The conversion of the application for an invention, a utility model. In what cases is it possible and necessary?

In order to answer the question raised, let us at first understand what the legislation tells us about this.

So, according to Article 1379 “The Conversion of the Application for an Invention, a Utility model or an Industrial Design” of the Civil Code of the Russian Federation:

1. Before the publication of the information on the application for an invention (Paragraph 1 of Article 1385), but not later than the date of making a decision to grant a patent for an invention, and in the case of making a decision to refuse to grant the patent for an invention or to recognize the application as withdrawn – before the possibility of filing an objection against this decision stipulated by the Code is exhausted, the applicant shall be entitled to convert it to the application for a utility model or an industrial design by filing an appropriate statement to the Federal Executive Authority on Intellectual Property, except the case, if the applicant has filed the statement stipulated by Paragraph 1 of Article 1366 of this Code on the proposal to conclude an agreement on alienating the patent.

2. The conversion of the application for a utility model to the application for an invention or an industrial design, or the application for an industrial design to the application for an invention or a utility model shall be allowed according to the statement filed by the applicant to the Federal Executive Authority on Intellectual Property before the date of making a decision to grant the patent, and in the case of making a decision to refuse granting the patent or to recognize the application as withdrawn – before the possibility to file an objection against this decision stipulated by this Code is exhausted.

3. Converting the application for an invention, a utility model or an industrial design in accordance with Paragraph 1 or 2 of this Article shall be allowed, if the priority and the date of filing the converted application are maintained in compliance with the requirements of Paragraph 3 of Article 1375, Paragraph 3 of Article 1376, Paragraph 3 of Article 1377, Paragraph 3 of Article 1381 or Article 1382 of this Code.

It should be noted at once that it is possible to convert the application for an invention to the application for a utility model only if the subject matter of patenting is the device located in a single housing, which elements are rigidly connected with each other, as according to the patent legislation, only the particular device meeting the above requirements can be defended as a utility model.

If as a subject matter, there are several subject matters, such as a device and a method of manufacturing it, in the application for an invention, then it is possible to convert the application to a utility model only in relation to the device, as the subject matter “method” cannot be defended by the patent for a utility model.

There are the applications for inventions, where the defense, for example, of several variants of the device is stipulated. In such situation, it is possible to convert the application only in relation to one device. And again, this is due to the norms of the legislation, which dictate strictly the subject matter for a utility model and the condition that it can be only one.

There are also known the applications in which several different methods, compositions (one or more), systems can be claimed, however, they do not contain the subject matter of the device, which falls under a utility model definition. In this case, it is not possible to convert the application for an invention to the application for a utility model.

As to the reverse conversion, that is, when it is necessary to convert the application for a utility model to the application for an invention, this is always possible. There are no restrictions for the above variant.

Now, let us consider the situation, when there is nevertheless a need to convert and it makes sense.

We shall consider the situation, when the application for an invention (the subject matter is a devise) has been filed without carrying out a preliminary international search to estimate the chances of obtaining the patent, i.e., blindly, at the applicant’s risk, and in the course of a substantive examination, it turns out that the claimed invention meets the patentability criterion “novelty,” but it does not meet the patentability criterion “inventive step” – the solution is not obvious from the prior art to the person skilled in the art, that is, for the examination, this decision is obvious and follows from the prior art. This conclusion is confirmed by the conclusions of the examination set out in several requests, which the applicant cannot overcome and the examination insists on its opinion. As a result, the applicant, after numerous attempts to overcome the objections of the examination, is faced with the fact that the Office makes a decision to refuse granting the patent. It is at this moment that the applicant has a possibility to file a request to convert the application for an invention filed for a device to the application for a utility model, as the claimed invention is recognized as new, and in order to obtain the patent for a utility model, in contrast to the patent for an invention, the compliance of the technical solution to the condition “inventive step” is not required, only “novelty” is required.

Thus, out of two evils – not to obtain the patent at all or to obtain the patent for at least a utility model – it is more appropriate to choose the second evil, while the applicant loses absolutely nothing in relation to the scope of his rights, which is determined by the claims of the invention/utility model, as they remain unchanged.

Now let us consider a reverse variant, when the application is filed for a utility model. Let us assume the situation in which, in the course of carrying out the substantive examination, it turns out that the claimed device meets not only the patentability criterion “novelty, but the patentability criterion “inventive step” as well. The examination is ready to make a positive decision to grant the patent. At this point, the applicant has a possibility to file a request to convert the application for a utility model to the application for an invention. It is necessary to pay special attention to the fact that this action must be carried out no later than the date of making a decision to grant the patent, otherwise, such possibility will be exhausted, and you will be refused to satisfy the request. If all the necessary actions are carried out in due time, obtaining the patent for an invention, for example, will allow extending its validity up to 20 years, in contrast to the patent for a utility model, which validity is 10 years. Thus, the validity of the exclusive rights to the patented device will be 10 years longer.

In conclusion, I would like to add that the possibility and expedience of converting the application for an invention to the application for a utility model and the reverse should be estimated in each particular case, and only the specialists that are highly qualified in this field, patent attorneys, will help you to make the right decision.