USPTO Breaks Last Ties With Russia's Patent Office

(March 22, 2022, 7:33 PM EDT) -- The U.S. Patent and Trademark Office said Tuesday that it has officially broken all engagement with various equivalent agencies in Russia and warned applicants that even paying the Russian patent office to conduct prior art searches "may prevent successful processing of international applications."

The move comes a little over two weeks after the patent office said it suspended communication with Russia's federal patent and trademark agency, known as Rospatent, in response to "the events unfolding in Ukraine." The break-off also includes the Eurasian Patent Organization — a Russia-based international patent agency — and the national intellectual property office of Belarus.

The latest move from the patent office added guidance targeted at patent filers who might be using Rospatent as a low-cost international search authority. For the past decade, the country's patent office had been promoted as a low-cost alternative when it comes to fees charged for prior art searches.

"Applicants filing international applications under the Patent Cooperation Treaty are advised to exercise caution before selecting Rospatent as an international searching authority or international preliminary examining authority," the patent office said in a press release.

Previously, patent applicants could have Rospatent run search reports on possible prior art — the Russian agency's ISA fees were about half those of the Korean Intellectual Property Office.

"Doing so may prevent successful processing of international applications under the PCT, including the transmittal of required fees through financial institutions," the USPTO added on Tuesday.

Since breaking off contact with Rospatent earlier this month, the USPTO has searched for new ways to issue sanctions that could impact filings at Russia's patent office.

Drew Hirshfeld, the USPTO's current leader, announced on March 10 that the agency would be ending its Global Patent Prosecution Highway relationship with Russia's patent office. That relationship had allowed inventors to fast-track some of their applications at the USPTO by securing approvals from patent offices elsewhere in the world. Following the move, all GPPH applications tied to Rospatent were moved into the queue of regular patent applications.

At the same time, the Russian government has responded by allowing for the use of patents from "unfriendly countries" without compensation or permission from their owners. Moscow's list of unfriendly states includes Albania, Andorra, Australia, Canada, European Union states, Great Britain, Iceland, Japan, South Korea, Lichtenstein, Macedonia, Micronesia, Monaco, Montenegro, New Zealand, Norway, San Marino, Singapore, Sweden, Taiwan, Ukraine and the United States.

Nonetheless, the World Intellectual Property Organization — the UN's international intellectual property agency — has yet to close its own office in Moscow. In fact, on March 15, the Moscow office hosted a Russian-language webinar on how small- and medium-sized startups in the country should approach managing their own intellectual property, offering certificates to participants. 

--Additional reporting by Dani Kass and ​​Jasmin Jackson. Editing by Vaqas Asghar.

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