PETOŠEVIĆ

May 2021

Russian v. Eurasian Design Systems: Procedure and Fee Comparison

The Eurasian Patent Office started accepting Eurasian industrial design applications on June 1, 2021, when the Eurasian design protection system under the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention became operational, allowing applicants to obtain protection simultaneously within the territory of the states where the Protocol so far entered into force – Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia.

In order to illustrate the differences between filing a design application directly in a participating jurisdiction and filing a Eurasian design application, as well as the potential advantages and disadvantages of these two options, we prepared the following table comparing the Russian and Eurasian design system procedures and requirements:

The differences in official fees when choosing the national and the Eurasian routes can be seen in the tables below:

Besides Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia, where the Eurasian design system became operational on June 1, 2021, 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.

As EAPO announced on their website, the first Eurasian design application was submitted by the Roscosmos State Corporation for Space Activities, a state corporation of the Russian Federation responsible for space flights, cosmonautics programs, and aerospace research.

By: Tatyana Kulikova

For more information, please contact Tatyana Kulikova at our Russia office.

Hungary Amends Copyright Law

The amendments to the Hungarian Copyright Act were published in the Hungarian Official Gazette on May 6, 2021. The amendments aim to transpose into national legislation the EU Directive 2019/790 on copyright and related rights in the Digital Single Market (DSM Directive) and the Directive 2019/789 (SatCab II Directive), which are part of the European Union copyright reform. The most important changes, most of which entered into force on June 1, 2021, are described below.

Liability of Internet Platforms

Under the amendments, the ‘online content-sharing service provider’ is defined as the provider of an information society service whose main or one of the main purposes is to store and communicate to the public a large amount of copyright-protected works or other protected subject matter uploaded by its users, which it organizes and promotes for profit-making purposes.

The limitation of liability relating to intermediary service providers in relation to the possibly infringing content is no longer applicable to online content-sharing service providers in cases when they make works protected by copyright or related rights publicly available or when they perform an act of communication to the public in relation to works which have been uploaded by the users of the platform service.

Online content-sharing service providers will therefore be liable for the unauthorized acts of communication to the public, including making available of copyright-protected works and other subject matter to the public, unless the service providers demonstrate that they:

• have made best efforts to obtain an authorization;
• have made, in accordance with high industry standards of professional diligence, best efforts to ensure the unavailability of specific works and other subject matter for which the right holders have provided relevant and necessary information;
• have acted expeditiously, upon receiving a sufficiently substantiated notice from the right holders, to disable access to the relevant works; and
• have made best efforts to prevent their future uploads.

The liability of content-sharing service providers is dependent on their size, number of users, financial standings and annual turnover, as well as the type and the number of uploaded works.

New Category: Works That Are No Longer Commercially Available

This new category defines a work protected by copyright or related rights which is not likely to be available to the public through usual commercial channels.

The permission from the author or related right holder is not required for the following:

• Reproduction and communication to the public related to a work that is not commercially available; and
• Adaptation and distribution of software, where the use is for the purpose of making available a work which is not commercially available and is a permanent part of the collection of a cultural heritage institution.

This amendment will make it easier for cultural heritage institutions (e.g. museums, libraries and archives) to use works which are no longer commercially available.

Press Publishers Vis-à-Vis Platforms

Another important change is the introduction of a press publisher's neighboring right. Due to the increase in online news consumption, major online platforms now generate more revenue from online advertising. This legislative change grants press publishers exclusive rights over the use of their publications online, enabling them to license their work, claim revenues from online use of their publications, and enforce their rights in the digital environment.

New Forms of Free Use

A new free use exception for text and data mining has been introduced, as well as a parody exception, meaning that certain copyright-protected content can be freely adapted or ‘parodied’ without the permission of the author of the original work. Further amendments include the modernization of private copying (e.g. the abolition of the exclusive right to copy an entire book by handwriting only).

