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One has received a decision on the refusal of granting a patent or on the recognition of the application as withdrawn. What should one do?

March 16, 2020

More and more often, the Applicants, after filing an application for an invention or a utility model, receive the decisions on the refusal of granting a patent or on the recognition of the application as withdrawn, and they do not know what to do with it. Let us try to find out in it.

At first, let us refer to the legislation and find out for what reasons a certain negative decision can be obtained.

  1. So, as to making the refusals in accordance with the current patent legislation,

If during a substantive examination of the application for the invention, the utility model, it is established that the claimed invention, utility model, which is expressed by the claims provided by the applicant,

refers to the subject matters that cannot be the subject matters of the patent rights:

1) the ways of human cloning and his clone;

2) the ways to modifying the genetic integrity of the cells of the human germ line;

3) the use of human embryos for industrial and commercial purposes;

4) the results of the intellectual activities, if they contradict the public interests, principles of humanity and morality;

does not comply with the conditions of patentability: for inventions – with world novelty, inventive step and industrial applicability, and for utility models – with world novelty and industrial applicability;

is not an invention, a utility model, as it relates, in particular, to:

1) discoveries;

2) scientific theories and mathematical methods;

3) the decisions, which concern only the appearance of the products, and which is aimed at satisfying aesthetic needs;

4) the rules and methods of games, intellectual or economic activities;

5) programs for electronic computing machines;

6) the decisions consisting only of providing information.

7) plant varieties, animal breeds and biological methods for obtaining them, that is, the methods consisting entirely of crossing and selecting, with the exception of microbiological methods and the products obtained by such methods; and

the substance of the invention, the utility model claimed in the application documents, and which are submitted as of the date of its filing, is disclosed with the completeness that is not sufficient for the implementation of the invention, the utility model,

the Federal Executive Authority on Intellectual Property makes a decision on the refusal of granting the patent.

It should be noted that in respect of the inventions, before making the decision on the refusal of granting the patent, the Federal Executive Authority on Intellectual Property sends the applicant a notice on the results of the check of the patentability of the claimed invention with a proposal to submit the own arguments regarding the reasons given in the notice. The applicant’s response containing the arguments regarding the reasons given in the notice may be submitted within six months from the date of sending him the notice.

After receiving the response to this notice, the Office makes the decision either on the refusal of granting the patent or on granting the patent.

As for the utility model, if it does not comply with the above requirements and it is impossible to correct the application materials or the claims of the utility model, in the opinion of the examination, the Office may send the decision on the refusal of granting the patent based on the results of carrying out the substantive examination immediately, without sending the applicant a preliminary request, that is, without giving an opportunity to speak out. As a rule, the refusals of that kind are made regarding the applications that are being formalized and filed by the inventors themselves, who are the applicants, and who do not have the sufficient knowledge of the patent law.

Thus, in order to reduce the probability of getting the refusals of granting the patents, and often to exclude the possibility of getting the refusal, we would recommend, while preparing the application materials, to address to the specialists, the patent attorneys, who have the special knowledge in the field of the patent law, and already at the stage of filing the application, they will help to protect the applicants from the possible refusals, offer the ways of solving the problem and, in the worst case scenario, recommend not to spend money and not to file the application to avoid the obvious refusal of granting the patent.

  1. Now let us find out, in which cases the Office makes the decision on the recognition of the application as withdrawn. Thus, the decision on the recognition of the application as withdrawn is made if:

the fee for the legally significant action has not been paid within the period established by the legislation, or the fee paid for the action stipulated by the Paragraphs of the attachment to the Regulations on Fees is less than the amount of the fee established by the Regulations on Fees;

the request for the substantive examination of the application for the invention has not been filed within the period that is established or extended according to an established procedure;

in connection with the request for additional materials, the additional materials, without which it is impossible to carry out the examination or to make a decision on the grant of the patent, have not been presented within three months from the date of filing the request or the copies of the materials opposed to the application and requested by the applicant within two months from the date of sending the request, and this period has not been extended according to the procedure established by the legislation of the Russian Federation;

an agreement identifying the applicant according to the application in the case of the submission of the applications for the identical inventions or the identical invention and utility model filed by the different applicants with the same priority date has not been submitted within twelve months from the date of sending the notice, and this period has not been extended according to the legislation of the Russian Federation;

a notification on the choice of  the application made by the applicant has not been submitted, if he had filed the applications for the identical inventions or the identical invention and utility model within twelve months from the date of sending the correspondent notice, and this period has not been extended according to the legislation of the Russian Federation;

the applicant has not filed a statement on the termination of the patent in respect of the identical utility model for which the patent had been granted within twelve months from the date of sending the correspondent notice.

We shall note separately that, due to any circumstances, the applicant on his own initiative is entitled to withdraw the application for the invention, the utility model filed by him before the state registration of the invention, the utility model in the correspondent register, by filing the certain request.

So, what the applicant must do to avoid getting the decision on the withdrawal of the application. As a rule, all the above grounds according to which the applications are withdrawn are due to the fault of the applicant, for example, due to the fact that he does not know or lacks the deep knowledge of the patent legislation, and sometimes, due to the fact that nobody has advised him about that. To avoid the withdrawal of the application, one should follow clearly the recommendations of the Office’s experts, pay the fees in time, send the responses to the requests and comply with all the periods established by the legislation for the certain actions. If you understand that you are not able to cope with these tasks by 100%, then to avoid such situations, we would recommend addressing to the skilled specialists – the patent attorneys, who will help you to avoid the withdrawal of the application, undertake all the necessary actions and do everything possible to get the long-awaited patent.

In conclusion, we shall note that if you do not agree with the decision made, then the Decision of the Federal Executive Authority on Intellectual Property on the refusal of granting the patent for the invention, the utility model, or on the recognition of the application for the invention, the utility model as withdrawn may be disputed by the applicant by filing an objection to the said Federal Executive Authority within seven months from the date of sending by it to the applicant the correspondent decision or the copies of the materials requested in the said Federal Executive Authority, which are opposed to the application and indicated in the decision on the refusal of granting the patent, provided that the applicant has requested the copies of these materials within three months from the date of sending the decision made regarding the application for the invention or the utility model.

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Author of article

Olga Dolgikh

Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer