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15.03.2011
News-Archiv, Weißrussland

Kommentar zu Änderungen im Patentgesetz


Comments on the Law of the Republic of Belarus “About Amendments and Additions to Some Laws of the Republic of Belarus Relating to the Protection of Inventions, Utility Models and Industrial Designs” of July 15, 2010

by Daria D. Lando - LexPatent, Minsk, Belarus www.lexpatent.by

On February 3, 2011 there came into force the Law of the Republic of Belarus “About Amendments and Additions to Some Laws of the Republic of Belarus Relating to the Protection of Inventions, Utility Models and Industrial Designs” of July 15, 2010 (hereinafter referred to as the Law). The Law makes amendments to the present system of the legal protection and use of inventions, utility models and industrial design, which has been reflected in the Law of the Republic of Belarus “About Patents for Inventions, Utility Models, Industrial Designs” of December 16, 2002 (with amendments of December 24, 2007). In particular, there has been specified the procedure of determining the patent terms for inventions, utility models, industrial designs, the patentability criteria of industrial designs and the scope of legal protection thereof; there have been filled the gaps with regard to employee patents, specified the procedure of granting and nullifying patents; the examination procedure of disputes between applicants and the patent authority have been brought into line with the Law of the RB “About the Basis of Administrative Procedures” of October 28, 2008.

The provisions of the Law shall be applied to applications for the grant of patents for inventions, utility models and industrial designs, the examination of which has not been completed before the date of coming into force of the Law with regard to legally significant actions taking place after the Law comes into force (Art. 4 of the Law).

Inventors, Patent Owners

The legislator has specified the presumption of the inventorship with regard to inventions, utility models and industrial designs by including Art. 5 Part 2 Item 1 into the Law of the Republic of Belarus “About Patents for Inventions, Utility Models, Industrial Designs” of December 16, 2002 (with amendments and additions of July 15, 2010) (hereinafter referred to as the Patent Law), i.e. the person indicated in the application as inventor shall be considered the inventor of the invention, utility model or industrial design, if there has not been proven otherwise.

According to Art. 6 of the Patent Law the classical list of patent owners (inventor, co-inventor, employer, legal successors of said persons) has been supplemented by natural and (or) legal persons, to whom the right to obtain the patent has been transferred before the date of the registration of the invention, utility model or industrial design by the inventors (co-inventors of the invention, utility model or industrial design or by a natural or legal person, who is the employer of the inventor of the invention, utility model or industrial design, in cases provided by the norms with regard to employee subject matters.

Employee Patents, Utility Models, Industrial Designs

A special attention has been paid to the problem of the transfer of rights to employee inventions, utility models and industrial designs to the employee and the payment of remuneration to the employee in cases when the right to obtain a patent has not been transferred to the employee. According to Art. 6 Item 3 parts 3-4 of the Patent Law if within 3 months from the date of a written notification, wherein the employee informs the employer about a developed invention, utility model or industrial design, the employer does not file an application with the patent authority, does not inform the employee about keeping the invention, utility model or industrial design secret or about the transfer of the right to obtain a patent to another person, the right to obtain a patent passes to the employee.

If the employer obtains a patent for an employee invention, utility model or industrial design or decides to keep it secret or transfer the right to obtain a patent to another person or does not obtain a patent for the application, that he has filed, for reasons depending on him, the employee has the right to remuneration. The procedure and conditions of the payment of the remuneration as well as the lower limit amount of the remuneration shall be determined by the Council of Ministers of the Republic of Belarus.

Industrial Designs

The legislator has amended his approach to the determination of the scope of legal protection granted by an industrial design patent. According to Art. 1 Item 6 of the Patent Law the scope of legal protection granted by an industrial design patent shall be determined by the graphical depiction of the product (model, drawing).

The Constitution Court of the Republic of Belarus indicates in its decision No. P-484/2010 of July 6, 2010 that “said rule will simplify the execution of application documents for the grant of a patent and at the same time will allow putting on the market even products which have only slight differences in the appearance with regard to patented products without an infringement of rights of the patent owners”.

The amended approach to the determination of the scope of legal protection of industrial design induced an amendment of norms about the use of the object. According to Art. 36 Item 3 of the Patent Law a product shall be considered comprising a patented industrial design, if the  appearance thereof does not differ from the  appearance of the product shown on the depictions.

