September 5, 2014 at 11:25How to save on patent fees
- Tutorial
Russian legislation and international agreements of Russia provide for a number of privileges on fees for certain categories of applicants when patenting inventions and utility models. Know your rights and do not pay too much!
1. Benefits on patent fees in Russia
1.1. An individual who is the sole author of an invention, utility model and applying for a patent in his own name or who is the sole author of an invention, utility model and holder of a corresponding patent pays 50% of the following fees :
- fees for registering an application for an invention and making decisions based on the results of a formal examination ( the full amount of the fee is 1,650 rubles + 250 rubles for each claim of more than 25);
- fees for introducing into the claims of a clause which is absent in the earlier proposed by the applicant and accepted for consideration formula after 2 months from the date of filing the application (the full amount of the fee is 650 rubles for each new claim before the examination of the application in essence, 2350 rubles. for each new independent claim after the substantive examination of the application);
- fees for conducting substantive examination of an application for an invention and making a decision on its results (full fee is 2450 rubles plus 1950 rubles for each independent claim above 1 (but not more than 10) plus 3400 rubles for each independent claim above 10);
- fees for the registration of an invention, utility model and the issuance of a patent for an invention, utility model (full fee is 3250 rubles);
- the annual fee for maintaining the validity of a patent for an invention for the third to fifth years of validity, counting from the filing date of the application (the full fee for the third year is 850 rubles, for the fourth year - 850 rubles, for the fifth year - 1250 rubles. )
Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
It should be noted that the legislation does not provide for a fee fee for registering an application for a utility model, and for registering a utility model (after successful completion of substantive examination) and granting a patent for a utility model is provided. There is also no benefit on the annual fee for maintaining the validity of a utility model patent. It is difficult to say whether such inconsistency of “features” or “bug” of the legislation is similar, but it is so.
1.2. An individual referred to in paragraph 1.1 who is a veteran of the Great Patriotic War, a veteran of military operations on the territory of the USSR, on the territory of the Russian Federation and in the territories of other states (a veteran of military operations), as well as a team of authorsapplying for a patent in their own name, or patent holders, each of which is a veteran of the Great Patriotic War, a veteran of military operations, is exempt from paying the fees referred to in paragraph 1.1. Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
1.3. An individual specified in clause 1.1 who is a disabled person and (or) a pensioner receiving a retirement pension or studying at an organization engaged in educational activities and having state accreditation under the relevant educational program, an individual, referred to in paragraph 1.1, being a scientist or scientific and pedagogical worker under the age of 35 years of an educational institution of higher education or a scientific organization for which the specified place of work is the main one, as well as a group of authors applying for a patent in their name, or patent holders, each of which meets at least one of the criteria mentioned above in this clause, pays 20% of the full amount of fees specified in clause 1.1. Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
1.4. A small business entity pays 50 percent of the full amount of feesreferred to in paragraph 1.1.
To exercise this right, it is necessary to submit documents confirming that the applicant (patent holder) meets the criteria established by the Federal Law “On the Development of Small and Medium-Sized Enterprises in the Russian Federation” (the average number of employees is not more than 100 people, annual revenue is not more than 400 million rubles . and certain restrictions on the composition of the owners of the enterprise).
1.5. An individual who is the sole author of an invention, upon filing an application for an invention with a public offer to conclude an agreement on the alienation of a patent for an invention under conditions consistent with established practice, shall be exempt from paying all patent fees. If, within two years from the date of publication of the information on the grant of a patent, Rospatent does not receive a written notice about the desire to conclude an agreement on the alienation of the patent, the patent holder may withdraw his public offer with payment of all duties due from which he was previously exempted. Further fees are paid in full.
1.6. A patent holder who has submitted an application for an open license to Rospatent (the possibility of granting the right to use an invention or utility model to any person) pays 50% of the fee for maintaining the patentstarting from the year following the year of publication of information on an open license by Rospatent. If within two years from the date of publication of information on an open license, the patent holder did not receive offers in writing to conclude a license agreement on the conditions specified in the application, the patent holder may withdraw his application for an open license with an additional fee for the period from the date of publication of information on open license. Further fees are paid in full.
