Tag:  “Russia”  | (7) posts

Russian documents unveiled

Russian is the 22nd available language in Patent Translate, a machine translation tool specially tuned – by Google and the EPO – to patent documents and patent lingo. In the particular case of Russian, I expect Patent Translate will be saying “claims” rather than “invention’s formula” and similar nonsense. The public can use Patent Translate to translate any patent document on Espacenet.

In a recent press release, the EPO says the new technology will have an impact also on the searches its examiners perform. Certainly, all important patent literature in Russian (1.5 million documents) was already searchable and indexed, often with English abstracts too, but the Office believes that access to full-text translations will increase the chances that relevant prior art is discovered and considered during examination. On top of this, the Russian Patent Office will be adopting the CPC classification system shortly (commented here).

At least in theory, patentees should feel less worried about Russian “submarines” that their competitors might fish up after grant.

What technical fields will benefit the most? As a first guess, I’ve compared the top ten IPC classes in the 5,000 most recent EP, RU and Soviet publications.

  European Patent Office (EP) Russian Federation (RU) Soviet Union (SU)
1 A61 Medical devices; hygiene A61 Medical devices; hygiene C07 Organic chemistry
2 H04 Electric communication C07 Organic chemistry A61 Medical devices; hygiene
3 G06 Computing G01 Measuring; testing B01 Phys./chem. apparatus
4 G01 Measuring; testing H04 Electric communication H01 Basic electric elements
5 C07 Organic chemistry G06 Computing A01 Agriculture; forestry
6 H01 Basic electric elements C12 Biochemistry; beer; wine G01 Measuring; testing
7 C12 Biochemistry; beer; wine A01 Agriculture; forestry C08 Polymers
8 B01 Phys./chem. apparatus B01 Phys./chem. apparatus B29 Working of plastics
9 C08 Polymers H01 Basic electric elements F16 Engineering elements
10 A01 Agriculture; forestry C08 Polymers C12 Biochemistry; beer; wine

Based on this rather unsophisticated analysis, there are just moderate differences between SU and EP patenting. Contemporary EP and RU documents are distributed in a very similar way in terms of IPC classes, meaning that the Russian material is likely to be relevant for a large percentage of the European patent applications. I’m curious to see if the EPO examiners will actually cite more Russian language documents in the next years.

Anders Hansson, European Patent Attorney

New Patent Prosecution Highway Agreement between the DKPTO and Russias ROSPATENT enters into force

As mentioned in my previous blog entry dated 23 January 2012, the DKPTO announced that due to user demand efforts to establish a PPH-agreement with the Russian Patent Office had been initiated.

Now, the efforts have matured into a PPH-agreement between DKPTO and ROSPATENT, which entered into force on 1 February 2012. Prosecution via the PPH agreement may not only be requested at both offices based on national work products, but also at the DKPTO, based on work products from ROSPATENT acting as an international searching or preliminary examination authority under the PCT.

I can also add that another PPH agreement entered into force on 23 January 2012, namely between China’s SIPO and Germany’s DPMA.

Link to the DKPTO-ROSPATENT PPH-agreement

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

New PPH-agreement between Denmark and Israel

The year of 2012 has arrived with new possibilities for Danish patent applicants who wish to obtain a patent abroad in a faster and more cost efficient way:

A PPH-agreement, on a pilot project basis, between The Danish Patent and Trademark Office (DKPTO) and the Israeli Patent Office has taken effect from 5 January 2012, thus enabling patent applicants to request accelerated proceedings at the ILPO once they have obtained a decision to grant from the DKPTO.

Also, the DKPTO has announced that due to user demand efforts to establish a PPH-agreement with the Russian Patent Office have been initiated. It is expected that a PPH-agreement between DKPTO and ROSPATENT will enter into force on 1 February 2012.

Read more about the DKPTO-ILPO PPH-agreement.

