As a rule, patent holders pursue two aims, when they obtain a patent. First of all, this is obtaining the legal protection of the technical solution with a possibility of its subsequent use and/or disposal of the exclusive right. The patent holder also pursues an aim to prevent the use of his technical solution by competitors in the market.
There is an opinion among the lawyers specializing in the disputes related to intellectual property that to defend an invention is one of the most complex. It is not easy enough to prove a violation of the exclusive right to a method for manufacturing a product, since, as a rule, only the manufacturer can know the method the product has been manufactured.
In accordance with Paragraph 1 of Article 1350 of the Civil Code of the Russian Federation, “The technical solution in any field that relates to a product (in particular, to a device, a substance, a strain of a microorganism, a plant or animal cell culture) or to a method (a process of carrying out actions over a material subject matter by material means), including to the application of the product or the method for a particular purpose shall be protected as an invention.” The legislation has divided the inventions into two separate subject matters – a product and a method.
In accordance with Paragraph 3 of Article 1458 of the Civil Code of the Russian Federation, “The invention shall be recognized as used in the product or the method, if the product contains, and the method uses, each feature of the invention provided in an independent claim of the claims, or the feature equivalent to it and which has become known as such in this technical field before the priority date of the invention.”
The first step towards the long legal proceedings is to establish whether there is a violation of the exclusive right, whether all features of the independent claim of the claims are used in the method of the alleged violator. Thus, it is necessary to establish the subject matters that shall be compared, and at this stage, in the majority of cases, everything ends up due to the impossibility of establishing the method.
Everything is clear with the product – it was purchased, then it was broken / taken apart / put it into fractions and was compared with the claims of the patent. It is much more complicated with the method, since the product obtained as a result of the manufacture can be manufactured by different methods – to shake up, but not to mix.
As an example, here is an independent claim according to patent No. 2625966 “A method for manufacturing wet pet food for non-productive animals, including the preparation of raw materials, packaging, pasteurization and cooling, characterized in that the pasteurization is carried out in stages: it is first boiled at 43-47° C during 13-17 minutes, then – at the temperature of 53-57° C during 13-17 minutes, after that – at the temperature of 58-62° C during 38-42 minutes, then – at the temperature of 63-67° C during 13-17 minutes, whereupon it is dried at the temperature of 63-67° C during 2-5 minutes, then it is boiled at the temperature of 73-77° C during 43-47 minutes, whereupon it is boiled at the temperature of 73-77° C until the temperature inside the product reaches about 72° C and it is boiled at the temperature of 83-87° C during 88-92 minutes.”
Having purchased wet pet food, it is not possible to determine a method by which this product has been manufactured. In such a situation, all that is left to do is to warn the alleged violator and to express the assumptions that the court may detect a violation of the exclusive right in his actions.
If the manufacture does not stop, then, of course, the patent holder is entitled to apply to the court, and to file a petition during the proceedings on carrying out a forensic examination with an expert’s visit to the manufacture. However, the manufacture technology may have changed by that time. Thus, if to go beyond the limits of the interval value given in the claims during the manufacture – if the temperature or the time, which indicators have been beyond the limits of the intervals given in the claims, has not been observed, then the expert will fail to make a conclusion on the use of all features given in the independent claim of the claims. In this case, all legal proceedings will not lead to an expected positive result, and the court will conclude on the absence of the violation of the exclusive right.
In the majority of cases, the fight against the alleged violator either does not start or ends not in favor of the patent holder. But, it is not uncommon, when it is possible after all to determine by the final product the method by which it is manufactured. The actions to introduce such product into the civil law transactions may be recognized as a violation of the exclusive right on the basis of Paragraph 2 of Article 1358 of the Civil Code of the Russian Federation, according to which “The following shall be deemed to be the use of an invention, a utility model or an industrial design:
1) importing into the territory of the Russian Federation, applying, offering for sale, selling, another introduction into the civil law transactions or storage for such purposes of the product, in which an invention or a utility model is used or of the article, in which an industrial design is used;
2) committing the actions stipulated by Subparagraph 1 of this Paragraph in respect of the product directly manufactured by the patented method. If the product manufactured by the patented method is novel, then an identical product shall be deemed manufactured by the patented method, as otherwise is not proved.”
As an example, we can consider a situation, in which such product as potato chips is introduced into the civil law transactions on the territory of the Russian Federation. A lot of inventions protecting a method for manufacturing potato chips are patented. A part of them protects the technological process of manufacturing the product. It is quite difficult to determine by the product how it has been manufactured.
But it is a little easier to defend those patents that protect a method of manufacturing the chips having of a certain composition. For example, it is possible to cite the claims according to patent No. 2688374 “A method for manufacturing potato chips, including peeling potatoes, washing, slicing, blanching, characterized in that the slices are covered with a lactulose solution previously diluted with water and mixed with starch, dill, ground black pepper, onion extract and salt with the following ratio of initial components, wt. %:
Lactulose Solution 5
Spice Mixture 1
In order to establish whether the product is manufactured by a patented method, an examination of this product may be required.
It can be said that by patenting a method, it is possible to obtain a wider protection, including of the product that can be manufactured by the patented method. For example, one can consider the claims according to patent No. 2275840 “A method of antifungal and antibacterial drying shoes, which includes heating and processing by ultraviolet radiation, while heating and processing by ultraviolet radiation being performed simultaneously during a preset time at the temperature of 60-80° C, characterized in that the luminous intensity of ultraviolet radiation is 100-280 mcd, and the wavelength of ultraviolet radiation is 305-415 nm, while heating being performed using a resistive heating element.” This method can be recognized as used in a device designed for drying shoes, if it is established that the device can perform heating and processing by ultraviolet radiation during a preset time and under the condition of a certain luminous intensity and radiation wavelength.
The device is manufactured, offered for sale and sold. Accordingly, the manufacturer / seller gains profits. But the use of the device is exercised by the end user, who uses the device for his personal purposes, and he does not gain profits from the use. In this regard, these circumstances should be taken into account, while claiming and initiating the legal proceedings.
Despite the complexity of defending the exclusive right to an invention – a method for manufacturing, one should not refuse from patenting this subject matter of intellectual property. But at the same time, one should understand that the more complicated the process is, the more steps and stages it has, the harder it is to prove the use of this method. The complexity of defending the right is also due to the presence of intervals, ranges, percent indicators.
In conclusion, it can be said that the benefits of patenting a method for manufacturing a product are obvious, but the complexity involved in protecting the exclusive right should be taken into account.