How can one prove the fact of open application when canceling a patent?

If the registration of an invention, utility model or industrial design was carried out in violation of the law, the granted patent can be challenged.

According to Article 1398 of the Civil Code of the Russian Federation, a patent for an invention, utility model or industrial design may be declared invalid in full or in part in the following cases:

1) the invention, utility model or industrial design does not comply with the conditions of patentability established by this Code, namely for inventions: industrial applicability, novelty and inventive step, for utility models: industrial applicability and novelty, for industrial designs: novelty and originality; 

2) the non-compliance of the documents of the application for an invention or utility model presented as of the date of its filing with the requirement for disclosing the essence of the invention or utility model fully enough for making the invention or utility model by an expert in a given field of technology;

3) the invention or utility model claim contained in the decision on issuance of the patent contains features which are not disclosed as of the date of filing the application in the documents presented as of this date (Item 2 of Article 1378) or the materials attached to the decision on issuance of a patent for an industrial design contain the articles' images comprising the essential features of the industrial design that lack the images presented as of the date of filing the application or the articles' images from which the essential features of the industrial design available on the images presented as of the date of filing the application are deleted (Item 3 of Article 1378);

4) the patent has been issued when there were several applications for identical inventions, utility models or industrial designs having one and the same priority date, in breach of the conditions envisaged by Article 1383 of this Code;

5) the patent has been issued with an indication therein as the author or patent holder of a person not being such in accordance with this Code or without an indication in the patent as the author or patent holder of the person being such in accordance with this Code.

 A patent for an invention, utility model or industrial design during its term of validity may be challenged by filing an objection with the federal executive authority for intellectual property by any person who becomes aware of the violations provided for in paragraphs 1) to 4).

A patent for an invention, utility model or industrial design during its term of validity may be challenged in court by any person who becomes aware of the violations provided for in paragraph 5).

A patent for an invention, utility model or industrial design may be challenged by an interested person even after its expiration.

If you become aware about the fact of open application of a technical solution for a contested patent, then, in the presence of supporting documents, they can be used to annul a patent on the ground of non-compliance with the patentability condition of “novelty”, i.e. upon open application.

Below we will consider in detail what evidence and how should they be presented to confirm the open application of the technical solution. It is very important to understand that the date of inclusion of a source of information on a technical solution in the prior art that became known as a result of its application is a documented date from which information about the technical solution became publicly available. This is not about the date of publication or the date of signing the document, as is the case with print publications, descriptions of patents, etc., but about the date indicated in the document as the date from which information about the technical solution became publicly available.

Information about the technical solution are signs specific to this particular technical solution. When establishing the fact of an earlier open application of a technical solution, it is necessary to prove, in addition to the fact itself, the presence in this technical solution of the corresponding features and characteristics reflected in the formula of the granted patent.

A number of features and characteristics can be established analytically, but to establish some features, you may need the appropriate equipment, which only special research laboratories are equipped with.

If at the date of the appearance of the technical solution on the market or another date it was technically impossible to establish the presence of any of the features specific to the technical solution, it can be concluded that it is impossible to ascertain the presence of this feature in the technical solution on a specific date.

If establishment of any feature in the technical solution is associated with excessive burden, which can be understood as the need to design and create special research equipment for the analysis of a specific technical solution, it can also be concluded that it is impossible to ascertain the presence of this feature in the technical solution on a specific date.

For example, if the source of information regarding a technical solution indicates only design features, and in addition to structural elements, the patent indicates the qualitative and quantitative composition of the material from which the technical solution is made, then refuse to grant a patent due to the alleged lack of novelty and with reference only to this source is impossible. Moreover, the assertion that the quantitative composition can be determined by a specialist without applying creative efforts, for example, experimentally, is not a basis for denying the novelty of a technical solution.

The essential possibility of establishing certain facts and events cannot be used as evidence of a known fact or event. The creative efforts of a specialist have nothing to do with this. To deny the patentability of an invention by novelty at an earlier open application of a technical solution, it is not the specialist’s ability to establish something in the future that is used, but the presentation of real evidence from the past that the previously released technical solution already contained a set of features, on which patent will be received later.

Determining the presence in a particular technical solution of all the signs of an independent claim is a rather laborious task of collecting evidence with the results of physical, chemical and other analyzes, data confirming the legal entry into the market of a technical solution, namely with such characteristics and signs, presenting technical and financial documentation, etc.

The ability of a specialist to determine the qualitative or quantitative composition of the material serves to prove the subsequent conclusion about the general accessibility to these features of a technical solution, but does not deny and even more does not replace the actual need to establish exactly these features.

It must be clearly understood that the proven ability of access to specific features of a technical solution does not automatically indicate general accessibility to the technical solution itself.

The statement that if the technical solution is accompanied by the “confidential” inscription does not require evidence; this also does not mean that, for example, its composition cannot be identified in a chemical laboratory.

Only with the actual establishment of qualitative and quantitative features a subsequent conclusion can be made about the possibility of including a technical solution with these features in the prior art to deny novelty.

However, if it is not possible to prove the general knowledge of the technical solution itself, then it makes no sense to deny the novelty of proving accessibility in the context of the possibility of access to its features and characteristics by any specialist.

Open application held prior to the priority date is, with the exception of expressly provided temporary benefits for applicants or authors, the grounds for refusing to grant a patent or for canceling the validity of a patent already granted.

When establishing the novelty of an invention or utility model, any information that has become publicly available prior to the priority date of the invention is included in the prior art. Any information includes various printed and similar publications about the object, as well as the technical solution itself.

The open application of a technical solution, in which an invention or utility model is embodied, as a basis for denying novelty, is also applied taking into account the benefits of novelty, because is a form of information disclosure. When the open application of a technical solution is carried out thanks to the actions of the authors and applicants themselves or any persons who have received direct information about the technical solution from them, as a rule, there is no difficulty in providing benefits for novelty.

For example, if the authors and / or applicants themselves submitted the technical solution for implementation in the trading network of a particular supermarket by concluding an appropriate agreement with it, a six-month novelty benefit may be provided. Difficulties can arise when the open application of a technical solution is carried out thanks to the actions of persons who have received indirect information about a technical solution from authors or applicants. For example, when after the implementation of the above situation, other persons bought a technical solution (product) in this supermarket and resold it through their distribution network. Is it possible to consider the situation with the resale of a technical solution in free trade as an indirect receipt of information and provide a novelty benefit from the date of resale of the technical solution? It seems that no, because indirect receipt of information from authors and / or applicants by other persons should provide for some formal relationship between all participants in the sale of a technical solution and the possibility of regulation or other influence on restricting the freedom of dissemination of information received on a technical solution.

When reselling the goods in the free trade mode, the goods are out of the seller’s control, and the latter cannot influence the future of the goods, including restriction on the spreading of the information about him. However, only judicial practice will determine what should be understood as the indirect receipt of information about a technical solution when applying for benefits on novelty.

To establish an open application of a technical solution, it is not necessary that it is the person concerned through the application of the invention or utility model that learns about it; it is quite sufficient if one or several disinterested persons saw the invention in use, without being obliged to keep this circumstance secret, or could see it using the circumstances presented to them. The application of a technical solution is considered open if it can become available if desired and without violating the relevant legislation on the protection of know-how or the confidentiality regime.

When contesting existing patents as not meeting the patentability condition of “novelty”, in some cases, in order to obtain evidence of the fame of the features, it is necessary to conduct a technical examination, for example, in cases where you need to establish the material or substance from which the parts of the device are made, or in cases when you need to establish the composition of the substance.