As always, we shall endeavour to keep our readers updated on further developments.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Patent Prosecution Highway – MOTTAINAI: Ease of requirements

During the summer of 2011 the first steps in the process of simplifying requesting accelerated prosecution of patent applications using the Patent Prosecution Highway (PPH) have been taken. Likewise, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution, some of which are particularly relevant to our Scandinavian clients.

 New Patent Prosecution Highway MOTTAINAI-agreement

 Effective 15 July 2011 eight of the countries participating in the PPH concept agreed on easing the requirements for prosecution under the PPH when using any one of their mutual agreements. The new, simpler PPH-agreement is called the PPH MOTTAINAI, and has been signed by JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain).

 With the PPH MOTTAINAI program, two previously strict requirements have been removed. Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other one of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

Troels Peter Rørdam, European Patent Attorney, Awapatent

Playing the system: the annoyances of Russian utility models

Playing the system: the annoyances of Russian utility models

A fact: A Russian utility model must be new over all available written information. However, it is valid even if it relates to a product that was publicly available outside the Russian Federation at registration (Art. 1351, point 2, Civil Code).

A business recipe: New products are released on foreign markets. Pick one. Obtain a Russian utility model for the product. Be quick here – a patent application for the product is probably hiding somewhere and will be published within 18 months. Wait for the introduction of the product in Russia, and then let the owner know about your utility model …

The above is a flagrant abuse of intellectual property rights. But since the opportunity exists, there is always someone who will use it. This practice can in fact be observed rather frequently, as well-reputed colleagues have confirmed to us.

If your company regularly introduces new products on the Russian market, you may want to protect yourself against such frustration. Rather than going to court when presented with a fait accompli, it is probably cheaper in the long run to take the habit of creating prior art that invalidates potential utility models registered in bad faith. A published national Russian or Eurasian application (claiming priority from the first application that you file anyway) or a PCT application that has entered the national phase may be all you need to fight an annoying utility model. Whether your application leads to a patent does not matter, and you may withdraw it after publication to save costs.

Russian patent attorneys are aware of the problems associated with the present utility model legislation (see, e.g., 1, 2, 3). Many argue that public use outside Russia should also count as prior art. China made this law change in 2009. Recent achievements in search and translation technology should by far outweigh this extra burden on examining staff.

It is a pleasure to finish by referring the interested reader to the booklet “Patent System in Russia” (2010), which contains concise and up-to-date information on the subject.

Anders Hansson, European Patent Attorney, Awapatent

Enforcement in the East II – Why should I patent in Russia?

This is a second blog post on patent enforcement in Eastern countries. Having already discussed China, we now turn to Russia.

Like China, Russia (pop. 142 million, GDP $1.676 trillion) has made great efforts to turn its IP law system into a market-oriented one, the latest amendment dating from 2008. Russia is a party to the Eurasian Patent Convention, through which patents can be granted in nine former Soviet republics.

At least on paper, the legislation should now qualify the country for WTO membership as regards the TRIPs criteria. The Russian government is providing further evidence of its good intentions by participating in bilateral work groups established to improving the country’s IPR protection, both with the European Union and the United States. Recently, Russia signed the WIPO Internet Treaties regarding electronic distribution of copyrighted media. There are dedicated patent courts as well as state-run arbitration (arbitrazh) courts for settling commercial disputes.

While Russia’s weak track record of protecting copyrights and registered trademarks means that the nation remains on the Priority Watch List of the United States Trade Representative, some improvements have been noted: for instance, the police have started to act against pirated music and movies sold in public places. No statement is made on the enforceability of patents.

Managing Intellectual Property notes that police actions based on penal-law provisions may not always be relied upon. Allegedly, it is sometimes more effective to fight IP abuse by suing the infringer in a civil court and petitioning for temporary injunctions for the duration of the litigation.

There are few up-to-date statistics available regarding the number of IP-related cases handled by the courts and the damages awarded. On the contrary, Russian courts regularly have their impartiality questioned in international media whenever one of the nation’s ‘oligarchs’ is on trial. Even so, it seems unlikely that an ordinary patent dispute would attract anywhere near the amount of political interest that these cases generate, and the simple fact remains that patent protection in Russia can only be provided by the award of a Russian patent. After all, some of the patents from the final days of the Iron Curtain era are still in force, and nobody knows what the next twenty years have in store.

