Entering Russian National Phase under PCT
Brief summary of requirements and prosecution procedure overview
Entry to Russian National Phase for an international application under PCT Article 22(3) or Article 39(1)(b) shall be done within 31 months after the priority date.
The international application shall be translated into Russian language. The following international application contents shall be translated:
- under PCT Article 22: description, claims, any text matter of drawings, abstract; if description and/or claims were amended and the applicant is willing to enter the National Phase with amended application, they shall be translated as originally filed and as amended alongwith statement(s) under PCT Article 192;
- under PCT Article 39(1): description, claims,any text matter of drawings, abstract; if any of those parts were amended and the applicant is willing to enter the National Phase with amended application, they shall be translated as originally filed and as amended by the annexes to the international preliminary examination report.
It is possible to enter the National Phase with no translation submitted at the time of filing application; however it is expedient to submit the translation within two months after filing, in order to prevent extra Office Actions.
A certified copy of the international application shall be provided, when the National Phase entry is to be done prior to international publication of the international application.
Reinstating rights to priority by request under PCT Rule 49 ter. 2 is possible according to the “due care” criterion.
An agent shall be appointed if the applicant is not resident in the Russian Federation. Any patent attorney registered to practice before the Office may act as an agent. The registration shall cover inventions and utility models.
The following Official Fees shall be paid in due course:
For invention application:
Filing fee RUB 1650 (USD 27.5)
RUB 250 (USD 4.2) for each claim over 25
Examination fee RUB 2450 (USD 40.8) for the1st independent claim
RUB 1950 (USD 32.5) for each of 2nd to 10th independent claims
RUB 3400 (USD 56.7) for each of 11th and further independent claims
Annual fee for the 3rd year RUB 850 (USD 14.2)
Patent issue fee RUB 3250 (USD 54.2)
For utility model application:
Filing and examination fee RUB 850 (USD 14.2)
RUB 100 (USD 1.7) for each claim over 25
Annual fee for the 1st and
the 2nd year RUB 400 (USD 6.7) per year
Patent issue fee RUB 3250 (USD 54.2)
The USD amounts indicated in the above are exemplary only as they were calculated based on RUB/USD exchange rate of 60. Some other fees may be required during prosecution, depending on circumstances.
Invention examination fee is to be reduced by 50% for PCT Applications containing ISR or IPER issued by RUPTO or by 20% for PCT Applications containing ISR or IPER issued by any other PCT authority.
Patent issue fee shall be paid within four months after dispatching grant decision to the applicant. The payment can also be made within six months after the expiration date of this time limit, including a 50% surcharge for late payment.
Examination of the application is divided into two parts, formal examination and substantive examination. Formal examination usually takes two to three months. Substantive examination usually takes one year or more, depending on examiner’s workload and the applicant’s responsiveness.Substantive examination shall be requested within three years after the international filing date. Expired time limit for the substantive examination request may be reinstated within 12 months upon payment of due fees along with submittal of a statement on the valid excuse for expiration.
During examination, terms for the applicant’s response to an Office Action may be extended up to ten months upon payment of a due fee.
No accelerated examination is available. However, one of PPH (Patent Prosecution Highway) procedures may be used in order to speedup examination.
Generally, the whole prosecution procedure takes 1.5 to 3 years and yields either grant or denial. Denial decision may be appealed with the Chamber of Patent Disputes.
An invention application may be converted into a utility model application and vice versa by filing a request before a grant decision is taken upon payment of a due fee. The converted application shall have the priority date of the initial application.
After patent grant, annuities shall be paid every year on the international filing date anniversary. The payment can also be made within six months after the expiration date of this time limit, including a 50% surcharge for late payment. If a patent is expired due to unpaid annuities, it may be reinstated by the patent holder’s request within three years after the expiration date upon payment of due fees.
For further details of Russian patent law and practice, please feel free to contact Mr. Stan Fedorov of Delta Patent ®. Stan is available by email:firstname.lastname@example.org, by skype: stanifed, or by phone: 7 812 998 1292.