Eurasian Industrial Design
The Eurasian System of Legal Protection of Industrial Designs established on the basis of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention came into force as of June 1, 2021.
There are currently 7 states being parties to the Protocol:
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Azerbaijan,
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Armenia,
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Belarus,
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Kazakhstan,
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Kyrgyzstan,
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Russia,
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Tajikistan.
A single Eurasian patent for an industrial design is valid simultaneously in all the above Contracting States and certifies the authorship, priority and exclusive right to an industrial design.
Advantages
The advantages of the Eurasian system for patenting industrial designs in comparison with national procedures are:
- validity of a single Eurasian patent for an industrial design in the territory of 7 states at once, most of which are also member states of the Eurasian Economic Union;
- filing a single Eurasian patent application for an industrial design;
- electronic form of filing and proceedings;
- conducting proceedings in one language;
- efficiency – a Eurasian patent for an industrial design can be issued within 4 months from the application filing date;
- patenting within one application up to 100 designs referring to one ICID class;
- financial benefit – the fee for each subsequent industrial design is several times smaller;
- the ability to display an artistic solution protected by a Eurasian patent for an industrial design in different ways;
- the maximum duration of a Eurasian patent for an industrial design is 25 years;
- paying a fee for maintaining a Eurasian patent for an industrial design in force to one organization (EAPO) only once every five years.
These advantages make a Eurasian patent a strong (and even superior by some criteria) alternative not only to a national, but also to an international patent in the respective territory.
Regulatory documents
The documents regulating general issues of legal protection of Eurasian industrial designs are:
- Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention,
- Patent Regulations under the Eurasian Patent Convention (Part II. Industrial Designs) (hereinafter referred to as the Eurasian Patent Regulations).
A complete list of regulatory documents related to Eurasian industrial designs can be found on the website of the Eurasian Patent Organization (EAPO) – https://www.eapo.org/en/?documents=designs
What can be patented as a Eurasian industrial design?
An industrial design patent protects the appearance solution of a product* of an industrial or handicraft manufacture. Legal protection is granted to those designs that, by their essential features**, are novel and original.
* A product means, in particular,
a package,
a label,
a composite product,
a collection (set) of products,
a font, and
an independent part of the product.
** Essential features include those that determine the aesthetic peculiarities of the product appearance, in particular
a form,
a configuration,
an ornament,
a combination of colors, lines,
product contours,
texture or surface of the product material.
A solution of the product appearance is recognized as NOVEL if the combination of its essential features is not known from the information that became publicly available worldwide before the application filing date or before the industrial design priority date (if the same is claimed).
Important! For the novelty of an industrial design, there is a grace period of 12 months. This means that if data about an industrial design has become publicly available, i.e. information about it has been publicly disclosed, but no more than 12 months have passed since its disclosure before the filing date of the Eurasian application, then the industrial design is also recognized as novel.
The solution of the product appearance is recognized as ORIGINAL, if its essential features are conditioned by the creative nature of the aesthetic peculiarities of the product.
A complete list of requirements for Eurasian industrial designs is given below - see "Requirements for Patentable Solutions".
How to obtain a Eurasian patent for an industrial design?
A single Eurasian patent for an industrial design, which will be valid in 7 Contracting States, can be obtained by filing one application with the Eurasian Patent Office.
The stages of consideration of an application for a Eurasian patent for an industrial design are determined by the procedure for examination of an application and conducting a formal examination and substantive examination thereon.
Stage 1. Application filing
A Eurasian patent application may be filed:
- either directly with the Eurasian Patent Office,
- or through a national patent office of a Contracting State, if this is provided for by the legislation of that state.
The language of the materials of a Eurasian patent application for an industrial design and the conduct of proceedings thereon is Russian. Translation of application materials drawn up in another language may be provided to the Eurasian Patent Office within 2 months from the date of the application filing.
Proceedings in the Eurasian Patent Office on Eurasian applications and Eurasian patents are conducted in electronic form or in writing on paper, or in another form provided by the Eurasian Office.
In one patent application for an industrial design in the Eurasian Patent Office, up to 100 (one hundred) industrial designs may be indicated, provided that they belong to the same class of the International Classification of Industrial Designs (ICID). At the same time, the structure of the ICID is such that each class includes quite a variety of products.
The amount of the single procedural fee is:
- for each subsequent industrial design, from the second to the tenth – two times smaller than for the first industrial design, and
- for each subsequent industrial design over ten – four times smaller than for the first one.
Composition of an application for a Eurasian patent for an industrial design.