1.7. In case of filing an application electronicallyfees for registering an application for an invention and making decisions based on the results of a formal examination (full fee of 1,650 rubles plus 250 rubles for each claim of more than 25), for registering an application for a utility model and making decisions based on the results of a formal examination (full size duties of 850 rubles plus 100 rubles for each paragraph of the utility model formula over 25) is reduced by 15% .
To submit an application in electronic form, it is required (a) the presence of a valid enhanced EDS issued by an accredited certification center (an EDS is suitable for a public services portal with a filled in email address of the signature holder), (b) the installed CryptoPro CSP software and (c) an Internet browser Explorer (with other browsers, the performance of the electronic filing portal is not guaranteed). Read more about electronic interaction with Rospatent here .
The exemption under paragraph 1.7 can be combined with another exemption, while 15% is first deducted from the amount of the duty, then another exemption is applied.
1.8. If there is a patent search report or examination report prepared by one of the international bodies in the application for a patent for an inventionin accordance with international treaties of the Russian Federation, the size of the fee for examination of the application for an invention in essence and decision-making on its results is reduced by 20% in relation to those inventions for which a patent search was performed. If there is a report on the information search carried out by Rospatent in the indicated application , the size of the fee for conducting substantive examination of the application for an invention and making decisions on its results is reduced by 50%in relation to those inventions for which an information search was performed (the full fee is 2450 rubles plus 1950 rubles for each independent claim above 1 (but not more than 10) plus 3400 rubles for each independent claim above 10). The specified procedure for levying a fee applies to selected applications.
2. Benefits on fees for international patenting
2.1. An applicant who is an individual and a citizen of a country from a special list (Russia is included in it) is entitled to a 90% reduction in international dutyfor filing (the full amount of the fee is $ 1,471 plus $ 17 for each sheet of the application set of documents over 30 sheets; with a good-quality application usually 2,000–3,000 US dollars comes in). In addition, an applicant who is entitled to a 90% reduction in the international filing fee must not pay the shipping fee.(the fee is 850 rubles when filing an application with Rospatent as a receiving Office or $ 111 when filing an application with the International Bureau as a receiving Office) in relation to an international application filed with the International Bureau as a receiving Office. The same rule (i.e., a 90% reduction in the international filing fee and exemption from payment of the shipping fee for an international application filed with the International Bureau as a Receiving Office) applies to the applicant, regardless of whether he is an individual or not, being a citizen and residing in a state classified by the United Nations as the least developed country.
It should be noted that nothing prevents you from filing an international application, specifying as an applicant a Russian individual - the sole author of the invention or an individual or legal entity from the least developed country and save on international fees, and then change the applicant to the desired legal entity and, if required , adjust the composition of the authors. Changing the applicant and the composition of the authors of the international application is possible before the expiration of 30 months from the priority date. It is better to change the declarations of the international application within 16 months from the priority date, in which case the publication of the international application will be completed as amended. Fees for amendments to the application and declaration of the international application or payment of the international fee in this case are not provided for by the rules of the Patent Cooperation Treaty (PCT). Which can be used legally. True, there is a peculiarity: you need to be 100% sure that with such an applicant it will be possible to conclude an agreement on the alienation of the right to obtain a patent on acceptable terms. Such an agreement may be requested by the receiving Office in the international phase or by the national patent office in the national phase.
2.2. If Rospatent, acting as an international search body, uses the results of a previous international search, search of an international type or other search conducted by itreferenced in the application, the amount of the fee for establishing the level of technology for assessing the patentability of an invention and compiling a report on the international search (search fees) and the fee for establishing the level of technology for evaluating the patentability of an invention and compiling a report on an international search in case of violation unity of invention for each part of the international application that does not relate to the invention first mentioned in the claims (additional search fee j) (the full amount of these fees: if the paperwork is conducted in Russian - 6750 rubles., if the paperwork is conducted in another language acceptable in accordance with the Patent Cooperation Treaty - 28000 rubles) is reduced in the following amounts:
in the amount of 75%- if you do not need to conduct an additional search;
50% - if the additional search is confirmed by documents relating to one or two additional subgroups of the International Patent Classification;
25% - if the additional search is confirmed by documents related to new aspects of the claimed invention (for example, an international application is based on several earlier applications, and a search report is used for one of them).
These are the main opportunities for reducing duties, one way or another related to Russia. It is clear that each country has its own specific paths. In addition, in these opportunities there are a number of legal subtleties. Therefore, as they say, consult with a specialist before use.
