Assistant to Patent Attorney
In 2012 graduated from Bryansk State University named of I.G. Petrovsky and gained a Specialist degree in “History” with knowledge in English language.
In 2012 she gained a Specialist degree of Patent (second higher education) in Bryansk State University named of I.G. Petrovsky.
In Zuykov and partners she:
- Manages records on applications for inventions, utility models, industrial designs, and computer programs
- Specializes in preparation of responses to inquiries and notification of the formal examination, annual renewal fees on patents for inventions, utility models and industrial designs
- Conducts correspondence with clients
- Performs other duties of a patent specialist
In 2014 passed training courses of the Russian State Academy of Intellectual Property that evidenced by certificate of advanced training "Intellectual property in innovative activity of the enterprise".
- 2012–2015 — Lead engineer-patent expert of the Federal State Unitary Enterprise “Central Research and Development Establishment of Chemistry”
At first glance, it would seem that only geniuses or scientists who have devoted their entire lives to their child can be inventors, but this is not the case. Of course, there are inventions that would never be possible without special knowledge, but there are also simple inventions that are understandable even to those who have never been involved in technology.
Surely, each of us at one stage of life or another has shown ingenuity when faced with difficulties or problems that had no obvious logical solution. Eventually, we find probably the most unexpected and original solution. Then we understood that thanks to ingenuity, we managed to solve the problem in an unconventional way. Each of us can develop and discover this ability.
Just take a closer look at the problems and tasks around you, and try to find a new and original solution to them. There is an inventor inside of us and we just need to help this ability to wake up. Everyone has a different motivation for doing this: some are very active and their ideas pop up one after another, some want to simplify their lives and invent useful assistive devices, some want to help all mankind and make a huge contribution to the patenting process, some invent in the hope of getting rich, some generate ideas because they are in a critical situation, and some invent by accident.
Below is a striking example of the ability to think outside the box when necessary, allowing for invention which is inherent in human beings. Pietro Ferrero, a famous hereditary confectioner, once sold homemade chocolates at a local fair. “However, since it was too hot outside, the candy melted and lost its marketable appearance. Ferrero was not confused: he began spreading the resulting chocolate paste on bread and selling it that way. The chocolate sandwiches proved very popular with the Italians. This is how Nutella, a world-famous product made from ground nuts and chocolate, appeared, and its inventor became fabulously rich.
It is fair to say that it is not worth trying to patent everything that comes to mind. Inventions should first and foremost be useful to society, so try to emphasize that. Take a closer look at the objects around you and find which particular shortcomings do you see in them. Employ out-of-the-box thinking, and then you can find a way to help eliminate these shortcomings. After you find a solution, don’t forget to put it in writing.
The first stage is over, then the most interesting things begin as it’s not enough to just think up, now you need to put it into practice and assert your rights to the created invention. Article 1350 of the Civil Code of the Russian Federation grants legal protection to inventions if they are novel, have an inventive step and are industrially exploitable. Not all of your solutions need to be protected by a patent, as it may turn out that the technical solution you have invented is already patented. But this is not meant to detract from your talent, as it is the first time you have discovered it.
So, after you have invented a technical solution, you need to conduct an international patent information search to make sure that the technical solution you have invented is not already patented and there are no similar solutions in open sources, and also to find analogues of the technical solution, to analyze them and identify the closest analogue which will be chosen as a prototype. If the search results turn out to be positive, then it is possible to submit an application to the patent office with payment of fees for registration of the application and for the examination on the merits.
It is necessary to understand that patenting of technical solutions incurs financial expenses. In view of the specifics of the application materials for an invention, you will need to study the requirements for registration or resort to the help of specialists including patent attorneys, who will competently describe your application.
If you fail to succeed with the first attempt, it does not mean you should despair as you should always try again and again and you will get stronger and stronger. As Theodore Roosevelt once said, “The only man who never makes a mistake is the man who never does anything”. Even Thomas Edison, the famous inventor, tried thousands of different materials and made thousands of experiments before he invented his incandescent light bulb, the invention of his life. So, try to concentrate, set yourself up for a positive end result, do not be afraid of the first difficulties and overcome all of them.
If you want to be a true inventor, look closely at everything around you, try to identify shortcomings and eliminate them in an unconventional way. Even if they tell you that everything around you has already been invented and patented, do not believe it. The rapid development of the world entails millions of opportunities and ideas that will be opened to inventors, and some of them will be so great that they will become the history of the future. You might be one of them, so if you want to invent, then do it, and whatever the hardship is, never turn away from achieving your goal.
To begin with, let’s see how the Russian legislation interprets the right of authorship. In accordance with Article 1257 of the Civil Code of the Russian Federation: “The author of a scientific, literary or artistic work is the citizen by whose creative work it has been created”. This approach regarding the right of authorship is interpreted not only in the Russian legislation, but also in many countries around the world. Based on this, we can conclude that the AI cannot be recognized as an author, since only a natural person can be an author, and, accordingly, those results of intellectual activity, which are created by a person and are the result of his or her creative work, will be subject to protection.
In this case, it would be necessary to assign the rights to the result of the AI creation to a specific person or group of people who participated in the creation of the AI algorithm. But if the AI independently carried out the creation of a new work, then the possibility to recognize the developer of the AI, who gives certain commands to perform the task, as the author decreases and the question arises who in this case will be recognized as the author or at all the works generated by the AI will be in the public domain and, therefore, can be used by everyone.
In such a situation, the right of authorship will be determined by the courts in specific legal disputes. Thereby, based on the experience of court practice, it becomes clear that in defining the authorship of works created directly not by a person, the judicial grounds are rather aspirational and the decision on them can be delayed for indefinite period of time.
For example, there is a popular case in which the object of a similar and scandalous trial was content created by an animal rather than a person. In 2011, British photographer David Slater lost his camera in Indonesia, and it was found by a macaque named Naruto. This monkey took several hundred pictures, among which there were very successful photos. After the camera was returned to its owner, Slater demanded recognition of his right to the pictures taken by the monkey. The trial lasted several years. The monkey’s defenders argued that he should assert copyright in the photos because Naruto was aware of everything it was doing, including seeing its reflection in the camera lens, understanding the relationship between pressing the shutter button and changing the reflection, and making different facial expressions.
In the end, in 2017, the court ruled that the animal could not be the author of the work. All of the photos taken by the monkey, many of which very funny, were found to be in the public domain. Based on this case, we can conclude that the rights should belong to the one who controls the result and performs actions aimed at achieving that result. But what about the establishment of the right of authorship in the case when the AI independently generated some work without the participation of the person who contributed to the result of the work? To answer this question, I will give an example below which has become a landmark event in the world jurisprudence.
In 2018, a conflict arose between Chinese companies Tencent and Shanghai Yingxun Technology (hereinafter the Company), which was caused by the latter company copying a financial report on its website written by Dreamwriter robot. This robot was created by the Chinese innovation holding company Tencent in 2015 to write analytical financial articles using financial market data and special algorithms to analyze them. And once written, these articles were posted on the company’s website marked “automatically written by Tencent Robot Dreamwriter”.
Due to the fact that the text was generated by AI, the Company and Shanghai Yingxun Technology considered it possible to copy it without permission, deciding that they did not violate copyrights, since the material compiled by AI has no author in the traditional sense of the word. In January 2020, the Shenzhen court ruled in favor of Tencent, stating that the way the material was presented in the article met the requirements of originality and novelty and could be classified as a copyrighted intellectual work.
Thus, this case was the first case in the world practice, as a result of which the court recognized that the AI has a copyright on the work generated by it, disagreeing with the defendant’s arguments that it is in the public domain and can be freely used. Shanghai Yingxun Technology was ordered to pay compensation of 1,500 yuan ($217).
The ruling by a Chinese court has become a leading case provoking a new wave of discussion regarding the ownership of copyrights on works generated by AI. This means that the existing copyright system may be changed due to the influence of AI.
So, for example, amendments may be made to Russian law to fix the right to intellectual property generated by AI, not for itself, but for its developer. The corresponding document was prepared by United Russia deputy Alexei Kobilev and sent for approval to the Ministry of Economy of Russia as early as of October 21, 2020. The explanatory note to Kobilev’s bill states that gaps in the current legislation regarding the rights to the results of AI activities could lead to negative consequences. In particular, on this basis, there can be numerous disputes about ownership of the rights to a particular AI brainchild.
Thus, in current practice AI is just a tool in the hands of the creator. But to be fair, it should be noted that AI is constantly growing and developing, and this may lead, for example, to the creation of such AI, which will teach other computers to generate new works, and in this case, the situation with the recognition of copyrights may become more complicated.
Right from the beginning, let’s turn to the legislation in order to understand, under which conditions it is possible to obtain a patent. In accordance with Article 1350 of the Civil Code of the Russian Federation, an invention is granted legal protection if it is new (i.e. it is not known from the prior art), having an inventive step (i.e. for a specialist it does not explicitly follow from the prior art, the prior art includes any information that has become universally available before the priority date of the invention, and is industrially applicable (i.e. it can be used in industry, agriculture, health care, other sectors of economy or in the social sector). Therefore, the first step will be to understand whether the solution meets the criteria of patentability. To do this, there is a need to conduct an international patent information search. The applicant itself or a specialist in the field of intellectual property may be able to do this. More details are available in another article on the subject of the international patent information search, published on our website. Based on the results of the search, the applicant will understand the chances of obtaining a patent after filing an application with the patent office. When the results are negative, it will not be advisable to file an application.
Imagine the following situation: you came up with a really worthwhile technical solution, the positive results of your search confirmed it, and in a state of euphoria, you shared your success with friends, colleagues, in social networks, or in some other way disclosed information about your technical solution. A few months later you applied for an invention, but the application is rejected. No matter how long your frustration lasts, you only to blame have yourself in situation like this. After all, the priority of an invention is established by the date of the application filed with the Federal Service for Intellectual Property , and only after that can you disclose the essence of your technical solution. Otherwise, someone who is quicker than you will be able to file an application for your technical solution.
To be fair, there is a reverse side of the coin. Often, scientists or entrepreneurs, having disclosed the essence of their technical solution, for example, at an exhibition, subsequently do not even try to patent their brainchild due to the disclosure of information. Meanwhile, the deadline for filing a patent application for an invention or utility model is 6 months from the date of disclosure, and 12 months for industrial designs. Article 11 of the Paris Convention for the Protection of Industrial Property also provides for temporary protection for inventions, utility models and industrial designs exhibited at official or officially recognized international exhibitions organized in the territory of one of the countries ratifying the Convention. Thus, it is possible to apply for an invention within 6 months from the date of disclosure.
Let’s assume that the technical solution meets the criteria of patentability, the essence of the technical solution has not been disclosed, and the applicant is ready to apply for an invention, but the applicant understands in advance that the subsequently obtained patent will be just for the sake of appearance. It would be worthwhile to use such a patent, for example, as a demonstration of professionalism and competitive advantage in front of the clients, business partners or competitors. Also, the patent will be very helpful in advertising and PR. The great benefit of having a patent is that no one can use a created and patented technical solution without the owner’s permission, the patent will allow the holder to be a monopolist or will give it the opportunity to transfer the rights to use patented invention to third parties for a fee.
Summarizing the above, we understand that a patent for invention should be issued if your technical solution, planned for patenting, meets all the criteria of patentability, the applicant has positive results of the international patent information search on the technical solution, the applicant will monetize it after obtaining a patent knowing how to do it.
If the search yields a positive result, an application is prepared and filed with the Federal Institute of Industrial Property (FIPS). But, what should the applicant do in case of a negative result of the patent search, if there is a patent identical to the technical solution planned to be patented, and whether it is possible to bypass claims of competitors in order to avoid conflicts?
The answers to these questions are below.
Firstly, a lot depends on the claims of the invention or utility model. After all, according to the patent law, the scope of legal protection is determined by the claims, namely its independent claims. The broader the description of the claims, the more difficult it is to circumvent them, and vice versa.
Thus, for example, the indication of exact temperatures, masses and any quantitative values, as well as a specific material and shape, narrows the scope of legal protection of a patent, which allows circumventing such patents by simply changing the shape, material, quantitative values, etc. At this point we would like to draw the reader’s attention to patent offices, which guarantee a one hundred percent patent, or as they also say obtaining a patent on a turnkey basis. At first glance it sounds tempting, however, if thinking twice about it, it becomes clear that in this case, the work will be aimed primarily at the result, but not at the quality of the technical solution planned for patenting.
Patent attorneys understand that if the application is drafted with a narrow scope of legal protection, the probability of patenting will be much higher, but such a patent in practice will be nearly useless, as it will be possible to circumvent it and use a patented technical solution with a narrow formula without infringing related rights. Thus, the patent does not always protect a technical solution, and the presence in the claims of features which can be replaced, excluded, or, for example, which cannot be identified in the process of forensic examination, will allow to circumvent such a patent.
Secondly, there is a need to decide for what purposes the paten is meant. For example, there is a need to patent a technical solution which is similar to an already existing patent for its legitimate use. In such a case, to begin with, let us clarify what is the use of a patent. According to paragraphs 2 and 3 of Article 1358 of the Civil Code of the Russian Federation:
“The following in particular, shall be deemed to be the use of an invention, utility model or industrial design:
- Import onto the territory of the Russian Federation, manufacture, application, offer for sale, sale, other introduction into civil law transactions or storage for such purposes of the product in which the invention or utility model is used or of an article in which the industrial design is used;
- Committing the actions described in Subitem 1 of this item in respect of a product directly made by a patented method. If the product made by the patented method is novel, then an identical product shall be deemed produced by the patented method, unless otherwise proven;
- Committing the actions described in Subitem 1 of this item in respect of an apparatus in whose functioning (operation) the patented method is automatically implemented;
- Committing the actions provided for by Subitem 1 of this item in respect of the product intended for application in compliance with the purpose thereof cited in the formula of an invention, when the invention is protected in the form of the product's use for a particular purpose;
- Implementation of the method in which the invention is used, for instance, by means of applying the method.”
Thirdly, the invention is considered as having been used in a product or process if the product contains, and the process uses, every feature of the invention set forth in the independent claim contained in the patent or a feature equivalent to it and which had become known as such in the art before the priority date of the invention.
A utility model shall be recognized as used in a product if the product contains every feature of the utility model set forth in the independent claim of the utility model contained in the patent. It follows from this: in order to circumvent patent protection, there is a need not to use at least one feature set forth in the independent claim of the invention or utility model. At the same time, the presence of additional differences in the technical solution beyond the scope of the granted patent does not remove the accusations of infringement of the existing patent. There is a possibility to get a patent, but it will not protect from claims of infringement of someone else’s patent.
Imagine there is a patent somewhere for a cutlery, and you’ve worked it out and invented a patent for the same cutlery, but with a hanger, and if you manage to patent that cutlery with a hanger, you can’t sell it without the permission of the cutlery’s patent holder. Such a patent is called a subordinate patent. Perhaps, in this situation, it would be easier to simply conclude a license agreement for the right to use the existing patent.
As it is clear from the explanations and examples provided above, in order to circumvent a patent, some hard work is needed: conducting a patent search, assessing the strength of the patent to circumvent, determination of how broad the scope of legal protection of it is, analyzing the patent to identify the distinctive features, and, finally, developing a circumvention strategy. It is not always the replacement or elimination of the features that will help circumvent the patent. There is a need to take into account all the ins and outs, of which there are many in patenting, so it is better to resort to the help of specially trained lawyers in the field of intellectual property and patent attorneys. If you work together well, you can patent a technical solution with as many rights as possible, by including as few features as possible in the claims. The fewer features you include in the claims, the broader the scope of your rights, the more likely your patented solution will be copied and used, which indicates the strength of the patent.
Let’s start with an invention that we all use in our daily lives. It has revolutionized the way liquids are stored in plastic bottles, and it has earned its patentee $13 million. As the reader may have guessed, it is a patent for a cap whose shape prevents upside down liquids from leaking out of the container.
The patent was received by Paul Brown in 1991. As for the premise, while working as a designer and manufacturer in a small store located in Midland, Michigan, Paul Brown had promised a customer that he would develop a valve which would allow shampoo bottles to be stored upside down without leaking. Although he had a pretty good idea of the design, his models, which he worked on all day long, were not working properly. The materials and prototypes were expensive to produce. Realizing the promise of his invention, however, Paul Brown borrowed thousands of dollars from eleven friends and family, including his mother. More than a hundred failed attempts did not stop him from achieving his goal.
