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What is a patent needed for and what benefits does it provide?

July 31, 2019

According to statistics, intellectual property in Russia is developing steadily, a lot of technical solutions are being patented in different fields, but despite this, many still wonder what a patent is needed for and what benefits it provides. Let us make it clear and turn, at first, to the legislation.

In accordance with Article 1354 of the Civil Code of the Russian Federation, a patent for an invention, a utility model or an industrial design certifies a priority of the invention, the utility model or the industrial design, the authorship and the exclusive right to the invention, the utility model or the industrial design.

Thus, after obtaining the patent, the patent holder will have the exclusive right that will allow him permitting or prohibiting the use of the patent by other persons, as well as transferring this right, but only on the territory of the Russian Federation, because the patent has a territorial effect. Accordingly, the patent of the Russian Federation will not have effect in other states, and it may be used freely on their territories, provided that there is not the same solution on the same territories of the patent protection.

Thanks to the patent, the patent holder will be able to exclude all the possibilities of the use of the method, the composition, the device/system or the appearance (depending on what subject matter of intellectual property the patent has been obtained for) protected by him by anyone other than the right holder without obtaining a license during the entire period of the protection document being in effect. The patent, depending on the subject matter of intellectual property, is granted for a period of 10-25 years, and at the end of this period, the effect of the patent expires, the subject matter passes on into the public domain, and any person may use the patented subject matter without any restrictions.

The benefits from patents can be different, and the main point is, of course, the protection of oneself and one's own intellectual property. It is necessary to patent those technical solutions that you really use or plan to use in the future. And if the claims are lodged against you, then you, in turn, will always be able to present in response your own patents, what will complicate greatly the lives of the persons, who have lodged the claims against you. In the future, they will have either to try to cancel your patent, that is, to prove that your patents have been granted illegally, or persuade the court that, despite having your own patents, you are using the patents of third persons. The availability of a patent, as a result, leads to a significant reduction of the chances of lodging claims against you by a third party. Thus, before you start patenting, you will no longer have a question: why you need an application, and afterwards – a patent.

At the same time, one should not think that it is necessary to file applications only for something unique and revolutionary, it is necessary to patent everything that in your opinion can be repeated and interesting, and, in case there is a value of your development. Thus, even the insignificant changes of the already known technical solution can become a source of profit for you.

The next significant point relating to the benefits of patents is gaining profit from the sale of the exclusive rights to the subject matter of intellectual property. Thanks to the exclusive rights, you will be a monopolist in the field protected by the patent, as well as you will be able to manufacture and to realize successfully the competitive products, and, if you wish, to reduce or to eliminate the possible competitors, or you will be able to provide them with the right to use your patent by concluding a license/sublicense agreement.

If you have obtained the patent, and you have no further plans to use this patent, then you have a possibility to find a licensee, who is interested in obtaining the exclusive rights. At the same time, the patent holder may file an application for the possibility of granting any person the right to use the invention, the utility model or the industrial design (an open license) to the Federal Executive Authority on Intellectual Property. In this case, the size of a patent fee for maintaining in force the patent for an invention, a utility model or an industrial design shall be reduced by fifty percent starting from the year following the year of the publication by the Federal Executive Authority on Intellectual Property of the information on the open license (in accordance with Paragraph 1 of Article 1368). If you have a company that you plan to sell more expensive, the availability of the patents is a nice additional bonus, because each patent increases the company's value in the eyes of the potential investors. It just so happened that the investors are more interested in those startups, whose intellectual property is protected by patents.

I would also like to draw attention to the next important point – after obtaining the patent, it is necessary to use it actively. In accordance with Paragraph 2 of Article 1358 of the Civil Code of the Russian Federation, the use of an invention, a utility model or an industrial design is considered to be, in particular: importing into the territory of the Russian Federation, manufacturing, using, offering for sale, selling, another introduction into the civil law circulation or storing for such purposes the product, in which the invention or the utility model has been used, or the article, in which the industrial design has been used. This will allow you gaining maximum profit and avoiding these negative consequences.

If the invention or the industrial design is not used or is used insufficiently by the patent holder within four years from the date of the grant of the patent, and the utility model – within three years from the date of the grant of the patent, what leads to an insufficient offer of the relevant products, works or services in the market, any person, who wishes and who is ready to use such invention, utility model or industrial design, in case of the patent holder’s refusal to conclude a license agreement with this person on the conditions corresponding to the established practice, shall be entitled to file a statement of claim with the court against the patent holder on granting a compulsory simple (non-exclusive) license to the use on the territory of the Russian Federation of the invention, the utility model or the industrial design (in accordance with Paragraph 1 of Article 1362 of the Civil Code of the Russian Federation). The compulsory license is granted according to a court decision and it does not require a consent of the patent holder. The conditions of using the patent and a size of remuneration to the patent holder are determined by the court.

Judging from the described above in this article, it can be concluded that the patents give the right to use inventions/utility models/industrial designs at one’s own discretion, as well as to gain profit from the sale of the exclusive rights, to obtain the additional benefits from the sale of the licenses for the patents. That is just the reason, why you should protect your intellectual property by the legal means.

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Author of article

Kristina Zaytseva

Kristina Zaytseva

Assistant to Patent Attorney