1. Benefits on patent fees in Russia
1.1. An individual who is the sole author of an invention, utility model and applying for a patent in his own name or who is the sole author of an invention, utility model and holder of a corresponding patent pays 50% of the following fees :
- fees for registering an application for an invention and making decisions based on the results of a formal examination ( the full amount of the fee is 1,650 rubles + 250 rubles for each claim of more than 25);
- fees for introducing into the claims of a clause which is absent in the earlier proposed by the applicant and accepted for consideration formula after 2 months from the date of filing the application (the full amount of the fee is 650 rubles for each new claim before the examination of the application in essence, 2350 rubles. for each new independent claim after the substantive examination of the application);
- fees for conducting substantive examination of an application for an invention and making a decision on its results (full fee is 2450 rubles plus 1950 rubles for each independent claim above 1 (but not more than 10) plus 3400 rubles for each independent claim above 10);
- fees for the registration of an invention, utility model and the issuance of a patent for an invention, utility model (full fee is 3250 rubles);
- the annual fee for maintaining the validity of a patent for an invention for the third to fifth years of validity, counting from the filing date of the application (the full fee for the third year is 850 rubles, for the fourth year - 850 rubles, for the fifth year - 1250 rubles. )
Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
It should be noted that the legislation does not provide for a fee fee for registering an application for a utility model, and for registering a utility model (after successful completion of substantive examination) and granting a patent for a utility model is provided. There is also no benefit on the annual fee for maintaining the validity of a utility model patent. It is difficult to say whether such inconsistency of “features” or “bug” of the legislation is similar, but it is so.
1.2. An individual referred to in paragraph 1.1 who is a veteran of the Great Patriotic War, a veteran of military operations on the territory of the USSR, on the territory of the Russian Federation and in the territories of other states (a veteran of military operations), as well as a team of authorsapplying for a patent in their own name, or patent holders, each of which is a veteran of the Great Patriotic War, a veteran of military operations, is exempt from paying the fees referred to in paragraph 1.1. Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
1.3. An individual specified in clause 1.1 who is a disabled person and (or) a pensioner receiving a retirement pension or studying at an organization engaged in educational activities and having state accreditation under the relevant educational program, an individual, referred to in paragraph 1.1, being a scientist or scientific and pedagogical worker under the age of 35 years of an educational institution of higher education or a scientific organization for which the specified place of work is the main one, as well as a group of authors applying for a patent in their name, or patent holders, each of which meets at least one of the criteria mentioned above in this clause, pays 20% of the full amount of fees specified in clause 1.1. Upon conclusion of a license agreement, this benefit with respect to the annual fee for maintaining the validity of a patent for an invention shall be terminated.
1.4. A small business entity pays 50 percent of the full amount of feesreferred to in paragraph 1.1.
To exercise this right, it is necessary to submit documents confirming that the applicant (patent holder) meets the criteria established by the Federal Law “On the Development of Small and Medium-Sized Enterprises in the Russian Federation” (the average number of employees is not more than 100 people, annual revenue is not more than 400 million rubles . and certain restrictions on the composition of the owners of the enterprise).
1.5. An individual who is the sole author of an invention, upon filing an application for an invention with a public offer to conclude an agreement on the alienation of a patent for an invention under conditions consistent with established practice, shall be exempt from paying all patent fees. If, within two years from the date of publication of the information on the grant of a patent, Rospatent does not receive a written notice about the desire to conclude an agreement on the alienation of the patent, the patent holder may withdraw his public offer with payment of all duties due from which he was previously exempted. Further fees are paid in full.
1.6. A patent holder who has submitted an application for an open license to Rospatent (the possibility of granting the right to use an invention or utility model to any person) pays 50% of the fee for maintaining the patentstarting from the year following the year of publication of information on an open license by Rospatent. If within two years from the date of publication of information on an open license, the patent holder did not receive offers in writing to conclude a license agreement on the conditions specified in the application, the patent holder may withdraw his application for an open license with an additional fee for the period from the date of publication of information on open license. Further fees are paid in full.
1.7. In case of filing an application electronicallyfees for registering an application for an invention and making decisions based on the results of a formal examination (full fee of 1,650 rubles plus 250 rubles for each claim of more than 25), for registering an application for a utility model and making decisions based on the results of a formal examination (full size duties of 850 rubles plus 100 rubles for each paragraph of the utility model formula over 25) is reduced by 15% .
