Marianna graduated from National Research Nuclear University MEPhI with a specialist degree in Medical Physics in 2014.
Marianna has worked with Zuykov and partners LLC since 2016 and specializes in:
- Records managing on applications for inventions, utility models and software.
- Annual renewal fees on patents for inventions and utility models.
- Correspondence with clients and performing of other duties of a patent specialist.
- Preparation and filing of application for participation in tenders of intellectual property.
In 2014 Marianna passed advanced courses in the Russian State Academy of Intellectual Property which confirmed by certificate “Program of advanced training for specialists, experts who handle an application on inventions and utility models”.
2014–2015 — State expert on substantive examination in the Department “Medicine and medicine technologies”
And how are trade secrets and know-how protected abroad? The largest international agreement on trade secrets between countries is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement. Under this agreement, 159 member countries agree on a common definition of trade secrets. In addition, The TRIPS Agreement provides for certain basic principles, establishing that individuals and legal entities have the right to ensure that their trade secrets are not illegally disclosed, acquired or used without their consent in a manner contrary to fair commercial practices.
Trade Secrets in the USA
The U.S. is a member of the World Trade Organization (WTO) and a party to the TRIPS. Prior to May 2016, the U.S. provided some protection for trade secrets through state law. Most states adopted the Uniform Trade Secrets Act, which is similar to the TRIPS regulation. The state law allowed the protection of trade secrets by giving courts the power to make the following rulings against the party in breach and related to:
- Royalty payment;
- Expenses of court procedure;
- Reasonable attorneys’ fees;
- Obligation of confidentiality of trade secrets.
However, unlike other types of intellectual property, such as patents, trademarks and copyrights, trade secrets were not protected by U.S. federal law.
On May 12, 2016, the Defense Trade Secrets Act (DTSA) took effect in the U.S.
The DTSA was enacted to strengthen existing U.S. trade secret protections by giving injured parties the opportunity to litigate under both federal and state law.
The law also has the power to order ex parte seizure under special circumstances, as well as to order exemplary damages of up to two times the monetary damages if the court finds evidence of willful and malicious conduct on the part of the defendant.
Trade Secrets in the EU
Theft of trade secrets, also called economic espionage, is being used more and more and is also a problem in the EU. On top of that, faced with increasing global competition, the use of external consultants, offshore manufacturing and wide use of outsourcing, the EU has come to the realization that something needs to be done to protect the trade secrets of EU companies.
The current trade secret protection that exists varies greatly among EU countries and is not interchangeable due to the lack of pan-European legislation and differences in national laws.
Some EU countries have their own trade secret laws. Such countries include Austria, Bulgaria, Czech Republic, Estonia, Germany, Finland, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden.
For example, in Germany the Trade Secrets Protection Act (Gesetz zum Schutz von Geschäftsgeheimnissen) is responsible for the protection of trade secrets. In accordance with current legislation, a trade secret according to this law is information as follows:
- Not generally known or readily available, either in whole or in part, in its components, to all persons;
- Subject to appropriate measures of confidentiality by the legitimate owners in the circumstances;
- If there is a legitimate interest in maintaining the secrecy of the information.
At the same time, there is a number of European countries that do not rely on judicial interpretation of contractual liability or traditional common law to protect trade secrets. These countries include Belgium, France, Ireland, Luxembourg, Malta, the Netherlands, and the United Kingdom.
In addition, Germany, Finland, Greece, Denmark and Spain do not define what constitutes a trade secret. In addition, trade secrets in Cyprus are protected only by contract, while France allows for criminal penalties against employees specifically for the theft of trade secrets.
These fragmented and sometimes outdated national legal differences create uncertainty and are reflected in the general reluctance of EU enterprises to take legal action for violations of trade secrets.
In China, trade secret protection is mainly based on the current Law Against Unfair Competition of the People’s Republic of China, while most actual standards are based on case-law of courts.
The Law Against Unfair Competition of the People’s Republic of China provides definitions and types of trade secrets, and trade secrets protected by law shall mean technical and commercial information that is not known to the public and can bring economic benefits to right holders, have practical applicability, and right holders have taken measures to keep them confidential.
Trade Secrets in the China
In China, trade secrets cover technical information and commercial information, and the acts that violate trade secrets can be roughly divided into four categories:
- Acts of improperly accessing the trade secrets of others;
- Acts of improperly disclosing, using, or permitting others to use trade secrets;
- Breaches of confidentiality obligations to unlawfully disclose or use trade secrets obtained lawfully;
- Malicious access to, use or disclosure of trade secrets by third parties.
Litigation is the only way to confirm trade secrets in China. In the absence of a court ruling on the existence of trade secret ownership of information, trade secret status remains presumed but not proven. Typically, a trade secret litigation arises after the alleged misappropriation of information. The owner of the trade secret files a lawsuit as a claimer alleging that the defendant violated the claimer’s proprietary rights with respect to the information. In addition to legislative measures, business owners take their own measures to protect trade secrets. Such measures include confidentiality agreements (NDAs).
To summarize the above, on the one hand, in most countries of the world the purpose of protecting trade secrets is much the same, but on the other hand, each country has its own subtleties and nuances in understanding how and on the basis of what principles trade secrets should be protected.
A patent is a document issued by the Russian Federal Service for Intellectual Property (hereinafter the Rospatent) certifying the priority, authorship and exclusive right to an invention, utility model or design invention.
By definition, the patent is a document certifying the rights of a patent holder to a specific decision. In other words, a patent only provides information about a technical decision and not the decision itself. A patent is an intangible asset and, as it is, a decision can only be revealed once it is implemented.
How are the patent related fees determined and what factors do affect them? The value of the rights to an invention or other subject matter protected by a patent is entirely determined by the economic benefits that the rights holder may receive from the introduction and use of his or her innovations in business or other areas. These benefits may have the form of creating new goods or giving new properties to old goods, reducing the cost of producing goods or services, expanding markets and solving any other important tasks.
Patent valuation has its own specificity, which is that the applicability of comparative and cost assessment approaches to such objects is very limited.
A comparative valuation approach based on comparing an object of valuation with its market analogues is very rarely used for valuation of intellectual property, since an invention or a utility model are always unique objects and comparing them with their analogues will always be incorrect, since it ignores the uniqueness of the decision. In addition, the information itself on patent sales transactions is almost always closed or difficult to access.
When it comes to the application of cost approach methods, it is also struggling. That means the cost calculation methods based on the analysis of the cost of creation of the object of assessment, since the cost of the patent may be quite weakly related to the costs of its development and there are many examples when commercially successful developments are made with a very modest budget.
The most common approach to patent valuation is the income approach, and it is its methods that reliably determine the market value of a patent. These methods make it possible to calculate the value of the subject matter being valued based on an analysis of the potential income that the rights holder may receive from the use of the invention. In other words, the methods of the income approach link the value of the patent being valued with the commercial efficiency of the patent being valued.
It should be understood that the cost of a patent may be affected by different factors, for example:
- Importance, i.e., how revolutionary and popular the innovations is. The technical decision may be a breakthrough, or it may consist in upgrading a technical decision which is already known. Even a small innovation can bring significant production benefits and force competitors to conduct new research to upgrade their technology.
- The market and its characteristics: this factor is very difficult to overestimate, even the method of cost calculation may change depending on the market. Is there competition, is there a developed patent market in the region of interest? Such indicators as supply and demand will be important for this factor. Are there many developers in the particular field or, for example, are many people trying to improve the details in the same mechanism? And if, accordingly, everyone will offer a different patent, then the price can be knocked down, referring to the fact that the supply is not the only one in this market and there is something similar.
- Term of validity, i.e., the remaining term of protection of the intellectual property, directly affects its price. If the patent has a couple of years left, then the rights holder, unfortunately, will not make millions with it, even if the developed technical decision is a breakthrough one. This is because the less a patent has to be valid, the less time is left for the so-called monopoly right to use such a decision and the less time is left to get the most out of the purchased right.
- Known background of the invention, i.e., if the patent is just a link in a chain, representing one of many related innovations, the price can go down. On the other hand, if the innovation is independent or the first link in the chain, the price may be higher. This factor is directly related to the market and its characteristics.
The factors presented above do not compose a complete list. In reality, the experts take into account not only the features of the patent and market, but some other global or local trends as well.
For the purpose of a complete and balanced valuation, complex methods are usually used, which contain elements of different approaches. A stable set of such methods of calculation has even got its name in the special literature, which is the combined approach.
In order to assess the value of a patent for an invention or utility model, specialists may need all kinds of documents and information, as follows.
Thus, it is rather difficult to determine the cost of a technical decision protected by a patent. Such complexity is related both to the specifics of the object which is not a tangible asset and a large number of subtleties and nuances in the evaluation. Let us also remember that the request of the patent owner will also have a significant impact on the value of this intellectual property.
On May 27, 2020, the World Intellectual Property Organization (WIPO) launched WIPO PROOF, an online service that rapidly produces tamper-proof evidence which can be used to prove that user’s digital file existed at a specific point in time. With the increasing digitalization of the modern world, inventive and creative activities are often international and collective in nature, resulting in a wide variety of files containing valuable information that can easily be misused or misappropriated.
Such information may include trade secrets, scripts, scores and other creative works, research results, large-scale data sets, various algorithms, or any account related to various types of operation. All this information is an intellectual asset that has a certain value. Earlier, it was challenging to prove that a solution was developed by user earlier, especially if all the information was recorded only as a hard copy.
WIPO PROOF uses industry-leading secure technology to generate a globally recognized digital fingerprint of an intellectual asset of the user, whether it is a creative work, product design, invention, or research data and findings from the development process, which can provide reliable proof of the existence of a creation at a given time. At the same time, this information can be verified by anyone at any time. In its essence, WIPO PROOF token is an encrypted record about the genetic code and the existence of user’s digital file with a mark on the date and time at the time of its creation. Tokens do not expire. WIPO PROOF safely stores them for 5 years. On request, the storage period can be extended.
The WIPO PROOF service is also important because it further reinforces the concept of intellectual property protection in the world of digital technology. At present, large-scale processes related to the transition from industrialization to digitalization are developing. Although statistics show that these are still relevant, classic intellectual property rights do not cover all types of intellectual assets, especially when it comes to data protection. Thus, WIPO PROOF is an important step in creating a set of intellectual property services aimed at meeting the needs of the digital economy.
From a practical perspective, WIPO PROOF provides a digital notary type service. It allows user to get an undeniable confirmation of the existence of a digital file at a particular time.
WIPO PROOF also helps to meet the needs of inventors and creators during the period prior to the official registration of exclusive rights, and can be useful in protecting intellectual assets at all stages of their formation: from conception to commercialization, whether or not a patent is granted in the future. In order to create a patentable invention or work of art, much work needs to be done. Inventors, creators and startups face serious risks when doing the preparatory work. At this stage, many of them share their ideas with numerous third parties, including investors and large companies. It works like that as innovators and creators need to fundraise for introduction of their product to the market.
While in many cases these relationships are governed by non-disclosure agreements, many small businesses, startups and individuals do not have access to qualified lawyers who can help them professionally draw up such agreements. However, it is not always the case that a properly drafted contract will one hundred percent assure that invention will not become known to third parties who want to take it for themselves. The WIPO PROOF service allows to document an intellectual asset, thereby obtaining irrefutable proof that it was the exact person who controlled the idea or concept in question, or who played a role in the creation of a work at a particular time.
WIPO PROOF is based on the understanding that proving data in the form of digital files can be very important in a world of digital technology, where data is subject to intensive exchange.
This service will prevent misuse and misappropriation of intellectual property and may be useful in resolving legal disputes, including in courts of different jurisdictions.
Anyone can use the secure WIPO PROOF online website to instantly create an account and purchase a WIPO PROOF token. Owners of the source file or any third party can check the WIPO PROOF token by connecting to the WIPO PROOF online service and selecting the VERIFY TOKEN option. Both operations are fast and easy to proceed with.
Francis Gurry who led WIPO as Director General once said in his interview, that in a highly dynamic global economy where value is increasingly dependent on human activities driven by digital technology and big data, the ability to prove ownership of digital files of intellectual assets is crucial. WIPO PROOF helps inventors and creators better protect the digital outputs of their work and is a major step towards developing a WIPO package that meets the needs of the digital economy.
However, it should be noted that WIPO PROOF is not a substitute for the existing rules for exclusive rights to a technical decision. In other words, WIPO PROOF does not replace the need to obtain a patent for an invention, utility model or design invention in order for an exclusive right to the invention.
With the development of technologies, the means of their protection are also developing and WIPO PROOF is another step towards comprehensive protection of intellectual property.
Those who dealt with patenting, and especially global patenting, know this process is expensive and time-consuming. However, there are some mechanisms that can reduce costs at different stages of the patenting process. Here are some ways to do so. Although, it is not always possible to reduce costs dramatically but a couple of saved rubles is still nice to have. When patenting, it is possible to save money both on the services of attorneys and on state duties. Let us consider everything in order.
One of the options to reduce the cost of global patenting is to conduct a preliminary search to determine the patentability of your solution and a first step in determining marketing strategy. If it is established that the solution is patentable, then in the future, you can expect that there will be no requests when considering the application in foreign agencies, or they will be formal. The search will be a solid foundation for the further application and the decision as a whole.
Before talking about global patenting, it is necessary to clearly understand if there is a need to do that abroad. For those who have come up with a solution, it will always be considered the best and most indispensable way to manage patent costs. But in any case, it is necessary to analyze where your solution will be in demand. For example, an ice maker will not be in great demand at the North Pole. In this regard, the main saving will be to identify the most promising countries for patenting. After that, it will be necessary to understand whether the selected countries belong to any regional patent offices.
If more than two countries are selected to be part of a single regional patent office, it is more advantageous to apply to a regional patent office rather than to each national office separately. Translation costs can be hefty, too. If the application for a patent is submitted to each national patent office separately, it will be necessary to submit a duly certified translation of the application into the national language, keep records and pay for the services of foreign attorneys in each individual country. This, in turn, will lead to increased costs. Some countries also provide for the possibility of keeping records in several languages, one of which is most often English. Many countries have the option of keeping records in a single language, which will reduce the cost of patenting, as there will be no need to spend money on translation into both languages.
Now let us take a closer look at the possibility of saving on the services of foreign attorneys. Practically, foreign attorneys charge for each step, be it answering questions, sending correspondence, sending various documents to the agency or preparing a response to an inquiry. You can try to prepare answers to inquiries by yourself, but it may lead to another inquiry, which will lead to new expenses. The optimum option will be to hire a Patent Attorney in Russia, who will be able to prepare a response to an inquiry, answer many questions, develop a smart strategy of further actions to save money. Also, when drafting documents for filing, all the documents should be submitted at the same time, so that there would be no need to send additional materials to the agency.
Next, let us consider the options for saving on duties. If you decided to initially file an international application in accordance with the Patent Cooperation Treaty, it is better to file it on behalf of an individual. This will reduce the international filing fee by 90%. Also, in many countries, the fees for individuals are significantly reduced in comparison with the fees for corporate applicants. When preparing an application, it should be understood that the volume of the application in many countries affects the fees. The fee depends on the number of pages in an application, the number of claims, both dependent and independent.
It should be emphasized that a well-written application which proved positive in some countries may serve as a basis for speeding up records management in other countries and reducing the possibility of receiving a request. To take advantage of this opportunity, there is a must to submit an additional application or request for the Patent Prosecution Highway (PPH). Currently, the PPH is the most common fast-track examination procedure for applications. This procedure allows the results of a previous search to be used in subsequent applications.
In addition, the subsidy programme from the Russian government is available, for the following purposes:
- Preparation, filing and administration of international applications (PCT);
- Payment of fees associated with the filing and examination of international applications (PCT);
- Preparation, filing and processing of national and/or regional applications in foreign countries;
- Payment of fees stipulated by the regulations of foreign national or regional patent offices related to the examination of applications, the issuance of patents and certificates and their keeping in force during the first three years;
Legal entities registered in the Russian Federation and producing goods and technologies, which include intellectual property, may participate in the Programme.
Thus, when thinking about global patenting it is necessary to understand that this process is expensive and may cost tens of thousands of dollars or euros. And a competent approach to patenting, both in Russia and abroad, will reduce unnecessary costs at various stages of office procedure.
To minimize costs, it is most expedient to contact a patent attorney in your country. Applying to a patent attorney in the Russian Federation on the issues of global patenting will allow obtaining qualified legal assistance and answers, including the determination of the preliminary cost of obtaining a patent in the countries of interest and possible options to reduce costs.
The European patent can be invalidated at the territory of the contracting countries in the following cases:
- the subject matter of the European patent is non-patentable, i.e. the solution represented in the patent does not comply with novelty and/or inventive step, and/or industrial applicability;
- the European patent does not disclose the invention with sufficient clarity and completeness for its implementation by the person skilled in the art;
- the subject matter of the European patent is beyond the scope of the information contained in the application in its original version, or if this patent has been granted based on a divisional application;
- the owner of the European patent does not have the right to it, i.e. he is not the author of this technical solution or its legal successor.
