Patent Specialist / Chemical Specialist
In 2004 Ludmila graduated from the Samara State University and gained a Specialist degree of engineer-chemist. She also has two additional higher educations: chemistry teacher and translator of the German language in the sphere of professional communication.
Ludmila has worked with Zuykov and partners LLC since 2017 and specializes in:
- Patent search on inventions and utility models.
- Preparation and filing of patent applications on inventions, utility models, software and database.
- Response preparation on request for substantive examination on inventions, utility models, software and database applications.
- Annual maintenance of a patent due to the fact that patent must be maintained on the annual basis, otherwise it will be held invalid/
- Change of the patent’s holder information as in case of change in right holders’ name/address is necessary to introduce changes into the patent register.
- PCT application filing.
- Patent dispute and cancellation as due to the current legislation of the Russian Federation within the validity period a patent for invention, utility model or industrial design can be cancelled entirely or partially.
2004 - 2010 Leading engineer of Department for development of new technologies and their introduction of the industrial technology center, JSC "Corporation "Togliattiazot".
2010 - 2014 Head of Department in the preparation and implementation of new technologies, at JSC "Togliatti Institute of nitrogen industry".
In this paper, the existing patent laws will be considered.
As provided for in paragraph 4 of Article 1350 of the Civil Code of the Russian Federation, “An invention is deemed having industrial applicability if it can be used in industry, agriculture, public healthcare and other branches of economy or in the social sphere.”.
In accordance with subparagraph (2) of paragraph 24.5.1 of the Administrative Regulations, when establishing the possibility of application of the invention in industry, agriculture, public health care and other fields, it shall be checked whether the purpose of the invention is indicated in the description contained in the application on the filing date (if on that date the application contained a claim for the invention, then in the description or claims). In addition, it shall be checked whether the documents and drawings contained in the application as at the filing date contain the means and methods by which the invention may be carried out as described in each of the claims.
In the absence of such information in these documents, it is acceptable that the means and methods mentioned should be described in a source that became available to the public before the priority date of the invention. In addition, it should be ensured that, if the invention is carried out under any of the claims, it is indeed possible to carry out the intended use indicated by the applicant. Where the possibility of exercising the invention and realization of the said purpose can only be proved by experimental data, the existence in the description of the invention of examples of its realization shall be checked. It shall also be determined whether the examples given are sufficient to extend the conclusion of compliance to the various private forms of realization of the feature covered by the concept given by the applicant in the claims.
In accordance with subparagraph (3) of paragraph 24.5.1 of the Regulations, if it is established that all the specified requirements have been met, the invention shall be deemed to comply with the condition of industrial applicability. 
Thus, a person who intends to file an opposition to the invalidation of a patent for an invention on the grounds of non-compliance with industrial applicability, shall first assess the scope of the patent holder's claim, i.e., how broad the independent claim(s) are.
Further, it is necessary to verify that there are sufficient examples in the patent being impugned to support the various private forms of implementation of the features covered by the general concepts or alternative implementation options set out in the claims.
If there are no examples or there are not enough examples to confirm the private forms of implementation of the features in question, it shall be assumed that the applicant does not show the implementation of the group of inventions under the opposed patent.
In addition, it is important to pay attention to whether the independent claims of the opposed patent are of open or closed type.
That is determined, in particular, by the presence of the words “containing”, including" for the open type and “consisting” for the closed type in an independent claim, after the generic concept.
Thus, in the case of an open type claim, in the compilation of an independent claim it is sufficient for the applicant to determine the set of features of the invention necessary for the realization by the invention of the purpose indicated in the generic concept, and features of the invention, which are not necessary for the realization by the invention of its purpose, are not included in the independent claim.
If the claim of the invention is of a closed type, then the absence of at least one essential feature of the invention, necessary for realization of the invention in industry, may be used by the person filing the opposition as an argument for the impossibility of realization of the invention and its realization of the indicated purpose in the scope of the set of features presented by the applicant.
In addition, the person planning to file an opposition has to ensure that the description of the invention lacks the means and methods by which the invention claimed in the patent being impugned can be exercised. Whether the theoretical data on similar means and methods applied also within the scope of the claimed invention, as detailed by the applicant in the “Background” section of the patent being impugned, are missing.
It is also necessary to pay attention to the presence of absurd hypothetical, pseudoscientific theories presented in the description of the patent opposed, which can easily be questioned. For example, such solutions include “perpetuum mobile”, a way of making a diagnosis by skin patterns of the fingers of the hands, a way to obtain precious metals from the air and other methods related to alchemy, etc.
On the basis of the results of the assessment of the legality of the arguments presented by the person filing the opposition with regard to proving the non-compliance of the contested invention to the condition of industrial applicability, the panel of the Chamber for Patent Disputes will determine whether it is possible to agree with his or her opinion or not, having assessed the following:
- Whether the purpose of the invention or a group of inventions and the technical result are indicated by the patentee in the description of the impugned patent;
- Whether there are no examples and experimental data in the description for the impugned patent, i.e., whether the realization of the said purpose with a representative of each private form of invention or each alternative embodiment of the invention is confirmed by experimental data;
- Whether the claim is of an open type and whether it includes a set of features that is necessary to achieve the specified result, i.e., those features that the invention or a group of inventions under the impugned patent are intended to modify;
- Whether the means and methods by which the invention can be carried out as described in each of the independent claims are disclosed;
- Whether the description makes reference to means and methods previously known from the background of invention, and therefore whether they are obvious to a person trained for the particular field in relation to the claimed invention, even if they are not repeatedly explained in detail in the description;
- Whether all the information in the description is of a scientific and technical nature.
Thus, the panel will only agree with the opposing person if at least one of the above items is proven to them.
Otherwise, the panel shall conclude that the opposition does not contain arguments that would allow it to conclude that the invention or group of inventions under the patentability condition of the impugned patent is not “industrially applicable” and shall dismiss the opposition.
In difficult situations, when the applicant and the expert cannot find mutual understanding, it is possible to send a request for an in-person expert meeting or through video conferencing. The initiative can also be taken by an expert.As a rule, an expert meeting allows you to provide additional materials to a previously submitted application, and to leave out all disagreements and misunderstandings in a dialogue mode.According to the results of the meeting, a protocol is compulsory. Additional materials submitted by the applicant to the previously filed application (if they are recognized as not changing the nature of the application) are included by Rospatent to the prosecution process, but are not included in the description of the application itself.Thus, applicants who face objections from the examination are advised not to be afraid to provide a large number of additional materials - test reports with new technical results (positive effects) of the invention, photographs, scientific and technical reports, experimental studies, etc., to emphasize the level of development. It should be noted that in recent years the requirements of examination have increased so that the “quality” of patents has improved.It should be noted that the nature of the request or the call to the expert meeting may show the intentions of the expert, even if they are not obvious. When an expert opposes the well-known technical solutions to the individual distinguishing features of the claims, but not to all, then most likely it will be a question of adjusting the claims. If a violation of the unity of the invention is indicated, then in the process, for example of an expert meeting, the expert will adjust his attitude to the application depending on the arguments of the applicant. The same can happen on issues of industrial applicability, if not everything is clear with the possibility of implementing a technical solution. Arguing your position in response to a request or at an expert meeting, it is important to note all the claims of the examination, maybe partially agree with them, and then tactfully and calmly raise your arguments. This will help understanding and finding a compromise solution.Thus, the applicant always needs to fight to the end for obtaining the patent!
 Гражданский кодекс Российской Федерации (часть четвертая) от 18.12.2006 № 230-ФЗ (ред. от 26.07.2019, с изм. от 24.07.2020). Ст. 1350-1351.
 Статья «Экспертиза заявки на изобретение и полезную модель», автор - Саленко А.М., опубликованная на сайте: https://www.start-patent.ru/examination.
Thus, if a Patent Attorney, while reviewing the technical solution of a Principal, for example, reveals the fact that he is already working with another Principal on a similar subject matter, he is forced to notify immediately the Principal about it and to terminate the legal relationship with him in this case, because the Patent Attorney is responsible to the Principal and he is obliged to comply with the requirements of the legislation on preventing the conflict of interests and he is striving to avoid the conflict of interests. The patent attorneys’ organization is obliged not only to ensure the proper fulfillment of the Principal’s engagement by the patent attorney, to ensure the safety of the documents and the materials received from the Principal, but also to undertake measures to avoid the conflicts of interests.
An example of the most common cases of the conflict of interests in the field of the defense of intellectual property may be the provision by the Patent Attorney of equivalent services in parallel to two competing persons or companies. Or, for example, representing the interests of the plaintiff and the defendant in the same court case by the specialists of the same law firm will be the conflict of interests. Or, for example, filing objection by the specialist of the law firm to the Chamber for Patent Disputes for cancelling the patent, which patent holder is the Principal of this law firm, and the patent has been obtained with the participation of this company, will be the conflict of interests.
In this regard, in order to minimize the likelihood of the conflict of interests, at the request of the Principal or the person applying for assistance, the Patent Attorney is obliged to notify the reliable information about the fact that he is representing some specific persons in respect of whom, in the opinion of the Principal or the person, who has applied for assistance, the conflict of interests may occur. The Patent Attorney must also satisfy the Principal’s requirement to prevent the representation of the specifically indicated persons during the period of the representation of this Principal (if the Principal has any).
If the conflict of interests arose after the getting the engagement, or the Attorney became aware of it after the acceptance of the engagement, the Patent Attorney is obliged to notify both Principals about this. In this case, the Patent Attorney can either act as a mediator in the dispute occurred, or refuse to provide services for one of the Principals, who applied later.
The Patent Attorney’ duties are regulated by Article 4 of Federal Law of December 30, 2008 No. 316-FZ “On Patent Attorneys.”
As a rule, the Patent Attorney’s assistance and services are provided on the basis of a written agreement executed in the form of a single document or the exchange of letters (including by any means of communication) or in any other manner stipulated by the legislation.
The Attorney shall provide assistance and services in compliance with the requirements of the legislation, the rules of his profession and the patent attorney’s code of ethics, as well as the principles of good faith, honesty and reasonableness.
The Attorney shall not accept the Principal’s engagement or he shall refuse from it, if the engagement is or becomes of a deliberately illegal or a deliberately bad faith nature, the Attorney shall inform the Principal about the reasons for the refusal, and he shall also explain to the Principal the possible negative consequences of the violation of the requirements of the law.
When providing assistance, the Attorney shall strive to ensure the legitimate interests of the Principal directly on the subject of the engagement and other issues arising in this regard. The Attorney shall strive to ensure the Principal having a complete understanding about the assistance provided. In particular, the Attorney shall give a detailed report on his actions in the interests of the Principal at his request. The Attorney shall strive to ensure the legitimate interests of the Principal even after the fulfillment of the engagement. If the Attorney receives correspondence to the address of the former Principal, the Patent Attorney shall send this correspondence to his address.
In order to prevent the conflict of interests between the Attorney and his client (Principal), there are a number of restrictions and prohibitions for the Patent Attorney:
- it is not recommended for him to acquire the rights to the means of individualization to the own name, to the names of the legal entities controlled by him, to file applications for the means of individualization, except for the rights to trademarks, commercial designations and company names used for the individualization of the own activities as a Patent Attorney;
- it is prohibited for him to be engaged in the systematic activities for the purpose of making profit from acquiring the rights to the means of individualization to the own name, to the names of the legal entities controlled by him, including to file applications for the means of individualization for the purpose of alienating subsequently these rights;
- it is prohibited for him to be engaged in the systematic activities for the purpose of making profit (by getting compensation) from disputing the validity of the intellectual property rights or from terminating the rights to the means of individualization on behalf of his name or on behalf of the names of the legal entities controlled by him;
- regardless of the assistance nature, that is, even if such assistance has included a creative contribution, the Patent Attorney is not recommended to indicate himself as an author (co-author) and he is prohibited to become, personally or through the legal entities controlled by him, the owner (co-owner) of a patent for an invention, a utility model or an industrial design in respect of the subject matters to assist with which the Principal has applied to him;
- after finishing the representation and the expiry of the periods set for keeping the secret and the documents, it is prohibited for the Attorney to use the information or the documents received from the Principal, in any activities, which are explicitly detrimental to the interests of the Principal. In particular, the Attorney is prohibited to use such information or documents against the former Principal, if he is representing the interests of other persons.
When concluding an agreement on the Patent Attorney’s services, always pay attention to the presence of a paragraph on the conflict of interests, this will show you good faith and a high level of the skills of the selected company. Each Patent Attorney, who holds dear his reputation, includes in the text of an engagement agreement the paragraph relating to the conflict of interests, since this is dictated by the ethical behavior, which the Patent Attorney must strive to in his professional and public activities.
Thus, the task of both the patent offices and the judiciary is to find a compromise when both the rights of the inventor and the rights of third parties would be protected properly. One of the tools to find the “golden mean” is the doctrine of equivalents. The doctrine of equivalents allows you to maintain a balance between providing the patent holder with the opportunity to fully enjoy all the privileges granted to him by the patent, and ensuring that the claims give a clear idea of the scope of the claims of the patent.
According to paragraph 3 of Article 1358 of the Civil Code of the Russian Federation, an invention is recognized as used in a product or method if the product contains, and each inventive feature is used in the method, given in the independent clause of the claims contained in the patent, or a sign equivalent to it and which has become known as such in the field of invention before the priority date.
Let us discuss the concept of “equivalent feature” and consider the main provisions of the “Theory of equivalents” in establishing the fact of patent infringement.
Based on the basic provisions of the methodology for assessing the conformity of a technical solution with the “inventive step” patentability condition enshrined in the relevant administrative regulation, it can be concluded that the replacement of a feature should be considered equivalent if: the replacement feature is known from the prior art on the priority date of the patent protected invention; the replacement attribute is known in connection with the implementation of the same function as the function of the replaced attribute (so that the replacement attribute is known in the same quality as the replaced one); the prior art also shows the effect of the replacement trait on the result provided by it.
Conversely, a replacement of a feature cannot be considered equivalent due to the creation of a new patentable solution in two situations: when the replacement feature is new, unknown from the prior art; when this attribute is known, and is known in the same quality as the replaced attribute, but ensures the achievement of a different result, and the effect of the replacement attribute on this new result is not known from the prior art. ”
The meaning of the concept of “equivalent feature” is interpreted by the Instruction on State Scientific and Technical Expertise of Inventions, published by the USSR State Committee for Inventions and Discoveries:
Equivalent signs are called signs that coincide in the function performed and the result achieved.When determining the equivalence of features, their interchangeability is taken into account, i.e. features that perform the same function may differ in the form of execution (in design, technology or material).The equivalence of the characteristics is also determined by the fact that the use of the analogue attribute in the claimed object does not give the latter additional useful qualities or significant advantages over the analogue.The theory of equivalents is a legal doctrine that was developed in the United States as far back as 1850–1860 in order to prevent an unscrupulous copycat from changing small or insignificant details of a patented invention while maintaining an essential identity, to avoid liability for patent infringement.In the USA, decisions are considered equivalent if they are characterized by the identity of the function performed, the ways to achieve the result, and the result itself. The equivalence triad is as follows: function – path – result.Thus, the classical doctrine of equivalents states: two means are equivalent if, despite different methods of implementation, they perform the same function aimed at obtaining the same result. Both tools have the same function if they are based on the same fundamental idea, in other words, they use the same principle in the same way. The result provided by any of these means should be of the same type and quality. A tool is not equivalent if it is used in a different way, even if a result of the same type is created, but has a different quality or degree of effectiveness. This classic doctrine is similar to the American threefold doctrine: the similarity of function, method (path) and result. ”However, most systems have some degree of uncertainty, which allows them to develop. In addition, universal law states that there is a plurality of development paths, equivalent or alternative, but plurality.Therefore, since the concept of “equivalent feature” is quite subjective, there will always be a variability in the interpretation of each case of violation of exclusive rights.
According to Article 1398 of the Civil Code of the Russian Federation, a patent for an invention, utility model or industrial design may be declared invalid in full or in part in the following cases:
1) the invention, utility model or industrial design does not comply with the conditions of patentability established by this Code, namely for inventions: industrial applicability, novelty and inventive step, for utility models: industrial applicability and novelty, for industrial designs: novelty and originality;
2) the non-compliance of the documents of the application for an invention or utility model presented as of the date of its filing with the requirement for disclosing the essence of the invention or utility model fully enough for making the invention or utility model by an expert in a given field of technology;
3) the invention or utility model claim contained in the decision on issuance of the patent contains features which are not disclosed as of the date of filing the application in the documents presented as of this date (Item 2 of Article 1378) or the materials attached to the decision on issuance of a patent for an industrial design contain the articles' images comprising the essential features of the industrial design that lack the images presented as of the date of filing the application or the articles' images from which the essential features of the industrial design available on the images presented as of the date of filing the application are deleted (Item 3 of Article 1378);
4) the patent has been issued when there were several applications for identical inventions, utility models or industrial designs having one and the same priority date, in breach of the conditions envisaged by Article 1383 of this Code;
5) the patent has been issued with an indication therein as the author or patent holder of a person not being such in accordance with this Code or without an indication in the patent as the author or patent holder of the person being such in accordance with this Code.
A patent for an invention, utility model or industrial design during its term of validity may be challenged by filing an objection with the federal executive authority for intellectual property by any person who becomes aware of the violations provided for in paragraphs 1) to 4).
A patent for an invention, utility model or industrial design during its term of validity may be challenged in court by any person who becomes aware of the violations provided for in paragraph 5).
A patent for an invention, utility model or industrial design may be challenged by an interested person even after its expiration.
If you become aware about the fact of open application of a technical solution for a contested patent, then, in the presence of supporting documents, they can be used to annul a patent on the ground of non-compliance with the patentability condition of “novelty”, i.e. upon open application.
Below we will consider in detail what evidence and how should they be presented to confirm the open application of the technical solution. It is very important to understand that the date of inclusion of a source of information on a technical solution in the prior art that became known as a result of its application is a documented date from which information about the technical solution became publicly available. This is not about the date of publication or the date of signing the document, as is the case with print publications, descriptions of patents, etc., but about the date indicated in the document as the date from which information about the technical solution became publicly available.
Information about the technical solution are signs specific to this particular technical solution. When establishing the fact of an earlier open application of a technical solution, it is necessary to prove, in addition to the fact itself, the presence in this technical solution of the corresponding features and characteristics reflected in the formula of the granted patent.
A number of features and characteristics can be established analytically, but to establish some features, you may need the appropriate equipment, which only special research laboratories are equipped with.
If at the date of the appearance of the technical solution on the market or another date it was technically impossible to establish the presence of any of the features specific to the technical solution, it can be concluded that it is impossible to ascertain the presence of this feature in the technical solution on a specific date.
If establishment of any feature in the technical solution is associated with excessive burden, which can be understood as the need to design and create special research equipment for the analysis of a specific technical solution, it can also be concluded that it is impossible to ascertain the presence of this feature in the technical solution on a specific date.
For example, if the source of information regarding a technical solution indicates only design features, and in addition to structural elements, the patent indicates the qualitative and quantitative composition of the material from which the technical solution is made, then refuse to grant a patent due to the alleged lack of novelty and with reference only to this source is impossible. Moreover, the assertion that the quantitative composition can be determined by a specialist without applying creative efforts, for example, experimentally, is not a basis for denying the novelty of a technical solution.
The essential possibility of establishing certain facts and events cannot be used as evidence of a known fact or event. The creative efforts of a specialist have nothing to do with this. To deny the patentability of an invention by novelty at an earlier open application of a technical solution, it is not the specialist’s ability to establish something in the future that is used, but the presentation of real evidence from the past that the previously released technical solution already contained a set of features, on which patent will be received later.
Determining the presence in a particular technical solution of all the signs of an independent claim is a rather laborious task of collecting evidence with the results of physical, chemical and other analyzes, data confirming the legal entry into the market of a technical solution, namely with such characteristics and signs, presenting technical and financial documentation, etc.