To submit an application in electronic form, it is required (a) the presence of a valid enhanced EDS issued by an accredited certification center (an EDS is suitable for a public services portal with a filled in email address of the signature holder), (b) the installed CryptoPro CSP software and (c) an Internet browser Explorer (with other browsers, the performance of the electronic filing portal is not guaranteed). Read more about electronic interaction with Rospatent here .
The exemption under paragraph 1.7 can be combined with another exemption, while 15% is first deducted from the amount of the duty, then another exemption is applied.
1.8. If there is a patent search report or examination report prepared by one of the international bodies in the application for a patent for an inventionin accordance with international treaties of the Russian Federation, the size of the fee for examination of the application for an invention in essence and decision-making on its results is reduced by 20% in relation to those inventions for which a patent search was performed. If there is a report on the information search carried out by Rospatent in the indicated application , the size of the fee for conducting substantive examination of the application for an invention and making decisions on its results is reduced by 50%in relation to those inventions for which an information search was performed (the full fee is 2450 rubles plus 1950 rubles for each independent claim above 1 (but not more than 10) plus 3400 rubles for each independent claim above 10). The specified procedure for levying a fee applies to selected applications.
2. Benefits on fees for international patenting
2.1. An applicant who is an individual and a citizen of a country from a special list (Russia is included in it) is entitled to a 90% reduction in international dutyfor filing (the full amount of the fee is $ 1,471 plus $ 17 for each sheet of the application set of documents over 30 sheets; with a good-quality application usually 2,000–3,000 US dollars comes in). In addition, an applicant who is entitled to a 90% reduction in the international filing fee must not pay the shipping fee.(the fee is 850 rubles when filing an application with Rospatent as a receiving Office or $ 111 when filing an application with the International Bureau as a receiving Office) in relation to an international application filed with the International Bureau as a receiving Office. The same rule (i.e., a 90% reduction in the international filing fee and exemption from payment of the shipping fee for an international application filed with the International Bureau as a Receiving Office) applies to the applicant, regardless of whether he is an individual or not, being a citizen and residing in a state classified by the United Nations as the least developed country.
It should be noted that nothing prevents you from filing an international application, specifying as an applicant a Russian individual - the sole author of the invention or an individual or legal entity from the least developed country and save on international fees, and then change the applicant to the desired legal entity and, if required , adjust the composition of the authors. Changing the applicant and the composition of the authors of the international application is possible before the expiration of 30 months from the priority date. It is better to change the declarations of the international application within 16 months from the priority date, in which case the publication of the international application will be completed as amended. Fees for amendments to the application and declaration of the international application or payment of the international fee in this case are not provided for by the rules of the Patent Cooperation Treaty (PCT). Which can be used legally. True, there is a peculiarity: you need to be 100% sure that with such an applicant it will be possible to conclude an agreement on the alienation of the right to obtain a patent on acceptable terms. Such an agreement may be requested by the receiving Office in the international phase or by the national patent office in the national phase.
2.2. If Rospatent, acting as an international search body, uses the results of a previous international search, search of an international type or other search conducted by itreferenced in the application, the amount of the fee for establishing the level of technology for assessing the patentability of an invention and compiling a report on the international search (search fees) and the fee for establishing the level of technology for evaluating the patentability of an invention and compiling a report on an international search in case of violation unity of invention for each part of the international application that does not relate to the invention first mentioned in the claims (additional search fee j) (the full amount of these fees: if the paperwork is conducted in Russian - 6750 rubles., if the paperwork is conducted in another language acceptable in accordance with the Patent Cooperation Treaty - 28000 rubles) is reduced in the following amounts:
in the amount of 75%- if you do not need to conduct an additional search;
50% - if the additional search is confirmed by documents relating to one or two additional subgroups of the International Patent Classification;
25% - if the additional search is confirmed by documents related to new aspects of the claimed invention (for example, an international application is based on several earlier applications, and a search report is used for one of them).
These are the main opportunities for reducing duties, one way or another related to Russia. It is clear that each country has its own specific paths. In addition, in these opportunities there are a number of legal subtleties. Therefore, as they say, consult with a specialist before use.