There have been specified the conditions of granting legal protection to industrial designs. An industrial design shall be considered novel, if it is not known from sources of information, which have become available to the public in the world before the priority date of the industrial design (Art. 4 Item 1 Part 2 of the Patent Law). An industrial design shall be considered original, if the peculiarities of the  appearance of the product are the result of the creative work of the designer (co-designers) of the industrial design (Art. 4 Item 1 Part 4 of the Patent Law).

Art. 15 Item 1 of the Patent Law specifies the requirement of unity of the industrial design. An application for an industrial design shall refer to one industrial design or a group of industrial designs pertaining to one class of the International Classification for Industrial Designs under the Locarno Agreement of October 8, 1968.

Application for the grant of patents for inventions, utility models, industrial designs and carrying out the examination of the applications

The Patent Law provides that the requirements to the application documents for the grant of patents for inventions, utility models, industrial designs, the examination procedure for such applications and the decisions on the results thereof shall be established by the Council of Ministers of the Republic of Belarus (Art. 12). The examination of applications shall be carried out by the patent authority on the basis of the Patent Law and the orders of the Council of Ministers of the Republic of Belarus (Art. 18, 23, 24 of the Patent Law).

The legislator limited the list of documents to be filed with applications for the grant of a patent for an invention or utility model by excluding “other materials, if they are necessary for understanding the essence of the invention”. The enclosure of drawings with the application is obligatory only in case they are necessary for understanding the essence of the subject matter of intellectual property (Art. 13 Item 2.4, Art. 14 Item 2.4 of the Patent Law).

The list of documents, which has to be enclosed with an application for the grant of an industrial design patent, has been amended.  It is no longer required to submit technical drawings of the general view of a product, an ergonomic scheme or a specification.

An industrial design application shall comprise the following:

  1. a request for the grant of a patent with an indication of the designer (co-designers) of the industrial design and the person(s) in whose name(s) the patent is claimed as well as their place of residence or location;
  2. a set of depictions giving a complete detailed conception of the  appearance of the product;
  3. a description of the industrial design comprising the essential features thereof. The essential features of the industrial design are features providing for esthetic and/or ergonomic peculiarities of the  appearance of the product, the form and configuration, ornamentation and combination of color thereof.

According to Art. 16 of the Patent Law the priority of industrial designs shall be determined by the date of filing an industrial design application comprising a request for the grant of a patent and a set of depictions with the patent authority. Furthermore, it shall be considered that additional materials alter the essence of the industrial design claimed, if they alter the appearance of the product submitted on the depictions filed originally (Art. 17 Item 1 part 4 of the Patent Law).

The Law has specified the rules for submitting documents proving the payment of patent fees, the legal effects of not submitting said documents within the established term have been amended. Simultaneously with the application for the grant of a patent for inventions, utility models or industrial designs or within two months from the date of receipt of such an application by the patent authority there shall be submitted a document proving the payment of patent fees in the amount established or the remission of fees, or a document proving a partial payment of patent fees together with documents proving that there are reasons for reducing the fees. If said documents are not filed within the term established, there shall be taken the decision to deny the acceptance of the application (Art. 13 Item 4, Art. 14, Item 4 and Art. 15 Item 4 of the Patent Law).

Art. 16 Item 3 part 3 of the Patent Law has eliminated the discrepancies in the determination of terms for informing about claiming the convention priority with regard to applications for utility models and industrial designs. Applicants who would like to claim convention priority shall indicate that when filing the application for industrial designs and utility models or within two months from the date of receipt of the application for the grant of a utility model or industrial design patent by the patent authority. A legalized copy of the first application is not required.

There have been included additional rules for claiming priority with regard to applications for the grant of invention, utility model or industrial design patents. Priority may be established on the basis of the date of filing of a previous application of the same applicant that discloses the essence of the invention, utility model or industrial design and that has not been withdrawn before the date of filing the application, for which the priority has been claimed, if the application has been filed not later than 12 months from the filing date of the previous application for the invention and not later than 6 months from the filing date of the previous application for the utility model or industrial design. If the application claims priority of an application filed prior to said terms, a decision to refuse the grant of a patent shall be taken (Art. 16, Item 5 of the Patent Law).