The ability of a specialist to determine the qualitative or quantitative composition of the material serves to prove the subsequent conclusion about the general accessibility to these features of a technical solution, but does not deny and even more does not replace the actual need to establish exactly these features.
It must be clearly understood that the proven ability of access to specific features of a technical solution does not automatically indicate general accessibility to the technical solution itself.
The statement that if the technical solution is accompanied by the “confidential” inscription does not require evidence; this also does not mean that, for example, its composition cannot be identified in a chemical laboratory.
Only with the actual establishment of qualitative and quantitative features a subsequent conclusion can be made about the possibility of including a technical solution with these features in the prior art to deny novelty.
However, if it is not possible to prove the general knowledge of the technical solution itself, then it makes no sense to deny the novelty of proving accessibility in the context of the possibility of access to its features and characteristics by any specialist.
Open application held prior to the priority date is, with the exception of expressly provided temporary benefits for applicants or authors, the grounds for refusing to grant a patent or for canceling the validity of a patent already granted.
When establishing the novelty of an invention or utility model, any information that has become publicly available prior to the priority date of the invention is included in the prior art. Any information includes various printed and similar publications about the object, as well as the technical solution itself.
The open application of a technical solution, in which an invention or utility model is embodied, as a basis for denying novelty, is also applied taking into account the benefits of novelty, because is a form of information disclosure. When the open application of a technical solution is carried out thanks to the actions of the authors and applicants themselves or any persons who have received direct information about the technical solution from them, as a rule, there is no difficulty in providing benefits for novelty.
For example, if the authors and / or applicants themselves submitted the technical solution for implementation in the trading network of a particular supermarket by concluding an appropriate agreement with it, a six-month novelty benefit may be provided. Difficulties can arise when the open application of a technical solution is carried out thanks to the actions of persons who have received indirect information about a technical solution from authors or applicants. For example, when after the implementation of the above situation, other persons bought a technical solution (product) in this supermarket and resold it through their distribution network. Is it possible to consider the situation with the resale of a technical solution in free trade as an indirect receipt of information and provide a novelty benefit from the date of resale of the technical solution? It seems that no, because indirect receipt of information from authors and / or applicants by other persons should provide for some formal relationship between all participants in the sale of a technical solution and the possibility of regulation or other influence on restricting the freedom of dissemination of information received on a technical solution.
When reselling the goods in the free trade mode, the goods are out of the seller’s control, and the latter cannot influence the future of the goods, including restriction on the spreading of the information about him. However, only judicial practice will determine what should be understood as the indirect receipt of information about a technical solution when applying for benefits on novelty.
To establish an open application of a technical solution, it is not necessary that it is the person concerned through the application of the invention or utility model that learns about it; it is quite sufficient if one or several disinterested persons saw the invention in use, without being obliged to keep this circumstance secret, or could see it using the circumstances presented to them. The application of a technical solution is considered open if it can become available if desired and without violating the relevant legislation on the protection of know-how or the confidentiality regime.
When contesting existing patents as not meeting the patentability condition of “novelty”, in some cases, in order to obtain evidence of the fame of the features, it is necessary to conduct a technical examination, for example, in cases where you need to establish the material or substance from which the parts of the device are made, or in cases when you need to establish the composition of the substance.
The applicants often have a question of as what kind of the patent law subject matter his technical solution can be defended.
For this purpose, a patent attorney, as a rule, recommends carrying out an international patent and information search. Therefore, he inquires from the applicant a detailed description of his technical solution, primarily the field of the use and the purpose of the subject matter. If the subject matter of patenting is a design, a device, a system – a description of the design elements and their relationship to each other, the drawings, an operation principle in a static state; if the subject matter of patenting is a method (technology) – a sequence of the operational steps, the applied materials and devices; if the subject matter of patenting is a composition of the product/substance – both a quantitative and qualitative composition of the product. And he also inquires from the applicant an achievable positive effect or, in other words, a technical result, which is the specific characteristic of a technical phenomenon or property that is achieved in the claimed technical solution.
For example, if the new method of air purification is claimed, the task may be to create an effective, economical and environmentally friendly technology, and the technical result may be to increase a degree of air purification or to reduce a toxic ingredient content.
If the applicant fails to formulate the positive technical result, and all the advantages of his solution are reduced to the aesthetic perception of the subject matter implemented by the form and appearance (design), then such solution can unambiguously be defended only as an industrial design.
It does not follow from Articles 1350 and 1351 of the Civil Code of the Russian Federation that the device as the subject matter of a utility model differs from the device as the subject matter of an invention.
However, while carrying out an examination of the utility model, it takes into account a requirement for a mandatory design unity, as it distinguishes among the devices of all kinds only the ones, which parts are mechanically (rigidly) connected to each other through the assembly operations.
Thus, only those devices can be defended as a utility model, which consist of several parts connected to each other in a design manner through the rigid mechanical connection.
Let us take a closer look at the difference between the invention, the utility model and the industrial design.
All the relations related to the acquisition and implementation of the rights to the inventions, the utility models and the industrial designs are regulated by Chapter IV of the Civil Code of the Russian Federation. These subject matters of intellectual property have both the similarities and the significant differences, the main ones of them are:
The technical solution in any field that relates to a product (in particular, to a device, a substance, a strain of a microorganism, a plant or animal cell culture) or to a method (a process of carrying out actions over a material subject matter through material means), including to the use of the product or the method for a particular purpose shall be protected as an invention. As to the invention, it is necessary for the subject matter to comply with the patentability criteria: novelty, inventive step, industrial applicability.
As a utility model, the technical solution related only to the device shall be protected. As to the utility model, it is necessary for the subject matter to comply with the patentability criteria: novelty, industrial applicability.
As an industrial design, the implementation of the appearance of the article of an industrial or handicraft manufacture shall be protected. As to the industrial design, it is necessary for the subject matter to comply with the patentability criteria: novelty and originality.
Thus, for example, the article, which is a device included in a single body with the rigid relationships and having the design peculiarities that are different from the known state of the art, can be patented both as a utility model, and as an invention, and as an industrial design, for example, an electric toothbrush or an echo sounder.
Such subject matters such as chemical compounds, food composition formulations, pharmaceutical composition formulations, etc., the systems that are a set of the independent elements (independent devices), which are interrelated with each other; an application according to a new purpose can be patented only as an invention.
The articles and products that differ only in their original appearance, but that, at the same time, lack the design peculiarities, can be defended only as an industrial design.
The validity period of the patent for an invention is 20 years (with the right to extension for 5 years for the inventions relating to a drug, a pesticide, an agrochemical), for a utility model, it is 10 years (without the right to extension), for an industrial design, it is 5 years from the date of filing the application, in which the validity period can be extended frequently for 5 years up to the point it reaches the maximum period of 25 years, subject to the payment of the state fees in time.
Despite the differences, the scope of the legal protection provided by both the patent for an invention, and the patent for a utility model is determined by their claims. Thus, the scope of the legal protection provided by the patent for an industrial design is determined by a combination of the essential features of the industrial design, which have been reflected on the images of the article appearance contained in the patent for an industrial design.
The patents for an invention, a utility model and an industrial design obtained in Russia provide the patent defense only on the territory of Russia. In order to defend the invention, the utility model or the industrial design in other countries, it is necessary to file the applications to each country of interest to the applicant or to use the procedure of international patenting.
Many people, while filing an application for an invention, a utility model or an industrial design to the Federal Institute of Industrial Property, have no idea what they will do next with a patent obtained and the exclusive right to the indicated results of the intellectual activity that is owned by them, in particular, to the use of these inventions, utility models and industrial designs.
The issue on further commercialization, namely, the creation of the manufacture, the further sale of the manufactured products at the market has not even been considered by the patent holder.
And here, the patent holder is faced with the situation that unless he uses his patented solution, he may be deprived of the exclusive rights in a compulsory manner.
Let us find out what the exclusive rights of the patent holder to the results of the intellectual activity are. In fact, the exclusive right is considered as a “monopoly” granted by the state to the patent holder for the use of the invention, the utility model and the industrial design. However, this “monopoly” is not of an absolute nature and it is limited both by the norms of the patent law and by the limits of exercising the civil rights stipulated by the current civil legislation. Thus, the exclusive right is the absolute right. The absolute rights include such subjective civil rights, within the frameworks of which the holder of these rights is opposed by an indefinite circle of the persons, who undertake to refrain from the actions that violate his rights.
The main international act that enshrines the general requirements for the exceptions from the scope of the patent holder’s exclusive rights to the subject matters of the intellectual activity is the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) adopted by the World Trade Organization. According to Article 30 of the TRIPS Agreement, the members may stipulate the limited exceptions from the exclusive rights granted by the patent, provided that such exceptions do not conflict unreasonably with the normal use of the patent and do not infringe unreasonably on the legitimate interests of patent holder, taking into account the third parties legitimate interests. The current Russian patent legislation, based on the principles stipulated within the framework of the TRIPS Agreement, contains a number of the rules that limit the legal monopoly of the patent holder to the result of the intellectual activity. One of these limitations is a compulsory license.
The compulsory license is a permission issued by the public authorities to an interested person to the use of the patented invention, utility model or industrial design. If the patent holder does not use or uses insufficiently his development, as well as if he refuses to sell the license, the compulsory license is a limitation of his exclusive right with regard to the free disposal of this right. Such permission is explained as a measure to “prevent the abuses that may arise as a result of the author’s activity or the lack of it.”
The compulsory licenses can be simple (non-exclusive). This kind of the license shall cover the territory within the borders of the Russian Federation. The state registration of the compulsory license shall be carried out according to a court decision. The author shall come into his rights from the moment of the state registration. The compulsory license is usually issued to the authors, who have violated the patent.
According to Article 1239 of the Civil Code of the Russian Federation, the compulsory license shall be issued by the court decision and under the conditions established by the court. The effect of the compulsory simple (non-exclusive) license may be stopped by the court according to the patent holder’s statement of claim, in the absence of the circumstance that has led to the grant of the compulsory license.
The compulsory license shall be issued after the expiration of 4 years from the date of filing the patent application or 3 years from the date of the issuance of the patent. Such provision is applied in all member countries of the Paris Convention that ratified the Lisbon and Stockholm versions of the Convention.
The issuance of the compulsory license shall be carried out at the request of an interested person after the consideration by Rospatent. The request for the grant of the compulsory license may also be filed independently by the person, who has the license to the patent. The compulsory license is similar to the simple license in terms of the content and scope of the rights.
In the case of granting the compulsory simple (non-exclusive) license, the author of the patent for the invention or the utility model, the right to the use of which is granted under the compulsory license, shall be entitled to obtain the simple (non-exclusive) license to the use of the dependent invention, due to which the compulsory simple (non-exclusive) license has been granted.
The disputes regarding the issuance of the license and the payment of damages, as well as regarding the amount of the damages, shall be resolved through the legal proceedings.
Having reviewed the provisions of Article 1362 of the Civil Code of the Russian Federation, it is possible to conclude that there are a number of the criteria that are necessary for the possibility of obtaining the compulsory license for the invention, the industrial design or the utility model:
- the subject matter of the patent defense should not be used by the patent holder or used insufficiently;
- the use or the insufficient use must occur within a certain time period: for the invention or the industrial design it is four years from the date of the issuance of the patent; for the utility model it is three years;
- the actions of the patent holder should lead to the shortage of the relevant products, works or services at the market;
- the patent holder refuses from concluding the license agreement.
Thus, it is necessary to have an entire set of these conditions for the potential patent user could file a statement of claim to the court on the grant of the compulsory license to him for the subject matter of the patent defense.
It should be noted that the compulsory license for selection achievements has distinctive peculiarities. It follows from Article 1423 of the Civil Code of the Russian Federation, which such peculiarities shall include:
- the absence of the requirement on the non-use by the patent holder of the subject matter of the patent protection, only the expiration of the three-year period from the date of obtaining the patent is necessary;
- the absence of the requirement on the shortage of the relevant products, works or services at the market.
In this case, the compulsory license cannot be considered as a liability measure for the civil law violation. The absence of the requirement on the mandatory use of the subject matter of the patent defense and on its insufficiency leads to a conclusion that the set of the elements of the civil law violation has not been formed, and therefore, it is needless to say about the liability measures.
The differences of such kind in an approach to the issues for obtaining the compulsory license for the invention, the industrial design, the utility model and obtaining the compulsory license for selection achievements can be justified by the fact that, from the point of view of the Russian legislation regarding the selection achievements, it is necessary to simplify the process of overcoming the patent holder’s “monopoly,” as they are the subject matters that stipulate the satisfaction of the most important public interests.
The essence of the patent law is based on the idea that the patent holder has the legal monopoly for the subject matter of the patent rights. However, the problem arises that this legal monopoly may be a basis for the abuse by the patent holder of his rights. In this regard, Article 1362 of the Civil Code of the Russian Federation stipulates all the elements of the civil law violation as the basis for granting the compulsory license, so the compulsory license is nothing more than the liability for the patent holder’s failure to fulfill his duty.
The patent legislation of states has a strictly territorial nature. Foreign patents for inventions or utility models are obtained at the patent Office of the country, where the patent will be valid. In the case, if the technical solution is implemented and commercialized (i.e. it is manufactured, sold), for example, in Germany, according to the patent that is obtained and valid, for example, in the Russian Federation, then these actions will not violate the exclusive rights of the patent holder.
According to Paragraph 1 of Article 1395 of the Civil Code of the Russian Federation “Patenting inventions or utility models in foreign states and in international organizations,” an application for a patent for the invention or the utility model that is created in the Russian Federation, may be filed in a foreign state or to an international organization after 6 months from the date of filing the corresponding application to the Federal Executive Authority on Intellectual Property, if the applicant is not notified within the indicated period that the application contains the information constituting a state secret. The application for the invention or the utility model may be filed earlier than the indicated period, but after carrying out, at the request of the applicant, a check for the availability in the application of the information constituting the state secret. A procedure for carrying out such check is established by the Government of the Russian Federation.
Patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention the invention or the utility model created in the Russian Federation is allowed without prior filing the correspondent application to the Federal Executive Authority on Intellectual Property, if the application under the Patent Cooperation Treaty (the international application), is filed to the Federal Executive Authority on Intellectual Property as a receiving Office and the Russian Federation is indicated in it as the state, in which the applicant intends to obtain the patent, but the Eurasian application is filed through the Federal Executive Authority on Intellectual Property.
After completing the said check, the applicant may file the corresponding convention application to other national Offices directly or by means of the international/regional procedures. This opportunity is available within 12 months from the date of filing the first application to Rospatent and it allows claiming priority according to the date of filing this first application. Or, within 30/31 months, the applicant may transfer the corresponding international application originally filed to the FIPS with the priority under the international application, to the regional/national phases to the selected states. Each particular country has established different deadlines for filing the applications under the PCT procedure: for example, to Russia, the European Patent Office, Sweden and Great Britain – within 31 months from the priority date, but, for example, to the United States of America, China, Germany, Switzerland and Spain – within 30 months from the date of filing the international application.
According to Article 7.28. of the Code of the Russian Federation on Administrative Offences, the violation of the established procedure for patenting the subject matters of industrial property in the foreign countries entails the imposition of an administrative fine on citizens in the amount of from one thousand to two thousand roubles; on legal entities – from fifty thousand to eighty thousand roubles.
Thus, in order to avoid the imposition of the administrative fine and to comply with the requirements of the legislation, only upon the expiration of 6 months, unless an acceleration has been stipulated, from the date of filing the convention application in the Russian Federation or the international application under the PCT procedure, the applicant may transfer this application to the regional/national phases to the selected states, having previously translated the application into English or other official languages of the selected countries.
For the Russian applicant to avoid the stage of filing the application in the Russian Federation, and not to wait during 6 months, while the check for the availability in the application of the information constituting the state secret is being carried out, the fastest way to obtain the patent in another state or region is filing the application simultaneously with the coapplicant/coauthor, who is the citizen or the resident of the state, in which the patent is planned to be obtained. However, in this case, it is important to provide for all the necessary nuances, to stipulate and enshrine with an internal agreement concluded with the coapplicant/coauthor the volume (in percentage) of the exclusive/copyright rights in accordance with the contribution made to the development of the patented technical solution, or, for example, to stipulate, after receiving a positive decision on the grant of the patent, the subsequent procedure for alienating the exclusive right to one of the applicants. Otherwise, when commercializing the patented technical solution, each of the patent holders will have the equal exclusive rights (50% to 50% – in the case of two coapplicants).
In this case, obtaining the patent abroad can be carried out in two ways:
- Obtaining the patent for the invention by filing the regional/national applications directly to the domestic state authority of the state of interest that is operating in the field of the defense of the intellectual property rights;
- Obtaining the patent by filing the international PCT application and filing subsequently the regional/national application to the state (region) that has entered into the Patent Cooperation Treaty (PCT);
If it is necessary for the applicant to obtain the legal protection for the invention in one of the foreign states, he can obtain both the national patent in the country of interest to him, and the regional patent, such as the EAPO (the Eurasian Patent Office) or the EPO (the European Patent Office) or the less popular – the African Intellectual Property Organization (the AIPO); the African Regional Intellectual Property Organization (the ARIPO); the Gulf Cooperation Council Patent Office (the GCC Patent Office).
For example, it is very convenient to get a single patent for one invention that is valid on the territory of the EAPO member states. The EAPO grants the patent the protection on the territory of eight independent states that were previously a part of the CIS (Azerbaijan, Armenia, Belarus, Kazakhstan, Kirghizia, Russia, Tajikistan and Turkmenistan).
The EPO is on the territory of 38 European countries: such as Germany, Switzerland, Sweden, Great Britain, Italy, Spain, Austria, Greece, Denmark, Finland, France and many others. It is possible to file the application for the patent to the EPO in one of the European languages (English, French, German).
Obtaining the European patent does not limit its holder in any way in comparison with the individual national patents obtained on the territory of each state stated in the list. But one should not think that the patent will be valid automatically on the territory of all European countries. It is intended to grant the patent protection only in some particular countries, as to the others – it will be necessary to go through the national validation procedure within three months after the EPO publishes its decision on granting the patent. This procedure involves translating the documents attached to the application into the languages of the selected countries and paying a state fee for the procedure, the amount of which is different depending on the selected state.
A patent classification is primarily a tool for patent offices and other consumers carrying out various searches for patent documents. The consumers include the patent attorneys, the patent examiners, the employees of research institutes, the employees of enterprises, in particular of patent departments or design offices, the individuals or the representatives of legal entities that plan to defend their technical solution with the help of a patent or to check whether they violate somebody's exclusive rights, etc.
Currently, the search for the patent documentation is usually carried out using the International Patent Classification (hereinafter referred to as the IPC), as it is used by almost all countries in all modern automated search systems and databases as a search attribute.
The IPC is a hierarchical system of the patent classification, which is uniform internationally and it is a means for the classification of the patent documents, namely the patents and the copyright certificates for inventions, utility models, including for the published applications. The IPC was established in accordance with the Strasbourg Agreement in 1971 and it is updated on a regular basis by the Committee of Experts consisting of the representatives of the signatory states (the countries of the Agreement) and the observers from other organizations, such as the European Patent Organization, while the administrative functions of the Agreement are performed by the World Intellectual Property Organization (WIPO).
Each patent document of all countries of the Agreement, as well as of the majority of others, has at least one classification index of the IPC indicating the field of technology to which the invention refers. The multiple indexes can also be determined to ensure more detailed information on the content of the document.
The IPC appeared on the basis of the International (European) Patent Classification, which was established in accordance with the provisions of the European Convention on the International Classification of Patents for Invention in 1954 and it was published on September 1, 1968. In 1967, the United International Bureaux for the Protection of Intellectual Property (BIRPI), the predecessor of the WIPO, and the Council of Europe began the negotiations aimed at granting the status of a truly “international” one to this classification. Thus, after the signing the Strasbourg Agreement on March 24, 1971, this classification was considered to be the first edition of the IPC. The predecessor of the current IPC consisted of eight sections, 103 classes and 594 subclasses. Subsequently, the eighth edition of the IPC consisted of eight sections, 129 classes, 639 subclasses, 7,314 basic groups and 61,397 subgroups.
