Nadya Reingand, PhD

Washington DC, USA

© Copyright. All rights reserved.

Патентование в США

Patent Hatchery LLC

http://us-patent.ru

Patent Hatchery Company

Purdue University

Southampton University

Aston University

Kazakhstan State University

ContentCurrent status: facts and

speculations Intellectual Property territory:

why Russian/US patent is not valid in the other country?

Major differences and commons in law

Easy way to US market for Russian business

Legally using US patents for your benefit

Number of US patents granted to Russians

Number of USPTO patents granted to Japan,

Germany, France and UK

Is there something to worry about?

Current situation with patentingRussian innovations in USA

USPTO: 309 US patents of Russian

inventors

2009

© Nadya Reingand

Leading companies of “Russian” patentsKaspersky Lab is the third-largest consumer security software vendor in the world

RU

© Nadya Reingand

Leading technologies

software

© Nadya Reingand

Leading regions

Moscow 60%

Russian Patent Office data:Granted patents per year

Total

To Russians

And how is it back in Russia?

Russian patentTerritory:

Russian Federation

Eurasian patentTerritory -9 countries:Turkmenistan, Republic of Belarus, Republic of

Tajikistan, Russia, Azerbaijan Republic, Republic of

Kazakhstan, Kyrgyzstan,Republic of Armenia, Republic of Moldova.

Filed through PCT

Filed directly

http://www.unece.org/ceci/ppt_presentations/2008/ip/kryukova.pdf

Filed throughPO ofcontracting states

PCT countries

Non-PCT countries

FROM: OECD patent statistics manual By Organisation for Economic Co-operation and Development

USA PCT

Filing, search, examination fees

800 4000

Issue fee 480 National stage fees,Total: ~200,000 for 6 countries

Maintenance fees

3rd year 5007th year 130011th year 2100Total: ~4,000 for 20 years protection

Annual fees starting @ 400 up to 1400Total: ~20,000 for 20 years

If you file patent application in USA, it is NOT protected in other countries

It is easy to learn about your invention since it is publishedNobody in other country can get a patent for the invention which

copies your patented in USA invention

BUTAnyone can produce and sell your invention in other country, for

example, produce in China, sell in Germany

For example, it is legal to learn about certain technology (nanomaterials or medical treatment or whatever) from US patent and implement it in Russia if nobody patented it in

Russia

Patents are granted on

NovelUsefulNon-obvious

inventions or discoveries.

Are differences in the new invention compared to the prior art would have been obvious to a person having ordinary skill in the type of technology used in the invention.

In the patent:

Programming of cyclic running machines  

Software patents are valid on the territory of that country where the patent was granted

Timeline for the patent application

publication

Provisional Application

filing

Nonprovisional Application

filing

12 months 12 months ~ 3 years

EU patent application

Patent issued

Time

US patent application

must be filed prior topublication

If no publication,12 months after filing

US provisional application

If no publication and provisional,12 months after filingUS nonprovisional

application

AcceleratedExamination

patentissued

Once again about timing and sequences

Generally:

Sometimes:

Almost never

National patent filing

PCT patent filing

National patent filing

Other country patent filing

PCT patent filing

National patent filing

Other country patent filing

National patent filing

National patent filing

Importance of US market

Number of US patents: - US origin- Foreign origin

U.S., Russian Patent Offices Strike Fast-Track Deal

a one-year pilot program on Sept. 1, 2010 to fast-track each other's approved patent applications.

Such "Patent Prosecution Highway Programs" allow patent offices to use each other's work to help process applications more quickly.

Patent Prosecution Highway Between USPTO and Rospatenthttp://www.uspto.gov/patents/init_events/pph/pph_ru.jsp

ConclusionsDue to

Importance of US marketRelatively low cost of filing applications in USFast track program between our officeFast prosecution compared to PCT

We should see much more direct filing of Russian inventions in US Patent Office

Why it does not happen and what can be done to improve this?