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The distinctive peculiarities of patenting inventions, utility models and industrial designs. What technical solutions can be defended as all three subject matters of patenting, and what ones cannot be defended?

March 24, 2020

The applicants often have a question of as what kind of the patent law subject matter his technical solution can be defended. 

For this purpose, a patent attorney, as a rule, recommends carrying out an international patent and information search. Therefore, he inquires from the applicant a detailed description of his technical solution, primarily the field of the use and the purpose of the subject matter. If the subject matter of patenting is a design, a device, a system – a description of the design elements and their relationship to each other, the drawings, an operation principle in a static state; if the subject matter of patenting is a method (technology) – a sequence of the operational steps, the applied materials and devices; if the subject matter of patenting is a composition of the product/substance – both a quantitative and qualitative composition of the product. And he also inquires from the applicant an achievable positive effect or, in other words, a technical result, which is the specific characteristic of a technical phenomenon or property that is achieved in the claimed technical solution. 

For example, if the new method of air purification is claimed, the task may be to create an effective, economical and environmentally friendly technology, and the technical result may be to increase a degree of air purification or to reduce a toxic ingredient content.

If the applicant fails to formulate the positive technical result, and all the advantages of his solution are reduced to the aesthetic perception of the subject matter implemented by the form and appearance (design), then such solution can unambiguously be defended only as an industrial design.

It does not follow from Articles 1350 and 1351 of the Civil Code of the Russian Federation that the device as the subject matter of a utility model differs from the device as the subject matter of an invention.

However, while carrying out an examination of the utility model, it takes into account a requirement for a mandatory design unity, as it distinguishes among the devices of all kinds only the ones, which parts are mechanically (rigidly) connected to each other through the assembly operations.

Thus, only those devices can be defended as a utility model, which consist of several parts connected to each other in a design manner through the rigid mechanical connection.

Let us take a closer look at the difference between the invention, the utility model and the industrial design.

All the relations related to the acquisition and implementation of the rights to the inventions, the utility models and the industrial designs are regulated by Chapter IV of the Civil Code of the Russian Federation. These subject matters of intellectual property have both the similarities and the significant differences, the main ones of them are:

The technical solution in any field that relates to a product (in particular, to a device, a substance, a strain of a microorganism, a plant or animal cell culture) or to a method (a process of carrying out actions over a material subject matter through material means), including to the use of the product or the method for a particular purpose shall be protected as an invention. As to the invention, it is necessary for the subject matter to comply with the patentability criteria: novelty, inventive step, industrial applicability.

As a utility model, the technical solution related only to the device shall be protected. As to the utility model, it is necessary for the subject matter to comply with the patentability criteria: novelty, industrial applicability.

As an industrial design, the implementation of the appearance of the article of an industrial or handicraft manufacture shall be protected. As to the industrial design, it is necessary for the subject matter to comply with the patentability criteria: novelty and originality.

Thus, for example, the article, which is a device included in a single body with the rigid relationships and having the design peculiarities that are different from the known state of the art, can be patented both as a utility model, and as an invention, and as an industrial design, for example, an electric toothbrush or an echo sounder.

Such subject matters such as chemical compounds, food composition formulations, pharmaceutical composition formulations, etc., the systems that are a set of the independent elements (independent devices), which are interrelated with each other; an application according to a new purpose can be patented only as an invention.

The articles and products that differ only in their original appearance, but that, at the same time, lack the design peculiarities, can be defended only as an industrial design.

The validity period of the patent for an invention is 20 years (with the right to extension for 5 years for the inventions relating to a drug, a pesticide, an agrochemical), for a utility model, it is 10 years (without the right to extension), for an industrial design, it is 5 years from the date of filing the application, in which the validity period can be extended frequently for 5 years up to the point it reaches the maximum period of 25 years, subject to the payment of the state fees in time.

Despite the differences, the scope of the legal protection provided by both the patent for an invention, and the patent for a utility model is determined by their claims. Thus, the scope of the legal protection provided by the patent for an industrial design is determined by a combination of the essential features of the industrial design, which have been reflected on the images of the article appearance contained in the patent for an industrial design.

The patents for an invention, a utility model and an industrial design obtained in Russia provide the patent defense only on the territory of Russia. In order to defend the invention, the utility model or the industrial design in other countries, it is necessary to file the applications to each country of interest to the applicant or to use the procedure of international patenting.

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Author of article

Ludmila Lisovskaya

Ludmila Lisovskaya

Patent Specialist / Chemical Specialist