The IPC is reviewed periodically with the aim of improving the system taking into account the technological developments. Seven editions of the classifier were issued before December 31, 2005. This happened practically every five years. However, it was a paper based information tool. For the effective application of the IPC in an electronic environment, a reform was carried out from 1999 to 2005, which resulted in that the eighth edition of the IPC came into force on January 1, 2006.
As a result of the reform, the IPC was divided into a basic level (with a three-year revision cycle) and an extended level (with a continuous revision). This made it possible to meet the needs of the different categories of users. The changes related to the reclassification of the patent documents under the changes of the IPC and the use of the advantages of an electronic layer were made.
The IPC has been revised annually since 2010 and the new edition comes into force each year on January 1.
The edition of the International Patent Classification of 2015 – the IPC-2015.01 – comes into force on January 1, 2015 and it contained 71,738 headings.
The IPC covers all fields of the knowledge, which subject matters may be subject to the defense by the protection documents. There are five basic levels of hierarchy to specify the field of technology[: 1 – Section; 2 – Class; 3 – Subclass; 4 – Group; 5 – Subgroup.
The further clarification occurs through the subordination of some subgroups to the others.
Each subject matter of the classification consists of an index and a descriptive part. The index of the subject matter, in addition to the sections, consists of the corresponding index of the previous level and a letter or a number added to it. The descriptive part, as a rule, consists of a title of the subject matter and a short list of the topics relating to it or the headings. Thus, the classification index is formed, under which the specific technical solution is “hidden.”
The IPC is divided into eight sections. The sections represent the highest level of the IPC hierarchy. Each section is indicated by a capital letter of the Latin alphabet from A to H. The sections have the following names: А: The satisfaction of the survival needsof a person; В: Various technological processes; transportation; С: Chemistry; metallurgy; D: Textiles; paper; E: Construction and mining; F: Mechanical engineering; lighting; heating; engines and pumps; weapon and ammunition; blasting workings; G: Physics; H: Electricity.
Each section is divided into classes. The classes are the second level of the IPC hierarchy. The class index consists of the section index and the two-digit number. The class title reflects the content of the class. For example, A01 – Agriculture; forestry; animal husbandry; hunting; trapping; fishing and fish farming.
Each class contains one or more subclasses. The subclasses represent the third level of the IPC hierarchy. The subclass index consists of the class index and the capital letter of the Latin alphabet. The subclass title determines the content of the subclass as accurately as possible. For example, A01B – Tilling in agriculture and forestry; units, parts and accessories of agricultural machinery and implements in general.
Each subclass is divided into groups. In turn, the groups are divided into basic groups (i.e., the fourth level of the IPC hierarchy) and subgroups (a lower level of the hierarchy compared to the basic groups). The IPC group index consists of the subclass index followed by two numbers separated by a slash.
The basic group index consists of the subclass index followed by the one-, two- or three-digit number, the slash and two zeros. The text of the basic group determines precisely the field of technology that is considered appropriate for carrying out the search. For example, A01B 1/00 – Manual implements.
The subgroups form the headings subordinated to the basic group. The subgroup index consists of the subclass index followed by the number of the basic group, which this subgroup is subordinated to, the slash and at least two digits other than 00. The subgroup text is always understood within the limits of the scope of its basic group and it determines precisely the topic field that is considered to be the most appropriate one for carrying out the search. One or more dots are placed before the subgroup text, which determine its subordination degree, that is, they indicate to the fact that the subgroup is the heading subordinated to the nearest higher-level heading printed with a smaller shift, that is, having one dot less.
For example, A01B 1/02 .spades; shovels
A01B 1/04 ..with teeth
Currently, having the scope of the patent publications grown up to 3 million publications per year, it is impossible to imagine carrying out the search in the patent databases without such classification criterion, which puts each technical solution on its “shelf.”
One can get acquainted with the content of the IPC and its Guidance on the website of Rospatent.
However, some countries, in particular, the USA and Japan, have been still classifying their patent documentation in accordance with the National Patent Classification (NPC), and the IPC is used as an additional one.
The USPS (United States Patent Classification) is the National Patent Classification (NPC) of the USA.
The NPC of the USA was established in 1836. It is based on a functional and branch principle. The methods and devices performing the same functions that manufacture the same products or achieve the same effect are combined. The main division in the classification is the class. In turn, the classes are subdivided into subclasses. The classification index is denoted by the Arabic digits and it consists of two numbers separated by a dash.
The NPC of the USA is used for the classification of the inventions, the industrial designs and the plants of the USA, and it is used for the search of the patent documents of the USA in the following search systems: PatFT: Patents и AppFT: Applications; Global Patent Index;PatSearch.
FI (FI Section / Broad-Facet Selection) and F-term (F-term Group of Theme Selection) are the National Patent Classifications (NPCs) of Japan (Patent Map Guidance).
Japan has two National Patent Classifications, FI and F-term.
FI is based on the IPC and it includes its extensions in the fields that are the most popular ones in Japan; it consists of the IPC indexes, which are supplemented by digital characters.
F-term being an original system of the classification of the inventions of Japan was introduced in 1948. F-term is a “facet” (“multi-facet”) classification, with the help of which the subject matter of the invention is classified from the different points of view simultaneously (a material, a shape, a preparation, an application, etc.). The main steps of the division are the class, the subclass and the group. The classes are denoted by the Arabic digits, the subclasses are denoted by the capital letters of the Latin alphabet, the groups are denoted by the Arabic digits using a decimal principle.
The classifications are used to index the inventions and the utility models of Japan and they are applied for the search of the patent documents of Japan in the following search systems: The Industrial Property Digital Library (IPDL); Global Patent Index; PatSearch.
Access to the above search systems can be obtained on the websites of the above patent offices or in the All-Russian Patent and Technical Library.
In the first lines of this article, I would like to note that the concept of an “evergreen patent” refers mainly to the field of the pharmaceutical industry.
The term “evergreen patent” implies a patenting strategy, under which the maximum extension of the validity of the exclusive rights to some subject matter is ensured, in particular, to a product, a technology through updating systematically the legal protection by obtaining new patents. Such patents may protect new modifications, properties, application methods and other characteristics of the products patented previously. The main goal of such strategy is to increase the company's profits by eliminating competition and extending the period of the payments of license fees.
This strategy is a standard practice for large pharmaceutical companies around the world, especially for the Western ones. Using them, the pharmaceutical companies hold the market monopolies for vital drugs and eliminate competition in various markets.
The availability of such patents allows the patent holder companies not to develop new technologies and not to release new drugs to the markets before the expiration of the old patents, thereby holding back artificially the development of new drugs and getting the maximum profits from the patients being in need of them. According to the statistics, there are more than 75% of such secondary “evergreen patents” in pharmacology.
Let us find out a reason for that. When the validity of the patent expires, the price for the pharmaceutical drug in pharmacies falls rapidly, and therefore the value of the drug for the company is reduced significantly. Therefore, the pharmaceutical company wonders naturally what it should do to extend maximally the validity period of the patent. Thus, the patent holder has a desire, in addition to the very formula of a chemical substance or a pharmaceutical composition, to patent a method of the manufacture, a method of the application, an application according to new treatment groups, an application in combination with other drugs, an application according to a new purpose, for example for the treatment of new diseases, etc. In fact, this pharmaceutical company re-patents its drug and then sets again a high price for it, while developing the market by launching aggressive advertising or distributing the drug through medical institutions and doctors.
However, the patent, which validity has expired, begins to be of great interest to smaller manufacturers having the technical ability to copy the product by creating the so-called “generics.”
For your reference, a “generic” is a drug containing a chemical, an active pharmaceutical ingredient being identical to the one patented by the company – the original drug developer. The “generics” are manufactured and sold after the expiration of the validity period of the patent and, accordingly, the monopoly of the patent holder company, by other manufacturers under an international nonproprietary name or under a commercial name, which is different from the brand name of the drug developer. For example, the patented drug Mezym has a “generic” – Pancreatin; Imodium – Loperamide; No-Spa – Drotaverine, respectively, while the price for the original drug and the “generic” may differ by ten folds.
In the Russian Federation, the key issue is the quality of the “generics” manufactured, since, unlike in the European countries, where the manufacturers, if necessary, carry out tests for bioequivalence in vivo, the manufacturers of the Russian Federation confine themselves only to the pharmacopoeial methods in vitro.
According to the law, in order to release the “generic” to the Russian market, it is enough for the drug manufacturer to carry out a study of bioequivalence in vitro, the very significant deviations from the standard, i.e. the original brand, being allowed: from minus 20% to plus 25%.
The quality of the “generics” is far from being perfect, but they have a low cost due to the lack of the costs for the development, the clinical trials or the license fees, as well as the already available results of the clinical trials and the already accumulated experience of the practical application of the drug in the form of the original drug being copied by the “generic.”
It would seem that obtaining a new “evergreen patent” will not save the manufacturer of the original drug. But it is not so; in practice, the market is simply redistributed, since the need for a better product is always preserved, and the investments of the patent holder are not in vain. Proceeding from the state interests, there is a centralized drug procurement, what, as a rule, does not lead to a fall in the price, but only to a redistribution of the money flows. In the majority of cases, obtaining such patents preserves a balance between the main developers and the manufacturers of the analogues and it does not pose a threat to the development of the pharmaceutical market as a whole.
However, the long-term patent defense of the drugs nevertheless violates the interests of the companies – the manufacturers of the analogues of these drugs. Therefore, filing objections with Rospatent, which are aimed at cancelling the patents protecting the most popular and expensive drugs is a very common practice.
It should be noted that the process of the development leads in any case to the fact that some day a breakthrough innovative idea will be finalized and improved by someone. Therefore, it is not possible to prohibit obtaining the patents, for example, for various polymorphic (crystalline) forms of the known active substance constituting a basis of the drug; pharmaceutical compositions based on the active substance in order to increase stability, solubility, bioavailability, etc.; new dosage forms based on the active substance; the most effective dosages and the administration modes of the pharmaceutical compositions; an application of the known compounds or the pharmaceutical compositions according to a new purpose.
Obtaining the “evergreen patents” is also associated with the high costs for patent holders for carrying out the long-term clinical studies and providing an evidence basis, and as to the patent protection ensured by such patents, it covers a rather narrow field of technology, i.e. it has a small scope of claiming, without preventing directly the use of the known active substance by another method or for another purpose. Thus, the pharmaceutical companies are forced to obtain the long-term defense for their drugs to recoup their investments.
Currently, the concept of the “evergreen patent” has no legal force, so the states can not refuse legally granting such patents. In particular, there are not any restrictions to grant them so far in the Russian Federation, the main thing is the compliance of the claimed solution (product/method) to the patentability criteria established by the legislation: a “novelty” an “inventive step” and an “industrial applicability.” However, for example, Europe, Canada, China and India have resorted to the restrictions to patenting the methods of treatments, in order to control the possibility of granting the unreasonably long-term monopolies for the vital drugs to the pharmaceutical companies. In the USA, the laws aimed at preventing the aggressive judicial activity of “patent trolls” have been created in the majority of the States, which also can be applied to the unfair pharmaceutical companies.
According to Article 1363 of the Civil Code of the Russian Federation, “The validity periods of the exclusive rights to an invention, a utility model, an industrial design,” the exclusive right to an invention, a utility model, an industrial design and a patent certifying this right shall be valid subject to the compliance with the requirements established by the Code from the date of filing an application for the grant of the patent with the Federal Executive Authority on Intellectual Property (FIPS) or, in the case of dividing the application (Paragraph 4 of Article 1381), from the date of filing the initial application: twenty years – for inventions; ten years – for utility models; five years – for industrial designs. The defense of the exclusive right certified by the patent may be exercised only after the state registration of the invention, the utility model or the industrial design and the grant of the patent (Article 1393).
Due to the fact that a pharmaceutical product can be defended with regard to the subject matters of the patent law listed in Paragraph 1 of Article 1350 of the Civil Code of the Russian Federation only by the patent for an invention, the standard validity period of the exclusive rights to the pharmaceutical product is twenty years from the date of filing the application for the patent.
However, according to Paragraph 2 of Article 1363 of the Civil Code of the Russian Federation, if more than five years have passed from the date of filing the application for the grant of the patent for the invention related to such product as a drug, a pesticide or an agrochemical, the usage of which requires obtaining a permission due to the order stipulated by the law, before the date of obtaining the first permission for the usage, then the validity period of the exclusive right to the corresponding invention and the patent that certifies this right shall be extended at the patent holder’s request filed with the FIPS. The above period shall be extended for the period that have passed from the date of filing the application for the grant of the patent for the invention before the date of obtaining the first permission for the usage of the product minus five years, but not more than for five years.
The application for the extension of the period shall be filed by the patent holder within the validity period of the patent before the expiration of six months from the date of obtaining the first permission for the usage of the product or from the date of the grant of the patent, whichever of these periods expires later.
Some additional materials may be requested from the patent holder, if the application cannot be considered without them. The additional materials must be submitted within three months from the date of sending such a request. If the patent holder fails to submit the requested materials within this period, or if he fails to submit the request to extend the period, the application shall not be satisfied. The period stipulated for submitting the additional materials may be extended by the FIPS for no longer than ten months. Upon the extension of the validity period of the exclusive right based on unnumbered paragraph one of this Paragraph, an additional patent shall be granted, which has the claims containing a combination of the features of the patented invention, which characterizes the product, for the usage of which the permission is obtained.
Thus, the validity period of the patent for the pharmaceutical product can be extended from 20 years to 25 years.
The issues of the extension of the validity period of the patent for the invention are also regulated by the relevant Administrative Procedure, according to which the extension of the patent is possible only with relation to a new compound or a group of compounds having a pharmacological activity, or with relation to a pharmaceutical composition.
However, the conflict of interests in the pharmaceutical market had led to the situation, as a result of which the patent holders started to look for weak points in the patent legislation. The disputes on the interpretation of the wording: “the invention relating to a drug” arose. The applicants started to interpret that formulation widely. For example, a method of treatment based on the usage of the pharmaceutical product became equated to the invention relating to the drug.
In addition, the FIPS started to receive the applications for the extension of the patent not only for the methods of treatment that used a new drug or the new compositions of the known drugs, but also for the devices for administering both the new and the known drug, as well as for other subject matters of the invention, in which the drug was indicated as one of the features included in the claims.
Therefore, in order to solve the issue of extending the validity period of such patents, it is necessary to determine clearly, whether they relate to the drug.
We shall further give some examples and help to understand in which case it is possible to extend the validity period of the patent for the pharmaceutical product.
After a number of the court decisions regarding the disputes arising, it was determined clearly that Paragraph 2 of Article 1363 of the Civil Code of the Russian Federation did not allow the extension of the validity period of the patent for any invention having any relation to the drug, the pesticide or the agrochemical; and it followed clearly from Paragraphs 10.5 and 10.6 of the Procedure that the invention related to the drug, the pesticide or the agrochemical, if the drug, the pesticide or the agrochemical, or their active ingredient as such was protected as the invention.
Thus, currently, the patent cannot be extended neither for the methods of treatment nor for the devices, in which the claims contain the features characterizing the drug.
However, currently, such inventions that contain the independent claims regarding the usage continue to create a particular difficulty in considering the application for the extension of the validity period of the patent. The simplest case is the invention, in which the claimed group includes the independent claims regarding a new substance, the usage of this new substance according to the purpose that is determined by its biological activity, and a pharmaceutical composition. In this case, there is no doubt about the possibility of extending the validity period of the patent regarding the independent claims both for the new substance itself and the pharmaceutical composition, and for the usage of this new substance according to its claimed purpose. In this case, the subject matter of the usage can be considered as a clarification of the characteristics of the claimed new substance.
But what is to do, if the claims are characterized, for example, in the following way: “The usage of the pharmaceutical composition to obtain a drug for administering in a certain way.”
As in accordance with Paragraph 1 of Article 1350 of the Civil Code of the Russian Federation, the technical solution relating to a product or a method, including to the usage of the product or the method according to a certain purpose is protected as an invention, then in order to solve the issue of the extension of the validity period of the patent for an invention characterized as the usage, it is necessary to determine what subject matter it essentially relates to. When analyzing the above claims, it can be concluded that the essential features of the invention characterize the method of treatment with this substance, but they do not relate to the substance as such. In this regard, the patent cannot be extended.
Thus, if the independent claim is formulated as the usage of the pharmaceutical composition as, for example, an analgesic, then the independent claim can be related to the product – the analgesic. In addition, if the indicated purpose of the pharmaceutical composition is new and it is confirmed by the exercised clinical trials followed by obtaining a permission of the Authorized Body for this new and previously unknown purpose, then the validity period for such patent can be extended.
If the independent claim for the usage of the pharmaceutical composition contains the essential features that characterize the features of the method, for example, the method of the preparation, the administration of the claimed composition, the duration of its administration, the dose, the concentration of the active substance after a certain time of its administration, etc., then the claimed subject matter of the invention should be related to the method, and, consequently, the validity period for such patent cannot be extended.
In addition, the subject matters characterizing the sets cause certain difficulties at the consideration. For example, “A set for the prevention or treatment of the diseases caused by a certain disease, which includes Composition A and Composition B, for administering in a certain way.” The essentially independent claim contains two active ingredients – Component A and Component B, the administration of which can be performed in a certain way, i.e., essentially, a combination of two independent substances is represented. The Registration Certificate indicates that the characteristic of the drug as an active substance contains Component A and Component B. Taking into account the fact that the independent claim under consideration does not relate to one compound or one composition, but it is a combination of two active ingredients, which is claimed as a set, the comparison of the characteristics of the formulation of the drug characterized in the Registration Certificate with the set under consideration, cannot be carried out, and, therefore, it cannot be concluded on the possibility of the extension of the patent.
In the case of the invention for the set, in which the drug and the instruction for its use are indicated in the independent claim, the general purpose of the invention subject matter under consideration does not relate to the drug characterized as a compound or a drug composition, such patent cannot be extended.
Summing up, based on the different situations, it is possible to conclude that while patenting an invention for a pharmaceutical product, it is necessary to choose properly a subject matter of patenting and to identify a generic concept, as well as the essential features of the independent claim, following strictly the Administrative Procedure, which regulates the issues of extending the validity period of a patent, according to which, when deciding on a possibility of extending the validity period of the patent and granting a new patent, the identity of the drug or the drug composition indicated in the independent claim to the substance or composition, for which the Registration Certificate is obtained, must be taken into account. And then, after the decision of the FIPS on the possibility of extending the patent, the applicant will be granted the new patent with the claims containing the combination of the features of the patented invention, the permission for the use of which is obtained from the Authorized Body. The new patent will be granted only for the substance that has undergone the clinical trials and which is indicated in the permission of the Authorized Body.
A mobile application is a set of technical solutions, and therefore it contains a lot of potential subject matters of intellectual property.
The application has not only a program code, it includes particular functionality, a unique design solution, an interface, a music accompaniment, etc. It is no matter what operating system the mobile application has been developed for, according to Part 1 of Article 1259 of the Civil Code of the Russian Federation, it is a subject matter of intellectual property. Thus, any mobile application is equated to a literary work and it is subject to the provisions on the copyright. In order to register one’s copyright, it is not necessary to register the application, it occurs immediately after the publication of the development.
However, the developers of the mobile applications, as a rule, are afraid that their intellectual labour will be used by their competitors and they will fail to prove their authorship.
In this case, the developer is entitled to file an application with Rospatent for obtaining a certificate for the registration of a program for an electronic computing machine in the form of a program code or a trademark in the form of an image/icon. In this case, it should be remembered that when transferring the rights to this application to another person, it will be necessary to register such transition with Rospatent.
But in fact, one should not worry; the copyrights to the application arise automatically from the moment of the publication.
It is possible to obtain the exclusive right by registering a patent. However, you will manage to patent only a method or the methods of your software product as an invention, and an interface design can be defended as an industrial design. At the same time, the application itself (functionality) refers to the invention, and its design – to the industrial design.
