Eurasian or National Patent Procedure?

If you want to obtain patents in several countries of the former USSR, you may file a Eurasian Patent application or use regular national procedures in each country.
According to the Eurasian Patent Convention filing of patent application with EAPO presupposes claiming of the single Eurasian patent for all countries that ratified this Convention (now there are 9 countries), and after grant of the Eurasian patent, that could be issued after conduct of the substantive examination, the patent will be valid only in those designated countries, in respect of which the maintenance fees are paid.

The advantages of the Eurasian Patent procedure are the same as those of the European Patent Convention: you may obtain protection in all (nine) member-states by one patent with the assistance of one attorney. Also if you initiate the Eurasian Regional Phase of a PCT application you may postpone the actual election of certain states until the patent is granted and thus have more time to work out the best patent policy.

BUT


There are other factors to be taken into account. The attorney's and official fees for filing Eurasian applications are higher then those for the national procedures in CIS countries. Then, for a PCT application the request for substative examination with payment of the official fees should be filed before expiration of 31 months from the priority date. For example, if the application refers to a group of inventions and has 15 claims, only the official fees for initiation of Regional Phase will make up about three thousand dollars and they should be paid before expiration of the 31 months term.

Most certainly, you will be asked to pay immediately all the official fees and maybe the attorney fees as well, which together with the fees for translation into Russian would make up at least $ 2,000. So, when using the Eurasian procedure for a PCT application covering a group of inventions in the end of the 31 month period the applicant must immediately spend at least five thousand dollars. In contrast, under national procedures as of that date it is necessary to pay only the filing fee, since in most countries the request for substantive examination is filed within three years of the international filing date. The Russian translations are accepted by Patent Offices of the majority of the CIS countries. In addition, in the latter case the government fees are rather small and they are paid by the agents, the invoices for official and service fees are produced after implementation of all procedures and are paid within several months.

As a general rule the Eurasian procedure for a PCT application is more profitable to use when the applicant has decided to obtain patent protection in at least three countries and even in this case the applicant looses a chance to postpone the payment. For two countries national procedures might prove more convenient and less costly.

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