Many inventors, when creating their invention, utility model, industrial design, often take in full some technical solution already defended by a patent as the closest analogue; they modify it by adding one or more features, and they do not think whether this may be done and what is involved by such actions, and sometimes, they are not even aware of the possible consequences for themselves.
Let us turn to the legislation and find out what it says about this. So, according to Article 1358.1:
1. The invention, the utility model, or the industrial design, whose use in a product or a method is impossible without the use of another invention, utility model or another industrial design protected by the patent and having an earlier priority, shall be respectively a dependent invention, a dependent utility model or a dependent industrial design.
The dependent invention, in particular, is the invention that is protected by using it according to a particular purpose of the product, in which another invention protected by the patent and having the earlier priority is used.
The invention or the utility model relating to the product or the method is also dependent, if the difference between the claims of such invention or utility model and the claims of another patented invention or another patented utility model having the earlier priority is only in the purpose of the product or the method.
2. The invention, the utility model or the industrial design may not be used without a permission of the holder of the patent to another invention, another utility model or other industrial design in relation to which they are dependent.
Before the entry of the said Article into force, the Russian legislation has contained only the norms on the dependent invention. The dependent invention has long been interpreted as the patentable invention improving, supplementing or modifying another protected invention. In the modern literature, the essence of the dependent invention is explained by the case, when, while using one patented invention, another patented invention or patented utility model is used “automatically.” Formally, “the law recognizes the patented invention to be the dependent one, if all its features given in the independent claim are used, while using the patented another invention or utility model.”
Thus, the traditional understanding of the dependent invention shall be the following: the dependent invention contains every one of the features of the basic invention, but it also always contains the additional features that are not contained in the basic invention, but which allow speaking about a novelty of the dependent invention (for example, if a mug is the dependent invention in relation to a glass, which is the basic invention: the mug contains all the glass’s features, without which it cannot be used, but the mug’s handle appears as the additional very important feature).
The traditional understanding of the dependency is extended in the Article by means of the invention or the utility model for the application, i.e. for the application of the patented invention or utility model according to the new purpose. Since the dependent subject matter of the patent rights contains all the features of the basic subject matter, the use of the dependent subject matter will always violate the rights of the holder of the patent to the basic subject matter. Therefore, Paragraph 2 of the Article introduces a restriction on the use of the dependent subject matter of the patent rights - such use is allowed only with the permission of the holder of the patent to the basic subject matter of the patent rights. The permission of the holder of the basic patent means that he has granted a license to the use of the dependent subject matter. In relation to the dependent invention (and the invention solely), the possibility of claiming, under some certain conditions, the grant of the compulsory license is stipulated (Paragraph 2 of Article 1362 of the Civil Code of the Russian Federation). If the exclusive right to the basic subject matter of the patent rights has terminated, the use of the dependent subject matter shall be carried out without any permission.
This is what the dependent invention means in practice. Just imagine that there is the patent for some bicycle somewhere, and you have come up with the bicycle having handles on a handlebar, like a saucepan has, and you even have justified from the technical point of view what it was necessary for and what positive effect that device had. It is reasonable to assume that even if you manage to patent your bicycle with the “magic” handles, you will not be able to sell it without the permission of the holder of the patent to that “some bicycle.”
Let us give another example of the dependent patent: just assume there is the patent for some stool, and you have come up with a chair being the same stool, but not quite, and you have added a back to it; you have proved the importance and the need for that back, and finally, you have even obtained the patent. However, your chair without the stool is nothing, since there is the patent for the stool, and you do not have the right to sell your chair without a consent of the right holder of the patent to the stool. An example of such consent may be, in particular, concluding a license agreement. Otherwise, if you fail to conclude the license agreement intentionally, you may be claimed for the violation of the exclusive rights.
The need to conclude such agreement arises only in the case of the exclusive rights of the first patent (the patent has not expired, the fees for maintaining the patent in force have been paid), if the patent has terminated for any reasons, then the actions of this kind are not expedient. You can sell your product safely and not be afraid of the claims from third parties.
The paradox of the situation is that the dependence of the patent is not registered anywhere. The inventors often learn about it only in court.
However, there is still a way out; as a rule, for the newly created subject matters that are planned to be realized/sold, a patent search is carried out in order to ensure their patent purity.
The patent purity is a legal property of the subject matter of intellectual property, which means that it can be used freely in a particular country without a risk of violating the patents being in force on its territory that belong to third parties. The purpose of the search for the patent purity is to identify the features of the patented invention that have been used in the subject matter, despite the differences in other features.
Checking the patent purity should be an integral part of the general patent researches carried out both before and during the development of the particular product, and then you will more likely not violate someone's rights.