In the case with the mobile applications as the invention, as a rule, not the product itself is defended, but a general principle of the service functioning that reflects some novelty of an approach to solve a particular problem.
When the mobile application is defended by the invention, the requirement of complying with the patentability criteria “novelty,” “inventive step” and “industrial applicability” is applied to it. If at least one criterion is not complied, the applicant will fail to obtain a patent for the application.
The validity period of the patent for the invention is established by Article 1363 of the Civil Code of the Russian Federation and is 20 years. It is not possible to renew the patent for the mobile application, because the legislator allows renewing only the patents for drugs or particular chemicals.
The interface design is an artistic and design solution that carries unique functionality and determines an appearance of the application. It can only be patented as an industrial design. Unlike the invention, the patent legislation of the Russian Federation establishes other criteria of patentability regarding it: the design must possess the world novelty and originality, i.e. the more differences from the nearest analog, the better. The patent validity is limited to 5 years, but the applicant is entitled to renew it repeatedly, but not more than till the period of 25 years. After the expiration of this period, the patent transfers into the public domain, and any person may use it without any consequences for himself.
Below, there are some examples of the solutions that are directly related to the mobile application that may be patented.
A mobile application concept implemented in the interactions with a user, the methods for representing the information, the organization of the social services or in a new messenger may be patentable. Systems or methods are usually patented as the concepts and a technical result is used – “expanding an arsenal of the means,” which is sometimes an official version for such useful effects as an increase in user convenience or an increase in the in formativeness, which are usually not recognized to be technical by Rospatent.
Data processing may be defended by the patent. Thus, the solution can be connected with the modification of the already well-known solutions. The key subject matter of patenting for this type of solutions is a method, i.e. the sequence of actions, which is performed by a software product by sending, processing and generating the data with the use of a server, a microcontroller and other devices. To avoid Rospatent's recognizing such method as an “economic activity,” it is necessary to describe the means on the basis of which the method is built up, i.e. which devices the application interacts with.
The key element of any mobile application is the security of the user data. The patentable solutions here may be the techniques to defend the transmitted or stored information, which is used, when working with the application. In addition to the method, the subject matter of patenting in this case may be the system as well, and the technical result will consist in improving the data security.
It is possible to patent an interface by describing its principles of interacting with the user. From the point of view of patenting, the interface is most often a method, i.e. the application describes what buttons and icons the user sees, how they are located, what the user does with them and what result is obtained.
The exact appearance of the application, unlike the interface, is the easiest one to be patented. An application for a patent should contain the illustrations that will show the basic concept of the appearance of the application by indicating to the main design elements, their location on a screen, a colour, if it is of importance.
Thus, despite the fact that at first glance the software product is a subject matter of the copyright, it is protected, as a rule, by a certificate for the registration of a program for an electronic computing machine, in fact, there are many other multilateral approaches to defend the mobile applications.
According to Article 1229 of the Civil Code of the Russian Federation, the exclusive right is the right to use the result of the intellectual activity and the means of individualization at one’s own discretion in any way that does not contradict the law, as well as the right to dispose of the exclusive right to the result of the intellectual activity or the means of individualization. The exclusive right to the result of the intellectual activity created by a creative labour always arises initially from the author himself and it may pass to other persons only subsequently on the basis of the law or an agreement.
It is important to note that the exclusive right to an invention, a utility model or an industrial design arises from the right holder since the date of the registration of the invention, the utility model or the industrial design in the State Register.
The main cases of the illegal introduction of the patent into the economic turnover are importing (import) into the territory of the Russian Federation, in this case, the violation is the very fact of importing. They also include manufacturing, i.e. the manufacture of the product for commercial purposes; its use for commercial purposes; offering for sale, for example, advertising the product in catalogs and brochures, demonstrating in shopping windows, salesrooms, advertising clips on television and radio; selling, i.e. a commercial activity for the realization of the patented product; storing for these purposes the product, in which the patent is used. These actions are the offenses, when they are performed without a permission of the patent holder.
The disputes related to the violation of the exclusive right to an invention, a utility model or an industrial design shall be considered by the court.
According to Article 1406.1. of the Civil Code of the Russian Federation, in the cases of the violation of the exclusive right to an invention, a utility model or an industrial design, the author or other right holder, along with the use of other applicable methods for the defence and the measures for responsibility stipulated by the Code (Articles 1250, 1252 and 1253) shall be entitled to demand at his choice from the violator the payment of damages instead of the recovery of damages:
1. in the amount from ten thousand roubles to five million roubles determined at the discretion of the court on the basis of the nature of the violation;
2. in double the amount of the value of the right of the use of the invention, the utility model or the industrial design determined on the basis of the price, which in the comparable circumstances is usually charged for the lawful use of the invention, the utility model or the industrial design in the way used by the violator.
Thus, if you have received a claim letter, then it is necessary to respond. If you fail to respond to the claim letter within a month, the right holder shall be entitled to go to the court claiming to stop the manufacture of the product or the use of the technology, as well as to award damages, including for the lost profits, if he manages to prove it.
To prepare a competent response to the claim letter, you must understand clearly, whether there is really a violation of the patent.
To do this, you should check, whether your case is an exception, since there are such cases that are not a violation of the exclusive right to an invention, a utility model or an industrial design, namely:
1. the use of the product, in which the invention or the utility model is used, and the use of the product, in which the industrial design is used, in the construction, in the auxiliary equipment or during the operation of the vehicles (the water, air, road and rail transport) or the space technology of the foreign states, provided that these vehicles or this space technology are located temporarily or accidentally on the territory of the Russian Federation and the indicated product or article is used exclusively for the needs of the vehicles or the space technology. Such action shall not be recognized as a violation of the exclusive right in respect of the vehicles or the space technology of those foreign states that provide the same rights in respect of the vehicles or the space technology registered in the Russian Federation;
2. carrying out a scientific research of the product or the method, in which the invention or the utility model is used, or a scientific research of the product, in which the industrial design is used, or carrying out an experiment on such product, method or article;
3. the use of the invention, the utility model or the industrial design in extraordinary circumstances (natural disasters, catastrophes, accidents) with a notification of such use of the patent holder as soon as possible and with the subsequent payment of commensurate damages;
4. the use of the invention, the utility model or the industrial design to satisfy the personal, family, household or other non-business needs, if the purpose of such use is not gaining profit or income;
5. a one-time manufacture in pharmacies according to the doctors' prescriptions of the medicines with the use of the invention;
6. importing into the territory of the Russian Federation, using, offering for sale, selling, another introduction into the civil circulation or storing for such purposes of the product, in which the invention or the utility model is used, or the article, in which the industrial design is used, if this product or article has been introduced earlier into the civil circulation on the territory of the Russian Federation by the patent holder or by another person with the patent holder’s permission or without his permission, provided that such introduction into the civil circulation has been exercised legitimately in the cases stipulated by the Code.
If you understand that the above circumstances are not applicable to your situation, the next step will be to carry out a comparative analysis of the product or the method with the features of the invention, the utility model or the industrial design.
The invention shall be recognized as used in the product or the method, if the product contains, and the method uses, each feature of the invention provided in an independent claim of the claims, or the feature equivalent to it and which has become known as such in this technical field before the priority date of the invention. An equivalent replacement shall be the replacement of the feature, if the essence of this invention is not changed, and the means of carrying out the replacement to the equivalent ones are known in this field.
The utility model shall be considered to be used in the product, if the product contains each feature of the utility model given in the independent claim of the claims of the utility model contained in the patent.
The industrial design shall be recognized to be used in the article, if this article contains all essential features of the industrial design or a set of the features that makes the same general impression as the patented industrial design on the informed consumer, provided that the articles have the similar purpose.
Thus, to establish the fact of the use under the patent, it is necessary to carry out a comparative analysis of the independent claims of the claims/the utility model and the essential features of the industrial design with the technical features (characteristics) and the appearance of the disputed product (a technical subject matter) and to identify their presence or absence.
According to the results of the comparative analysis, it will be possible to draw a conclusion about the violation/non-violation of the exclusive right.
In case if the violation is not established, then you can freely write in the response to the claim letter that it is has been sent to you illegitimately. That the right holder has no grounds for going to the court. If your arguments are convincing, then you will more likely manage to avoid the continuation of the conflict and the right holder's going to the court.
In case if you understand that you are nevertheless violating the exclusive right, then there are several variants for the further developments:
- You can offer the patent holder to reach an agreement, and if he becomes interested, to formalize a relationship with him legally. The transfer of the right to the use of the patent granted from the right holder to third parties is possible within the framework of several agreements. Depending on the completeness of the transferred rights, as well as on the accompanying transfer of the rights to other subject matters of intellectual property, transferring the patent for a temporary use within the framework of a license agreement, as well as transferring the patent together with a trademark at the conclusion of a franchise agreement (franchising) is stipulated. The effect period of the license agreement shall be limited to the effect period of the very patent. One should remember that after the termination of the legal protection of the patent, all rights transferred under the license agreement shall also cease to be in effect. The license to the use of the patent may be either exclusive or non-exclusive.
- If the right holder himself does not use and does not plan to use his technical solution, then the variant of selling the patent for an invention, a utility model or an industrial design is not excluded. Selling is carried out by the conclusion an agreement on the patent alienation. The agreement, according to which the assignment of the patent occurs, should undergo the state registration with Rospatent. In this case, you do not need paying the license fees regularly, you will pay once and for all.
- If you understand that the method that you are using for the manufacture of the products is completely identical to the one claimed in the patent for an invention, but at the same time, if, for example, the fact that you have easily changed the parameters of the equipment operation or, for example, you have excluded one of the operation steps in the method, does not affect the quality of the product, but, at the same time, the right holder fails to prove a violation of his patent, you can allow him going to court, knowing beforehand that he will lose the suit. However, such tricks are possible only if it comes on the method defended by the rather narrow claims, with the indication of, for example, the particular values of the content of the components of the composition or the modes of the technological process.
- If you fails to come to an agreement, then you have a possibility to file an objection with Rospatent in order to recognize the patent to be void (the cancellation of the patent). To do this, it is necessary to carry out an international patent and information search in order to identify the sources of the information published before the date of filing the application, which confirm the non-compliance of the solution defended by the patent in case of the utility model with the patentability criteria “novelty” and “industrial applicability,” in the case of the invention – with the criteria “novelty,” “inventive step” and “industrial applicability,” in case of the industrial design – with the criteria “novelty” and “originality”; or, for all cases, to cancel the patent upon the evident use, if there is relevant evidence.
It is not always easy to choose a right way and strategy by yourself, therefore, approaching the current situation individually, the specialists of our team will always advise you the best way out, an algorithm of the actions and they will provide a full range of the services related to the preparation of the response to a claim letter, to carrying out a comparative analysis with the formalization of the relevant opinion, to filing an objection to the cancellation of the patent, to the representation of your interests in the court, etc.
A patent according to the Encyclopedic Dictionary (patens in Latin means open, clear, obvious from a full name – litterae patentes – an open letter) is a protected document certifying the exclusive right, the copyright and the priority of an invention, a utility model, an industrial design or a selection invention.
The patent is granted by the state executive authority on intellectual property. In the Russian Federation, this authority is Rospatent; in the USA, this is the United States Patent and Trademark Office. The international regulation is carried out by the World Intellectual Property Organization (which performs, inter alia, the relevant functions at the UN), the United International Bureaux for the Protection of Intellectual Property and others. In the World Trade Organization, these relations are regulated, inter alia, by the “The Agreement on Trade-Related Aspects of Intellectual Property Rights.”
In Russia, the grant of patents has quite a long history.
In the XVII century, the “privileges” were granted for fishing and trading the “various goods.” The privileges for a specific kind of the manufacture were started to be granted for the first time during the Europeanization at Peter I. Thus, Lomonosov was granted a privilege for the manufacture of parts for mosaic. It was just at Peter I that the word “patent” became a part of Spoken Russian. The subsequent rulers did not make any special changes to the field of patenting; this continued till 1815, when Alexander I published the first of its kind “Manifesto on the Privileges for Various Inventions and Discoveries in Crafts and Arts,” this is the moment from which the official history of patenting in Russia starts.
The patent law has been improving over the years. In 1833, “The Provision on Privileges” was issued, which introduced a system of the preliminary consideration of applications. At the same time, it became possible to file applications for the “improvement” of the already available inventions.
In 1870, the form of the consideration of applications was converted, the privileges now were granted by the ministries according to the principle of correlation of the ministry’s profile with the subject of the invention.
In 1896, the latest in the Russian Empire law “The Provision on the Privileges for the Improvements and Inventions” was adopted, which, together with minor amendments, was in effect till the revolution. The essence of the novelty of the invention, which should have been something new, was assessed more strictly according to it. The protection certificate was granted after that, the effect period of which was exactly 15 years from the date of granting it.
In 1919, the revolution also influenced on patenting. Lenin abolished the patent and introduced an inventor's certificate, which did not confirm the right of the inventor’s ownership to his invention, but it only allowed him using some minor dividends. Exactly this system lasted till the 90s of the XX century, i.e. till the breakup of the USSR.
The following is the author's certificate No. 1 for “The Furnace for the Continuous Manufacture of Sodium Sulfide,” published on September 15, 1924, the application was filed on March 25, 1921.
The only exception was the period from 1924 to 1931, when the patents for inventions were granted to the representatives of the friendly communist states. The patent comes back thanks to the reforms of Gorbachev. The Soviet patent existed within only one year, and the Patent Law of the Russian Federation appeared in 1992.
After a long succession of renaming during the XX century and especially at the beginning of the XXI century, the authority that registers the patent rights became known as the Federal Service for Intellectual Property (FIPS). Now, it is exactly the FIPS that carries out various activities for the defence of the intellectual property rights, as well as it registers and confirms the activities of patent attorneys.
The history of Rospatent has about a hundred years. In 1918, the Committee for Inventions was established at the Scientific and Technical Board of the Supreme Council of the National Economy, which was a prototype of the Federal Service.
In 1931, the Committee for Inventive Activity at the Council of Labor and Defence was organized. Afterwards, the Committee for Inventions and Discoveries was established in 1947. Later, in 1955, the State Committee for Inventions and Discoveries at the State Committee of the Council of Ministers of the USSR for Science and Technology was established. The Committee for Patents and Trademarks operated in the Russian Federation till 1992. The office was called the Russian Agency for Patents and Trademarks since 1996. The authority was renamed to the Federal Service for Intellectual Property, Patents and Trademarks by a Presidential Decree in 2004. The Service has obtained its name since 2011, which it bears up to this day – “The Federal Service for Intellectual Property.”
A number of modifications and amendments to the laws came into force in December 2011, which led to the creation of the Intellectual Property Court, as a special type of an arbitration court. Its competence is equivalent to the first-instance court and the Court of Cassation.
The functions and powers of the Intellectual Property Court are in the disputes on the establishment of a true patent holder; on invalidating the grant of the patent or other kind of the protection document for intellectual property; on the early termination of the protection of the relevant trademark in connection with the termination of its use by the holder and the complete termination of its use; on challenging the non-regulatory acts and actions of the relevant authorities related to the grant and distribution of the copyrights and patents; on challenging the decisions of the antimonopoly authority related to copyright violation.
The Russian State Academy of Intellectual Property (RSAIP) is the first specialized higher educational institution in Russia that trains the specialists in the field of the defence of intellectual property.
The RSAIP was founded on July 25, 1968 as a center for improving the skills of the employees in the field of the defence of intellectual property. Then this establishment went through a long development. The establishment was granted an Academy status by a Presidential Decree in April 24, 2011. It is a dynamically developing organization now, where one can get a specialized education in the field of the intellectual law, which is unique for our country.
1. TV sets/tablets/phones with a flexible screen (see application EP 3098802 B1 “A flexible display device and a method for its operation” published on 01.08.2018, the applicant is LG ELECTRONICS INC. This technology touched upon TV sets, first of all. LG represents LG Signature OLED TV R TV set with a roll mechanism. LG decided to use a flexible screen to create a TV set that had a large diagonal, which is convenient for watching movies, but at the same time it did not take up much space in an inoperative state. When folded, it is a small housing, which looks like a column. In its upper part, there is a hole closed by a lid sliding sideways. A flexible OLED panel with a 65-inch diagonal slides out of this hole, if the user wants to watch TV.
2. A thermal protective casing for placing and storing the mobile electronics (see RU 177588 U1 “A casing to protect the mobile electronics from lower temperatures” published on 01.03.2018).
A technical result of the claimed utility model is to ensure stability of the use of mobile electronics by means of maintaining the temperature conditions of operating, storing and preventing a snowstorm negative impact on the mobile electronics. The claimed technical result is achieved due to the fact that the casing to protect the mobile electronics from lower temperatures has a folio casing form and it comprises a compartment for placing the structure with the mobile electronics, which includes the outer and inner layers of the flexible thermal protective material, which are connected on perimeter, while preserving the holes for connecting headphones and a charging device and it is characterized in that the inner layer of the casing has a transparent screen made of the elastic transparent silicone material with a thickness of 1 mm, wherein the termoconductive polymer filament that ensures heating the casing is embedded on the backside of the inner and outer layers of the flexible thermal protective material and connected to an electric accumulator and a temperature sensor with a control.
3. A spoon for small children and the people suffering from Alzheimer's disease (see application CN 105380480 A “A spoon at a hand tremor” published on 09.03.2016). This invention refers to the field of kitchen utensils, in particular to the spoon with an anti-tremor effect, which comprises a housing and a portable part. The upper end of the portable part is on the same level with the center of gravity of the spoon housing. The spoon housing extends to the portable part as well. The upper end of the portable part is connected to the housing through a rotating part. The rotating part has a hollow ball structure. A half of the liquid is contained inside the hollow ball. The spoon housing has a plurality of the elastic elements located in a peripheral direction, the remaining means are located in the center of gravity, so that it ensures the spoon housing will not tremble, when the user’s hand is trembling.
4. A self-folding bed (see application WO2014032197 A1 “An independent device for putting bedlinen” published on 03.06.2014).
An independent device for putting bedlinen, which comprises an inflatable sleeve of a smaller size connected to a bottom bedsheet that covers the upper part of a mattress; the large inflatable sleeve is connected to the module, which includes an upper plate, at least one blanket and an outer bedcover, the said module being folded, when it stretches in the direction corresponding to the mattress back smaller side, which coincides with a bed foot; in which both inflatable sleeves receive air under a controlled pressure through a metering valve, which is supplied from a compressed air station. The said device comprises a flat base connected to the said C-shaped inflatable sleeve of a smaller size by means of the mending plates that are fastened and adapted to the lower corner segments of the mattress; the flat base lies in the plane that separates the lower side of the mattress and the upper surface of the bed base; the flat base is additionally connected to the C-shaped inflatable sleeve by means of at least one pair of the angular support elements, as well as with the help of the end connections of the transverse struts, which are connected to the side feet.
5. A rucksack with additional fastening the cargo compartments of the rucksack that reduce their vibrations during walking (see patent RU 189580 U1, “A rucksack with a device for fastening the cargo compartments that reduce their vibrations during walking” published on 28.05.2019).
The objective of this technical solution is to increase the rucksack stability during walking, reducing the vibrations of the cargo compartments and the person’s weariness. A device for an additional fixation of the cargo compartments of the rucksack that reduces their vibrations during walking is an additional belt made of the textile tape LRTP-50 (a polypropylene textile belt tape) (the width is 50 mm), which is fastened to a waist belt over the cargo compartments of the rucksack at the chest level with the help of the straps and which prevents the cargo vibrations with respect to the anchor points of the haversacks. A Fastex type fastener is provided on an additional belt for taking off and fixing the rucksack. Thus, due to introducing an additional connection with respect to the standard anchor points, the device reduces the vibrations of the cargo compartments of the rucksack and increases stability during walking.
6. A rucksack with an electrical skateboard (see application JP 2015516904 A “Portable electric vehicles” published on 18.06.2015).
