Nadezhda Krasnyanskaya

The claims of a utility model are an important part of an application for a patent for a utility model, since it is the claims that determine the scope of legal protection of the utility model granted by the patent.When drawing up the claims of a utility model, it is worth paying special attention to its compliance with the Requirements for documents of an application for a patent for a utility model (hereinafter referred to as the Requirements). We will talk about these Requirements in more detail in this article.How to correctly describe a device withing the framework of the utility model claimWhen drawing up a utility model claim, the following should be taken into account: the utility model claim can be single-link or multi-link. A single-link claim refers to a claim that includes only an independent claim, a multi-link formula means a formula that includes an independent claim and several dependent claims.An independent claim of claims should consist of a single sentence consisting of three main parts: A generic concept that defines the object of protection and indicates the purpose of the utility model;Examples: "Magnetic Field Sensor", "Suction Valve", "Centrifugal Separator". After the presentation of the generic concept, as a rule, the expressions "consisting of", "including", "containing" are used, after which the restrictive part is stated.The restrictive part, which reveals the features of the claimed solution that coincide with the features of the prototype (the closest analogue);A distinctive part, which is the features of the declared technical solution, distinguishing the declared solution from the prototype (the closest analogue).Therefore, after the statement of the restrictive part, the expression "distinguished by the fact that" is used.However, if the claimed solution has no prototypes and analogues, the claim of the utility model shall be set out without dividing it into restrictive and distinctive parts. In this case, the formula consists of a generic concept, after which the expression "characterized", "inclusive", "consisting of" is introduced, after which the set of essential features that characterize the claimed technical solution is stated.In dependent clauses of the formula, clarifying features are most often indicated, representing particular cases of its implementation. It is important to note that the "device" (and a device is understood as a product that is a structural element or a set of structural elements that are in a functional and constructive unity) in the claims of the utility model must be set out by the features that characterize its static state, while it is allowed to indicate the mobility of various elements, the possibility of its implementation of a certain function (for example, "a base made with the possibility of connection to the body", "protrusions with holes made with the possibility of fixing the body to the surface", etc.) (Clause 40 (9) of the Requirements).Basic requirements for the claims of a utility modelLet us analyze the main points of the Requirements, the violation of which is most often referred to by experts when sending requests during the substantive examination, as well as recommendations for drawing up a claim in order to exclude objections.The claim of a utility model should relate to one technical solutionAn independent claim may include one set of essential features, each feature of which is necessary, and all together they are sufficient to achieve one technical result, or several interrelated technical results, including those related to each other by a cause-and-effect relationship, or several sets of essential features, each of which affects the achievement of its own technical result, but at the same time a set of all essential features utility model ensures the achievement of one or more general technical results (clause 40 (1) of the Requirements).Taking into account this paragraph of the Requirements, we recommend that you determine one technical result and one set of features that affect the achievement of this technical result. When trying to indicate several interrelated technical results that are affected by one or more sets of technical features, it is more likely that examination requests will be sent, the answer to which will require either narrowing the scope of claims or correcting the technical result.The claim of a utility model must clearly express the essence of the utility model as a technical solutionThe claims shall contain a set of essential features, including a generic concept reflecting the purpose of the utility model, sufficient to solve the technical problem specified by the applicant and obtain a technical result in the implementation of the utility model (clause 40 (3) of the Requirements). The applicant needs to analyze the drawn-up formula, check whether all the features in it are essential to achieve the declared technical result. Non-essential features should be excluded from the claims of the utility model.The claim of a utility model must be based entirely on the description of the utility modelThe scope of legal protection of the utility model determined by the claim of the utility model must be confirmed