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Strategy for overcoming the objections of the substantive examination of the application as part of preparing a response to the request or participating in an expert meeting

17 Nov 2020 (updated at 31 May 2021)
Patent Attorney / Chemical Specialist

As you know, during prosecution of an application for an invention or utility model according to search results, which includes the identification of analogues (patent and non-patent documents), information about which is published before the priority date (filing) of the application, the expert of the Office can send to the applicant or his representative from 1 to 3 substantive examination requests, although their number is not limited by law.Within the scope of the examination, the expert performs a check taking into account the identified analogues of conformity of the declared technical solution established in Articles 1350-1351 of the Civil Code of the Russian Federation for this or that object. As for a utility model, the technical solution must meet the patentability conditions of “novelty” and “industrial applicability”; as for an invention it must meet the patentability conditions “novelty”, “inventive step” and “industrial applicability”. [1]In addition, the unity of the invention and possible disadvantages connected with the preparation of the application and not previously identified at the stage of the formal examination are checked.If there are any drawbacks of the application related to the non-compliance of the technical solution with the patentability conditions or the preparation of the application, the expert will send the applicant a request stating the reasons that impede the grant of a patent with the proposal to amend and correct the application, including the claims or utility model , as a rule, by taking from the description or dependent claims the additional distinctive features of the claimed technical solution from the existing level of technology, thereby narrowing the scope of its claims.In response to the request, the applicant must provide his arguments and comments, and if necessary - additional information containing examples of implementation (experimental data) confirming the purpose and achievement of the claimed technical result. If it is necessary to amend the description, claims and abstract, then you must provide replacement sheets of application materials together with your comments and arguments. The deadline for providing a response to an examination request in the Russian Federation is regulated by 3 months from the moment of sending the request.When preparing a response to a request, it is important to pay attention to the following:- If the applicant does not agree with the opinion of the expert, he must submit a reasoned answer with arguments of technical field, with references to technical literature. Sometimes the applicant needs to mention mathematical calculations with references to the known laws of physics or mathematical theories in support of his arguments. It often happens that the expert’s comments are related to a lack of understanding of any complex technical aspects of the invention or utility model, which seem absolutely obvious to the applicant as a specialist in this field of technology. Often this happens when the applicant is a highly qualified specialist in a narrow field, and the expert does not have similar deep specialized knowledge. In this case, it is advisable for the applicant to explain in detail to the expert all technical aspects, even those that seem simple and obvious to the specialist, while doing so tactfully and correctly, without referring to the incompetence of the expert.- If you make any additions or new features to the claims or utility model, you must make sure whether these new features were contained in the original formula or description of the application. If not, then such changes cannot be made, as this “changes the essence of the invention / utility model”. It is also impossible to include information in the formula from the abstract or drawings.- If the examination puts forward a number of comments, you cannot answer only a part of them, and ignore the rest. In this case, the expert will have a reason to declare the application withdrawn, because the applicant did not submit the requested materials in full.In order to speed up the review process, experts in some situations offer their own options for adjusting the claims and other materials. On the one hand, this is a positive point, since the applicant knows that if he agrees with these proposals, the expert is likely to make a positive decision. However, you should not take all the expert’s suggestions to change the claim without thought, since such changes often significantly reduce the scope of protection of the invention or utility model. First, one should evaluate whether an expert’s proposal is acceptable to the applicant and does not harm the future patent. Since patents with narrow claims, for example, indicating the point values ​​of any indicators or reduced to a single embodiment, do not protect the technical solution at all, and the expediency of obtaining such a patent is lost. [2]

In difficult situations, when the applicant and the expert cannot find mutual understanding, it is possible to send a request for an in-person expert meeting or through video conferencing.  The initiative can also be taken by an expert.As a rule, an expert meeting allows you to provide additional materials to a previously submitted application, and to leave out all disagreements and misunderstandings in a dialogue mode.According to the results of the meeting, a protocol is compulsory. Additional materials submitted by the applicant to the previously filed application (if they are recognized as not changing the nature of the application) are included by Rospatent to the prosecution process, but are not included in the description of the application itself.Thus, applicants who face objections from the examination are advised not to be afraid to provide a large number of additional materials - test reports with new technical results (positive effects) of the invention, photographs, scientific and technical reports, experimental studies, etc., to emphasize the level of development. It should be noted that in recent years the requirements of examination have increased so that the “quality” of patents has improved.It should be noted that the nature of the request or the call to the expert meeting may show the intentions of the expert, even if they are not obvious. When an expert opposes the well-known technical solutions to the individual distinguishing features of the claims, but not to all, then most likely it will be a question of adjusting the claims. If a violation of the unity of the invention is indicated, then in the process, for example of an expert meeting, the expert will adjust his attitude to the application depending on the arguments of the applicant. The same can happen on issues of industrial applicability, if not everything is clear with the possibility of implementing a technical solution. Arguing your position in response to a request or at an expert meeting, it is important to note all the claims of the examination, maybe partially agree with them, and then tactfully and calmly raise your arguments. This will help understanding and finding a compromise solution.Thus, the applicant always needs to fight to the end for obtaining the patent!


[1] Гражданский кодекс Российской Федерации (часть четвертая) от 18.12.2006 № 230-ФЗ (ред. от 26.07.2019, с изм. от 24.07.2020). Ст. 1350-1351.

[2] Статья «Экспертиза заявки на изобретение и полезную модель», автор - Саленко А.М., опубликованная на сайте:

Patent Attorney / Chemical Specialist