A rucksack is an individual folding vehicle that is worn comfortably behind the shoulders in the form of a rucksack, and if necessary, one can ride up to 15 km at a speed of 25 km/h with a single two-hour charge of a built-in electric accumulator, which also can be used to recharge gadgets and mobile devices.
7. A trolley for lifting cargo up the stairs (see RU 2314225 C2 “A device for transporting cargo along the stair flights” published on 10.01.2008).
A device for transporting cargo along the stair flights is a trolley of a frame structure that comprises a vertical frame and a horizontal one that are rigidly interconnected, having the rear running gears that rest on two wheels on a flat surface, and a planetary mechanism of the rear running gear that ensures a rotation of the wheels, and when the wheel stops on a step of the stairs, the planetary mechanism ensures the wheel lock providing the movement of the next wheel to one step higher, while the rotational moment dispatch is provided through a gear mounted on an output shaft and a gear wheel mounted on the main axle of the rear running gear with the planetary mechanism, characterized in that the front running gears are equipped with 3 wheels mounted 120° relative to each other, the rear running gears have the drive from the above output shaft of the gear motor that is rigidly fastened on the horizontal frame, while the movable frame in the device is pivotally connected to the horizontal frame, the front and rear running gears are mounted on the movable and vertical frames, respectively, a screw mechanism is mounted between the horizontal and movable frames and it ensures any position of the trolley in the range from a normal state, in which the front and rear running gears are as far as possible from each other, to a folded state, in which the front and rear running gears are as close as possible to each other, while the device provides the possibility of fastening cargo.
8. A “smart” bed (see application CN 101370457 B “A bed with a forecasting system” published on 04.07.2012).
During sleeping, people are very vulnerable and they are able to wake up every time, when somebody touches them suddenly. Frequent awakenings during one night can spoil the rest so much that the person can feel tired throughout the whole next day. The “smart” bed consists of a conveyor belt, which moves the soft surface to the left or to the right, when one of the sleeping persons trespasses on the side of another person. To identify these moments, the bed uses the pressure sensors. Thus, when one person finds himself on the side of another one, he moves immediately to his side – at the same time, no one wakes up from a sound sleep.
9. An additive to meat that increases its storage life twice as much (see patent RU 2640422 A1 “A composition for storing fresh chilled meat” published on 09.01.2018).
The invention relates to the storage of fresh chilled meat of animals and poultry. The composition comprises a reaction product of the mixture of propylene glycol and glycerin with a component of natural origin selected from the group including linden flowers, plantain leaves, rosemary, grape berry hulls, oat husk, basil, and also a reaction product of water with the hydrocolloid selected from the group consisting of agar agar, alginates, locust bean gum, xanthan gum, gelatin. The new composition for the storage of fresh chilled meat allows to solve the technical objective of increasing the storage live of meat without losing its quality at the temperatures of up to +4°C twice as much or more.
10. An orthopedic pillow (see patent RU 188899 U1 “An orthopedic adjustable pillow” published on 04.29.2019).
The main function of the orthopedic pillow is to keep a natural position of the head and the neck during the rest. In addition, it reduces the pressure in the intervertebral discs, improves the blood circulation. Spasms in the muscles of the shoulders and the neck disappear. Thanks to its ergonomic shape it is capable of following the shape of the flexures of the neck and the head. As a rule, the structure of such product looks like two rollers. The larger segment deals with supporting the neck, the lower one deals with supporting the head. The orthopedic adjustable pillow is designed for fitting perfectly the neck and the head to ensure a good sleep. In contrast to a conventional pillow, regardless of a filler and a form, it has one or more containers (inserts), filled in with a gas (or liquid), with controls that allow changing their filling capacity and adjusting the height and rigidity of the pillow. Adjusting filling in the containers (inserts) is exercised by a mechanical or automatic method. Each container being filled has its control that allows changing the volume of one of the pillow containers, what leads to a fine adjustment of its height and rigidity allowing to adjust the pillow taking into account the biological parameters of a particular user.
And this is only a small part of the technical solutions ensuring the convenience and comfort of our life. The development of technology does not standing still. Day after day, researchers work over more the practical forms, advanced functionalities and simplified designs of the consumer products that are all familiar to us.
According to the patent legislation of the Russian Federation, the strains of microorganisms can be patented only as inventions.
The main difference from a procedure for patenting inventions is that, before filing an application for the defence of the strain of the microorganism, the strain should be deposited preliminary in the All-Russian National Collection of Industrial Microorganisms. The exceptions are the strains prepared using the genetic engineering techniques, i.e. the recombinant strains. At the same time, it should be taken into account that the depositor must be the same person, who will act as an applicant for obtaining a patent.
For the better understanding, let us consider in more detail the peculiarities of the examination of the inventions referring to the strain of the microorganism, the relevant terms and definitions.
The strain of the microorganism is the first subject matter of wildlife, which has obtained legal protection as an invention. Therefore, using an example of this subject matter, which is equated to technical solutions, it is possible to consider the common patterns of patenting the natural biological subject matters as a whole.
The term “microorganism” covers yeast, bacteria, higher fungi, actinomycetes, bacteriophages, unicellular algae, viruses, protozoa, etc.; the cell lines of plants and animals, including the continuous somatic cell lines of vertebrata, shall be equated to the microorganisms.
A strain is a pure culture of the microorganism recovered from a specific source or obtained as a result of mutations.” The cell populations belonging to the same strain of the microorganism have almost the same set of the properties.
In connection with the specifics of the subject matter under consideration, the description of the invention, which refers to the strain of the microorganism, must contain the following information: the place or the source of the recovery of the strain, the method of the recovery; the method of preparing; the collection that has implemented the deposition of the strain; how and with the help of what microbiology manual the claimed strain has been identified; the cultivation conditions (the temperature, the pH medium, the duration of cultivating on various media, etc.); the properties, the characteristics of the strain or the product produced by it, allowing the invention to be used in a specific field.
The analysis of patentability of the strain always begins with an assessment of industrial applicability, that is, the analysis of a possibility of the implementation of the invention according to the description of the subject matter in the application materials. In relation to the subject matter “a strain of a microorganism,” this analysis begins with the assessment of the possibility of preparing it in principle, its guaranteed repeated reproduction, as well as the possibility of maintaining the viability of the claimed strain during the patent effect period and the realization of the claimed purpose or the manifestation of the specific properties providing the technical result of the invention. It is believed that if the method or the means to prepare the strain of the microorganism are not sufficiently described in the application, then in this case it is necessary to deposit the invention in order to implement it.
Depositing the strain of the microorganism is transmitting its sample to the collection for the purpose of the registration, storage, defence against the illegal use, as well as providing the sample in accordance with established rules. In this case, depositing is one of the conditions for confirming the ability to implement the invention, which refers both to the strain of the microorganism directly, and to other inventions, in which the new strains recovered from the natural sources or obtained due to the traditional mutagenesis are used. Depositing must be implemented before the date of filing the application.
It is important to note that, depending on the tasks to be solved during depositing, the different forms of depositing are stipulated: storage, storage with warranty and depositing for the purposes of the patent procedure. It is the last type of depositing that is stipulated for the cases, when it is planned to file an application for a patent, and only this type of depositing complies with the purposes of patenting, as it guarantees the safety of the deposit and other requirements.
When filing an application for the inventions referring to the strains, the methods or the means based on the new strains, the implementation of the procedure of depositing is mandatory in terms of the ability to implement the invention. The application materials should include obligatory a copy of the certificate on depositing the strain issued by the depository collection. It should reflect the following information: a name of the strain (the taxonomic characteristics – a genus and a species in Latin), a name of the depositor, the author's designation of the strain assigned by the authors, with which the strain enters the collection for depositing, a full name and a location of the depository collection that has implemented depositing the strain, the authorized person’s signature certified by the collection’s stamp, a registration number of the deposited strain assigned by the depositary collection, as well as a type of depositing “for the purposes of a patent procedure,” a date of depositing the strain of this collection, which must precede the date of filing the application for the invention. In exceptional cases, the date of issue of the certificate may be a little later than the date of filing the application. Such depositing shall be considered to be completed legally, if the applicant can confirm the fact of transmitting the strain to the collection before filing the application according to the documents of sending his sample by post. Such information, together with the certificate on depositing, may serve as a basis for recognizing the ability to implement the invention and its compliance with the condition of industrial applicability at the date of filing the application.
Depositing for the purposes of a patent procedure may be implemented to the collection, which is the International Depositary Authority (IDA) under the Budapest Treaty on the international recognition of depositing microorganisms for the purposes of a patent procedure (Budapest, April 28, 1977), or to the Russian collection authorized for depositing for the purposes of a patent procedure and complying with the requirements relevant for such collections, which guarantees the maintenance of the viability of the subject matter being deposited during at least the patent effect period.
The following should be filed for depositing the strain of the microorganism: a letter requesting such depositing; a passport for the strain being transmitted; the culture samples.
The strains must undergo checking for pureness and viability, which takes 10-20 working days. In case of a positive result of the check, the deposited strain shall be assigned a registration number, which can be used for its identification later. The date of the entry of a pure and viable sample, as well as a complete set of the documents shall be considered the date of depositing.
Thus, one of the basic requirements to the applications for strains of microorganisms and the subject matters equated to them, the viability of which may be lost due to some objective reasons, and the reproduction is not guaranteed, is the implementation of depositing in specialized collections.
An application for an invention, utility model or industrial design is filed by an applicant or his representative.
The applicant is a person requesting the grant of a patent in his own name (an author of the invention (utility model/industrial design), a group of the authors or his (their) successor.
The representative of the applicant is a patent attorney or another representative acting on the basis of a power of attorney executed in accordance with the requirements of Article 1851 of the Civil Code of the Russian Federation.
The patent attorney is a person, whose profession is providing legal assistance in the field of the patent law to individuals (citizens, stateless persons) and legal entities (organizations), including providing defence of their interests and rights in the court. This person must have special qualifications necessary to represent the interests of the clients in obtaining patents and act in all matters and procedures relating to the patent law and practice, including patent disputes.
According to Paragraphs 1 and 2 of Article 1357 of the Civil Code of the Russian Federation, the right to obtain a patent for an invention, utility model or industrial design originally shall belong to the author of the invention, utility model or industrial design. The right to obtain the patent for the invention, utility model or industrial design may revert to another person (successor) or may be transferred to him in the cases and on the grounds established by the law, including under the universal succession, or under a contract, including under an employment contract.
The applicant or his representative has an opportunity to file the application for the invention, utility model or industrial design, both personally and remotely:
- To send by mail to the address: Berezhkovskaya Nab., 30, Bldg. 1, Moscow, G-59, GSP-3, 125993, the Russian Federation.
If the application documents are sent on paper by mail, the applicant shall be sent a notification informing him on the registration number of the application and on the date of the receipt of the documents within two weeks from the date of the receipt of the application documents.
2. To hand over directly through the expedition of Rospatent to the above address. In the case of filing the application documents on paper through the expedition of Rospatent, the applicant shall receive a notification informing him on the registration number of the application and on the date of handing over the documents.
3. To send by fax: +7 (495) 531-63-18.
In this case, the originals of the application documents, together with a covering letter identifying the documents previously received by fax, must be submitted to Rospatent within one month from the date of their receipt by fax. Subject to this condition, the date of the receipt of the document shall be considered the date of its receipt by fax.
4. To take advantage of electronic filing with the use of an electronic and digital signature:
1) Through the FIIP web-site www.fips.ru
For more detailed information on filing the application in the electronic form through the FIIP web-site, as well as on the procedure for obtaining the electronic and digital signature, one can refer to section “Electronic Interaction with Applicants” on the FIIP web-site.
It is possible to do the following through the “Personal Account”: to send the documents and/or additional materials relating to the previously filed application, the objection; to receive the documents being sent by the officials of the FIIP in the course of providing the state service; to view the lists of the sent and received documents.
The advantages of using the “Personal Account” service on the FIIP web-site are:
– the size of the fee for the implementation of the legally significant actions is 30% less, when sending the correspondence signed with the electronic signature;
– the reduction of the period of delivering the documents, while maintaining the correspondence with the FIIP;
– the reduction of the costs for maintaining the correspondence (including for courier delivery);
– the correspondence regarding the applications filed on paper is also possible through the electronic filing system for an invention.
In the case of filing the application in the electronic form using the electronic and digital signature through the FIIP web-site, the information on the receipt of the application shall be immediately displayed in the Personal Account of the applicant (an assigned registration number of the application and its receipt date).
2) Through the Public Services Portal of the Russian Federation www.gosuslugi.ru
In the case of filing the application through the Public Services Portal of the Russian Federation, the applicant shall be sent a notification informing him on the registration number of the application and the date of the receipt of the documents within two weeks from the date of the receipt of the application documents.
Thus, currently there is a convenient and remote way of filing applications in the electronic form, which has a number of advantages that ensure the reduction of the costs for paying the fees, speeding up an interaction and transparency of the work with the Office.
According to the definition adopted in the Russian legislation, a state secret shall mean the information protected by the state in the field of its military, foreign policy, economic, intelligence, counterintelligence and operational and search activities, the dissemination of which can be detrimental to the state.
According to the Rules for carrying out a check of the availability in the applications for the grant of a patent for an invention, a utility model or an industrial design created in the Russian Federation, the information constituting a state secret, approved by Resolution of the Government of the Russian Federation No. 928 of December 24, 2007, all applications for the grant of a patent for an invention, a utility model or an industrial design created in the Russian Federation, filed with Rospatent by the Russian legal entities or the citizens of the Russian Federation, including the international and the Eurasian applications are subject to be checked for the availability of the information constituting a state real secret.
During the period of a formal examination in respect of the applications received by Rospatent, a preliminary check for the availability of the information constituting a state secret shall be carried out. The check shall be carried out by way of familiarizing the employees of Rospatent, who have the necessary security clearance form to a state secret, with them.
In the event that an employee of Rospatent discovers the circumstances requiring a check of the application materials by the representatives of the Federal Executive Authorities and the state corporations, whose heads are authorized to classify the information as a state secret (hereinafter referred to as the competent authorities), the further check of the application in accordance with its thematic affiliation shall be carried out by the representatives of the correspondent competent authorities.
The familiarization with the application materials and their check by the representative of the competent authority shall be carried out in Rospatent. In the event that the representative of the competent authority detects the circumstances that, in his opinion, require a check of the application content, the application shall be filed by Rospatent using special communication tools directly to the competent authority.
At the same time, the consideration by Rospatent of the above said application shall be suspended for the period of the above said checks.
According to Resolution of the Government of the Russian Federation No. 928, the applications for the grant of a patent for an invention, a utility model or an industrial design are not subject to be checked, if, when filing them, the conclusion of the corresponding Commission of the applicant for a state secret protection created in the established manner stating the non-availability of the information constituting a state secret is attached to them.
In this regard, Rospatent shall notify the applicants carrying out the patenting of the results of intellectual activity that the availability of the above said conclusion together with the application materials will allow optimizing the terms of the paperwork for the applications regarding the grant of a patent for an invention, a utility model or an industrial design.
According to the list of the information constituting a state secret, as well as to the provision on classifying such information that is contained in Article 5 of the Law on a State Secret, the state secret shall be:
1. the information in the military field:
on a content of the strategic and operational plans, the documents of the combat control for the preparation and conduct of operations, the strategic, operational and mobilization deployment of the Armed Forces of the Russian Federation, other troops, the military formations and authorities stipulated by the Federal Law “On Defense,” on their combat and mobilization readiness, on the creation and on the use of the mobilization resources;
on the construction plans of the Armed Forces of the Russian Federation, other troops of the Russian Federation, on the development directions of the weapons and military equipment, on a content and the results of the implementation of the targeted programs, research and development works for the creation and modernization of the models of the weapons and military equipment;
on a development, technology, the manufacture, manufacture volumes, storage, disposal of the nuclear weapons, their components, the fissile nuclear materials used in the nuclear weapons, the technical means and (or) the methods of protecting the nuclear weapons from an unauthorized use, as well as the nuclear energy and the special physical installations of a defense character;
on the tactical and technical characteristics and the military applicability of the models of the weapons and military equipment, on the properties, formulations or technologies for the manufacture of the new types of the rocket fuel or the explosives of a military character;
on a disposition, purpose, a degree of readiness, the protectability of the classified facilities and the high-security facilities, on their design, construction and operation, as well as on the allocation of lands, mineral resources and water zones for these facilities;
on a disposition, the real names, on the organizational structure, on the weapons, a number of troops and a state of their combat support, as well as on a military and political, and (or) an operational situation;
2. the information in the field of economy, science and technology:
on a content of the plans for preparing the Russian Federation and its separate regions to possible military actions, on the mobilization capacities of the industry for the manufacture and repair of the weapons and military equipment, on the manufacture and supplies, on the stocks of strategic raw materials and materials, as well as on the deployment, actual sizes and the use of the state material reserves;
on the use of the infrastructure of the Russian Federation in order to enhance the defense potential and the state security;
on the forces and means of the civil defense, on a disposition, purpose and a protectability degree of the administrative facilities, on a degree of enhancing the security of the population, on the functioning of the transport and communications in the Russian Federation in order to enhance the state security;
on the volumes, plans (assignments) of the state defense order, on the manufacture and supplies (in monetary or physical terms) of the weapons, military equipment and other defense products, on the availability and increase of the capacities for their manufacture, on the relationship of the enterprises for cooperation, on the developers or on the manufacturers of these weapons, military equipment and other defense products;
on the achievements of science and technology, scientific and research, design and experimental, project works and technologies having a great defense or economic importance that influence on the state security;
on the platinum reserves, platinum group metals, natural diamonds in the State Fund of Precious Metals and Gemstones of the Russian Federation, the Central Bank of the Russian Federation, as well as on the reserve volumes in the mineral resources, mining, the manufacture and consumption of the strategic natural resources of the Russian Federation (according to the list adopted by the Government of the Russian Federation);
3. the information in the field of the foreign policy and economy:
on the foreign policy, foreign trade of the Russian Federation, the premature dissemination of which may be detrimental to the state;
on the financial policy in respect of the foreign states (with the exception of the generalized indicators regarding the external debt), as well as on the financial or monetary and credit activities, the premature dissemination of which may be detrimental to the state;
4. the information in the field of intelligence, counterintelligence and operational and search activities, as well as in the field of counterterrorism and in the field of enhancing the security of the persons in respect of whom the decision to apply the state protection measures has been made:
on the forces, means, sources, methods, plans and results of the intelligence, counterintelligence, operational and search and counterterrorism activities, as well as the information on financing these activities, if this information discloses the above said information;
on the forces, means, sources, methods, plans and results of the activities for enhancing the security of the persons in relation to whom the decision to apply the state protection measures has been made, the information on financing these activities, if this information discloses the above said information, as well as the separate information about the above said persons;
on the persons, who are cooperating or who have cooperated on a confidential basis with the authorities engaged in intelligence, counterintelligence and operational and search activities;
on the organization, on the forces, means and methods for enhancing the security of the state protection facilities, as well as the information on financing these activities, if this information discloses the above said information;
on the system of the presidential, governmental, cryptologiсal, including the encrypted and classified information, on the ciphers, on the development, on the manufacture of the ciphers and the provision with them, on the methods and tools for analyzing the encryption tools and the special protection tools, on the information and analytical systems of a special purpose;
on the methods and means of the protection of the classified information;
on the organization and on the actual state of the state secret protection;
on the protection of the state border of the Russian Federation, the exclusive economic zone and the continental shelf of the Russian Federation;
on the Federal Budget expenditures related to enhancing the defense, the state security and the law enforcement activities in the Russian Federation;
on training the personnel, revealing the arrangements carried out in order to enhance the state security;
on the measures for enhancing the protection of the critically important facilities and the potentially hazardous facilities of the Russian Federation infrastructure from terrorist attacks;
on the results of the financial monitoring in relation to the organizations and individuals received in connection with the check of their possible involvement in the terrorist activities;
on the measures to enhance the security of the critical information infrastructure of the Russian Federation and on a state of its protection from computer attacks.