In addition, the European patent may be partially invalidated.
To invalidate the European patent, one should file a relevant objection. Within nine months after the publication of the information on the grant of the European patent in the European Patent Bulletin, any person may file to the European Patent Office the objection to the grant of this European patent according to the Instruction to the Convention. It is deemed to have been filed, if a fee for the objection has been paid. The persons, who have filed the objection, as well as the patent holder, shall take part in the proceedings on the objections.
The objection can be filed only on the following grounds:
(a) the subject matter of the European patent is not patentable;
(b) the European patent does not disclose the invention with clarity and completeness being sufficient for its implementation by the person skilled in the art;
(c) the subject matter of the European patent is beyond the content of the application as it has been filed, or, in the case of the patent granted based on the divisional application.
The invention is deemed to be patentable, if it is new, industrially applicable and it has inventive step.
In particular, the following is not deemed to be the inventions:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic solutions;
(c) the schemes, rules and methods of intellectual or economic activity, as well as a program for electronic computing machines;
(d) the ordinary presentation of the information.
If the objection is deemed to be admissible, the Department for the Consideration of Objections, in accordance with the Instruction to the European Convention, shall check whether at least one of the above grounds for the objection is an obstacle to maintain the validity of the European patent. During such check, the Department for the Consideration of Objections shall offer the parties to submit their comments regarding other party’s notices or the Department’ own notices as many times as necessary. The Department for the Consideration of Objections shall check the grounds of the objection that are referred to in the submission of the opponent according to the established documents. The grounds for the objection not indicated by the opponent may be checked by the Department for the Consideration of Objections on its own initiative, if they can affect the maintenance of the validity of the European patent. The notices and all responses to them regarding the objection filed shall be sent to all parties. If the Department for the Consideration of Objections considers it appropriate, it shall offer all parties to send the response during a certain period of time. When sending any notice, the owner of the European patent shall be given an opportunity to change the description, the claims and the drawings. Where necessary, these notices shall contain the grounds for the impossibility of maintaining the validity of the European patent.
If the Department for the Consideration of Objections considers that at least one of the grounds for the objection prevents the maintenance of the validity of the European patent, it will invalidate the patent. Otherwise, it shall reject the objection.
If the Department for the Consideration of Objections considers that, taking into account the amendments made by the patent holder in the course of the proceedings regarding the objection, the European patent and the invention that is its subject matter
(a) comply with the requirements of the European Convention, it shall make a decision to maintain the validity of the patent in the amended form, provided that the requirements of the Instruction to the European Convention are complied;
(b) do not comply with the requirements of the European Convention, it shall make a decision to cancel the patent.
In any contracting state, the European patent shall have the same effect and it shall be subject to the same conditions as the national patent granted by this state, unless otherwise is stipulated by the European Convention. In this case, the European Convention shall prevail over the national legislation of the European countries.
In addition, it should be noted that after the period of time established by the European Convention to file the objection to invalidate the European patent, it can be invalidated at the territory of the certain European state, where the patent is valid. However, it should be borne in mind that each country has its own requirements for filing the objection to the invalidation of the patent.
Summing up, it is possible to conclude that the grounds for the invalidation of the European patent are similar to the grounds in other countries of the world, and the differences are only in the procedural norms and the periods of time. It should also be noted that in order to cancel the registered patent, it is better to address a patent attorney or a patent specialist, who have experience in preparing the documents of such kind. This is necessary to be done in order to get a clear and reasonable idea of whether you have or have not a chance of invalidating someone else’s patent.
In accordance with the approved provisions, the International Search Authority performs the following functions, when considering the international PCT application:
- carrying out an international search,
- preparing an international search report,
- composing a written message.
The International Search Authority may be either a national Office or an intergovernmental organization, such as the International Patent Institute, whose task is to prepare the documented search reports to determine the state of the art in respect to the inventions claimed in the international PCT application.
Currently, within the framework of the Patent Cooperation Treaty, 23 patent organizations are appointed as the international search authorities:
- the Austrian Patent Office;
- the Australian Patent Office;
- the National Institute of Industrial Property of Brazil;
- the Canadian Intellectual Property Office;
- the National Institute of Industrial Property of Chile;
- the China National Intellectual Property Administration;
- the Egyptian Patent Office;
- the European Patent Office;
- the Spanish Patent and Trademark Office;
- the Finnish Patent Office;
- the Israel Patent Office;
- the Indian Patent Office;
- the Japanese Patent Office;
- the Korean Intellectual Property Office;
- the Intellectual Property Office of the Philippines;
- the Russian Patent Office;
- the Swedish Intellectual Property Office;
- the Intellectual Property Office of Singapore;
- the Turkish Patent and Trademark Office;
- the State Intellectual Property Service of the Ukraine;
- the United States Patent and Trademark Office;
- the Nordic Patent Institute;
- the Visegrad Patent Institute.
Each Receiving Office (with the exception of the International Bureau acting as a Receiving Office) shall appoint one or more International Search Authorities as the competent ones to carry out the international search for the international PCT applications being filed to this Office. Each International Search Authority shall establish the language in which it considers the claimed invention. If the language of filing differs from the language, in which the competent search authority considers the international PCT application, it is necessary, in addition to the application materials, to submit its translation into the appropriate language. The Receiving Office may also appoint several International Search Authorities as the competent ones, wherein the applicant may choose among them the one that suits him best. If the international application is filed to the International Bureau as the Receiving Office, the competent Authority (or the Authorities) of the international preliminary examination shall be the one (or the ones) that would be competent, if the international application were filed to the competent national (or regional) Office as the Receiving Office. Within the framework of the relevant Treaty that concerns the functioning of some Offices as the International Search Authorities, these Authorities may establish the limits of their competence with respect to some international PCT applications.
Any national Office or any intergovernmental organization that meets the requirements, in particular in regard to the personnel and the documentation, may be appointed as the International Search Authority. The appointment shall be made with the consent of the national Office or the intergovernmental organization being appointed as such Authority, and provided that an agreement subject to be approved by the Assembly is concluded. The rights and the obligations of the parties should be determined in the agreement, in particular, the formal obligation of the Office or the organization to apply and to observe all the general rules of the international search. The appointment shall be made for a certain period, which can be extended. Before making a decision on the appointment of any national Office or intergovernmental organization, or on the extension or the termination of such appointment, the Assembly shall hear the interested Office or organization and seek the opinion of the Technical Cooperation Committee.
When carrying out the international search, the International Search Authority shall be guided by the provisions of the Patent Cooperation Treaty, the Instruction and the agreements that shall be concluded by the International Bureau with this Authority in accordance with the Patent Cooperation Treaty and the Instructions to the Patent Cooperation Treaty.
Within the framework of its competence, the International Search Authority should carry out a number of checks, in particular, to establish that:
- the international application refers to the subject matter for which, in accordance with the Instruction, the International Search Authority is not obliged to carry out the international search, and in this case, it shall make a decision not to carry out such search, or
- the description of the invention, the claims or the drawings do not meet the established requirements to the extent that it is impossible to carry out the full search; the said Authority shall record this fact in the declaration and notify the applicant and the International Bureau that the international search report will not be prepared.
If any of the situations mentioned above is identified only in relation to certain claims, the international search report shall contain a relevant comment in relation to such claims, while in relation to other claims, the report shall be prepared according to a special form.
If the International Search Authority considers that the international application does not meet the requirement of unity of invention, as determined in the Instruction, the applicant shall be offered to pay additional fees. The International Search Authority shall prepare the international search report for those parts of the international application that relate to the invention first mentioned in the claims (“a main invention”), as well as, provided that the payment of the required additional fees within the prescribed period has been exercised for those parts of the international application that relate to the inventions for which such fees have been paid. However, the national legislation of any state, to which the international PCT application will be transferred, may stipulate that in the case, when the national Office of that state finds the offer of the International Search Authority to be justified and when the applicant has failed to pay all the additional fees, those parts of the international application for which the search has not been carried out shall be deemed withdrawn in respect to their operation in that state, if the applicant fails to pay a special fee to the national Office of that state.
Thus, the International Search Authority performs one of the most important functions, when considering the international PCT applications, namely, it carries out a sort of a check as to whether the claimed invention complies with the generally accepted patentability criteria.
“Intangible property”, “intangible asset” – these are phrases that are not clear to a man in the street. In everyday life, we are used to the fact that what we can touch has a certain value. However, when it comes to intellectual property and the fact that it also has its value, the question involuntarily arises, what is the value of this property and how to determine it.At the very beginning, it should be noted that an intangible asset and intellectual property are synonyms, but they are used in different areas of human activity.To facilitate the understanding of what intangible assets valuation involves, an understanding of what applies to these assets is necessary. An intangible asset is an asset that simultaneously meets the following requirements (paragraphs 2 - 4 of the Accounting Regulation 14/2007; paragraph 3 of Article 258 of the Tax Code of the Russian Federation):- an asset is not a thing;- the asset is able to bring economic benefits to the organization, i.e. is designed for use in the manufacture of products, when performing work or providing services, for the administrative needs of the organization for a long time, i.e. a useful life of more than 12 months or the normal operating cycle if it exceeds 12 months;- the organization does not intend to sell the asset within 12 months or the normal operating cycle if it exceeds 12 months;- the organization has rights to this asset (patents, certificates, other protection documents, an agreement on the alienation of the exclusive right to the result of intellectual activity or an individualization tool, documents confirming the transfer of the exclusive right without a contract, etc.), on the basis of which the organization can restrict the access of others to the use of an asset;- the actual (initial) value of the asset can be reliably determined.Intangible assets include: works of science, literature and art; programs for electronic computers and databases; inventions; utility models, industrial designs; breeding achievements; production secrets (know-how); trademarks and service marks; goodwill arising in connection with the acquisition of an enterprise as a property complex (in whole or in part).There is also a list of what cannot be attributed to intangible assets, in particular:- R&D not yielding a positive result, not completed or not formalized in the established manner;- things in which the results of intellectual activity and equivalent means of individualization are expressed (for example, CDs with programs recorded on them);- financial investments;- expenses associated with the formation of a legal entity (organizational expenses);- intellectual and business qualities of the organization’s personnel, their qualifications and ability to work.Now having an idea of what an intangible asset is, we will analyze the principles of how its value is estimated. At the same time, it is initially necessary to note that the main difficulty in this aspect is that it is impossible, due to the intricacies of intellectual property rights, to find two identical solutions. Solutions may be similar but not the same!For a practical assessment of the value of intangible assets, experts recommend costly, profitable and combined approaches commonly used in valuing other types of assets.
Income approachThe main methods of income approach for assessing intangible assets are:cash flow discounting method for intangible assets,direct capitalization method of intangible assets,royalty exemption method for intangible assets,excess profit method of intangible assets,method of splitting profits of intangible assets.The use of the income approach in assessing intangible assets is subject to the possibility of obtaining income from the use of intellectual property. Income from the use of intellectual property is the difference for a certain period of time between cash receipts and cash payments (hereinafter - cash flow) received by the copyright holder for the granted right to use intellectual property.The main forms of cash receipts are payments for the granted right to use intellectual property, for example, royalties, lump-sum payments and others. The amount of payments for the granted right to use intellectual property is calculated on the basis of the most probable value that can develop when the parties to the transaction act reasonably, having all the necessary information, and any extraordinary circumstances are not reflected in the amount of payments.The main forms of benefits from the use of intellectual property are:- saving costs for the production and sale of products (works, services) and / or investments in fixed assets and working capital, including the actual reduction in costs, the absence of costs for obtaining the right to use intellectual property (for example, the absence of license fees, no need to separate the most probable share of the licensor from the profit);- increase in the unit price of products (works, services);- an increase in the physical volume of sales of manufactured products (works, services);- reduction of tax payments and (or) other obligatory payments;- reduction of payments for debt servicing;- reducing the risk of receiving cash flow from the use of the valuation object;- improving the time structure of cash flow from the use of the valuation object;- various combinations of these forms.The benefits of using an intangible asset are determined on the basis of a direct comparison of the amount, risk and time of receipt of cash flow from the use of intellectual property with the amount, risk and time of receipt of cash flow that a copyright holder would receive if the intellectual property was not used.The market value of intellectual property is determined using the income approach by discounting or capitalizing cash flows from the use of intellectual property.Cost approachThe cost approach is used for inventory, balance sheet accounting, determination of the minimum price of intellectual property below which a transaction becomes unprofitable for the owner of an intangible asset.In the framework of the cost approach, the following methods are used in assessing the value of intangible assets:method of summing actual costs;current cost method;replacement cost method;reduced cost method.
The combined approach is to combine income and cost approaches, which allows you to best determine the value of an intangible asset for all market participants.Having received an idea of how intangible assets are valued, it is necessary to understand for what purposes this is done. We can distinguish a certain list of situations in which an assessment of intangible assets is carried out:• inventory and introduction of intellectual property into economic circulation;• amendments to the financial statements (revaluation of intangible assets) and / or refinement of the tax base;• entering of intellectual property on the balance sheet of the organization;• inclusion of intellectual property in the authorized capital;• purchase and sale or assignment of rights to intellectual property;• inheritance, gift or gratuitous transfer of rights to intellectual property;• the need to manage intellectual property as a value creation strategy;• the forthcoming conclusion of a license agreement on the right to use intellectual property and the need to justify the calculation of payments for their use;• privatization, liquidation, restructuring or bankruptcy of the enterprise;• valuation of intellectual property with the aim of pawning;• use of intellectual property as part of franchising;• legal proceedings in the division of property between owners of the enterprise, as well as in cases of confiscation;• takeover of one enterprise by another or their merger;• evaluation of investment projects in which it is planned to use intellectual property;• assessment of damage resulting from violation of rights to intellectual property, as well as from the production of counterfeit products;• insurance of intellectual property;• valuation of intangible assets, as one of the stages of business valuation;• determination of the share of economic effect attributable to intellectual property when used in own production;• calculation of remuneration of authors of intellectual property;• leasing of rights to intellectual property.The valuation of intangible assets requires a careful study of the available data in order to determine the profit flow associated with the assets being valued, to identify the residual life of the assets and the applicable valuation techniques to accurately reflect the value of the assets.To conduct an assessment of intangible assets, it is necessary to collect a certain list of documents by which the assessment will be carried out.The list of documents for the assessment of intellectual property, intangible assets:1. The name of the object of intellectual property, its purpose.2. Description of the intellectual property.3. A document confirming the rights, transfer of rights (patent, letter of protection, etc.).4. License agreement for use (indicating the distribution of income between the licensor and the licensee) - if necessary.5. Plans for the production of the main types of products using the object of intellectual property (type of product, its selling price, cost, how much time will be produced, output by type and year for the next 5 years).6. The planned gross income for the period of use of the intellectual property, and the planned amount of expenses (paid taxes on profits, property, etc.).7. Information about analogues of products planned for release using the intellectual property, and their value by type.8. The contract for the work on the basis of which the intellectual property was created (if any).9. Information on R&D costs.10. Information on the costs of formalization and filing an application, patent research, obtaining and maintaining a patent.11. Information on the amount of fees and royalties.12. Information on the costs of production preparation and implementation.13. Information on the costs of marketing research, advertising.14. The actual period of use of the intellectual property on the date of valuation, useful life.15. Depreciation rate.16. The residual carrying amount.Although some of the aforementioned methods for evaluating intangible assets are widely used by the financial community, it is important to note that evaluating intangible assets is more an art than a science, and is a multidisciplinary study covering areas such as law, economics, finance, accounting and investment. When performing the assessment, it is necessary to take into account a large number of subtleties and nuances. Also, a significant factor in the evaluation of intangible assets is the qualification of the appraiser, his experience and breadth of knowledge in different areas of economic activity.
When creating a solution, everyone reasonably raises the question: “What rights do I have, and what can I do with them?” In the existing world, from a legal point of view, it is difficult to understand what rights the author of the decision has. All this is also complicated if the decision itself is ambiguous and difficult to understand.
Let us consider what rights the author of a computer program and database has in the modern world.To understand what kind of rights the author has, it is necessary firstly to find out what the object is - the work of the author.A computer program is an objective set of data, procedures, rules and instructions designed for the operation of computers and other computer devices in order to obtain a specific result, including preparatory materials obtained during the development of a computer program, and the results and audio-visual display produced by this development1. It should also be noted that computer programs are usually classified as literary works.A database is a set of independent materials presented in an objective form (articles, calculations, normative acts, court decisions and other similar materials), systematized in such a way that these materials can be found and processed using an electronic computer (computing machine). Databases are protected regardless of whether the data on which they are based or which they include are subject matter of copyright1.