If the examination of the application establishes that identical inventions, utility models or industrial designs have the same priority date, a patent shall be granted to the application appointed by an agreement between the applicants. The applicants shall inform the patent authority about the agreement met within two months after they have received the respective notification of the patent authority. If such an agreement is missing, a decision to refuse the grant of a patent shall be taken for the applications. If a patent is granted, all inventors of the identical inventions, utility models or industrial designs shall be indicated as co-inventors (Art. 16, Item 8 of the Patent Law).

The decision of the Constitution Court of the Republic of Belarus No. P-484/2010 of July 6, 2010 has determined that although the norm that had earlier allowed to the applicants to resolve the dispute before court in such cases has been cancelled, the constitution right of the applicants to the protection of rights and liberty by a competent, independent and impartial court (Art. 60 part 1 of the Constitution) may be realized by appealing the decision of the patent authority about the refusal of the grant of a patent to the Appeal Council of the patent authority and/or at a court.

There has been specified the term for withdrawing applications for the grant of an invention patent by the applicant. According to Art. 18 Item 4 of the Patent Law applications for inventions may be withdrawn by the applicant before the date of the registration of the patent.

  • The term for forwarding the following written notifications to the applicant by the patent authority has been amended:
  • notification about the established filing date for invention applications, when priority has been claimed,
  • notification about establishing the invention priority,
  • notification about establishing the utility model priority,
  • notification about establishing the industrial design priority,
  • notification about the decision taken as a result of the preliminary examination of invention applications,
  • notification about the decision taken as a result of the examination of utility model applications,
  • notification about the decision taken as a result of the examination of industrial design applications,
  • notification about the decision taken as a result of the patent examination.

The above notifications shall be forwarded within five days from the date of the decision.

Forwarding of office actions on the stage of the preliminary examination of invention applications has been regulated newly (Art. 19 Item 5 of the Patent Law). If documents submitted or data comprised therein do not comply with the established requirements, the patent authority shall forward an office action to the applicant and invite him to submit documents drawn up according to the requirements within a two months term from the date of receipt of the office action. This term may be extended upon applicant’s request but not longer than for three months provided that the request has been submitted within the term. If the applicant has not submitted the requested documents or a request for the extension of the term within the term set, there shall be taken the decision to refuse the grant of a patent for the invention and the applicant shall be informed thereon.

The rules for the publication of information about applications for the grant of invention patents have been specified (Art. 20 of the Patent Law). The information about invention applications, the preliminary examination of which has been completed with a positive decision, shall be published in the official bulletin 18 months after the date of filing the application or, if priority has been claimed, the earliest priority date. Upon applicant’s request the patent authority may publish information about invention applications before said term.

The rules for filing requests for the patent examination of invention applications have been specified, the effect of not filing such a request has been amended (Art. 21 of the Patent Law). The applicant or any interested person shall file to the patent authority a request for the patent examination of the invention application when filing the invention application or within three years from the date of filing the application. If a request for the patent examination has not been filed within said term, there shall be taken the decision to refuse the grant of a patent.

If in the course of the patent examination the patent authority establishes that the data comprised in the documents that shall be contained in the application do not comply with the established requirements, it has the right to request the applicant to submit the documents drawn up according to the requirements as well as an amended set of claims.

Within one month from the date of receipt of said office action of the patent authority the applicant has the right to request the patent authority to submit copies of materials cited during the patent examination of his invention application.

The documents requested by the patent authority shall be submitted without any amendments of the essence of the invention within two months from the date of receipt of the office action by the applicant or receipt of copies of materials cited with regard to the invention application. Said term may be extended upon request of the applicant but only up to a maximum of twelve months provided that an extension request has been filed within said term.

If the applicant does not submit the requested documents or a request for the extension of the term for responding to the office action within the term set, there shall be taken the decision to refuse the grant of a patent for the invention.

The documents submitted by the applicant as regards the part which alters the essence of the invention claimed shall not be considered in the patent examination of the invention application and the applicant shall be informed thereon.

For the first time the legislator has regulated the situation when an applicant files several applications for identical inventions. If said fact has been established in the course of the patent examination, a patent shall be granted only for the invention application having a prior time rank.

The term for conducting a patent re-examination has been reduced to two months (six months formerly) from the date of receipt of the corresponding applicant’s request by the patent authority.

