The three remaining EAPO member states – Belarus, Tajikistan and Turkmenistan – have yet to complete their ratification procedures. According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.
An industrial design is defined as the design of the external appearance of an industrial or handicraft product resulting from the features defining its aesthetic character, in particular, shape, configuration, ornamentation, combination of colors, combination of lines, contours, texture or materials. In this definition, product refers to packaging, labels, assembled products, parts of products, sets of products and typographic typefaces.
The scope of legal protection will be determined by a set of essential features that are reflected in product’s images.
A design should be new and original. A design will be considered new if its set of essential features that are reflected in the product’s images has not been made available to the public before the application filing date or, if priority is claimed, before the priority date.
A design will be considered original if its set of essential features is determined by the creative character produced by the distinct aesthetic aspects of the product, in particular if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the application filing date or, if priority is claimed, before the priority date.
The disclosure of a design by its creator, their successor in title, the applicant or a third party who received this information from them directly or indirectly will not be taken into consideration for the purpose of assessing the design’s novelty and originality, if the application is filed within 12 months from the disclosure date.
The following cannot be registered as a Eurasian design:
- Designs that are contrary to public policy or to principles of morality in at least one of the Contracting Parties
- Designs that include, reproduce, or imitate official symbols or the abbreviated or full names of international and intergovernmental organisations without the consent of the respective competent authorities of the states or organisations whose interests are affected by such designs
- Designs that include, reproduce, or imitate official names or images of cultural heritage (including ethnic or religious heritage), or recognisable parts thereof without the consent of the respective competent authorities of the Contracting Parties whose interests are affected by such designs
- Designs whose essential features are dictated solely by the product’s technical function
- Designs that are identical or confusingly similar to the trademarks protected or applied for and published by at least one Contracting Party and having an earlier priority date than the design application
- Designs that are identical or confusingly similar to the titles of scientific, literary or artistic works known in at least one Contracting Party, to the names of their characters or citations therefrom, if the copyright of such works has an earlier priority date than the design application and there is no consent from the respective copyright holders
- Designs that can mislead consumers as to their manufacturer, place of origin, or the nature of the product for which such a design can be used as packaging or a label.
Filing an application
The Eurasian design application can be filed by one or several applicants. It should refer to one or more industrial designs with the maximum of 100 industrial designs. All the industrial designs in one application should belong to the same Locarno class. The procedural fee will depend on the number of industrial designs indicated in the application.
The official fees are the following:
- Filing a design application – EUR 231 (USD 279)
- Each additional design in the same application (up to 10) – EUR 116 (USD 140)
- Each additional design in the same application (over 10) – EUR 58 (USD 70)
According to the Protocol, an application is to be filed in written or electronic form in Russian, while supporting documents can be filed in Russian or other languages along with a Russian translation. An application can be filed with the Eurasian Patent Office either directly or through the national patent office of the Contracting Party (“the receiving office”), and applicants will pay a uniform procedural fee.
Applicants who are not permanent residents or who are not permanently located in the territory of any of the contracting states must be represented by a Eurasian Design Attorney. It is expected that the first exam allowing national design attorneys to obtain this licence will be held after May 15, 2021.
The application must contain the following:
- Statement that an application is filed in accordance with the Protocol
- Name and address of applicant(s)
- Name and address of creator(s)
- Contact information of the applicant(s) or the Eurasian Design Attorney
- Title of the design
- Indication of the products in which the design is intended to be incorporated or to which it is intended to be applied
- Locarno class
- Set of reproductions of the design.
If something is missing in the design application, the filing date will be the date on which the correction of thisirregularity is submitted to the receiving office.
The application may contain a description of the design, but it is not necessary.
Applicants can claim priority based on the filing date of an earlier application filed in any member country of the Paris Convention or the World Trade Organization, if the Eurasian application is filed within six months from the priority date. A certified document confirming the priority date should be submitted to the receiving office no later than three months after the Eurasian application’s filing date. The Eurasian Patent Office can further request a Russian translation of the document.
The missed deadline for claiming priority can be reinstated upon the applicant’s request if the request is filed within two months from the missed deadline and if the Eurasian Patent Office finds that the applicant missed the deadline unintentionally. The official fee for a late priority claim is EUR 185 (USD 223).
Multiple priorities may be claimed even if priority claims have been made in different jurisdictions.
Examination and publication
Each Eurasian design application will undergo preliminary and substantive examinations. If formal requirements are met, a decision establishing the application’s filing and priority dates should follow, and the application will be published by the Eurasian Patent Office within one month from notifying the applicant of the positive result of the preliminary examination. Deferred publication is not stipulated by the Protocol. The Office will then conduct substantive examination and issue its decision. The Eurasian Patent Office’s regulations concerning the time frames and examination procedures are yet to be adopted.
