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Kristina Mulina

Assistant to Patent Attorney

31 May 2021

Right Time to Patent Invention

The innovation market is growing every day, which means that more and more inventions are being patented every day. To develop a business, owners need patents, and if an innovation is not patented, it will be much harder to sell, and its price will be dozens of times lower than for a similar but patented product. At the same time, patenting a technical solution is a difficult task for many. Lack of patent literacy can be a problem not only for entrepreneurs whose business is based on one or more inventions, but also for ordinary people who are planning to patent inventions. For the purpose of avoiding or minimizing the number of rejections of patent applications, below are some tips when it is necessary to file a patent application.

Right from the beginning, let’s turn to the legislation in order to understand, under which conditions it is possible to obtain a patent. In accordance with Article 1350 of the Civil Code of the Russian Federation, an invention is granted legal protection if it is new (i.e. it is not known from the prior art), having an inventive step (i.e. for a specialist it does not explicitly follow from the prior art, the prior art includes any information that has become universally available before the priority date of the invention, and is industrially applicable (i.e. it can be used in industry, agriculture, health care, other sectors of economy or in the social sector). Therefore, the first step will be to understand whether the solution meets the criteria of patentability. To do this, there is a need to conduct an international patent information search. The applicant itself or a specialist in the field of intellectual property may be able to do this. More details are available in another article on the subject of the international patent information search, published on our website. Based on the results of the search, the applicant will understand the chances of obtaining a patent after filing an application with the patent office. When the results are negative, it will not be advisable to file an application.

Imagine the following situation: you came up with a really worthwhile technical solution, the positive results of your search confirmed it, and in a state of euphoria, you shared your success with friends, colleagues, in social networks, or in some other way disclosed information about your technical solution. A few months later you applied for an invention, but the application is rejected. No matter how long your frustration lasts, you only to blame have yourself in situation like this. After all, the priority of an invention is established by the date of the application filed with the Federal Service for Intellectual Property , and only after that can you disclose the essence of your technical solution. Otherwise, someone who is quicker than you will be able to file an application for your technical solution.

To be fair, there is a reverse side of the coin. Often, scientists or entrepreneurs, having disclosed the essence of their technical solution, for example, at an exhibition, subsequently do not even try to patent their brainchild due to the disclosure of information. Meanwhile, the deadline for filing a patent application for an invention or utility model is 6 months from the date of disclosure, and 12 months for industrial designs. Article 11 of the Paris Convention for the Protection of Industrial Property also provides for temporary protection for inventions, utility models and industrial designs exhibited at official or officially recognized international exhibitions organized in the territory of one of the countries ratifying the Convention. Thus, it is possible to apply for an invention within 6 months from the date of disclosure.

Let’s assume that the technical solution meets the criteria of patentability, the essence of the technical solution has not been disclosed, and the applicant is ready to apply for an invention, but the applicant understands in advance that the subsequently obtained patent will be just for the sake of appearance. It would be worthwhile to use such a patent, for example, as a demonstration of professionalism and competitive advantage in front of the clients, business partners or competitors. Also, the patent will be very helpful in advertising and PR. The great benefit of having a patent is that no one can use a created and patented technical solution without the owner’s permission, the patent will allow the holder to be a monopolist or will give it the opportunity to transfer the rights to use patented invention to third parties for a fee.

Summarizing the above, we understand that a patent for invention should be issued if your technical solution, planned for patenting, meets all the criteria of patentability, the applicant has positive results of the international patent information search on the technical solution, the applicant will monetize it after obtaining a patent knowing how to do it.

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