There has been specified that the amount and the procedure of paying compensation to the patent owner after the grant of the patent in case when his patent has been used by others during the provisional legal protection thereof shall be established by court in cases of a dispute (Art. 22 Item 2 of the Patent Law).

The legal effect of filing applications for solutions which do not represent subject matters of utility models has been amended. If said fact has been established in the examination of the utility model application, the patent authority shall take the decision to refuse the grant of a patent (Art. 23 Item 5 of the Patent Law).

If in the examination of utility model or industrial design applications there has been established that the documents or data contained therein do not comply with the requirements, the patent authority shall forward an office action to the applicant and invite him to submit missing documents or documents drawn up according to the requirements within a two months term from the date of receipt of the office action. Said term may be extended upon request of the applicant but only to a maximum of twelve months provided that an extension request has been filed within said term.

If the applicant does not submit the requested documents or a request for the extension of the term within the term set, there shall be taken the decision to refuse the grant of a patent and the applicant shall be informed thereon (Art. 23 Item 6 and Art. 24 Item 6 of the Patent Law).

If the applicant does not inform which solution shall be examined and does not submit amended documents within two months after receipt of a notification about the non-compliance of the utility model with the requirement of unity, the decision to refuse the grant of a patent shall be issued (Art. 23 Item 9 part 2 of the Patent Law).

The procedure of the examination of applications for the grant of industrial design patents has been specified (Art. 24 of the Patent Law). In particular, in the examination of industrial design applications there shall not be considered additional materials submitted by the applicant, if said materials change the appearance of the product submitted in the depictions as originally filed. Such materials may be drawn up by the applicant as an independent industrial design application.

If within a two months term after receipt of a notification of the patent authority about the industrial design not complying with the requirement of unity the applicant does not inform which industrial design shall be examined and does not submit amended documents, a decision to refuse the grant of a patent shall be taken.

The terms for appealing decisions of the patent authority taken as a result of the examination of applications have been extended and the terms for the examination of such appeals have been reduced. According to Art. 25 Item 2 of the Patent Law appeals to the Appeal Council shall be lodged by the applicant within one year from the date of receipt of the corresponding decision of the patent authority or receipt of copies of the materials cited by the patent authority. An appeal shall be examined within one month from the date of receipt thereof.

Art. 26 Item 2 regulates in detail the rules for converting invention and utility model applications.

If an invention application is converted into a utility model application, the priority and the date of filing the invention application shall be maintained. If a utility model application is converted into an invention application, the priority and the date of filing the utility model application shall be maintained (maintenance of priority and date of filing of the first application).

If a convention priority has been claimed for a utility model application, when converting the utility model application into the invention application the applicant shall submit a copy of the first application for the utility model filed in a member-state of the Paris Convention for the protection of industrial property of March 20, 1883 within three months from the date of filing the request for the conversion.

If the terms for submitting documents drawn up accordingly in the preliminary and patent examination for the grant of an invention patent have been reinstated upon a request of the applicant, the patent authority shall nullify the decision to refuse the grant of a patent taken earlier (Art. 27 Item 3 of the Patent Law).

Registration of inventions, utility models and industrial designs, publication of information about patents and the grant of patents

The legal effect of not submitting a document proving the payment of patent fees in the established amount for the registration of inventions, utility models and industrial designs and the grant of patents has been amended. In such cases the invention, utility model or industrial design shall not be registered in the official registers and patent certificates shall not be issued, for the corresponding applications there shall be taken the decision to refuse the grant of a patent (Art. 28 Item 4 of the Patent Law).

For the first time there has been established a specific term for the issuance of invention, utility model and industrial design patent certificates. According to Art. 30 Item 1 of the Patent Law the patent authority shall issue a patent certificate to the patent owner within five days from the date of the publication of the information about the invention, utility model or industrial design patent.

The situation has been regulated, when one and the same applicant files an invention application and a utility model application, wherein both applications have the same priority date and are identical with each other. After the grant of a patent for one of these applications the grant of a patent for the other one is only possible, if the owner of the patent, which has been granted earlier, submits to the patent authority a request for terminating the validity of the patent regarding the identical invention or utility model. The validity of the prior patent regarding the identical invention or utility model shall be terminated from the date of publication of the information about the grant of a patent for the other application. The information about the grant of a patent for the invention or utility model application and the information about the termination of the validity of the prior patent for the identical invention or identical utility model shall be published simultaneously (Art. 30 Item 3 of the Patent Law).