Computer programs and databases are copyright items.Copyright applies to any computer programs and databases, whether they are released or not, presented in an objective form, regardless of their tangible medium and purpose, are protected in the same way as copyrights to works of literature.The ideas and principles that underlie a computer program or database, or any of their elements, are not subject to legal protection as are ideas and principles of the structure of the interface and algorithm, as well as programming languages.It should be emphasized that copyright does not depend on the ownership of the tangible medium (item) on which the computer program or database is located. And during the transfer of ownership of the item-tangible medium in which the computer program is expressed, the transfer or grant of copyright to the computer program does not occur.The author of a computer program is a person, an individual, with the creative work of which this program was created. A person indicated as the author on the original or a copy of the work shall be considered its author, unless otherwise proved.A computer program can be created both by one author - an individual, and several authors - individuals who will be co-authors of the program. The rights to the program created by the co-authors belong jointly to the co-authors.Persons who have not made a personal creative contribution to the creation of the program are not recognized as authors of the computer program. If a certain person (or persons) provided the author (or authors) of the program with only technical, consulting, organizational, material assistance, or facilitated the execution of any documents, including those related to official state registration of the program, or monitored the progress of work to create a program, such a person is not recognized as the author (co-author) of the created program. The inclusion of such a person in the number of co-authors of a computer program is illegal. From the point of view of copyright legislation, two sections can be distinguished: personal non-property rights of the author and property rights of the author.Firstly, let us consider personal non-property rights.
Personal non-property rights.Personal non-property rights belong to the author regardless of his property rights and are reserved for him in case of transfer of exclusive rights to use computer programs and databases. Personal non-property rights are perpetual and inalienable.The following personal non-property rights belong to the author with respect to his work:- copyright;- the right to a name;- the right to integrity of the work (integrity);- the right to publication (release).Now let us consider in detail what is meant by each of the above non-property rights.
The right of authorship is the right to a name. The right of authorship is directly related to the author’s right to a name, i.e. the right to use or authorize the use of the work under his own name, false name, pseudonym or without specifying a name (anonymous). Violation of the right of authorship and / or right to a name entails administrative or criminal liability, depending on the gravity of such a violation. Therefore, the law and judicial practice establish a number of conditions necessary and mandatory for third parties so that their actions are not plagiarized (illegal use). The author cannot transfer the right of authorship and the right to a name by the author’s agreement, and a waiver of this right is void. The right of authorship gives the obligation of everyone not to violate this right. So, no person other than the author can claim their authorship. The right of authorship arises from the moment the work is created. Moreover, it is not at all necessary that the author exercises this right directly when creating the work. This right remains with the author for all his life, as well as the right to protect it. If the author has not claimed his authorship in any way, then the issue related to the protection of copyright should be decided on his own initiative. According to Article 1255, 1300 of the Civil Code of the Russian Federation, the person who is indicated as the author is supposed to be such until his copyright is challenged. However, the author has the right to refuse to indicate his name on copies of the computer program. Thus, many organizations involved in the development of computer programs and databases provide for the conclusion of an employment contract, in which the author refuses to indicate the author’s name on program documents in writing developed in the course of fulfilling their labor duties.The right to inviolability of the writing. The right to inviolability includes the right to protect both the computer program itself or the database, as well as their names, from any kind of distortion or other infringement that could cause material or moral damage. The right to inviolability implies the prohibition on making changes to any elements of the program for Computers and databases. With regard to the program and the database, protection against changes to them, without the knowledge of the author, of such changes and clarifications that may affect the functionality and their characteristics, is especially important.
The right to publish: The author has the right to publish his work, that is, the right to take action or give consent to carry out an action that makes the work available for the first time to the public by publishing, public display, public performance, broadcasting or cable, or any in another way. In this case, publication (publication) is the release into circulation of copies of the work, which are a copy of the work in any material form, in quantity, residual to satisfy the reasonable needs of the public based on the nature of the work. The author who transferred the work for use to another person under the contract is considered to have agreed to the publication of this work. A work not published during the life of the author can be made public after his death by a person who has the exclusive right to the work if the publication is not contrary to the will of the author of the work, which is described by him in writing (in a will, letters, diaries and the like) . However, it should be noted that, despite the fact that the computer program and the database are copyrighted, some rules do not apply to them. In particular, computer programs are not subject to the right to recall them.Unlike other personal non-property rights, the right to publication may pass to other persons, for example, to the heirs of the author. This moment confirms the conditional nature of the division of copyright into property and personal non-property rights.Now let us consider what rights relate to the property rights of the author.
Property rightsProperty rights - the exclusive rights of the author to the economic use of the work in any form and by any means belonging to the author. These rights include:- the right to reproduce a computer program or database (full or partial) in any form, by any means;- the right to distribute a computer program or database, including rental;- the right to modify a computer program or database, including the translation of a computer program or database from one language to another;- the right to register a computer program or database.The right to reproduce. The right to reproduce means the possibility of making one or more copies of a work or part thereof in any material form. Reproduction is historically the first and at the initial stage of development of copyright the sole proprietary copyright. Accordingly, to reproduce means to duplicate the work by making copies or in some other way. Reproduction is considered to have taken place regardless of whether the copies of the work have become available to an indefinite set of people. Recording works means fixing them with the help of technical means. Reproduction of a work is also its record in the memory of a computer.The right to distribution. The right to distribution is an introduction to civil circulation. An exclusive right to distribution means that a product in which a computer program or database is embodied must be entered into civil circulation only with the permission of the copyright holder.The principle of exhaustion of the right to distribution - after the commercialization in which copyright objects are embodied, the further distribution of the goods does not require the consent of the owners of these objects embodied in this product. Exhaustion of the right to distribution means that the validity of the right to distribution is much shorter than the validity period of all other exclusive rights, since it is valid only from the moment the work is created until the goods are commercialized. Thus, if the original or a copy of a lawfully published work is put into civil circulation in a certain territory through their sale or other alienation, then the further distribution of the original or copies of the work is allowed without the consent of the copyright holder and without paying him remuneration, with the exception of the right to follow.The right to modify. By modifying a computer program or database we mean any changes, including the translation of such a program or database from one language into another, with the exception of adaptation, i.e. making changes solely for the operation of the program or database on certain technical means of the user or under the control of specific user programs. Moreover, the law provides also legal modification by another person. Such a modification is called decompilation, which is understood as a technique which includes the conversion of object code into source code in order to study the structure and coding of a computer program.
The right to register. The creation, exercise and protection of copyright does not require the registration of a work or the observance of any other formalities.However, a computer program or database can be officially registered at the request of the copyright holder with the Federal Executive Authority for Intellectual Property.Article 1262 of the Civil Code of the Russian Federation establishes that the copyright holder of a computer program can register the program with the federal executive authority for intellectual property during the validity period of the exclusive right.In addition, it should be noted that the database can also be protected as an object of related rights, but subject to the relevant conditions. In order for a database to relate to an object of related law, it is necessary whilst creating such a database there should be significant financial, material, organizational and other costs, or it should contain at least 10000 independent materials that make up the contents of the database.Also for databases there is another type of property law - the right of the manufacturer. It represents the right to extract materials from the database and carry out their subsequent use in any form and by any means. In this case, the extraction of materials means the transfer of the entire contents of the database or a substantial part of its constituent materials to another information medium using any technical means and in any form.The exclusive right of the database manufacturer is recognized and valid regardless of the availability and validity of copyright or other exclusive rights of the database manufacturer and other persons to the materials that make up the database, and to the database as a whole as a composite work.Despite the above mentioned rights and principles of how they can be violated, it should be noted that there are a number of actions that are not a violation of copyright.In accordance with article 1280 of the Civil Code of the Russian Federation, a person lawfully owning a copy of a computer program or a copy of a database (user) is entitled without the permission of the author or other copyright holder and without paying additional remuneration to:- carry out the actions necessary for the functioning of the computer program or database (as well as during use in accordance with their purpose), including recording and storing in the computer memory (one computer or one network user), entering these changes into the computer program or database solely for the purpose of their functioning on the user's technical equipment, correction of obvious errors, unless otherwise provided by the contract with the copyright holder;- make a copy of the computer program or database, provided that this copy is intended only for archival purposes or to replace a legally acquired copy in cases where such a copy is lost, destroyed or has become unsuitable for use.
A person lawfully owning a copy of a computer program is entitled, without the consent of the copyright holder and without paying additional remuneration, to study, research or test the functioning of such a program in order to determine the ideas and principles that underlie any element of a computer program. A person lawfully owning a copy of a computer program is entitled, without the consent of the copyright holder and without paying additional fees, to reproduce and convert the object code into the source text (decompile the computer program) or instruct other persons to carry out these actions if they are necessary to achieve the ability to interact computer programs independently developed by this person with other programs that can interact with the decompiled program, subject to the following conditions:a) the information necessary to achieve the ability to interact was not previously available to this person from other sources;b) these actions are carried out in respect of only those parts of the decompiled computer program that are necessary to achieve the ability to interact;c) the information obtained as a result of decompilation can only be used to achieve the ability to interact with an independently developed computer program with other programs, cannot be transferred to other persons, except when it is necessary to achieve the ability to interact with an independently developed computer program with other programs, and also cannot be used to develop a computer program, in its appearance substantially similar to a decompiled computer program, or to implement another action violating the exclusive right to a computer program.The above mentioned actions should not contradict the normal use of a computer program or database and should not unreasonably prejudice the legitimate interests of the author or other copyright holder.It should be noted that as copyright objects, computer programs and databases are subject to the Berne Convention for the Protection of Literary and Artistic Works of 1886. The Berne Convention relates to the protection of works and the rights of their authors. It is based on three basic principles and contains a number of provisions defining a minimum level of protection, as well as special provisions for developing countries that wish to take advantage of them.
Three basic principles are as follows:1. If the country of origin of the work is one of the Contracting States (i.e. the author of the work is a citizen of such a state, or works that were first published in such a state) it must enjoy the same amount of protection in each of the other Contracting States what the latter provide to the works of their own citizens (the principle of "national treatment").2. Protection should not be conditional on the performance of any formalities (principle of “automatic” protection).3. Protection does not depend on the availability of protection in the country of origin of the work (principle of “independence” of protection). However, in the event that a Contracting State provides for a longer period of protection than the minimum period prescribed by the Convention and the protection of a work ceases to be valid in the country of origin, then after termination of protection in the country of origin protection may be refused.However, the copyright laws of the Russian Federation differ from the provisions of the Berne Convention. Probably the most important difference is the duration of the exclusive right.
In accordance with the provisions of the Berne Convention, the duration of the exclusive right is the entire life of the author and fifty years after his death2. The legislation of the Russian Federation in this regard provides that the exclusive law is valid throughout the life of the author and seventy years, counting from January 1 of the year following the year of the death of the author.Summing up, it is necessary to pay particular attention to the fact that, unfortunately, at present, copyright protection for computer programs and databases in practice does not have a clear and unambiguous tool that would reveal whether there is a violation of law or not. Perhaps these difficulties are caused by the fact that such objects of law as a computer program and a database are difficult to understand, and therefore, when establishing a violation, it is difficult to conduct any examination, for example, to determine the fact of plagiarism.In practice, it often happens that to establish a violation it is necessary to go through several courts.For example, in 2011, company A went to court demanding compensation for violation of exclusive rights to a software product, since organization B delivered the software product without any rights to it.In the court of first instance, organization B relied on the fact that company A owns the rights to the software product with a certain “letter designation of the developer code”, and the software product specified in the Supply Agreement has a different code in the waybill and act on production delivery and acceptance. At the same time, the names of software products were identical.In the court of first instance, the plaintiff was refused a forensic computer-technical examination in order to compare the software product of company A and the software product supplied by organization B. Instead, the court independently concluded that since the software product presented in the evidence was dated 2010 and delivered in accordance with the consignment note in June 2009, it could not be delivered by organization B, so the rights of company A were not violated, and the court ruled to dismiss the lawsuit.Disagreeing with the decision of the trial court, company A filed an appeal. The appellate court relied on the same facts as the trial court, however, granted the request for a computer-technical examination. The expert was presented with a CD containing a reference sample of the controversial software product, as well as a CD containing screenshots and files supplied by the organization. During the examination, the expert could not unequivocally answer the questions posed to him. Thus, in fact, the examination in this case did not lead to anything. The court again considered the evidence of violation by company B of the exclusive rights of company A insufficient and left the decision of the trial court unchanged.The ruling of the court of appeal was appealed by company A to the cassation court. In support of its position, company A stated that the question of whether a copy of a particular program is counterfeit is not decided by formal comparison of the names of the programs in the administrative documents, but by comparing the program code of the allegedly counterfeit copy with the reference copy of the original program. The cassation court upheld this position. As a result, the case was referred for a new trial to the court of first instance, which satisfied the requirements of company A in full.As we can see from the above example, the courts, due to the insufficient practice of resolving disputes related to computer programs, rely on existing experience in resolving common disputes from supply contracts. Thus, they lose sight of the specifics of such an object of the dispute as computer programs.In some cases, disputes about the presence or absence of a fact of copyright infringement drag on for several years3.
Despite the fact that the authors have a sufficiently large amount of rights to computer programs and databases, they do not always have an idea of how to manage the rights and what can be done to protect them. The most appropriate approach in this case would be to contact a specialist in the field of copyright, who can provide qualified assistance and answer most of the questions regarding such objects of law as computer programs and databases.
References:1. Civil Code, part 4.2. Berne Convention for the Protection of Literary and Artistic Works.3. Decision of the Supreme Court of the Russian Federation dated 03.08.2018 N 307-ES18-10905 in the case N A42-6657/2015.
Recently, the registration of a program for an electronic computing machine and a Database in ROSPATENT has become quite popular, despite the fact that, in accordance with Article 1262 of the Civil Code of the Russian Federation, the right holder of the program for the electronic computing machine and the Database may register at his own discretion these subject matters in the Federal Executive Authority on Intellectual Property during the entire period of the exclusive right to them.
Many applicants believe that filing these applications is quite a simple procedure, however, they do not take into account the subtleties that exist at the registration of a full set of the documents for the registration.
Further, we shall analyze various grounds, according to which a request for examination can be sent at the consideration of the application for the state registration of the program for the electronic computing machine or the Database.
To file the application for the state registration of the program for the electronic computing machine or the Database, one should submit the set of the documents that will include: the application, the materials identifying the claimed subject matter and the payment document confirming the payment of the state fee. The specific requirements regarding filling in the documents are lodged to each document.
In practice, the requests in connection with incorrect filling in the application are sent for the following reasons:
– the name of the program for the electronic computing machine or the Database characterizes the subject matter that does not refer to the claimed one. An example of this name is: a portal, an algorithm, a website, a software and hardware appliance. The reason, why the Office does not accept the names of such kind is that the above examples can characterize the solution that is not associated with the program for the electronic computing machine or the Database, i.e. the ones that do not contain a program code or structured materials.
– the applicant’s identifiers are not submitted. In accordance with the requirements of the legislation, when filling in the application, it is necessary to indicate the applicant’s identifiers. For an individual, they are a number and series of the passport, and the SNILS, and for a legal entity, they are the OGRN and the INN. The absence of at least one of them will serve the grounds for sending the request.
– the grounds for the emergence of the right to the registered subject matter are not indicated or they are indicated incorrectly. For example, the applicant of the application is one individual, and the authors are a group of individuals, and the grounds for the emergence of the right to the registered subject matter – “the applicant is an author” – are indicated. In this case, the request will be sent due to the fact that the applicant is one person, but there are several authors, and therefore, there is not a clear idea of how the exclusive rights of the authors have passed to the applicant.
– the date of the creation of the program for the electronic computing machine or the Database being later than the date of the publication is indicated. The rights to any subject matter of the copyright emerge immediately at the moment of the creation, however, the publication of this solution can be made much later, and therefore, the date of the publication must be later than the date of the creation.
– there is a note that the authors are not indicated, but further, the information about them is submitted. It is allowed not to indicate the authors in the application for the registration of the program for the electronic computing machine or the Database, or they do not want to be mentioned at the publication. In the first case, the information about the author should not be indicated. Only their number shall be indicated. If the authors do not want to be mentioned in the publication, the information about them will still be entered in the State Register, but there will be no information about them in the official Bulletin. If there is the note that the authors are not indicated, but the information about them is submitted, then the examiner of the Office has a contradiction as to how it is necessary to display the information about the author in the future.
– the person is indicated, who is not as such on the grounds of the indicated creative contribution. In accordance with Article 1228 of the Civil Code of the Russian Federation, the following shall not be recognized the authors of the result of the intellectual activity: the citizens, who have not made a personal creative contribution in achieving such a result, including those, who have rendered only technical, consulting, organizational or financial support or assistance to its author, or those, who have only assisted in registering the rights to such a result or its use, as well as the citizens, who have exercised supervision over the fulfillment of the corresponding works. Also, in accordance with Article 1259 of the Civil Code of the Russian Federation, the copyrights shall not be extended to ideas, concepts, principles, methods, processes, systems, means, solutions of technical, organizational or other tasks, inventions, facts, programming languages. Accordingly, if one of the above actions is indicated as the author’s creative contribution, the examiner will send the request and ask either to clarify the author’s contribution or to exclude it from the list of the authors.
– a legal entity and not an individual is indicated instead of the author. In accordance with Article 1228 of the Civil Code of the Russian Federation, the citizen, whose creative labour has created such a result shall be recognized the author of the result of the intellectual activity. Thus, the creative labour can emerge only to the individual or the group of individuals. The legal entity does not have such properties.