Anders Hansson, Associate

Enforcement in the East I: What’s the use of a Chinese patent?

In recent years, many of the former planned economies in the East have put state-of-the-art IPR legislation in place. Even so, IP managers in Western countries often hesitate to spend money on adding a Russian or Chinese member of a patent family.

It’s true that a patent requires more of its owner (patentee) than a trademark or copyright does. The average police officer will recognise a fake waist belt or a pirated DVD on sale in a street, while very few people apart from IP specialists know what technology is patented. With few exceptions, it is the patentee’s responsibility to discover infringements and notify the police, the customs or the like. However, the efficiency and swiftness of national judicial systems differ considerably, as do the familiarity with IPR and the toolbox of available actions to stop an infringement.

This blog post discusses enforcement of patents in China, and one that is soon to follow will be about Russia.

Over the past twenty years, China (pop. 1.3 billion, GDP $ 4.4 trillion) has reformed its IP system fundamentally. Chinese industry, once heavily focused on the manufacture of ‘existing’ products, is becoming more and more knowledge-based, and this stimulates IP awareness in the country. Court statistics show a remarkable development: in 2008 more than 24,000 IP cases were closed, in 2007 about 18,000 cases, in 2006 about 14,000 cases, while the yearly average between 1991 and 1996 had been 3,500 cases. The Chinese government considers national legislation, which is now in line with the TRIPs agreement, to be complete and to fully cover all aspects of penal law actions, temporary civil injunctions, litigation and customs procedures.

Chinese courts at the lowest level, and, indeed, the majority of those at the next level up, are not authorised to deal with IP-related cases. Yet know-how is spreading thanks to the fact that increasing numbers of cases are being handled outside Beijing or Shanghai, thus enabling the judges to swiftly accumulate IP experience. The government will further boost this development by means of a training programme.

As many know, American patent litigation involves complex initial ‘discovery’ procedures, high attorney expenses and damages of a magnitude that sometimes condemns the losing party to immediate bankruptcy. The Chinese judicial procedure is comparatively swift – usually faster than in Sweden or Denmark – and the damages awarded are moderate (see the CIELA database). The litigation expenses to be paid by the losing party are rarely excessive.

An interesting procedural provision in the country’s Patent Law is the reversed burden of evidence when infringement in a patented process of manufacture is claimed: unless the resulting product is a known one, the defendant has to prove that his manufacture is carried out in a manner that is different from that used in the patented process.

Certain difficulties in enforcing judgements have been reported, especially in rural areas where local protectionism is strong. Regarding damages, the public can log on to the website of China’s Supreme People’s Court to check for pending obligations from civil court rulings nationwide.

IP rights can be registered with the customs authorities, whose representatives will then look for and impound infringing goods as they cross the border. In recent years the Chinese IP Office, SIPO, has set up local IP authorities in each of the nation’s 31 provincial capitals. These are intended to assist in handling cases of patent infringement. The Ministry of Commerce also runs some fifty IP Service Centres to increase the local judicial penetration. Complaints can be filed via their hotline number 12312.

From time to time, foreign organisations draw attention to how the Chinese authorities fail to discover and stop violations of IP rights, especially copyright and trademarks. This is why the United States Trade Representative maintains China on the Priority Watch List in this year’s Special 301 Report on IP enforcement. Managing Intellectual Property is of a similar opinion.

The DG Trade within the European Commission runs a website dedicated to IPR and Trade, including enforcement issues. European companies working with China may want to turn to the China IPR SME Helpdesk, which is there to help them on a practical level.

Returning to the initial question, it is clear that China is going through a period of dramatic change as regards patents and their enforcement. Government entities seem to be one step ahead in this development, pushing it forward and encouraging private stakeholders to join in. Judging by the indicators available to us, a Chinese patent is becoming more and more useful.

Anders Hansson, Associate