Voluntarily restrictions on Russian and Eurasian patents: a useful option for patent holders
There is no formal procedure for post-grant amendments to Russian patents under the country’s Patent Act. However, it is possible to request full or partial renunciation of the granted patent. Although this option has been available for decades, requests for full or partial renunciation are extremely rare. The procedure for a full repeal of a granted patent is quite straightforward – the patentee files the request at the Russia Patent and Trademark Office (Rospatent) and it is deemed to be renounced from this date. However, the situation with regard to partial cancellations is unclear. In particular, there is no guidance as to how the patent can be partially removed (eg, whether this be by deleting independent claims or alternatives from independent claims and/or restricting independent claims with the elements of the dependent claims). Rospatent may allow for deleting independent claims from the patent only.
Voluntarily restrictions of a Eurasian patent are allowed under the post-grant amendment procedure, which became available in 2011. Before this, it was only possible to correct typographical errors in a granted patent. Post-grant amendments initially consisted of excluding one or more claims or alternatives only. Since these were considered to be too restrictive, the Eurasian regime was changed in 2019 to broaden the ways in which claims can be altered under the post-grant amendment procedure. This also permitted the restriction of the scope of an independent claim with the features of dependent claims and arguably with the features supported by the specification. The only limitation for post-grant amendments is that they cannot broaden the scope of the original claims.
Requests for post-grant amendments can be filed at the Eurasian Patent Office (EAPO) at any point of the patent’s term. The patentee can request post-grant amendments for the whole Eurasian patent so that those amendments are effective in all regions in which the patent is in force. Alternatively, a request for a post-grant amendment can be restricted to one or more contracting states. However, this is not possible for the whole Eurasian patent if there is a pending opposition against it before the EAPO. Under the Eurasian system, an opposition can be filed within six months from the patent’s issue date. Likewise, the EAPO will refuse to restrict the patent in the contracting state pending revocation action filed against this patent under the national procedure.
A request for post-grant amendments must be accompanied by the amended claims and comments in support of those amendments. The EAPO grants the request if it establishes that the amended claims restrict the scope of the original claims of the patent, that they are clear, supported by the specification and do not introduce new matter. Once the EAPO accepts the amended claims, the Eurasian patent is republished with the amended claims and with an indication of the regions in which they are effective.
Voluntary restrictions of granted Eurasian and Russian patents may be beneficial if the scope of the original patent was broader than necessary for enforcement or created validity concerns. Currently, the Eurasian patent regime provides more opportunities for restriction under the post-grant amendment procedure, while the options for partial renunciation of a Russian patent are quite limited.
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