– the application is signed by an unauthorized person. In accordance with the requirements, the application may be signed by the applicant or his representative based on a power of attorney. If the applicant is the legal entity, the application must be signed by the person, who has the right to perform such actions, and sealed with the organization’s seal, if any.
In addition to the requirements for the registration of the application, it is necessary to take into account that the materials identifying the program for the electronic computing machine or the Database must comply with the particular requirements as well. When registering the materials for the program for the electronic computing machine, it is necessary to take into account that the programming language indicated in the abstract must comply with the language in which the very program submitted to the Office is written. If the indicated information does not comply, the examiner will send the request in order to eliminate the identified discrepancy. In addition, it should be noted that when composing the abstract, one should not indicate the information about both the program for the electronic computing machine and about the Database, due to the fact that each subject matter must be registered separately, and they must not be combined, even if the program for the electronic computing machine is designed to manage the database.
The additional requirements are also lodged to the powers of attorney and the payment documents. When registering the power of attorney, it should be taken into account the fact that it must be notarized, otherwise the application materials may not be accepted by the Office at all. With regard to the payment document, it should be remembered that in accordance with the provisions of the tax legislation, the fee for the state registration of the program for the electronic computing machine or the Database must be paid by the applicant himself or by his representative. All the actions performed by the representative on behalf of the applicant must be confirmed by the power of attorney.
Special attention should be paid to the cases, when the applicants are represented as the group of individuals. In this situation, the fee must be paid by each applicant in an equal share. That is, it is not allowed to pay the fee only by one applicant for all. Everyone must pay his share of the fee from his own funds in accordance with the tax legislation.
The above grounds are not a complete and exhaustive list of the reasons for which the Office may send the request at the consideration of the application for the state registration of the program for the electronic computing machine or the Database. In order to exclude the possibility of receiving the requests or to reduce their number to minimum, it is necessary to contact the specialists in this field and to listen to their recommendations.
Some amendments can be made within the framework of an international application filed according to the PCT procedure. This article is devoted to the amendments that can be made in the international application at an international phase and during the period, when which such amendments are allowed to be made.
Correcting or supplementing a priority claim. An applicant may correct or supplement the priority claim in the international application by filing a petition to the Receiving Office or the International Bureau within 16 months from the priority date or, if such correcting or supplementing can become a reason for the amendment of the priority date, within 16 months from such amended priority date, depending on which of these 16-month periods expires first, provided that such petition may be submitted before the expiration of four months from the international filing date. Any petition for correcting or supplementing the priority claims that is received by the Receiving Office or the International Bureau after the applicant’s petition for an early publication of the international application is considered to be unsubmitted, except the cases, when the petition is withdrawn before the completion of the technical preparations for an international publication. If correcting or supplementing the priority claim causes the amendment of the priority date, then any period calculated from the previous priority date and that has not expired yet is calculated from the amended priority date. The applicant may also withdraw the priority claim stated in the international application at any moment before the expiration of 30 months from the priority date. If the international application contains several priority claims, the applicant may withdraw the priority claims both regarding one priority sought and regarding all those indicated in the international application. The withdrawal is considered to be exercised upon the receipt of a notification addressed by the applicant, at his discretion, to the International Bureau, the Receiving Office or the Authority of the International Preliminary Examination.
Amending the claims in the International Bureau. Upon the receipt of an international search report, the applicant is entitled to amend the claims of the international application once by submitting the amendments to the International Bureau within the specified period. At the same time, the applicant may submit a brief explanation of the amendments in accordance with the Instructions to the Patent Cooperation Treaty and indicate how they might influence on the description of the invention and the drawings. The amendments should not go beyond what is disclosed in the originally filed international application.
The amendments that are exercised within the framework of the International Preliminary Examination. The applicant is entitled to amend the claims, the description of the invention and the drawings in a prescribed manner and within a prescribed period before the preparation of the opinion of the International Preliminary Examination. The amendments should not go beyond what has been disclosed in the originally filed international application.
An additional opportunity for submitting the amendments or the arguments. The Authority of the International Preliminary Examination may prepare one or more additional written communications, and at the same time, in accordance with the Instructions to the Patent Cooperation Treaty, the Authority of the International Preliminary Examination may, at the request of the applicant, provide him with one or more additional opportunities for submitting the amendments or the arguments.
Considering the amendments, the arguments and the corrections of obvious errors. The Authority of the International Preliminary Examination may ignore, for the purposes of the written communication or the opinion of the International Preliminary Examination, the amendments, the arguments and the corrections of the obvious errors, if, as the case may be, this Authority received them, allowed or was notified of them after it has started drafting the written communication or the opinion. An amendment is considered to be any amendment, other than the correction of the obvious error, in the claims, the description of the invention or the drawings, including cancelling some claims of the claims, deleting particular places in the description of the invention, or deleting some particular drawings.
In addition, the International Bureau, at the request of the applicant or the Receiving Office, registers the amendments of the following information contained in the international application:
- the information on the applicant, including the name, the location or the residence and the citizenship;
- the information on the author and/or the applicant's agent, including the name or the address.
However, the International Bureau does not register the requested amendment, if the request for the registration was received by it after 30 months from the priority date. The amendments of such kind may be exercised an unlimited number of times. Usually, such amendments are made in the case of transferring the rights to obtain a patent.
All the amendments made at the stage of the international phase allow the applicants avoiding the amendments at the national/regional phases that should be made in each office, while amending at the international stage allows making this in a more unified manner. If the amendments are made at the national/regional phases, it will be necessary to take into account all subtleties and nuances of the patent legislation of the national/regional office, where the international application has been transferred to.
When the persons interested in cancelling the patent for an invention/utility model make a decision to file an objection, they have one question: “And on what ground is it possible to recognize the patent as invalid?”.
In accordance with the current edition of Article 1398 of the Civil Code of the Russian Federation, the patent for an invention, a utility model may be recognized as invalid in full or in part in the cases:
1) of the non-compliance of the invention, the utility model with the patentability conditions (a novelty, an inventive step, an industrial applicability) established by the Civil Code of the Russian Federation, or the requirements stipulated by Paragraph 4 of Article 1349 of the Civil Code of the Russian Federation;
2) of the non-compliance of the application documents for the invention or the utility model submitted on the date of filing it with the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation of the invention or the utility model by a person skilled in the art;
3) when the claims of the invention or the utility model, which are contained in the decision on granting a patent, comprise the features that have not been disclosed on the date of filing the application in the documents submitted on that date (Paragraph 2 of Article 1378);
4) of the grant of the patent, if there are several applications for the identical inventions, utility models or industrial designs having the same priority date, in the violation of the conditions stipulated by Article 1383 of the Civil Code of the Russian Federation;
5) of the grant of the patent with the indication therein as an author or a patent holder of the person, who is not such in accordance with the Civil Code of the Russian Federation or without the indication in the patent as an author or a patent holder of the person, who is such in accordance with the Civil Code of the Russian Federation.
This article will consider cancelling the patent for the invention/utility model in connection with the non-compliance with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation (grounds 1 and 2).
It should be noted that ground 2 was introduced only in October 2014 and, accordingly, currently, very few objections on this ground have been filed with ROSPATENT.
In accordance with Article 1350, 1351 of the Civil Code of the Russian Federation, the solution is industrially applicable, if it can be used in industry, agriculture, health care and other branches of the economy or in the social sphere. That is, if the solution can be applied in some sphere of the human activity, it is, in fact, recognized automatically as industrially applicable. And to understand what is meant by the requirement for disclosing the essence, it is necessary to refer to the legislative documents. In particular, the requirements for the application documents for the grant of the patent for the invention/utility model state that the section “Disclosure of the Essence” should contain the following information: the description to the application for the invention/utility model shall provide the information disclosing the technical result and the essence of the technical solution relating to the product (devices, complexes, sets, substances, the strains of microorganisms, the cell cultures of plants or animals, genetic and protein structures) or to the method (the processes of implementing the actions over a material object with the help of material means), including to the application of the product or the method according to a specific destination (the method and the application according to the specific destination refer only to the inventions) with the completeness that is sufficient for its implementation by the person skilled in the art.
The essence of the invention as a technical solution is expressed in a combination of the essential features, which is sufficient to solve the technical problem indicated by the applicant and to obtain the technical result ensured by the invention/utility model, while the features refer to the essential ones, if they influence on the possibility of solving the technical problem indicated by the applicant and obtaining the technical result ensured by the invention/utility model, i.e. they are in a causal and effect relationship with the said result. The technical results include the results that are a phenomenon, a property and also the technical effect resulting from the phenomenon, the property, which are manifested objectively, while implementing the method or while manufacturing or using the product, including, while using the product obtained directly by the method embodying the invention, and, as a rule, which are characterized by the physical, chemical or biological parameters.
At the same time, it should also be noted that each type of the solutions (the device, the substance, the method, etc.) has its own specific rules, according to which all the solutions that can be patented as an invention or a utility model are described.
The above information is essentially a theory, and we all know perfectly well that the “theory” and the “practice” are different very often. Unfortunately, this phenomenon has not spared the patent law as well.
After reviewing the various opinions of ROSPATENT, two main conclusions can be drawn:
Firstly, over the past two years, less than two dozen objections have been filed in connection with cancelling the patent for the invention/utility model in connection with the non-compliance with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that was sufficient for the implementation. At the same time, it should be noted that almost all the objections in connection with the said criterion and requirement have not been satisfied. As an example, it is possible to consider a decision of ROSPATENT regarding utility model No. 163616, in which the Board satisfied the objection filed in connection with the non-compliance of the claimed solution with the patentability criterion “industrial applicability.” The main argument on the impossibility of the application of the patented solution in any sphere of the human activity was the feature “in the safe area,” which, from the point of view of technology, was uncertain. The description of the disputed patent also lacked the information that would objectively have given an idea on what the feature “in the safe area” meant. However, within the framework of this case, the Board suggested that the rightholder should correct the claims of the utility model, and then it recognized the patent as invalid in part, not in full. A new patent was granted with the corrected claims, from which the feature “in the safe area” was excluded.
Secondly, these criteria are very subjective, due to the fact that each “average” skilled person in a particular field has a completely different level of knowledge and the conclusion of one of them may be cardinally different from the other. Thus, if the solution does not refer, for example, to a “perpetuum mobile” and everyone understands this, then it will be very difficult to recognize the patent as invalid according such criteria.
Summing up the above, before making a decision on filing the objections in connection with the non-compliance of the patent for the invention/utility model with the patentability criterion “industrial applicability” and/or the requirement for disclosing the essence of the invention or the utility model with the completeness that is sufficient for the implementation, it is necessary to weigh up the pros and cons.
Many applicants, having received their long-awaited patent, have absolutely no idea what, in accordance with the norms of the legislation, is a violation of their exclusive rights and what is not a violation. This article focuses on what is the violation of the validity of a European patent in accordance with the provisions of the European legislation.
To begin with, it is necessary to find out what legislation establishes the rules of what is the violation of the patent and what is not the violation. In accordance with the provisions of the European Patent Convention, any violation of the European patent shall be considered by the national legislation. This provision is quite obvious due to the fact that the technical solution described and defended by the patent will be violated on the territory of a certain state.
Thus, in order to understand what actions will be the violation of the European patent, it is necessary to turn to the national legislation of the countries that are the members of the European Patent Convention. As an example, let us consider the patent legislation of Germany and Spain.
According to Paragraph 9 of the German Patent Law, only the right holder shall be entitled to use a patented invention within the framework of the current legislation. Any third party shall be prohibited without a consent of the right holder: manufacturing, supplying, offering for sale, other introducing into the civil circulation or using, importing or storing for this purpose of the patented invention, as well as using a method protected by the patent for an invention, or introducing into the civil circulation or storing for this purpose a product manufactured by the method protected by the patent. Thus, the German Patent Law establishes that the violation shall be unauthorized offering for sale or supplying a means relating to an essential element of the patented invention by the parties, who have not the right to use this invention on the territory of the validity of the patent, as well as importing into the territory of Germany this means by the parties being unauthorized to do so, in the case if the supplier has known or it is obvious from the circumstances that the products supplied by him are intended for the manufacture of the patented product or for the use of the patented method.
At the same time, there are a number of the actions that, in accordance with the German Patent Law, are not the violation of the validity of the patent. These actions include:
- the actions undertaken in a private sector for the non-commercial purposes;
- the actions for the experimental purposes relating to the subject of the patented invention;
- the use of the patented biological material for the selection, the discovery and the development of a new plant variety;
- research, tests and the practical requirements resulting from this, which are necessary to obtain the permissions for marketing medicinal products in the European Union or to obtain a permission for marketing in the member states of the European Union or in third countries;
- a direct individual preparation of medicines in pharmacies based on a prescription of a doctor and the actions related to the medicinal products prepared in this way;
- the use of the subject matter of the patented invention in the hull, equipment and other accessories on board the vessels of another member state of the Paris Convention for the Protection of Industrial Property, when the vessels temporarily or accidentally enter the waters covered by the German Patent Law, provided that such subject matter is used there exclusively for the needs of the vessel;
- the use of the subject matter of the patented invention in the manufacture or operation of the aircrafts or land vehicles of another member state of the Paris Convention for the Protection of Industrial Property or the accessories of such vehicles, which are temporarily or accidentally located on the territory covered by the German Patent Law.
Now, let us consider what is the violation of the European patent on the territory of Spain. According to the Spanish Patent Law, the patent gives its holder the right to prohibit any third party that does not have his consent:
- Manufacturing, offering for sale, introducing into the trade or using the subject matter of the product or importing, or possessing it for any of the above purposes;
- Using the patented method or offering such use, when the third party knows or the circumstances make it obviously clear that the use of the method is prohibited without the consent of the patent holder;
- Offering for sell, introducing into the commercial activity or using the product directly obtained by the patented method, or importing or possessing the said product for any of the said purposes. The patent also grants its holder the right to prevent the third party from supplying or offering for sale, without his consent, the means for the implementation of the patented invention relating to its most essential element to the parties not authorized to use it, when the third party knows or the circumstances make it clear that such means are suitable for the implementation of the invention and which are intended for it.
At the same time, the Spanish Patent Law, as well as the German Patent Law, contains a number of the actions that are not the violation of the patent. These actions include:
- the actions committed in a private sphere and for non-commercial purposes;
- the actions committed for the experimental purposes, which relate to the subject matter of the patented invention.
- carrying out the research and tests necessary to obtain a permission for the sale of the medicinal products in Spain or abroad, as well as the relevant practical requirements, including the preparatory actions, the preparation and use of an active substance for these purposes.
- preparing the medicines, which are to be made in pharmacies regardless of time and per unit while implementing a prescription of a doctor, or the actions related to the medicines prepared in this way.
- using the subject matter of the invention patented on the vessels of the member countries of the Paris Convention for the Protection of Industrial Property, in the hull of the vessel, the machinery, in the rigging, apparatus and in other parts, when these vessels temporarily or accidentally enter the Spanish waters, provided that the subject matter of the invention is used exclusively for the needs of the vessel.
- using the subject matter of the patented invention at constructing or operating the air vehicles or land vehicles, which belong to the member countries of the Paris Convention for the Protection of Industrial Property or its accessories, when these vehicles are temporarily or accidentally located on the territory of Spain.
Thus, in the case if the right holder according to the patent assumes that his exclusive rights are violated, it is necessary to contact the professionals in this field. The specialists will be able to establish definitely whether there are the reasons for writing a claim against the violator or whether the actions committed by the third party are legal.
The majority of the applicants, who have made a decision to file their applications with the regional patent offices of Europe (EPO) and Eurasia (EAPO) have little idea what they need to do in the situation, when the decision to grant a patent has been made and the long-awaited patent has been granted.
At first, it is necessary to understand clearly what is meant by such concepts as “validation” and “annual maintenance.” The validation of the patent essentially means the national adaptation of the patent, namely the translation of the application into the language of the state, where it is intended to apply the invention. At the same time, not all regional offices provide for such a procedure.
Let us consider the differences existing in the procedure of the national adaptation in the regional offices of the EPO and the EAPO. In the EPO, the validation of the patent is a mandatory requirement for the patent to take effect. As to the EAPO, it does not require the use of the validation procedure, what, in turn, simplifies greatly the lives of many applicants and rights holders.
Now, let us turn our attention in more detail to what actions the applicant/right holder should undertake for the validation of the patent in the EPO. After making a decision on the readiness of the patent to be granted, subject to the compliance with the conditions of the timely payment of the required fees and the submission of the translations of the claims into other two official languages of the EPO (the official languages of the EPO are English, German and French), a group of the examiners shall make a decision on the grant of a European patent. From this point on, the European patent shall be divided into a number of separate national patents in the indicated Contracting States, respectively, the European patent shall transfer to the jurisdiction of the patent offices of the indicated Contracting States. Some of these countries require a mandatory submission of the translation of the entire patent document, or at least the claims, if the patent has been issued not in the official language of the Contracting State. In case of failure to translate the patent in the required language, the European patent shall lose its effect on the territory of the relevant Contracting State.
