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Why is it better for the inventors to turn for help to the professionals?

26 Dec 2019 (updated at 03 Jun 2021)
Head of Department / Patent Attorney / Mechanics Engineer

A patent attorney runs the cases with the Federal Executive Authority on Intellectual Property on behalf of the applicants, the right holders and other interested citizens and the legal entities residing permanently (for citizens) or having a location (for the legal entities) in the Russian Federation and abroad.

The patent attorney will help you to defend your intellectual property. Sometimes, due the fact that someone is not a specialist in a particular field of activity, the hardly correct solutions and mistakes can be made. Sometimes, a lot depends on the advice of the qualified specialist. The patent attorney is a qualified specialist in the field of intellectual property. To obtain such a status, a qualification examination is held, according to which results a decision is made by the Federal Executive Authority in the field of intellectual property on the grant of such a status, or on the refusal to grant such a status. The information on the patent attorney is entered in the State Register of Patent Attorneys, the patent attorney is assigned a registration number.

Let us consider the meaning of the patent attorney as applicable to inventions or utility models.

We shall note at once that no one the most remarkable applicant, the inventor having a wide experience of patenting, knows thoroughly the patent legislation to the extent that is known to the narrow specialist in the field, and especially how to apply it in practice.

Currently, there are a lot of people, who know how to read the legislation acts, but not many people can understand their interpretation and how to apply these normative documents in practice, for example, how to formalize correctly and competently an application for an invention, what to do, if a request for examination is received and how to get out of the situation, when the period for submitting a reply to the request is missed. These and other questions can be easily answered by the patent attorney.

The patent attorney is capable of identifying and formulating the essence of the invention according to the technical documentation provided by the developer of the invention.

He can carry out professionally a search for the analogues unknown to the inventor over the funds of the domestic and foreign patent documentation and over the scientific and technical literature, assess the patentability of the developed technical solution, that is, the chances of obtaining a patent even before filing the application for the invention with the Office. While carrying out the search, the most difficult thing is to identify and understand an object for the search.

In addition, the search is necessary in order to formalize competently the application materials, as one of the sections of the application is the section “Prior Art,” and this very section contains the identified analogues with the indication of their shortcomings.

Sometimes, after the search is carried out, it turns out that the invention created is not new, as it has long been created by someone. More often, the competent search allows understanding what is already available in the prior art in respect of the problem solved by the inventor, and what can be patented. According to the results of the search, it is necessary to separate the general features with the technical solutions known from the prior art and to identify the features, which differ your technical solution from the nearest analogues. The developer himself often is not capable of doing this and he needs the help of the patent specialists. In the case of the necessity of making amendments, supplements into the application materials just after filing the application, one should understand that after filing the application, it is not allowed supplementing it with the data changing its essence.

After the search is carried out and the nearest analogue is selected, it is necessary to compose the claims. While performing this work, one should remember that it is just the claims that determine the scope of the exclusive right granted by the patent.

Therefore, it is especially important to be capable of composing the claims so that the totality of the features included in it will provide the maximum scope of the legal protection to the patented invention.

It is important for each feature of the claims to be necessary, and all together they should be sufficient to achieve the claimed technical result, because only in this case, the competitors, who would want to use the patented invention, will fail to ignore the patent by refusing from the use of at least one feature of the claims.

The ability to compose the claims, as well as carrying out the patent search competently requires high skill. The cost of the patent depends largely on how the claims are composed.

In this regard, Former President of the Austrian Patent Office, Dr. Otmar Rafeiner, speaking at the seminars in Russia on the topic “Filing an Application for an Invention” noted that there were two very different indicators of the patenting process:

— the quality of the patent,

— the quality of the invention.

The quality of the patent and the quality of the invention may be at the same level, and they may differ substantively.

The quality of the patent granted is largely determined by the quality of the description to the patent and the quality of the claims. There may be the cases, when the high-class invention is protected by the weak patent, with the poor quality of the description and the inaccurate formulations. This circumstance undoubtedly influences negatively on the fate of the invention and the patent — it can be ignored. In this case, its cost will be small.

The description composed skillfully, on the one hand, complies with the requirements of the legislation. The description of the invention must be composed so fully and clearly that it is possible to implement the invention using it, and it must contain only precise formulations.

On the other hand, the description does not give anything superfluous — anything that will do damage to the commercial interests of the patent holder.

If you need to find a happy medium between the quality of the patent and the quality of the invention, turn for help to the qualified specialists, the patent attorneys, and you will certainly never regret it.

Head of Department / Patent Attorney / Mechanics Engineer