Assistant to Patent Attorney
What should the applicant do, if he has received a refusal to grant a patent for an invention/utility model from Rospatent?
After filing an application for an invention/utility model to the FIPS (Federal Institute of Industrial Property), the applicant awaits a decision of the Office regarding a possibility of obtaining a patent for his invention/utility model planned for patenting and an official confirmation of his rights. In the course of carrying out an examination regarding the application submitted, both the decision on granting the patent and the decision on refusing to grant the patent can be made.
The applicant can eliminate the majority of the reasons that can serve as a ground for the refusal to grant the patent in the future even before filing the application to the FIPS. The requirements for executing documents and for composing the very application are fixed in the legislation. At the same time, in case of the arisen difficulties, while filling in some blanks, forms, and while preparing the very application, it is better to turn to professional specialists – the patent attorneys. The applicant must pay a special attention to laying down the claims and to its description, as they will be checked for the features of patentability will be carried out regarding them. In addition, when preparing the application, it will be advisable to carry out a preliminary international patent and information search. This will allow establishing in advance matching up with already known technical solutions and composing the application taking into account the available sources of the information of the prior art. The applicant can carry out the preliminary search both independently and through the patent attorneys.
If in the course of the consideration of the application for the invention expressed by the claims it is established that the claimed invention does not refer to the subject matters indicated in Paragraph 5 of Article 1350 of the Civil Code of the Russian Federation, but it complies with the patentability conditions contained in Article 1350 of the Civil Code of the Russian Federation, and the essence of the claimed invention in the application documents stipulated by Paragraph 2 of Article 1375 of the Civil Code of the Russian Federation and which are submitted on the date of filing it is disclosed fully enough for the implementation of the invention, and in the course of the consideration of the application for the utility model expressed by the claims it is established that it complies with the patentability conditions contained in Article 1351 of the Civil Code of the Russian Federation, and the essence of the utility model claimed in the application documents stipulated by Paragraph 2 of Article 1376 of the Civil Code of the Russian Federation and which are submitted on the date of filing it is disclosed fully enough for the implementation of the utility model, the FIPS shall make a decision on granting the patent for the invention/utility model.
If in the course of the examination of the application for the invention/utility model it is established that the claimed technical solution, which is expressed by the claims offered by the applicant, does not comply with at least one of the requirements or conditions of patentability, or the application documents do not comply with the requirements, the FIPS shall make a decision on the refusal to grant the patent in accordance with Articles 1387 and 1390 of the Civil Code of the Russian Federation.
Below, there are the most common reasons due to which the applicant can receive the decision on the refusal to grant the patent: providing an incomplete set of the documents by the applicant; the deficiencies and comments identified in the form and the content of the submitted blanks; the lack of the powers to file the application documents (for the foreign applicants); the discrepancy of the utility model/invention to the patentability conditions or the lack of at least one of the mandatory features of patentability stipulated by the legislation; the lack of completeness of the description of the claimed technical solution; the lack of the timely and full payment of the patent fees. In addition, the refusal can be due to other grounds stipulated by the legislation. The majority of the deficiencies and comments may be eliminated directly in the process of the consideration of the application. The FIPS is obliged to send an official request to the applicant with an offer to submit some additional documents, to correct the identified comments, to pay the missing fees and the applicant will have to eliminate timely the comments, if any, and to respond to the request sent by the Office.
Now, let us find out what to do in the case of receiving a negative decision from the FIPS, and what variants of a way out from this situation are stipulated by the legislation.
In accordance with Paragraph 3 of Article 1387 of the Civil Code of the Russian Federation, the FIPS’s decision on the refusal to grant the patent for the invention or on the recognition of the application for the invention as withdrawn may be challenged by the applicant by filing an objection to the said Federal Executive Authority within seven months from the date of sending by it to the applicant the correspondent decision or the copies of the materials requested in the said Federal Executive Authority, which are opposed to the application and indicated in the decision on the refusal to grant the patent, provided that the applicant has requested the copies of those materials within three months from the date of sending the decision made regarding the application for the invention.
Thus, upon the receipt of the decision on the refusal to grant the patent, in the case of a full or partial disagreement of the applicant with the decision of the examination, he must file the objection to the FIPS on cancelling it within a period not exceeding 7 months from the date of the receipt of the official decision. This decision must be motivated, i.e. it must contain obligatory the reasoned opinions and arguments of the Office with a reference to proofs. After the applicant analyzes the content of the notification and makes a decision to challenge the decision of the Office, the applicant must file the objection with the provision of the reasons and arguments proving the unlawfulness of the examination’s decision and also pay the appropriate fees. As the scope of the legal protection of the invention is still being formed, any changes of its claims stipulated by the legislation that do not change the essence of the invention, up to and including in it the subject matter that has not been claimed previously in the claims, but which is disclosed in the description on the date of filing the application are permissible. If the reasons and arguments in support of the patentability of the claimed technical solution are convincing, the decision will be changed in favor of the applicant.
If the FIPS does not accept the arguments of the applicant, the latter has an opportunity to apply to the Intellectual Property Court (IPC). The procedure for filing the application to this court does not differ from other courts, and it is reflected in the Civil Procedural Code of the Russian Federation.
In conclusion, it should be mentioned that when receiving the decision on the refusal to grant the patent, the applicant should not become discouraged immediately, it is necessary to analyze the notification in detail and to provide the own reasons and arguments in support of the patentability of the claimed technical solution. If the applicant is doubtful about the correctness of the objection composed, he will always be able to turn to the specialists – the patent attorneys, who will assess the chances and they will also help to compose the objections regarding all the requirements and norms imposed by the legislation.