For the USPTO, Russia Is No Longer a Stop on the PPH

In March 2022, the USPTO issued a statement terminating relations with the Federal Service for Intellectual Property (“Rospatent”) and with the Eurasian Patent Organization.[1] The USPTO also terminated relations with the National Intellectual Property Office of Belarus. 

As a result, the USPTO will no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) when such requests are based on earlier examination work performed by Rospatent. In addition, pending cases in which, prior to March 11, 2022, the USPTO granted special status under the GPPH to applications based on work performed by Rospatent, will be removed from special status and returned to regular processing and examination; they will no longer be treated as GPPH applications at the USPTO.

Additionally, applicants filing PCT applications may want to reconsider plans to select Rospatent as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). The USPTO statement warns that “[d]oing so may prevent successful processing of international applications under the PCT, including the transmittal of required fees through financial institutions.” A notice by the USPTO Office of Policy and International Affairs also warns of US prohibitions on transactions with Russian financial institutions, although the US Treasury Department has authorized certain IP-related transactions in Russia, including the fling and prosecution of any application to obtain a patent, trademark, or copyright, as well as the payment of renewal and maintenance fees.[2]

Those seeking patent protection in Russia should consider whether such effort is justified when enforcement is highly uncertain. As outlined in an earlier post, “Taking a Long-Term View on Russia’s Patent Landscape,” Russia’s Decree 299 allows the government to grant compulsory licensing without any compensation to the patent holder from an “unfriendly” country to Russia, including the United States, Great Britain, European Union members, and Australia. Decree 299 also allows non-authorized distributors to import original goods into Russia without the consent of the right holder.

Endnotes

[1] See, https://www.uspto.gov/about-us/news-updates/uspto-statement-engagement-russia-and-eurasian-patent-organization

[2] https://www.uspto.gov/sites/default/files/documents/OPIA-Bulletin-Russia.pdf