Over the next few years, Paul Brown’s patented valve became extremely popular. In addition to the cosmetics industry, many well-known companies from other industries turned to it, for example the baby food manufacturer Gerber started to use it for their drinkers, NASA took it to create cups for astronauts that would not leak into space, Heinz used it so that ketchup lovers could easily use the flip-over bottles. That’s when Paul Brown realized he had really succeeded. Four years later, he sold his company for $13 million. It’s been 25 years since then, but the demand for such caps is still high, and probably every second person, if not every first person, has a ketchup bottle with just such a cap in their refrigerator.
Continuing with the food theme, one can’t help but mention the Italian Ferrero culinary family, led by Michel, one of the major chocolate manufacturers. Every year since 1999, more than a billion dollars’ worth of chocolate Kinder Surprise Eggs have been sold in the world. Today, Ferrero’s is the world’s third-largest company behind chocolate giants like Nestlé and Mars.
It all began in 1941 as a tiny candy store in Italy’s Piedmont region. Thirty-eight years later, the chocolate eggs were on the shelves for the first time, and demand was so great that the first consignment sold out in just an hour. The Ferrero family received another patent for the process of preparing a double-layered chocolate egg, where the filling - a yellow capsule - was made in the shape of a natural egg yolk, inside which small toys were placed. Also, among the inventions of the factory Michele Ferrero and his sons Giovanni and Pietro, besides Kinder-Surprise chocolate eggs, are well-known Nutella nut paste, snow-white Raffaello and Tic Tac. The annual turnover of the Ferrero company exceeds four billion euros.
Another invention, with an interesting history of its creation, and which brought considerable income to its creator is the Velcro Fastener. On a beautiful summer morning in 1941, George de Mestral, after taking his dog for another walk, began to remove the heads of burdock from his animal’s fur and decided to examine the plant under a microscope. When he saw the tiny hooks with which the burdock heads were so easily attached to the animal’s fur, he understood why the burdock clung so strongly. That’s how George de Mestral got the idea for the Velcro Fastener.
A few years later, during which experiments lasted, the Swiss engineer selected the best option which was nylon. In 1955, he patented his creation, the Velcro textile fastener, and began to make a profit. By 1996, sales had reached $177 million. Although that original patent has expired, Velcro Ltd. continues to develop new innovations in Velcro fasteners and protect intellectual property rights. In 2008, the company celebrated its 50th anniversary and earned $298 million for the year.
One day, some $73 million was paid for a water pistol. NASA scientist Lonnie George Johnson invented the Super Soaker water pistol in 1990. Since then, this invention has been one of the best-selling toys across the world. In 1991, Super Soaker sales totaled $200 million. The inventor of the water pistol later discovered that Hasbro was not paying him extra royalties for the Super Soaker and several Nerf toys. In February 2013, Johnson filed a lawsuit against Hasbro, and in November of that year, Johnson received nearly $73 million in royalties from Hasbro Inc. according to the court’s decision. As said by Hasbro, Super Soaker sales are approaching $1 billion.
What is the way to turn $5,000 into $1 billion? Sarah Blakely, the founder of Spanx, the billion-dollar self-made inventor of underwear for those wanting to lose weight or simply get in shape, knows the answer. One day she decided to cut off the bottom part of her tights, and realized that the remaining part could support the body well and make the figure slimmer, while keeping the lower part of the legs open.
This idea seemed very promising to Sara, and the girl, having collected all her savings of $5,000, invested it in the initial production. Sarah drove around factories with a handmade prototype, and after many rejections, one of the factory owners agreed to try it, saying that he had daughters who would not let him give up her invention. The first prototype was created within a year, followed by patenting. As of November 2000, Oprah Winfrey named Spanx her favorite product. That same year Spanx tights appeared on the shelves of the most expensive stores. Over the next decade, Spanx products and its turnover multiplied higher.
As we can see from the examples above, these people have achieved success through their own work. In my opinion, the money they have earned is a fair payment for the benefit these inventors have brought to all of us. Maybe the road to wealth also goes through patenting. So, if someone would come up with something new, find out if it can be patented, and even if he or she don’t succeed the first time, remember Paul Brown, who didn’t let more than a hundred failed attempts stop him from achieving his goal. Never give up on your goal!
A patent holder is a natural person or a legal entity, in whose name a state document of title is issued for a number of items of intellectual property, namely, an invention, a utility model or a design invention. Thus, the patent holder, or patentee is the owner of a patent having exclusive rights to the item of intellectual property. The rights of the patent holder are reflected in the Civil Code of the Russian Federation (hereinafter the Civil Code). Thus, in accordance with paragraph 1 of Article 1358 of the Civil Code, “The patent holder shall have the exclusive right to use the invention, utility model or design invention in accordance with Article 1229 of this Code by any means not contrary to law (exclusive right to an invention, utility model or design invention), including those provided for in paragraph 2 of this Article”.
The patent holder may exercise discretionary control over exclusive right to an invention, utility model or a design invention. Thus, the key right of the patent holder is the exclusive right to use the invention, utility model or design invention, i.e., only the patent holder may use the item, and all third parties are obliged to refrain from using this item without the permission of the right holder.
At the same time, the exclusive rights of the patent holder are not infinite. Thus, for example, the boundaries of the exclusive rights of a patent holder are defined by the notion of “use” and are clearly interpreted in subparagraphs 2 and 3, Article 1358 of the Civil Code of the Russian Federation: the use of an invention, utility model or design invention is considered, in particular: import into the territory of the Russian Federation, manufacture, application, offer to sell, sale, other commercialization or storage for these purposes of the product in which the invention or utility model is used or the product in which the design invention is used. As well as performing these actions with respect to a product obtained directly by a patented method; with respect to a device, the functioning (operation) of which, in accordance with its intended use, is automatically performed by a patented method; with respect to a product intended for its application in accordance with the intended use indicated in the claim; performing a method in which the invention is used, including by applying this method. An invention shall be deemed to have been used in a product or process if the product contains, and the process uses, each feature of the invention set forth in an independent claim of the patent claim or a feature equivalent to it and became known as such in the field of technology before the priority date of the invention. If at least one feature of a device or process is missing, the exclusive right shall not be deemed infringed.
Thus, the right holder has the right to use the patented intellectual property at his or her discretion, carry out all kinds of technological and commercial realization of the patented property: to produce, distribute, sell or use it for the production of other goods, as well as prohibit third parties to use the patented invention, utility model or design invention.
Another right granted to the patent holder is the right to grant exclusive and non-exclusive licenses to third parties. In the case of an exclusive license, licensee shall be granted the exclusive right to use the patent to the extent stipulated in the contract, with licensor retaining the right to use it to the extent not transferred to licensee, and in the case of a non-exclusive license, licensor granting licensee the right to use the patent, retains all the rights confirmed by this patent, including the right to grant licenses to third parties. If a patented invention is used by third parties without the permission of the patentee, the latter shall have the right to demand the cessation of infringement, and may file a lawsuit in court to prohibit the actions of a natural or legal person, guilty of patent infringement, and to compensate the patentee for the losses incurred.
The patent holder shall also have the right to assign or alienate the received patent to any person under a patent cession agreement, in full. This contract shall be registered with the Patent Office.
If the holders of a patent for an invention, utility model or a design invention are two or more persons, the relationship of use of the patented item shall be determined by an agreement between them. And in the absence of such agreement, each patent holder may use the protected item at its own discretion, but the patent holder may not grant a license or assign a patent to another person without the consent of the other owners.
In addition to the above rights, the patent holder must comply with a number of obligations, which primarily include payment of patent duties and use of the patents received. In accordance with the Regulation on Patent Taxes, the patent holder must pay annual maintenance fees, which are paid for the full year of the patent's validity. If these fees are not paid, the patent shall be terminated prematurely. The patent holder shall also be required to pay other fees, if necessary, such as, for example, fees for the extension of the term of validity of an exclusive right, for the restoration of the patent, for the entry of information on amendments to the state registers, for the registration of the license agreement, the contract on alienation of the exclusive right, etc.
It is also the responsibility of the patent holder to use the patent by the patent holder itself and/or by third parties under a license from the patent holder. In accordance with paragraph 1 of Article 1362 The Civil Code of the Russian Federation, if an invention or a design invention is not used or is insufficiently used by the patent owner within four years from the date of grant of the patent, and a utility model - within three years from the date of grant of the patent, which leads to an insufficient supply of the relevant goods, works or services on the market, any person wishing and willing to use such an invention, a utility model or a design invention, if the patent holder refuses to enter into a license agreement with this person on the terms and conditions corresponding to the established practice, shall have the right to file a lawsuit with the patent holder for granting a compulsory simple (non-exclusive) license to use the invention, utility model or design invention in the Russian Federation. Thus, the patent holder's failure to comply with the obligations to use the patent within the established time limits may lead to adverse consequences for the patent holder in the form of the granting of a compulsory license to such subject matter of patent rights to interested parties.
The exclusive right of the patentee is also restricted by the so-called right of premature use on the basis of paragraph 1, Article 1361 of the Civil Code of the Russian Federation. Any natural or legal person who, prior to the priority date, conscientiously used on the territory of the Russian Federation an identical solution or a solution created independently of the author and differing from the invention only by equivalent features, or made the preparations necessary for that, shall retain the right to further use the identical solution free of charge without expanding the scope of such use.
One more case, when the use of the items of patent law may be allowed without the consent of the patent holder is governed by Article 1360 of the Civil Code. If the said item affects the national security interests, then in this case the use of the items of patent law may be allowed by the Government of the Russian Federation without the consent of the patent holder. In this case, the patent holder shall be paid a reasonable compensation.
As we can see, the exclusive rights assigned to the patent holders, as well as cases of limitation of exclusive rights are clearly described in the Civil Code. In addition to the list of rights, patent holders have certain obligations, described above, to which they have to honor.
For example, there are at least 300 pending federal applications for inventions related to overcoming the consequences of coronavirus pandemic. Patents for inventions have already been issued for 58 of them. That was reported to Rossiyskaya Gazeta by Grigory Ivliev, Head of Rospatent.
Patents for vaccines, medicines, diagnostic test systems and indoor air disinfection devices have already been issued. Within the past months, more than 50 applications for inventions for therapeutic and prophylactic remedies to combat coronavirus, for disinfectants, for medical developments and improved products, such as medical ventilators, or for masks, are currently under consideration. Applications for personal protective equipment are also being actively filed, but already as utility models.
A special scientific database was created, which included everything related with COVID-19. It helps specialists find the information they need to work faster. A special section for applicants patenting coronavirus drugs was made available on the official website of the Federal Institute for Industrial Property. Grigory Ivliev noted that basing on applications for inventions to combat coronavirus, experts form answers to applicants within 20 days from the filing of the application, and patenting is carried out using Patent Prosecution Highway (PPH), which speeds up the examination process for corresponding applications filed in participating intellectual property offices.
To date, several types of medicines and a vaccine known as “Sputnik V” have already been patented. Among the patented medicines, Grigory Ivliev named Avifavir which is already on sale, as well as Leitragine, created on the basis of Dalargin. Now Avifavir is the name of this antiviral drug with Favipiravir as active substance, allowed for use in medical practice. In general, Favipiravir has long been known, as it was created in Japan to treat infections caused by RNA viruses. Therefore, when the pandemic broke out and it became known that the new coronavirus that caused it also came from the family of RNA viruses, the drug was used to treat patients with COVID-19 in China and Japan. Leitragine has a combined effect and can be used for prevention and treatment of harmful effects associated with the coronavirus.
A patent for the original device, a disinfection tent (RU2724419, date of publication: June 23, 2020) was also granted. The operating principle is as follows: disinfectants are sprayed inside through the framing of the tent and disinfect any objects. With such a tent, virus rescuers can travel to the contaminated area and quickly process all necessary items from the bacteria.
Since the beginning of 2020, Rospatent has received a lot of applications for registration of trademarks which refers to the term “coronavirus”. This situation is typical not only in Russia, but also in patent offices all over the world, where hundreds of similar applications were filed. For example, from the applications which are under consideration at Rospatent the following interesting names can be distinguished: “Covidistance”, "AntiCovid", "Crown Virus", “Checkmate Coronavirus”.
As for foreign applications with creative names, there are much more of them, and among them there are, for example, such interesting names like “I SURVIVED COVID-19”, “IF YOU CAN READ THIS, YOU ARE TOO CLOSE QUARANT-SHIRT”, “STRONGER THAN COVID-19”, “ARE YOU COVIDMUNE?”, “COVID KILLER” and others. The above applications cover a variety of goods and services from medical equipment to clothing, sports goods, games, and even funeral arrangements.
Of course, the motives of applicants for coronavirus related intellectual property are different. While some call for the abandonment of patents for coronavirus drugs and not to profit from the sale of tests, drugs or vaccines, such as the International Humanitarian Organization “Médecins sans Frontières” (MSF), other unscrupulous claimants seek only to benefit from the misfortune of others, and, for example, further prohibit the use of others or seek compensation after obtaining rights to certain intellectual property.
Based on the statistics of past years, it becomes clear that the number of registered intellectual property related to coronavirus subject is growing. Different outbreaks of new coronavirus infections lead to a sharp increase in patent activity in this area. As it is well-known, back in 2002, special attention was paid to the kind of coronavirus “Betacoronavirus” in the appearance of coronavirus SARS-CoV, a pathogen of SARS. This was a trigger for the sharp increase in patent activity. Many companies and research institutions began to actively patent treatment products, diagnostic tools and other technologies aimed at combating the disease. Another outbreak of coronavirus caused by the new type of coronavirus, which is a notorious COVID-19, as we see it, is already stimulating a rapid and strong increase in patent activity.
Despite the fact that it is almost impossible to invent a universal cure, as viruses tend to high mutation rates and become resistant to already known drugs, this did not prevent the world community from rallying to strike a blow to the new coronavirus COVID-19 and significantly increase the growth of patenting in terms of drug composition, vaccines, diagnostic tools and techniques.
At first, let us find out what is the difference between the concepts of a “patent holder” and a “patent author.” The first one is the owner of the right to intellectual property, and he may dispose of the patent at his discretion, including, for example, he may sell or donate his patent. But the second one does not have such rights, despite the fact that the author of the patent is the citizen, whose creative work has created the corresponding result of the intellectual activity. Ideally, both the author and the patent holder should be the same person, but in practice this is not the case. As an example, it is possible to indicate to the scientific institutions and organizations, where the subject matters of intellectual property are created by the employees of these organizations according to a business assignment. In this case, the organization will be the patent holder, and the employees will be only the authors. And the only thing that the latter can count on is the author’s remuneration by receiving a fixed amount of the monetary remuneration or an interest upon the sales or the profits from the product or service created under the patent.
And now that we have clarified the difference between the concepts – the “patent holder” and the “author,” let us move on to the most interesting thing, let us talk about the ways the patent holder can use to gain profits from the patent.
So, you have registered the right to intellectual property and received a protection certificate in the form of a patent. After that, you may sell the patent with the whole invented technology – this is the first and, in my opinion, the easiest way to make money from the patent, because this is a legal, simple and understandable “sales and purchase” mechanism. The only thing you will have to do is to find an interested buyer. But if you use this variant of gaining profits from the patent, you can sell it too cheap. Thus, for example, Tim Berners Lee, the Internet inventor, did not want to be engaged in the risky business and he transferred the rights to the development of the World Wide Web to computer giants and received the largest fee for his idea – 1 million euro. At the same time, Tim Berners could have become a billionaire, but he preferred a teaching position at one of the USA Universities.
Another variant of the monetization of the patents is to grant a license to use your technology. The patent holder may grant both a simple (non-exclusive) license and an exclusive license. The difference between them is that the first one gives a licensor a possibility to retain the right to grant the licenses to other persons, and the second one does not give the licensor the possibility to retain such right and to use the “own” subject matter within the limits established for the right granted to a licensee to the use of this subject matter, unless otherwise is stipulated by an agreement. As you can see, the license may be bought by several companies, or even by one, but in this case, it will have to pay a lot of money to create a monopoly at the market. In any case, the patent holder will first have to find the buyers of the license.
Another way is the commercialization of the patent by creating a product based on this patent. However, this path is not suitable for everyone due to the lack of the possibilities to invest in a startup, as well as due to employment, restrictions at the main job, psychological peculiarities and all the rest. After the launch of the manufacture of your patented invention and the increase of the volume of sales, you will be able to “make” your name, and thus to attract others to the creation of the similar products.
This situation prompts us another way of making money from the patents – judicial proceedings. Yes, exactly the judicial proceedings on the illegal use of your subject matters of intellectual property. You can initiate immediately the judicial proceedings with the violators of the patent and claim for damages. For example, someone else starts manufacturing the products without obtaining permission and without purchasing the license. In this case, the patent holder applies to the court, and, as a rule, the court makes a decision on the recovery of damages. Sometimes, it may come about recovering quite a large amount of damages calculated in millions of roubles, and sometimes, even tens of millions.