If in the course of the consideration of the application it is established that the information contained therein constitutes a state secret, the measures shall be taken to classify the application in the established manner.
The utility models and industrial designs containing the information constituting a state secret shall not be granted the legal protection in accordance with Article 1349 of the Civil Code of the Russian Federation.
In this case, the applicant shall be informed that it is impossible to obtain a patent for a utility model or an industrial design regarding such application.
The legal implications of classifying the application documents are that the applicant may:
- withdraw the application;
- convert the application for a utility model into an application for a secret invention.
Rospatent shall suspend the consideration of such application till the receipt from the applicant of one of the above said decisions or till the declassification of the application.
According to Article 1401 of the Civil Code of the Russian Federation, the applications for the secret inventions, for which the degree of secrecy “special importance” or “top secret” has already been established, as well as for the secret inventions that relate to the weapons and military equipment and the methods and means in the field of intelligence, counterintelligence and operational and search activities and for which the degree of secrecy “secret” has been established, shall be filed depending on their thematic affiliation to the Federal Executive Authorities authorized by the Government of the Russian Federation, the State Atomic Energy Corporation “Rosatom,” the State Corporation for Space Activities “Roskosmos” (hereinafter referred to as the authorized authorities). The applications for other secret inventions shall be filed with the Federal Executive Authority on Intellectual Property (FIIP).
If, when considering an application for an invention by the FIIP, it is established that the information contained therein constitutes a state secret, such application shall be classified in the manner established by the legislation on a State Secret, and it shall be considered as an application for a secret invention.
The classification of the application filed by a foreign citizen or a foreign legal entity shall not be allowed.
The publication of the information on a secret application shall not be exercised.
When establishing the novelty of the secret invention, the prior art, according to Paragraph 2 of Article 1350, shall also include, provided that they have an earlier priority, the secret inventions patented in the Russian Federation and the secret inventions, for which the copyright certificates of the USSR have been issued, if the degree of secrecy being not higher than the degree of secrecy of the invention, the novelty of which is being established, has been established for these inventions.
An objection to the decision made by the authorized authority regarding the application for a secret invention shall be considered in accordance with the manner established by it. The decision made regarding such objection may be challenged in court.
The provisions of Article 1379 of the Code of the Russian Federation on converting an application for an invention into an application for a utility model shall not be applied to the applications for secret inventions.
According to Article 1395 of the Code of the Russian Federation, the application for the grant of a patent for an invention or a utility model created in the Russian Federation, may be filed in a foreign state or to an international organization after six months from the date of filing the corresponding application with the FIIP, provided the applicant is not notified within the specified period that the application contains the information constituting a state secret. The application for an invention or a utility model may be filed earlier than the above said period, but after carrying out, at the request of the applicant, a check for the availability in the application of the information constituting a state secret.
This review of the changes may be useful not only to the FIIP’s examiners, but also to the applicants who are currently planning to file applications for inventions, which subject matters are compositions (formulations, mixtures). The examples of the compositions are food products, drugs, household chemicals, building mixtures, paints, varnishes, the similar products consisting of several components.
In order to improve the regulatory and legal framework of the Ministry of Economic Development of Russia, it is proposed to make the following changes to the Requirements to the Documents of an Application for Granting a Patent for an Invention:
“When disclosing the essence of the invention relating to the composition, the following rules shall be applied:
1) to characterize the compositions, in particular, the following features shall be used:
– a qualitative formulation (ingredients);
– a quantitative formulation (the content of the ingredients);
– the structure of the composition;
– the structure of the ingredients;
2) to characterize the compositions of an unidentified formulation, their physical and chemical, physical and other characteristics, as well as the features of the preparation method shall be used.”
is supplemented with Subparagraph 3, which reads as follows:
“3) it is not allowed to characterize the composition using as its features the information, which does not relate directly to the composition (for example, the conditions and modes of using this composition in any process, method), a quantitative (measured or calculated) parameter characterizing at least one property of the composition, in the cases, when this parameter is a distinctive feature in the characteristic of the composition in the independent claim of the claims (for example, the parameters of the laminating strength, the resistance to crack under tension, a pharmacokinetic profile, and the like), the technical result, which is manifested at the manufacture or use of the composition. When characterizing a pharmaceutical composition, it is not allowed to the use the features relating to the method of treating or the prevention of a disease (for example, the indication of doses, the conditions or modes of using the composition or drugs derived from it).”
“The claims relating to a composition shall contain its name with the indication of its purpose, the ingredients included in the composition and optionally the quantitative content of the ingredients.
If the claims relating to a composition contain a quantitative content of ingredients, they shall be expressed in any single-value units, as a rule, in two values characterizing the minimum and the maximum limits of the content.
It is allowed to indicate the content of one of the ingredients of the composition by one value, and the content of the remaining ingredients as the interval of values relative to this single value (for example, the content of ingredients is given per 100 parts by mass of the main ingredient of the composition or per 1 liter of solution).
It is allowed to indicate the quantitative content of antibiotics, enzymes, toxoids and the like in the composition formulation in the units other than the units of the remaining ingredients of the composition (for example, in thousands of units relative to the mass quantity of the remaining ingredients of the composition).
For the compositions, the purpose of which is determined only by an active principle, and other components are neutral carriers from the circle traditionally used in the compositions of this purpose, it is allowed to indicate in the claims only this active principle and its quantitative content in the composition formulation, including in the form of an “effective quantity.”
Another variant of characterizing such composition may be the indication in it, beside the active principle, of other components (neutral carriers) in the form of a “target additive” generalized concept. In this case, the quantitative content of the active ingredient and the target additive shall be indicated.”
is to be supplemented by an unnumbered paragraph, which reads as follows:
“It is not allowed to characterize the composition using the features indicated in Subparagraph 3 of Paragraph 39 of the Requirements to the Documents of an Application.”
In this case, in the Rules of Composing, Filing and Considering the Documents, Which are the Basis for Committing Legally Significant Acts Related to the State Registration of Inventions, and Their Forms Paragraph 70, which is worded:
“When checking the novelty, the invention shall be deemed to be new, if it is established that the aggregate of the features of the invention described in the independent claim of the claims is not known from the information, which has become open to public in the world before the priority date of the invention (hereinafter referred to as the prior art).
An invention relating to the product that differs from a known product only by a generic concept shall be deemed to comply with the novelty criterion, if the generic concept reflecting the purpose and (or) the field of use of the claimed product implies that the claimed product has the peculiarities (features) that are not included in the claims by the applicant, which help to distinguish the claimed product from the known product. If the difference of the generic concept is due only to the properties objectively inherent to the claimed product, including to the previously unknown properties, the claimed product shall not be deemed to be new. In this case, the applicant is entitled to characterize the claimed invention in the claims in the form of use of the product for the particular purpose indicated in the generic concept.
A chemical compound falling under the general structural formula of the group of known compounds, or a composition derived from it, shall be deemed to comply with the novelty criterion, if the chemical compound as such is unknown from the prior art and there is no information about the starting compounds, its preparation method and its properties that have become open to public in the world before the priority date of the invention.
An invention relating to a product expressed using the characteristics of its preparation method shall be deemed not to comply with the novelty criterion, if the product obtained is known from the prior art.
The claimed invention characterized in the form of use for a particular purpose shall be deemed not to comply with the novelty criterion, if the use of the same product or method for the same purpose is known from the prior art.”
is supplemented by an unnumbered paragraph, which reads as follows:
“When checking the novelty of the invention relating to the composition, the features indicated in Subparagraph 3 of Paragraph 39 of the Requirements to the Documents of an Application shall not be taken into account.
Paragraph 76, which is worded:
“The check of the inventive step of the invention can be performed according to the following scheme:
– the determination of the closest analogue of the invention in accordance with Paragraph 35 of the Requirements to the Documents of an Application;
– the identification of the features by which the claimed invention, characterized in the independent claim of the claims, differs from the closest analogue (the distinctive features);
– the identification from the prior art of the solutions that have the features coinciding with the distinctive features of the claimed invention;
– the analysis of the prior art in order to confirm the anticipation of the influence of the features that match the distinctive features of the claimed invention on the technical result indicated by the applicant.
The invention shall be deemed to be non obvious from the prior art to a specialist, if during the check no solutions that have the features matching its distinctive features are identified, or such solutions are identified, but the anticipation of the influence of these distinctive features on the technical result indicated by the applicant is not confirmed.”
is to be supplemented by an unnumbered paragraph, which reads as follows:
“When checking the inventive step of the invention relating to the composition, the features indicated in Subparagraph 3 of Paragraph 39 of the Requirements to the Documents of an Application shall not be taken into account.
Here are some examples for the better understanding of the above changes in the regulatory and legal framework.
Based on new Subparagraph 3 of Paragraph 39 of the Requirements to the Documents of an Application for Granting a Patent for an Invention, when patenting compositions, it is not allowed to use for their characteristics the information that does not relate directly to the composition, for example, in independent Paragraph 1 of the claims “Nasal composition for the treatment of allergic rhinitis” given below:
“1. The nasal pharmaceutical composition comprising an aqueous suspension of beclometasone solid particles and containing beclomethasone from 0.04 to 0.045% wt % of beclometasone on a dry basis, in which each injection of the composition delivers at least 1 µg of beclomethasone to obtain a metered dose.”
The features “in which each injection of the composition delivers at least 1 µg of beclomethasone to obtain a metered dose” will not be taken into account, when checking the compliance with the patentability criteria “novelty” and “inventive step.”
Therefore, identifying the drug for the treatment of allergic rhinitis known prior to the date of filing, which contains “an aqueous suspension of beclometasone solid particles in the amount from 0.04 to 0.045% wt % of beclometasone on a dry basis” is enough for an examiner to render a refusal due to the lack of “novelty.”
Another example of the characteristic of the composition that is not allowed is independent claim 1 of the claims “A biocide varnish-and-paint composition”:
“1. A biocide varnish-and-paint composition comprising a filmogenic substance in the form of a varnish-and-paint material and a biocidal additive, wherein as a biocidal additive it contains hydrophobic solventborne salt of polyhexamethylene guanidine or poly-(4,9-dioxadodecane guanidine), other than polyhexamethylen guanidine oleate, with the following components ratio, wt %: the filmogenic substance in the form of the varnish-and-paint material – 92.5-98.5, the biocidal additive – 1.5-7.5, while at first, the polyguanidine base is prepared by dehydrochlorinating polyguanidine hydrochloride in an aqueous solution in the presence of caustic soda, and then the resulting polyguanidine base is neutralized by the hydrophobic highest organic acid: oleic, undecylenic and pelargonic.”
The features “while at first, the polyguanidine base is prepared by dehydrochlorinating polyguanidine hydrochloride in an aqueous solution in the presence of caustic soda, and then the resulting polyguanidine base is neutralized by the hydrophobic highest organic acid: oleic, undecylenic and pelargonic,” when checking the compliance with the patentability criteria “novelty” and “inventive step” will not be taken into account as they relate to the method, but not to the composition.
Thus, in order to exclude the possible errors when registering an application for an invention for such complex subject matters as compositions and to take into account all necessary Requirements and Rules bearing in mind all changes made by the Order, which came into force on December 15, 2018, we would recommend the Applicants to seek help from the efficient specialists.
Moreover, in some moments ordinary citizens are not able to influence the process of theconsideration. This is especially true, when it comes about the speed of the consideration of theregistration application. According to the results of the decision made, such specialist will notonly outline clearly the possible prospects, but he will also give a number of recommendations.In addition to the fact that these specialists pass difficult qualification exams, they also have acertain work experience. And the knowledge of the peculiarities of the cooperation with thePatent Office is often a key to a successful outcome of the case.With respect to the advantages of carrying out business via the patentattorneys, it can be said that the patent attorney is an official, who is acting withinthe law ad who is responsible before Rospatent for his activities, the latterexercising control over these activities and has the right to impose punishment onthe patent attorney up to the exclusion from the Register. With this respect, theapplicant can count on the greater responsibility of the patent attorney as hisrepresentative, in comparison with any other person, even if the latter is connectedby an agreement with the applicant. Therefore, the patent attorney who isprofessionally engaged only in his activities should not lose his face, committing theviolations in a professional sphere, what threatens him with a loss of authority andwork. Such loss does not threaten to ordinary representatives. This does not mean,of course, that the qualification of other representatives is always lower than thequalification of a patent attorney, but the thing is just about the responsibility.With respect to other advantages (a qualification, experience, skills, etc.), itcan be said that most of the patent attorneys have come from the Rospatentsystem, what gives certain advantages due to the knowledge of the technology ofthe applications passing, the nuances of the correspondence, the ability to possessmore information, including about the practice of examination at the currentmoment. The patent attorney shall be certified for certain types of activities(possibly also without limitations) by passing the relevant qualification exams.Therefore, as a patent attorney he can act a representative “within thespecialization indicated in the Register of Patent Attorneys” (Article 4 of Law of theRussian Federation on Patent Attorneys No. 316-FZ of 30.12.09). At the same time,he signs all documents precisely as a patent attorney indicating his number in the
Register. With respect to the specialization over which the patent attorney has notbeen certified, he may act as a representative on a par with any other person,without indicating himself as a patent attorney. It should be noted that theexamination of Rospatent checks the powers of attorney and other documents withrespect to the specialization of the patent attorney upon the receipt and/orconsideration of the materials of the applications for the industrial property subjectmatters. Moreover, the examination has the right to request for these documents ifnecessary (for example, if the doubts about the authenticity of the documentsappear), if they have not been received with the materials of the applications,because the patent attorney is not obliged to submit the powers of attorney alongwith the applications, but he only has the right to indicate his details in them (hisfull name, the Register number, the address of the correspondence).Thus, by resorting to the services of a patent attorney, the applicant is safefrom a number of serious errors, which in some cases may lead to a negativedecision.
When making a decision on patenting such technical solution, as a method of doing business, theapplicant must take into account the following cases, which will clearly indicate that the methodof doing business cannot be patented:– The claimed invention should not deal with the use of the laws of nature;– If the business idea is abstract, that is notional, not related to a direct perception of the realworld, for example, such as mental processes, mathematical algorithms, scientific principles;– The invention must not contain scientific facts;– If the claims only present a problem to be solved;– If the general concept lacks a possibility of its implementation;– If the mechanism of implementation of the steps according to the claimed invention issubjective or cannot be perceived;– The invention must not be simply a presentation of the general concept.The examples of the general concepts can include:– The basic economic methods or theories (for example, hedging, insurance, financialtransactions, marketing);– The basic legal theories (agreements, the settlement of disputes, the legal rules);– The mathematical concepts (algorithms, spatial relationships, geometry);– The mental activities (the formation of judgments, observations, assessments or opinions);– the interpersonal interactions or relationships (conversations, rendezvous);– The pedagogic concepts (for example, memorization, repetition);– The human behavior (for example, exercises, wearing clothes, following the rules orinstructions);– Training in “How one should do business.”For better understanding of what can be protected as a method of doing business, we shallgive a patent of the USA as an example: US 8656364 B1, published on 18.02.2014. “System andmethod for enforcement of business rules using static analysis.” The method for enforcement ofbusiness rules in a computer programme using static analysis is protected by patent US 8656364B1. The method includes the preservation of multiple business rules corresponding to multiplebusiness processes representing the activity of the enterprise; the analysis of the representation ofthe business processes in a computer programme for creating a parse tree; the extraction of theexecution paths from the parse tree; the creation of the charts of the control flows and the chartsof the data flows from the extracted execution paths, in which the generated charts of the controlflows and the charts of the data flows sticking to one or more preserved business rules; followingthe generated charts of the control flows and the charts of the data flows; the use of the said one
or more preserved business rules to the generated charts of the control flows and the charts of thedata flows; and the message on whether any of the used rules has been violated.Therefore, the issue of patenting business ideas, so-called MDB (Methods of doingbusiness) is debatable in the USA itself, too. It is believed that patenting abstract ideas (whichare in many cases namely business methods) is the reason for the emergence of so-called patenttrolls, who patent these ideas and then turn to large corporations that use the business ideas todemand compensation. Bearing in mind that the process of patenting is quite expensive in theUSA, such “investment” of money should be considered as unproductive. In practice, it is extremely difficult to obtain a patent for a business method in the USA, ifthe attachment does not include a new exclusive algorithm. In the USPTO, there is a separatesearch department for the applications for business methods, and the applications undergo acomplex and a fairly deep enough examination process. If you follow the link to the USPTOwebsite, you can learn more about the peculiarities of the procedure for patenting businessmethods: https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/utility-patent/patent-business#step2
The answer to this question is that it is possible to arrange a public offer, according to the Civil Code. In this case, Rospatent in its bulletin publishes the information about the author of the invention and his readiness to conclude an alienation agreement with an interested individual or legal entity after the successful registration of a patent. Such public offer provides the applicant with a two-year exemption from paying the State Duties.
However, there are quite a lot of other even more effective methods of selling intellectual property, and currently the most popular methods of selling are the methods implemented through the Internet.
1. You can use the method of placing the advertisements of your technical solution on the Internet, through the social networks, the method of creating one’s own website or blog on YouTube. Having promoted the website or blog about Your technical solution, having told in detail about all its advantages and further prospects of its use in the presentation, it is easy enough to attract the attention of the representatives of large companies who are interested in acquiring innovative developments. They will contact You obligatory, if You leave links to Your online resource on forums, webpages of conferences and seminars on the relevant topic.
2. You can use the services for hosting free advertisements, which work with the purchase and sale of intellectual property results. As a rule, such websites are a database of ideas, technologies or products in different fields of technology. They are equipped with a convenient search system for potential buyers or investors. Usually, the most acceptable conditions for a long-term hosting the advertisement, while keeping it on the first lines in case of a request, requires an additional payment.
3. There is a large variety of different commercial organizations, which are involved in the implementation of the intellectual property results. You can sell a patent using the platforms specialized in the purchase and sale of ready-made businesses, commercial assets and start-ups. Such websites offer their services for the sale of rights to an invention, license or an investor search, and also here the interested investors can download the information about the patents and the patent holder and to buy a patent from the holder.
3. You can resort to the services of patent brokers. They will provide specialized assistance in preparing documents, developing a strategy for selling the “idea,” finding a buyer. They are trading platforms for intellectual property owners. By nature they are an electronic trading system created to conduct online auctions for the assignment of rights to subject matters of intellectual property. Placing the information about Your invention will allow you to assign the patent for a fee, the size of which will be determined by the results of trading in your lot. These websites allow the companies interested in purchasing or selling the rights to the inventions to get the information about the inventions the owners of which are ready to assign their rights. These resources are the link between patent holders and investors, they allow to shorten the path from the idea to the manufacture of goods. The purpose of their creation is to provide the information services for intellectual property owners, to reduce costs when promoting the developments. The patent owner receives a convenient tool to increase his profits from the assignment of the rights. You quote the price that initially suits you as a starting price. By putting a lot on auction, the owner can continue the search for potential buyers, informing them that the patent has been put on auction and that they can take part in it. The ideal strategy of the owner's behavior is to notify the competing companies on the market about his invention and on the fact, that it has been put on auction. For the indirect confirmation of the ownership of the patent at the registration, the owner must send a photo of the document (certificate) in a standard form confirming his right to this invention, indicate all necessary contact information, the description of the invention, the drawings, diagrams, photos, video of the workable specimens. You can also provide the information about the available certificates, awards, and attach a business plan for the investors and a professional evaluation of the intellectual property value, if any. Having placed a stake or won the tenders in the lot, the buyer informs the patent owner and the administration of the auction that he is ready to acquire the rights to this subject matter of intellectual property or to start the cooperation with the patent owner in implementing the development and he is ready to invest the corresponding amount of money. Further, the administration of the auction requests the confirmation of the size of the winner's stake, coordinates the scheme of the cooperation between the buyer and the patent owner, helps to conclude the transaction by signing an agreement under which one party grants to another party a complete exclusive right to the result of the intellectual activity that was of interest to him.
