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Cancelling the patent due to the non-compliance of the invention/utility model with the requirement for disclosing the essence and the patentability criterion “industrial applicability”

Dec. 27, 2019

When the persons interested in cancelling the patent for an invention/utility model make a decision to file an objection, they have one question: “And on what ground is it possible to recognize the patent as invalid?”.

In accordance with the current edition of Article 1398 of the Civil Code of the Russian Federation, the patent for an invention, a utility model may be recognized as invalid in full or in part in the cases:

1) of the non-compliance of the invention, the utility model with the patentability conditions (a novelty, an inventive step, an industrial applicability) established by the Civil Code of the Russian Federation, or the requirements stipulated by Paragraph 4 of Article 1349 of the Civil Code of the Russian Federation;

2) of the non-compliance of the application documents for the invention or the utility model submitted on the date of filing it with the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation of the invention or the utility model by a person skilled in the art;

3) when the claims of the invention or the utility model, which are contained in the decision on granting a patent, comprise the features that have not been disclosed on the date of filing the application in the documents submitted on that date (Paragraph 2 of Article 1378);

4) of the grant of the patent, if there are several applications for the identical inventions, utility models or industrial designs having the same priority date, in the violation of the conditions stipulated by Article 1383 of the Civil Code of the Russian Federation;

5) of the grant of the patent with the indication therein as an author or a patent holder of the person, who is not such in accordance with the Civil Code of the Russian Federation or without the indication in the patent as an author or a patent holder of the person, who is such in accordance with the Civil Code of the Russian Federation.

This article will consider cancelling the patent for the invention/utility model in connection with the non-compliance with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation (grounds 1 and 2).

It should be noted that ground 2 was introduced only in October 2014 and, accordingly, currently, very few objections on this ground have been filed with ROSPATENT.

In accordance with Article 1350, 1351 of the Civil Code of the Russian Federation, the solution is industrially applicable, if it can be used in industry, agriculture, health care and other branches of the economy or in the social sphere. That is, if the solution can be applied in some sphere of the human activity, it is, in fact, recognized automatically as industrially applicable. And to understand what is meant by the requirement for disclosing the essence, it is necessary to refer to the legislative documents. In particular, the requirements for the application documents for the grant of the patent for the invention/utility model state that the section “Disclosure of the Essence” should contain the following information: the description to the application for the invention/utility model shall provide the information disclosing the technical result and the essence of the technical solution relating to the product (devices, complexes, sets, substances, the strains of microorganisms, the cell cultures of plants or animals, genetic and protein structures) or to the method (the processes of implementing the actions over a material object with the help of material means), including to the application of the product or the method according to a specific destination (the method and the application according to the specific destination refer only to the inventions) with the completeness that is sufficient for its implementation by the person skilled in the art.

The essence of the invention as a technical solution is expressed in a combination of the essential features, which is sufficient to solve the technical problem indicated by the applicant and to obtain the technical result ensured by the invention/utility model, while the features refer to the essential ones, if they influence on the possibility of solving the technical problem indicated by the applicant and obtaining the technical result ensured by the invention/utility model, i.e. they are in a causal and effect relationship with the said result. The technical results include the results that are a phenomenon, a property and also the technical effect resulting from the phenomenon, the property, which are manifested objectively, while implementing the method or while manufacturing or using the product, including, while using the product obtained directly by the method embodying the invention, and, as a rule, which are characterized by the physical, chemical or biological parameters.

At the same time, it should also be noted that each type of the solutions (the device, the substance, the method, etc.) has its own specific rules, according to which all the solutions that can be patented as an invention or a utility model are described.

The above information is essentially a theory, and we all know perfectly well that the “theory” and the “practice” are different very often. Unfortunately, this phenomenon has not spared the patent law as well.

After reviewing the various opinions of ROSPATENT, two main conclusions can be drawn:

Firstly, over the past two years, less than two dozen objections have been filed in connection with cancelling the patent for the invention/utility model in connection with the non-compliance with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that was sufficient for the implementation. At the same time, it should be noted that almost all the objections in connection with the said criterion and requirement have not been satisfied. As an example, it is possible to consider a decision of ROSPATENT regarding utility model No. 163616, in which the Board satisfied the objection filed in connection with the non-compliance of the claimed solution with the patentability criterion “industrial applicability.” The main argument on the impossibility of the application of the patented solution in any sphere of the human activity was the feature “in the safe area,” which, from the point of view of technology, was uncertain. The description of the disputed patent also lacked the information that would objectively have given an idea on what the feature “in the safe area” meant. However, within the framework of this case, the Board suggested that the rightholder should correct the claims of the utility model, and then it recognized the patent as invalid in part, not in full. A new patent was granted with the corrected claims, from which the feature “in the safe area” was excluded.

Secondly, these criteria are very subjective, due to the fact that each “average” skilled person in a particular field has a completely different level of knowledge and the conclusion of one of them may be cardinally different from the other. Thus, if the solution does not refer, for example, to a “perpetuum mobile” and everyone understands this, then it will be very difficult to recognize the patent as invalid according such criteria.

Summing up the above, before making a decision on filing the objections in connection with the non-compliance of the patent for the invention/utility model with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation, it is necessary to weigh up the pros and cons.

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Author of article

Marianna Boykova

Marianna Boykova

Patent Attorney