Eurasian Patent Office (EAPO)
- Section 1 General
- Section 2 Private and/or non-commercial use
- Section 3 Experimental use and/or scientific research
- Section 4 Preparation of medicines
- Section 5 Prior use
- Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
- Section 7 Acts for obtaining regulatory approval from authorities
- Section 8 Exhaustion of patent rights
- Section 9 Compulsory licensing and/or government use
- Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
- Section 11 Other exceptions and limitations
Section 1: General
1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.
Eurasian Patent Convention (EAPC)
Patent Regulations under Eurasian Patent Convention (adopted by the Administrative Council of the EAPO at its second (1st ordinary) session on December 1, 1995, with further amendments and additions)
“The Eurasian Office shall grant a Eurasian patent for any invention that is new, involves an inventive step and is industrially applicable.” (Art. 6 EAPC).
Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.
The following shall not, as such, be recognized as inventions as implied in Rule 3(1) of the Regulations, inter alia:
- discoveries;
- scientific theories and mathematical methods;
- presentation of information;
- methods of economic organization and management;
- symbols, schedules and rules;
- methods for performing mental acts;
- algorithms and computer programs;
- topographies of integrated circuits;
- projects and plans for structures and buildings and for land development;
- solutions concerning solely the outward appearance of manufactured goods and aimed at satisfying aesthetic requirements.
The above-listed subject matter shall not be recognized as inventions in those cases where a Eurasian application or a Eurasian patent are directly pertinent to any of the above-listed subject matter as such;
Eurasian patents shall not be granted for:
- plant varieties and animal breeds;
- topology of integrated circuits;
- inventions, the commercial use of which it is essential to prevent, for the purposes of protecting public order or morality, including the protection of the life and health of people and animals or the protection of plants, or in order to prevent serious damage being caused to the environment. In that regard, such use may not be considered such, solely on the grounds that it is forbidden by the legislation of one or more Contracting States. (Rule 3 par. (3) and (4) of Patent Regulations).
2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?
EAPC, Art. 9:
“ (1) The owner of a Eurasian patent shall have the exclusive right to use, and also to authorize the use or prohibit others from using, the patented invention.
(2) The owner of a Eurasian patent may assign or license his rights.
(3) After an application for the grant of a Eurasian patent (hereinafter referred to as “the Eurasian application”) has been published, the applicant shall enjoy provisional protection in conformity with the national legislation of the Contracting States.”
Patent Regulations, R. 17:
“The following acts shall constitute an infringement, within the meaning of Article 13(1) of the Convention, of said patent owner's exclusive right:
- the making, use, importing, offering for sale, sale or any other form of marketing or storage for that purpose, of a product protected by a Eurasian patent;
- the use of a process protected by a Eurasian patent or the offering thereof for such use;
- the use, importing, offering for sale, sale or any other form of marketing or storage for that purpose, of a product directly obtained by a process protected by a Eurasian patent.”
3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):
Private and/or non-commercial use;
Experimental use and/or scientific research;
Preparation of medicines;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Exhaustion of patent rights;
Compulsory licensing and/or government use.
Section 2: Private and/or non-commercial use
4. If the exception is contained in statutory law, please provide the relevant provision(s):
Patent Regulations, R. 19:
“The following cases of the use of the patented invention shall not constitute an infringement of the Eurasian patent:
- use for private non-profit-making purposes”.
5. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
None
6.(a) What are the public policy objectives for providing the exception?
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
7. If the applicable law defines the concepts “non-commercial”, “commercial” and/or “private”, please provide those definitions by citing legal provision(s) and/or decision(s):
No definition
8. If there are any other criteria provided in the applicable law to be applied in determining the scope of the exception, please provide those criteria by citing legal provision(s) and/or decision(s):
None
9. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to change the legal framework of the exception are foreseen.
10. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 3: Experimental use and/or scientific research
11. If the exception is contained in statutory law, please provide the relevant provision(s):
Patent Regulations, R. 19:
“The following cases of the use of the patented invention shall not constitute an infringement of the Eurasian patent:
- use for scientific research and experimental purposes”.
12. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
None
13.(a) What are the public policy objectives for providing the exception?
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:
Regulated under the national laws of Contracting States
15. If the applicable law defines the concepts “experimental use” and/or “scientific research”, please provide those definitions by citing legal provision(s) and/or decision(s):
No definition
16.-19.
[Note from the Secretariat: response was not provided.]
20. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
None
21. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to change the legal framework of the exception are foreseen.
22. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 4: Preparation of medicines
23. If the exception is contained in statutory law, please provide the relevant provision(s):
Patent Regulations, R. 19:
“The following cases of the use of the patented invention shall not constitute an infringement of the Eurasian patent:
- use for the extemporaneous preparation, in a pharmacy, of a medicine on a medical prescription”.
24. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
None
25.(a) What are the public policy objectives for providing the exception? Please explain:
Protection of the human health, assurance of the access to medicines
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
26. Who is entitled to use the exception (for example, pharmacists, doctors, physicians, others)? Please describe:
- Pharmacists making the preparation in the pharmacy of the medicines on a medical prescription;
- Doctors and physicians making the medical prescription.
