From Russia with love: disposing commercial & IP strategy in Russia and Eurasia

Evgeny Enbert Russian and Eurasian Patent Attorney PATENTICA © 2014

Russian AUTOMOTIVE market

   Russian Automotive Market: $69 bln in 2013 High growth potential: 156 cars/1,000 Russians (525 in UK) 2013: 9% growth in sales of locally produced foreign cars Local factories: Ford (2002) Renault (2005) Volkswagen (2007) Toyota (2007) GM (2008) Nissan (2009) Peugeot/ Citroen/ Mitsubishi (2010) Hyundai (2011) Top 10 brands, 2013     Lada (456 309) Renault (210 099) KIA (198 018) Hyundai (181 153)      Chevrolet (174 649) Volkswagen (156 247) Toyota (154 812) Nissan (146 196) Ford (106 734)

Russian TELECOMMUNICATION market

The telecom

market value reached $42bn in 2013, that is 2% of Russia’s GDP

Growing sectors:

   

Fixed and mobile internet access pay TV services broadband internet access 3G-LTE development vs. WiMAX and CDMA

Russian PHARMACEUTICAL market

• • Russian Pharma market grows 10% in average annually

Expenditure per capita in RU is 170$, in US it is 770$ , in JP – 730$, in EU –400$

2/3 of medicine in Russia cost less than $5

$ 24.2 bln $ 28.1 bln $ 29.7 bln PUBLIC RTU DRUG SECTOR (ca.25%) COMMERCIAL PARAPHARMA SECTOR (CA. 17%) COMMERCIAL RTU DRUG SECTOR (ca.58 %)

Source: DSM group 2012

Russian MEDICAL DEVICEs & MEDICAL TECHNOLOGY market In 2013, the Russian medical device market was $6.7bln

, or $47 per capita , with import being $4,8 bln

, i.e. 72%.

1,200 manufacturers are engaged in medical device production 40% of equipment obtained via budget funds is not fully used $ 4.1 bln $ 3.6 bln $ 3.0 bln 16 % 12 %

PUBLIC SECTOR (ca. 80%)

Source: Ministry of Industry and Trade 2010 2011 2012

COMMERCIAL SECTOR (ca. 20%)

5

  

Regional patents:

TREND FOR COMMERCIAL INTEGRATION CIS free trade agreement between Armenia, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan signed in 2011

Customs Union of Russia, Belarus and Kazakhstan signed in July 2010 Car sales in 2013: Russia 2,777,000 Belarus: 24,966 Kazakhstan: 48,327 Ukraine: 261,001 Uzbekistan: 94,400

Two patent offices to file with

 

Russian Patent Office (Rospatent) Eurasian Patent Office

IP objects



EAPO: inventions only (Art. 6 of the EAPC)



RUPTO: Inventions and other IP objects

8

What does Russian IP legislation offer?

  

Inventions Utility models Designs

   Selection achievements Integrated micro-circuits topologies Trade Secrets (Know-How)  Works of science, literature and art  Computer programs  Databases  Performances  Audio records      Broadcasting or radio- or television programs by cable

Company names Trademarks Geographical Indications Commercial designations

9 9

OVERVIEW

The Eurasian Patent Organization

consists of Administrative council and the Eurasian Patent Office.

8 Contracting states: EA: RU, BY, KZ, AM, AZ, KG, MD, TJ, TM with total population 200 mln. Headquarters: Moscow, M. Cherkassky per., 2 10

LEGAL BASIS



The EAPC (signed September 9, 1994, came into force August 12, 1995)



EA Patent Regulations



Patent Rules for Drafting, Filing and Examining a EA patent application

http://www.eapo.org/en/documents/norm/ 11

Clear benefits of the EAPO:

 patent protection in up to 8 countries  single prosecution procedure  protection by one single patent in Russian language  no designation of contracting states until the grant  no validation/translation after grant is required 12

B. PATENTABLE CLAIMS IN RU/EA = US+EP Compound A [for treatment of disease Y]  Crystalline/amorphous forms of compound A  A composition [for treatment of disease Y]  A combination of compounds A and B for Y  A method of treatment of disease Y using compound A 

Use of compound A or method B for purpose Y (Art.1350, 01.10.2014)

 Apparatus for purification of substance A  A Kit containing composition A and instruction for use.

YES YES YES YES YES YES YES YES

Statistics: applications file

30% filed by foreign applicants 45000 40000 35000 30000 25000 20000 15000 10000 5000 0 41849 38564 42500 41414 44211 44914 3066 2801 3329 3560 3946 3435 2008 2009 2010 2011 2012 2013 RUPTO EAPO 14

Eurasian applications by country of residence in 2013

1000 900 800 700 600 500 400 300 200 100 0 779 368 353 212 189 175 129 121 95 93 921

Recent Developments in the Russian/Eurasian patent system



23 August 2012

, as result of Russia’s access to WTO, the official Rospatent patent and TM fees were equalized for both resident and non resident entities and physical persons 

1 July 2013

Russian IP court started to operate to ensure qualified IP enforcement mechanism 

01 Oct 2014

amendments to IP legislation, CCRF Part 4, have come into force to harmonize the legal IP provisions in Russia with legislation of other WTO countries and generate better opportunities to protect IP rights in Russia.

