Head of Department / Patent Attorney / Mechanics Engineer
The requirement for sufficient disclosure when patenting technical solutions
The Russian Patent Office daily sends a large number of substantive examination requests regarding the lack of disclosure of the essence of the claimed technical solutions both for inventions and utility models. Basically, such requests relate to the field of chemistry, pharmaceuticals, biotechnology and genetic engineering, but also occur in mechanics.
Due to the fact that various devices, designs, in addition to patents for inventions, are protected by patents for utility models, we will consider, using the example of utility models, how the Patent Office checks and evaluates the requirement for the sufficiency of disclosing the essence, and also what you need to know in order not to receive such a request.
When checking the sufficiency of disclosing the essence of the claimed utility model in the application documents submitted on the date of its filing, for the implementation of the utility model, a specialist in this field of technology checks whether the application documents submitted on the date of its filing contain information about the purpose of the utility model, about the technical result provided by the utility model, whether the set of essential features necessary to achieve the technical result specified by the applicant is disclosed, and whether the rules established by law applied when disclosing the essence of the utility model and disclosing information about the possibility of implementing the utility model are observed .
Let's consider what rules are established by law, which must be observed and which will allow us to avoid unnecessary requests for expertise.
So, special attention should be paid to the section of the description of the utility model "Disclosure of the essence of the utility model", which should provide information that reveals the technical result and the essence of the utility model as a technical solution related to the device, with completeness sufficient for its implementation by a specialist in this field. technology, while:
- devices include products that do not have component parts (parts), or consisting of two or more parts interconnected by assembly operations that are in functional and structural unity (assembly units);
- the essence of the utility model as a technical solution related to the device is expressed in a set of essential features sufficient to solve the technical problem indicated by the applicant and obtain the technical result provided by the utility model;
- signs are considered significant if they affect the possibility of solving the technical problem indicated by the applicant and obtaining the technical result provided by the utility model, that is, they are in a causal relationship with the specified result;
- a specialist in this field of technology is understood as a hypothetical person who has access to the entire level of technology and has general knowledge in this field of technology, based on information contained in reference books, monographs and textbooks;
- technical results include results that are a phenomenon, a property, as well as a technical effect resulting from a phenomenon, properties that are objectively manifested during the manufacture or use of a utility model, and, as a rule, characterized by physical, chemical or biological parameters, while not considered technical results that:
- are achieved only due to the observance of a certain order in the implementation of certain types of activities on the basis of an agreement between its participants or established rules;
- consist only in obtaining information and are achieved only through the use of a mathematical method, a program for an electronic computer or an algorithm used in it;
- are due only to the peculiarities of the semantic content of information presented in one form or another on any medium;
- consist in the entertainment and (or) entertainment of the implementation or use of the utility model.
The section of the description of the utility model "Disclosure of the essence of the utility model" is drawn up taking into account the following rules:
- all essential features of the utility model must be disclosed;
- the characteristic of the technical result provided by the utility model must be expressed in such a way that it is possible to understand its semantic content on the basis of the state of the art by a specialist in this field of technology;
- if the technical result provided by the utility model is characterized as a technical effect, its description should be supplemented with an indication of a causal relationship between the set of essential features and the technical effect provided by the utility model, that is, indicate the phenomenon, property, the consequence of which is the technical effect, if they are known the applicant;
- if the utility model provides for obtaining several technical results, when disclosing the essence of the utility model, one technical result provided by the utility model or technical results related by a causal relationship should be indicated;
- if, when creating a utility model, a technical problem is solved, which consists in expanding the arsenal of technical means for a specific purpose or in creating a tool for a specific purpose for the first time, the technical result consists in the implementation of this purpose;
- the technical problem of expanding the arsenal of technical means for a specific purpose is solved by creating a technical solution that is alternative to a known solution (a variant of a known solution, that is, a solution related to a device of the same type and purpose, providing a solution to the same problem and achieving the same technical result);
- the essence of a utility model, which is a solution to a technical problem, consisting in expanding the arsenal of technical means for a specific purpose or in creating a tool for a specific purpose for the first time, is expressed in a set of essential features sufficient to realize the purpose of the utility model;
- the disclosure of a feature of a utility model should not be replaced by a reference to the source of information in which it is disclosed;
- when disclosing a feature of a utility model, the use of conditional names is allowed only in cases where they are well known and have an exact meaning, and it is difficult to otherwise disclose the feature.
