Myths about patents and misperceptions regarding patenting

Nowadays, the concepts “patent” and “patenting of inventions” are quite common in the lexicon of the persons, who are engaged in patenting the subject matters of intellectual property by themselves. However, I can note on the experience that quite many of the applicants have an incorrect idea of the main aspects of the patent law, what leads subsequently to a sad fate of the patentable subject matters of intellectual property. I shall give below, in my opinion, the main myths about patents and misperceptions regarding patenting.

Many inventors believe that if they have developed their technical solution, they can disclose its essence in the publicly available sources of information, and after a year or two, they can patent it, if this solution turns out to be profitable – this is one of the main misperceptions regarding patenting. After all, subsequently, when the applicants decide to patent their inventions, they are surprised immensely, when they learn that it is not possible to patent the already disclosed technical solution due to the lack of a criterion of a world novelty, despite the fact that the essence of the technical solution planned for patenting has been disclosed by the applicant himself. Thus, in accordance with Paragraph 3 of Article 1350 of the Civil Code of the Russian Federation, the applicant cannot obtain a patent for his development at any time, but only by filing the application no later than 6 months after the disclosure of the technical solution.

Other applicants, on the contrary, are so careful about their development that they, when filing the application to the Office, are afraid of the information leakage and the disclosure of the essence of the technical solution – this is also a misperception, the information leakage will not occur. However, the applicant must understand that the essence of the invention or the utility model will be disclosed in public sources, because this is one of the conditions for granting the legal protection. And the exclusive right provided by the granted patent means that no one can use the created and patented development without a permission of the patent holder, therefore, obtaining a legal monopoly in exchange for the disclosure of the information is beneficial for the patent holder.

The patent is obtained, hence, the patent holder is defended from the violation of other persons’ patents – this is another myth about the patent, in which many patent holders believe. For example, when starting the own manufacture, many companies file the application for their own patent, which usually defends a modification or a particular case of the existing patented development. Therefore, while taking someone’s invention as a basis and using it completely and without the permission of the right holder, the rights of the latter will be violated. Despite the fact that the new patent obtained will be supplemented based on the known invention, this will not cancel the fact of the full use of the original patent. In this case, it will be necessary to conclude a license agreement for the right of the use of the invention.

The next fairly common myth that follows from the above example is that the patent for an invention is a guarantee of the full defense of the invention, and no one will use the patented technology in the own manufacture. In reality, the patent holder must keep track of the illegal use of the patent himself, and if the invention is worthy, then it will be certainly used, and in this case, the patent holder will have to make great efforts, to spend money and time to the search of the violators.

Another myth is that after obtaining the patent in the Russian Federation, the patent holder may file the applications to other countries. Many applicants, having filed the application for an invention in the Russian Federation, wait for a positive decision on granting the patent first in order to make sure thereby that the claimed technical solution is patentable, and only after that they file the applications to other countries. However, this opinion is erroneous. In accordance with Article 1382 of the Civil Code of the Russian Federation, the foreign applications must be filed within twelve months from the date of filing the application for an invention or a utility model in the Russian Federation. And due to the fact that in the majority of cases it can take more than a year to patent the inventions in the Russian Federation, foreign patenting must be planned before obtaining the Russian patent, because, when filing the foreign application after a twelve-month period, the information on the published application or patent in the Russian Federation may be opposed during the examination of the foreign application, what will lead to a refusal to grant the patent.

The next misperception regarding foreign patenting consists in the fact that if the patent is granted in one country, for example, on the territory of the Russian Federation, then the patent to the same invention will be granted in other countries. In practice, the situation is quite different. It is necessary to understand and to remember that although the rules in the vast majority of countries are almost the same, but there is a difference between them, because each country has its own requirements to the patentability of the invention, its own rules for considering the applications, its own examination.

Another myth about the patent, or rather about its validity period consists in the fact that many people think that the patent is valid during the whole life, and at the same time, no fees should be paid. But in fact, the picture is quite different: in accordance with Article 1363 of the Civil Code of the Russian Federation, the validity period of the exclusive rights to the invention shall be 20 years, and it shall be 10 years to the utility model. At the same time, in accordance with the Statute on Patent and Other Fees, the annual fees must be paid for the legally significant actions. To maintain the validity of the patent for the invention, the annual fees shall be paid from the third year counting since the date of filing the application, and since the first year – for a utility model.

The above examples of the patent myths and misperceptions regarding patenting prove once again that the process of patenting is a rather complicated procedure that requires a lot of knowledge and experience in this field, therefore, patenting technical solutions should be entrusted to the professionals in this field, namely, the patent attorneys, who will help to compose the application correctly and warn the applicants about all the pitfalls and possible scenarios.