Obtaining exclusive rights to an identical invention and utility model for the same person during the grace period: is it legal?

Let us analyze the situation when the same applicant, with an interval of one month, has filed two applications for an identical utility model and invention, while in the application for the invention there is a reference to the utility model as a prototype, but, the formulas do not differ. Based on both applications’ consideration results, the Examiner made a positive decision and granted patents for a utility model and an invention, respectively.

Let's look into if this applicant rightfully has the exclusive right to the same technical solution protected twice, and do third parties have grounds for revoking one of the issued patents in this situation?

According to paragraph 3 of Art. 1350 of the Russian Federation Civil Code, disclosure of information related to the invention by the author of the invention, the applicant, or any person who received this information directly or indirectly from them (including as a result of exhibiting the invention at an exhibition), as a result of which information about the essence of the invention became publicly available, is not a circumstance, preventing the recognition of the patentability of an invention, provided that an application for a patent for the invention is filed with the federal executive authority for intellectual property within six months from the date of disclosure of information. The burden of proof that the circumstances by virtue of which the disclosure of information does not prevent the recognition of the patentability of the invention occurred lies with the applicant.

According to paragraph 2 of Art. 1383 of the Russian Federation Civil Code, if the priority dates of an invention and an identical utility model, in respect of which applications for the grant of patents are filed by the same applicant, coincide, after the grant of a patent for one of such applications, the grant of a patent for another application is possible only if the federal executive body intellectual property authorities by the owner of a previously issued patent for an identical invention or an identical utility model, an application to terminate this patent. In this case, the previously issued patent is terminated from the date of publication of information on the grant of a patent for another application in accordance with Article 1394 of the Russian Federation Civil Code. Information on the grant of a patent for an invention or utility model and information on the termination of a previously issued patent shall be published simultaneously.

This applicant used a "cunning" strategy, realizing that patents for applications for utility models are considered and issued by Rospatent faster than for applications for inventions. Thus, without introducing any distinguishing features into the second application, he received two patents due to the examiner's inattention.

It should be noted that in the situation under consideration, Rospatent established different priority dates that differ from each other by one month, which raises the question of why the originally filed application for a utility model was not opposed to a later-filed application for an identical invention due to non-compliance with the patentability condition "novelty"?

The answer is simple. According to Art. 1350 of the Civil Code of the Russian Federation, when establishing the novelty of an invention, the state of the art also includes, subject to their earlier priority, all applications filed in the Russian Federation by other persons for the grant of patents for inventions, utility models and industrial designs, the documents of which any person is entitled to familiarize with in accordance with paragraphs 2 and 4 of Article 1385 or paragraph 2 of Article 1394 of the Civil Code of the Russian Federation.

Firstly, the application for an invention is filed not by another person( s ), but by the same person as an identical application for a utility model. Secondly, since the difference between the filing dates of applications is only one month, the first application for a utility model has not yet passed all the stages of examination, and at that time it was no published information on the grant of a patent for a utility model, and in accordance with paragraph 2 of Article 1394 of the Civil Code of the Russian Federation, any person was not entitled to familiarize himself with the documents of this application.

What about third parties who are hindered by this “double protection” and who do not want to face the consequences of the fact that, for example, by concluding a license agreement on the basis of a utility model patent, they will infringe a patent for an invention? And there is only one way out - challenging the issuance of a patent for an invention in Rospatent.

It should be noted that there is a gap in the patent law in this matter. But still, despite the fact that the Civil Code of the Russian Federation does not contain an explicit prohibition on the registration of several exclusive rights to the same object by the same person in relation to inventions and utility models, it does not contain such permission.

This is proved by the fact that sooner or later there will be legal consequences in the situation described above.

For example, a patent holder of several patents for essentially the same invention and utility model may hold the same person liable twice for the same infringement, may issue two exclusive licenses with the same scope of rights to different persons, or, for example, overestimate the number of damages for the use of the same object under two different patents.

In addition, he has an illegal opportunity to alienate different persons of equal rights in scope. At the same time, these persons will be able to dispose of the rights each at their own discretion, which will further lead to litigation between them.

Thus, in the current situation, the applicant does not rightfully have a double exclusive right to the same technical solution, and the application for an invention by Rospatent should have been denied a second patent. But, since this did not happen for some reason, a third party has every reason to challenge the grant of a patent for an invention by filing an appropriate objection with Rospatent on the basis of Article 1398 of the Civil Code of the Russian Federation.