There is also another way to make money from the patent – patent trolling. Although this way is not very noble, but sometimes, it is profitable. In this case, one is advised patenting everything, and as much as possible. And those, who will start releasing something similar at the market, will have either to buy the patent or to purchase the license to use your technology. The snag is that is that you will have at least to anticipate the direction in which the particular market is moving to make this scheme working.
In addition, one should not forget that the patent is an intangible asset, and it can be evaluated and placed on the company’s balance sheet. And if it is especially important for your company to look more expensive before entering the stock exchange or when communicating with creditors and investors, then this variant will be very advantageous. You can also use the patent as a marketing tool and declare that you have not just the “product X,” but the innovative “product X,” which is created by the best scientists of the world based on the latest patented technology.
At the end of this topic, I would like to add that the most important stage for the implementation of the above ways of the monetization of intellectual property is the competent execution of an application for a patent, which will have maximum legal protection. Therefore, one should take into account all the rules and nuances even at the stage of composing and executing the application, and then in the future, you will be able to gain income not only working for “the Man” or being engaged in business, but also promoting the own inventions and ideas at the market.
Patent US6360693 "Toy for an animal"
As you can see from the picture above, this simple device looks like a stick. The device is designed for playing with animals and can be made of any material, including rubber, plastic or wood. At first glance it seems that such obvious things cannot be patented, but as we see, they can, and for someone there is nothing surprising at all.
Patent US5443036 "Method for training a cat"
The essence of the method is that you need to direct a beam of invisible light created by a manual laser device on the floor or a wall, or another non transparent surface close to the cat, and then move the laser so that will cause a bright pattern of light and the movement will be uncharacteristic as for cats, and for any other animal with chase instinct. What an amazing invention: you shine a laser on the floor, and the cat runs after the light spot and tries to catch it. A brilliant solution for a productive work out!
Patent US6883462 "A stick for freezing of dogs’ excrements"
The invention is a device in the form of an elongated hollow tubular body made of aluminum or PVC, a removable cylinder filled with compressed freezing chemical substance or refrigerant, which is inserted into the hollow body. The device is designed to remove animal waste. It is turned to fresh dog’s excrements, a button is pressed, the refrigerant is sprayed and freezes all animal waste, which can then be folded into a bag and disposed.
Patent US 4233942 "Protective device for the animal’s ears"
The invention provides protection for the ears of animals, especially long-haired, from greasing by food during eating. The device contains a tubular element for holding and protecting each animal’s ear and an element for placing the tubular element and animal’s ears away from the animal’s mouth and food when it is eating. In other words this simple invention is intended to prevent dogs with long hanging ears from accidentally eating them from their bowl.
Patent US5023850 "Watch that shows a “real” age of an animal"
Special watches allow to determine the age of a particular animal, correlated with the average life of people. For example, the multiplicity for dogs is seven; therefore, one year of dog’s life is approximately seven years of the life of its owner. The digital display of time in the human lifespan can be provided by analogue display of time in the lifespan of animals or, alternatively, the possibility of switching from one to another can be provided. A variable resistor between the frequency source and the receiving means allows the user to change the multiple for different types of animals. Thus, the presence of this device will allow to accurately determining how old your animal is in terms of human life. Isn't it funny?
Patent US4150505 "Bird trap for feeding cats"
A bird trap is designed to catch birds of a sparrow size, and smaller birds have the opportunity to fly away in time, thereby saving their lives. According to the author of this invention, the device provides an opportunity for the continuous supply of cats or neighboring cats with sparrows for food.
Patent US4872422 "Stroke device for pets"
The invention is intended to stroke pets on demand. So, for example, if a doggie becomes sad, then he can come to a mechanical arm, which will begin to stroke and scratch him. A vertical adjustment of the loop on the base allows using the device with animals of various sizes. But, I think, the animal will still need to be adapted to feeling pleasure from this invention.
Patent US4437430 "Device and method for training cats to use the toilet"
The cat litter box is secured in the toilet so that cats can easily use it. In the lower part of the tank there are holes for draining the liquid. As soon as the cat gets used to the toilet first through this device, it will be possible to remove the device so that the cat itself gets into the toilet. It seems to be genious, but the question of cat accuracy and hygiene remains open.
As can be seen from the examples above, rather funny inventions are created because of a great love to our furry friends that, we hope, will not only amuse us, but will really help pets, and make their life brighter and more fun.
Canned food. Modern canned food appeared more than two hundred years ago. For the needs of the army. In 1795, Napoleon Bonaparte announced a reward of 12 thousand francs for the invention capable of keeping products fresh for a long time. The need for the creation of such invention became especially urgent after the failure of his campaign in Russia. The competition was won by cook Nicolas Francois Appert, who had created the world’s first method for preserving products. His jams, broths and roasted meat placed by him in the glass jars and heated, were opened eight months later, and all products were absolutely preserved. Later, in 1809, Appert was awarded a State Prize and the honorary title of “Do-Gooder of Mankind.”
Margarine. It was invented at the end of the XIX century by the decree of Napoleon III, who announced in 1860 a reward for the invention of a cheap surrogate for butter for the consumption by the armed forces, since the economy in the country was, frankly, not in a very good state, the people and the army were starving. The solution how to invent a nutritional, but inexpensive product to replace butter by emulsifying beef fat with milk was proposed by French chemist Hippolyte Mege-Mouries. The inventor himself did not live to see the moment, when his product became popular, he did not receive any profit from his invention and died in poverty.
Soy sausages continue the food theme of the inventions created thanks to the wars. They appeared after World War II and were invented by Konrad Adenauer, the mayor and the first Chancellor of post-war Germany. Due to the British blockade, famine came to the city of Cologne and Konrad Adenauer, who had not only managerial talents, but he also was an inventor, began to look for the products that could replace the most popular products in the diet of the citizens – bread and meat. Konrad Adenauer started to use barley, as well as rice and corn flour, instead of wheat flour. But some time later, Romania entered the war, and the supply of corn flour stopped. After that, the mayor decided to try to use soy instead of meat, and to make sausages out of it. This was a very risky step, because this product was a symbol for Germany. But the city residents were very hungry, so the product was sold out rapidly. However, the inventor could not get a patent for the vegetarian sausages for a long time, because officially, only the meat product could be called sausages in Germany. And only on June 26, 1918, the mayor-cook received the patent for his vegetarian sausages.
Microwave. No matter how surprising it may sound, the ability of the microwaves to heat food was discovered accidently during World War II. American engineer Percy Spencer, while experimenting with a magnetron, realized once that the radar waves had smelted a candy in his pocket. After searching for the cause, he discovered that the cause was exactly in the magnetrons used to generate the microwave radio signals. Then he conducted some simple experiments: he decided to heat up eggs and popcorn, and then he realized that he was on the way to discover something important. Eventually, he connected an electromagnetic field generator to a metal box, and the microwave appeared.
Sticky tape. Or, as we have used to call it in another way, Scotch tape, was also invented during World War II by the order of the military due to the need to bind and protect shells from moisture. But it turned out that the sticky tape also performed not less useful functions – it could repair anything, so this invention is popular even now. It is noteworthy that the colour of the very first Scotch tape was khaki.
Superglue. It was also invented during World War II, but, contrary to the popular misconception, not to glue wounds got at the war, but accidently. American chemist Harry Coover was working with transparent plastics for optical sights in 1942. At that time, he did not pay attention to his discovery and rejected cyanoacrylate just because it was too sticky. After a while, Harry Coover still appreciated the properties of cyanoacrylate, and this superglue got a chance to prove its usefulness to the world.
Canister. It was invented by the Germans at the course of a secret project by the order of Hitler in 1937. And by 1939, anticipating the start of the war, the Germans had thousands of 20-liter canisters in their warehouses, which are now considered to be classic canisters. They were very convenient to transport and carry, they were easy to open.
A Prototype of the Internet. During World War II, the best minds in the world were engaged in decoding the German negotiations, and the information was more important than ever. Dr. Joseph Licklider created the ARPANET system, a prototype of the modern Internet, to combine the huge computers scattered across the universities.
Aviators. Oh, yes, now we shall talk about the form of the glasses that we like to wear even nowadays. Initially, this form of the glasses was invented by Ray-Ban in 1936. It was exactly the military pilots who needed these famous “Aviators” to protect the eyes' retina, as well as not to obscure inflight view.
Sanitary pads. The First World War gave the women this miracle invention. Of course, the women had used the variations of the sanitary pads made of a wide variety of materials and of different shapes during centuries before. But the improved feminine sanitary protection products appeared in 1914, when the nurses began to use for their own purposes the materials designated to bandage the soldiers. Some time later, they were improved to these sanitary pads that we know now. It is noteworthy that selling the novelty turned out to be difficult in the beginning, because at that time, the sellers in pharmacies were mainly the men, and the women, of course, were bashful of asking them for the sanitary pads.
From the examples described above, it can be seen that the wars gave the mankind a number of the inventions related not only to the military industry. Some of the inventions created in those days have become ingrained in our everyday lives improving it significantly. Summing up, it can be concluded that the wars, no matter how paradoxically it is, are the engine of the development of civilization.
On March 11, 2020 the World Health Organization declared the pandemic outbreak of the coronavirus infection COVID-19. The coronavirus has had a significant impact on almost all spheres of human life, not only in Russia, but throughout the world. Although the world community is trying to minimize the spread of COVID-19, even now many large enterprises are halting their work, small and medium-sized businesses in countries affected by the virus are suffering losses. The influence of the coronavirus infection on all areas of our lives did not leave aside intellectual property. The containment of the epidemic led to new working conditions for patent offices around the world.Some patent offices continue to operate normally, transferring a number of processes to a remote format. For example, Rospatent recommends using electronic services for filing applications and forwarding correspondence in the course of prosecution. The use of these electronic services is free, available 24/7 and provides the applicant with a 30% discount on the payment of fees when submitting through electronic services. Although receiving incoming mail is carried out both electronically and on paper through the postal operator, the first option is more preferable in the current situation. Dispute resolution meetings of the Patent Disputes Chamber have been switched to video conferencing, and FIPS educational programs have been converted to webinars. The situation is similar in the Eurasian Patent Office, where the submission of documents of Eurasian applications is carried out using the EAPO-online system or by post.Other patent offices completely switched to the use of electronic services for filing applications and sending correspondence, including the patent offices of Azerbaijan, Armenia, Georgia, Kazakhstan, Kyrgyzstan, Lithuania, Moldova, Uzbekistan, Ukraine, Great Britain, the European Patent Office (EPO), and the African Regional Industrial Property Organization (ARIPO) The World Intellectual Property Organization (WIPO) and others.Many national and regional offices went further and took measures to support applicants and owners of intellectual property rights by offering the option of extending deadlines or deferring payment of fees. These include the European Patent Office (EPO), where all business cases ending from March 15 or after this date will be extended until June 2, 2020. The Australian Office has launched an optimized process to extend urgent requests on various intellectual property issues for up to three months for any users affected by COVID-19 without further written explanation. The United States has confirmed the extension of the “defined timelines for granting patents and trademarks” until June 1, 2020. Thus, the prosecution for documents related to US patents and trademarks (and payment requirements) payable from March 27 to May 31 is not suspended until June 1, 2020. The Indian Office announced an additional extension of the deadlines due to the closure of the country. If the deadlines are from March 25 to May 17, 2020, then the deadline will be extended until May 18, 2020. This extension is applicable to all terms prescribed by Indian laws and regulations in the field of intellectual property, including the submission of any document and payment of fees. Despite the fact that patent offices began to automatically extend the deadlines, applicants should not forget that these extensions are limited, and you should try to comply with the deadlines as much as possible.Due to the COVID-19 pandemic, all business trips and any participation in events and meetings dedicated to intellectual property have been temporarily suspended or transferred to video conferencing and webinar format. For example, one of the significant events in intellectual property, namely, the selection of the new Director General of WIPO, which had previously been held in person, this time was based on an unprecedented written procedure, and on May 8, 2020, WIPO Member States appointed by consensus to Darren Tan as the next Director General of the Organization for a six-year term beginning on October 1, 2020. Mr. Tan will succeed Mr. Francis Gurry, Director General of the Organization, who has been in office since October 1, 2008.
The coronavirus pandemic has become a massive challenge not only for government departments involved in intellectual property, but also for law firms operating in this area. Many companies found themselves in a difficult situation, because, first of all, they are responsible for their employees, and due to the constantly changing situation, the business also faces a wide range of commercial and legal difficulties. The flexibility of law firms will be tested by the virus, and if some companies already provide services remotely, then other companies completely ceased their activities during the outspread of COVID-19. Many company employees will be able to work remotely, but for some, working outside the office is not possible due to various circumstances. Of course, for companies specializing in providing services in the field of intellectual property that have already established strong relations with their customers, there will be no problems with doing business remotely, and as a result, such companies will have much more opportunities for work.In some areas, intellectual property will experience a period of slowdown, at least in the near future, but in areas related to vaccines and drugs used to combat coronavirus, there is a busy time for patenting. So, for example, a group of scientists and lawyers from around the world announced the creation of the Open Covid Pledge project, aimed at making intellectual property free for all people working on measures against the pandemic. Mozilla, Creative Commons and Intel were among the main initiators, according to a press release, Intel made a very large contribution to the project, opening its portfolio of more than 72000 patents.Everyone of us already understands very well that the COVID-19 pandemic will leave its mark both in all areas and in the field of intellectual property in particular, but any difficulties can be overcome. And this does not mean that registration of intellectual property objects will stop, because, as we found out above, filing applications and sending correspondence to patent offices is carried out online, and law firms are ready to provide services in the field of intellectual property remotely.The pandemic reminded us of our community and in this difficult period for everyone, it provided new opportunities, whether it was searching for a cure for the virus, creating technologies that allow people to be in contact with each other, or using digital services.Let us respect these forced measures and stay at home. And we will keep you informed of any significant changes, and will be happy to provide you with intellectual property services online, because we can make it thanks to our many years of experience working with clients. Take care of yourself and your loved ones!
Nowadays, the concepts “patent” and “patenting of inventions” are quite common in the lexicon of the persons, who are engaged in patenting the subject matters of intellectual property by themselves. However, I can note on the experience that quite many of the applicants have an incorrect idea of the main aspects of the patent law, what leads subsequently to a sad fate of the patentable subject matters of intellectual property. I shall give below, in my opinion, the main myths about patents and misperceptions regarding patenting.
Many inventors believe that if they have developed their technical solution, they can disclose its essence in the publicly available sources of information, and after a year or two, they can patent it, if this solution turns out to be profitable – this is one of the main misperceptions regarding patenting. After all, subsequently, when the applicants decide to patent their inventions, they are surprised immensely, when they learn that it is not possible to patent the already disclosed technical solution due to the lack of a criterion of a world novelty, despite the fact that the essence of the technical solution planned for patenting has been disclosed by the applicant himself. Thus, in accordance with Paragraph 3 of Article 1350 of the Civil Code of the Russian Federation, the applicant cannot obtain a patent for his development at any time, but only by filing the application no later than 6 months after the disclosure of the technical solution.
Other applicants, on the contrary, are so careful about their development that they, when filing the application to the Office, are afraid of the information leakage and the disclosure of the essence of the technical solution – this is also a misperception, the information leakage will not occur. However, the applicant must understand that the essence of the invention or the utility model will be disclosed in public sources, because this is one of the conditions for granting the legal protection. And the exclusive right provided by the granted patent means that no one can use the created and patented development without a permission of the patent holder, therefore, obtaining a legal monopoly in exchange for the disclosure of the information is beneficial for the patent holder.
The patent is obtained, hence, the patent holder is defended from the violation of other persons’ patents – this is another myth about the patent, in which many patent holders believe. For example, when starting the own manufacture, many companies file the application for their own patent, which usually defends a modification or a particular case of the existing patented development. Therefore, while taking someone’s invention as a basis and using it completely and without the permission of the right holder, the rights of the latter will be violated. Despite the fact that the new patent obtained will be supplemented based on the known invention, this will not cancel the fact of the full use of the original patent. In this case, it will be necessary to conclude a license agreement for the right of the use of the invention.
The next fairly common myth that follows from the above example is that the patent for an invention is a guarantee of the full defense of the invention, and no one will use the patented technology in the own manufacture. In reality, the patent holder must keep track of the illegal use of the patent himself, and if the invention is worthy, then it will be certainly used, and in this case, the patent holder will have to make great efforts, to spend money and time to the search of the violators.
