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The common mistakes made by the authors, while developing various solutions

March 10, 2020

In today’s world, everyone strives to defend his development and to gain profit from it. One of the ways to defend the own developments is a patent. However, many inventors make a large number of mistakes, while patenting, and many of these mistakes cannot be corrected. Below, we shall consider the common mistakes made by the authors, while developing various solutions.

Probably, the most common problem of the inventors is ignorance of the law, the lack of understanding of the elementary, basic things, and the gross mistakes related thereto. Let us enumerate some of these mistakes:

“I want to get a patent of the Russian Federation, and it is also enough to carry out a search only over the Russian patents, there is no need to carry out the search over the world databases” – unfortunately, in order to get the patent, it is necessary for the proposed solution to comply with the established criteria for patentability. In accordance with Article 1350 of the Civil Code of the Russian Federation, the state of the art includes any information that has become known in the world before a priority date of the invention. This measure has been introduced for different objectives. One of these objectives is to exclude various fraudulent activities. For example, you saw an interesting solution in another country and decided that it would bring you profit, and in the case, if the check had been carried out only on the territory of Russia, then you, in fact, would have appropriated other person’s solution, while not being its author.

“I want to get a patent, therefore, the materials of scientific articles, popular reviews, blogs, YouTube videos, etc. cannot be opposed to me” or “How dare they oppose the document published in 1938 to me? We live in the 21st century!” – and again we return to Article 1350 of the Civil Code of the Russian Federation. The information that is opposed by the examiner, when considering the application, can be any, the main requirement is that it should be publicly available. The publicly available information will not include specifications, project documentation, i.e. the documents, which access is restricted for one reason or another.

“This invention is mine, but the application has been filed by some stranger. Well, what of the fact that I have blurted out everything to him?” or “Well, what of the fact that I have told all about my invention myself before filing the application? Can the examination really oppose my own words to me?” – Yes, it can. In this case, the author of the invention has only 6 months from the date of the publication of the information in order to file the application for the invention. It is no longer possible to obtain the patent after the said period. It is also established by the law that the burden of proving the existence of the circumstance due to which the disclosure of the information does not hinder the patentability of the invention lies with the applicant. Thus, the legislation fully shifts the responsibility to the author for the disclosure of the information about his decision.

“I have obtained the patent of the Russian Federation, so, now no one in the rest of the world can use my invention without my permission” – alas, but this is also one of the misconceptions. The patent is, in its essence, the right of monopoly and it is in effect on a certain territory, namely, only on the territory of the country, where the patent is issued. It is also necessary to take into account the fact that depending on a particular country, the defense as the patent is granted to different solutions. This statement will be true in part for the right to be called the author of some solution, i.e. if you have come up with this solution, then you do not need to prove it in every country of the world.

“The invention, do you say? Oh, Yes, this is also the copyright” or “The patent is a kind of a scientific publication. I obtained it, I put it in an annual report – and I pinned it to the wall.” The authors sometimes pursue exactly this goal, while obtaining the patent. But the purpose of the patent is not just the publication of your labour. The patent is a protection document certifying the exclusive right, the authorship and a priority of the invention.

“I have obtained the patent for the invention, so it is certainly in demand at the market” – No, the Patent Office does not carry out an analyze of the market prospects, this is not the responsibility of the Office. That is, the availability of the patent does not yet give you the grounds to say that this solution will be interesting to people and companies at all.

“I have the wonderful invention, it is really in demand at the market, I already have the first sales. Hence, if the invention is cool, then the patent is automatically cool” – No, the quality of the invention is not comparable with its legal force, and therefore, with the commercial quality of the patent. The invention can be genius, but the patent can be written so badly that it turns into an empty piece of paper that has no value. Such patent can be easily “bypassed,” as soon as the sales reach the level that is interesting for the competitors.

“The patent is obtained, so I am with it as safe as houses” – No, a large number of patents are canceled every year – for the lack of a novelty, for the lack of an industrial applicability, etc. You are with it “as safe as houses” till your patent is hanging on the wall and no one needs it. As soon as you try to sell it and find a buyer, your patent will be subjected to the closest study, and the result may be unexpected for you. Only that thing is bought, which is impossible to be stolen.

“If others have not registered this invention, then the patent is ours!” – the Russian legislation lodges a lot of requirements to the invention. In addition to the main criterion – the novelty, Rospatent analyzes it for an inventive step. That is, the invention should not be obvious to the one skilled in the art. There are many examples, when the technical solution lacks the inventive step. For example, it is only the minor modification of the existing technology, which is obvious to the specialist. Another variant is when two patented technologies are combined into one. For example, if one part of the invention includes all the features of one patent and the other part includes all the features of another, then the Patent Office may declare that the “invention” does not correspond to the inventive step.

The above examples are only a small part of how the authors can make mistakes and be under a delusion, while trying to patent their development. Dear authors and inventors, do not make these mistakes, be smarter, and before committing any actions in the field of patenting, do address to the specialists for competent and qualified help.

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Author of article

Olga Dolgikh

Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer