Key features of drawing a utility model claim in Russia

The claims of a utility model are an important part of an application for a patent for a utility model, since it is the claims that determine the scope of legal protection of the utility model granted by the patent.

When drawing up the claims of a utility model, it is worth paying special attention to its compliance with the Requirements for documents of an application for a patent for a utility model (hereinafter referred to as the Requirements). We will talk about these Requirements in more detail in this article.

How to correctly describe a device withing the framework of the utility model claim

When drawing up a utility model claim, the following should be taken into account: the utility model claim can be single-link or multi-link. A single-link claim refers to a claim that includes only an independent claim, a multi-link formula means a formula that includes an independent claim and several dependent claims.

An independent claim of claims should consist of a single sentence consisting of three main parts:

• A generic concept that defines the object of protection and indicates the purpose of the utility model;

Examples: "Magnetic Field Sensor", "Suction Valve", "Centrifugal Separator". After the presentation of the generic concept, as a rule, the expressions "consisting of", "including", "containing" are used, after which the restrictive part is stated.

• The restrictive part, which reveals the features of the claimed solution that coincide with the features of the prototype (the closest analogue);
• A distinctive part, which is the features of the declared technical solution, distinguishing the declared solution from the prototype (the closest analogue).

Therefore, after the statement of the restrictive part, the expression "distinguished by the fact that" is used.

However, if the claimed solution has no prototypes and analogues, the claim of the utility model shall be set out without dividing it into restrictive and distinctive parts. In this case, the formula consists of a generic concept, after which the expression "characterized", "inclusive", "consisting of" is introduced, after which the set of essential features that characterize the claimed technical solution is stated.

In dependent clauses of the formula, clarifying features are most often indicated, representing particular cases of its implementation.

It is important to note that the "device" (and a device is understood as a product that is a structural element or a set of structural elements that are in a functional and constructive unity) in the claims of the utility model must be set out by the features that characterize its static state, while it is allowed to indicate the mobility of various elements, the possibility of its implementation of a certain function (for example, "a base made with the possibility of connection to the body", "protrusions with holes made with the possibility of fixing the body to the surface", etc.) (Clause 40 (9) of the Requirements).

Basic requirements for the claims of a utility model

Let us analyze the main points of the Requirements, the violation of which is most often referred to by experts when sending requests during the substantive examination, as well as recommendations for drawing up a claim in order to exclude objections.

The claim of a utility model should relate to one technical solution

An independent claim may include one set of essential features, each feature of which is necessary, and all together they are sufficient to achieve one technical result, or several interrelated technical results, including those related to each other by a cause-and-effect relationship, or several sets of essential features, each of which affects the achievement of its own technical result, but at the same time a set of all essential features utility model ensures the achievement of one or more general technical results (clause 40 (1) of the Requirements).

Taking into account this paragraph of the Requirements, we recommend that you determine one technical result and one set of features that affect the achievement of this technical result. When trying to indicate several interrelated technical results that are affected by one or more sets of technical features, it is more likely that examination requests will be sent, the answer to which will require either narrowing the scope of claims or correcting the technical result.

The claim of a utility model must clearly express the essence of the utility model as a technical solution

The claims shall contain a set of essential features, including a generic concept reflecting the purpose of the utility model, sufficient to solve the technical problem specified by the applicant and obtain a technical result in the implementation of the utility model (clause 40 (3) of the Requirements).

The applicant needs to analyze the drawn-up formula, check whether all the features in it are essential to achieve the declared technical result. Non-essential features should be excluded from the claims of the utility model.

The claim of a utility model must be based entirely on the description of the utility model

The scope of legal protection of the utility model determined by the claim of the utility model must be confirmed by a description of the utility model (clause 40 (2) of the Requirements).

Thus, when drawing up a claim for a utility model, it is important to check whether all the features of the claimed solution are disclosed in the description, namely in the sections "Disclosure of a Utility Model", "Implementation of a Utility Model".

The features in the claims of the utility model must be clear

Features of a utility model should be expressed in the claims of the utility model in such a way as to ensure the possibility of understanding their semantic content on the basis of the state of the art by a person in the field of technology (clause 40 (4) of the Requirements).

In general, this requirement applies to both the claims and the description of the utility model. You should not include in the application materials terms invented by yourself, use non-commonly used definitions. At the same time, in the case of the use of terms and designations that are not widely used in scientific and technical literature, their meaning must be explained in the text of the application at the first use. All symbols must be deciphered. In the claim, it is better to avoid conventions.

The features of dependent claims of the claims must not contradict the independent claim

The features of dependent clauses should not replace or exclude the features described in the clause to which it is subordinate (clause 41 (4) of the Requirements).

For example, if an independent claim states that the cut is made in the form of a circle, in the dependent clause, specifying the execution of an oval-shaped cut will be a violation.

In the independent claim of the claims of the utility model, the use of alternative features is not allowed

It is not necessary to include in the independent claim of the claims of the utility model alternative essential features that are most often used with the expressions "at least", "and/or", etc. (clause 40 (1a) of the Requirements).

It should be noted that features expressed in the form of a range of continuously changing parameter values are not considered as alternative features, for example, "angle is 5-8°", "length from 5 to 8 mm".

However, when the features expressed in the form of a range of values are included in the claim, in the description in the section "Implementation of the utility model", it is necessary to provide information proving the achievement of the technical result in the entire range of values presented, for example, at the lower and upper values.

Nuances in drawing up a utility model claim

In continuation of the previous paragraph, it is important to emphasize that recently the following trend has been noticed in the consideration of applications for utility models in Rospatent: examiners perceive such features as, for example, "with an adjacent angle in the range of 2-10°" as parameters characterizing an alternative design of a utility model, which is a violation of 40 (1a) of the Requirements, and ask to indicate a point value of the angle, for example, 7°, thereby characterizing only one technical solution in the claims.

At the same time, for a utility model, the characteristic of which includes alternative features excluded from the claims, the applicant is invited to file divisional applications while maintaining the priority established for the initially filed application.

Consideration of features expressed in the form of a range of continuously changing parameter values as alternative features is ambiguous, both for applicants filing applications independently and for patent attorneys, since such examination conclusions contradict the provisions of the Requirements.

In such cases, the filing of segregated applications with point values of the parameter is absolutely absurd, since it implies too many applications that have weak protection due to the presence of an easily circumvented feature expressed in one specific number, which cannot be beneficial to the applicant either strategically or economically.

In view of the above, as a recommendation to applicants who have encountered a similar situation when filing applications on their own, when responding to the request, refer to the above paragraph 40 (1a) of the Requirements and prove that these features, expressed as a range of continuously changing values of the parameter, are not considered as alternative features, but are, for example, an acceptable error.

It should be noted that the preparation of a utility model claim, as well as the preparation of the application itself, is far from a trivial task, and requires knowledge of regulatory documents, subtleties and nuances that are developed in practice. When drawing up a claim for a utility model on your own, especially if the applicant does it for the first time, it is impossible to do without mistakes and provide for all the subtleties and requirements in advance.

Experts and patent attorneys of Zuykov and partners will help to save time and improve the quality of the filed application for a utility model, who will help to competently draw up the claims of the utility model and correctly draw up the application materials, which will significantly increase the chances of obtaining a positive decision on the grant of a patent.