Changes in Formal Requirements Regarding Software License Agreements

It is no longer obligatory to conclude non-exclusive software license agreements in writing; they will also be deemed valid and enforceable if concluded verbally or as click-through agreements.

Obligation to Provide Annual Reports on the Use of Licensed Works

As of January 1, 2022, the licensees that are party to a license agreement will be obliged to provide the right holder with detailed information, at least once a year, on the use of their work, the manner and extent of use, the revenue from the use of the work for each type of use separately, and the remuneration payable to the author. This obligation is not applicable for works created under an employment contract and for computer programs (software).

Changes to Integrity Protection

Under the former Copyright Act, any distortion, mutilation or other alteration of the author’s work was considered an infringement of moral rights. Under the new regulations, only the acts of distortion, mutilation or other alteration of the author’s work which are prejudicial to the author’s honor or reputation will be considered an infringement of the author’s moral rights.

By transposing the two EU Directives, the amendments clarify the liability of Internet platforms regarding the use of copyright-protected content uploaded on their platforms, and strengthen the position of press publishers, authors and performers. The amendments also provide for fair remuneration for authors and performers for the use of their licensed and assigned rights.

By: Tímea Torzsás

For more information, please contact Tímea Torzsás at our Hungary office.

EAPO Amends Patent Regulations under the Eurasian Patent Convention

Significant amendments to Patent Regulations under the Eurasian Patent Convention entered into force on January 1, 2021. The amendments relate to the right of priority, the Eurasian patent term extension, formal and substantive examination and patent search procedures, while they also clarify certain other issues. On April 24, 2021, further amendments to the Regulations entered into force, mostly concerning formal changes and requirements for Eurasian patent attorneys.

A detailed review of the most important amendments is provided below. In our view, the amendments concerning the sufficiency of disclosure and the industrial applicability requirements are the most significant as they may strengthen the position of Eurasian patent holders in invalidation actions against their patents in Russia.

Right of Priority

The requirements for restoring the right of priority have been clarified. The Eurasian Patent Office (EAPO), which acts as the receiving office for international patent applications, now applies the “unintentional” criterion. Applicants may file a request to restore the right of priority within two months from the priority period expiration date. While the reasons for the failure to file an international application within the priority period previously had to be filed along with the Eurasian application, applicants can now provide these reasons after filing the application either (i) along with the request to restore the right of priority or (ii) after filing this request and within the time limits indicated in the notification from the EAPO. The official fee for making this request is EUR 178 (USD 218).

Term Extension

Extending the patent term is now only possible with respect to claims related to a product and its use. According to the amendments, a Eurasian patent term can be extended only if the extension applies to the invention related (i) to the product protected by the Eurasian patent, the use of which has been permitted by the authority of the relevant Contracting State, and (ii) to the use of that product specified in this permission.

Claim Drafting

Two amendments have been made to claim drafting requirements:

• Indications such as "pharmaceutical" or "therapeutic" can now be used as generic terms reflecting the purpose of inventions relating to medical products;

• Product-by-process claims are now allowed – it is now possible to protect a product through the process by which it is obtained, provided that the product has new or enhanced characteristics due to this process. Product-by-process claims must include both the process and the product characteristics which distinguish this product from those obtained by other methods known in the prior art.

Formal Examination

According to the amended Regulations, the following additional aspects will be checked by the EAPO during the formal examination:

• Representation according to Rule 30 of the Regulations;
• Establishment of the Eurasian application filing date according to Rule 33 of the Regulations; and
• Priority claim according to the amended Rule 6 of the Regulations. 

The EAPO used to check if the subject matter is not patentable according to Rule 3(3) of the Regulations, but now this part of the examination has been excluded. Therefore, applications covering non-patentable inventions cannot be rejected during the formal examination. Instead, non-patentable subject matter will merely be excluded from patent search, which will be specified in the patent search report. The patent search report may be replaced with a declaration stating that it is impossible to carry out a meaningful search.