Another myth is that after obtaining the patent in the Russian Federation, the patent holder may file the applications to other countries. Many applicants, having filed the application for an invention in the Russian Federation, wait for a positive decision on granting the patent first in order to make sure thereby that the claimed technical solution is patentable, and only after that they file the applications to other countries. However, this opinion is erroneous. In accordance with Article 1382 of the Civil Code of the Russian Federation, the foreign applications must be filed within twelve months from the date of filing the application for an invention or a utility model in the Russian Federation. And due to the fact that in the majority of cases it can take more than a year to patent the inventions in the Russian Federation, foreign patenting must be planned before obtaining the Russian patent, because, when filing the foreign application after a twelve-month period, the information on the published application or patent in the Russian Federation may be opposed during the examination of the foreign application, what will lead to a refusal to grant the patent.
The next misperception regarding foreign patenting consists in the fact that if the patent is granted in one country, for example, on the territory of the Russian Federation, then the patent to the same invention will be granted in other countries. In practice, the situation is quite different. It is necessary to understand and to remember that although the rules in the vast majority of countries are almost the same, but there is a difference between them, because each country has its own requirements to the patentability of the invention, its own rules for considering the applications, its own examination.
Another myth about the patent, or rather about its validity period consists in the fact that many people think that the patent is valid during the whole life, and at the same time, no fees should be paid. But in fact, the picture is quite different: in accordance with Article 1363 of the Civil Code of the Russian Federation, the validity period of the exclusive rights to the invention shall be 20 years, and it shall be 10 years to the utility model. At the same time, in accordance with the Statute on Patent and Other Fees, the annual fees must be paid for the legally significant actions. To maintain the validity of the patent for the invention, the annual fees shall be paid from the third year counting since the date of filing the application, and since the first year – for a utility model.
The above examples of the patent myths and misperceptions regarding patenting prove once again that the process of patenting is a rather complicated procedure that requires a lot of knowledge and experience in this field, therefore, patenting technical solutions should be entrusted to the professionals in this field, namely, the patent attorneys, who will help to compose the application correctly and warn the applicants about all the pitfalls and possible scenarios.
Patent No. 4344424 “A mask against food”
Let me introduce a patent for a face mask designed to prevent the user from eating. This invention is recommended for the use by fat people, who want to reduce their weight, and who, at the same time, cannot withstand the temptation of eating something. Walking hungry, and even in such a mask is a doubtful pleasure.
Patent No. 6637447 “An umbrella for beer”
And here is another unique invention, which is a small umbrella that can be removably attached to a container with a drink, so that to protect the container with the drink from the direct sunlight. Perhaps, this invention will be useful to someone, but it will not help to solve the universal human problems.
Patent No. 5787895 “A shield for kisses and a method for its use”
A shield for kisses consisting of a thin flexible membrane and a frame or a holder. The user places the shield for kisses between his lips and the lips or the cheek of the person, whom he plans to kiss, and he kisses the intended recipient of his love through this device. With this method of kissing through the shield made of the thin flexible plastic, the transmission of the microbes will be prevented and the persons, who are kissing, will be able to avoid the transmission of dangerous diseases.
Patent No. 6293874 “A device for receiving kicks for amusement”
The proposed device for amusement includes a user-controlled device for repetitive self-hitting on the user’s buttocks by the multiple elongated levers carrying the flexible extenders that rotate under the user’s control. Thus, this device allows the user amusing by getting the kicks, the frequency of which is determined by the very person, who is amusing. Well, what can I say, the Americans have strange amusements!
Patent No. 6241575 “A bra with the built-in containers for storing beverages”
With such a device, the ladies can forget forever about thirst forever. With the help of the patented bra, the women will be always able to carry drinks with themselves, both as nonalcoholic and alcoholic, and an outlet opening for the consumption of the drinks in the form of a tube pulled through, for example, their backs, will allow quenching thirst everywhere, in addition, if one wants to replenish the liquid inventory, then it can be done through a special inlet opening in any time that is convenient for the user.
Patent No. 1466559 “A trainer for teeth”
The proposed device allows keeping one’s teeth, gums, face and neck muscles in shape. According to the patent holder, due to the fact that the modern food requires fewer and fewer efforts to chew it, the muscles start becoming weakened, but one should not be in despair! This device will always help you to keep your teeth, gums, face and neck muscles in shape, and if you are bored with training alone, you can always call your friend for training, because this trainer for teeth also provides for training in pairs!
Patent No. 4888836 “A flying bed”
If the bed in your apartment takes up a lot of space, then this variant is for you. The patented device is filled with a gaseous substance that is lighter than the air, such as helium. If the amount of the gaseous substance is sufficient, buoyancy in the atmosphere will cause the bed to rise to the ceiling of the room, when the bed is not used, what will allow increasing the size of even a small apartment during the day.
Patent no. 5713081 “The tights with the ‘leg’s spare part’”
This is not a trick of the eye, you see the ordinary tights, just the number of the stockings is a little more than for two legs. And all this is for the case, if one of the stockings is damaged, then the spare one will come to the rescue. When using this miracle device, one should insert his legs into two openings for the legs in a usual manner, when putting on the pair of the tights, and the remaining “leg’s spare part” should be rolled up and folded with the fingertip into the pocket of one of the perineal elements provided in the device. And if a hole appears suddenly in one of the wearable parts of the pair of the tights, then the damaged stocking can be easily and quickly put off and replaced with the undamaged spare part of the tights.
Patent No. 4833729 “A shark-protected suit”
According to the inventor, this suit will protect against sharks. The device is a combined rubber suit and a helmet for the full coverage of the user’s body, which have many spikes protruding outward from them in order the shark will be unable to clamp the suit’s owner in its jaws. Apparently, the applicant has not taken into account the fact that the size of the sharks ranges from 17 centimeters to 20 meters, and many sharks will not be hindered by these spikes, and some sharks will not even have to chew the suit, the suit’s user will be swallowed wholly.
Patent No. 6725510 “A leaning coffin”
Another unusual invention is a coffin, which allows leaning a deceased person so that to confer him a natural position in order to show him to people, and then the coffin of the deceased person returns to a horizontal position for its subsequent transportation. And due to the fact that this is not the single patent for the devices of such kind, there is probably a demand for them.
As you have seen from the examples given above, the patents are quite often issued for the absolutely preposterous, strange and funny things. Although, somebody will perhaps find them useful. At least, one thing is clear – the inventors of these patents are full of imagination!
Nowadays, technologies are developing at a rapid pace and, in order not to reinvent the wheel, the scientists and developers of technical solutions use all the experience accumulated in a particular field, then they analyze, eliminate some possible shortcomings of the already existing solutions, and subsequently, they create new technical solutions and new groups of technologies. For example, intelligent robots, quantum computers, neurotechnologies and bionic organs were sky-high only yesterday, but today these groups of technologies determine a state of the economic development. However, it is a complex task to obtain the objective data on the current state of the economy and to determine the upcoming directions of the economic development under the conditions of the rapid development of the technologies.
The main source through which it is possible to analyze the development of the technological directions, to assess the competitiveness of the technologies, to determine the strategies for bringing products to the local and global markets, to find technological and business partners is the patent information, which includes the information on the patents granted, the applications filed, the priority fields, the protection strategies and other aspects of the patent defense of the upcoming technologies and innovative products. In the recent years, the patent information has become more widely used by economists, social science researchers, heads, businessmen, and, of course, professionals. Thus, the use of the patent information has covered many tactical and strategic kinds of the activities, and its scope has become so broad that it is extremely difficult to assess the overall picture of the state of the relevant branch and this will require a lot of time. In this regard, a large number of the analytical products and services for processing the patent information through patent analytics are being created. In the patent offices of the leading countries, special directions for the business use of patent documentation are being formed, and search services for the patent analytics are being created.
In general, the patent analytics is the most important tool for promoting innovative business. Its use is necessary for the innovative economy, as it allows identifying the upcoming directions of the development of the various sectors of the economy, improving the quality of the programs for the innovative development, analyzing the work of competitors and understanding the presence or absence of the technological advantages over other companies, and it also allows abandoning inefficient solutions and pointing out to more efficient technologies that meet the needs of the company, increasing the efficiency of the research and development and reducing the time for their development.
Thus, for example, the FIPS offers the following tools of the patent analytics:
- the patent landscapes;
- the patent technology intelligence;
- the research and development entourage;
- the research of patent portfolios.
Among the above said patent tools, the branch patent landscape includes a comprehensive research of the modern technologies, products and services based on the patent and non-patent information: trends, strategies, geography, a technical analysis, companies, authors, patent disputes, namely, it allows determining the priorities of the scientific and technological development, the competitiveness of the Russian technologies and the potential for import substitution, forming a comprehensive scientific and technological program, strategies and plans for the development of the markets of the national technological initiative, innovative territorial clusters. The patent technology intelligence includes in-depth profiling the branch companies, the technologies, products and services in the field of the company’s (organization’s) technological priority, namely, it allows selecting the technological directions for investing, conducting a competitive analysis and selecting a strategy for patenting. The research and development entourage includes an assessment of perspectivity for the research and development offered to be included in the program for the research and development, namely, it allows the prioritization of the research and development, developing the programs for the researches and developments of the organization (company), evaluating the applications for the research and development for financing within the framework of the Federal and departmental target programs. The analysis of the patent portfolio includes segmenting the patent portfolio according to: the technology segments with building up the patent landscapes according to each segment; the groups of the importance of the patents with the assessment of the potential for commercializing and developing the recommendations for the specific methods for protection, namely, it allows assessing the portfolio of the company’s patents, strengthening the protection in respect of the valuable subject matters of intellectual property, and conducting an additional inventory of the subject matters of intellectual property recognized as the least valuable.
Among the above tools and their functionality, we can see that the patent analytics products may be applied in the interests of the branch executive authorities, high-tech companies, scientific and educational organizations. Thus, the patent analytics is a set of the methods, techniques, tools and measurements that allow researching the directions of the scientific and technological development based on the patent information.
For example, the company X is planning to start a new business or to develop new products. To do this, the company X needs to get an overall picture of the state of the relevant technical branch, as well as to predict accurately the market needs. The patent analytics can cope with the above said tasks. It will help to determine the evolution of the technology, the trend of the technical changes, the cycle of the technology life duration, the competitors’ technologies, and the solutions that help to cope with the possible problems of the technology analyzed. After receiving the results, the company X will be able to aware of the timeliness of the development and to focus on the problems of the technology being developed, if any, what will help to create absolutely a new product and to avoid a violation of the rights, and, consequently, to save a lot of money that are necessary for conducting the legal proceedings or paying damages for the losses. As a result of using the patent analytics, the new product of the company X will appear at the market, which is filled with new functionalities and which, at the same time, takes into account the advantages and functionality of its predecessors.
Thus, the patent analytics will help to understand the intentions of the competitors, to determine the technological trends, to find the developers, to identify the patents that cannot be violated, and many other things, and its efficient use will contribute to a success of any enterprise, both large and small, what will afford opening new business prospects for business in terms of the strategic or tactical use of the patent analytics for the detailed study of one’s business strategy at the domestic and export markets.
Surely, each of us has a lot of interesting ideas — both smart and ridiculous, which we rarely implement in practice due to various factors. Unlike the adults, the children see this world as limitless and full of opportunities, without a fear to express and implement their ideas into reality. Thanks to this, the children can be called rightfully as the real inventors, because they still continue to contribute to the world around us. You can make sure of this yourself after getting to know, in my opinion, some most interesting examples of the inventions and the discoveries that have been made by the children.
In 1873, fifteen-year-old Chester Greenwood invented the fur ear protectors. The prerequisite for the creation of his invention was his dislike of head wears. To wrap a scarf around his head every time was not so convenient for him, and, at the same time, it was necessary to protect his ears from the chilly wind, while skating in winter. That was when he solved his problem by creating the fur ear protectors. He patented his invention soon, and then he opened his business, which was of especially great success among the American soldiers during the years of the First World War. The invention of Greenwood is popular so far both among the children and the adults during the cold season. No wonder that the city of this little inventor was recognized as the capital of the world of the ear protectors.
The creation of fruit ice belongs to eleven-year-old Frank Epperson. In 1905, his invention appeared by chance. He made his drink, stirred it with a stick, and, he forgot about it leaving it on the porch in the yard of his house for the whole night. The cold weather did its job and the mixture in the cup turned into a frozen product. In the early 1920s, he patented “frozen ice on a stick” and began to manufacture this delicacy with various flavours, but always on the wooden stick.
A toy truck with a drop-head body was invented by five-year-old Robert Patch. The little boy thought about the toy, which would be capable of being easily disassembled, assembled, the body of which would be capable of being changed by turning it into other kinds of the trucks. He created quite an operating prototype of the truck from a shoe-box, the bottle caps and the nails. Then, in June 1963, Robert, at the age of six, patented his invention, and since his father worked as a patent attorney, he helped with the registration of the patent.
In 1998, six-year-old Spencer Wail came up with an idea of creating a toy car for hospitals. The toy car, in which the children would be able to ride safely even with the droppers came to the boy’s mind after his visit to the hospital, where he could not sit still, and in order not to annoy his parents once again because of boredom, he offered to make the dropper as a moving one. He was developing it for a long time, he tested various materials, and he eventually made a decision in favour of reliable plastic. Spencer's idea aroused interest among many people, and soon the first hospital cars appeared, which contained the dropper and a mobility system hidden inside of them.
Fifteen-year-old self-taught mechanic Joseph Bombardier created the world's first snowmobile. At the beginning of the 20th century, in the wintertime, car enthusiasts were not yet capable of using their transport, and they had to change to horse-drawn carriages. However, Joseph tried to solve this problem and he made the world's first prototype of the snowmobile out of his father's old car. And some time later, he upgraded his invention and founded a large company Bombardier Recreational Products. Today, this company manufactures not only snowmobiles, but also trams, railway trains and even planes.
In 1930, sixteen-year-old gymnast George Nissen offered an idea of a trampoline concept thought by him. The idea of creating the trampoline came to him during a trip to the circus, where he was watching the gymnasts and noticed a safety net used by them in the dangerous tricks. Four years later, George created a prototype of the trampoline out of the canvas connected to a pivot metal construction with the elastic harnesses. Realizing that he had invented something incredible, the young man began upgrading his invention for a commercial purpose and he devoted almost all his life to it; George not only improved his pet project, but he traveled the world advertising the trampoline created by him.
Braille intended for writing and reading by blind and visually impaired people was developed in 1824 by fifteen-year-old Louis Braille. At the age of three, Louis lost his sight, however this did not interfere with his desire to learn and develop. By the age of fifteen, he developed a relief and point tactile font for blind and visually impaired people, whose symbols could be recognized by one touch of a finger. This font was the first binary cording record system. And over time, Braille became world-famous.
In 2013, a fifteen-year-old schoolgirl, Ann Makosinski, came up with a flashlight that worked from the human heat. Few people know that the human body produces enough heat to power a 100-watt bulb. The girl created the simple led flashlight that can be powered with the heat of the human body. Thanks to this, there is no necessity to recharge or replace the batteries; all that is necessary for the work of the flashlight is just to hold it in the hands. This technology can continue to be developed, because the scientists are already talking about the mobile phones and the gadgets that can be charged from the heat of the human body.
At the age of sixteen, Jack Thomas Andraka became widely known as the creator of an innovative technique for diagnosing such oncology disease as pancreatic cancer. The test created by the young inventor was several times faster and cheaper than the previously used analogues. Despite the fact that Andraka’s invention is recent and requires some improvements, it has already caused a wide response in the mass media and the scientific circles. After all, hypothetically, Andraka’s technique can be improved for other kinds of cancer.
As we can see from the above examples, the children do not lose their grip, and they sometimes make amazing discoveries and create the inventions that are necessary for the humanity. Many of the things that we use every day have been invented by the children: from the toys to the serious means of transportation and the techniques in medicine — the children can do everything. Therefore, if your child comes up with the ideas that are obviously banal in your opinion, it is not necessary to dismiss them immediately; perhaps some of them can determine our future.
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.
Everyone knows that innovative technical solutions need to be provided with the legal protection that guarantees the defense of the legislation of the state, in which it has been requested. The obtained the patent rights for an invention, a utility model and an industrial design allow gaining maximum profit, thereby they will be a basis of economic prosperity and they will be able to protect the patent holder from the actions of unfair competitors.
In accordance with Paragraph 1 of Article 1345 of the Civil Code of the Russian Federation, the intellectual rights to the inventions, the utility models and the industrial designs shall be the patent rights. But not every result of the creative activity can be called an invention, an industrial design or a utility model. And in order to obtain a patent for the created subject matter, it must comply with the patentability criteria of the invention, the utility model or the industrial design. Thus, one of the patentability conditions for the inventions, the utility models and the industrial designs is novelty. In this case, the subject matter claimed for patenting will be considered as new, if it is not known from the prior art, which includes all the data that has become known in the world before the priority date. And if in the process of obtaining the legal protection the authorized authority establishes, according to the result of the examination, that such patentability criterion as the world novelty is absent, then the claimed decision will not be recognized by the experts of the Office as patentable.
