelty, inventive step and industrial applicability.

A patent for a utility model is granted if the claimed utility model satisfies the patentability requirement of worldwide novelty and industrial applicability.

After receiving a decision to grant the applicant shall pay the grant fee within four months from the decision date. Where the applicant fails to pay the fee within that time limit, he can make this payment, together with a 50% surcharge for late payment, within six months from the date of expiration of the above-mentioned time limit.

Typically, the patent for an invention is issued in 1-1,5 years after the starting national phase given that the request for substantive examination was filed at the time of entering. If during examination Office Actions are issued several times or a request for substantive examination is filed closer to corresponding deadline the above mentioned time span may be two or more years.
Do I need to pay maintenance fees annually?
After a patent has been granted, annual fees become due every year on the anniversary of the international filing date. Payment can still be made, upon payment of a 50% surcharge for late payment, within six months from the date of expiration of the prescribed time limit.
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