Patent Search Procedure

It is expected that the EAPO will serve as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation Treaty (PCT) system. For this reason, most amendments in the Regulations concern patent search procedures.

Copies of the documents specified in a patent search report will now be provided to the applicant in electronic form. Simultaneously with the patent search report, the EAPO may prepare a preliminary opinion on the claimed invention’s compliance with the patentability criteria and the Eurasian application’s compliance with the requirements of the Eurasian Patent Convention and the Regulations. The opinion will be sent to the applicant along with the patent search report but it will not be published.

Examiners may now carry out an additional patent search for international applications at their own discretion. Additionally, it is now possible to carry out a patent search for all groups of inventions if they do not meet the unity requirement, provided that an additional fee of EUR 100 (USD 122) is paid for each group.

Substantive Examination

Under the amendments to Rule 47(2) of the Regulations, the sufficiency of disclosure requirement according to Rule 21¹(3) was clarified and expanded. A Eurasian application meets the sufficiency of disclosure requirement if the specification or the prior art documents contain information on the means and methods allowing the implementation of the invention and the achievement of the technical effect indicated in the specification. The industrial applicability requirements were also amended – an invention is now considered industrially applicable if the intended purpose of the claimed invention and the possibility of realizing this purpose by means of the invention are indicated in the Eurasian application. It turns out that, while insufficient experimental evidence in the specification was previously considered incompliant with the industrial applicability requirement, it will now be considered incompliant with the sufficiency of disclosure requirement.

This new approach to assessing sufficiency of disclosure and industrial applicability may change the current practice of invalidating Eurasian patents in Russia. Because insufficient disclosure is not applicable as an invalidity basis for Eurasian patents before the Russian IPO’s Chamber of Patent Disputes and the amended Regulations no longer provide for challenging industrial applicability based on insufficiency of disclosure, the position of Eurasian patent holders in Russia is now strengthened.

Voluntary Restrictions

The amended regulations provide more options for voluntary restrictions of a Eurasian patent under the post-grant amendment procedure. While it was previously only possible to restrict a Eurasian patent by excluding one or more claims or alternatives, it is now permitted to restrict the scope of an independent claim with the features of dependent claims, provided that such restrictions do not expand the scope of exclusive rights. Also, if the patent was invalid in a Contracting State on the date of filing the request for voluntary restriction, the amendments made to this patent will be effective in this Contracting State after the patent restoration.

Other Changes

Both the four-month term in an appeal procedure and the six-month term in an administrative revocation procedure are now calculated from the date the EAPO sends the notification of the acceptance of the objection or the appeal, and not from the date the EAPO receives the objection or the appeal.

The EAPO also clarified the terms and reasons for withdrawing a Eurasian application and added new grounds for rejecting an application. Now, a final rejection can also be issued in case the applicant refuses to eliminate the parts of the claims which do not comply with the Regulation requirements, or in case the applicant refuses to implement the EAPO’s suggested amendments.

The following additional official fees have been introduced:

• For the late payment of the grant fee; and
• For publishing a new specification of the Eurasian patent if the new specification contains more than 35 pages.

By: Natalia Osipenko

For more information, please contact Natalia Osipenko at our Russia office.

Turkmenistan Accedes to Patent Law Treaty

On April 19, 2021, the Government of Turkmenistan deposited its instrument of accession to the Patent Law Treaty with the Director General of the World Intellectual Property Organization, becoming the 43rd contracting party to the Treaty.

The treaty, which is designed to harmonize and streamline formal procedures set by national or regional patent offices for the filing and maintenance of patents, will enter into force in Turkmenistan on July 19, 2021.

Prepared by: Djurdja Krivokapić

For more information, please contact mail@petosevic.com.

Kazakh Patent Data Added to PATENTSCOPE

PATENTSCOPE, WIPO’s free patent search system, started offering access to Kazakh national patent documents on April 27, 2021.

PATENTSCOPE now offers patent data of 72 national offices.

Prepared by: Djurdja Krivokapić

For more information, please contact kazakhstan@petosevic.com.