Published applications will enjoy provisional protection, the scope of which is limited to the essential features reflected in the published drawings. Rights holders can claim damages for the use of their design starting from the publication date, provided that the design patent is finally granted.
After the application is published, the patent offices of the Contracting Parties and any interested person may file an opposition with the Eurasian Patent Office within two months of the publication date. The Eurasian Patent Office should notify the applicant and publish information about the filed opposition within seven days from the expiration of the opposition period. The applicant has one month to file their arguments against the opposition. In case the parties request mediation, the Eurasian Patent Office will suspend the examination of the application for a period not exceeding six months. The official fee for filing an opposition against a Eurasian design application is EUR 231 (USD 279).
Once a grant decision has been issued and the applicant has paid the registration fees, the Eurasian Patent Office will register the design in the Register of Eurasian Industrial Designs. The design should be published in the Official Bulletin within the following two months, and the design certificate will be sent to the rights holder after publication in the Official Bulletin.
The applicant must pay the registration fees within two months of the grant decision date; this term can be extended for another two months upon payment of an additional fee.
The official fees are the following:
- Granting and publishing a design – EUR 173 (USD 209)
- Each additional design in the same application (up to 10) – EUR 87 (USD 105)
- Each additional design in the same application (over 10) – EUR 43 (USD 52)
Objections and appeals
If an applicant disagrees with a refusal decision, they may file an objection within three months from the decision date. The objection should be considered within four months from being filed.
An objection decision can be further appealed within four months from the decision date by submitting an appeal to the President of the Eurasian Patent Office.
The official fee for filing an objection against a refusal decision is EUR 231 (USD 279), and the official fee for filing an appeal following the objection is EUR 405 (USD 489).
A divisional application can be filed if, on its filing date, the parent application is not abandoned or revoked, no design patent is granted for the parent application, or, in case the parent application has been refused, there is still a possibility to appeal the refusal.
Conversion of a Eurasian Design Application into a National Application
A Eurasian application may be converted into a national application by filing a request before the Eurasian Patent Office. The conversion request should indicate the Contracting States where the applicant wishes to obtain a designpatent (register an industrial design) under the national procedure. Such request may be filed within six months from the date of the decision to refuse the grant of a Eurasian design patent or the decision to refuse the opposition filed against such a decision.
In each of the designated states in respect of which such a decision has been reached and which is the subject of therequest, the Eurasian application is to be considered a properly prepared national application filed with the national patent office, with the same filing date and priority date (if applicable). It should be further processed by the national office upon payment of the relevant national fees.
Validity term and renewal
Once granted, Eurasian designs will be valid for five years counting from the application filing date, and will be renewable in the territory of all the Contracting Parties in which the Eurasian design has legal effect for additional five-year periods up to four more times, so that the maximum term of protection does not exceed 25 years from the application filing date.
The relevant official fees (per design in the same registration) are the following:
- Renewal for years of validity 6-10 (per design) – EUR 81 (USD 98)
- Renewal for years of validity 11-15 (per design) – EUR 110 (USD 133)
- Renewal for years of validity 16-20 (per design) – EUR 139 (USD 168)
- Renewal for years of validity 20-15 (per design) – EUR 168 (USD 203)
Exclusion of overlapping protection
The Protocol envisages the exclusion of overlapping protection – in a Contracting Party, the rights arising from a Eurasian application or registration with an earlier filing or priority date have priority over the rights arising from a subsequent national application or design registration filed before the Eurasian application publication date on the same basis, and vice versa.
Requests to record an assignment, merger or pledge of rights should be filed with the Eurasian Patent Office. Request to record a licence should be filed with the patent office of the Contracting Party where the licence agreement is made and where it is valid.
A granted and published Eurasian design can be invalidated if an action is filed with the Eurasian Patent Office within six months from the publication date. The invalidation action should be considered and decided on within the following six months. The parties may attend the hearing and submit their arguments.
A decision on the invalidation action can be further appealed by submitting arguments to the President of the Eurasian Patent Office. The appeal should be filed within four months from the decision date.
The official fee for filing an invalidation action with the Eurasian Patent Office is EUR 347 (USD 419), and the fee for filing an appeal following the invalidation action decision is EUR 520 (USD 628).
The decisions of the Eurasian Patent Office and its President are valid within the territories of all Contracting Parties.
An invalidation action can also be filed with the administrative or judicial bodies of a particular Contracting Party. In case of invalidation by one Contracting Party, a Eurasian design remains valid in other Contracting Parties.
The enforcement of Eurasian design rights should be carried out under the substantive and procedural law of the Contracting Party where the infringement took place.
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Anastasia Khioni, Junior Associate, PETOŠEVIĆ Belarus