Based on the above, it follows that one technical solution can be patented in the world only once. But despite this fact, there is such a concept as double patenting. Let us get acquainted with it in more detail, and at first, let us consider Paragraph 1 of Article 1383 of the Civil Code of the Russian Federation, which regulates the consequences of a coincidence of the priority dates of the invention, the utility model or the industrial design.
If it is established in the process of the examination that the different applicants have filed the applications for the identical inventions, the utility models or the industrial designs and these applications have the same priority date, then the patent for the invention, the utility model or the industrial design may be granted only according to one of such applications to the person determined by an agreement between the applicants, at the same time, the applicants must inform the Federal Executive Authority on Intellectual Property about the agreement reached by them within twelve months from the date of sending the relevant notification by this Federal Authority.
In the case, when the applications for the identical inventions and (or) the utility models or the identical industrial designs, which have the same priority date are filed by the same applicant, the patent shall be granted according to the application selected by the applicant. The applicant must inform about his choice within twelve months from the date of sending the relevant notification by this Federal Authority.
Thus, in the situation with the identical applications for the grant of the patent of the Russian Federation, which arises if there are two identical applications with the same priority date, which are filed by the different applicants or by the same applicant (so-called double patenting), the grant of two patents according to such applications shall not be allowed. However, if for some reason, the applicant has received two patents according to the applications filed that protect the same subject matter, then the situation of double patenting arises, and the patent turns out to be disputable.
As we have already found out, patenting two identical technical solutions is not allowed, even if they belong to the same person and have the same priority date, and it is possible to obtain one protection document only subject to the refusal from the other one. So, when choosing between the utility model and the invention, the applicant decides which subject matter of intellectual property is more important for him. At the same time, the possibility of combining the advantages of these types of protection is still available.
So, in accordance with Article 1397 of the Civil Code of the Russian Federation, nothing prevents the applicant from obtaining the patent for the utility model or the invention of the Russian Federation and the Eurasian patent for the identical inventions.
In the case, when the Eurasian patent and the Russian Federation patent for the identical inventions or for the identical invention and the utility model that have the same priority date belong to the different patent holders, such inventions or the invention and the utility model may be used only in compliance with the rights of all patent holders. And if the Eurasian patent and the Russian Federation patent for the identical inventions or the identical invention and the utility model that have the same priority date belong to the same person, this person may grant to any person the right to use such inventions or the invention and the utility model under the license agreements concluded on the basis of these patents. In this case, both patents will be in effect on the territory of the Russian Federation.
Now, let us consider the possibility of double patenting in other countries. For example, according to the Guidelines for Examination in the European Patent Office (Part G, Chapter IV, 5.4 of Guidelines for Examination), the European Patent Convention does not consider directly the European applications filed simultaneously on the same effective date and by the same applicant. Thus, the EPO is guided by the principle, according to which two patents cannot be granted to the same applicant for the same invention. The Expanded Board of Appeal has adopted a prohibition to double patenting, which is based on the view that the applicant has not the legitimate interest in the proceedings leading to the grant of the second patent for the same subject matter, if he already has the patent for this technical solution. If the applicant still submits two or more European applications that indicate the same state or the states with the same filing date or the priority and that relate to the same invention, the applicant should be informed that he must either amend one or more applications so that the subject matter of the claims of the applications would not be identical, or withdraw the doubling applications, or choose the consideration of which of these applications he would like to continue.
In the USA, there are two types of double patenting in accordance with Article 101 of Chapter 35 of the United States Code. The first type refers to the refusal in double patenting of “the same invention,” and it is written in the singular that one inventor “... can obtain a patent” (a sole patent). The second type of the refusal refers “obviousness.” The refusal in double patenting is based on the judicially created doctrine based on the state policy, and it is primarily intended to prevent the extension of the effect period of the patent by prohibiting the effect of the second patent, which are the obvious variations of the claims in the earlier patent.
The Australian patent legislation also stipulates the prohibition of double patenting for the same inventor regarding the same invention, in accordance with Subsection 64 (2) of the Australian patent act. However, for the different inventors, where there are two or more patent applications for the identical or substantially identical inventions, the grant of the patent for one of these applications shall not prevent granting the patent for any of the other applications, in accordance with Subsection 64 (2) of the Australian patent act.
Making a conclusion on double patenting all over the world, it can be noted that there is no interest in patenting the identical or the very similar inventions by the same person abroad, and there is no need in the cumulative protection in the countries with the multiple patent systems, since it is prohibited, except, as we have already found out, the Russian Federation and the member states of the Eurasian Patent Convention.
At all times, a woman has been usually associated with a preserver of the hearth, and a man, in turn, has been associated with an engine of science and social activity. But, despite this fact, women are known from the history, who have come up with truly fundamental things. Among a large number of the inventions invented by women, not only practical and life-enhancing things, but also technically complex solutions and serious inventions in the field of physics, chemistry and biology are known.
For example, Tabitha Babbitt, often watching the men sawing logs with a special saw with two handles, noticed that, despite the fact that the men were pulling the handle forward and back, the logs were sawn only when the saw was moving forward, and nothing happened to the log at the reverse movement, and the energy spent for the reverse movement was wasted. And in 1810, Babbitt created a prototype of the circular saw, which started to be used in the sawmilling industry some time later.
Famous actress Hedy Lamarr was not only fond of the movie. In 1941, she invented wireless communication. This secret means of communication changed dynamically the broadcast frequency to make it difficult for the enemy to intercept. Thanks to her invention, a lot of ships of the US Navy were saved from the enemy torpedoes, and since 1962, this device has been used in the American torpedoes. So, Hedy Lamarr became a progenitress of Wi-Fi and Bluetooth standards.
American woman-inventor Josephine Cochrane created the first ever mechanized dishwasher in 1886. It is noteworthy that a prerequisite for the development of the dishwasher was the fact that the utensils from a family porcelain set broke in the course of conventional washing the dishes. It is also worth noting that the device of the American woman-inventor was recognized as a necessary thing in the household only 40 years later.
In 1965, Dr. Stephanie Kwolek invented a synthetic material – polyparaphenylene terephthalamide. This incredibly strong synthetic fiber was originally intended to be used for the manufacture of automobile tires. The fabric was called Kevlar and it became a basis for bulletproof vests, what saved thousands of lives of policemen, firemen and military men. Kevlar also started to be used as the main material for the manufacture of a variety of different items, such as gloves, protective building materials and many other things.
In 1903, Mary Anderson invented the first wipers for the car. The prerequisite for the creation of this device was Mary Anderson's winter trip to New York in 1802, during which she watched in horror how sleet was worsening visibility on the road and preventing safe traffic. The driver was forced to stop the car constantly while driving and to clean the snow from a windshield. What she saw gave her an idea to draw in her diary a simple diagram of a brush cleaner on the outside of the windshield, which was driven by a lever mechanism. Despite the fact that Mary Anderson patented her invention already next year, it gained popularity only a few years later, and it is used up to this day.
In 1917, American woman Dolores Jones invented an acoustic filter, which is called nowadays an automobile muffler. Since the first cars made a terrible roar during their work, because they were manufactured without the muffler, to be nearby or to travel in such a vehicle was, to put it mildly, not comfortable; Dolores Jones was tired of listening to the roar of car engines and she came up with the muffler, and then saved us from the loud roar of the engine, and the world around us became a little quieter.
In 1942, Zinaida Ermolyeva, an outstanding Soviet scientist-microbiologist and epidemiologist, a creator of antibiotics, one of the founders of the modern domestic microbiology, risking her life, invented penicillin for the first time in Russia. In doing so, she defeated cholera during the Great Patriotic War. And she got nickname Madame Penicillin for his invention.
In 1988, Patricia Bath, the first black ophthalmologist at New York University, patented a device to remove cataracts and to correct myopia. The medical device developed by her made it possible to remove cataracts with the utmost precision and to solve further other ophthalmic problems, including the correction of myopia, which has become a mass and affordable procedure. Patricia Bath is an author of 4 patents in the field of laser surgery.
The merit of isolating a DNA double helix in 1953 belongs to Rosalind Elsie Franklin. She was the first to identify a DNA structure. Many people consider her discovery to be a key scientific achievement of the 20th century, but she has not obtained an official recognition for that discovery. Despite the fact that the decision of the Nobel Committee, which had deprived Rosalind of her share in the premium and had given prominence only to James Watson, Francis Crick and Maurice Wilkins, could not be revoked, many people, including Francis Crick, recognized that the X-ray DNA Analysis performed by Franklin was that missing step, which allowed complete visualizing the double helix.
As we can see from the examples described above, women-inventors develop not only some primitive things and the things that simplify the household, but also the technical solutions that are serious and important for the whole mankind. Despite the fact that women's inventiveness was sometimes taken lightly due to the traditions and cultural attitudes of the society and faced the legislative and stereotypical obstacles, the number of the examples of the inventions belonging to women is large. Although the information about many women-inventors and their inventions is sketchy and it is known insufficiently, and the work of women-inventors is underestimated, the examples described above confirm that there are a great many inventions created by women, which changed the world afterwards.
The European Patent Convention (EPC) provides a possibility of obtaining patent defence in thirty-eight European countries by filing only one application. In this case, an applicant himself determines in which of these countries the defence should be obtained.
A European patent is granted by the European Patent Office (EPO) within the framework of a single procedure for all Contracting States, the procedure of granting the European patent being carried out in one of the three official languages of the EPO, namely in English, German or French.
After filing an application with the EPO and before receiving a decision to grant a patent, the applicant can wait for on average about 3.5 years. But there are several variants to accelerate a period of considering the application.
Thus, for example, after filing a request for carrying out a substantive examination, the EPO, based on a search report, considers the issue of compliance of the application and the claimed invention with the EPC requirements and, in particular, whether the invention is patentable. In turn, the applicant, having received the search report, may choose one of two variants: to withdraw the application, if he considers that the examiner’s opinions are of an insuperable nature, or to continue the procedure of obtaining a patent. If the applicant has chosen the second variant, then before receiving the first request for the substantive examination, he has a possibility to amend the application materials taking into account the search results. This measure helps to accelerate considering the application at a stage of the substantive examination by several months.
The applicants, who need a faster search and examination, and who thereby want to reduce the period of considering the application filed with the EPO, may request for their applications to be processed within the framework of accelerated considering the European patent applications (the PACE program), which the EPO provides specifically for such applicants. The PACE program allows accelerating the patent search (within 6 months) or the patent examination (within 3 months) simultaneously only for one national application in case of requesting a priority regarding this application. Thus, the applicant can expect that the period of considering the application will be reduced to 12 months and he will not have to wait for 3.5 years. At the same time, there are not any special requirements for obtaining the right to participate in the PACE program: the request may be filed at any time, an official fee is not paid, and the special reasons are not required.
The application for participating in the PACE program is filed online using a special request form (the EPO 1005 form) and since January 1, 2016, it may be filed only once for each procedure, that is, once to accelerate the patent search and once to accelerate carrying out the examination regarding the application. The PACE application filed to accelerate the patent search will not accelerate carrying out the examination. If the applicant wishes his application to be considered in an accelerated manner, the application to participate in the PACE program may be filed as soon as the application enters the examination stage.
Notably, the EPO does not publish the request for carrying out the PACE procedure, it is confidential and is not included in a dossier of the application.
The applicants may be refused to participate in the PACE program in the following cases:
– if the request for carrying out the PACE procedure has been withdrawn,
– if the applicant has requested for extending any period regarding this application,
– if a refusal has been rendered regarding the application,
– if the application is withdrawn or deemed to be withdrawn.
In the above cases, it will not be possible to reinstate the request for carrying out the PACE procedure, and the second direction of such request at the same stage of the procedure will not be accepted. In addition, the accelerate procedure will be suspended in case of a non-payment of the fees for the extension within the period indicated in Rule 51 (1) of the EPC.
It should be noted that the request for carrying out the PACE procedure may be satisfied in the cases, when it is feasible practically, and depending on the workload of the departments involved in carrying out the searches and the examinations. There can be restrictions in particular technical fields due to the number of incoming requests for carrying out the PACE procedure. However, in practice, these requests are usually satisfied.
Another variant to accelerate the examination regarding the applications filed with the European Patent Office is filing a request for carrying out an accelerated patent paperwork (the PPH procedure). The parties to the PPH agreements agree that if the patent office of one of the parties has determined the application as patentable and has found at least one independent claim to be complying with the patentability criteria, then the office of another party chosen among the participating countries of the PPH program may apply accelerated considering the procedure regarding this application. The PPH procedure is based on recognition of the search results obtained in the first patent office, usually in the office of a host country, by the second patent office. Thanks to filing the application for carrying out the PPH procedure, the following advantages are achieved: a possibility to obtain fast a foreign patent in the countries of interest to the applicant (within 12 months) appears, the costs for the patent offices during the examination of the corresponding applications are reduced, the number of the requests are double reduced, what entails economic benefit for the applicant, the guarantees for the defence of the applicant’s rights in other countries are increased and the quality of the examination is improved.
The PPH procedure is implemented on the basis of the bilateral and multilateral treaties between the patent offices. A combination with the Patent Cooperation Treaty (PCT) confers additional actuality, when the Written Opinion/WO and the International Preliminary Examination Report/IPER prepared by the International Preliminary Examining Authority/IPEA are accepted in addition to accelerated considering.
There are also other ways to reduce the period, though not as significant compared to the PACE program and the PPH procedure. For example, the refusal of the applicant from an invitation according to Rule 70 (2) of the EPC: before the applicant receives the search report, he may refuse from the invitation in accordance with Rule 70 (2) of the EPC and request for the examination unconditionally, irrespective of the search results. In this case, in accordance with Rule 62 of the EPC, the European search report will be issued together with the first request according to Article 94 (3) and Rule 71 (1) of the EPC, instead of the Opinion on Patentability in accordance with Rule 62 of the EPC. A fast and complete response of the applicant will allow continuing considering the application as early as possible.
In addition, the applicant may refuse from his right to a notification in accordance with Rules 161 (1) or (2) and 162 of the EPC, according to which the applicant may amend the application within six months after the receipt of this notification in case of transferring the applications to a regional phase to Europe (in case of the Euro-PCT applications). If the right to a notification in accordance with Rules 161 (1) or (2) and 162 of the EPC has not been revoked at the request of the applicant, the notification will be sent and considering such application will begin after the expiration of the six-month period stipulated by these Rules.
The applicants may also refuse from the right to receive an additional opinion in accordance with Rule 71 (3) of the EPC, in which it is suggested that the applicant should amend or correct the text transferred by the Examination Department. Provided that the formal requirements are met, the EPO will not send a further opinion in accordance with Rule 71 (3) of the EPC and it will proceed with making a decision to grant a European patent.
Among other things, the applicant may request for an early entry of the international application to a European phase. In accordance with Article 22 (3)/39 (1) (b) of the PCT and Rule 159 (1) of the EPC as a designated/chosen office, the EPO will not process the international application before the expiration of the 31-month period from the date of filing or, if a priority is requested, from the priority date. However, in accordance with Article 23 (2)/40 (2) of the PCT, the applicant may request for beginning considering the application before the stipulated period.
As you can see from the examples described above, there are many variants to accelerate the examination regarding the applications filed with the EPO. If the applicant wants to accelerate the process of obtaining a patent, so that to be defended from offenders and to consolidate his position in the market, then the fast actions can be particularly important. Another reason for the desire to obtain a patent faster is the situation, when the applicant is seeking investments or negotiating with a potential licensee. The parties interested in a commercial use of the technical solution often need trust, which is accompanied by the patent granted. However, if the applicant wants to delay and/or to reduce the costs, the variant of accelerating the paperwork will unlikely be of interest to him.
According to statistics, intellectual property in Russia is developing steadily, a lot of technical solutions are being patented in different fields, but despite this, many still wonder what a patent is needed for and what benefits it provides. Let us make it clear and turn, at first, to the legislation.
In accordance with Article 1354 of the Civil Code of the Russian Federation, a patent for an invention, a utility model or an industrial design certifies a priority of the invention, the utility model or the industrial design, the authorship and the exclusive right to the invention, the utility model or the industrial design.
Thus, after obtaining the patent, the patent holder will have the exclusive right that will allow him permitting or prohibiting the use of the patent by other persons, as well as transferring this right, but only on the territory of the Russian Federation, because the patent has a territorial effect. Accordingly, the patent of the Russian Federation will not have effect in other states, and it may be used freely on their territories, provided that there is not the same solution on the same territories of the patent protection.
