REGULATORY ACTIVITIES

The EAPO Administrative Council approved a total of 3 new EAPO regulatory legal acts and 7 amendments and addenda to existing EAPO regulatory legal acts in 2022.

To support the Eurasian Patent Office’s operation as an International Searching Authority and International Preliminary Examining Authority, the EAPO Administrative Council approved the following amendments at its fortieth (twelfth extraordinary) meeting on April 11–12, 2022:

to rule 69 of the Patent Regulations under the Eurasian Patent Convention (EAPC);

to paragraph 3 of the Statute on Fees of the Eurasian Patent Organization for legally significant and other actions performed in relation to Eurasian patent applications and Eurasian patents.

The amendments prepared were aimed at clarifying the grounds upon which the Eurasian Patent Office will act as an International Searching Authority and an International Preliminary Examining Authority, at determining the legally significant actions for which corresponding fees shall be paid, and at determining the amounts of these fees.

To ensure the financial stability of the Eurasian patent system, the above-mentioned EAPO Administrative Council decision introduced other amendments to the Statute on Fees of the Eurasian Patent Organization for legally significant and other actions performed in relation to Eurasian patent applications and Eurasian patents. The purpose of the amendments was to increase the amounts of the fees charged by the EAPO in the workflow with Eurasian applications and patents.

Subsequently, the amounts of the fees charged by the EAPO in the workflow with Eurasian industrial design applications and patents were also raised by a decision of the EAPO Administrative Council. The EAPO Administrative Council approved the corresponding amendments to the Statute on Fees of the Eurasian Patent Organization for legally significant and other actions performed in relation to Eurasian industrial design applications and patents on September 20–21, 2022 at its forty-first (twenty-ninth ordinary) meeting.

On September 20–21, 2022, the EAPO Administrative Council approved a significant series of amendments to the Patent Regulations under the EAPC at its forty-first (twenty-ninth ordinary) meeting. These amendments affected both Part I “Invention” of the Patent Regulations under the EAPC, and Part II “Industrial Designs” of the Patent Regulations under the EAPC.

It should be noted that the amendments and addenda to the Patent Regulations under the EAPC, namely, to rules 2, 21,¹ 26, 45, 50, 59, 77, 93, 110, and 122, set forth a legal framework for the introduction of digital three-dimensional models to the workflow with Eurasian applications and patents. The amendments and addenda to rules 37, 41, 42, 49, 96, 104, and 111 of the Patent Regulations under the EAPC were focused on the improvement and optimization of the Eurasian patenting procedure for inventions and industrial designs. The amendments made to rules 53 and 116 of the Patent Regulations under the EAPC extended the term for the administrative revocation of Eurasian invention and industrial design patents, granting those interested in filing relevant oppositions an additional 3 months to address the Eurasian Patent Office.

To expand the electronic workflow between the Eurasian Patent Office and the national patent offices of the States party to the Protocol, the EAPO Administrative Council approved the Procedure for Electronic Exchange of Documents on Eurasian Applications and Patents at its forty-first (twenty-ninth regular) meeting held on September 20–21, 2022.

It is important to note that, in 2022, the EAPO Administrative Council finally adopted a new revision of the Financial Regulations under the EAPC, specifying the basis for the financial support of the EAPO, its budgetary planning, and the accounting and financial statements of the EAPO.

An EAPO Administrative Council decision taken on April 11–12, 2022 at the fortieth (twelfth extraordinary) meeting finalized long-term work on the above-mentioned EAPO regulatory legal act, which began in 2018. At that time, at the thirty-fourth (twenty-fifth ordinary) meeting held on October 22–23, 2018, the EAPO Administrative Council advised the Eurasian Patent Office to update the Financial Regulations under the EAPC based on a recommendation formulated by the Budget Working Group of the EAPO Administrative Council at the twenty-third meeting, held on September 17–18, 2018.

In view of the multi-faceted nature of the legal regulation of the relationships associated with the functioning of the Eurasian system for the legal protection of industrial designs and the consequent need to prepare and adopt a set of EAPO regulatory legal acts concerning those relationships, the Eurasian Patent Office continued its regulatory activities in this area in 2022. Taking into account the provisions of Article 18(3) of the Protocol on the Protection of Industrial Designs to the EAPC (Protocol), the EAPO Administrative Council made a decision at its fortieth (twelfth extraordinary) meeting, held on April 11–12, 2022, to approve the Procedure for transfer by the Eurasian Patent Office of the shares of the fees paid in accordance with Articles 8(2) and 15(5) of the Protocol which belong to the States party to the Protocol.

It is also worth noting the addenda introduced by the EAPO Administrative Council to rule 9 of the Administrative Instructions under the EAPC and to paragraph 6 of the Eurasian Patent Office Staff Employment Regulations at the forty-first (twenty-ninth ordinary) meeting held on September 20–21, 2022. 

These addenda, though minor in terms of their scope, are significant steps in the improvement of the Eurasian Patent Office’s HR Policy, as they are aimed at retaining the experienced and highly qualified examiner staff of the Eurasian Patent Office, who ensure effectiveness of the Eurasian patent procedure.

The Eurasian Patent Office adopted 9 new regulatory legal acts and issued 15 orders on amendments and addenda to existing Eurasian Patent Office regulatory legal acts in 2022.

