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Ludmila Lisovskaya

Patent Specialist / Chemical Specialist

28 March 2018

What should you do if you have received a request for examination

When applying for an invention or utility model in the Russian Federation, the applicant does not always expect that he can receive from one to three requests for substantive examination.

When preparing responses to the requests for substantive examination to the Federal Institute for Intellectual Property (FIIP), the applicant must comply with certain rules.

1. It is necessary to comply strictly with the deadline for the response. As a rule, it takes not more than 2-3 months to prepare the response. This is enough to think over the arguments and to collect the necessary additional information.

2. It is necessary to prepare complete and well-reasoned answers to the FIIP requests. The more confirming arguments and documents you will send, the better it will be for you. Submitting unmotivated responses, which are not confirmed by the documents, often leads to the refusal of a patent.

3. One should follow the requirements to the execution of documents in the FIIP.

4. Always monitor obtaining the documents in the FIIP. It is better to transfer the responses to the requests of the Institute personally. If you use postal services, it is better to send the letters by registered mail with a delivery notification.

Sometimes the FIIP requests come late or do not come at all, and the applicant is deprived of the opportunity to prepare a response in time. It is possible to find a way out from such situations. If the FIIP makes a negative decision on the application, it can be appealed proving that it is no a fault of the applicant, that he could not have responded. In this case, for example, you can attach the envelope of the late FIIP letter with the date of obtaining it.

Let us consider the peculiarities of the responses to the requests, objections to the refusals of a patent. When you obtain a request, you first need to find out its purpose. If the purpose of the request is to clarify the materials, to adjust the claims, etc., then in the responses it is better to repeat all questions of the examination and to give consistent responses to them. If there are comments in the examination request to which you can object, then at first it is desirable to agree partially with the comments, and then to set forth your version. When in the request there are doubts about the opportunity of implementing a device or method, the additional test reports, photographs, extracts from the reports, etc. can be attached. Also, if there is such an opportunity, it is possible to present the subject matter of the invention to the examination and to demonstrate its efficiency. If the request is made for the purpose of rejecting due to the novelty (this is often accompanied by a large number of the opposed materials), but it is necessary to obtain a patent. In this case, it is possible to remain stubbornness with the sufficient argumentation, it is permissible to transfer all characteristics presented earlier in the description into the claims, the dependent claims – into the independent ones, to find new positive effects (technical results). However, here it is important not to overdo it, in order not to spoil the further relationship with the examination. If the request is made for the purpose of rejecting the non-compliance of the technical solution with the patentability criterion “industrial applicability” connected with the applicant's inattention, then in this case, the struggle for obtaining a patent is also possible. For example, the applicant has forgotten to indicate the connection between the control unit and the drive, and the examination considers such device to be inoperative. In this case, it is necessary to try to find the justification of this connection in the text and to try to restore it in the drawings. In case of emergency, it is possible to respond that “the control unit contains a monitor, which shows at what moment of time the operator must turn on the drive manually.” There are requests, where the examination indicates to a violation of the unity of the invention and pushes for the re-registration of the applications. To do so is not always reasonable. The fact is that it is almost always possible to make the conversion of the technical results by building up logical chains. For example, increasing the accuracy of the microscope measurement can lead to an enhancement of functionality due to the ability to measure a larger range of objects. Increasing the reliability of the microscope allows it to be used for operating under different conditions of temperature, vibration, etc., which is also an enhancement of functionality.

In addition to the request, the applicant may also be invited to participate in the expert meeting. The expert meeting is mainly connected with the clarification of the application materials and the acceleration of the paperwork connected with it. In this situation, the collective visit of this event by the technicians who are well-prepared to respond to anticipated questions and with the maximum number of illustrating materials, photos, test protocols can be recommend. It is possible to prepare a presentation with video-slides, which clearly demonstrate the summary of the invention or utility model, which will help to persuade the examination in the patentability of Your technical solution.

Summing up the above, in case of obtaining a request for substantive examination, the applicant should not give up immediately and think that his solution cannot be patented, one should always fight to the end. If the examination has opposed the sources of information discrediting Your technical solution for “the novelty” or “the inventive level”, do not be too lazy to conduct their detailed comparative analysis with Your invention and in case of revealing significant differences and shortcomings, do not hesitate to criticize actively the presented opposing sources. With the subsequent correction of the claims, if you include the clarifications from the description in them, You will have all chances to overcome the request and, as a consequence, to receive a positive decision. If, for any reason, You can not conduct this comparative analysis by yourself as well as to prepare a well-reasoned response to the examination request, we are always ready to provide You with our qualified assistance.

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