NOVELTY OF UTILITY MODEL, Art 1351 CCRF, Art 1351, 01.10.2008 CCRF, Art 1351, 01.10.14

1. Prior art for Utility Model includes: - published information world-wide and - public use in Russia before the priority date 1. Prior art for Utility Model includes: - any information including prior use world-wide before the priority date 2. Formal examination only 2. Examination in essence: novelty, industrial applicability, sufficiency of disclosure

PATENTABILITY OF INDUSTRIAL DESIGN, Art. 1352 CCRF

Art. 1352 (01.01.2008) Art. 1352 (01.10.2014)

1. A set of essential features of industrial design includes aesthetic and ergonomic features, such as shape, configuration, ornament, combination of colours. 1. A set of essential features of industrial design includes aesthetic features colours, , such as shape, configuration, ornament, combination of lines, contour, texture. 2. The industrial design is new the drawings and the list of essential features not known in the prior art. is if the set of features reflected on indicated in 2.The industrial design is new if the set of features reflected on the drawings is not known in the prior art .

NOVELTY AND ORIGINALITY OF INDUSTRIAL DESIGNS, Art. 1352 CCRF

Art. 1352 (01.01.2008) Art. 1352 (01.10.2014)

For the purposes of novelty of the ID, the prior art includes all the information available world-wide and applications all ID filed in Russia. Grace period 6 months other person for disclosure by inventor or For the purposes of novelty and originality of the ID, the prior art includes all the available information world wide and all applications for inventions, UMs, IDs, TMs filed in Russia. Grace period 12 months for disclosure by inventor or other person

Rule 19.5.3 (RU) & EA

B. INVENTIVE STEP

(1) “An invention shall be considered to involve an inventive step if, having regard to the prior art, if it is not obvious to a person skilled in the art”, in particular, - where no technical solutions are found having features coinciding with the characterizing features of the invention, or - when such solutions are found, but the influence of these features on the claimed technical effect is not described. Thus, in RU/EAPO inventive step objections can/shall be argued by proving that a different technical effect is achieved in comparison to “a problem solution approach” under EPO.

The new regulations, Art. 1378 CCRF, limits the freedom to change formulation of technical effect after filing of the application.

DEPENDENT INVENTION/UTILITY MODEL/INDUSTRIAL DESIGN, Art. 1358’ CCRF, 01.10.2014

1 . A patent for invention, utility model, industrial design, which cannot be used without using another patent for invention, utility model, industrial design, having earlier priority, is called

a dependent invention, utility model, industrial design.

Example 1: Use for a new purpose of a product protected by a patent having earlier priority Example 2: A patent for a product or method having claims which differ in a new purpose only.

NEW GROUNDS FOR INVALIDATION OF A PATENT/ UTILITY MODEL, Art.1398 CCRF

Art. 1398 (01.01.2008) Art. 1398 (01.10.2014)

A patent for invention or a utility model can be deemed invalid if the invention or utility model: does not comply with one of patentability criteria; A patent for invention or utility model can be deemed invalid if the invention or utility model: does not comply with one of patentability criteria; does not correspond to patentable subject matter; - contains features in claims absent from original application materials disclosed insufficiently for its implementation; contains features in claims absent from original application

INFRINGEMENT OF A PATENT/ UTILITY MODEL, Art. 1358 CCRF

Art. 1358 (01.01.2008) Art. 1358 (01.10.2014)

A patent for invention or a utility model is considered as used in a product if the product contains all the features indicated in an independent claim, or a feature equivalent thereof and become known as such before the priority date of the invention. A patent for utility model is considered as used in a product if the product contains all the features indicated in independent claims, or a feature equivalent thereof.

TWO WAYS TO ENFORCE THE IP IN RUSSIA

ADMINISTRATIVE

Fast, cheap and easy to stop the infringement BUT the damages cannot be collected

JUDICIAL

Compensation of damages and lost profits is possible

Administrative Authorities to Apply and Enforce: ROSPATENT Chamber for Patent Disputes Municipal and Economic Police Federal Antimonopoly Service (FAS) Customs State Patrol for Commerce

Russian Commercial Courts and procedure First instance court (i.e. Moscow Commercial Court)

Common case

Intellectual rights court

Pure IP case

Appeal Court of appeals (i.e. 9 th Commercial court of Appeals) Cassati on Cassation court (i.e. Moscow District Court) 2 nd cassation

IP related case

Cassati on Economic Disputes Bench of the Supreme Court Cassation (no appeal) Presidium of the Intellectual rights court 2 nd cassatio n Supervisio n Presidium of the Supreme Court

Two ways for patent in Russia

each providing equal enforcement rights Do not know which patent to choose?

APPLY FOR BOTH!

With all the amendments to the legislation, possibility to get EA and RU identical patents having the same priority date – collision which still has to be solved!

27

THANK YOU!

Evgeny Enbert, MSc. Optoelectronics, MSc. Economics Russian and Eurasian Patent Attorney Head of the Mechanics & Electronics Team of

BOX 1125, Saint Petersburg, 190000, Russia 15 Malaya Morskaya Street, Office 5, St. Petersburg, 190000, Russia Phone: (007) 812 6002427, Fax: (007) 812 314 4569 www.patentica.com

[email protected]

28