At the same time, some countries included in the London Agreement (Switzerland, Germany, Great Britain, France, Liechtenstein, Ireland, Luxembourg, Monaco, Malta) do not require the mandatory validation – the patent on their territory will be in effect without this procedure, it is necessary only to pay the fee for its effect.
Thus, the validation of the patent in the EPO essentially consists in translating at least the claims into the relevant national language of the European state of interest and paying the relevant fees.
Now, let us consider what is meant by the concept “the annual maintenance of the patent.” The annual maintenance of the effect of the patent is a legally significant action aimed at preserving the exclusive right granted by the patent.
In the EAPO, the fees are paid annually for the maintenance of the effect of the Eurasian patent. The fees for the maintenance of the effect of the Eurasian patent shall be paid after it is granted annually on the date, which corresponds to the date of filing the Eurasian application. In order to continue the effect of the Eurasian patent in each Contracting State, the right holder must indicate the name of each Contracting State, in which he wishes to continue the effect of the patent. Such indication shall be sent to the EAPO simultaneously with the payment of the fee for the maintenance of the Eurasian patent in effect. This fee shall be paid in respect of each indicated Contracting State. Thus, the right holder according to the Eurasian patent does not need applying to each patent office of the member state of the Eurasian Convention, what in turn reduces the financial costs for the maintenance, due to the fact that there is no need paying for the services of the attorney for the actions undertaken by him related to the payment of the annual fees separately to each national patent office.
In the EPO, the situation with the annual maintenance is somewhat different. The main difference between the EPO and the EAPO in terms of the payment of the annual fees is the payment of the annual fees for the maintenance of the effect of the application. That is, not yet having an idea whether the European patent will be granted, it is necessary to pay the fees regarding the application, and in the case of a refusal to grant the patent, nobody will return the fees. Having received his long-awaited European patent and having validated it in the countries of the European Union of interest, the right holder will need paying the fee for the annual maintenance of the patent to each national office separately. Thus, the annual maintenance of the European patent in the countries, in which it has been validated, is financially expensive due to the fact that it will be necessary to pay for the services for the payment of each separate fee. But at the same time, it should be noted that many European patent attorneys have access to the national offices, what allows reducing the costs for the annual maintenance of the patent.
Despite the fact that at the first glance, the validation and annual maintenance of the patents in the regional offices are the more or less simple actions, it is always better to turn to the professionals in this field, who will always tell the right holder where he can save on the fees due to the fact that he has the right to certain benefits.
When we hear a word patent, we most often imagine the patent for some device, method, composition. However, the modern legislation provides for the defence of the exclusive rights, including in the field of agriculture, in particular, in the form of a patent for a selection achievement.
In accordance with Article 1412 of the Civil Code of the Russian Federation, the subject matters of the intellectual rights to selection achievements are the plant varieties and the animal breeds registered in the State Register of the Protected Selection Achievements, if these results of the intellectual activity comply with the established requirements to such selection achievements. A plant variety is a group of plants that, regardless of the protectability, is determined by the features characterizing this genotype or a combination of genotypes and it is distinctive from other groups of plants of the same botanical taxon by one or more features. The variety may be represented by one or more plants, a part or several parts of a plant, provided that such part or such parts may be used to reproduce the whole plants of the variety. The protected categories of the plant variety are a clone, a line, a first filial hybrid, a population. An animal breed is a group of animals that, regardless of the protectability, possesses the genetically determined biological and morphological properties and features, some of which being specific to this group and distinguish it from other groups of animals. The breed can be represented by a female or male individual or a breeding material that is being intended for the reproduction of the breed by animals (breeding animals), their gametes or zygotes (embryos). The protected categories of the animal breeds are a type, line crossing.
Both for patenting the technical solutions and for obtaining a patent for a selection achievement, it is necessary for it to comply with the protectability criteria. The patent is granted for the selection achievement complying with the protectability criteria and relating to the botanical and zoological genera and species, which list is established by the Federal Executive Authority performing the normative and legal regulation in the field of agriculture. In Russia, such authority is the Ministry of Agriculture. The protectability criteria of the selection achievement are novelty, distinctiveness, homogeneity, stability. The plant variety and the animal breed are considered to be new, if, at the date of filing an application for the grant of a patent, the seeds or the breeding material of the given selection achievement have not been sold or otherwise transferred by the breeder, his successor or with their consent to other persons for the use of the selection achievement:
1) on the territory of the Russian Federation, earlier than one year prior to the indicated date;
2) on the territory of another state, earlier than four years or, in the case of the grape varieties, woody ornamental, woody fruit crops and woody forest species, earlier than six years prior to the indicated date. The selection achievement must be distinctive obviously from any other well-known selection achievement available by the date of filing the application for the grant of a patent. A well-known selection achievement is the selection achievement, the information of which is in official catalogues or in an informational stock, or which has an accurate description in one of the publications. Filing an application for the grant of a patent also makes the selection achievement to be well-known since the date of filing the application, provided that the patent has been granted for this selection achievement. The plants of the same variety, the animals of the same breed should be sufficiently homogeneous by their features taking into account some individual deviations, which may take place in connection with the peculiarities of the reproduction. The selection achievement is considered to be stable, if its main features remain unchanged after the repeated reproduction or in the case of a special cycle of the reproduction – at the end of each cycle of the reproduction. To obtain a patent, it is necessary for the claimed solution to undergo an examination. Any interested person may, within six months since the date of the publication of the information on the application for the grant of a patent, file with the Federal Executive Authority for Selection Achievements a petition for carrying out the examination of the claimed selection achievement for novelty. In Russia, the Federal Executive Authority for the Selection Achievements is the State Commission of the Russian Federation for Testing and Protecting the Selection Achievements
If the selection achievement does not comply with the criterion of novelty, a decision to refuse to grant a patent for the selection achievement is made. The tests of the selection achievement for distinctiveness, homogeneity and stability are carried out according to the methods and within the period established by the Federal Executive Authority carrying out the normative and legal regulation in the field of agriculture. The applicant is obliged to provide for the tests the necessary amount of the seeds, the breeding material to the address and within the period, which are indicated by the Federal Executive Authority for the Selection Achievements.
The exclusive right to the selection achievement is recognized and protected subject to the state registration of the selection achievement in the State Register of the Protected Selection Achievements, in accordance with which the Federal Executive Authority for the Selection Achievements grants a patent for the selection achievement to the applicant. The patent for the selection achievement certifies a priority of the selection achievement, the authorship and the exclusive right to the selection achievement. The patent holder owns the exclusive right to the use of the selection achievement, and he can dispose of the exclusive right to the selection achievement. The exclusive right to the selection achievement shall be extended also to a plant material, i.e. the plant or its part used for the purposes other than the reproduction of the variety, to the market animals, i.e. to the animals used for the purposes different from the purposes of the reproduction of the breed, which have been obtained accordingly from the seeds or from the breeding animals, if such seeds or breeding animals have been introduced into the civil circulation without a permission of the patent holder. The use of the selection achievement is considered to be carrying out the following actions with the seeds and the breeding material of the selection achievement:
1) producing and reproducing;
2) bringing to the sowing conditions for a subsequent reproduction;
3) offering for sale;
4) selling and other methods of the introduction into the civil circulation;
5) exporting from the territory of the Russian Federation;
6) importing into the territory of the Russian Federation;
7) storing for the purposes indicated in subparagraphs 1-6.
The exclusive right to the selection achievement shall also be extended to the seeds and the breeding material, which inherit substantially the features of other protected (original) plant variety or animal breed, if these protected variety or breed are not themselves the selection achievements inheriting substantially the features of other selection achievements; are not distinctive obviously from the protected plant variety or animal breed; require a repeated use of the protected plant variety for producing seeds.
It should also be noted that, both the patent for a technical solution, and the patent for a selection achievement, by virtue of the exclusive right concept has a certain period of validity. The period of validity of the exclusive right to the selection achievement and the patent certifying this right shall be calculated since the date of the state registration of the selection achievement in the State Register of the Protected Selection Achievements and shall be thirty years. For the grape varieties, woody ornamental, fruit crops and woody forest species, including their rootstocks, the period of the exclusive right and the patent certifying this right is thirty-five years. After the termination of the exclusive right, the selection achievement transfers into the public domain. The selection achievement that has transferred into the public domain may be freely used by any person without anyone's consent or permission and without the payment of a fee for the use.
Drawing an analogy between the exclusive right to the technical solution, the exclusive right to the selective achievement may be transferred to another person on the basis of an alienation agreement. A license on granting the right to use the selection achievement may also be issued.
For many people, such countries as Australia and New Zealand are associated with very far abroad. However, these countries are quite popular for patenting. This article is devoted to the peculiarities of patenting technical solutions in Australia and New Zealand.
To begin with, it is necessary to consider the subtleties and nuances of patenting in Australia.
The Patents Act 1990 is the main legislative document in the field of the patent law in Australia. A patent granted by the Australian Patent Office ensures temporary defence to those, who have succeeded in the creation of a useful technology, device, substance, process or method. Thus, according to the regulatory documents of Australia, the patent defence can be granted to a wide range of inventions. In addition to traditional inventions (such as apparatus and mechanical devices), such solutions as: computer inventions, business methods (a method directly connected with the physical form or device to create a useful product), biological inventions (for example, the living organisms modified in a genotypic or phenotypic way, isolated polypeptides and proteins), microorganisms and other biological materials are subject to patenting.
However, there are also limitations in patenting. In particular, in accordance with the patent legislation of Australia, a human being or a biological process, artistic creation, mathematical models, plans, schemes and purely mental processes cannot be patented.
In accordance with the Patents Act 1990, an inventor may file an application for two different patent types: a standard patent for an invention and a patent for an innovation.
A standard patent ensures a long-term defence and control over the invention. It lasts up to 20 years from the date of filing the application (or up to 25 years for pharmaceutical compositions). The invention claimed in the standard patent must be new, it must have an inventive step and it must be industrially applicable. These criteria are standard for the majority of the countries in the world. One of the main differences in the consideration of the application in Australia at a substantive examination stage is that the whole process of the substantive examination should take place within 12 months, during which an unlimited number of requests can be sent to the applicant, in response to which the applicant must submit his argument. If within the above period the applicant fails to persuade the examiner that the decision claimed by him is patentable, he also has a possibility of carrying out a re-examination, subject to the payment of a prescribed fee.
The disadvantage of the standard patent is long carrying out the examination. In order to speed up and stimulate applicants, a patent for innovations has been introduced. The patent for innovations is in effect within up to eight years and it is designed to defend the inventions that do not comply with the inventive step required by the standard patents. This is a relatively quick and inexpensive way to obtain defence for a new device, substance, method or process.
The patent for innovations requires an innovative step, i.e. novelty, not an inventive step. The innovative step exists, when the invention differs from what has been previously known, and this difference makes a significant contribution to the work of the invention. The patent for innovations defends a gradual promotion of the current technologies, rather than being an innovative invention.
The patent for innovations is usually granted within a month after the submission of a complete set of the documents with respect to the application. No substantive examination is carried out with respect to the innovation patent. The patent for innovations is legally effective only if it has been considered by the Australian Patent Office, it has been recognized as complying with the requirements of the Patents Act 1990 and it has been certified. The examination of the patent for innovations will be carried out only at the request of the applicant, a third party or if the Office’s examiner thinks to study the patent. The patent holder is not obliged to pay for the examination, until it is requested by the third party or the examiner. If the examination has been requested, it must be carried out within 6 months.
By its essence, the innovation patent is an equivalent to a patent for a utility model.
In addition to the standard and innovative application for a patent, the patent legislation of Australia provides the applicants with a possibility to file a preliminary application. Before filing an application for any patent, you may file a preliminary application. The preliminary applications set a priority date, which is convenient, if you need to prove that you are the first to come up with a new invention. This is an inexpensive way to declare your intention to file a complete application for a patent in the future. However, filing the preliminary application, in fact, does not represent the patent defence.
To request the priority date for the preliminary application, you must file an application for a patent (standard or innovation) or file a PCT application within 12 months after filing the preliminary application.
The preliminary application will also give the necessary time to determine whether such invention is worth the time, money and efforts spared in connection with filing the application for a patent. It is also cheaper to file a preliminary application than an application for a standard or innovative patent.
Some details of the preliminary application, such as a name of the invention and a name of the applicant, will be published in the Australian Official Journal of Patents. However, no technical or scientific details of the claimed solution will be disclosed.
Now, let us consider the possibilities of patenting technical solutions in New Zealand.
Until recently, a local check for the compliance of the claimed solution with the established patentability criteria has been carried out in New Zealand. Currently, a generally accepted check for the compliance of the claimed solution based on the state of the art known worldwide is carried out in New Zealand.
As in many countries around the world, the patent legislation of New Zealand has a number of the solutions that cannot be patented as an invention. Such solutions include computer programs, human beings and the biological processes of their formation, the methods of treating human beings in a surgical or therapeutic way, the methods of diagnosis practiced on human beings, plant varieties. In all other issues, the consideration of the application is carried out in a manner similar to the procedures established in the majority of the countries of the world.
In New Zealand, as in Australia, it is possible to file a preliminary application in addition to a standard application for an invention. The preliminary application describes the invention generally, often in less detail than the complete application. The preliminary application itself is not sufficient to obtain a patent – it is also necessary to submit the complete application in the future.
You may file the preliminary application, if your invention is at an early development stage and you want to “win” more time for the research and development. The advantage is that the date of filing the preliminary application may be the date of the beginning of your patent effect. When you file the preliminary application, it will be checked for the compliance with the legislation of New Zealand. The preliminary application must include a name of the invention and a description of the invention. This will normally include a broad definition of the invention (all its essential elements and how they are interrelated) and a sufficiently detailed description to enable the skilled person to determine whether it is industrially applicable. Drawings are often a part of the preliminary application, as they are a way of demonstrating the invention and the principles of its work.
Thus, the consideration of applications for inventions in Australia and New Zealand is not very different from the consideration of applications in the majority of the countries of the world, but they have their own peculiarities.
The modern defence system of the exclusive right to an invention allows defending one’s technical solution within the framework of filing an application to the Eurasian Patent Office.
The main purpose of the Eurasian Patent Office is to create an international regional system of the legal protection of inventions based on a single Eurasian patent being valid on the territory of all member states of the Eurasian Convention.
Currently, the member states of the Eurasian Convention are the Russian Federation, the Republic of Azerbaijan, the Republic of Armenia, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz Republic, the Republic of Tajikistan.
As in the majority of Offices, the Eurasian patent for an invention is granted provided that the claimed solution is new, it has an inventive step and it is industrially applicable.
At the same time, the Eurasian Patent Office shall not recognize as the inventions the subject matters that are actually: discoveries; scientific theories and mathematical methods; the information representation; the methods for arranging and managing the economy; conventional symbols, schedules, rules, including the rules of games; the methods for performing mental operations; the algorithms and programs for electronic computing machines; the projects and schemes of the layout of constructions, buildings, territories; the solutions relating only to an appearance of products aimed at meeting the aesthetic needs. The above subject matters shall not be recognized as inventions in the cases, when the Eurasian application or the Eurasian patent refers only directly to any of these subject matters as such. The Eurasian patents shall not be granted for: plant varieties and animal breeds; integrated microcircuit topologies; the inventions, whose commercial usage must be prevented in order to protect the public order or morality, including the protection of the life and health of people and animals or the protection of plants or to avoid doing serious damage to the environment. At the same time, such use can not be considered as such only by virtue of the fact that it is forbidden by the legislation of one or several member states of the Eurasian Convention.
Essentially, the procedure for filing and considering an application in the Eurasian Patent Office does not differ from the procedures in the majority of the national Offices.
However, there are a number of differences from the procedures for considering an application for an invention, which are habitual to an applicant. Such differences include carrying out a patent search with forwarding the report about it to the applicant prior to the beginning of the substantive consideration of the application. Thus, the applicant is given a possibility to assess the prospects of obtaining a Eurasian patent. If by the result of the search carried out, the applicant understands that he has no chances to overcome the sources of the information identified in the prior art, he can discontinue the consideration of the application prior to filing a petition for a substantive examination, and therefore, he will not incur expenses to the payment of the relevant fees for filing the petition for the substantive examination.
The Eurasian patent procedure also provides the applicants a possibility of carrying out an accelerated examination of the Eurasian application, both as a paid service and within the framework of the PPH program on the basis of the treaties signed by the Eurasian Office with a number of the leading patent Offices of the world, in particular with the European Patent Office, the Patent office of Japan, the State Intellectual Property Office of the People's Republic of China, the Republic of Korea.
The Eurasian patent may also be obtained based on the international application filed in accordance with the Patent Cooperation Treaty (PCT).
When filing an application with the Eurasian Patent Office, the applicant has a possibility of getting discounts, provided that:
– if the Eurasian application contains the international search report prepared by one of the international search authorities, the fee for filing the Eurasian application shall be reduced by 25% with respect to those inventions, regarding which the report has been prepared, if such reports are prepared by the Federal Service for Intellectual Property (the Russian Federation) – the fee shall be reduced by 40%.