27. Does the applicable law provide for any limitations on the amount of medicines that can be prepared under the exception?
Yes
If yes, please explain your answer by citing the relevant provision(s) and/or decision(s):
“use for the extemporaneous preparation, in a pharmacy, of a medicine on a medical prescription”
28. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
None
29. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to change the legal framework of the exception are foreseen.
30. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 5: Prior use
31. If the exception is contained in statutory law, please provide the relevant provision(s):
Patent Regulations, R. 20:
“(1) Any natural person, legal entity, or organization assimilated thereto, which in good faith, before the filing date of the application or, where priority has been established, before the priority date of the invention, has been using an identical solution on the territory of a Contracting State, or has made the necessary preparations for such use, shall retain the right to proceed with that use free of charge, provided that the scope thereof is not increased.
The right of the prior user may only be transferred to another natural person, legal entity, or assimilated organization, together with the production unit in which the identical solution has been used, or the necessary preparations for the use thereof have been made.
(2) The right of the prior user shall apply only on the territory of the Contracting State in which such prior use has occurred.”
32. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
None
33.(a) What are the public policy objectives for providing the exception? Please explain:
In the patent system “first-to-file” it is important to respect a balance between the patent owner interest and the rights of the person who earlier created and used a similar technical solution.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
34. How does the applicable law define the scope of “use”? Does the applicable law provide for any quantitative or qualitative limitations on the application of the “use” by prior user? Please explain your answer by citing legal provision(s) and/or decision(s):
Defined under the national laws of Contracting States
35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:
According to the provisions of national laws of Contracting States
36. According to the applicable law, can a prior user license or assign his prior user’s right to a third party?
Yes
37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?
Yes
If yes, please explain what those conditions are:
The right of the prior user may be only transferred together with the production unit in which the invention has been used or the necessary preparations for the use thereof have been made.
38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?
Yes
If yes, please explain the conditions under which such use can continue to apply:
Patent Regulations, R. 201:
“(1) Any natural person, legal entity or organization assimilated thereto, which in good faith has begun to use the invention or an identical solution on the territory of a Contracting State, or has made the necessary preparations for such use, during the period between the date on which the right to the Eurasian application published in accordance with Article 15(4) of the Convention or the Eurasian patent granted have lapsed, and the date of publication of the information on the restoration, pursuant to Rules 39(1) and 39(2) of the Regulations, of the rights to the Eurasian application or Eurasian patent, shall retain the right to proceed with the use of this invention or solution identical thereto free of charge, provided that the scope thereof is not increased.
The right of the subsequent user may only be transferred to another natural or legal person, or organization assimilated thereto, together with the production unit in which the invention or identical solution has been used, or the necessary preparations for the use thereof have been made.
(2) The right of the subsequent user shall apply only on the territory of the Contracting State where the subsequent use has taken place and the legislation of which provides for such a right.”
39. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
None
40. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to change the legal framework of the exception are foreseen.
41. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 6: Use of articles on foreign vessels, aircrafts and land vehicles
42. If the exception is contained in statutory law, please provide the relevant provision(s):
Patent Regulations, R. 19:
“The following cases of the use of the patented invention shall not constitute an infringement of the Eurasian patent:
- use in the construction or operation of means of transportation of a member State of the Paris Union for the Protection of Industrial Property that is not a Contracting State, when such means of transportation temporarily or accidentally enter the territory of the Contracting State, provided that the invention is used exclusively for the needs of said means of transportation”.
43. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
None
44.(a) What are the public policy objectives for providing the exception? Please explain:
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
Implementation of the Art. 5 ter of the Paris Convention
45. The exception applies in relation to:
Vessels
Aircrafts
Land Vehicles
Spacecraft
46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):
Yes, “temporarily or accidentally”
47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):
Yes, “provided that the invention is used exclusively for the needs of said means of transportation”. (Patent Regulations, R.19).
48. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
None
49. Is the applicable legal framework of the exception considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen)? Please explain:
No amendments to change the legal framework of the exception are foreseen
50. Which challenges, if any, have been encountered in relation to the practical implementation of the exception in your country? Please explain:
[Note from the Secretariat: response was not provided.]
Section 7: Acts for obtaining regulatory approval from authorities
51.-59.
[No provisions.]
Section 8: Exhaustion of patent rights
60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:
Uncertain, please explain. According to the provisions of national laws of Contracting States .
Section 9: Compulsory licensing and/or government use
Compulsory licenses
65. If the exception is contained in statutory law, please provide the relevant provision(s):
EAPC, Art. 12:
“ (1) Compulsory licenses for the use of a Eurasian patent by third parties may be granted in conformity with the Paris Convention for the Protection of Industrial Property by the competent authority of a Contracting State with effect in the territory of that State.
(2) A decision to grant a compulsory license may be contested in the courts or other competent authorities of the contracting State in the territory of which the compulsory license has been granted.”
66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
67.-80.
According to the provisions of national laws of Contracting States.
Government use
81.-88.
According to the provisions of national laws of Contracting States.
Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
89.-100.
According to the provisions of national laws of Contracting States.
Section 11: Other exceptions and limitations
101.-103.
None
[End of questionnaire]
September 2011