Review of amendments to regulatory legal acts on the registration of IT solutions

Issue of Regulation in IT Inventions and Utility Models Registration

As is known, in the field of information technology there are quite a lot of gaps in matters of regulating the registration of inventions and utility models.

Often, when trying to register IT solutions, developers received refusals to issue a patent due to its classification as an object of copyright - a program for electronic computers, rules for conducting business activities or mathematical methods that are not inventions according to paragraph 5 of Art. 1350 of the Civil Code of the Russian Federation “Conditions for the patentability of an invention.”

In this regard, in order to get closer to world practice and meet the needs of IT business, there is a need to expand the rather limited legal framework for technical solutions related to products or methods that are characterized by the use of programmable/customizable means, namely: computer devices, information and telecommunications networks, algorithms that are implemented using software.

Taking into account the fairly general legal approaches to these objects, it was indeed difficult for the expert to determine whether the object was patentable or not.

In this regard, the Order of the Ministry of Economic Development of Russia dated March 15, 2024 No. 148 was issued “On amendments to some orders of the Ministry of Economic Development of Russia on issues of state registration of inventions and utility models, as well as conducting a preliminary information search for inventions and utility models,” registered with the Ministry of Justice of Russia 13 May 2024 N 78120, which first of all clarifies the rules for drawing up and submitting documents for state registration of inventions and utility models in the IT field, makes the review procedure by Rospatent experts clearer, understandable and systematized.

Review of Changes Made to the Rules Based on the Issued Order No. 148 dated March 15, 2024

Below we will consider the main and changes made to the Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of inventions. It is worth noting that similar amendments were made accordingly to the Requirements for documents of an application for a patent for an invention and utility model.

• According to paragraph 50 of the Rules, now “based on the results of checking the compliance of the claimed invention with the conditions of patentability provided for in paragraph 5 of Article 1350 of the Code, the declared invention in the field of information technology is recognized as relating to objects that are not inventions specified in paragraph 5 of Article 1350 of the Code, as such in that the case when the generic concept reflecting the purpose of such an invention, given in the claims, directly relates the claimed invention to a program for an electronic computer.”
• According to clause 82 of the Rules, “an invention is recognized for a specialist not in the following manner clearly from the prior art, if during the inspection no solutions are identified that have features that coincide with its distinctive features, or such solutions are identified, but the knowledge of the influence of these distinctive features on technical result specified by the applicant. When checking the inventive step of an invention in the field of information technology, the knowledge of the use of a computer device or an information and telecommunication network can be justified using the general knowledge of a specialist in this field of technology. However, if the applicant, within the period specified in paragraph two or paragraph three of clause 88 of these Rules, presents reasonable arguments refuting the conclusions about the knowledge of the computer device or its parts, the knowledge must be confirmed by references to sources of information during further consideration of the application.”
• According to paragraph 42, “In the section of the description of the invention “Disclosure of the invention”, information is provided with completeness sufficient for the implementation of the invention by a specialist in this field of technology, revealing the technical problem solved by the inventor, the technical result and the essence of the invention as a technical solution related to the product or method, including the use of a product or method for a specific purpose, in this case: technical solutions related to products or methods that are characterized by the use of programmable (customizable) multifunctional tools, in particular computer devices, information and telecommunication networks, at least one of which features are carried out using software, as well as technical solutions related to machine-readable storage media containing a program for an electronic computer and (or) data, the form or content of which are intended for the operation of programmable (customizable) multifunctional tools, are considered as inventions in field of information technology."

According to paragraph 50(1), “when disclosing the essence of an invention in the field of information technology, it is required:

• to characterize methods in the field of information technology, use, in particular, the following characteristics, namely the presence:

1. actions to input (output) information into (from) a programmable (customizable) multifunctional tool;
2. computational and logical operations performed by a programmable (customizable) multifunctional tool on information;
3. the presence of actions to record information into memory or retrieve information from memory;
4. the order of actions in time (sequentially, simultaneously, in various combinations);
5. conditions for carrying out actions (operations);
6. the means used (programmable (customizable) multifunctional means, input, output, information storage devices, actuators);

• to characterize methods in the field of information technology based on data processing using artificial intelligence, use, in particular, the following characteristics, namely the presence:

1. actions to perform computational and logical operations by a programmable (customizable) multifunctional tool, characterized, in particular, by the features of the artificial intelligence algorithm, including the information processing method, parameters of the information processing method;
2. actions to train the artificial intelligence algorithm;
3. the means used (programmable (customizable) multifunctional means, input, output, information storage devices, actuators, data lines);
4. actions to collect and pre-process information for training the artificial intelligence algorithm;

• to characterize a programmable (customizable) multifunctional tool, use, in particular, the following characteristics , namely the presence:

1. a programmable (customizable) multifunctional tool capable of performing multiple computational and logical operations based on a given program and information;
2. input, output, information storage devices, actuators, data transmission lines;
3. computational and logical operations performed on information by a programmable (customizable) multifunctional tool;
4. a machine-readable storage medium containing a program for an electronic computer, which ensures that a programmable (customizable) multifunctional tool performs certain computational and logical operations;
5. a machine-readable storage medium containing data, the form of presentation of which (structure or format) or the content of which provides control over the operation of a programmable (customizable) multifunctional tool that processes information;

• to characterize a programmable (customizable) multifunctional tool embodying artificial intelligence systems, use, in particular, the following characteristics, namely the presence:

1. programmable (customizable) multifunctional tool;
2. input, output, information storage devices, data transmission lines;
3. functions of a programmable (customizable) multifunctional tool for performing computational and logical operations, characterized, in particular, by the features of the artificial intelligence algorithm, including the information processing method, parameters of the information processing method;
4. functions of a programmable (customizable) multifunctional tool for performing actions to train an artificial intelligence algorithm.”

According to subclause 3 of clause 54, “if the device contains or the method uses an element characterized at the functional level, and the described form of implementation involves the use of a programmable (customizable) multifunctional tool, information confirming the ability of such a tool to perform the specific task prescribed to it as part of this device or in method of function; if such information includes an algorithm, in particular a computational one, it is preferable to present it in the form of a block diagram or, if possible, a corresponding mathematical expression.”

This order introduced a clear definition of IT solutions with a distinction between those that can be protected as inventions and those that can be protected as utility models, the concept of the essence of IT solutions is given separately for methods, and separately for devices; the verification of inventive step for such technical solutions has been clarified.

In addition, the order established outcome criteria that should not be considered technical. In particular, the results achieved only through the implementation of a certain order of actions and/or agreement between its participants or established rules, determined only by the peculiarities of the semantic content of information, consist of entertainment and/or entertainment.

Thus, based on the above review of new amendments to regulations in matters of regulation of exclusive rights in the field of information technology, we can conclude that they will eliminate the existing shortcomings of patent legislation in this part, and will enable IT specialists to better navigate the legal field, it is easier to defend your decisions, and find a common language with experts, more correctly drawing up applications for inventions and utility models in the field of IT.