Industrial Applicability: Statement of Opposition, Manner of Proving and Related Procedure

Prior to continuing with the specific recommendations on how to prove that the solution claimed in the patent for the invention has no industrial applicability, it is necessary to refer to the legal basis for assessing the patentability of the invention under the opposed patent. At the same time, please note that the choice of legal basis will depend on the date of filing of the application under which the impugned patent for the invention was granted.

In this paper, the existing patent laws will be considered.

As provided for in paragraph 4 of Article 1350 of the Civil Code of the Russian Federation, “An invention is deemed having industrial applicability if it can be used in industry, agriculture, public healthcare and other branches of economy or in the social sphere.”[1].

In accordance with subparagraph (2) of paragraph 24.5.1 of the Administrative Regulations[2], when establishing the possibility of application of the invention in industry, agriculture, public health care and other fields, it shall be checked whether the purpose of the invention is indicated in the description contained in the application on the filing date (if on that date the application contained a claim for the invention, then in the description or claims). In addition, it shall be checked whether the documents and drawings contained in the application as at the filing date contain the means and methods by which the invention may be carried out as described in each of the claims.

In the absence of such information in these documents, it is acceptable that the means and methods mentioned should be described in a source that became available to the public before the priority date of the invention. In addition, it should be ensured that, if the invention is carried out under any of the claims, it is indeed possible to carry out the intended use indicated by the applicant. Where the possibility of exercising the invention and realization of the said purpose can only be proved by experimental data, the existence in the description of the invention of examples of its realization shall be checked. It shall also be determined whether the examples given are sufficient to extend the conclusion of compliance to the various private forms of realization of the feature covered by the concept given by the applicant in the claims.

In accordance with subparagraph (3) of paragraph 24.5.1 of the Regulations, if it is established that all the specified requirements have been met, the invention shall be deemed to comply with the condition of industrial applicability. [2]

Thus, a person who intends to file an opposition to the invalidation of a patent for an invention on the grounds of non-compliance with industrial applicability, shall first assess the scope of the patent holder's claim, i.e., how broad the independent claim(s) are.

Further, it is necessary to verify that there are sufficient examples in the patent being impugned to support the various private forms of implementation of the features covered by the general concepts or alternative implementation options set out in the claims.

If there are no examples or there are not enough examples to confirm the private forms of implementation of the features in question, it shall be assumed that the applicant does not show the implementation of the group of inventions under the opposed patent.

In addition, it is important to pay attention to whether the independent claims of the opposed patent are of open or closed type.

That is determined, in particular, by the presence of the words “containing”, including" for the open type and “consisting” for the closed type in an independent claim, after the generic concept.

Thus, in the case of an open type claim, in the compilation of an independent claim it is sufficient for the applicant to determine the set of features of the invention necessary for the realization by the invention of the purpose indicated in the generic concept, and features of the invention, which are not necessary for the realization by the invention of its purpose, are not included in the independent claim.

If the claim of the invention is of a closed type, then the absence of at least one essential feature of the invention, necessary for realization of the invention in industry, may be used by the person filing the opposition as an argument for the impossibility of realization of the invention and its realization of the indicated purpose in the scope of the set of features presented by the applicant.

In addition, the person planning to file an opposition has to ensure that the description of the invention lacks the means and methods by which the invention claimed in the patent being impugned can be exercised. Whether the theoretical data on similar means and methods applied also within the scope of the claimed invention, as detailed by the applicant in the “Background” section of the patent being impugned, are missing.

It is also necessary to pay attention to the presence of absurd hypothetical, pseudoscientific theories presented in the description of the patent opposed, which can easily be questioned. For example, such solutions include “perpetuum mobile”, a way of making a diagnosis by skin patterns of the fingers of the hands, a way to obtain precious metals from the air and other methods related to alchemy, etc.

On the basis of the results of the assessment of the legality of the arguments presented by the person filing the opposition with regard to proving the non-compliance of the contested invention to the condition of industrial applicability, the panel of the Chamber for Patent Disputes will determine whether it is possible to agree with his or her opinion or not, having assessed the following:

• Whether the purpose of the invention or a group of inventions and the technical result are indicated by the patentee in the description of the impugned patent;
• Whether there are no examples and experimental data in the description for the impugned patent, i.e., whether the realization of the said purpose with a representative of each private form of invention or each alternative embodiment of the invention is confirmed by experimental data;
• Whether the claim is of an open type and whether it includes a set of features that is necessary to achieve the specified result, i.e., those features that the invention or a group of inventions under the impugned patent are intended to modify;
• Whether the means and methods by which the invention can be carried out as described in each of the independent claims are disclosed;
• Whether the description makes reference to means and methods previously known from the background of invention, and therefore whether they are obvious to a person trained for the particular field in relation to the claimed invention, even if they are not repeatedly explained in detail in the description;
• Whether all the information in the description is of a scientific and technical nature.

Thus, the panel will only agree with the opposing person if at least one of the above items is proven to them.

Otherwise, the panel shall conclude that the opposition does not contain arguments that would allow it to conclude that the invention or group of inventions under the patentability condition of the impugned patent is not “industrially applicable” and shall dismiss the opposition.