A Eurasian industrial design patent application should contain:
- a request on a blank form approved by the Eurasian Patent Office;
- a set of images that meets the requirements of the Eurasian Patent Regulations with respect to industrial designs;
- a drawing of a general view of the product, a team chart (if they are necessary to disclose the essence of the industrial design);
- a document confirming the payment of a single procedural fee in the prescribed amount;
- a power of attorney (if the Eurasian application is submitted by the applicant’s representative) drawn up in a simple written form.
A Eurasian application for an industrial design may also include:
- a description and (or)
- a digital 3D model*
to clarify the industrial design (but not to determine the scope of its legal protection).
* An electronic file created using specialized software for mathematical representation in three dimensions of the surface of a product and used to visualize the appearance of such a product. Requirements for a digital three-dimensional model are established by the Eurasian Office.
The scope of legal protection provided by a Eurasian patent for an industrial design is determined by the combination of the essential features of the industrial design presented on its images.
Stage 2. Preliminary examination
Preliminary examination begins after payment of a single procedural fee and upon provision of a translation of application materials into Russian.
The following is checked:
- correctness of drafting of all application materials, as well as
- the fact that the claimed industrial design does not refer to solutions that contradict social conventions, interests, principles of humanity and morality in at least one of the Contracting States.
If the result of the preliminary examination is positive, a corresponding notification is sent to the Applicant.
Within 1 month from the date of sending a notification of a positive result of the preliminary examination, the application is published in electronic form.
Within 2 months from the date of publication of the application, any person who believes that
- the published solution does not meet the criteria for novelty and/or originality, or
- refers to solutions and (or) objects that cannot be protected as industrial designs,
may file with the Eurasian Patent Office an objection against granting a Eurasian patent.
The Applicant has the right, within 1 month from the date of sending the notification of the objection received, to send a response thereto.
Temporary legal protection
Starting from the application publication date in the Official Bulletin of the Eurasian Patent Office and until the date of publication of the Eurasian patent, an industrial design shall be granted temporary legal protection in the territory of all Contracting States.
The scope of temporary legal protection is determined by the combination of the essential features of the industrial design presented on the published images of the product.
From the date of publication of the Eurasian patent, the patent holder has the right to demand commensurate compensation from persons who used the claimed industrial design during the period of temporary legal protection. These demands are made in accordance with the national legislation of the Contracting State in the territory of which the industrial design was used.
Stage 3. Substantive examination
In respect of the Eurasian application for which the preliminary examination has been completed with a positive result, the Eurasian Office conducts a substantive examination.
During the substantive examination, the following is checked:
- the possibility of referring each solution of the appearance of a product claimed in the Eurasian application to industrial designs;
- legitimacy of claiming priority;
- the conditions of whether the claimed industrial design belongs to those solutions for which legal protection is not granted.
Based on the results of the substantive examination, the Eurasian Patent Office makes a decision either on grant of a Eurasian patent or on refusal to grant a Eurasian patent, of which the applicant is notified.
Within the substantive examination, the objection is also considered. A separate decision thereon is not made – the result is a decision on grant or refusal to grant a patent.
In the event of a decision on refusal to grant a patent, the Eurasian Patent Regulations provide for the transformation of a single Eurasian application into national applications in the Contracting States. For such transformation, 6 months are provided from the date of the decision on refusal to grant a patent.
Requirements for patentable solutions
For a product appearance solution to be considered patentable, it should satisfy a number of requirements. All requirements can be divided into 3 groups, depending on the stage at which their compliance is checked:
- at the stage of preliminary examination of the application,
- at the substantive examination stage,
- if an objection has been filed against the grant of a patent.
1. Requirements, compliance with which is checked at the preliminary examination stage
The EAPO preliminary examination has the right to reject solutions of the product appearance that:
- contradict public interests, principles of humanity and morality in at least one of the Contracting States.
2. Requirements, compliance with which is checked at the substantive examination stage
Industrial designs that can NOT be granted legal protection include solutions of the product appearance:
1) all features of which are conditioned solely by their technical function;
2) in relation to which it is obvious that their essential features are not conditioned by the creative nature of the product peculiarities;
3) which include, reproduce or imitate:
- official symbols, including state symbols and signs (flags, coats of arms, orders, banknotes, etc.), as well as their recognizable parts;
- abbreviated or full names of international and intergovernmental organizations, their flags, emblems, other symbols and signs, as well as their recognizable parts;
- official marks of assay, seals of guarantee or hallmarks, seals, awards and other honorary distinctions, as well as their recognizable parts.