– if the applicants are the individuals, who are citizens and who have a permanent residence on the territory of the state, which is included in the list of the countries that meet the criteria established for providing benefits regarding the payment of the international fees within the framework of the Patent Cooperation Treaty, they shall pay the fees connected with filing the Eurasian application, obtaining the Eurasian patent, transferring and recovering the rights to the Eurasian application or the Eurasian patent according to the discounted rate reduced by 50%. Usually this list includes the individuals from the countries of the “third world.” This kind of the fee reduction is also stipulated for a number of the legal entities from the countries of the “third world.”
– if the applicants are the individuals from the member states of the Convention, then the fees connected with filing the Eurasian application, obtaining the Eurasian patent, transferring and recovering the rights to the Eurasian application or the Eurasian patent shall be reduced by 90%.
– if the applicants are the legal entities from the member states of the Convention, the fees depending on the categories of the legal entity may be reduced up to 70%.
If there are several applicants, the relevant benefits shall be applied only in the cases, when each applicant is entitled to the benefit sought.
The Eurasian patent shall be granted for a period of 20 years from the date of filing the Eurasian application for granting a Eurasian patent for an invention.
The validity period of the Eurasian patent in any of the above states shall be extended with respect to the subject matters of the inventions, for which the extension of the validity period of the national patents is permitted – such subject matters are mainly drugs, pesticides and agrochemicals. At the same time, the extension of the validity period of the Eurasian patent with respect to such state shall be carried by the Eurasian Office according to the conditions stipulated by the legislation of this state for the extension of the validity period the of the national patent for an invention.
Currently, the extension of the validity period of the Eurasian patent is possible with respect to all member states of the Eurasian Convention, with the exception of the Republic of Tajikistan and the Republic of Kyrgyzstan, as well as with respect to the Republic of Moldova, with the Government of which the Eurasian Patent Office concluded a Treaty on the Legal Protection of the Inventions on the Territory of the Republic of Moldova after the denunciation by the Republic of Moldova of the Eurasian Patent Convention of April 12, 2012. According to Article 1 of the International Treaty, the Republic of Moldova recognizes the validity on its territory of the Eurasian patents granted according to the Eurasian applications having the filing date prior to April 26, 2012.
Another difference in considering the Eurasian applications is a possibility to convert the Eurasian applications into the national patent applications. Before the expiry of six months from the date of the receipt by the applicant of the notification of the Eurasian Office on a refusal to grant the Eurasian patent or from the date of the receipt by the applicant of the notification of the Eurasian Office on a refusal to satisfy the objections, the applicant may file a petition with the Eurasian Office indicating the Contracting States, where he wishes to obtain a patent according to the national procedure. In each Contracting State indicated in such a way, the Eurasian application with respect to which such decision has been made and which is a subject of such petition, shall be considered to be a properly executed national application, which has been filed with the national Office with the same filing date and, if any, the priority date as the Eurasian application, with all the consequences stipulated by the national legislation and it shall be further processed in the national Office, provided that the applicant pays the required national fees to the national Office.
With the entry of the Eurasian Convention into force, a single patent space was formed on the territory of the member states, which ensures:
– simplifying and cheapening the procedure for obtaining the protection document, which is valid in all member states of the Convention (one Eurasian application is in one language (Russian), one examination, a single Eurasian patent);
– a system of a mandatory check of the examination of the Eurasian applications and, as a consequence, obtaining reliable Eurasian patents for inventions;
– harmonizing the protection of the rights of the patent holders within the single patent space on the basis of the Convention and other normative legal acts connected with it.
In the age of the digital technology, we can not imagine our life without gadgets and other digital devices. The field of medicine has also not escaped this development. This article is devoted, in my opinion, to the most unusual solutions in medicine, which we could only see in a fantastic movie 10-15 years ago.
In 2012, Google Inc. filed a number of applications and afterwards it obtained the patents for a digital contact lens (for example, the US patent US8960899B2). The Google-lens will provide its owner with the information about the presence of allergens in the atmosphere, hazardous substances or other particles that can have a destructive impact on his health. This development includes a built-in scanner that will be able to collect the data and it will possibly be able to bring the person to the multi-channel visual perception of the world. It is difficult to overestimate the possibility of smart lenses for a person. Despite the fact that such device will be used by many people, in the first instance, as an entertainment, however, its main purpose is to provide a help to the user, including a medical help. The possibilities of the lenses as a medical tracker are almost unlimited – using the microscopic sensors, these devices will be able to collect the most complete picture of the state of health of their carrier. One of the peculiarities of the patented device is its communication with a smartphone to transmit the data about the body biometrics and to take into account the level of alcohol in the blood. Also, the important advantage of the smart lens is the ability to scan quickly a surrounding space, what can provide the additional information for the people with the impaired vision or hearing.
In addition, the modern medicine does not stand still in the field of transplantation as well. One of the progressive trends is printing organs on a 3D printer. The companies all over the world compete to defend their exclusive rights to this technology. A number of urgent problems confront the healthcare industry. The United Network for Organ Sharing (UNOS) registered 105305 patients, who are in need of the organ transplantation as of December 2009. Every year, rather more patients are added to the UNOS list than the number of the transplantation operations being conducted, what results in an overall increase in the number of the patients waiting for transplantation. In 2010, Organovo Inc. filed an application for the devices, systems and methods for manufacturing fabric (the US application US 61/405,582) and afterwards extended its validity in many countries of the world. This technology allows printing liver tissues. Many other companies are also involved in printing viable human organs. For example, Princeton University has patented a 3D (the US patent US 9517128 B2) printer capable of printing a cartilaginous tissue such as auricular cartilage, etc.
Also, an important breakthrough in medicine, and especially in surgery, is the Da Vinci robot. This technology is protected by a number of patents. One of these patents is issued in Russia (the RF patent RU 2412800 С2) for a robotic surgical system to perform minimal invasive interventions. The main control of this system will be entrusted on a real surgeon, but many steps of performing will be corrected by the computer itself. The undoubted achievement is that the robot-surgeon allows performing those microsurgical manipulations, in which the accuracy is important up to a nanometer, and, at the same time, its hand will never tremble with excitement or fatigue, what eliminates completely the human factor during an operation.
And finally, in my opinion, one of the main patented solutions that I would like to pay special attention to is a nerve-transplantat. The US patent US9370607B2 for this solution belongs to the Chinese company TSINGHUA UNIVERSITY. The nerve-transplantat is a freely constructing carbon structure from the combined nanotubes attracting to each other by the van der Waals attracting force, a hydrophilic layer and a nervous system, which has polarity facing the polar surface of the hydrophilic layer, wherein the polar surface material contains polyetherimide, wherein the hydrophilic layer is located between the structure, the carbon nanotubes and the nervous system, wherein the nervous system contains a lot of neurons connected with each other.
The communications and impulses that arise in such new structures are in no way inferior in the speed of transferring to the natural ones, and they are often even superior to them. This invention will make it possible for a huge number of the patients, who have suffered stroke, to avoid paralysis, to solve the problem of many neurological diseases. It is also planned to use this approach to ensure a successful treatment of ICP (infantile cerebral paralysis), what will save millions of people in the world from disability.
The above examples are a very small part of what is being currently patented in the medical field. Despite the fact that the patent is essentially a “tool” of business, but not of science, it nevertheless influences significantly on the development of science. It is just the availability of the patent that allows attracting the investors, who are willing to invest in the development of science.
With the modern rates of the development of science and technology, it may be assumed that, in the nearest future, the mankind will come to a conclusion that the majority of the organs can be grown and transplanted to a person in need. Also, it will be possible to make the life easier to the people, who are born with developmental disorders or who have suffered in an accident.
Along with the popular subject matters of intellectual property, such as inventions, utility models, the programmes for electronic computing machines, and so on, the modern legislation also grants protection to such subject matter of intellectual property as an integrated microcircuit topology. In accordance with the Civil Code (Paragraph 1 of Article 1448 of the Civil Code of the Russian Federation), an integrated microcircuit topology is a spatial and geometric arrangement of a set of the integrated microcircuit elements and the connections between them, which is fixed on a material medium. At the same time, an integrated microcircuit is a microelectronic product of a final or intermediate form designated to perform the function of an electronic circuit, which elements and connections are inseparably formed in the volume and (or) on the surface of the material, on which basis the product is made. In this case, blocks, triggers, drivers, address stacks and everything else that can be located on the surface of the microcircuit shall be meant by the elements.
The legal protection, in accordance with the Civil Code of the Russian Federation, shall be granted only to the topologies of the integrated microcircuit consisting of the elements that are known to specialists in the field of the development of integrated microcircuit topologies on the date of its creation, if the spatial and geometric arrangement of the set of such elements and connections between them generally comply with the requirement of originality. At the same time, the legal protection granted by this Code shall not be extended to the ideas, methods, systems, technology or the coded information that may be embodied in the integrated microcircuit topology. That is, the integrated microcircuit topology can be compared to some extent with a location map.
The exclusive right to the protected topology is in effect during ten years (Paragraph 1 of Article 1457 of the Civil Code of the Russian Federation).
The commencement of the effect period of the exclusive right to the protected topology shall be determined according to the earliest of the following dates (Paragraph 2 of Article 1457), namely:
– according to the date of the first use of the protected topology, which shall mean the earliest documented date of the introduction into circulation in the Russian Federation or any foreign country of this topology, an integrated circuit with this topology or a product including such integrated microcircuit;
– according to the date of the registration of the topology with the Federal Executive Authority on Intellectual Property.
The author of the integrated microcircuit topology that complies with the terms for granting the legal protection according to this Code (topology) shall possess the following intellectual rights:
1) an exclusive right;
2) a right of authorship.
In this case, in accordance with Paragraph 2 of Article 1454, the use of the topology shall be recognized the actions aimed at gaining profits, in particular:
1) reproducing the topology as a whole or in part by including into the integrated microcircuit or in any other way, with the exception of reproducing only that part of the topology that is not original;
2) importing into the territory of the Russian Federation, selling and other introducing into circulation the topology, or the integrated microcircuit, in which this topology is included, or the product including such integrated microcircuit.
To register the integrated microcircuit topology, the following actions should be performed.
The author of the topology or other right holder, directly or through his representative, may optionally register the topology with the Federal Executive Authority on Intellectual Property by filing an application for the state registration of the integrated microcircuit topology.
The topologies containing the information constituting a state and other secret protected by the law shall not be subject to the official registration. The applicant shall be responsible for disclosing the information about the topologies containing a state secret in accordance with the legislation of the Russian Federation.
Filing the application for the registration can be made within a period not exceeding two years from the date of the first use of the topology, if it has taken place. The application for the registration should relate to one topology and it should contain (Paragraph 3 of Article 1452 of the Civil Code of the Russian Federation):
1) an application for the state registration of the topology indicating the person, in whose name the state registration is requested, as well as the author, if the latter has not refused to be mentioned as such, the place of residence or location of each of them, the date of the first use of the topology, if it has taken place;
2) the deposited materials identifying the topology, including an abstract;
3) a document confirming the payment of a fee in the prescribed amount or the grounds for exemption from paying the fee, or for reducing its size, or for postponing its payment.
The rules for formalizing an application for the registration are established by the Federal Executive Authority that exercises the legal and normative regulation in the field of intellectual property (Paragraph 4 of Article 1452 of the Civil Code of the Russian Federation).
After receiving the application for the registration, the Federal Executive Authority on Intellectual Property checks the availability of the necessary documents and their compliance with the requirements of the legislation (Paragraph 5 of Article 1452 of the Civil Code of the Russian Federation). If the results of the check are positive, the Federal Authority enters the topology into the Register of Integrated Microcircuit Topologies, grants a certificate of the state registration of the integrated microcircuit topology to the applicant and publishes the information on the registered topology in the official bulletin.
At the request of the Federal Executive Authority on Intellectual Property or at the own initiative, the applicant is entitled, before publishing the information in the official bulletin, to append, clarify and amend the materials of the application for the registration.
In order to notify about his rights, the right holder of the topology or his successor has the right to indicate on the protected topology, as well as on the products that include such topology, a notification on this in the form of highlighted capital letter T (“T,” [T], T* or T), the date of the commencement of the term of the effect of the exclusive right to the protected topology and the information allowing an identification of the right holder.
The right to use the protected topology, as well as the exclusive right to the protected topology may be transferred to other individuals or legal entities under an agreement.
Moreover, if the integrated microcircuit topology has been registered with the Federal Executive Authority, then the agreements on the alienation and on the pledge of the exclusive right to the registered topology, the license agreements on granting the right to use the registered topology and the transfer of the exclusive right to such topology to other persons without an agreement shall be subject to the state registration with the Federal Executive Authority on Intellectual Property.
The information on the change of the right holder and on encumbering the exclusive right to the topology shall be entered into the Register of Integrated Microcircuit Topologies on the basis of the registered agreement or other title document and shall be published in the specified official bulletin.
The integrated microcircuit topology is the most important subject matter of intellectual property in the field of microelectronics. When the topology is created, the author is looking for a specific solution exactly regarding the microcircuit operation, however, it is not the content of this solution that will be protected by the law, but only the form — the arrangement of the microcircuit elements.
Currently, according to the legislation of the Russian Federation, the rights to software are protected as a subject matter of the copyright and they are equated to literary works. In accordance with Article 1225 of the Civil Code of the Russian Federation, the software shall be a subject matter of intellectual property, respectively, the defence of the intellectual rights shall be extended to all software developments by default (at the same time, they are not subject to a mandatory registration). But it is possible to obtain an additional defence through the registration of the software with Rospatent and the Ministry of Digital Development, Communications and Mass Media of the Russian Federation (the Ministry of Communications and Mass Media).
In order to understand the difference between two types of the registration of the program for the electronic computing machine, it is necessary to understand what the registration in each of these departments is and what its peculiarities are.
The registration of the program for the electronic computing machine with ROSPATENT provides the following advantages:
– obtaining a certificate of the state-approved format, what is considered as a confirmation of the exclusive right to computer programs, and as a consequences, it is an important circumstance, when transferring the rights to the software product to potential licensees and buyers;
– the registered software product data are entered in the state register, what gives a certain legal defence of the interests of the right holders and reduces the risk of conflict situations arising from gaining various kinds of profits from the use of the program;
– the certificate is one of the main documents, when the intellectual rights are defended in the court;
– the confirmation of the registration becomes the most important document in countering a computer “piracy;”
– the availability of the document confirming the intellectual rights serves as a basis of the relationships with investors and potential partners;
– the certificate on the registration is a basis for entering the software product in the company's books and contributing it into a share capital as an intangible asset;
– the registration provides the possibilities of a safer participation in various exhibitions and competitions of an international character;
– the document on the registration confirms the availability of the exclusive right to the program, while resolving the issue on attracting additional investments in the form of loans.
At the same time, the registration of the program for the electronic computing machine with ROSPATENT takes place rather quickly, within two months and according to the formal features. To register, it is necessary to submit a source program code or its part and the brief information on the field of the application, the purpose and the functionality of the software product.
Now, let us consider the essence of the registration of the program for the electronic computing machine with the Ministry of Communications and Mass Media.
Since January 1, 2016, the law has taken effect in the Russian Federation that stipulates the creation of a register of the Russian software and defines the criteria for determining the origin of the domestic software. The Resolution of the Government establishes a prohibition for the admission of the software originating from the foreign countries, while carrying out the procurements for the public and municipal needs. The unified register was created in order to expand the use of the Russian software and to confirm its Russian origin, as well as to provide the state support to the domestic right holders of the software. From now on, the Government may restrict the admission of the software for the participation in the public procurements. This means that the public customer is obliged first of all to search for the software products he needs in the register of the Russian software of the Ministry of Communications and Mass Media.
The registration of the program for the electronic computing machine with the Ministry of Communications and Mass Media is similar to the registration with ROSPATENT. However, there are differences, too. To register, it is necessary to meet certain criteria; in particular, the following requirements are established for the inclusion in the register:
1) the right holder of the Russian software may be a citizen of the Russian Federation or a commercial organization. At the same time, a share of the participation of the Russian citizens, organizations, the subjects of the Russian Federation, the Russian Federation in the commercial organization should be more than 50%.
2) The software must be introduced into the civil circulation on the territory of the Russian Federation.
3) The information on the software product can not constitute a state secret.
4) The total amount of the payments for a calendar year under the license agreements in relation to the foreign legal entities and the individuals is less than 30 percent of the revenue of the right holder of the software from its implementation, including granting the rights to the use.
If the above criteria are met, then it is possible to carry out the registration. To do this, it is necessary to fill in an online form and to enter the information on the software product. First of all, one will have to indicate a link to the website of the right holder on the Internet, where the documentation containing the description of the functional characteristics of the software, as well as the information, which is necessary for the operation and improvement of the program, are posted. In other words, it is necessary to give a valid link to the page with the software user information. Among other things, it is necessary to provide access to a copy of the software.
It is also necessary to indicate in the online form a basis of the occurrence of the applicant’s exclusive right to the program (for example, his own development, a work made for hire, an acquisition of the exclusive right). This field can be filled in an arbitrary form, but the main thing is to provide the information that will be necessary and sufficient to determine the fact, whether the applicant really has the rights to this software. One of the main documents confirming the availability of the exclusive rights to the software is the certificate on the registration of the program for the electronic computing machine with ROSPATENT, since it has legal force and the presumption of the accuracy of the information.