Thanks to the patent, the patent holder will be able to exclude all the possibilities of the use of the method, the composition, the device/system or the appearance (depending on what subject matter of intellectual property the patent has been obtained for) protected by him by anyone other than the right holder without obtaining a license during the entire period of the protection document being in effect. The patent, depending on the subject matter of intellectual property, is granted for a period of 10-25 years, and at the end of this period, the effect of the patent expires, the subject matter passes on into the public domain, and any person may use the patented subject matter without any restrictions.
The benefits from patents can be different, and the main point is, of course, the protection of oneself and one's own intellectual property. It is necessary to patent those technical solutions that you really use or plan to use in the future. And if the claims are lodged against you, then you, in turn, will always be able to present in response your own patents, what will complicate greatly the lives of the persons, who have lodged the claims against you. In the future, they will have either to try to cancel your patent, that is, to prove that your patents have been granted illegally, or persuade the court that, despite having your own patents, you are using the patents of third persons. The availability of a patent, as a result, leads to a significant reduction of the chances of lodging claims against you by a third party. Thus, before you start patenting, you will no longer have a question: why you need an application, and afterwards – a patent.
At the same time, one should not think that it is necessary to file applications only for something unique and revolutionary, it is necessary to patent everything that in your opinion can be repeated and interesting, and, in case there is a value of your development. Thus, even the insignificant changes of the already known technical solution can become a source of profit for you.
The next significant point relating to the benefits of patents is gaining profit from the sale of the exclusive rights to the subject matter of intellectual property. Thanks to the exclusive rights, you will be a monopolist in the field protected by the patent, as well as you will be able to manufacture and to realize successfully the competitive products, and, if you wish, to reduce or to eliminate the possible competitors, or you will be able to provide them with the right to use your patent by concluding a license/sublicense agreement.
If you have obtained the patent, and you have no further plans to use this patent, then you have a possibility to find a licensee, who is interested in obtaining the exclusive rights. At the same time, the patent holder may file an application for the possibility of granting any person the right to use the invention, the utility model or the industrial design (an open license) to the Federal Executive Authority on Intellectual Property. In this case, the size of a patent fee for maintaining in force the patent for an invention, a utility model or an industrial design shall be reduced by fifty percent starting from the year following the year of the publication by the Federal Executive Authority on Intellectual Property of the information on the open license (in accordance with Paragraph 1 of Article 1368). If you have a company that you plan to sell more expensive, the availability of the patents is a nice additional bonus, because each patent increases the company's value in the eyes of the potential investors. It just so happened that the investors are more interested in those startups, whose intellectual property is protected by patents.
I would also like to draw attention to the next important point – after obtaining the patent, it is necessary to use it actively. In accordance with Paragraph 2 of Article 1358 of the Civil Code of the Russian Federation, the use of an invention, a utility model or an industrial design is considered to be, in particular: importing into the territory of the Russian Federation, manufacturing, using, offering for sale, selling, another introduction into the civil law circulation or storing for such purposes the product, in which the invention or the utility model has been used, or the article, in which the industrial design has been used. This will allow you gaining maximum profit and avoiding these negative consequences.
If the invention or the industrial design is not used or is used insufficiently by the patent holder within four years from the date of the grant of the patent, and the utility model – within three years from the date of the grant of the patent, what leads to an insufficient offer of the relevant products, works or services in the market, any person, who wishes and who is ready to use such invention, utility model or industrial design, in case of the patent holder’s refusal to conclude a license agreement with this person on the conditions corresponding to the established practice, shall be entitled to file a statement of claim with the court against the patent holder on granting a compulsory simple (non-exclusive) license to the use on the territory of the Russian Federation of the invention, the utility model or the industrial design (in accordance with Paragraph 1 of Article 1362 of the Civil Code of the Russian Federation). The compulsory license is granted according to a court decision and it does not require a consent of the patent holder. The conditions of using the patent and a size of remuneration to the patent holder are determined by the court.
Judging from the described above in this article, it can be concluded that the patents give the right to use inventions/utility models/industrial designs at one’s own discretion, as well as to gain profit from the sale of the exclusive rights, to obtain the additional benefits from the sale of the licenses for the patents. That is just the reason, why you should protect your intellectual property by the legal means.
The applications for inventions and utility models are filed with the China National Intellectual Property Administration (abbreviated, CNIPA). Earlier, before August 28, 2018, before the restructuring, the former name was the following: the State Intellectual Property Office of China (SIPO). Due to the change of the name, the domain name of the official website was also changed to www.cnipa.gov.cn (the Chinese version) and to english.cnipa.gov.cn (the English version).
The foreigners, the foreign enterprises and other foreign organizations that do not have a permanent representative office or the headquarters in China have to file the applications for patenting inventions and utility models through the Chinese patent attorneys, and this is the reason why the applicant issues a power of attorney to do business in China to such attorneys.
To file an application for an invention, the following information shall be provided:
- the data and address of the applicant/applicants;
- the data and address of the inventor/inventors;
- a description, the claims, an abstract and the drawings (if any);
- a power of attorney signed by the applicant (notarization or legalizing is not required);
- a certified copy of the priority document (in case, if the convention priority in respect of the application is requested), which must be filed with the CNIPA not later than three months from the date of filing the application.
The very procedure for considering the application for an invention is as follows.
The application is filed with the CNIPA in Chinese, thus, if the priority application or the international application is made in another language, it is necessary to carry out its translation into Chinese, and to submit it to the CNIPA only simultaneously with filing the application. It does not seem possible to extend the period for submitting the translation of the application to Chinese (after filing the application), unlike in some other countries. If the application is filed without the translation, it will be refused. If all formal requirements are observed and the documents are provided, the application for an invention is subject to a formal examination, and this application is published within 18 months from the priority date/the date of filing the application. The applicant is also entitled to make a request for an early publication of his application. The request for a substantive examination should be made simultaneously with filing the application or within three years from the date of filing the application with the CNIPA. It is noteworthy that if the request for a substantive examination and for an early publication is filed simultaneously with filing the application, then the examination regarding this application will start earlier than the one regarding other applications that have been filed at the same time.
After the request for a substantive examination is filed, the Office may send the first request for a substantive examination within 12-15 months. If the response to the request filed in time overcomes the expert’s comments, the CNIPA will issue a notice on granting a patent, and the applicant will pay an appropriate fee for granting within two months from the date of the decision on granting, as well as an annual fee for the year, in which the patent has been granted, the CNIPA will send the original patent and it will exercise the registration in the Register. You can find below a copy of the original patent for an invention, which has been obtained by our company.
It takes 2-3 years at an average to carry out the process of patenting inventions in China, and the period of the effect of the patent for an invention is 20 years from the date of filing the application.
To file an application for a utility model, one should provide the same information as for filing an application for an invention, which is mentioned above in this article.
The procedure for the consideration of the application for a utility model differs from the procedure for the consideration of the application for an invention and it is as follows.
The application is filed in Chinese with the CNIPA. A preliminary examination starts within 3-6 months after filing the application, which includes an examination for the check of the compliance of the application with the formal requirements and the obvious significant shortcomings. If, it is established after the preliminary examination that the application complies with all the formal requirements, the CNIPA makes a decision on granting the patent for a utility model. Thus, the substantive examination regarding the applications for utility models is not conducted, unlike the applications for inventions. Since the substantive examination is not carried out, in principle, the decision on granting a patent is made without carrying out a search in the prior art. However, the absence of the substantive examination does not mean that each application will be immediately accepted. The experts often make official requests objecting to particular claims of the claims that, as a rule, do not comply with the novelty. In this case, the applicant may amend the claims so as to distinguish his solution from the prior art, or he may present the arguments in support of the novelty of its technical solution.
Upon the receipt of the decision on granting a patent for a utility model, the applicant will have to pay an appropriate fee for granting, as well as an annual fee for the year, in which the patent has been granted, the fees being paid within two months from the date of the decision on granting, the CNIPA thereafter will send the original patent and it will exercise the registration in the Register. You can find below a copy of the original patent for a utility model, which has been obtained by our company.
If the request regarding the application has not been received, then it takes not more than 9 months at an average from the date of filing the application with the Chinese Office till making a decision on granting a patent in order to carry out the process of patenting in China, and the period of the effect of the patent for a utility model is 10 years from the date of filing the application.
The volume of the patent rights for an invention and a utility model is limited by the claims, in which a description and the figures (if any) can be used to explain the claims.
At the same time, I would like to draw the applicant's attention to the fact that the applications filed with the CNIPA are not applicable to the territory of Hong Kong. To defend their rights in Hong Kong, one should file the application (on the basis of the application filed with the CNIPA) within 6 months from the date of the publication of the application.
As can be seen from the process of patenting inventions and utility models in China that is described above, a lot of nuances should be taken into account, while filing the application, in this regard, we would recommend filing the applications through the patent attorneys, who have the long-term experience in working with the patent attorneys of China. Our company is such a company, and we will be happy to advise you and assist in obtaining the patent rights in China and beyond it.
We are surrounded by many things that we take for granted, but we do not ponder how they facilitate our everyday life, and what contribution to the mankind development their inventors have made simplifying our lifestyle a great deal. Below, we shall talk about such inventions.
If you open a kitchen cupboard, you will definitely find at least one invention, for example, a tin can, about the usefulness of which you have not even pondered. But some time ago, there was an acute problem of finding the ways to preserve products without losing their taste and freshness. And in the beginning of the XIX century, when France was a military superpower and had conquered most of Europe, Napoleon seriously considered a possibility of waging a war on another continent; therefore the French military were extremely interested in any new developments that would have helped to feed a huge number of their soldiers. In this regard, the French government under Napoleon offered a reward of 12,000 francs to any inventor, who would invent a cheap way to store food. It was then that the French chef Nicolas Appert invented a method of canning food in 1795. He offered to can food in tin cans, and he noticed that the food cooked in closed cans did not spoil for a very long time. And this method was adapted soon to the mass manufacture of canned food. The basic concept has been preserved till now.
At the same time, the tin can itself was patented only in 1810 by the British merchant Peter Durand. A little later, in 1813, John Hall and Bryan Dorkin opened the first commercial canning factory in England. But a can opener, alas, was invented only 30 years after the invention of the tin cans, so that the French soldiers used either a bayonet or stones in order to open such tin can. And it was only in 1858 that Ezra Warner from Waterbury, Connecticut patented the first can opener.
The history of the creation of the next invention is almost a legend, according to which the American physicist Percy Spencer, who worked for the US Department of Defense, was engaged in designing a radiator of hyper frequency waves for air defense radar. And thus, one day, when he was in front of the radiator, he felt that the peanut bar, which was lying in his pocket, began to melt. This surprised and became of interest to the physicist very much. He immediately brought several corn kernels to the laboratory and they turned into popcorn before his eyes. At the same time, Spencer himself felt neither warm nor heat, and then he realized what was happening, and on October 8, 1945, he already patented a device for cooking food with the help of electromagnetic waves. The first microwave weighed 340 kilograms and it was almost two meters high, and therefore it was not popular among the people. And only in the 70s, when the Japanese market became flooded with the Japanese microwave ovens, the interest in them increased dramatically, and as a result, currently, any modern kitchen is not complete without this amazing and useful machine.
Another invention that we use in everyday life is toilet paper. Despite the fact that it has been known as the wrapping and padding material in China since the 2nd century BC, the first use of toilet paper namely refers to the 6th century AD in early medieval China. And in 1391, it was in the same place that a luxury item by the standards of that time specially designed for the imperial family appeared. The dimensions of each sheet designated for the needs of the court of the Ming dynasty were approximately 70 by 90 cm. But the modern version appeared much later. The inventor of the paper designated exclusively for toilet, is considered to be American Joseph Gayetty. Gayetty’s Medicated Paper manufactured in 1857 being the medicated paper of Gayetty was soaked with aloe and defended by the watermarks with the manufacturer's name. But as to the toilet rolls, which are familiar to us, they appeared in Philadelphia at the Scott Paper Mill. As to Russia, it was only in 1968, in the USSR, that the Syassky Pulp and Paper Mill in the Leningrad Region began to manufacture the toilet rolls for the ordinary people.
The next device, which will be discussed, needs no introductions, since every school child, and not only, understands its importance in our life. As you have probably guessed already, this is an electronic calculator. The first such calculator was created in the 1960s, and a pocket version became available a little later, in the 1970s. Nowadays, everyone carries around a calculator, from students to researchers and scientists; indeed, it is rather difficult to find a mobile phone without the pre-installed application for a calculator.
Another invention, without which we can not do in our lives, is a safety razor invention. After all, previously, most men have used a straight razor being a naked blade, which required a lot of efforts and skills, while using it. At the end of the 18th century, Jean-Jacques Perret inspired by a joiner's plane invented the first safety razor. Starting since the 1820s, many companies began to manufacture their own safety razors, although many of them will not be considered safe according to the modern standards. In 1875, the Kampfe brothers manufactured a razor, which had a protective cover on one side of the blade, which needed to be removed for sharpening. And in 1901, the American inventor King Camp Gillett invented the first safety razor with disposable blades. His name is not in vain on everyone's lips, because the Gillette brand is associated with the disposable razors. Already during the First World War, the duffel bag of each American soldier was staffed with the Gillette safe razors, and after the First World War such razor became an integral part of the hygienic set of most men, what ensures a success of the Gillette brand nowadays, too.
Nowadays, many of us, in order to buy razors and not only, use credit cards, which were first used in the USA in the 1920s specially for selling fuel to a growing number of car owners. And in the modern world, credit cards are used everywhere, from paying for fuel (what they were originally created for) to online purchases.
One also can not but mention a boring set of black and white lines. Oh, yes, it comes about a barcode. It was designed by Norman Woodland and it can be found on almost every item in a grocery store. It is difficult to understand at the first glance how the bar code can have any impact on the world, but it definitely has changed the way we make our purchases.
Nowadays, we can make a purchase and choose a product from anywhere in the world at any time via the Internet, although, a few decades ago, the mankind could only dream of it. In the late 1960s, the United States Department of Defence created ARPANET, a network of connections between computers, which was intended for military and scientific research. Other computer networks began to appear around the world in the following few years. And only in 1989, Tim Berners-Lee invented the World Wide Web, which united the whole world.
The list of the genius and elementary inventions is endless. And the people, who have created those inventions were building up the mankind history, the history of the mankind everyday life, learning about which we can discover many interesting things nowadays and ponder that many familiar things that we take for granted now in the modern world have not always been a part of the household, and they are not that elementary.
In order to obtain protection for one’s invention on the territory of the Russian Federation, it is necessary to take into account a number of nuances, one of which is the observance of deadlines at the consideration of the application. Now, let us take a closer look at what deadlines can be violated.
When filing an application for an invention, it is necessary to pay a patent fee for the registration of the application for the grant of a patent of the Russian Federation for an invention and for making a decision according to the results of a formal examination, and also, if desired, the applicant may pay immediately the fee for making a decision on the results of a substantive examination of the application for an invention parallel to forwarding the relevant request for carrying out the substantive examination. However, the fee for filing the application may be paid after filing the application. In this case, the Office will forward a request for a need to pay the patent fee for filing the application, for which the Office provides a deadline of two months, and without the payment of which the consideration of the formal examination will not start. After the timely payment of the fees for filing the application (and subject to the observance of all formal requirements), the Office will forward a notification on a positive result of the formal examination.
If the application for an invention does not comply with the established requirements for the application documents, then according to Article 1384 of the Civil Code of the Russian Federation, the Federal Executive Authority on Intellectual Property shall forward to the applicant a request with a proposal to eliminate the shortcomings, which are present in the application, within three months from the date of forwarding the request and to submit the corrected or missing documents. Subject to the timely submission of a response to the request of the formal examination and the correction of the errors, the Office shall make a decision on a positive result of the formal examination, in which it shall also indicate whether the request for the application’s transfer to the substantive examination stage has been filed, and in the case of failing to file the request according to Article 1386 of the Civil Code of the Russian Federation, the deadline of 3 years from the date of filing the application to the Federal Executive Authority on Intellectual Property shall be established for filing such request. The said deadline may be extended by the Federal Executive Authority on Intellectual Property, but not more than for two months at the applicant’s request filed before the expiration of three years from the date of filing the application for an invention, subject to the submission together with such request the document confirming the payment of the patent fee for the indicated extension of the deadline in the established amount.
In the case of filing timely the request for carrying out the substantive examination and the payment of the fees for carrying out the substantive examination, if the applicant desires, the document confirming the payment of the patent fee in the established amount shall be submitted.