The above elements may be included into an industrial design as unprotected ones if there is a consent of the relevant competent authority of the state or the authority of an international (intergovernmental) organization.
4) which include, reproduce or imitate official names or images of objects of cultural (including ethnic and religious) heritage or their recognizable parts.
The above elements may be included into an industrial design as unprotected ones if there is a consent of the relevant competent authority of the Contracting State or the consent of the owner of the relevant object of cultural heritage.
3. Requirements, compliance with which is checked if an objection is filed against granting a Eurasian patent
The check of non-compliance of industrial designs with the criteria listed below is carried out only if an objection is filed and only to the extent of the information specified therein.
1) Novelty and/or originality.
At the same time, if an objection is filed in respect of non-compliance of the industrial design with the criterion of novelty, and information about the industrial design was disclosed within a 12-month grace period, then the obligation to prove the circumstances of the disclosure of information falls on the applicant (Rule 78.5 of the Eurasian Patent Regulations).
2) The solution of the product appearance claimed as an industrial design may be recognized as unregistrable if:
a) It is capable of misleading the consumer of the product, including in relation to the manufacturer of the product, or the place of production of the product, or the goods in respect of which the product serves as a container, packaging, label.
b) It is identical or confusingly similar to trademarks of other persons, protected or applied for registration and published in the territory of at least one of the Contracting States, having an earlier priority, or includes such trademarks.
c) It is identical or confusingly similar to the titles of works of science, literature or art, to characters or quotations from such works, to works of art or their fragments known in the territory of at least one of the Contracting States.
However, the provision of legal protection for such solutions as industrial designs is allowed with the consent of the holders of the rights to these objects.
Duration of legal protection
A Eurasian patent for an industrial design is valid for 5 years from the date of filing an application with the Eurasian Patent Office and can be extended for the next 5 years. The maximum term of a patent can be 25 years.
The minimum period for which a Eurasian patent for an industrial design may be extended is 5 years. There are 4 such periods in total. At the same time, it is stipulated that the fee for extending the term of a Eurasian patent is paid for each industrial design protected by a patent.
Disposal of the right to a Eurasian industrial design
The Eurasian Patent Regulations provide for the following cases of disposal of the right to obtain a Eurasian patent (i.e. the right to apply) or the exclusive right to an industrial design certified by a Eurasian patent: transfer of rights, pledge and license. In this case, a pledge and a license can be applied only in relation to an exclusive right.
1) Transfer (or alienation) of the right to obtain a Eurasian patent or an exclusive right to an industrial design to another person either under an agreement, or by way of inheritance, or by way of other legal succession.
In this case:
- the right to obtain a Eurasian patent may be transferred only in respect of all Contracting States,
- the exclusive right to an industrial design may be transferred only in respect of all the Contracting States in the territory of which it is valid.
Unacceptable is such a transfer of the exclusive right to an industrial design which may cause confusion to the consumer about the manufacturer of the product and/or its place of origin.
Transfer of right to a group of industrial designs
If the right to obtain a Eurasian patent / exclusive right to a group of industrial designs is transferred under an agreement, then it can be transferred both in relation to the entire group of industrial designs and in relation to individual ones.
But the transfer of rights by way of succession is carried out only in relation to all claimed or protected industrial designs.
The transfer of the right to obtain a Eurasian patent or an exclusive right to an industrial design under an agreement is considered to have entered into force with respect to third parties only from the moment of its registration with the Eurasian Patent Office.
2) A pledge of the exclusive right to an industrial design is also subject to mandatory registration with the Eurasian Office and arises from the date of conclusion of the agreement or from another date specified in the pledge agreement.
The exclusive right to a Eurasian industrial design may be the subject of a pledge only in respect of all Contracting States in the territory of which the Eurasian industrial design is in force.
The agreement of pledge of the exclusive right to a Eurasian industrial design should contain the following provisions:
- subject matter of the agreement,
- results of the assessment of the exclusive right to the pledged industrial design,
- the nature of the obligation secured by the pledge,
- the amount of the obligation secured by the pledge, and
- the term for the fulfillment of the obligation secured by the pledge.
3) Licensing agreements and/or, for example, complex business license agreements concluded in accordance with the laws of the Contracting States are registered by the national office of the Contracting State in respect of the territory of which the relevant agreement is concluded.
Information on the registration of the transfer of the right to obtain a Eurasian patent for an industrial design or an exclusive right to an industrial design, on the registration of a pledge, as well as on the registration of a license agreement in one of the Contracting States, is published in the Official Bulletin of the Eurasian Office.
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