Based on the above, it can be concluded that the registration of the program for the electronic computing machine with ROSPATENT and the Ministry of Communications and Mass Media pursues quite different goals. The registration of the software with ROSPATENT is one of the options for an additional confirmation of the availability of the exclusive rights to this software product. The registration of the software with the Ministry of Communications and Mass Media is necessary to obtain a possibility of the participation in the public procurements and it is aimed at resolving the problems related to import substitution.
The World Intellectual Property Organization (WIPO) was established by the United Nations Organization to resolve various conventions for the protection of intellectual property. The main activity of the WIPO is dedicated to the development of the balanced and available international system of intellectual property, which provides rewards for creative activities, stimulates innovation and contributes to an economic development, while observing the interests of the society.
The WIPO determines intellectual property as a result of a person’s particular creative activity. It covers two main sections – industrial property and copyright. In accordance with the WIPO provisions, inventions, utility models, industrial designs, trademarks, collective marks, service marks shall be referred to the industrial property, and literary, musical, artistic, photographic, cinematographic and other works shall be referred to the copyright.
The WIPO main functions shall be: promoting the development of the activities designed to improve the protection of intellectual property throughout the world and to harmonize the national legislation in this area; performing the administrative functions of the Paris Union, the special Unions formed in connection with this Union, and the Berne Union; assuming the administration of the implementation of any other international treaty designed to promote the protection of intellectual property, or participating in such administration; facilitating the conclusion of the international treaties designed to promote the protection of intellectual property; offering cooperation to the states requesting legal and technical assistance in the field of intellectual property; collecting and disseminating the information relating to the protection of intellectual property, implementing and promoting the research in this field and publishing the results of such research; ensuring the activities of the services implementing the international protection of intellectual property, and, if appropriate, implementing the registration in this area, as well as publishing the information relating to this registration.
As it follows from the said list of the WIPO functions, its activities are diversified. The most important activity of the WIPO is the administrative management for the Unions included in it. Currently, the WIPO administers 26 treaties and agreements related to the protection of industrial property: the Locarno Agreement; the Nice agreement; the Strasbourg Agreement; the Vienna Agreement; the Budapest Treaty; the Hague Agreement; the Lisbon Agreement; the Madrid Agreement for Trademarks; the Madrid Protocol; the Patent Cooperation Treaty (PCT); the Beijing Treaty on Audiovisual Performances; the Berne Convention; the Brussels Convention; the Madrid Agreement for an Indication of the Origin; the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled; the Nairobi Treaty; the Paris Convention; the Patent Law Treaty; the Phonograms Convention; the Rome Convention; the Singapore Treaty on the Law of Trademarks; the Trademark Law Treaty; the Washington Treaty; the WIPO Copyright Treaty; the WIPO Performances and Phonograms Treaty.
In accordance with the founding documents, the WIPO has four governing authorities: the General Assembly, the Conference, the Coordination Committee and the International Bureau.
The General Assembly is the WIPO international authority, which has the authority to solve the main issues of the activities of this organization. In particular, the General Assembly solves the following issues: appoints the Director General of the WIPO; reviews and approves the reports of the WIPO Director General, the Coordination Committee and gives them all necessary instructions; adopts a three-year budget of expenses common to the Unions; approves the measures proposed by the WIPO Director General concerning the implementation of the international treaties; adopts the WIPO Financial Regulations; determines the working languages of the Secretariat; invites states to become the parties to the Convention. The General Assembly is composed of the states that are the parties to the Convention, which establishes the WIPO, and that are the members of any of the Unions, which are administered by the WIPO.
The Conference is the WIPO authority composed of the states that are the parties to the Convention, which establishes the WIPO, regardless of their membership in any Union, which is administered by the WIPO. The Conference solves the following issues: discusses the issues of a common interest in the field of intellectual property, and may adopt appropriate recommendations, taking into account the competence and independence of the Unions; adopts within the budget of the Conference a three-year program of the legal and technical assistance; adopts amendments to the Convention, which establishes the WIPO; identifies the states that are not the member of the WIPO, as well as the intergovernmental and international organizations that may be admitted to the Conference sessions as observers.
The Coordination Committee serves as an advisory and executive authority of the General Assembly and the Conference. The Coordination Committee solves the following issues: provides advices to the authorities of the Unions, the General Assembly, the Conference and the Director General of the WIPO on all administrative, financial and other issues of a common interest for two or more Unions or for one or more Unions and the WIPO; prepares a draft agenda for the General Assembly; prepares a draft agenda, as well as the drafts of the program and the budget of the Conference; adopts the corresponding annual budgets and programs on the basis of the three-year budget of expenses common to the Unions, and the three-year budget of the Conference, as well as on the basis of the three-year program of the legal and technical assistance; before the expiration of the term of powers of the WIPO Director General, or when his post becomes vacant, submits to the General Assembly a candidate for his appointment to this post; if the post of the Director General of the WIPO becomes vacant during the period between two sessions of the General Assembly, appoints the Acting Director General for the period until the WIPO new Director General of takes office.
The International Bureau performs the functions of the WIPO Secretariat. It is headed by the Director General of the WIPO and prepares the drafts of the budgets and programs, the reports on the WIPO activities, brings them to the attention of the governments of the interested states and the competent authorities of the Unions and the WIPO. The International Bureau acts as a depositary of the majority of the agreements, administered by the WIPO.
The WIPO spares major efforts to ensure the recognition of the existing international treaties in the field of intellectual property, to update and to revise them, to develop new international treaties.
Five procedural actions are stipulated in accordance with the Patent Cooperation Treaty (PCT) regarding international applications: filing an application and checking the materials for their compliance with the formal requirements; carrying out an international search and drawing up a search report based on it and the first written message or preparing a declaration on the impossibility of carrying out the international search; carrying out an additional search; carrying out an international preliminary examination; publishing an international application. The majority of the above actions is mandatory, and in accordance with the Patent Cooperation Treaty, there in no need filing separate petitions or applications to carry out them. However, there are also a number of non-mandatory actions, carrying out which is stipulated only if the applicant has filed the relevant petitions. One of such actions is carrying out the international preliminary examination.
After receiving the results of the international search under the Patent Cooperation Treaty, the applicant may file a claim for carrying out the international preliminary examination to use its results in the selected member-states to the Patent Cooperation Treaty, in which he wishes to obtain protection of his technical solution. The purpose of the international preliminary examination is to draw up a preliminary and necessary conclusion on whether the claimed invention is new, whether it complies with an inventive step and whether it can be industrially applicable. However, any contracting state is entitled to apply additional or other criteria to decide whether the claimed invention is patentable in this state.
Along with filing the claim for carrying out the international preliminary examination, the applicant has an opportunity to amend the description, claims and drawings. Such amendments are most often made by the applicant in case of the poor results at the international search stage. In addition to the amendments to the application materials, the applicant has an opportunity to submit his comments regarding the sources of the information identified as a result of the search.
The claim is filed directly to the competent Authority of the International Preliminary Examination. For the Russian applicants, such competent authorities are the Federal Executive Authority on Intellectual Property (ROSPATENT) and the European Patent Office. It should be noted that the European Patent Office carries out the international preliminary examination only for those international applications for which the international search has been carried out at the European Patent Office or at one of the following Offices of: Austria, Spain or Sweden. This means that the European Patent Office will not carry out the international preliminary examination based on the search results prepared by ROSPATENT.
The claim for carrying out the international preliminary examination may be filed within three months from the date of forwarding the international search report or the declaration on the impossibility of carrying out the international search to the applicant, or within twenty two months starting from a priority date, depending on what period expires later.
After receiving the claim for carrying out the international preliminary examination, the international Authority of the Preliminary Examination, within six months from the date of filing the claim or within twenty eight months starting from the priority date, depending on which period expires later, carries out the relevant examination and sends a notification on its results to the applicant.
The international preliminary examination conclusion does not contain any statements on whether the claimed invention is patentable or non-patentable under any national legislation or whether it is represented lake that.
The international preliminary examination has a confidential nature, which means by virtue of Article 38 of the Patent Cooperation Treaty that the International Bureau of the WIPO and the Authority of the International Preliminary Examination do not allow access without any request or consent of the applicant (any means including a personal message and a regular publication, by which third parties can receive the information) to the materials of the international examination at any time, to any person or authority, with the exception of the selected Offices (the national Offices of the states or the national Offices acting on behalf of the states that carry out a final check in accordance with the criteria established by the domestic legislation) after making the international preliminary examination conclusion.
The international preliminary examination is the second phase of the PCT and, together with its first phase (filing the international application and carrying out the international search), it constitutes an international stage of the procedure for considering the application according to the PCT system (the international phase of the PCT).
All amendments will be reflected, when the international application is published. Together with these amendments, in the future, any person will be able to get acquainted with the results of carrying out the international preliminary examination.
For the applicants, filing the claim for carrying out the international preliminary examination is another opportunity to change the opinion of the international authority regarding the patentability of the offered technical solution. Having received positive results for the international application, at the international phase, the applicant is much more likely to obtain a patent in a foreign country, while reducing preliminary a number of the questions regarding his application. Also, for some applicants, filing the claim for carrying out the international preliminary examination will increase the period of a transition to the national phases in Luxembourg and Tanzania from 20 months to 30 months starting from the priority date. In order to extend the transition to the national phases in Luxembourg and Tanzania, the claim for carrying out the international preliminary examination should be filed within 19 months starting from the priority date.
Let us consider each kind of protection separately.
The protection of the programme for an electronic computing machine as the subject matter of the copyright protection is the most popular kind of protection. From the point of view of the copyright protection of the leading countries of the world, such as the USA, Japan, the countries of the European Union, the Russian Federation, the programme for an electronic computing machine is equated with literary works due to the fact that it is expressed in the form of a source programme code, i.e. the text written in any programming language. All basic copyright provisions on the copyright protection regulated by the international conventions and treaties, such as the Geneva Convention, the Berne Convention, shall be applied to programmes for electronic computing machines as to the copyright subject matters: legal protection of programmes for electronic computing machines shall arise at the moment of their creation; the copyright shall be applied to any programmes for electronic computing machines, both marketed and not marketed, presented in an objective form, regardless of their tangible medium, purpose or advantage; the right to the programme shall arise directly from the author as the person who has made a creative contribution to its creation, while the author can not refuse from his right of authorship; legal protection shall be applied to all kinds of programmes for electronic computing machines (including to operating systems and software systems), which can be expressed in any programming language and in any form, including a source text and an object code; the registration of the programme for an electronic computing machine shall be optional.
Like all literary works, the programme for an electronic computing machine is protected across the whole world in accordance with the Berne Convention. The Berne Convention “On Protection of Literary and Artistic Works” 1886 (as amended of 1971), which is the oldest international treaty, forms the foundation of the international system of the copyright protection, which provides for legal protection of programmes for electronic computing machines at the level of literary works. The purpose of the Berne Convention is to provide a more efficient and uniform way of protecting the rights of authors to their literary or artistic works. Following the principles laid down by the Berne Convention, the programme will be protected if it is original in the sense that it is the result of intellectual activity of the author himself. No other criteria for its protectability shall be established.
However, the Berne Convention does not regulate in any way or establish the exclusive right of the author to the programme for an electronic computing machine.
To confirm the exclusive rights, the national registration of the programme for an electronic computing machine within the volume of the programme source code is provided in a number of countries, for example, in the USA and the Russian Federation. During the registration, a certificate of registration shall be issued for the programme for an electronic computing machine, which confirms the exclusive (property) right to the programme.
It should be also noted that the certificate for the programme for an electronic computing machine in the USA is issued by the Copyright Office located in the Library of Congress. Registering the copyright to the programme for an electronic computing machine at the Copyright Office of the USA is the most popular and universal way to obtain the international protection to the programme for an electronic computing machine, due to the fact that the certificate issued by the Office is the generally accepted world analogue of the international copyright registration.
Now let us consider the protection of the programme for an electronic computing machine from the point of view of the patent legislation by the example of the Russian Federation.
In accordance with the patent legislation of the Russian Federation, a product (in particular, a device, a substance, the strain of a microorganism, the culture of plant or animal cells) or a method (a process of performing actions over a material object using material means) including the use of the product or the method in accordance with a specific purpose is subject to be protected. However, an attempt to protect the programme for an electronic computing machine as the patent right subject matter is a fairly contradictory way of protection.
In many countries, such as the Russian Federation, the countries of the European Union, Japan, programmes for electronic computing machines can not be patented by virtue of express reference by the law. To be able to obtain a patent for any solution, it should meet three patentability criteria, i.e. it must be new (i.e. unknown in the prior art); it must have an inventive step (this criterion is also called the requirement of unobviousness – for a specialist this invention is not obvious from the current state of art); it must be industrially applicable – the software can be used in industry, agriculture, health care, other sectors of the economic or social sphere.
Essentially, the programme for an electronic computing machine is an algorithm, i.e. the sequence of certain actions. Therefore, despite the existence of a prohibition on patenting the programme for an electronic computing machine as such, it is nevertheless possible to obtain a patent for an invention having described the whole programme as the set of material actions performed over a material object.
At the same time, it is possible to distinguish the USA against the general background of the countries as the country in which the national patent legislation permits officially the protection of the software as an invention. The patentability criteria “novelty,” “inventive step” and “industrial applicability” shall be applicable to the software the same way as to all inventions claimed in the USA.
And finally, let us consider the protection of the programme for an electronic computing machine as the subject matter of a commercial secret.
Both the national laws and the international law contain the norms on a commercial secret. The commercial secret is defined as the information (including formulas, models, programmes, mechanisms, methods, technologies), which has independent actual or potential economic value, it is not available to other persons who could gain economic benefits by using or disclosing it, and in respect of which the measures to protect its secrets have been undertaken. For the software to constitute a commercial secret, certain conditions must be observed: the software source code should not be known to a wide circle of persons; it must have economic value; it must be protected as a commercial secret, i.e. appropriate measures should be undertaken to protect it as the information constituting a commercial secret.
Having considered various kinds of protection of the programme for an electronic computing machine, it is possible to conclude that the modern system does not have a unified tool of the software protection that would allow obtaining the integrated and comprehensive protection of this result of intellectual activity.
экспертизы и подачи ходатайства о проведении экспертизы по существу начинаетсяосновное рассмотрение заявки на соответствие заявленного решения критериямпатентоспособности. При этом, ходатайство о проведении экспертизы по существу должнобыть подано в течение трех лет с даты подачи заявки. Если рассматривается международнаязаявка PCT, переведенная на национальную фазу в Японию, то датой подачи заявки введомство Японии считается дата международной подачи.При подаче заявки в патентное ведомство Японии также необходимо учитывать тотфакт, что некоторые решения не являются промышленно применимыми. К таким решениямотносятся: методы хирургии, терапии или диагностики человека; коммерческинеприменимые решения; явно невыполнимые решения.Также в соответствии с патентным законодательством Японии, возможно, защититьтакой объект патентного права, как полезная модель. При этом, законодательством Япониипредусмотрено преобразование заявки на изобретение в заявку на полезную модель втечение трех месяцев с момента направления заверенной копии решения об отказе экспертазаявителю или его представителю или в течение девяти лет и шести месяцев с даты подачизаявки на патент, в зависимости от того, какой срок истекает раньше. Если заверенная копияпервоначального решения об отказе не была передана заявителю или его представителю,заявка на патент может быть преобразована в заявку на полезную модель в любое время втечение девяти лет и шести месяцев с даты подачи заявки.Для получения патента на полезную модель в Японии необходимо, чтобы заявленноерешение было новым и промышленно применимым и представляло собой устройство. Приэтом, система рассмотрения заявок на полезные модели в Японии является явочной, т.е.заявка рассматривается формально и полноценный поиск по такой заявке не проводится.Что касается патентования в Республике Корея необходимо отметить тот факт, что наданный момент данная страна входит в пятерку ведущих стран по патентованию, вместе сКитаем, США, Японией и Европой.Во многом требования к изобретениям в Республике Корея схожи с требованиями кизобретениям в Японии.Подать заявку на патент в Республике Корея может любое лицо, как физическое, так июридическое. При этом, заявленное решение должно отвечать критериямпатентоспособности «новизна», «изобретательский уровень» и «промышленнаяприменимость».Весь процесс рассмотрения заявки в патентном ведомстве Республики Корея делитсяна два этапа: проведение формальной экспертизы и проведение экспертизы по существу. Врамках формальной экспертизы проверяется соответствие заявленного решения формальным
требованиям. После проведения формальной экспертизы и подачи ходатайства о проведенииэкспертизы по существу начинается основное рассмотрение заявки на соответствиезаявленного решения критериям патентоспособности. При этом, ходатайство о проведенииэкспертизы по существу должно быть подано в течение пяти лет с даты подачи заявки. Еслирассматривается международная заявка PCT, переведенная на национальную фазу вРеспублику Корею, то датой подачи заявки в ведомство Республики Корея считается датамеждународной подачи.В соответствии с патентным правом Республики Корея защите подлежат следующиекатегории изобретений: изобретение материала и изобретение способа. “Изобретениематериала " означает конкретизацию технологического решения, включая, продукт, технику(механические приборы, установки и т. д.)."Изобретение метода" означает конкретизациютехнологического процесса. Как и Японское патентное законодательство, патентноезаконодательство в Республике Коре не относит к патентоспособным объектам такиерешения, как методы хирургии, терапии или диагностики человека.Также патентным ведомством Республики Корея осуществляется рассмотрение заявокна полезные модели. Однако система рассмотрения заявок на полезные модели в РеспубликеКорея проводит полноценную проверку заявленных в качестве полезных моделей решений.При этом необходимо заметить, что для того, чтобы по заявке на полезную модель началасьэкспертиза по существу, необходимо подать определенное ходатайство. Такое ходатайствоможет быть подано в течение трех лет, считая с даты подачи заявки в патентное ведомство. Вкачестве полезной модели в Республике Корея можно защитить только устройство.Помимо того, что Японское патентное ведомство и Корейское патентное ведомствоявляются крупными национальными ведомствами, они также являются и международнымипоисковыми органами, работающими в рамках процедуры PCT. Также необходимо заметить,что патентные ведомства Японии и Республики Корея принимают участия в программахускоренного делопроизводства PPH, PCT-PPH, Global PPH.Таким образом, патентные системы в Японии и Республике Корея являютсядостаточно схожими, однако, есть и различия, а подача заявок в данные ведомства даствозможность стать обладателем исключительного права на техническое решение в данныхстранах.