Taking into account the structure of Eurasian patent law, the majority of the acts of the Eurasian Patent Office were developed to implement the above-mentioned EAPO Administrative Council decisions on amendments and addenda to the Patent Regulations under the EAPC. In particular, relevant amendments and addenda were introduced to the following Eurasian Patent Office regulatory legal acts: list of services rendered by the Eurasian Patent Office, approved by Eurasian Patent Office Order No. 4, dated January 27, 2012, and Eurasian Patent Office Orders No. 23, dated April 25, 2022, and No. 37, dated July 27, 2022;

Rules and Requirements Related to the Application for the Grant of a Eurasian Industrial Design Patent, approved by Eurasian Patent Office Order No. 24, dated May 27, 2021, and Eurasian Patent Office Order No. 58, dated October 26, 2022;

Procedure for Completing Web Forms for Filing Eurasian Industrial Design Applications, approved by Eurasian Patent Office Order No. 26, dated May 28, 2021, and Eurasian Patent Office Order No. 59, dated October 26, 2022;

Rules Related to Applications for the Grant of Eurasian Patents for Inventions, approved by Eurasian Patent Office Order No. 4, dated February 15, 2008, and Eurasian Patent Office Order No. 60, dated October 26, 2022;

Procedure for the Preparation and Issuance of Official Publications of the Eurasian Patent Office, approved by Eurasian Patent Office Order No. 36, dated July 28, 2021, and Eurasian Patent Office Order No. 65, dated November 18, 2022.

Particular attention should be paid to the EAPO normative legal acts adopted in order to further establish the Eurasian system of legal protection of industrial designs and detailing the provisions of the Protocol and Part II "Industrial Designs" of the Patent Regulations under the EAPC.

Such acts include:

Procedure for filing and considering an opposition to invalidation of a Eurasian design patent by administrative revocation procedure, prepared pursuant to Rule 116 of the Patent Instructions under the EAPC and approved by Eurasian Patent Office Order No. 76, dated December 22, 2022;

Mediation Procedure, prepared pursuant to Rules 111(3) and 116(6) of the Patent Instructions and approved by Eurasian Patent Office Order No. 79 dated December 29, 2022.

A significant portion of the amendments and addenda to the current Eurasian Patent Office regulatory legal acts were developed to enhance the electronic exchange of documents on Eurasian applications and patents with applicants, patent owners, other stakeholders, and their representatives. In particular, relevant amendments and addenda were introduced to the following Eurasian Patent Office regulatory legal acts:

Procedure for Granting Eurasian Industrial Design Patents, approved by Eurasian Patent Office Order No. 41, dated October 18, 2021, and Eurasian Patent Office Orders No. 24, dated April 29, 2022, and No. 56, dated October 17, 2022;

Procedure for Maintenance of the Register of Eurasian Patents for Industrial Designs, approved by Eurasian Patent Office Order No. 40, dated September 28, 2021, and Eurasian Patent Office Order No. 26, dated April 29, 2022;

Procedure for Extension of the Validity of Eurasian Patents for Inventions, approved by Eurasian Patent Office Order No. 8, dated March 5, 2009, and Eurasian Patent Office Orders No. 28, dated April 29, 2022, and No. 55, dated October 17, 2022;

Procedure for Filing and Examination of Third-Party Observations Concerning Patentability of Inventions, approved by Eurasian Patent Office Order No. 1, dated January 27, 2021, and Eurasian Patent Office Order No. 67, dated December 9, 2022;

Procedure for Eurasian Application or Patent Assignment and Changing the Applicant’s or Patent Owner’s Name or Denomination, approved by Eurasian Patent Office Order No. 59, dated December 27, 2013, and Eurasian Patent Office Order No. 72, dated December 20, 2022;

Procedure for Filing and Examination of Oppositions to Granted Eurasian Patents filed under the Administrative Revocation Procedure, approved by Eurasian Patent Office Order No. 63 dated December 22, 2015, Eurasian Patent Office Order No. 75 dated December 22, 2022;

Procedure for the Filing and Examination of Appeals against the Extension of the Validity of Eurasian Patents for Inventions, approved by Eurasian Patent Office  Order No. 34 dated July 27, 2021, Eurasian Patent Office Order No. 80 dated December 30, 2022.

In addition, the following Eurasian Patent Office regulatory legal acts were adopted to replace former Eurasian Patent Office regulatory legal acts:

Procedure for Electronic Exchange of Documents under Eurasian Patent Procedure, approved by Eurasian Patent Office Order No. 77 dated December 27, 2022;

Procedure for Granting Eurasian Patents, approved by Eurasian Patent Office Order No. 25, dated April 29, 2022, and subsequently amended by Eurasian Patent Office Order No. 57, dated October 17, 2022;

Procedure for Maintenance of the Register of Eurasian Patents, approved by Eurasian Patent Office Order No. 27, dated April 29, 2022.

To improve the legal regulation of other aspects of the Eurasian Patent Office’s activities, the following Eurasian Patent Office regulatory legal acts were adopted to replace former regulatory legal acts:

Procedure for Maintaining the Eurasian Patent Office Pharmaceutical Register, approved by Eurasian Patent Office Order No. 37, dated July 27, 2022 and Procedure for presentation of files for grant of Eurasian patents containing sequences of nucleotides and (or) amino acids, approved by Eurasian Patent Office Order No. 39, dated July 29, 2022.