Is it possible to issue patents for an identical utility model and invention by the same applicant?

In the practice of patent attorneys, there is a strategy: to recommend to the applicant the simultaneous filing of applications for a utility model and invention that are identical in text descriptions and formulas. This tactic is often associated with the applicant’s lack of understanding whether his decision meets all the necessary conditions for patentability, the requirement for which is imposed in relation to inventions, while he refuses to conduct a preliminary international patent information search, based on the results of which a patent attorney could assess the “quality” the proposed technical solution: what conditions of patentability does it meet: only “novelty” or both novelty and “inventive step”, and give appropriate recommendations for submitting an application for a particular object.

However, it is worth noting that this strategy is applicable only if it is necessary to save the applicant’s time, and only in relation to such technical solutions that relate to the device, as dictated by paragraph 1 of Art. 1351 of the Civil Code of the Russian Federation.

If the priority dates for applications for an identical invention and utility model do not coincide, namely, when applications are filed on different days, the consequence for a later application, in the event of a patent being issued over an earlier one, will be non-compliance with the patentability condition of “novelty” due to the presence of a patented invention (or utility model) with an identical formula and an earlier priority date.

Since inventions are subject to more stringent conditions for patentability, longer deadlines, and more complex application review procedures, it is usually much easier and faster for an applicant to obtain a utility model patent. Therefore, during the paperwork, if there are no requests for examination of the merits of an application for a utility model, the applicant will receive a decision on granting a patent earlier.

According to Russian legislation, “double patenting” is not permissible, and in the case where applications for an identical invention and utility model have the same priority, i.e. filed on the same day, the issuance of two patents at once should not be carried out in accordance with paragraph 2 of Article 1383 of the Civil Code of the Russian Federation, according to which, if the priority dates of an invention and a utility model identical to it coincide, in respect of which patent applications were filed by one and by the same applicant, after the issuance of a patent for one of such applications, the issuance of a patent for another application is possible only if the owner of a previously issued patent for an identical invention or an identical utility model submits to the federal executive authority for intellectual property an application for termination of this patent.

In this case, the validity of the previously issued patent is terminated from the date of publication of information about the grant of a patent under another application in accordance with Article 1394 of the Civil Code of the Russian Federation. Information about the grant of a patent for an invention or utility model and information about the termination of a previously issued patent are published simultaneously.

Thus, when an identical invention and utility model are identified for applications of the same applicant with the same priority, it becomes possible to issue a patent for one of the applications, with a higher probability, it will be an application for a utility model, before the completion of consideration of the other application - for invention. In this case, the issuance of a patent under the second application is possible only if the already issued patent is terminated at the request of its patent holder.

The considered strategy creates the opportunity to quickly acquire legal protection for a technical solution. First, the applicant receives protection of a technical solution in the form of a utility model patent, ensuring its continuity of transition to protection in the form of an invention patent after the patentability of the invention is established and the utility model patent is terminated.

But in order to comply with the law, the applicant must wait for a decision from the Office on an identical invention. If it is positive, then it is necessary to submit an application for termination of a previously obtained patent for an identical utility model.

However, it is worth noting that the applicant of different applications for an identical invention and utility model, if they are the same person, the decision on which application should be granted a patent is made at his own discretion. But the choice in this case is obvious; a patent for an invention, unlike a patent for a utility model, is valid for 20, not 10 years. When establishing the fact of violation of exclusive rights in the case of a patented invention, the invention is recognized as used in a product or method if the product contains, and the method uses, each feature of the invention given in the independent clause contained in the patent claims, or a feature equivalent to it and which has become known in as such in a given field of technology until the priority date of the invention, and in the case of a patented model, a utility model is recognized as used in a product if the product contains every feature of a utility model given in the independent clause of the utility model formula contained in the patent (clause 3 of Article 1358 of the Civil Code of the Russian Federation).

Thus, in order to establish the fact of use of an invention under a patent, it is necessary to conduct a comparative analysis of the independent claim 1 of the claims and the technical features of the disputed object and the technical documentation related to it and not only identify their presence or absence, but also analyze and evaluate the replacement features for equivalence.

It follows that the protection of a utility model patent is weaker than that of an invention patent. The legislator has established a twelve-month period during which the applicant must inform about his choice.

Moreover, in case of violation of this requirement, there is a sanction - recognition of both applications as withdrawn if a message is not received within the specified period. Although in practice this sanction does not always work, there are cases where patent attorneys find in the registries two active patents for both an invention and a utility model for the same technical solution of the same patent holder. In such cases, one of the existing patents may be invalidated as a result of its challenge by an interested party.

In connection with the above, the advisability of simultaneously filing identical applications for a utility model and an invention makes sense only from the point of view of ensuring legal protection of the result of intellectual activity for the period from the date of publication of the patent for the utility model to the date of publication of the patent for the invention.