Head of Department / Patent Attorney/ Mechanics Engineer
Is it possible to use someone’s patent and at not to violate the rights?
In order to answer the question raised, let us find out first what the use of a patent for an invention and a utility model is.
The legislation will help us with this, namely, Article 1358 of the Civil Code of the Russian Federation, according to which the use of an invention, a utility model shall be considered to be the following, in particular:
1) importing into the territory of the Russian Federation, manufacturing, applying, offering for sale, selling, other introducing into civil circulation or storing for such purposes the product, in which the invention or the utility model has been used;
2) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of the product obtained directly by a patented method. If the product obtainable by the patented method is new, an identical product shall be considered to have been obtained by using the patented method, as there is no evidence to the contrary;
3) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of a device, during the functioning (operation) of which in accordance with its purpose the patented method is realized automatically;
4) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of the product designated for applying it in accordance with its purpose indicated in the claims, while protecting the invention in the form of applying the product according to a certain purpose;
5) realizing the method, in which the invention is used, including by the applying this method.
The invention shall be deemed to have been used in the product or the method, if the product comprises and the method involves each feature of the invention given in the independent claim of the claims in the patent for an invention, or the feature, which is equivalent thereto and which has become known as such in this art before the priority date of the invention. It is necessary to point out that the equivalent features are the ones that coincide according to the function performable and the result achievable.
The utility model shall be deemed to have been used in the product, if the product comprises each feature of the utility model given in the independent claim of the claims in the patent for a utility model.
Special attention should be paid to the last two unnumbered paragraphs, and more precisely, to the phrase that the invention or the utility model shall be deemed to have been used, if each feature of the independent claim of the claims of the invention or the utility model has been used. We shall omit equivalence, and we shall not consider it for ease of understanding.
Thus, following the logic - in order not to use the patent for an invention or a utility model, it is necessary not to use at least one feature given in the independent claim of the claims of the invention or the utility model.
To show how this works in practice, we shall give a specific example of independent claim 1 of the utility model. So, a patent for a utility model was granted in 2019 comprising independent claim 1 of the utility model, namely: “1. The children’s chair consists of a frame in the form of interconnected ties of the left and right sidewalls, each of which is a horizontal plank connecting the front and rear legs, while the rear leg is made with a curve, a seat with the back is fixed at the frame, and a footboard is installed between the front legs, characterized in that each of the sidewalls is a single integral component, and the footboard is equipped with strengthening ribs in the form of a cellular structure.” To understand the patented design of the children’s chair, we shall give an illustration below.
In order not to violate the patent or, from the viewpoint of the legal language, not to use the patent, it is adequate not to use in the own product at least one feature indicated above, in claim 1. For example, such feature as “the rear leg is made with a curve” is used in the claims. If to use the rear leg in the own design without the curve, that is, a straight one, then this feature will not be used, therefore, the patent is not violated, one can manufacture safely the product that is similar to the patented chair and not to be afraid that the right holder will come to you with a claim for a violation of the rights.
Using the same claims of the utility model, we shall consider another example of how it is possible to circumvent the patent and not to violate the rights of the right holder of this patent. So, independent claim 1 of the utility model of the indicated patent comprises the following feature “the footboard is equipped with strengthening ribs in the form of a cellular structure.” In order to circumvent the patent, one can simply either not apply the footboard in his design, or, if it is really much needed, one can use the footboard without the strengthening ribs - a smooth one, or one can use the ribs in such a way, that they would form not the cellular structure, like in the patent, but, for example, so that they would be made in the form of parallel, vertical or horizontal lines. Thus, you will circumvent the patented solution, and you will not violate someone else’s patent, but in fact you will manufacture the same solution.
I particularly would like to pay special attention to the claims that comprise the alternative features in their independent claims, which features being often indicated with the use of conjunction “or,” and which are also enumerated being separated by a comma. For example, “the pharmaceutical composition is administered to the indicated subject as a single-unit form for administration, selected from the group consisting of the forms that are administered orally, such as tablets, gelatin capsules, powders, granules and suspensions or solutions for oral administration.” As one can see from the example given above, several alternatives are used here, in fact, several different solutions-variants are defended in the same patent, and one should be very careful, while using this feature. Even if to assume that it is possible not to use one or two alternatives, this does not mean that the patent is not being violated. In order not to violate this patent, it is necessary not to use each of the indicated alternatives. If at least one variant remains, which is impossible not to be used, the patent will be deemed to have been violated.
In conclusion, I would like to add that according to the current legislation, the following acts shall not be the violation of the exclusive right to an invention, a utility model:
1) applying the product, in which the invention or the utility model has been used, in the design, in auxiliary equipment, or during the operation of vehicles (water, air, automobile and railway transport) or the space-based technology of foreign states, provided that these vehicles or this space-based technology is located temporally or accidentally within the territory of the Russian Federation, and that the indicated product is applied solely for the needs of the vehicles or the space-based technology. Such an act shall not be deemed to be the violation of the exclusive right in respect of the vehicles and the space-based technology of those foreign states, which grant the same rights in respect of the vehicles and the space-based technology registered in the Russian Federation;
2) conducting scientific research of the product or the method, in which the invention or the utility model has been used, or conducting an experiment over such product or method;
3) using the invention, the utility model in emergency situations (natural disasters, catastrophes, accidents), provided that the patent holder is notified as soon as possible about such use and with the following payment of reasonable damages to him;
4) using the invention, the utility model to satisfy the private, family, domestic, or other needs that are not related to business activity, if the purpose of such use is not to gain profit or income;
5) extemporaneous preparing medicines on physicians’ prescriptions in pharmacies with the use of the invention;
6) importing into the territory of the Russian Federation, applying, offering for sale, selling, other introducing into civil circulation or storing for such purposes the product, in which the invention or the utility model has been used, if such product has been introduced into civil circulation earlier within the territory of the Russian Federation by the patent holder or by another person with the patent holder’s consent, provided that such introduction has been exercised lawfully.
Thus, if you use the patent in cases 1-6 above, then you have the right to use the patent in full, and you will not be considered a patent violator. Good luck in using other people’s patents!