When disclosing the essence of a utility model, the following rules apply:
- to characterize devices, in particular, the following features are used:
- the presence of one detail, its shape, design;
- the presence of several parts (parts, components, assemblies, blocks) interconnected by assembly operations, including screwing, articulation, riveting, welding, soldering, crimping , expanding, gluing, stitching, ensuring structural unity and implementation by a device of general functional purpose (functional unity);
- constructive execution of parts of the device (parts, components, assemblies, blocks), characterized by the presence and functional purpose of parts of the device, their mutual arrangement;
- parameters and other characteristics of the parts of the device (parts, components, assemblies, blocks) and their interrelationships;
- the material from which the parts of the device and (or) the device as a whole are made;
- the environment that performs the function of a part of the device;
- the characteristics of the device are set out in the formula in such a way as to characterize it in a static state;
- when describing the performance of a structural element of the device, it is allowed to indicate its mobility, the possibility of realizing a certain function by it (for example, with the possibility of braking, with the possibility of fixation);
- you should not use signs to characterize the device that express the presence on the device as a whole or on its element of designations (verbal, pictorial or combined) that do not affect the operation of the device and the realization of its purpose.
You should also pay attention to the section of the description of the utility model "Implementation of the utility model", in which it is necessary to provide information that reveals how a utility model can be implemented with the implementation of the purpose of the utility model indicated by the applicant and confirming the possibility of achieving a technical result in the implementation of the utility model by providing a detailed description at least one example of the utility model with links to drawings, if any.
This section is drawn up in accordance with the following rules:
- for a utility model, the essence of which is characterized using a feature expressed by a general concept, including those presented at the level of functional generalization, properties, it is described how the utility model can be implemented with the implementation of the specified purpose by examples when using particular forms of the feature implementation, in including a description of a means for the implementation of such a feature or methods for obtaining it, or an indication of the knowledge of such a means or methods for obtaining it before the date of filing the application;
- if the utility model is characterized in the formula of the utility model using an essential feature expressed by a general concept covering various particular forms of implementation of the essential feature, or expressed at the level of a function, property, the degree of generalization used by the applicant when disclosing the essential feature of the utility model must be justified by presenting information about private forms of implementation of this essential feature, and a sufficient number of examples of the implementation of the utility model must be provided, confirming the possibility of obtaining the technical result specified by the applicant when using private forms of implementing the essential feature of the utility model;
- if the utility model is characterized in the formula of the utility model by quantitative essential features, expressed as an interval of continuously changing parameter values, examples of the implementation of the utility model should be given, showing the possibility of obtaining a technical result throughout this interval;
- if the utility model is characterized in the utility model formula by essential features, expressed by parameters, then the methods used to determine the values of the parameters should be disclosed, unless it is assumed that such a method is known to a specialist in this field of technology.
The utility model description section "Implementation of the utility model" also provides information confirming the possibility of obtaining a technical result by implementing the utility model. As such information, objective data are given, for example, obtained as a result of an experiment, tests or evaluations accepted in the field of technology to which the utility model belongs, or theoretical justifications based on scientific knowledge.
To confirm the possibility of implementing the utility model, the following information is provided:
- a description of the design of the device (in a static state) and its functioning (operation) or the method of use with references to the figures, and, if necessary, to other explanatory materials (diagrams, timing diagrams, and so on);
- when describing the operation (operation) of the device, the operation (operation) of the device is described in a mode that ensures the implementation of the utility model of the technical result; when new materials are used in the device, a method for their production is described;
- if the device contains an element characterized at the functional level, and the described form of implementation involves the use of a programmable (configurable) multifunctional tool, information is provided confirming the possibility of such a tool to perform a specific function prescribed to it as part of this device; 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.
Thus, compliance with all the rules listed above when preparing a description of a utility model will help to avoid not only requests for substantive examination in terms of insufficient disclosure of the essence of the utility model, but also in some cases a decision to refuse to grant a patent. Since if it is established that the essence of the claimed utility model is not sufficiently disclosed for the implementation of the utility model by a specialist in this field of technology, and the violation of this requirement cannot be eliminated without changing the application on the merits, a decision is made to refuse to grant a patent.