by a description of the utility model (clause 40 (2) of the Requirements). Thus, when drawing up a claim for a utility model, it is important to check whether all the features of the claimed solution are disclosed in the description, namely in the sections "Disclosure of a Utility Model", "Implementation of a Utility Model". The features in the claims of the utility model must be clearFeatures of a utility model should be expressed in the claims of the utility model in such a way as to ensure the possibility of understanding their semantic content on the basis of the state of the art by a person in the field of technology (clause 40 (4) of the Requirements). In general, this requirement applies to both the claims and the description of the utility model. You should not include in the application materials terms invented by yourself, use non-commonly used definitions. At the same time, in the case of the use of terms and designations that are not widely used in scientific and technical literature, their meaning must be explained in the text of the application at the first use. All symbols must be deciphered. In the claim, it is better to avoid conventions.The features of dependent claims of the claims must not contradict the independent claimThe features of dependent clauses should not replace or exclude the features described in the clause to which it is subordinate (clause 41 (4) of the Requirements). For example, if an independent claim states that the cut is made in the form of a circle, in the dependent clause, specifying the execution of an oval-shaped cut will be a violation.In the independent claim of the claims of the utility model, the use of alternative features is not allowedIt is not necessary to include in the independent claim of the claims of the utility model alternative essential features that are most often used with the expressions "at least", "and/or", etc. (clause 40 (1a) of the Requirements).It should be noted that features expressed in the form of a range of continuously changing parameter values are not considered as alternative features, for example, "angle is 5-8°", "length from 5 to 8 mm".However, when the features expressed in the form of a range of values are included in the claim, in the description in the section "Implementation of the utility model", it is necessary to provide information proving the achievement of the technical result in the entire range of values presented, for example, at the lower and upper values. Nuances in drawing up a utility model claimIn continuation of the previous paragraph, it is important to emphasize that recently the following trend has been noticed in the consideration of applications for utility models in Rospatent: examiners perceive such features as, for example, "with an adjacent angle in the range of 2-10°" as parameters characterizing an alternative design of a utility model, which is a violation of 40 (1a) of the Requirements, and ask to indicate a point value of the angle, for example, 7°, thereby characterizing only one technical solution in the claims. At the same time, for a utility model, the characteristic of which includes alternative features excluded from the claims, the applicant is invited to file divisional applications while maintaining the priority established for the initially filed application.Consideration of features expressed in the form of a range of continuously changing parameter values as alternative features is ambiguous, both for applicants filing applications independently and for patent attorneys, since such examination conclusions contradict the provisions of the Requirements.In such cases, the filing of segregated applications with point values of the parameter is absolutely absurd, since it implies too many applications that have weak protection due to the presence of an easily circumvented feature expressed in one specific number, which cannot be beneficial to the applicant either strategically or economically.In view of the above, as a recommendation to applicants who have encountered a similar situation when filing applications on their own, when responding to the request, refer to the above paragraph 40 (1a) of the Requirements and prove that these features, expressed as a range of continuously changing values of the parameter, are not considered as alternative features, but are, for example, an acceptable error.It should be noted that the preparation of a utility model claim, as well as the preparation of the application itself, is far from a trivial task, and requires knowledge of regulatory documents, subtleties and nuances that are developed in practice. When drawing up a claim for a utility model on your own, especially if the applicant does it for the first time, it is impossible to do without mistakes and provide for all the subtleties and requirements in advance.Experts and patent attorneys of Zuykov and partners will help to save time and improve the quality of the filed application for a utility model, who will help to competently draw up the claims of the utility model and correctly draw up the application materials, which will significantly increase the chances of obtaining a positive decision on the grant of a patent.