If the request for carrying out the substantive examination of the application is not filed by either the applicant or a third party within the established deadline, the application shall be deemed withdrawn, of what the applicant shall be notified. Despite this, in accordance with Article 1389, the deadline for filing the request for carrying out the substantive examination of the application for an invention missed by the applicant may be restored by the said Federal Executive Authority on Intellectual Property, provided that the applicant indicates the important reasons due to which the deadline has not been observed. In this case, the request for the restoration of the missed deadline may be filed by the applicant within 12 months from the date of the expiration of the established deadline. The request shall be filed to the Federal Executive Authority on Intellectual Property parallel to the request for carrying out the substantive examination of the application for an invention and the payment of the relevant fee.
After filing this request and the payment of the relevant fees, the Office shall forward a notification on the consideration of the request for carrying out the substantive examination of the application for an invention. This means that the experts of the Office proceed to the check of the compliance of the claimed invention with the requirements and conditions of patentability, sufficiency of the disclosure of the essence of the claimed invention. In the process of the examination of the application for an invention, the Federal Executive Authority on Intellectual Property may request from the applicant the additional materials, without which it is impossible to carry out the examination or to make a decision on granting a patent for the invention. In this case, the additional materials without amending the application substantially should be submitted within three months from the date of filing the request according to Paragraph 6 of Article 1386 of the Civil Code of the Russian Federation. This deadline may be extended, but not more than for 10 months parallel to filing the relevant request for the extension, in which the deadline of the extension (from 1 month to 10 months) shall be indicted and upon the payment of the established fee. If the applicant fails to submit the requested materials within the established three-month deadline, or if he fails to submit the request for the extension of this deadline, the application shall be deemed withdrawn.
I would also like to draw the applicant's attention to the fact that at the formal examination stage, in the case of receiving the request, it is also possible to extend the deadline for the response, but not more than for 10 months, and if there is no response to the request within the established deadline, the application shall be deemed withdrawn. However, according to the above mentioned Article 1389, the deadline for submitting the documents or additional materials missed by the applicant may be restored by the Federal Executive Authority on Intellectual Property, provided that the applicant indicates the important reasons due to which the deadline has not been observed, and files the request to restore the deadline missed by the applicant within 12 months from the date of the expiration of the established deadline. The request for the restoration of the deadline shall be submitted to the Federal Executive Authority on Intellectual Property parallel to the documents or additional materials in response to the request.
If, as a result of the substantive examination of the application for an invention, it is established that the claimed invention complies with the conditions of patentability and the essence of the claimed invention is disclosed fully enough to implement the invention, the Federal Executive Authority on Intellectual Property shall make a decision to grant a patent for the invention and it shall forward it to the applicant, who in turn, must pay the relevant patent fees within 2 months. In the absence of the payment of the fees within the established deadline, the applicant shall be given an opportunity to pay the fees for the registration of the patent within an additional deadline of 12 months, subject to the payment of the fee before the expiration of the first 6 months in the amount increased by 50 percent, and after 6 months, but not later than 12 months – in the amount increased by 100 percent. If the fees are not paid within the established deadline and in the established amount, the application for an invention shall be deemed withdrawn. Subject to the payment of the relevant patent fee, the state registration of the invention and the grant of the patent shall be carried out.
Based on the foregoing, I would like to conclude that it is better not to violate the deadlines at the consideration of the application for an invention in the Russian Federation in order to avoid delaying in the paper work and the overpayments of the fees. However, if the applicant has missed the deadline due to the emergency circumstances, then you should not be discouraged, the application will be restored, if the applicant has not missed the deadlines too much.
Everyone knows that the programs for electronic computing machines and the databases are referred to the copyright subject matters and they are protected as literary works. The right to the program and the database arises from the date of its actual creation and it is being valid during the entire life of the author and during 70 years after the death of the author. Consequently, the copyrights arise automatically after the creation of the work and they do not require a mandatory state registration.
Despite this, unlike other subject matters of the copyright, the Civil Code of the Russian Federation stipulates a possibility of carrying out the registration of the programs for electronic computing machines and the databases on a voluntary basis with the Federal Service for Intellectual Property (Rospatent). In this connection, some authors of the programs quite often have a question about the need for the registration of their programs, however, having already encountered the registration of the programs with Rospatent previously, the authors know what advantages they possess.
Firstly, as a result of the state registration of the programs for the electronic computing machines and the databases, Rospatent issues a certificate for the program for the electronic computing machine/the database, which is an official document confirming that the applicant has the exclusive rights to this program and fixing the priority date (the date of its creation). The issuance of the certificate is also accompanied by entering the records on the rights to the State Register of Programs and Databases.
Secondly, the availability of the certificate allows avoiding any disputes with the authors concerning the ownership of the rights to the created program. Indeed, in the application for the registration of the program, the authors confirms by their signature the correctness of the information submitted on the fact that the right holder is an applicant, and the program is a work made for hire. Thus, if the program for the electronic computing machine/the database has been created as part of a job task and the applicant is an employer, then the availability of the certificate is especially relevant.
Thirdly, the availability of the certificate allows settling successfully the disputes with third parties, as it confirms the priority of the deposited materials (a source text) indicated in the program. In the event of the disputes on the violation of the copyright, the right holder may request in Rospatent the official copies of the deposited materials for a subsequent comparison with the counterfeit programs/the databases.
Fourthly, if you are planning a commercial use of the program, then you will have a possibility of granting a license, if it is necessary to transfer the rights of the use, what facilitates significantly signing an agreement, if the certificate is available, and it will make it possible to fix legally the basic conditions for a partial or full transfer of the own exclusive rights to the program and to limit the rights and freedoms of the licensee (the user) solely within the limits of the authority specified in the agreement.
Fifthly, the registration of the program for the electronic computing machine/the database is necessary for entering it to the company’s bookkeeping system as intangible assets, what is relevant for the proper reflection of the costs for the creation of the program in the bookkeeping and tax accounting system for the companies with a general taxation system.
One can see from the arguments given above that the need for the state registration of the program for the electronic computing machine/the database is obvious.
Now, let us find out what nuances one can be encountered, when registering the program for the electronic computing machine and the database.
In order to register the program for the electronic computing machine/the database, it is necessary to file with Rospatent an application for the state registration of the computer program, which should be executed according to the prescribed form and it should be available for downloading from the FIIP website (as well as a supplement to the application, if required), to which a document on the payment of the state fee (in the amount and the manner established by the Tax Code) and the deposited materials identifying the program, including an abstract, shall be enclosed. The maximum volume of the abstract for the registration of the program for the electronic computing machine/the database is limited to 900 symbols. It shall contain the name of the program for the electronic computing machine/the database, which is subject to be registered, the purpose, the field of the use and the functionality. If the program for the electronic computing machine/the database is included in another work as its component, then the name of this work should be given. In addition, the name of the program should not indicate to the devices, technical means, and also it should not indicate to a different subject matter of the registration. For more details of the rules for filling in the documents, please refer to the FIIP website at the appropriate section.
I would also like to note that the right holder of the program for the electronic computing machine/the database may be both a legal entity and an individual, while the application for the registration with Rospatent may be filed by both the Russian and the foreign citizens, but the latter ones will have to carry out filing through patent attorneys.
It does not take much time for the process of the state registration of the program for the electronic computing machine/the database, and in the absence of the Office’s requests, it usually takes 62 working days from the date of filing the application. Also, at the request of the applicant, the corrections may be made to the documents and/or the materials of the application before the date of the publication of the information on the program or the database, subject to the payment of a corresponding fee.
You should also pay attention to the fact that to register each program for the electronic computing machine or the database, a separate application should be filed, that is, it is not allowed filing a single application for several programs or a single application for the program for the electronic computing machine and the database together, for example, for two programs; it is necessary to file two applications, for three programs there should be three applications, etc.
According to the FIIP information, a very high percentage of issuing the certificates is traced according to the dynamics of filing the applications and the number of the registrations for the programs for the electronic computing machines and the databases. A large number of positive decisions are due to the fact that Rospatent does not analyze and check the content of the application, it does not carry out a substantive evaluation of the programs, and it is not responsible for the information provided, everything rests on the applicant.
At the end, it can be concluded that the advantages of registering the programs for the electronic computing machines and the databases with Rospatent are obvious, but it is only for the authors to decide on the need to register the programs for the electronic computing machines and the databases with Rospatent.
The history of patenting and patents originated many centuries ago and it is lasting to this day. Many surprising facts about creative inventors and their incredible inventions have become known during this long period of time. I would like to draw your attention to the most, in me opinion, interesting facts about patents and their inventors who could have become rich and famous due to their developments or, on the contrary, could have missed their luck and profits.
One of the interesting patents, which helped to enrich their inventors, is Amazon Company, which had patented the 1-Click purchase technology, and thanks to that it now gets charges from those companies that use this technology. For example, Apple Company is among such organizations.
As to Microsoft Company, it has a patent for the following function: when you click on a hyperlink, a new window opens. This patent will expire in 2021.
The first telephone was invented by Antonio Meucci in 1871. However, the inventor's greed played a cruel joke with him: Meucci refused to pay a ten-dollar patent fee. And 5 years later, Alexander Bell patented the telephone, thanks to which he earned a lot of money.
Samsung Company had to pay 1.5 billion US dollars for the design stolen incidentally: the rounded corners of a tablet. All this was due to the fact that it had not occurred to the marketing department of the Corporation to carry out a preliminary check and to find out that such design was legally owned by Apple Company. They paid an impressive penalty for this
Fred Bohr, an American chemist, had invented a can-tube for potato chips Pringles, and subsequently he patented his invention. The scientist was proud of his brainchild, and he instructed that he should be cremated in such can after his death, and this was done by his descendants.
The next position of “interesting patents” is presented by the drug aimed to improve the quality of erection, under the name Viagra. It is noteworthy that initially, in 1992, in a clinical setting, the specialists of the pharmacological company Pfizer studied a new drug, Sildenafil Citrate, which was intended for the treatment of heart diseases, but a significant improvement of the blood circulation in the myocardium and the blood pressure indicators was not observed. At the same time, the men participating in the testing procedure felt a well-known stimulating effect, and they did not want to return the pills. A little bit later, the drug was patented.
If you have an interesting invention that can be used by large retailers, and you think, “Shall I contact the company directly?” “Maybe I should not do so, shall I?” Here is an example. In 1963, one teenager invented a quick method of making a ratchet, and then he contacted Sears Company. The company paid him 10 thousand dollars for this idea, saying that this invention was, in fact, useless. A few years later, the company representatives themselves earned 44 million US dollars from that invention.
It is not without funny solutions in patenting. It must be said that various, sometimes even strange applications for obtaining patents are filed annually. For example, there was a case when Halliburton Company once attempted to patent the process of obtaining a patent. But the patent office did not appreciate the idea and rendered a refusal. But other funny patents were granted after all. I shall give the examples of some of them below.
Patent RU 2083239, which protects the method of symptomatic treatment of diseases with the help of the aspen sticks, which have been prepared during the first 3-4 days of the moon at the new moon moment to restore the integrity of the energy shell of the human body, while a continuous talk about the patient's state of health and his body condition is being held constantly. The comments to this patent, I think, are unnecessary.
I would also draw your attention to patent of the USA US 5713081 for tights. If you are tired of the arrows on the tights, you can try to manufacture the tights having three legs! The essence of the patent is that each pair of tights has three stockings, one of which is neatly rolled up, and in case of an arrow, it will be necessary simply to cut off one stocking and to roll out a third one.
Another interesting patent is a mask against eating that fits over the face and protects your mouth from food getting inside the human body. Do not worry, it does not impede the ingress of air, the mask has a mesh, so you can breathe easily. Despite the fact that the patent was obtained far back in 1982, it has not found its application so far.
No less curious patent is a patent for the comb-over of a bald patch. The majority of people suffering from baldness wish to hide this defect. The three-way hair comb-over technique to hide a bald patch was patented as far as in 1977. The process is very simple: it is necessary to divide the hair into three parts and then to comb it over the bald patch along the head, that should do it!
Is it worth patenting the invention for the benefit of all? Why not? We met such altruists more than once in the history of the patent law. Thus, for example, the discoverers of insulin refused officially to obtain the right to this vaccine so that diabetes treatment would remain affordable, spread throughout the world, and the mankind would be able to use this new medicine without any limits.
Jonas Salk, the inventor of the medicine against poliomyelitis, also refused to obtain a patent in 1955. He decided that the whole mankind needed it more. But if he had patented it, he would have earned about 7 billion US dollars.
Among the majority of the above said interesting facts about patents throughout the whole history one can see that although there are very unusual inventions in the patent law, but despite this fact the majority of discoveries really have a great value and they need to be legally protected.
And now let us talk in more detail about some of the most famous inventors-celebrities related to music. You might have thought, why, among all famous people, it was the musicians we were going to talk about? Everything is elementary, just due to the fact that the invention, as I have already said, is a sort of an exceptional phenomenon, and music is a sort of magic, music influences on each of us, when we hear it, we get certain mood, different memories emerge.
Let us start with the American guitarist, the founder of the eponymous hard rock band Van Halen. Edward Lodewijk Van Halen is a songwriter, the designer of guitars and sound-amplification equipment. A part of the signature sound of guitarist Eddie Van Halen was his two-handed tapping technique, and for this, he patented a supporting device for stringed musical instruments, such as guitars, banjos, mandolins, and the like. The supporting device is designed and configurated to support a musical instrument in order to give complete freedom to the musician’s hands so that to play the instrument in a completely new way, what allows creating new techniques and sounds (patent for invention US 4656917 A, published of April 14, 1987).
Paula Julie Abdul, an American singer, producer, dancer, choreographer, actress and TV host, patented her own microphone stand, “Dynamic Microphone Support Apparatus” in 2009 (patent for invention US 12024976, published of June 8, 2009). Her device has a concave base, filled with cement, and a lid on the base, which is located above the base and covers the compartment so that the user’s weight placed on the lid of the base, which is applied in the direction, makes the base bend, what allows the singer standing at the top and move without a fear of falling down.
Prince Rogers Nelson was not only a talented singer, musician, songwriter, composer, producer, actor and filmmaker, but he also developed and patented his “Portable Keyboard Instrument.” This is a curved purple musical instrument with two spikes of a fork type at the end (patent for industrial design US D349127 S, published of July 26, 1994).
The most successful artist in the history of pop music Michael Joseph Jackson is a patent holder and co-author, together with his two costume designers, for specially designed shoes to create the illusion that he is leaning beyond his center of gravity. The shoes were created together with the famous Moonwalk dance movement for his Smooth Criminal music video 1988 (patent for invention US 5255452 A, published of October 26, 1993).
Kanye Omari West, an American hip-hop artist, rapper, producer, composer and designer, is also an inventor. He filed the application PCT/US2013/020223, published of July 18, 2013 for “Using Multiple Screens to Achieve the Effect of Immersion in Audio/Video Content.”
Harry Konnick Jr., an American actor, singer, jazz pianist, the author of songs and compositions for big band, developed a new electronic system for reading notes: “The System and Method of Coordinating the Display of Music for the Orchestra Members” (patent for invention of US 6348648 B1, published of February 19, 2002).
The name of the legendary Sir James Paul McCartney, a British musician, multi-instrumentalist, writer and producer, is also indicated in the columns “Applicant” and “Inventor” of the application PCT/RU1994/000265, published of June 6, 1995, under the title “Plucked Stringed Instruments and a Method of Tuning a Stringed Plucked Musical Instrument.”
Neil Percival Young, a Canadian singer and songwriter, guitarist, the filmmaker of several films, is a holder of several patents for innovations in model trains, as well as of a number of patents for audio and visual systems and his music player (patent for invention US 8154227 B1, published of April 10, 2015; patent for invention US 8843961 B2, published of September 23, 2014).