More National IPR Applications in Hungary in 2020

The Hungarian Intellectual Property Office (HIPO) recently published its annual report for 2020, which shows an increase in the number of national applications for most types of IP rights and a decrease in the number of applications for European patent validations and international trademarks designating Hungary.

Compared to 2019, the number of national patent applications increased by 1.3%, the number of supplementary protection certificate applications by 1.8%, the number of design applications by 4.5% (with the number of designs within those applications increasing by 22.6%), and trademark applications by 2.4%. However, the number of applications for European patent validations and international trademarks designating Hungary showed a significant decrease of 11% and 27%, respectively.

At the end of 2020, the number of valid patents in Hungary was 33,566, which is 5% higher than the previous year. The numbers of valid national utility models and trademarks remained stable at 837 and 54,251, respectively, while the number of designs decreased by 9.4% to 3,075. The number of international trademarks designating Hungary decreased by 4% to 80,017. The number of EU trademarks (EUTMs), which are also valid in Hungary, is increasing from year to year – in 2020, the EUIPO received 176,000 EUTM applications (10.2% more than in 2019) and registered more than 153,000 EUTMs (9% more than in 2019).

The annual report also highlights the progress made by the HIPO in digitalizing its operations – during the COVID-19 pandemic, the HIPO encouraged e-filing, e-communication and the use of electronic databases. 60% of trademark applications were filed electronically in 2020, as opposed to 45% in 2019.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

Ukrainian Authorities Halt Production of Counterfeit Clothing

The Ukrainian police authorities have recently shut down counterfeit clothing production established in several clandestine workshops in the city of Odessa and the Odessa region in southern Ukraine.

During the raids, the police seized counterfeit clothing infringing numerous well-known brands, manufacturing equipment, textiles, labels, packaging material, computers, electronic data storage devices, cash and records of financial transactions related to this illegal business activity which was led by eight foreign citizens.

The counterfeit goods were sold at the local outdoor market and online, with orders being delivered throughout Ukraine and abroad through postal services and bus transportation.

Prepared by: Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Serbian Customs Destroy 250,000 Counterfeit Items So Far This Year

According to recently released data, since the beginning of 2021 Serbian Customs detained over 100,000 goods believed to be counterfeit, most of them being apparel items, and destroyed almost 250,000 counterfeit items. Over the course of 2019 and 2020, 800,000 goods believed to be counterfeit were detained, and over 1 million counterfeit items as well as 4.5 tons of counterfeit textiles were destroyed.

Most of the counterfeits detained by Serbian Customs in recent years are apparel, footwear and cosmetics, but there have also been numerous detentions of furniture, medicines and other goods. Among the detained goods, the trademarks which are most commonly infringed include Adidas®, Nike®, Converse®, Tommy Hilfiger®, Louis Vuitton®, Philipp Plein®, Hummel®, Apple®, Armani®, CAT®, Levi’s®, Hugo Boss® and Michael Kors®.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Upcoming PETOŠEVIĆ Webinar: Brand Protection and Enforcement in the Western Balkans

PETOŠEVIĆ will hold a complimentary webinar on Tuesday, June 15, 2021 at 5:00 PM CEST to discuss brand protection and enforcement in the six Western Balkans states, all on their path to EU membership, at various stages of the accession process.

Our professionals from Albania, Bosnia and Herzegovina, Kosovo, Montenegro, North Macedonia, and Serbia will give valuable insights and share best practices and tips to highlight what brand owners need to know and act on in this everchanging region. We will also discuss the most recent changes in trademark regulations and how the legislation is enforced before the courts and other enforcement bodies.

Join us for this 45-minute presentation that will be followed by a short question and answer session.

To confirm your attendance, email Marketing Coordinator Danilo Bakic (state your full name, title and company name) and you will receive the Zoom link for joining our live event. If you cannot make the live time of the webinar, the recording of the non-interactive part will be available upon request.