Patenting technical solutions plays a key role in protecting intellectual property. Obtaining a patent for inventions and utility models allows companies to maintain their competitiveness in the market, monetize their developments and attract investment in the company, which is an important tool for companies for sustainable and reliable growth of their business.At the same time, an important aspect in the protection of intellectual property objects is determining what kind of object of patent law a technical solution: an invention or a utility model.In addition, it is necessary to understand in which cases a patent is needed and how to patent a technical solution in order to maximally protect your interests.Differences between invention, utility model and industrial designA technical solution in any field is protected as an invention if it pertains to a product (in particular, a device, substance, microorganism strain, or a plant or animal cell culture) or a method (a process involving actions on a material object using material means), including the use of a product or method for a specific purpose (Par. 1, Art.1350 of the Civil Code of the Russian Federation).A technical solution is protected as a utility model if it pertains to a device (Par. 1, Art.1351 of the Civil Code of the Russian Federation).A solution concerning the appearance of an industrial or handicraft product is protected as an industrial design (Par. 1, Art. 1352 of the Civil Code of the Russian Federation).Legal protection is granted to a solution as a utility model if it is new (on a global level) and industrially applicable; as an invention, if it additionally exhibits an inventive step (i.e., it is not obvious to a specialist); and as an industrial design, if it is new and original.The significant features of an industrial design include those that define the aesthetic characteristics of the product’s appearance, in particular the shape, configuration, ornamentation, color combinations, lines, contours, textures, or materials of the product.Features determined solely by the technical function of the product are not protected as attributes of an industrial design.An industrial design is original if its essential features are determined by the creative nature of the product's features, in particular if, from information that has become publicly available in the world prior to the priority date of the industrial design, no solution to the appearance of a product of a similar purpose is known that produces on an informed consumer the same general impression as that produced by the industrial design, reflected in the images of the product's appearance.When choosing an object of patent law, it is also worth considering the validity period of the patent. A patent for an invention is valid for 20 years, for an industrial design - 25 years, and for a utility model - 10 years, subject to timely payment of fees for maintaining the patent in force.Next, we will consider in more detail only inventions and utility models that are determined exclusively by a technical function.How is an application for an invention and a utility model formed and in what cases is a patent needed?An application for an invention/utility model is formed from the following documents:An application for a patent, which specifies the author of the invention/utility model, the applicant who, upon receiving the patent, will have exclusive rights to the invention/model, as well as the places of residence (or location) of the applicant and the author.Consent to the processing of the applicant's personal data.A description of the invention/utility model, which must disclose the essence of the invention with sufficient completeness for its implementation by a specialist in the given field of technology.The formula of the invention/utility model, which must clearly express its essence and be entirely based on its description. The formula is the most important part of the application, since it is with its help that the scope of legal protection provided by the patent is determined.An abstract of an invention/utility model, which is a brief technical description of the invention/utility model.Drawings and other materials, if they are necessary for understanding the essence of the invention/utility model.Documents confirming payment of the relevant fees for application registration and substantive examination. The amounts of state fees are:registration of an application for an invention - 4000 rubles + 1000 rubles for each claim of the invention over 10;registration of an application for a utility model - 2,000 rubles + 1,000 rubles for each point of the utility model formula over 10;examination of an application for an invention on the merits - 14,000 rubles + 10,000 rubles for each independent claim over 1;examination of the application for a utility model on the merits – 3000 rubles.Companies need to obtain patents for their developments (technical solutions) for:protection of intellectual property - a patent grants its owner the exclusive right to use, produce and sell a technical solution;preventing copying and illegal use - a patent protects the copyright holder and prevents illegal use of the technical solution by other persons or organizations;monetization of your technical solution and making a profit;creating a company's reputation - the presence of patented technical solutions indicates the company's high activity in innovative activities.How does the patenting of an invention and a utility model happen?Before filing an application, Zuykov and partners recommends conducting a preliminary international patent search to determine the patentability of your technical solution in order to identify existing analogues or similar technical solutions in the Russian Federation and other countries and assess the chances of success. Based on the results of the search, you will receive a report with recommendations on the feasibility of patenting your technical solution and proposals for choosing the object of patenting from the specialists of Zuykov and partners.The procedure for patenting inventions and utility models in Rospatent includes three main stages:Formal examination of the application: 1-2 months from the date of application;Substantive examination of the application: 6-8 months from the date of a positive decision of the formal examination;Registration and issuance of a patent: 1-2 months from the date of payment of the relevant fees.In the event of non-compliance of the application materials with the established Requirements, at the stages of the formal examination and examination of the application on the merits, the expert of the department may send requests for the purpose of providing additional materials.Based on the above, it can be concluded that the procedure for patenting inventions and utility models is a rather complex process.Experts and patent attorneys from Zuykov and partners will help you understand such a complex process. They take into account all the nuances in their work, competently draw up all the necessary documents for filing an application and calculate fees, and take all possible actions to obtain a patent for you.