Main features of execution of application for an invention

Key words: intellectual property, patents, patent rights, exclusive rights, invention, application for invention.

In accordance with the definition enshrined in the Civil Code of the Russian Federation ["Civil Code of the Russian Federation (Part Four)" No. 230-FL dd. 18.12.2006 (as in force from 31.12.2014)] , invention – is "…a technical solution in any area is protected as an invention if it relates to a product (including a device, substance, strain of microorganisms, plant or animal cell culture) or a method (the process of carrying out actions in respect of a material object by material means), including the use of the product or method for a specific purpose." An invention is provided with legal protection, if it is novel, has an inventive step and is industrially exploitable. However, the presence of these features in themselves is not enough: for the recognition and protection of the rights to invention a patent is necessary.

To receive a patent it is necessary to fill in an application and submit it to the Federal Service for Intellectual Property - Rospatent. Further, upon the application an examination is carried out, and according to its results a decision is made on granting (or non-granting) a patent.

The general procedure for filing an application (and, in general, obtaining a patent) for an invention is established in the Civil Code, and the specific requirements to the application, to the attached documents and to the application are established by a special Administrative Procedure [Order of the Ministry of Education and Science (Minobrnauka) No. 327 dated 29 October 2008 "On approval of the Administrative Regulations to Govern the Performance by the Federal Service for Intellectual Property, Patents and Trademarks of Its Functions to Process and Examine Patent Applications and to Grant Patents in Accordance with the Established Procedural Rules " (registered in Ministry of Justice of the Russian Federation by No. 13413 dd. 20.02.2009)]

So, the application is submitted to Rospatent by a person who has the right to receive a patent - the "applicant", and no document is required to confirm such right. The right to receive a patent for an invention originally belongs to the author of the invention, but can be transferred (or transfer) to a legal successor - by law or contract. In addition, also representatives who have power of attorney can apply, among whom patent attorneys to be especially noted: thus, citizens permanently residing outside the territory of the Russian Federation and foreign legal entities conduct business with Rospatent only via patent attorneys registered with Rospatent.

The applicant has the right to introduce additions, clarifications and corrections into the application for invention before the decision on the application is made, if these changes do not modify the application on the merits. Also, the applicant has the right to revoke the submitted application for the invention before the state registration of such invention in the state register.

As for the application for the grant of a patent itself, such an application should refer to one invention or to a group of inventions related to each other so that they form a single inventive concept ("principle of unity of invention").

The application for an invention shall necessarily contain:

an application for the grant of a patent specifying the author of the invention and the applicant, as well as the place of residence or location of each of them;
a description of the invention that discloses its essence with a completeness sufficient to enable the practice of the person skilled in this pertinent art;
the formula of the invention, clearly expressing its essence and completely based on its description;
drawings and other materials, if they are necessary to understand the essence of the invention;
essay.

In accordance with the Regulations, the application is submitted on a typographical form or in the form of a computer printout in accordance with the established sample, which has a clear structure. And, if any information can not be placed completely in the corresponding columns, they are given in the same form on the additional sheet with the indication in the corresponding line of the application: "see continuation on the additional sheet".

The Regulations contains detailed requirements for completing each column of the application: it is indicated that the lines of the application located at its top are intended for entering details after receipt in Rospatent, and the applicant shall not fill them in; it is indicated how to fill in the "address for correspondence" lines, how to indicate the name of the required invention, information on the applicant, on the representative, on the author of the invention, on the request for a priority establishment, etc.

It is also established in the Regulations, the way the description of an invention shall look like: according to clause 10.7.1. of the Regulations, the description should disclose the invention with the completeness sufficient to implement it. Description of an invention begins with the name of the invention (it should be "concise and accurate" and, as a rule, characterizes its function and is stated in the singular). The Regulations contains special requirements to the names of chemical compounds, plant and animal cell lines, to genetic constructs, etc.

The application shall contain the following sections:

pertinent art of the invention;
technical level;
disclosure of the invention;
brief description of the drawings (if any in the application);
exercise of invention;
sequence (if nucleotides and/or amino acids sequence are specific to the invention).

Among the general requirements for the content of the description sections, it is especially necessary to note the following:

In the description section "Pertinent art of the invention", the scope of the invention is indicated. If there are several such areas, then primary ones are specified.
In the section "Technical level” information is provided on the analogues inventions known to the applicant with an indication of an analogue closest to the invention (prototype) among them.
In the section “disclosure of the invention” details are provided, disclosing the essence of the invention, and the essence of the invention is expressed in a combination of essential features, sufficient to achieve the technical result provided by the invention. Essential features are those that affect the possibility of obtaining a technical result, i.e. there is a cause and effect relationship with the indicated result. The Regulation lists the features used to characterize devices, chemical compounds, compositions, substances obtained by nuclear termination, strains of microorganisms, plant or animal cell lines and methods.
The technical result is "a feature of the technical effect, phenomenon, property, etc., objectively appeared in the process of the method implementation or in the production process or while using the product, including when using the product obtained directly by the method externalizing the invention."
Section “Exercise of invention” shows the way an invention can be implemented with the realization of the designation indicated by the applicant, preferably by providing examples and references to drawings or other graphic materials, if any.

Formula of invention is intended to determine the scope of legal protection granted by a patent and should be completely based on the description, express the essence of the invention and be clear. The formula itself can be single-claim (to characterize one invention "... a set of features that have no development or elaborateness in relation to particular cases of its implementation or use") and multiclaim ("…to characterize one invention with the development and/or elaborateness of the scope of its characteristics in relation to particular cases of implementation or use of the invention or to characterize a group of inventions…") and can conclude one or several items.

Materials explaining the essence of the invention can be provided in the form of graphic images (drawings, sketches, etc.), photographs, tables – to be presented on separate sheets.

Assay – is "“…a summary of the invention description, including the name of the invention, the characteristic of the pertinent art to which the invention relates and/or the field of use thereof, if it is not clear from the name, the character feature of the invention indicating the technical result achieved", and may also contain additional information. The recommended volume is up to 1000 characters.

As for the general requirements for the application, it shall be submitted in Russian, the documents attached to the application can be submitted in a foreign language, but in this case it is necessary to attach their translation into Russian. The application shall be signed by the applicant or his representative. The application should not contain expressions, drawings, pictures, photos and other materials that are scandalous and violate public order, contain negligent statements in relation to products or technological processes, as well as applications or security documents of other persons, statements or information that are clearly not relevant to the invention, or unnecessary for the recognition of application documents in accordance with the requirements of the Regulations. All documents shall be executed on a solid white smooth non-glossy paper and so that readable copies can be made. The Regulations contain rather strict requirements to numbering, type face, formulas writing in the application, etc.The completed applications for inventions are submitted directly to Rospatent by fax (followed by submission of the original), in electronic format in a computer-readable medium (with simultaneous submission on paper) or using an electronic digital signature, or sent by post to the following address: Berezhkovskaya nab. 30-1, Moscow, G-59, GSP-3, 125993, Russian Federation.

In general, it should be noted that while the procedure of submitting an application for an invention is described in detail in the legislation; it will be rather difficult for the author of the invention, if he does not have a legal education or significant experience, to gain insight on the provisions of the Civil Code and the Administrative Regulations. To avoid unnecessary time costs, numerous problems and significantly reduce the chances of rejection to register the invention, it is recommended to contact experts in this area, who are aware of all the details of registration of applications for inventions.