For the first time the Patent Law provides for the legal status of the Official Bulletin, i.e. the official publication of the patent authority. The official bulletin shall be issued as a print and (or) as an electronic publication. The official bulletin as electronic publication shall be installed on the official site of the patent authority in Internet (Art. 40-1 of the Patent Law).

There has been made an attempt to settle the conflict of exclusive rights derived from a national patent and exclusive rights derived from a Eurasian patent. According to Art. 36 Item 8 of the Patent Law if a Eurasian patent and a patent of the Republic of Belarus for identical inventions or identical invention and utility model, which have the same priority date, are owned by different patent owners, such inventions or invention and utility model can be used only under compliance of the rights of all patent owners.

Extension of the patent term for inventions, utility models and industrial designs

The Patent Law provides for a new procedure of the extension of invention patents (Art. 1 Item 3). If between the date of filing an application for the grant of an invention patent referring to a medicament, pesticide or agrochemical, for which use a marketing authorization of a corresponding authority is necessary according to the legislation, and the date of issuance of the first authorization more than 5 years have elapsed, the patent term for the invention may be extended by the patent authority upon a request of the patent owner. The patent term may be extended for a term corresponding to the period elapsed between the date of filing of the invention application and the date of issuance of the first authorization for the use of the medicament, pesticide or agrochemical, wherein the invention is used, after deduction of five years. The patent term cannot be extended for more than five years. A request for the extension of the patent term shall be filed during the validity term of the patent before the expiry of six months from the date of issuance of the first marketing authorization for the use of the medicament, pesticide or agrochemical, wherein the invention is used, or from the date of publication of the information about the patent in the official bulletin of the patent authority, depending on which date is later.

Please note that the Law provides for corresponding amendments of Art. 1002 “The patent term” of the Civil Code of the Republic of Belarus.

If as of on February 3, 2011 the term for filing a request for the extension of the patent term has expired, the request can be filed not later than six months from the date of coming into force of the Law provided that as of the date of filing of the request the twenty-years-term from the date of filing the application for the grant of a patent has not expired (Art. 3 of the Law).

Regarding utility model and industrial design patents there has been specified that a request for the extension of the patent term may be filed with the patent authority before the expiry of the patent term.

The procedure of the extension of the patent term for inventions, utility models and industrial designs shall be established by the Council of Ministers of the Republic of Belarus, if not established differently by the President of the Republic of Belarus.

Invalidity of patents

The Law provides for a strict differentiation of the nullification of a patent and the early termination of the patent term (Art. 33-34 of the Patent Law).

For the first time the Patent Law establishes the date, from which patents shall be considered invalidate. According to Art. 33 Item 5 of the Patent Law invention, utility model and industrial design patents, which have been considered invalidate completely or partially, shall be considered as such as from the date of filing the application to the patent authority. Furthermore, there has been established that license agreements made on the basis of patents, which have been afterwards considered invalidate, terminate from the date of the decision about the invalidation of the patent.

Unfortunately, the legal effects of considering patents invalidate and termination of license agreements made on the basis thereof have not been established. In the opinion of the Constitution Court of the Republic of Belarus this fact does not comply with the requirements of legal clarity provided by the constitution principles of the supremacy of the law.

Registration of agreements

The Law provides that agreements for security interests certified by patents are not subject to registration in the Republic of Belarus. According to Art. 36 Item 6 of the Patent Law subject to registration are now as before license agreements and agreements about the transfer of rights to inventions, utility models and industrial designs. The law provides that amendments to registered license agreements, security interest agreements certified by patents shall be registered at the patent authority. The procedure of registration shall be established by laws, if not established differently by legislation acts.

Compulsory licenses

The term of non-using patented inventions, utility models and industrial designs in case of the grant of compulsory licenses shall be calculated from the date of the publication of the information about the patent (Art. 38 of the Patent Law) and not the date of the issuance of the patent certificate.

Patenting abroad

The rules for calculating the term for patenting abroad have been amended. According to Art. 32 Item 2 part 2 of the Patent Law if the patent authority does not issue a prohibition within a three months term from the date of filing the application, applications may be filed abroad.