Mistakes That “Kill” a Patent: How to Pass Substantive Examination in Russia

Substantive examination is the most important stage in the consideration of an application for an invention in the Russian Patent Office (Rospatent). It is at the substantive examination stage that the compliance of the application materials with the rules for compiling, filing, and reviewing documents that are the basis for the performance of legally significant actions for the state registration of inventions, and the requirements for the documents of an application for a patent for an invention are checked. Refusals to grant patents for inventions in the Russian Federation at the stage of substantive examination arise due to errors of applicants. Within the framework of this article, the key typical mistakes are highlighted, and advice on how to avoid them based on the practice of patent attorneys is offered.

Mistake 1: Premature Disclosure

Quite often, inventors, especially students and researchers, when creating a technical solution, prioritize the publication of a scientific article with the disclosure of information about the features and essence of the solution created by them, rather than patenting the invention. As a result, when the question of patenting this development arises after a while, it is no longer possible to obtain a patent.

Disclosure of information relating to the invention by the author of the invention, the applicant or any person who has received this information directly or indirectly from them (including as a result of the exhibition of the invention), as a result of which information on the essence of the invention has become publicly available, shall not be a circumstance preventing the recognition of the patentability of the invention, provided that the application for a patent for the invention is filed with the patent office within twelve months from the date of the invention disclosure.

That is, the publication of scientific articles, posts on social networks, speeches at conferences and exhibitions, in which the applicant discloses information about the features and essence of his solution, includes a countdown for a period of twelve months for patenting a technical solution. At the same time, if information about a technical solution (product) is in the public domain, for example, in a published article, a booklet from a conference or exhibition, on social networks, or on the company's website for more than 12 months, then it is not possible to obtain a patent for such a solution.

Tip: applicants should first file an application for a patent for an invention with Rospatent and only after that disclose information about the features and essence of their technical solution in open sources.

Mistake 2: Lack of novelty and inventive step

Every second inventor is convinced that the technical solution created by him is unique and new, and therefore immediately applies for a patent for an invention of the Russian Federation. However, filing an application for an invention without conducting a preliminary search to determine patentability is a very risky tactic, most often leading to refusals to grant a patent for an invention.

At the stage of substantive examination, the invention is checked for compliance with the patentability conditions of "novelty" and "inventive step". At the same time, the invention is new if it is not known from the state of the art, and has an inventive step if it does not clearly follow from the state of the art for a person skilled in the art: patents, applications, scientific reports, articles, books, product catalogs, and other information from all over the world.

Tip: before filing an application for an invention, order the service of conducting an international patent information search from patent attorneys or conduct a search yourself, analyze the market, and assess the feasibility of patenting your technical solution.

Mistake 3: Lack of industrial applicability

At the stage of substantive examination, the invention is also checked for compliance with the patentability criterion "industrial applicability". An invention is industrially applicable if it can be used in industry, agriculture, health care, other sectors of the economy, or in the social sphere.

Insufficient description of the technical solution in the application materials, the use of pseudoscientific methods or theories, or teachings that contradict the fundamental laws of nature, for example, a time machine or a perpetual motion machine, cast great doubt on the practical implementation of the solution.

Tip: before filing an application, assess the feasibility of your idea. When drawing up the application materials, pay special attention to the disclosure of information such as the scope of application, means and methods of implementing the technical solution, give examples of implementation, and experimental data confirming the achievement of the claimed positive effect in the description of the invention.

Mistake 4: Insufficient disclosure of the invention

Due to worries about the possible plagiarism of the created technical solution, inventors try to minimize the amount of information about their technical solution in the application materials, keep silent about details, use general concepts without disclosing particular versions of this general concept, do not disclose the distinctive features of structural elements, provide a wide range of numerical values of indicators, exclude information about the method of implementation of the declared technical solution. All of the above actions lead to a refusal to grant a patent due to insufficient disclosure of the essence of the invention.

In order for the claimed invention to be sufficiently disclosed in the application materials, it is necessary:

• indicate the purpose of the invention;
• indicate the technical problem solved by the creation of the invention and the technical result obtained by the invention;
• to disclose a set of essential features necessary to achieve the technical result specified by the applicant;
• give at least one example of the invention (experimental data or theoretical justifications);
• disclose in the application documents the methods and means by which it is possible to carry out the invention with the implementation of the purpose in the form in which it is characterized in each of the claims, including in the case of the use of general concepts to characterize the features;
• give an example of the invention showing how the invention can be implemented using at least one particular form of implementation of a feature expressed by a general concept, or at least one value of a parameter included in the interval, if the claims use at least one general concept or an interval of values of any parameter to characterize a feature of the invention.

Tip: to prepare the application materials, we recommend contacting patent-verified specialists who will preliminarily check the materials of your application for sufficiency of disclosure and give them appropriate recommendations if it is necessary to supplement the description, which will increase the chances of obtaining a patent for the invention.

Mistake 5: Provision of additional materials and information not disclosed in the original application materials in response to the request/notification of the examination

Often, self-filing applicants, in an attempt to overcome substantive examination observations in responses to requests/notifications, send to the Office corrected application materials with new data and information that were not disclosed in the original application at the filing date. Such corrected materials shall be equated by examination to materials amending the application for the invention in substance, which will lead either to the next request/notification or to the refusal to grant a patent.

The applicant should understand that he cannot correct or expand the originally submitted application materials with new facts (experiments, calculations, examples, etc.) that go beyond the scope of the original documents.

Tip: when compiling and preparing the application materials, include in the description of the invention detailed examples, calculations and justifications for the compliance of the claimed solution with the patentability criteria "novelty", "inventive step" and "industrial applicability", when preparing responses to examination requests, do not include information in the application materials that is not disclosed as of the date of filing, describe detailed arguments in the text of the response.

Mistake 6: Delay in sending responses to requests/notifications of examination

The deadline for responding to the Office's correspondence is strictly regulated, so a request for substantive examination must be answered within 3 months from the date of sending the request, and a notification of the results of the patentability test must be sent within 6 months from the date of sending the notification.

In case of failure to submit a response and/or additional materials within the specified period, the application is considered withdrawn. The period for restoring the application is also regulated, until the expiration of twelve months from the date of expiration of the established period.

Tip: when receiving an examination request/notification, mark the date of sending (indicated in the document) and calculate the response time manually, send a response to the Office in advance, or delegate the filing of the application, the preparation of responses to a patent attorney who will monitor the status of the application.

Mistake 7: Ignoring the expert's comments

Another fatal mistake of the applicants is the ignorance or incomplete consideration of the expert's comments in the requests for substantive examination, which is interpreted by the examination as a refusal to finalize. This will inevitably lead to a decision to refuse to grant a patent and terminate the processing of the application, as a result of which the applicant will lose all fees paid, the priority of the invention will burn out, and a new application will be required to retry.

Tip: when receiving a request/examination notification, structure your response: analyze each item of the request by numbers, make changes to the description, claims and drawings (within the scope of the originally filed application materials), support the arguments with experimental data, comparisons with analogues and references to the Civil Code of the Russian Federation, Rules and Requirements, or engage a patent attorney to analyze and prepare documents.

The above practical advice is especially relevant for inventors who independently draw up and file applications with Rospatent, as a result of which they face refusals due to the above situations.

In order to eliminate the risks of making such mistakes and not to "kill" the chances of obtaining a patent, we advise applicants to contact specialists - patent attorneys who have extensive experience in patenting, know patent legislation, and know how to apply it in practice.