As we can see from the examples above, the musicians are creative people, but some of them try themselves not only in music, but also in the field of intellectual property, and as a result, they create something new, interesting and needful!
control of all participants in the chain and eliminates the need for a central regulatory authority.In other words, the transactions are checked and confirmed by the numerous computers that storethe blockchain. Therefore, the technology is considered to be “practically unbreakable,” becausein order to change any information in it, a cyber attack must be directed (practically) to all copiesof the ledger simultaneously.The blockchain technology initially incorporates security at the database level. Theconcept of the chains of blocks was offered by Satoshi Nakamoto in 2008. It was firstimplemented in 2009 as a component of the digital currency – Bitcoin, where the blockchainplayed the role of the main common ledger for all operations.Due to its potential, the blockchain technology is interesting for many differentindustries. The data various types can be added to the chain: from cryptocurrency andtransactions to data files, project documents. Using the blockchain, you can keep records, storethe data, make transactions in any sphere of the life activity: financial transactions, real estatetransactions, logistics, insurance, traffic violations, identity cards and other things.In this regard, the question arises about the possibility of protecting this technology asintellectual property subject matters by obtaining patents for inventions for these technicalsolutions.Having carried out some patent search among the applications filed for the inventions inthis field, I would like to note that the greatest activity of patenting has been traced since mid-2017, and due to its relevance, patenting in this field will, in my opinion, only grow.Here are a few examples of patents, after getting familiar with which, you willimmediately understand that new blockchain technology is mainly patented as inventions of asystem and technology/method, but there are the examples of protection as utility models of aplatform, however, when patenting this option, special difficulties can occur, due to the fact thatonly the devices that are contained in a single housing and consist of the parts interconnected byrigid connections can be protected as utility models:– WO 2017/171733 (published on 05.10.2017) “SYSTEM AND METHOD FORMULTI-FACTOR AUTHENTICATION OF IDENTITY BASED ON THE BLOCKCHAIN”;– RU 2 639 015 C1 (published on 19.12.2017) “METHOD FOR CONTROLAUTHENTICATION AND THE PRODUCT QUALITY IN THE PROCESS OF THEMANUFACTURE AND IMPLEMENTATION”;– EN 181 439 U1 (published on 13.07.2018) “THE DECENTRALIZEDTECHNOLOGY PLATFORM OF STORING AND THE DATA EXCHANGE OFTRANSACTIONS IN A DISTRIBUTED COMPUTING NETWORK”;
– US2018302222 A1 (published on 18.10.2018) “METHOD AND APPARATUS FORACCESS CONTROL IN DISTRIBUTED BLOCKCHAIN-BASED INTERNET OF THINGS(IOT) NETWORK”;– US2018300382 A1 (published on 18.10.2018) “METHOD AND SYSTEM FORTUNING BLOCKCHAIN SCALABILITY FOR FAST AND LOW-COST PAYMENT ANDTRANSACTION PROCESSING”;– WO2018183099 A1 (published on 04.10.2018) “BLOCKCHAIN-BASEDTRANSACTION PROCESSING METHOD AND APPARATUS.”From the presented analysis on the patentable technical solutions in this direction, we canconclude that the protection of intellectual property is an important integral component. After all,the patents are not just an abstract concept; they play an invaluable practical role in our life andstimulate the development of innovations and new technology in various fields.
– No. 2643635 “THE GAME SYSTEM AND THE METHOD” published on 02.02.2018Bulletin No. 4.In addition to the systems and methods of the patented games described above, there isanother method to protect their technical component: You can protect your game by filing anapplication for a utility model and by obtaining a patent for it over time. The utility modelprotects the technical solution that relates only to a device. According to Article 1350 of theCivil Code of the Russian Federation and Article 1351 of the Civil Code of the RussianFederation an invention differs from a utility model by the need for the presence of an inventivestep, i.e. the utility model should only be new and industrially applicable.Thus, when patenting technical solutions as utility models and for subsequent obtaining apatent for a utility model, it is necessary to observe only two conditions of legal protection:novelty and industrial applicability, in this case, based on practice, the registration period of theutility model is approximately 6-8 months from the date of filing an application to the PatentOffice, what is very relevant for the games, which have a short period of use in the market andwhich depend on the fashion trends and the new needs of gamers.Consequently, the choice of the kind of protection of the developed game or its elementsas an invention or utility model depends on the very technical essence of the developed technicalsolution.If your game relates to the device, such as a computer or a video player/game console, orit is any other device that has a housing, which contains structural elements interconnected somuch that it is possible to conclude that this is a whole single device, and at the same time itshould be targeted at obtaining a technical positive effect (it should be noted that spectacularityis not a result), then such technical solutions can be patented as utility models, subject to thecompliance with the patentability criteria. I shall give below some examples of the patents forthe utility models in this field:– No. 98336 “THE TRAINING SIMULATOR’S GAME CONSOLE” published on20.10.2010 Bulletin No. 29;– No. 108342 “THE DESKTOP GAME VIZZLE” published on 20.09.2011 Bulletin No.26;– No. 162880 “THE GAMING DEVICE” published on 27.06.2016 Bulletin No. 18.If there is no technical component in your game, but the artworks or the graphic elements,design elements are present, they can be patented as industrial designs, i.e. the appearance of thegame, in other words the design. So, according to Paragraph 1 of Article 1352 of the Civil Codeof the Russian Federation the solution of the appearance of the article of an industrial or
handicraft production is protected as an industrial design. The industrial design shall be grantedlegal protection, if it is new and original by its essential features.I shall give below a couple of examples of the patents for the industrial designs withrespect to a game:– No. 41797 “THE DESKTOP GAME “FIELD of MIRACLES” published on16.11.1995;– No. 99145 “THE SCREEN INTERFACE OF THE GAME” published on 16.07.2016;Summing up, it should be noted that the possibility of patenting games, both computerand desktop ones, exists and it is currently relevant. In this case, obtaining a patent will allowyou to dispose of the exclusive right and it will protect you from the use of your patent by thirdparties. Your intellectual property should bring you income, and for this you need to acquire theexclusive rights to your game by obtaining a patent for an invention, utility model or industrialdesign. And what subject matter of intellectual property does your game relate to?
Basically, the software is protected by the copyright. The most important advantage of the protection by the copyright is its simplicity. The copyright protection is automatic – it starts with the creation of a piece of work and does not require an official confirmation, a registration. In addition, the copyright owner enjoys a relatively long protection, which, as a rule, continues throughout the author’s life plus 70 years after the author’s death.
However, the software, unlike other copyright subject-matters, can be registered in the Russian Patent Office, which carries out an official state registration of programs and databases and grants appropriate certificates of registration.
The program for electronic computing machines can be expressed in any language and in any form, including a source text and an object code. The program for electronic computing machines means an objective form of representing a set of data and commands intended for the operation of electronic computing machines and other computer devices with the aim of obtaining a certain result. The program for electronic computing machines also implies the preparatory materials obtained during its development, and the audiovisual images, which it generates (Article 1261 of the Civil Code of the Russian Federation).
To confirm an exclusive right to the programs for electronic computing machines or databases, as a rule, it is sufficient to represent a certificate of the state registration granted by Rospatent.
However, such a certificate confirms the fact of filing an application for the software product registration in the name of a certain person to Rospatent. Rospatent does not check, whether such an individual owns an exclusive right, but it only makes an entry in the state register of programs and databases on the basis of the information provided. It is the applicant who is responsible for the reliability of such information.
In accordance with Paragraph 4 of Article 1259 of the Civil Code of the Russian Federation, the registration of a piece of work or the compliance with any other formalities is not required for the creation, implementation and protection of the copyright. Since the software is protected as pieces of work, the mere fact that the piece of work has been created in any objective form as a result of the author’s creative efforts is sufficient for the creation of the author’s exclusive right to it. However, the registration of the software as a program for electronic computing machines has the following advantages: it allows the right holder to protect his interests more effectively in the event of disputes, the certificate of registration is the main evidence of the exclusive rights to this intellectual property subject-matter, and also it gives an opportunity to assign (sell) the copyright to the software product officially and to distribute it actively. Thus, the certificate of the state registration of the computer program will be the evidence in the event of a dispute: when identifying plagiarism and counterfeiting.
The disadvantage of the state registration of the program for electronic computing machines, despite its official status and an external resemblance to the patenting procedure (filling in an application for granting and the necessary forms), is the fact, that the certificate of registration of the program for electronic computing machines does not grant any additional rights.
And is it possible to patent one’s own program, so that it would be protected as securely as, for example, inventions? According to Paragraph 5 of Article 1350 of the Civil Code of the Russian Federation, patenting programs is not allowed. However, the algorithm of the program, as a sequence of actions (method), can be protected as an invention. The main condition is that the method should carry out actions over material objects with the help of material means (Paragraph 1 of Article 1350 of the Civil Code of the Russian Federation). In addition, when executing an application for a discovery, it is necessary to state in words the nature of the implementation of the algorithm. That is, the algorithm should be represented not by the program language, but by the steps of measures, which implement it. Each such algorithm should be supported by block diagrams and algorithm diagrams. Inventions are patentable, if they contain a technical solution, that is, they solve a concrete technical problem, using concrete technical means. In other words, the algorithm of the software should be aimed at achieving a positive effect in order to be patentable. In addition, three conditions must be observed obligatory: a novelty, an inventive step and an industrial applicability. The advantage of patenting the software as an invention is the monopoly to this technical solution for 20 years; it is easier to enter the international market having a patent. However, there are also disadvantages: it operates territorially; the patent’s cost is high, when it is distributed in other countries, the patent implies the disclosure of the information, and the technology develops faster than the term of the patent expires.
The next option for obtaining the software rights is the protection of the user interface as an industrial design, the user interface is a kind of interfaces in which one party is represented by a user and another party is represented by a device/machine. The user interface is a collection of tools and methods by which the user interacts with various, most often complex machines, devices and equipment. The terms of patenting an interface must comply with the conditions of patentability of an industrial design. Advantages and disadvantages of patenting this intellectual property subject-matter are the same as for patenting inventions.
Drawing a conclusion about possible options for the legal protection of the software, the following should be noted. Only the software developer can choose the method to protect his product weighing the guarantees and risks that can accompany a concrete method chosen among the proposed ones to obtain the legal protection, taking into account the conceptual differences between the copyright and patent right. The best solution, from my point of view, will be a comprehensive protection of Your rights to the software, if the development is serious and promising.
The plus consists in the fact that the intellectual property is developing and new laws, agreements and programs are being adopted in due course, making it possible to enhance the terms for applications filing – to expand the time frames for an application transition to the foreign governments having preserved a priority thereby, in doing so having got rid oneself of wrongdoing when opposing one's application in this or that country on the criterion 'the world-wide novelty', and to assure oneself finally of expediency of a patent acquisition in a chosen country.
After conclusion and subsequently after adoption of a Patent Cooperation Treaty (РСТ), the applicants have got an opportunity to apply for patent protection of an invention simultaneously in each of the plenty of countries through filing an "international" patent application. Such application can be filed by a citizen of any contracting state of PCT or by a person residing in such government. As a rule, it can be filed to the national patent office of a Contracting state which citizen is an applicant or in which he/she resides, or, at an applicant's option, to the International Bureau WIPO in Geneva. The main advantage of such application filing is a term increase of the applications filing, ranging from 12 months, unlike a convention application, to 30/31 months as from a date of a priority application filing. This extended period of time makes it possible for the applicants to figure out expediency of the applications filing in concrete countries, to determine a list of the governments for subsequent patenting and to orientate oneself as to forthcoming costs, having stored up money as may be necessary.
The main factor determining the risks in subsequent patenting is an international search report and a written message of international searching authority, thereby an international search is made by one of the competent international searching authorities (ISA), provided for by PCT, and based on the results of such search a report is made on an international search representing a list of the references to the published documents that can affect an invention patentability, which claim is contained in an international application. This search is some kind of an evaluation of patentability of a claimed technical solution. Besides that, a preliminary and non-binding written opinion is made on an compliance with the patentability criteria within the meaning of the results reflected in a search report. If based on the results of ISA it is established that at least one claim of claim in РСТ application has novelty, a level of invention and industrial applicability and also a strategically correct decision in the absence of remarks in information field VIII, then, in my opinion, an application transition to the national/regional phases according to a pilot program of expedited paperwork (РРН) will happen. It will make it possible to reduce significantly the terms of an application consideration for granting a patent for invention in the countries which the bilateral or multilateral agreements are entered into with, also according to the РРН Program not only a term of the first document preparation reduces, but also all the actions of the expert appraisal, including the issuance of a protection documents and also costs are reduced. However an agreement on РРН program is entered into not with all countries. So, for example, Rospatent has concluded this agreement with Japan, the Republic of Korea, the USA, Finland, Spain, Denmark, People's Republic of China, the European and Eurasian Patent Offices.
If, based on the results of an international search report and written opinion they make a conclusion on non-compliance of a claimed technical solution with at least one patentability criterion, then it will be difficult for an applicant to claim subsequent patenting with subsequent obtaining of protection documents. However, in reply to the results of an international search, an applicant has an opportunity to change what is claimed in an international application and to raise arguments in support of patentability of a claimed decision before its transition to the national phase, through a respective claim filing under Article 31 of the Patent Cooperation Treaty. Thereby this claim shall be signed within an established term and shall be accompanied by payment of the established fees.
The next important stage is an adequate choice of agents upon transition to the national/regional phase because the subsequent consideration of the applications depends directly on an agent's qualification of a chosen country. That's why it is more advantageous to entrust professionals with big work experience with the international applications filing and with the entire subsequent procedure. So, for example, company "Zuykov & partners" has the work experience in the area of the intellectual property starting from 2004. And to decide separate issues for the national/regional patenting, our company involves national patent attorneys from those countries in which the transition procedure to the national/regional phase is held. Our company has the well-organized effective work with an international net of the patent bureaus, what makes it possible to render our customers the high quality services, to control all the terms and to minimize risks.
Finally I would like to point out that it turns out to be possible to take into account the main nuances and risks of international patenting when filing an international application according to the РСТ procedure, because the patenting stages are rather transparent and make it possible to plan strategically the opportunities and terms of the subsequent patenting, what, I do hope, in the future will give its positive results in form of protection documents in the countries of interest, with subsequent value realization from the costs incurred primarily.
To solve this problem, the Eurasian Patent Office (EAPO) launched on July 1, 2016 the Pilot Program for the Accelerated Substantive Examination of International Applications (PCT-PPH) entered the regional phase in the EAPO. This Program was designed to shorten the terms of consideration of the EA-PCT applications at the stage of their substantive examination and to improve the efficiency of the substantive examination of the EA-PCT applications by using the results of the International Authorities’ work undertaken at the international stage of consideration of applications in accordance with the Patent Cooperation Treaty.
The Accelerated Substantive Examination of the EA-PCT applications under the Program shall be carried out at the petition of the applicant, subject to meeting the following requirements stipulated by the Program:
1. The written message of the International Search Authority (ISA) and/or the conclusion of the International Preliminary Examination Authority (IPEA) with respect to the relevant international application shall be prepared by one of the following ISA and/or IPEA
– The European Patent Office (EPO),
– The Japan Patent Office (JPO),
– The United States Patent and Trademark Office (USPTO),
– The Korean Intellectual Property Office (KIPO),
– The Federal Service for Intellectual Property of the Russian Federation (Rospatent),
2. The ISA and/or IPEA has recognized with respect to the relevant international application that the invention, characterized in at least one or more claims, satisfies the conditions for patentability, that is, it is deemed new, satisfying the inventive level and exploitable,
3. The claims presented in the EA-PCT application must satisfy the claims presented in the international application in the way, that all claims of the EA-PCT application shall satisfy sufficiently one and/or more claims of the international application, which have been deemed by the ISA and/or IPEA satisfying the conditions for patentability of the PCT.
4. The claims shall not include more than 20 claims and shall not contain more than two independent claims, except the claims of the applications in the field of chemistry and medicine,
5. The formal examination of the application shall be completed with a positive result; the petition for a substantive examination shall be filed and granted. However, the first EAPO notification based on the results of the substantive examination of the application shall not be sent.
If these requirements are met, the applicant can apply freely for the Pilot Program of the Accelerated Substantive Examination of International Applications, while the additional pleasant bonus, except the quick grant of a patent, is the absence of an additional fee for accelerating the procedure of the consideration of applications. The applicant should only file a petition for an accelerated substantive examination of the EA-PCT application, a table of sufficiency of the claims, a copy and translation into Russian of the document establishing the patentability of the invention with respect to the relevant international application, if such document or its translation is not available in search service PATENTSCOPE, as well as the copies of non-patent documents enclosed in the ISA written message and/or the IPEA conclusion. And the first EAPO notification on the results of the substantive examination shall be sent within three months from the date of granting the petition.
Our dynamically developing company has already had an opportunity to file an application and to obtain a notification on the readiness to grant a patent, which was received in the shortest possible terms, namely, two months after the date of granting the petition.
Therefore, we conclude that the implementation of the Pilot Program of the Accelerated Substantive Examination of International Applications (PCT-PPH) is an excellent opportunity to obtain a patent protection on the territory of Eurasia within the shortest possible terms.
This Program shall be implemented during one year as an experiment in the use for these purposes of the materials prepared by the results of the work of the International Authorities undertaken at the international stage of the consideration of applications according to the Patent Cooperation Treaty. Despite this fact, we are sure that its “experimental status” has already yielded its fruit, in a good way, and it will be converted into a permanent basis.