All countries that grant patents for utility models can be divided into two large groups:the countries with a registration system of considering the applications and the countries with acheck system.The countries with a registration system of considering the applications do not carry outan examination as to novelty of the claimed solution. In such countries, there is a checkaccording to formal features, and the main aim of such check is only to check industrialapplicability. The check as to industrial applicability is necessary to ensure that the applicantswill not file the applications for abstract ideas or, for example, “perpetual motion machines.”Whatever the patent is, its main task is to grant a monopoly right to some product.Now, as to the second group, namely, the countries with a check system, it can be noted,that the requirements to an examination of an application are more strict there, than in thecountries with a registration system. The check system stipulates a full-featured search for thetechnical solution considered in the application. There are also additional requirements to suchsolutions. For example, in accordance with Article 1351 of the Civil Code of the RussianFederation, it is possible to protect as a utility model only a device, which is included into asingle housing and has strict interrelations between its elements, however this device should beaimed at solving one technical problem.It should also be noted, that a number of countries, such as the Ukraine, Austria, Estonia,France, Portugal grant patents for utility models not only with regard to devices, but also withregard to methods.In addition, it should be noted, that the patent for a utility model can be obtained by filingan application to one of the regional offices of Africa (ARIPO and OAPI). However, somecountries in Africa do not have their own Patent Office, and accordingly, it is possible to obtain apatent for a utility model only by filing an application to one of the regional Offices of Africa.For many applicants, it is a big surprise, that the transfer of the international applicationinto a national phase in the form of an application for a utility model is not stipulated in somestates (for example, in France, Ireland, Italy, Poland, Slovenia). Overcoming such limitations ispossible by converting an application for an invention into an application for a utility model, orby filing a divisional application for a utility model. It should be noted, that the possibility ofconverting an application for an invention into an application for a utility model is also notavailable in all countries. For example, in the Russian Federation such possibility is available. Inaddition, it is possible to file an application for a utility model with a request for a conventionpriority with regard to the application originally filed in the applicant’s country. In case of aconvention priority, it is also possible to file an application for an invention at first, and then toconvert it into an application for a utility model.
Thus, by transferring the international application into a national phase or by filing anapplication with a request for a convention priority, it is necessary either to study independentlyin detail the patent law of the chosen country or to address to qualified persons – patentattorneys, who will help to gain insight on the law and to offer the correct subject matter ofprotection.
The modern notion of the region of the Middle East includes such countries as: the Azerbaijan Republic, the Republic of Armenia, the Kingdom of Bahrain, Georgia, the Arab Republic of Egypt, Israel, Jordan, the Republic of Iraq, the Islamic Republic of Iran, the Republic of Yemen, Qatar, Cyprus, Kuweit, the Republic of Lebanon, the United Arab Emirates, Oman, Saudi Arabia, the Syrian Arab Republic, the Republic of Turkey.
All the above mentioned countries can be divided into two large groups, namely: the countries forming a part of, and not forming a part of PCT (The Patent Cooperation Treaty). Just the Republic of Iraq and the Republic of Yemen have not joined PCT from among the entire list of the Middle East's countries.
First and foremost, let us consider the countries forming a part of PCT. It is necessary to understand that an application filing according to the PCT procedure provides no special privileges when transferring to the national phases. Like in the rest countries of other regions forming a part of PCT, this procedure is a unified tool making it possible to achieve uniformity in a general form of an application. One of the main advantages in this case is the necessity absence of provision, within short timeframes, of a certified copy of an application filed primarily to establish priority. But however it is worth taking into account that there are national general requirements in each country to applications concerning execution and concerning what is claimed in them.
So, for example, in the Kingdom of Bahrain it is necessary to provide two copies of an international application translation, thereby the applications filing is permitted statutorily both in the English and Arabic languages. Accordingly, the paperwork will be managed in the chosen language subsequently. As to the Arab Republic of Egypt, an international application translation is necessary to be provided in three copies and all the paperwork is managed only in the Arabic language. According to the patent legislation of Jordan it is necessary, alongside with the materials of an application, to provide a certified translation of an international application, and in the Islamic Republic of Iran the applications are considered only in the Farsi language.
And if it is necessary to obtain a patent in the countries which don't form a part of PCT, then one should think about it in advance because the provided term for an application transfer with the right reservation of convention priority, according to the Paris convention on industrial property protection, amounts to 12 months, beginning from a date of an application filing in respect of which priority is claimed. That is, if somebody wants to protect his/her exclusive right one shall obligatorily think in advance over the strategy and list of the countries in which a worked out solution will be possible to register and realize.
However there exists a series of special requirements for obtaining patents in the Middle East's countries. Such requirements comprise a power of attorney for paperwork management under the applications in which the applicants are the persons - non-residents of this government.
Let us dwell upon, as an example, two most dynamically developing countries of this region - the United Arab Emirates and Saudi Arabia.
A notarized, legalized, apostilled power of attorney is necessary for Saudi Arabia and the United Arab Emirates. It is necessary to take into account that the entire process of a power of attorney preparation takes a rather big period of time, and according to the national legislation a power of attorney is necessary to be provided within rather compressed time frame (2-3 months, beginning from a date of an application filing to a patent office of a chosen country). Besides that due to an amount of the state fees it is rather expensive. For example, an amount of a state fee alone for legalization of a power of attorney for the United Arab Emirates amounts to about RUB 32,000. Also, after a power of attorney is prepared on its country, it should be executed properly in the very Emirates already, what will also require additional expenses.
I would also like to mention the fact that beside two obvious groups for division of all the countries of the Middle East, one can single out the countries relating to certain regional offices.
For example, the Azerbaijan Republic and Republic of Armenia form a part of the Eurasian Patent Organization, and one can obtain a patent in these countries not only by filing an application to the national office of a concrete country, but by filing an application to the Eurasian Patent Organization. But it is obligatorily necessary to mention that the Eurasian Patent Organization accepts applications only for inventions.
As far as a patent obtaining in the territory of Cyprus is concerned, it is necessary to file an application to the European Patent Office, in which its own legal considerations are established.
When summing up the results on the Middle East's countries, a conclusion can be made that currently this region is becoming more and more attractive for the economic activity because it is developing quickly and becoming sought-after. Thus, in view of the fact that the development jump of this region has taken place a short time ago, and it is still continuing, the methods of patenting and protection of the exclusive rights for the items of intellectual property in the Middle East's countries remain unresolved to the full extent at the level of the national legislations.
В отличие от остальных объектов авторского права, программа для ЭВМ и база данных обладают рядом особенностей, в связи с чем, необходимо детально разобраться, что есть программа для ЭВМ, а что есть база данных.
Программа для ЭВМ – это объективная форма представления совокупности данных команд, предназначенных для функционирования ЭВМ и других компьютерных устройств с целью получения определённого результата, включая подготовительные материалы, полученные в ходе разработки программ для ЭВМ. Среди программ для ЭВМ выделяют несколько разновидностей:
- рабочая программа или объектный код - последовательность машинных команд, то есть команд, представленных на языке, понятном ЭВМ;
- исходная программа - последовательность предписаний на алгоритмическом (понятном человеку) языке высокого уровня, предназначенных для автоматизированного перевода этих предписаний в последовательность команд в объектном коде;
- программа, временно введённая в память ЭВМ - совокупность физических состояний элементов памяти запоминающего устройства ЭВМ (ОЗУ), сохраняющаяся до прекращения подачи электропитания к ЭВМ;
- программа, постоянно хранящаяся в памяти ЭВМ - представленная на языке машины команда (или серия команд), выполненная в виде физических особенностей участка интегральной схемы, сохраняющаяся независимо от подачи электропитания.
Рабочая и исходная программы, как правило, представляются в виде записи на том, или ином языке, выполненной на бумаге или машиночитаемом носителе данных: магнитном или оптическом диске, магнитной ленте и т.п.
Также следует отметить тот факт, что адаптация программы для ЭВМ и модификация программы для ЭВМ являются совершенно разными действиями. Адаптация позволяет приспособить исходный программный код, написанный на одном из языков программирования, под другой язык программирования. Специалисту в программировании будет очевидно, что каждый язык программирования имеет свои определенные операторы, функции и вводный команды и без включения их в тело программы, она просто не будет работать. Модификация же, уже в своем определение несет понятие изменения. Модифицируя программу, мы добавляем новые функции и возможности.
База данных – это объективная форма представления и организации совокупности данных (например, статей, расчётов), систематизированных таким образом, чтобы эти данные могли быть найдены и отобраны с помощью ЭВМ. Можно сказать, что это совокупность средств и методов описания, хранения и манипулирования данными, позволяющими производить сбор, накопление и обработку больших информационных массивов. Организация различных баз данных отличается видом объектов данных и отношений между ними. Любая база данных включает три составные части: содержимое, т.е. хранимое в памяти произведение, или информация; программное обеспечение, необходимое для функционирования базы данных; другие электронные вспомогательные материалы.
Понятие база данных стоит несколько особняком, и это объясняется, прежде всего, иным предназначением базы данных. В отличие от программы для ЭВМ, компьютерного алгоритма, языка программирования, которые, так или иначе, предназначены для обеспечения функционирования ЭВМ, база данных служит, прежде всего, для поиска, восприятия и использования организованных по определенным критериям сведений. От каталогов и сборников на бумажных носителях базу данных в принципе отличает только электронная форма представления и, соответственно, связанные с ней особенности хранения, обработки и поиска находящихся в базе данных сведений. Именно электронная форма базы данных послужила основанием объединения в одном законе положений об охране программ для ЭВМ и баз данных.
Программа для ЭВМ и база данных существенно отличаются друг от друга тем, что программа для ЭВМ – это по своей сути программный код, посредством которого выполняются определенные команды, а база данных - это совокупность определенным образом структурированных материалов, скомпонованных определенным образом.
Unlike the patent law in the Russian Federation, in the USA technical solutions must be patented only in the form of an “invention.” As in the majority of countries, the claimed invention shall meet all requirements for patentability that are embodied in the novelty, level of invention and industrial applicability.
In the United States, the legal protection document for the invention has a particular legal term “Utility Patent.” The Utility Patent is a kind of the property right of the author, which gives him a monopoly right to the particular technical solution.
The patent issued in the USA grants time-limited exclusive property rights to the inventor, namely, the right to prohibit other people from manufacturing, using, offering for sale, implementing or restricting the import of the products in which the invention is embodied (applicable), to which the patent has been obtained in the USA. The utility patent holder shall dispose of it at his own discretion, that is, he can use it for his own commercial purposes or assign the rights to it to other people, give licenses for the right to use his invention.
Usually, the term of the legal protection of the exclusive rights, certified by the patent, as in the majority of the countries of the world is 20 years from the date of filing an application for an invention, and in individual cases such a term starts from the date of filing of a preliminary application for an invention. The patent issued in the USA protects the rights to the invention only within the USA territory.
The payment of the relevant fees for the maintenance of the validity of the invention is an important aspect of providing the legal protection to the invention with the help of the patent.
According to the USA patent law, the following technical solutions can be protected as the inventions:
- a process (an action or method that includes production and technological processes);
- a technical device, an industrial article or its integral part;
- a composition of the substance (all compositions consisting of 2 or more substances, all composite articles, whether the results of a chemical compound or mechanical mixtures, gases, liquids, powders or solid particles, an artificially created chemical compound or a mixture of chemical ingredients that are endowed with certain new properties);
- a significant improvement of the already existing industrial article, substance, process.
The peculiarity of the USA patent law is the possibility of obtaining the legal protection not only for traditional inventions, under which the aforesaid subject-matters are understood, but also for the methods of doing business (business methods), as well as for the software.
According to the USA patent law, the invention must have the following qualities:
– the usefulness for satisfying the needs of potential users of such an article or its application in the production and technological process for the creation of goods and services in a particular field of activity;
– the possibility of a practical use of the invention according to the intended purpose, which is applied by the inventor;
– the compliance with the current level of scientific and technological progress of mankind.
The objective laws of the nature, physical phenomena, abstract ideas or proposals that can not be put into production; the objects that contradict the public order and moral values of a society cannot be patented and are not subject to the legal protection as an invention.
There are two kinds of applications for granting a patent for an invention, which shall be drawn up in English and meet all the formal requirements of the United States Patent and Trademark Office (USPTO):
– The preliminary application (the so-called “Provisional Application”) is a quick and less financially expensive opportunity for inventors, which provides for the establishment of the date of disclosure of the invention by filing an application with the USPTO. Such an application does not describe the claims. And the patent office does not carry out a qualification examination for the claimed subject-matter. This application shall expire after 12 months from the date of its receipt by the Patent Office of the USA and shall not be accepted for consideration by this institution after the expiration of its validity. The information on filing a preliminary application can be used in future with the purpose of filing a “nonprovisional application” to preserve the priority date of filing. This is necessary for:
– establishing a priority date with respect to the applied invention in favor of the applicant;
– analyzing the possibility of obtaining an advantage in the competitive environment during the previous application (for example, to investigate the future economic, social effect from the industrial application of the subject-matter of the patent law, to establish contractual relations with potential partners for the usage of the invention on the USA market, by concluding license agreements, etc.);
– applying an earlier date from which the exclusive rights to the invention in the USA will be applied for a future patent for an invention.
The official application for obtaining a patent, entitled “Nonprovisional Application,” after it is filed by the applicant to the Patent Office of the USA, provides for carrying out appropriate examination procedures to identify and comply with all necessary conditions for patentability of the applied subject-matter of intellectual property and formal requirements, i.e. the presentation of all documents for its official registration.
The application filed with the USPTO must contain:
- An application that must include the name of the applied invention, the information about the applicant and other information stipulated by the patent law of the USA;
- A description, which should disclose the summary of the applied technical solution, the best variant of its implementation, the applicant's arguments in support of its usefulness;
- The claims that will determine the main scope of the applicant's claims, which he wants to protect;
- A document that confirms the payment of the relevant fees;
- The declarations in which the author makes an oath (in the fullest sense) that he is the original and first inventor of the applied technical solution.
After receiving an official application for obtaining a patent for an invention, the USPTO shall carry out a formal examination to identify the infringements of the documentation of the presented application for an invention. If the applicant complies with all formal requirements of the patent legislation and the requirements of the procedural rules of the USA, the USPTO shall officially publish the information on the receipt of an application for an invention.
Carrying out a qualification examination of the applied invention or the so-called substantive examination of the application for the compliance of this subject-matter with the criteria for patentability is a long term stage of the official registration of an invention in the USA. Based on the results of this stage, the Patent Office of the USA shall accept either of the two decisions: on the satisfaction of the application and granting a patent for an invention or rejecting an application for a patent.
After obtaining the desired patent for an invention, the applicant independently shall undertake all measures to commercialize this subject-matter of intellectual property and ensure the protection of his personal non-property and property rights on the territory of the USA.
If the application for a patent is rejected, the applicant has the right to defend his rights in the court.
The judicial system of the USA on intellectual property refers to the Anglo-Saxon legal system, i.e. in the USA there is a case law. If in the course of the examination the applicant has been refused to grant a patent for an invention, and he does not agree with this decision, the applicant has the opportunity to file an objection to the actions of the office to the court. The peculiarity is that the basis for filing an objection may be positive decisions of the USA court (precedents) concerning a similar situation, which have been made earlier.
Before filing an application for an invention in the USA, it is necessary to study in detail all subtleties and nuances of the patent law of the USA in order to reduce possible costs, as patenting in the USA is one of the most expensive in the world.