Patents
The value that patents give to a company is hard to overestimate, and we always aim not only to protect the time and money invested in research and development to provide a genuine business asset, but also to create a perfect Intellectual Property Rights strategy for our clients, expanding the value of their innovative ideas, in particular, in the Russian and Eurasian market.
We at Xandra Law believe that a well-developed, comprehensive patent strategy, including timely registration of IP rights as well as monitoring of competitor’s patent activity, is essential to enhance the competitiveness of a company and avoid possible complications connected with enforcing IP rights on the market. Xandra Law deals with domestic and foreign patent prosecution, due diligence and freedom to operate investigations, assignment and licensing agreements, invalidity actions, litigation and post-registration maintenance.
Our patent department provides extensive range of services across diverse technology areas. Our Patent Attorneys and Experts are grouped by main focus into different departments.
- PCT application number
- Names and addresses of applicant(s) and inventor(s) (unless the application is published)
- Description, claims, abstract, and drawings (unless the application is published)
- Power of Attorney executed by the applicant
- Amendments to be made during the National Entry
- Amendments made after the international publication (if any)
- Names and addresses of applicant(s) and inventor(s)
- Description, claims, abstract, and drawings
- Power of Attorney executed by the applicant
- Certified copy of priority application(s) (when priority is claimed)
PCT Entry
Many entities seeking international protection for their inventions choose regional systems over national ones due to a broader coverage. In the CIS region, the most prominent are two regional systems: the Patent Cooperation Treaty (PCT) and the Eurasian Patent Convention (EAPC). Xandra Law represents clients before the International Bureau of the World Intellectual Property Organisation (WIPO), the Eurasian Patent Office (EAPO), and the national offices in the region, including Ukranian Patent Office, as well as patent offices in Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova, Tajikistan, Turkmenistan, Uzbekistan.
As for the PCT, we assist clients with filing international applications, responding to the International Search Reports (ISR) and the Written Opinions of the International Search Authority (WOISA) as well as with entering the National Phase, which includes filing formal documents, paying official fees, preparing and submitting a translation of the application to the national office, such as Georgian Patent Office, Ukranian or Uzbek Patent Office, and handling Office Actions, if any.
The PCT application can subsequently be entered either into National phase in one or several countries to mature finally into a national or several national patents, or into Regional phase, such as Eurasian regional phase, whereupon as result of examination, a Eurasian patent will be granted to simultaneously cover all EAPC Contracting States including Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russian Federation, Tajikistan and Turkmenistan. It is worth noting that a EA patent does not require translation into several languages, while the renewals fees are payable to the EAPO in amount cumulative of the amount of renewal fees in each country where the patent is intended to maintained.
- PCT application number
- Names and addresses of applicant(s) and inventor(s) (unless the application is published)
- Description, claims, abstract, and drawings (unless the application is published)
- Power of Attorney executed by the applicant
- Amendments to be made during the National Entry
- Amendments made after the international publication (if any)
- Names and addresses of applicant(s) and inventor(s)
- Description, claims, abstract, and drawings
- Power of Attorney executed by the applicant
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Patent oppositions
Patent wars are not only about enforcing intellectual property rights and fighting against unfair competitors: registered patents can also be challenged if grant of protection violated the relevant legal provisions. Xandra Law’s patent attorneys act on both sides of the fence successfully attacking or protecting patents under revocation procedure.
Considering the intricacies of the local legal systems, it is always advantageous to have an experienced and dedicated specialist on your side. For example, Russia has a bifurcated system of patent opposition and litigation. A Russian patent for an invention can be challenged by any person anytime during patent validity period in full or in part by submitting a notice of opposition to the Russian Patent and Trademark Office (Rospatent), if:
- the claimed subject matter does not comply with the patentability criteria (novelty, inventive step, industrial applicability);
- the essence of the invention is not sufficiently disclosed in the specification;
- the claims recite features, which were not disclosed in the original specification at the filing date (added matter);
- there is a patent having the same priority date on an identical invention;
- the patent does not correctly identify an inventor(s) and/or patent owner;
The latter ground requires an action before the IP Court, while the rest of the grounds can be used for the opposition before the Chamber for Patent Disputes (CPD), which is a special division of Rospatent responsible for carrying out opposition and appeal proceedings.A Eurasian patent can be challenged before the Eurasian Patent Office within 6 months following a publication date of the granted patent in the EAPO Official Bulletin. After expiry of this period the patent can be challenged before the national authorities (patent offices) of the corresponding Contracting states of the Eurasian Patent Convention. For Russia, that would be the CPD.
A final decision on a given opposition is taken by the IP Court, which is responsible for considering appeals on the Rospatent’s decisions.While there is no opposition system in relation to pending patent applications, third parties have an option of submitting observations (TPOs) about the patentability of the claimed invention once the application is published. Although there will be no inter parties proceedings, the third party observations will be taken by the patent office into account when making a final decision on grant or rejection of the patent.
Being skilled and experienced in patent opposition work, our patent attorneys conduct thorough prior art analysis regarding the patentability criteria and other grounds to accurately assess the prospects of possible opposition proceedings and are able to provide effective solution and legal assistance to both patent owners and their opponents.
Plant varieties and animal breeds
Creativity in selection leads to genesis of new biological species, which can possess high commercial and humanitarian value: innovations in agriculture have a positive effect on food security, quality of nutrition and safety of pharmaceuticals made of plants. New varieties of plants and animal breeds created as a result of selection can be protected by a patent in accordance with the local requirements.
The reason for the patent term extension tool introduction is the complicated and lengthy procedure of clinical trials and obtaining special marketing authorization preceding the actual launch of pharmaceuticals and agricultural goods, which substantially reduces the term of profiting from a patent: it can actually take decades for a drug to pass muster with the federal authorities and be brought to the market.
Patent term extension is also available under the Eurasian Patent Convention for Eurasian Patents in the following states in addition to Russia: Belarus, Kazakhstan, Kyrgyzstan, Azerbaijan, Armenia and Turkmenistan, the only exception being Tajikistan.
Supplemen-tary patent protection
Pharmaceutical and agrochemical inventions may be privileged in terms of the validity period: for example, in some of the CIS countries in addition to the standard 20 years from the filing date, 5 years can be added upon filing a corresponding request, and a Supplementary Protection Certificate (SPC) is issued.
The reason for the patent term extension tool introduction is the complicated and lengthy procedure of clinical trials and obtaining special marketing authorization preceding the actual launch of pharmaceuticals and agricultural goods, which substantially reduces the term of profiting from a patent: it can actually take decades for a drug to pass muster with the federal authorities and be brought to the market.
Patent term extension is also available under the Eurasian Patent Convention for Eurasian Patents in the following states in addition to Russia: Belarus, Kazakhstan, Kyrgyzstan, Azerbaijan, Armenia and Turkmenistan, the only exception being Tajikistan.