4. Another variant to declare to the patent owner about the desire to sell the invention is the possibility of addressing to full service inventive companies to accumulate and implement the inventions, which deal with the commercialization of ideas, the implementation of inventions, the attraction of investments, and which provide legal services. These companies deal with the search for technologies and inventions, the research of innovative projects and developments and with the search for investors. The company's specialists check the technological and commercial potential of the invention. The experts evaluate whether the implementation of the “idea” is real, whether it is necessary to create a new market for it or whether it will enter the existing one, give a primary evaluation and an economic justification, involve external consultants for a more detailed examination. When the conclusion is ready and there is an understanding that it is possible to work with the idea, the decision is made whether the company will invest its own money. If currently the invention is not interesting, then the agreement for attracting investments is concluded with the inventor. This is an engagement agreement, which includes interest to be charged for the search services: it is paid upon the fact of the sale or implementation of the technology. The search for investors is carried out by placing the information in the catalog of inventions on the company's website or by direct contacts.
5. In the nearest future, the public Internet site for inventors seeking for investors may appear. In Russia, the creation of an intellectual property exchange, which would allow joining a pool of inventors’ proposals and a pool of investors on one Internet site, portal has already been being discussed in one form or another for some time. However, this idea is still being worked out, especially within the framework of the digital economy development. Earlier, Rospatent has signed an agreement with the blockchain platform for intellectual property management called IPChain on the transfer of a database of right holders and authors to a new technology that would speed up the process of registering the rights due to a more effective interaction between authors, rights holders, individuals and legal entities. The IPChain platform users will have access to the patent analytics, state registration and intellectual property transactions.
Thus, the inventors have the opportunity to make money on their “ideas,” but in order to heighten the interest of potential inventors to Your invention, it is necessary not only to obtain a patent, but also to manufacture a model, prototype or mock-up, which can be touched and shown to the interested person, to prepare a business plan and presentation of an economically calculated and elaborate technical solution, ready for the implementation with the help of the Internet resources.
When preparing responses to the requests for substantive examination to the Federal Institute for Intellectual Property (FIIP), the applicant must comply with certain rules.
1. It is necessary to comply strictly with the deadline for the response. As a rule, it takes not more than 2-3 months to prepare the response. This is enough to think over the arguments and to collect the necessary additional information.
2. It is necessary to prepare complete and well-reasoned answers to the FIIP requests. The more confirming arguments and documents you will send, the better it will be for you. Submitting unmotivated responses, which are not confirmed by the documents, often leads to the refusal of a patent.
3. One should follow the requirements to the execution of documents in the FIIP.
4. Always monitor obtaining the documents in the FIIP. It is better to transfer the responses to the requests of the Institute personally. If you use postal services, it is better to send the letters by registered mail with a delivery notification.
Sometimes the FIIP requests come late or do not come at all, and the applicant is deprived of the opportunity to prepare a response in time. It is possible to find a way out from such situations. If the FIIP makes a negative decision on the application, it can be appealed proving that it is no a fault of the applicant, that he could not have responded. In this case, for example, you can attach the envelope of the late FIIP letter with the date of obtaining it.
Let us consider the peculiarities of the responses to the requests, objections to the refusals of a patent. When you obtain a request, you first need to find out its purpose. If the purpose of the request is to clarify the materials, to adjust the claims, etc., then in the responses it is better to repeat all questions of the examination and to give consistent responses to them. If there are comments in the examination request to which you can object, then at first it is desirable to agree partially with the comments, and then to set forth your version. When in the request there are doubts about the opportunity of implementing a device or method, the additional test reports, photographs, extracts from the reports, etc. can be attached. Also, if there is such an opportunity, it is possible to present the subject matter of the invention to the examination and to demonstrate its efficiency. If the request is made for the purpose of rejecting due to the novelty (this is often accompanied by a large number of the opposed materials), but it is necessary to obtain a patent. In this case, it is possible to remain stubbornness with the sufficient argumentation, it is permissible to transfer all characteristics presented earlier in the description into the claims, the dependent claims – into the independent ones, to find new positive effects (technical results). However, here it is important not to overdo it, in order not to spoil the further relationship with the examination. If the request is made for the purpose of rejecting the non-compliance of the technical solution with the patentability criterion “industrial applicability” connected with the applicant's inattention, then in this case, the struggle for obtaining a patent is also possible. For example, the applicant has forgotten to indicate the connection between the control unit and the drive, and the examination considers such device to be inoperative. In this case, it is necessary to try to find the justification of this connection in the text and to try to restore it in the drawings. In case of emergency, it is possible to respond that “the control unit contains a monitor, which shows at what moment of time the operator must turn on the drive manually.” There are requests, where the examination indicates to a violation of the unity of the invention and pushes for the re-registration of the applications. To do so is not always reasonable. The fact is that it is almost always possible to make the conversion of the technical results by building up logical chains. For example, increasing the accuracy of the microscope measurement can lead to an enhancement of functionality due to the ability to measure a larger range of objects. Increasing the reliability of the microscope allows it to be used for operating under different conditions of temperature, vibration, etc., which is also an enhancement of functionality.
In addition to the request, the applicant may also be invited to participate in the expert meeting. The expert meeting is mainly connected with the clarification of the application materials and the acceleration of the paperwork connected with it. In this situation, the collective visit of this event by the technicians who are well-prepared to respond to anticipated questions and with the maximum number of illustrating materials, photos, test protocols can be recommend. It is possible to prepare a presentation with video-slides, which clearly demonstrate the summary of the invention or utility model, which will help to persuade the examination in the patentability of Your technical solution.
Summing up the above, in case of obtaining a request for substantive examination, the applicant should not give up immediately and think that his solution cannot be patented, one should always fight to the end. If the examination has opposed the sources of information discrediting Your technical solution for “the novelty” or “the inventive level”, do not be too lazy to conduct their detailed comparative analysis with Your invention and in case of revealing significant differences and shortcomings, do not hesitate to criticize actively the presented opposing sources. With the subsequent correction of the claims, if you include the clarifications from the description in them, You will have all chances to overcome the request and, as a consequence, to receive a positive decision. If, for any reason, You can not conduct this comparative analysis by yourself as well as to prepare a well-reasoned response to the examination request, we are always ready to provide You with our qualified assistance.
For the better understanding what the patent landscape is for, let us consider a real-world example. The entrepreneur in the midst of the development of his business in massaging devices manufacture has filed applications for a discovery in the Russian Federation and Europe. But he did not take into account at all that he intended to sell his products in other countries as well. His massaging device became very popular in the USA. Due to the massive demand, the businessman’s competitors with the similar offers started to appear on the market rapidly. Thus, due to lack of the entrepreneur's patent in the USA, the competitors quickly ousted him and captured a huge part of the market.
What mistake has the entrepreneur made?
Firstly, if it is difficult for the applicant to decide in which countries to obtain a patent for an invention, then he should not file an application to one or two countries. If the applicant is a citizen of the Russian Federation, at first he should file an application for a discovery or a utility model in the Russian Federation, and then he should file an international application under the PCT, that will provide an opportunity to transfer it to any countries chosen from 152 countries, that have concluded the Patent Cooperation Treaty, which not only helps the applicants to obtain patents for their technical solutions in many countries, but also encourages the patent offices to make decisions on the grant of a patent, and facilitates the access of the public to the technical information related to the inventions. Filing one international patent application under the PCT, the applicant obtains not 12 months of a convention priority, but 30-31 months (depending on the country) to make a decision on the countries of interest to him for further patenting.
Secondly, in order to make the right decision, it is necessary to study and describe the patent situation for a specific technology in a certain country, a certain region or worldwide, that is, to execute a “patent landscape.”
The patent landscape starts with the search for the patent information about the state of art in relation to the technology of interest to the researcher, based on suitable patent databases. At the next stage, the results of the study shall be analyzed to resolve some specific issues, for example, to identify the information about “Who and what is doing? What and where is being registered?” or in the field of development (innovative trends, a range of solutions for some technical problem, a joint authorship). The necessary component of any report about the patent landscape is a visualization of its results, contributing to their understanding, as well as certain conclusions or recommendations based on the material obtained during the search for the patent information and its analysis.
Thus, the creation of a patent landscape and a patent research will allow the entrepreneurs to orient themselves correctly in their development and innovative technical solutions. That is, to understand where the market's greatest activity is, where its monopolization, and where there are no patents at all, what will help them to make the right choice in future.
The visualization of the patent landscape provides a visual solution to such issues as:
1. What companies own the patents in the sphere of the company's interests?
2. Which of them has the greatest number of patents?
3. Are the defined companies active? In what direction is this activity developing?
4. Are there any cooperative relations between the defined companies?
5. What technological areas are not covered by the competitors?
6. What adjustments should be made to one’s own business development strategy?
7. Do new players appear on the market and what is their market potential?
The information obtained with the help of the patent landscape can be used in making strategic solutions:
1. What new markets is it advisable for the company to enter, and what new markets is it better to avoid?
2. Where is it advisable to invest the limited resources on the works directed on obtaining the new knowledge and the practical application at the creation of a new article or technology to?
3. What companies can contribute to the protection and improvement of the patent portfolio of the company and the business as a whole?
4. Which companies from the point of view of improving the patent portfolio are not advisable to purchase?
5. What researchers or research groups may be of interest for the cooperation?
Considering the above, the patent landscape is a necessary tool for minimizing risks and identifying favorable opportunities for further business development. It allows avoiding the litigation, to prevent the invasion of competitors into the company's sales markets and to activate the use of one’s own intangible assets, to prevent the costs for the scientific research in an unpromising competitive environment; to seek the partners capable of strengthening this company’s positions in the field of use of the intellectual property.
The patent landscape can be executed both on your one’s own and with the involvement of the relevant qualified patent companies. However, it is rather difficult to do this on one’s own, because it is impossible to automate the patent landscape completely, although at present there is a lot of software development in this area, for example, “Thomson Innovation”. The patent landscape requires urgently the participation of an expert, since at the stage of the data selection there are always difficulties with the languages of the patents, the used terminology, in addition, the information systems do not allow making the patent search in all known databases.
Drawing up reports on the patent landscapes in specialized areas in the innovation process becomes an integral part of the entire life cycle of the innovation. With this approach, the intellectual property is considered to be not only as a means of protecting against competitive claims, but also as a source of new knowledge for working out the marketing strategies for the developing business.
Initially, the pharmaceutical company, which is receiving a patent for a new drug, spends a lot of money and years conducting various studies in chemical and biological laboratories, testing the claimed medication with the aim to prove its effectiveness in treating a particular disease and the absence of serious side effects.
Having received the data of the conducted researches, the developers of a new drug face the question of what exactly from the result of their work can and should be patented as an invention. Under the legislation of the Russian Federation, the patent protection of medications is possible by obtaining a patent for:
– a chemical compound (formula);
– a method of obtaining a chemical compound (substance);
– a pharmaceutical composition based on a chemical compound;
– a method of using a chemical compound or a pharmaceutical composition;
– a method of using a chemical compound or a pharmaceutical composition.
In the majority of cases the applicants prefer to combine several subject-matters of patenting, for example, by claiming both a pharmaceutical composition and a method for its preparation. However, it should be noted that the patent for a chemical compound still provides the largest scope of the protection, since the subject-matter of the protection according to it is the general structural formula of a new chemical compound, wherein it can cover several substances at once. But, it should be noted that in this case the formula should not be too wide.
For a better understanding, let us consider the following example. Patent of the Japanese applicant No. 843695 is issued with the following claims: “... the composition containing an active principle based on a diphenyl ether derivative and an additive selected from the group consisting of a solvent, an emulsifier, a dispersant, wherein in order to enhance the activity and selectivity of the action it contains as a diphenyl ether derivative the compounds of the general formula
(a total of 66 structures at different R and X) in the amount of 0.1-99%.
As you can see, the indication about additives and the amount of the active principle are only a tribute to the form (composition). The additives are indicated in an unspecific manner and may be any substances, that is, there are no restrictions, and therefore it is not essential what substances have been chosen as additives. The amount of an active principle is also practically unlimited and varies from the pure diphenyl ether (99%) to the content which in chemistry is called impurity. Such claims protect the composition very broadly, but, nevertheless, the scope of the protection flowing from them is inadequate to the scope of a direct absolute protection of the chemical compound and is almost equivalent to a direct protection limited by the purpose. Thus, having such broad claims, on the one hand it is easy to prove the fact of the violation of the patent for a chemical compound, on the other hand, it is simply to hold the patent invalid (to cancel it).
Therefore, the developers of new drugs, first of all, seek to obtain a patent for a chemical compound, considering the rest methods of patenting as auxiliary ones.
The patent for an invention for a medication may be granted a protection for the term of up to 25 years. This is because for a medication there is a possibility of extending the term of patent (the standard term of patent is 20 years), in case if its subsequent clinical studies and the state registration are delayed for the term of more than five years. In such cases, the term of patent may be extended for the period that has elapsed before the day of obtaining the authorization to use the invention minus five years.
After the expiration of the term of patent, the invention becomes the public domain, and here the developer faces new difficulties, as any pharmaceutical company can produce legally an analogue of the drug, give it its name and set its price.
At the same time, it will not have to allocate funds for all of the above. The ready technologies, advertising, etc. give the possibility to produce the drug without significant costs. At the same time the drug form can also be different: tablets, gels, ointments, etc., but they all have in their composition the same active substance. Thus, these drugs-analogues, otherwise called generic drugs, having a lower cost, constitute an undeniable competition to initially patented originals. Examples include the well-known original patented drugs “No-Spa” and “Mezym” and their analogues – generic drugs “Drotaverine” and “Pancreatin”, respectively.
In the Russian Federation there is a state register of drugs, which is kept by the Ministry of Health. But it does not contain an indication to the fact that the registered drug is under the patent protection. A number of specialists believe that it is also necessary to introduce a special register of patented drugs, so that it would be clear which drug-analogues have been released or are being prepared for the release to the market illegally.
But in fact such a register already exists. The Federal Service for Intellectual Property (Rospatent) has established national registries, which include all subject-matters of the intellectual property. These registers are regularly updated. After the proceedings on the examination of the application have been completed and the positive decision on granting a patent has been obtained, Rospatent files each patent in the appropriate register. And further any interested department, the Ministry of Health or others can send a request there and get the information, whether the drug is patented or not. The register is also available for any citizen.
A very strange situation has developed in Russia regarding a BAA. The status of a BAA to food has become ambiguous: they have begun to combine in one product two essentially different products simultaneously – a food product and a medication. This situation required additional measures on the state regulation. The hygienic requirements for the safety and nutritional value of food products have been put into operation. The examination practice has also revealed a similar problem. Notably, when filing an application for a BAA in a number of cases in the claims the applicants along with the nutritional purpose (a biologically active additive to food) also indicate the therapeutic purpose (the specific name of the disease which the BAA treats cures is given). It should be noted that the lack of definite classification headings for a BAA to food, the terminological uncertainty, the contradictory information about the status of a BAA complicate the understanding and definition of the purpose of such inventions. As a result of the conducted researches, the concept of the consideration of the applications with a “double” purpose was offered. In accordance with it, the standard letter shall be sent to the applicant, stating that the combination of two different purposes of the subject-matter (a food product and a medication) in one application indicates a clear violation of the unity of the invention and the impossibility of granting one patent for such an invention.
In order to eliminate the violation of the unity of the invention, the applicant is offered to inform which of the subject-matters should be considered within the framework of this application and to clarify in the claims one of the purposes of the offered product: a BAA to food or a drug. When considering the subject-matter as a BAA to food, it is offered to exclude the information about the therapeutic effect from the application documents. In this case, the invention will be classified according to another class of the International Patent Classification.
Thus, the developer filing applications for the invention in the field of medicine and pharmaceuticals faces a lot of complex issues caused by the specifics of the subject-matters and the requirements of the legislation, therefore when patenting the inventions in this field we recommend to apply for the competent and qualified assistance to patent attorneys.
At the beginning of the next year the official approved list of the best inventions is published on the webpage of FIIP, where anyone who feels like it can get familiar with them in a free access. The best inventions are chosen from the different areas of engineering such as: metallurgical industry, mining engineering and machine engineering, construction, transport, food industry and agriculture, organic, non-organic and polymeric compounds, pharmaceutics, medicine and medical engineering, electric engineering and communication, computer engineering, measurement technology etc.
Based on the activities' results, FIIP counted, by 2016, about 59,000 registered applications among which there are about 42,000 pieces of applications for inventions, about 11,000 pieces - for utility models, about 5,000 pieces - for design inventions, the rest ones - are the international applications. Thereby the quantity of the patents issued to the domestic applicants in 2016 was very close to the quantity of the positive decisions rendered (the positive decisions are on the examination stage (the native applicants) – 21,054 pieces, the quantity of the issued patents – is 21,020 pcs.). The quantity of the patents issued for the inventions in 2016 decreased by 3.4% compared to 2015.
So, from among about 42,000 filed applications, the positive decisions have been taken and patents for inventions have been issued on 50% of the applications, and only 100 of them have been recognized to be the best ones.
It is worth pointing out that according to the data of FIIP, as at 1 January 2017, 1816 active patent attorneys were registered in the Register of the patent attorneys of the Russian Federation.
Premised on the given statistics, company of patent attorneys "Zuykov & partners" is proud that being an official representative of the Applicants mentioned below, it has made its contribution to the intellectual activity development in the territory of the Russian Federation.
They comprise the following inventions that have become a part of 100 best ones:
- RU 2571551 "Specific concomitant therapy of malignant tumors with cytostatic agent and with its modifier" (The patent holder: Peptek CJSC). The invention relates to medicine, namely to oncology, and can be used for treatment of malignant hematological diseases or melanoma. The method makes it possible to enhance the patient outcomes due to synergic effect of the immune modifier and cytostatic agent in terms of the therapeutic dose reduction of cytostatic agents without reduction of their antitumoral effectiveness.
- RU2585111 "Application of male bee brood with the calcium compounds for curing arthritides and arthroses" (The patent holder: INFOKHIM LLC). The invention relates to pharmaceutical industry, namely to a drug for curing arthritides and arthroses. Application of male bee brood with the calcium compounds taken in proportion from 1:10 to 10:1 for the product compounding for acceleration of curing arthritides and arthroses. The product described above makes it possible to accelerate the treatment of arthritides and arthroses, to enhance effectiveness of such treatment in terms of simultaneous risk elimination of hyper-calcemic conditions incidence.
Further this article will represent several brightest and most interesting inventions that have formed a part of one hundred best Russian inventions in 2016. Indeed all the best things that were acquired in 2016 — are technologies and goods of the future that you and we together will be able to acquire or apply on ourselves very soon now!
So, the following inventions have formed a part of the rating of the most interesting inventions of RF of 2016, according to the version of company "Zuykov & partners":
The first place.
RU 2578086 "The method of ophthalmo-surgical operations conducting with use of an autograft " (The patent holder: Khurai Aslan Ramazanovich).
The invention relates to medicine, namely to ophthalmology. The method includes an implant site execution and implantation of at least one transplant therein. The material used for a transplant manufacture is a nail plate fragment of a patient, that is simulated according to a form of an implant site, and after sterilization, before implantation, a transplant is matured in dry atmosphere. The method ensures adaptation of a transplant to a form of an implant site as a result of natural swelling and use of an autograft that is similar, as to its chemical composition and physical properties, to the tissues of an eye.
The second place.
RU 2587629 "Reassortant influenza strain rn9/13-human a(h6n9) for antibodies determination to neuraminidase in influenzal infection and vaccination" (The patent holder: FSBSI Institute of experimental medicine).
