Patent Attorney / Chemical Specialist
What has changed in the Rules for state registration of inventions applied from 04/29/2023 in Russia?
When registering an invention, the applicant must be guided by the Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of inventions.
Order of the Ministry of Economic Development of the Russian Federation of February 21, 2023 No. 107 "On State Registration of Inventions" approved new rules for state registration of inventions, which came into force on April 29, 2023, and contain an updated procedure for compiling and submitting documents for registration of inventions, as well as requirements for the application, the form of a patent for an invention, the composition of information about the application and the grant of a patent published in the official bulletin of Rospatent, the procedure for information retrieval during the substantive examination of the application and the submission of a report on it, as well as the procedure for publishing an information retrieval report in relation to the claimed invention.
The old order of the Ministry of Economic Development of Russia dated May 25, 2016 N 316 "On approval of the Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of inventions, and their forms" has become invalid.
Consider the main changes proposed in the new Rules:
- A different approach is being taken to assessing the unity of invention, namely now the verification of compliance with the requirement of unity of invention will be carried out in two stages: before conducting an information search on the application, taking into account the closest analogue indicated by the applicant, and after completing the information search, taking into account the results of the information search and of the identified closest analogue, including new rules for combining inventions into a group: the claimed group of inventions must contain at least one identical or corresponding special technical feature of the invention that distinguishes each of the inventions from its closest analogue, only then the inventions of the claimed group may be recognized as having a technical relationship.
- When conducting a preliminary information search on an application for an invention and a preliminary assessment of its patentability, the applicant was given the opportunity, on his own initiative, to apply for sending a copy of the documents of the application for the grant of a patent for an invention to a Russian scientific or educational organization accredited by Rospatent, the results of which Rospatent is obliged to take into account when considering substantive applications.
To date, there are only six accredited organizations:
1.Volgograd State Medical University of the Ministry of Health of the Russian Federation
2.Mordovia State University
3.Southern Federal University
4.Samara State University
5.Samara State Medical University of the Ministry of Health of the Russian Federation
6.Novosibirsk State Technical University
However, this list can be extended. Scientific and educational organizations wishing to obtain this status can apply to Rospatent for the provision of the relevant state service by filling out the appropriate application form for accreditation.
- The list of documents attached to the application has been changed, so at the initiative of the applicant, it is now possible to additionally provide an opinion on the absence in the application of information constituting a state secret, a document on the deposit of a strain of a microorganism, a plant or animal cell line, a consortium of strains or strains included in the consortium.
- The conditions for submitting a power of attorney have been simplified, if the power of attorney relates to several applications of the same applicant, for one of the applications the original power of attorney is submitted, and for each of the other applications - a copy of the power of attorney indicating the details of the office work within which the original power of attorney is submitted.
- The applicant has the opportunity to submit a listing of nucleotide and/or amino acid sequences in accordance with the Standard 26 of the World Intellectual Property Organization.
- Excluded information search on the application for a patent at the request of the applicant or third parties.
- The applicant may amend the application documents for an invention (description, claims, drawings, abstract, other materials) in more cases, for example, the applicant may, on his own initiative, submit a request to Rospatent to amend the application documents, and if changes relate to typographical errors, the corresponding changes can be submitted directly in the application, indicating the place in the description of the invention, the claims or drawings and other materials, the abstract, in which the change is made.
In the request for amendments to the application documents or in the cover letter to it, brief explanations of the proposed changes are given, and a specific place in the original application materials is indicated (numbers of pages, paragraphs, lines in the text of the application documents, the figure of the drawings, which show the sign of the invention, and, if necessary, the position with which it is designated), which contains information on the basis of which changes are made.
- In a clearer form, approaches to the verification of the sufficiency of disclosing the essence of the invention in the application materials are set out.
It is checked whether the purpose of the invention is indicated; the technical problem solved by the creation of the invention, and the technical result, which is provided by the invention; whether the set of essential features necessary to achieve the technical result indicated by the applicant is disclosed; whether at least one example of the invention is given, confirming with experimental data or theoretical justifications the possibility of realizing the purpose of the invention with the achievement of a technical result; whether the application documents or the state of the art as of the filing date of the application disclose methods and means by which it is possible to carry out the invention with the realization of the purpose in the form as it is characterized in each of the claims, including in the case of using a general concept to characterize the feature.
In addition, it is important to take into account whether an example of the invention is given, showing how the invention can be carried out using at least one particular form of implementation of a feature expressed by a general concept, or at least one parameter value included in the interval, if at least one general concept or range of values of any parameter to characterize a feature of the invention. An example should confirm by experimental data or theoretical justifications the possibility of realizing the purpose of the invention with the achievement of a technical result using at least one particular form of implementing a feature expressed by a general concept, or one parameter value included in the range of parameter values.
At the same time, if in the claims several features are expressed by general concepts, the check is carried out in relation to each feature expressed by the general concept, and if the invention provides the achievement of two or more technical results, the check is carried out in relation to each technical result.
Previously, according to the Rules, which became invalid, if the applicant provided several technical results in the description, but only one was confirmed in the description by experimental data, the disclosure was recognized as sufficient.
- Verification of the compliance of the claimed invention with the conditions of patentability now consists, among other things, in determining whether the claimed invention is a technical solution.
The claimed invention, expressed by the claims, is recognized as a technical solution related to a product or method, including the use of a product or method for a specific purpose, if the claims contain a combination of essential features related to the product or method, including the use of the product or method. method for a specific purpose, sufficient to achieve the technical result (results) provided by the invention.
If, as a result of the verification, it is established that the claims do not contain a set of essential features sufficient to achieve the technical result (results) provided by the invention, including if all the features by which the claimed invention is characterized in the claims provide only such a result that is not is technical, or the technical result indicated by the applicant is not achieved due to the lack of a causal relationship between the features of the claimed invention and the technical result indicated by the applicant, or the justification given in the description of the invention for achieving the technical result provided by the invention contradicts the known laws of nature and the knowledge of modern science about them, the claimed invention is recognized as non-compliant with the condition of patentability.
In addition to tightening the rules for the concept of "invention as a technical solution", clarifying the requirements for drawing up the claims in relation to the unity of a group of inventions and confirming the sufficiency of disclosure, expanding the possibilities of applicants regarding the submission of a number of applications, the goal pursued by lawmakers when making changes into the new Rules, consisted in the harmonization of Russian norms with foreign norms, in achieving convergence with the rules of international treaties to which the Russian Federation is a party.