Benefits of Eurasian design protection

The system is an up-to-date, reliable and effective way to protect design rights on the regional level, explains Arman Sauganbayev Gorodissky & Partners (Kazakhstan office).

The Eurasian design protection system remains one of the most notable issues for discussion in terms of IP development in the Eurasian region.

The Eurasian design protection system started to function in June 2021, being a legal development of the Eurasian Patent Convention (EAPC) signed in 1994. It now continues to evolve to make the procedure of obtaining legal protection for designs in Eurasia more flexible and advantageous for users.

The Eurasian design protection system is based on the Protocol on Protection of Industrial Designs to the EAPC (Protocol) and is now valid for seven countries: Russia, Belarus, Tajikistan, Armenia, Azerbaijan, Kyrgyzstan and Kazakhstan.

This means that filing an Eurasian design application right now would result in obtaining an Eurasian design patent having unified protection in all mentioned countries without the necessity to validate it by national patent offices.

Thus, the Eurasian design protection system appears to be a very attractive instrument not only for national applicants but also for foreign companies, providing effective and reliable protection of design rights in the respective countries of the Eurasian region.

That said, there is an important notice for foreign applicants that should be taken into consideration, namely, applicants not domiciled in member states of the Protocol should be represented by Eurasian patent attorneys duly registered with the Eurasian Patent Office (EAPTO).

According to the Annual Report of the EAPTO for 2022 the number of Eurasian design applications doubled in comparison with the year 2021 and amounted to 233 applications for 639 designs. Applicants from the USA, Germany, Finland, Turkey, Canada, Hungary and other countries have already taken advantage of the Eurasian design protection system.

The Eurasian design protection system is administered by the Eurasian Patent Organization (EAPO), which is an intergovernmental international organisation with two executive bodies: the Administrative Council and the Eurasian Patent Office.

Features of the Eurasian design protection system

Without going deeply into the details of the Eurasian design protection system, one should pay attention to the following crucial features underlining its advantageous character:

• the patentability of the claimed solution will not be affected by a public disclosure of the design provided an Eurasian design application is filed within 12 months from the date of disclosure;
• it is allowed to include up to 100 designs in one Eurasian design application provided they all belong to one and the same class of Locarno International classification (with some exception for designs representing ornamentation);
• it is possible to claim a partial design, in this case the elements or parts of the design for which the protection is not claimed by the applicant can be represented in dotted lines or in colour;
• the registration procedure before the Eurasian Patent Office provides for an opposition period starting after the publication of the design application, the deferment of publication is not allowed;
• the registration procedure is rather flexible comprising a formal examination and an ex-officio substantive examination, which is rather limited as far as checking of novelty and originality of the claimed solution is concerned;
• the registration procedure is very fast and actually takes about 4-6 months (in case no opposition is filed);
• in case of refusal to grant a Eurasian design patent the applicant has the right to transform the Eurasian application into national design applications in the respective member states;
• the term of validity of the Eurasian design patent constitutes five years with the possibility to extend the term for a further five years (the maximum term of validity is 25 years), the extension is made in respect of all member states where the patent is valid;
• the Eurasian design patent is enforceable on the territory of all member states as national patents;
• a temporary legal protection of the claimed design is provided in respect of all member states for a period starting from the publication of the design application and till publication of the Eurasian Design Patent

Despite the fact that the Eurasian design protection system is rather young it is developing very actively and we can already state some remarkable novelties that were recently introduced in order to improve the functioning of this system:

• the Eurasian Patent Office joined the WIPO Digital Access Service (DAS) and starting from December 1, 2021, the priority documents for design applications are accepted through the WIPO DAS, which is very comfortable for the applicants;
• starting from November 1, 2022, the Eurasian design protection system provided for the possibility to submit a 3D model for designs along with the application materials;
• starting from January 1, 2023, Eurasian design patents are issued only in electronic form, however, a Eurasian design patent can be still requested on paper by the applicant (by filing a respective request and with no necessity to pay any fees);
• the list of checks that should be carried out by the examiner during the substantive examination has been expanded. This circumstance would increase the value of the issued Eurasian design patents.
• the term for filing an invalidation action against the Eurasian design patent in frames of an administrative invalidation procedure was changed from six months to three years (counting from the date of publication of the Eurasian design patent).

More particularly, an important step to further digitalisation of the EAPO is the introduction in November 2022 of a procedural possibility for applicants to submit 3D models of designs.

The basis for introduction is the WIPO standard ST. 91, which provides recommendations for IP offices and other interested parties that manage, store, process, exchange or disseminate IP data using digital three-dimensional (3D) models and 3D images.

The definition of a 3D model in the patent instruction to the Protocol corresponds to the one specified in the said WIPO standard, namely, a digital 3D model is an electronic file that is created by specialised software, for mathematically representing the surface of an article in three dimensions and used to visualise the appearance of such an article.

According to the Technical Regulations of the Eurasian Patent Office, the acceptable format for filing 3D models is STEP format with the file not exceeding 50MB.

It is important to note that the purpose of submitting a 3D model is to illustrate the claimed design that appears to be important for the examination and for better visualisation and understanding of the essential features of the design.

However, according to the legal provisions of the Eurasian design protection system, a 3D model is not used for the purpose of determining the scope of legal protection, which is determined exclusively based on representations of the design (which are also to be filed independently of whether the applicant submits a 3D model or not).

Despite a 3D model being used just for illustrative purposes, it is published along with the representations of the design in case of a successful formal examination of a design application and further in case of  the granting of the Eurasian design patent.

The first Eurasian design application with a 3D model was published on February 2, 2023. The publication was made in 3D PDF format, which appears to be actually the most promising format for the publication of 3D models.

Accordingly, the development of the Eurasian design protection system keeps up with the times. From the perspective of the protection of design rights, the system should be considered as a reliable and effective instrument to duly obtain and protect design rights on the regional level, using a unitary Eurasian design patent with the same legal effect and enforceability as national design patents.

Thus, the Eurasian design patent should be considered as an important element of the design patenting strategy.

Arman Sauganbayev is a Eurasian patent and design attorney, and regional director of Gorodissky & Partners (Kazakhstan). He can be contacted at: SauganbayevA@gorodissky.com