The invention relates to the area of biotechnology, virus science and medicine. The diagnostic influenza strain RN9/13-human A(H6N9) is derived by way of apathogenic virus interbreeding of bird influenza A/Larus argentatus/Sarma/51 с/06(H6N1) with cold adaptive vaccinating strain А/17/Anui/2013/61(H7N9) on basis of attenuation donor А/Leningrad/134/17/57(H2N2). The strain contains neuraminidase of influenza virus of N9 sub-type A/Anui/1/2013(H7N9) and bird influenza hemagglutinin А/Larus argentatus /Sarma/51с/06(H6N1). Strain RN9/13-human A(H6N9) reproduces actively in developing hen embryos under optimal temperature of 33°C, what makes it possible to accumulate the virus material for the subsequent purification and concentration. Strain RN9/13-human A(H6N9) can be used for antibodies detection to neuraminidase of N9 influenza virus in blood serums with use of solid state reaction of inhibition of the neuraminidase activity and the reaction of post-adsorptive micro neutralization in the cell culture MDCK.
The third place.
RU 2577132 "Immunogenic composition on basis of synthetically generated peptides that copy the actual determinants gp120 HIV1" (The patent holder: FSBI State Scientific Center "Immunology Institute" of the Federal Medico-Biological Agency of Russia).
The invention relates to medicine, namely to immunology and can be used for vaccines creation against HIV/AIDS. For this goal, the immunogenic composition contains the synthetically generated peptides repeating the consensus sequence of group M V1-, V2-, V3 - loops and V3 - loop of the Russian isolated compound RU A022a2 envelope-protein gp120 HIV1, as well as immunoadjuvant or dendritic cells loaded with peptides. This invention use consists in an immunogenic composition creation eliciting a response to each antigen of a composition composed on basis of synthetically generated peptides repeating the actual antigenic determinants of HIV.
The fourth place.
RU 2580251 "Mobile wave electric power plant" (The patent holder: Federal Autonomous Educational Establishment for Higher Vocational Education "Ural Federal University named after the first president of Russia B.N. Eltsin").
The invention relates to hydraulic power engineering and can be used for electric power generation from waves movement in big water reservoirs, seas or oceans. A mobile wave electric power plant contains a floating platform with a wave receiving chamber placed thereon, connected with an air-duct and air turbine connected to an electrical generator. The wave receiving chamber is made in form of v-shaped tunnel extended along the wave front with lateral walls, inclined bottom plane on its entrance and with a spring offset valve on the exit of the tunnel's narrow part connected with air-duct connected to the compressed air reservoir. The reservoir exit is connected with the air turbine. The platform contains the cavities filled in with water for adjustable buoyancy creation. The platform is connected with the pole by means of the flexible ropes. The invention is aimed at creating a mobile, simple in structure device that uses maximally the energy of waves.
The fifth place.
RU 2591134 "The potato-planting machine" (The patent holder: FSBEI HPE Yaroslavl State Academy of Agricultural Sciences).
The invention relates to the devices in the area of the agricultural engineering industry meant for planting potato. The potato-planting machine has low resistance to coulters moving in soil and minimal bruising of potato tubers when planting them. The technical result consists in the fact that use of the offered potato-planting machine will make it possible to reduce energy costs for planting potato, to increase its yield due to bruising reduction of potato tubers in planting, and to simplify the machine operators' labor.
Finally, it is worth pointing out that Russia has improved its positions in the Global innovative index. Based on the results of a comparative analysis of the innovative systems of 128 countries, Russia has ascended by five positions as compared to 2015, in the Global innovative index-2016, having taken the 43rd place. The rating's leaders, the same as a year before, are Switzerland, Sweden, the Great Britain, the USA and Finland
In this article we will give you several pieces of advice how to address correctly the choice of a good faith and professional agency engaged in the field of the intellectual property protection and how to protect oneself against such situations.
Naturally any person or company in person of a group of the researchers-developers of an innovative technical solution (hereinafter an inventor), if he/she is a citizen of the Russian Federation (and in case it is a legal entity, then it shall be registered in the RF territory), can make a description on its own, an abstract and a claim or utility model, fill in an application, pay fees and dispatch a batch of documents to the Federal Institute for Industrial Property. But as a rule, the inventors who are not acquainted with the requirements of the Russian patent laws and those who don't have experience in applications filing often come across repeated requests for a search as to form and substantive examination, even worse with recall of an application or a rejection of patent. That's why, to render assistance in preparing materials of an application, preparing answers to requests of an examination, prolongation of periods of consideration, fees payment, in the subsequent annual support of the patents, there exist different patent bureaus, agencies and other legal entities that render the services in the field of the intellectual property protection. A plenty of the offers from the patent officials and patent attorneys for such services rendering privately also exists in the market. However we don't recommend you to address to "private traders", despite low prices of the offered services because in this case the risk of deception or poor-quality works performance is increased many times. If you none the less have made up your mind to it, then verify obligatorily if this person actually has an official status of a patent attorney. And one can make it on the webpage of the Federal Institute for Industrial Property.
And how not to make a mistake in choice of a representative in terms of such plenty of the offers and a wide range of the prices for the services?!
Firstly, when choosing a patent company it is necessary to pay attention to a date of its foundation, numerical strength, charter capital and other data on the state registration of the legal entities that are in an open access on net Internet (for example, on the webpage: https://egrul.nalog.ru/). A serious company that is engaged in the issues of the intellectual property shall exist in the market at least 5 years and have at least 15-20 employees on a full-time basis, including with a status of patent attorneys in different technical fields (medicine, mechanics, electric engineering etc.).
Secondly, it is necessary to get acquainted attentively with the webpage of this company paying attention to the professional experience in the field of registration and protection of the intellectual property (trademarks, patents for inventions, utility models, design inventions, the author's and related rights, namely the fact what large customers a company works with, and what number of the Russian and international applications it filed within a year.
Thirdly, to seek the information about the company participation in international exhibitions, conferences and seminars. It is an indicator that a company is developing actively and aspires to be in touch with all the world pieces of news and events in its area of activity.
Fourthly, read feedback on this company on the net Internet. If a company was found to have participated in fraudulent schemes, you will for sure come across this information. On the webpages of the patent offices of different countries one can come across publications warning of dishonest persons who are unfair and squeeze money. For example, clicking the link: http://www.wipo.int/pct/en/warning/pct_warning.html, you will be able to see such warning concerning company IP Direct, that offers to execute an international patent which does not exist in practice.
Besides that, there exist ratings among the Russian companies in the field of protection and registration of the intellectual property (for example, the rating on the version Pravo.ru). Having studied this rating one can assess what companies are the best ones in this field and address namely to them.
When you have determined several companies for yourself, specify obligatorily during a meeting or a phone call, beside a cost of the offered services and terms of their fulfillment, whether they conclude a confidentiality agreement with an applicant, i.e. a contract entered into two parties with the goal of a mutual change of materials, knowledge or other information with the access limitation to it to the third persons. This type of the agreements is needed for prevention of any confidential information leakage: from a commercial secret to personal data. The goal of such contract is - to impose a duty on a party that is guilty of the confidentiality disclosure, for losses compensation to a party not in fault. In case of disclosure an agreement is a legal basis for a suit on damages recovery. If a company waives signing this agreement, don't hesitate to leave it.
A serious and professional legal company, first and foremost, will offer you a confidentiality agreement signing and won't damage its reputation with affaires such like those described at the beginning of this article.
If you live in a small inhabited city in which there are no legal companies that are engaged in the intellectual property protection, it is not a cause to put an end to your idea. In terms of modern development of communication it does not matter at all what city you are from: Vladivostok, Moscow or Kaliningrad, all the issues are solved very simply using E-mail and phone calls. That's why it is better to address to a company that is trusted and that has gained the positive reputation in Saint Petersburg or Moscow, than to be bitten by swindlers 100 m far from house.
We do hope very much that our pieces of advice will help you to make a correct choice that will obligatorily bring a desired result!
Формальные требования, предъявляемые к выделенным заявкам в России совпадают с требованиями Европейского патентного ведомства (ЕПВ):
- она должна быть подана тем же самым заявителем, что и основная заявка;
- она должна быть подана непосредственно в Ведомство;
- она должна быть представлена на том же самом языке, что и первоначальная заявка;
- должно быть представлено заявление, что заявка является выделенной;
- должна быть указана основная заявка.
Однако, различия проявляются в условиях, временных рамках, в которых выделенные заявки могут быть поданы и в требованиях к их содержанию.
Считается, что самый простой подход, дающий заявителю наиболее широкие возможности, предусматривается российским патентным законодательством. Согласно ему, выделенная заявка может быть подана в течение всего срока рассмотрения первоначальной заявки до тех пор, пока патент по первоначальной заявке не зарегистрирован в российском патентном ведомстве или пока не исчерпана возможность обжалования решения об отказе в выдаче по такой заявке патента. Это достаточно большой промежуток времени, если учесть, что срок ожидания регистрации и опубликования патента Роспатентом составляет на сегодня как минимум 3 месяца, считая со дня уплаты пошлины за выдачу и публикацию, а срок обжалования решения об отказе в выдаче патента составляет 6 месяцев со дня его получения. Согласно российскому законодательству, выделенная заявка может быть подана в любой момент по выбору заявителя и в отношении любого содержащегося в первоначальной заявке изобретения. Вместе с тем, ни один из независимых пунктов формулы по первоначальной заявке, по которой было вынесено решение о выдаче патента, не должен буквально совпадать с каким-либо из независимых пунктов формулы по выделенной заявке, по которой также может быть получен патент, иначе оба этих патента будут признаны недействительными в части совпадающих независимых пунктов формул изобретения.
В России отсутствует жёсткое правовое регулирование выделенных заявок. В отличие от европейского патентного права, российская выделенная заявка может содержать новый предмет изобретения, отсутствовавший в первоначальной заявке. Но следует учесть, что приоритет в части нового предмета изобретения будет установлен по дате подачи выделенной, а не первоначальной заявки. Таким образом, выделенная заявка может быть использована в тех случаях, когда разработка объекта патентования продолжается дольше 12 месяцев, а первоначальная концепция изобретения дополняется новыми признаками и вариантами.
Подавая выделенные заявки, заявитель может по своему усмотрению регулировать срок рассмотрения заявок, например, чтобы иметь возможность получения патента с формулой изобретения, специально адаптированной к пресечению конкретных случаев использования идей, раскрытых в описании изобретения.
Кроме того, как это ни парадоксально, подача выделенных заявок позволяет объединить несколько первоначальных заявок в одну заявку или получить из одной первоначальной заявки несколько самостоятельных, в случае, если изобретение не соответствует требованию единства.
Подача выделенной заявки позволяет получить патент в отношении тех вариантов изобретения, которые не вызывают возражений экспертизы, а в отношении «забракованных» вариантов — продолжить делопроизводство в рамках самостоятельной заявки.
Российское патентное право не предусматривает возможности отказаться от публикации сведений о заявке. Однако, такая возможность на практике может быть обеспечена путем своевременной (до завершения технической подготовки к публикации) подачи выделенных заявок одновременно с отзывом первоначальной заявки. Такая операция может быть повторена неограниченное количество раз, что фактически позволяет долгое время скрывать от третьих лиц информацию о возможном получении патента. Однако, подобная практика в России не получила широкого распространения по причине отсутствия публикации заявки «по факту», а также потому, что заявка публикуется в официальном бюллетене не полностью.
В Европе выделенная заявка должна быть подана в течение того времени, когда основная заявка еще находится на рассмотрении (это означает, что основная заявка ни отзывалась, ни отклонялась, ни считалась отозванной (аннулированной) и также, что к моменту подачи выделенной заявки патент на основную заявку не был выдан) и до окончания срока в 24 месяца, который рассчитывается с даты заключения экспертизы по основной заявке. Если основная заявка аннулирована, но позднее путем продолжения экспертизы или восстановления в прежнем состоянии (которое позволяет отмену аннулирования, если выполнены определенные требования) возобновляется, то в таком случае подача выделенной заявки еще возможна. Если основная заявка была уже отклонена при подаче выделенной заявки, а отклонение заявки было позднее опротестовано, то подача выделенной заявки также возможна.
Дата, с которой начинается срок в 24 месяца для подачи выделенной заявки, представляет собой более позднюю дату из двух указанных далее: первое заключение экспертизы в отношении основной заявки или заключение экспертизы в отношении основной заявки, в котором в первый раз было подано возражение против отсутствия единства. При этом заключение по поиску и заключения согласно PCT не учитываются для расчета обоих сроков.
Первый срок является сроком для «добровольного выделения», поскольку он не связан с возражением против отсутствия единства. Если в первом заключении на стадии экспертизы было подано возражение против отсутствия единства, то в таком случае два срока начинаются и заканчиваются в один и тот же момент времени.
Второй срок действителен для «обязательного выделения». Он должен предоставляться заявителю вследствие возражения против отсутствия единства. Заявитель должен исключить предмет из основной заявки в срок 24 месяца путем подачи выделенной заявки. Это также может повлечь за собой то, что срок для добровольного выделения заканчивается (вследствие чего больше нельзя подавать выделенную заявку), а затем в вынесенном заключении подается возражение против отсутствия единства, вследствие чего опять возможна подача выделенной заявки.
Выделенная заявка может быть подана лишь на предмет, не выходящий за рамки содержания заявки в её первоначальной редакции; если это требование соблюдено, выделенная заявка считается поданной на дату подачи первоначальной заявки и пользуется ее правом на приоритет.
В Европе изменять пункты формулы изобретения так свободно как в России нельзя. Более того, выделенная заявка дает возможность испрашивать охрану для предмета, который содержится только в описании основной заявки и не может быть включен в ее формулу. Если ЕПВ устанавливает, что это требование не выполняется, то вызвавший возражение предмет должен быть изъят из выделенной заявки, или же она отклоняется.
Если Вы самостоятельно не можете решиться на подачу выделенной заявки и у Вас есть сомнения, как правильно составить в этом случае формулу изобретения, лучше обратиться к специалистам в области интеллектуальной собственности, которые смогут подготовить выделенную заявку наиболее компетентно и эффективно, независимо от того, на какой национальной фазе находится первоначальная заявка: в России, странах Европы или любых других странах.
Под научной теорией, понимается наиболее развитая форма организации научного знания, дающая целостное представление о закономерностях и существенных связях изучаемой области действительности.
Изобретение же это результат интеллектуальной деятельности человека в любой области техники - это технологическое (техническое) решение, которое отвечает условиям патентоспособности (новизне, изобретательскому уровню и промышленной применимости). Изобретение должно быть воплощенным в форме, что предполагает возможность установления факта использования изобретения. Только в этом случае права, предоставляемые патентообладателю Законом, могут быть реализованы.
Научные открытия и изобретения ускорили процесс развития науки и техники, дав факты, подтверждающие или опровергающие теории.
В России авторство на научное открытие законом не охраняется (Статья 1259 ГК РФ). Во многих странах осуществлена государственная система выявления, централизованной регистрации научных открытий и закрепления авторского и государственного приоритета. Эта система создаёт благоприятные условия для более широкого использования научного открытия, стимулирует заинтересованность учёных в фундаментальных научных исследованиях, развитии научного творчества. Количество сделанных и эффективно используемых научных открытий и изобретений — один из основных показателей при оценке деятельности научно-исследовательских организаций.
Если человек принимает решение, запатентовать свою идею, то он обязательно должен удостовериться, попадает ли эта идея под понятие «Изобретение».
В качестве изобретения регистрируется техническое решение, т.е. техническое воплощение какой-либо идеи.
Патентом на изобретение можно защитить:
1. Способ (технологию), т.е. процесс осуществления действий над материальным объектом с помощью материальных средств и ему присущи такие признаки, как наличие действий или совокупности действий, порядок выполнения действий во времени (последовательно, одновременно, в различных сочетаниях и т.п.), условия осуществления действий, режим, использование веществ (исходного сырья, реагентов, катализаторов и т.д.), устройств (приспособлений, инструментов, оборудования и т.д.), штаммов микроорганизмов, линий клеток растений или животных.
2. Продукт, в частности устройство (отдельный агрегат, изделие, систему), вещество (состав, композицию) и др.
3. Использование известного способа или продукта по новому назначению.
К устройству относятся такие признаки как: наличие конструктивного элемента; наличие связи между элементами; взаимное расположение элементов; форма выполнения элемента или устройства в целом, в частности, геометрическая форма; форма выполнения связи между элементами; параметры и другие характеристики элементов и их взаимосвязь; материал, из которого выполнен элемент или устройство в целом, за исключением признаков, характеризующих вещество как самостоятельный вид продукта, не являющегося устройством; среда, выполняющая функцию элемента.
К веществам относятся, в частности: химические соединения, в том числе нуклеиновые кислоты и белки, композиции (составы, смеси), продукты ядерного превращения. Для веществ-композиций характерны такие признаки, как качественный и количественный состав, структура ингредиентов и композиции в целом.
К штаммам микроорганизмов относятся, в частности, штаммы бактерий, вирусов, бактериофагов, микроводорослей, микроскопических грибов, консорциумы микроорганизмов.
К линиям клеток растений или животных относятся линии клеток тканей, органов растений или животных, консорциумы соответствующих клеток.
К генетическим конструкциям относятся, в частности, плазмиды, векторы, стабильно трансформированные клетки микроорганизмов, растений и животных, трансгенные растения и животные.
Статьей 1350 ГК РФ «Условия патентоспособности изобретения» предусмотрена необходимость проверки того, не относится ли заявленный в качестве изобретения объект к объектам, исключенным из охраны в качестве изобретений. Кроме научных открытий, теорий и математических методов также не патентуются:
- решения, описывающие только внешний вид объекта, дизайн и т.д. (защищаются патентом на промышленный образец);
- правила игр, методы интеллектуальной и хозяйственными деятельности, бизнес-процессы (могут быть объектами авторских прав);
- компьютерные программы, программы для ЭВМ (на них выдаются соответствующие свидетельства),
- решения, описывающие только представление информации, например, способ рекламы (могут быть объектами авторских прав);
- сорта растений, породы животных и биологические способы их получения, за исключением микробиологических способов (данные объекты депонируются в соответствующих организациях);
- способы клонирования человека, использование человеческих эмбрионов в промышленных и коммерческих целях;
- решения, противоречащие принципам гуманности и морали.
Так как признание научных достижений открытиями, закрепление авторства и приоритета, выдача дипломов имеют большое значение для ученых и специалистов, использующих научные результаты в практических разработках, то результат своего интеллектуального труда любой человек может зарегистрировать в Международной академии авторов научных открытий и изобретений (МААНОиИ) под научно-методическим руководством Президиума Российской Академии Естественных Наук (РАЕН).
Заявки на научные открытия, научные идеи, научные гипотезы в области естественных, общественных и гуманитарных наук подаются в МААНОиИ самим автором (соавторами) или его наследниками, либо организацией или физическим лицом, которому это поручено автором (соавторами) или наследниками.
Научное открытие в области естественных наук означает установление явлений, свойств, законов или объектов материального мира, ранее не установленных и доступных проверке. В области гуманитарных наук открытием признается установление интеллектуальных связей между понятиями и/или концепциями, которые воспринимались ранее несвязанными.
Под научной идеей понимается обобщенный теоретический принцип, объясняющий сущность неизвестного ранее явления, свойства, закона или неизвестную связь между понятиями и/или концепциями.
Научной гипотезой признается научно обоснованное предположение о неизвестном ранее явлении, свойстве, законе или о неизвестной связи между понятиями и/или концепциями.
При этом Заявитель в обязательном порядке должен предоставить на экспертизу в МААНОиИ документы, подтверждающие приоритет открытия, идеи, гипотезы (при подаче заявки на научное открытие сущность открытия должна быть предварительно опубликована в открытой научной по профилю заявки печати или сформулирована в выступлении на семинаре, конференции, Ученом совете.
Но, следует понимать, что в МААНОиИ не принимаются заявки на научные открытия, научные идеи, научные гипотезы, содержащие утверждения, противоречащие фундаментальным научным законам и принципам (обоснование возможности создания «вечного двигателя», получения к.п.д. более единицы, возможности движения за счет внутренних сил и др.), а также противоречащие морали и общечеловеческим ценностям.
Хорошие идеи ценятся всегда, но оформляются и вознаграждаются по-разному, в зависимости от того, к какому виду научно-технической продукции (НТП) они относятся: к научным трудам, открытиям, математическим методам или изобретениям, полезным моделям и промышленным образцам.