December 02, 2020

Russia and Kazakhstan ratify the Protocol on Eurasian Industrial Design System

The Russian Patent and Trademark Office and the Intellectual Property Office of Kazakhstan have announced that on November 23, 2020, the laws ratifying the Industrial Design Protocol to the Eurasian Patent Convention were signed by heads of both states respectively.

The Eurasian Patent Convention initially entered into force on August 12, 1995, and currently has 8 countries privy thereto, namely Armenia, Azerbaijan, Belarus, Russia, Kyrgyzstan, Kazakhstan, Tajikistan and Turkmenistan. The new Protocol, which is set to establish the Eurasian system for the protection of industrial designs, was introduced to EAPO member states on September 9, 2019.

Russia and Kazakhstan have become the latest countries to ratify the Protocol, following Armenia which ratified on May 5, 2020, Azerbaijan which ratified on May 11, 2020, and Kyrgyzstan, which was the first party to submit its instruments of ratification to WIPO on October 15, 2020. Once the last office of the initial three countries has deposited its instruments of ratification, the Protocol will enter into force three months thereafter for those countries. Further countries which ratify will be included in the Protocol three months from the respective date of deposit of their instruments of ratification.

Once in force, this system will allow applicants to file one industrial design application, which must be filed in Russian, by paying one set of fees, covering all the states parties to the Protocol. An application may be filed with EAPO directly or any national patent office of a member state which will then forward the application on to EAPO.

Eurasian design applications should comply with protectability requirements set forth by the Protocol and will be subject to both formal and substantive examination. Once a filing date is established, the design will then be published and examined as to substantive grounds inclusive of the validity of the design application and the right of priority, whereby the Paris Convention applies. Once granted, the design application will certify the authorship, priority and design rights which will be valid in all member states of the Protocol for an initial period of five years, renewable four times thereafter for five-year periods, with the maximum validity of 25 years as of the filing date.

The ratification to the Protocol for Russia and Kazakhstan demonstrates an ongoing modernisation of the intellectual property field in both countries, and is hoped to encourage further interest in filing for IP rights in the region.

Author: Danielle Carvey