Nadezhda Krasnyanskaya

Currently, more and more Russian applicants are interested in obtaining patents for their technical solutions in China. However, there are a number of features that Russian individuals and legal entities need to take into account when filing applications for inventions and utility models in China, and which we will talk about in detail in this article.How can a Russian applicant file an application for an invention or utility model in China?First of all, Russian applicants should note that, in accordance with Clause 1 of Article 1395 of the Civil Code of the Russian Federation "Patenting of Inventions or Utility Models in Foreign States and International Organizations", an application for a patent for an invention or utility model created in the Russian Federation may be filed in a foreign state or with an international organization upon the expiry of 6 months from the date of filing the relevant application with the federal authority Executive Authority for Intellectual Property, if the applicant is not notified within the specified period that the application contains information constituting a state secret. At the same time, an application for conventional priority may be filed with a foreign state or an international organization no later than 12 months from the priority date.Violation of the above established procedure for patenting industrial property objects in foreign states in accordance with Article 7.28. of the Code of Administrative Offenses entails the imposition of an administrative fine on citizens in the amount of one thousand to two thousand rubles; on legal entities - from fifty thousand to eighty thousand rubles.Thus, in order to comply with the established procedure for patenting industrial property objects in foreign countries, Russian applicants have several options for filing applications and obtaining patents in China:file an application for an invention/utility model with Rospatent and then, after 6 months, but no later than 12 months, file an application with priority on the initial application filed in the Russian Federation;file an application for an invention/utility model with Rospatent and then, after 6 months, but no later than 12 months, file a PCT international application with priority on the initial application filed in the Russian Federation, after the publication of the PCT international application, before the expiration of 30 months from the priority date, transfer it to the national phase in China;immediately file the PCT international application through Rospatent as the receiving Office and, after the publication of the PCT international application, transfer it to the national phase in China before the expiration of 30 months from the date of filing of the PCT international application.The choice of a specific option from the above depends on the goals and capabilities of the applicant. At the same time, as a rule, patent attorneys advise applicants interested in obtaining a patent for an invention/utility model in foreign countries to choose the second option, for the following reasons:filing the initial application with the Russian Patent Office allows the applicant, in case of filing an application independently or with the assistance of patent attorneys, to control the process of patenting his solution, since all paperwork on the application is conducted in Russian; filing a PCT international application with priority on the Russian application allows you to speed up the processing of the PCT international application, since Rospatent is the receiving Office in the PCT system, and during the international phase, part of the procedures remains in the Russian jurisdiction;filing a PCT international application also saves the applicant time and money, since the applicant has 30/31 months from the date of filing the initial application to make an informed decision on the prospects for further patenting in China or other countries of interest to the applicant, to prepare all the necessary materials, as well as to perform all the procedures provided for by the laws of China or other countries.For more information on filing a PCT international application by Russian applicants, please see this article.What should a Russian applicant take into account when filing an application for an invention or utility model in China?First of all, it should be noted that such objects as scientific discoveries, rules and methods of intellectual activity, methods of diagnosing or treating diseases, varieties of animals or plants do not belong to patenting in China. An application for an invention or utility model must be submitted to the Office in Chinese and include a description, claims, abstract, necessary drawings (for the registration of a utility model, the provision of drawings is a prerequisite), and indications of the grounds for claiming priority (if any). At the same time, unlike filing an application with the Russian Patent Office, where a foreign applicant has the right to submit application materials in English and send a translation after filing the application, in China it is not possible to extend the deadline for submitting a translation of the application into Chinese (after filing the application), the translation must be filed simultaneously with the application for a patent.The procedure for patenting inventions consists of two stages – preliminary (formal) examination and substantive examination of the application (similar to the procedure for patenting inventions in the Russian Federation). At the same time, applications for utility models undergo only preliminary (formal) examination.At the stage of preliminary examination, the application is checked for compliance with formal requirements, such as payment of application fees, priority determination, correctness of filling out the application, completeness of documents, availability of translation of application materials, power of attorney from the applicant to the representative.At the stage of substantive examination of the application, the claimed invention or group of inventions is checked for compliance with the patentability criteria: novelty, inventive step and industrial applicability (similar to the procedure for patenting inventions in the Russian Federation), as well as the requirements for patent application documents.The entire process of paperwork in China for applications for utility models can reach 1-1.5 years, for inventions - 1.5-3 years.After receiving the decision to grant a patent, the applicant will need to pay the appropriate grant fee, as well as an annual fee for maintaining the patent. After the office verifies the payment of fees for the grant of a patent, registration of the invention and maintenance of the patent in force, an electronic patent is sent to the applicant. The issuance of patents on paper in China is not provided.We draw the attention of applicants to the fact that there is a bilateral agreement between China and the Russian Federation under the accelerated PPH (Patent Prosecution Highway) procedure. A Russian applicant, when translating an international application to the national phase in China, simultaneously with the request for substantive examination, can file a request for an expedited procedure for consideration of the PPH application, which will significantly reduce the time for consideration of an international application for a patent for an invention in China, i.e. not only the time for preparing the first notification, but also all examination actions, including the issuance of a title of protection, will be reduced. Participation in the PPH program is possible if the applicant receives a certificate of patentability of at least one independent claim from a PPH partner Office, including Rospatent, or if a positive opinion on patentability is obtained in a written opinion of the International Searching Authority, the International Preliminary Examining Authority or in the International Preliminary Examination Report.To participate in the PPH program, it is necessary to submit to the Chinese Patent Office an application for expediting prosecution work, attaching a set of necessary documents to it.However, despite the presence of a positive international search, the examiner of the Chinese Patent Office can independently conduct an additional search, and identify a new source to counter the non-compliance of your solution with the patentability conditions, and send an appropriate request to the applicant.As previously noted, the Russian applicant can independently file the initial application with the Russian Patent Office and then the PCT international application with priority over the initial application.However, when planning to patent inventions and utility models in China, it is worth considering that foreign applicants can only apply for a patent through Chinese patent attorneys. At the same time, independent translation of the application materials into Chinese by applicants, search for Chinese patent attorneys, conclusion of contractual relations with them and correspondence regarding the processing of the application, neglecting the services of patent attorneys of the Russian Federation, can lead to irreparable errors, serious time and financial costs.In order to save costs, time and nerves, as well as to increase the chances of obtaining a patent for an invention/utility model in China and other countries, we recommend filing applications through patent attorneys who have long-term experience working with verified patent attorneys in China.

Nowadays, board and floor games are a popular way to spend time together with friends, colleagues and family members. Every day, more and more new different games appear on the market, and therefore the creators have a question: "How to protect games from copying?".First of all, it is worth noting that the copyright for the game arises automatically at the time of its creation and does not require mandatory registration. However, in the event of conflicts and further courts, it is quite difficult for the creators of the games to prove their rights. At the same time, obtaining patents for board and floor games in Russia is one of the best ways to protect against their illegal copying and use. How to patent a board and a floor game in Russia?To answer this question, it is necessary to understand that any board or floor game consists of many elements:the name of the game;rules of the game;packaging and design of the game;playing field and game meeples (figures), tiles;and other accessories used for games.Some of the above elements can be protected as trademarks and industrial designs, and some as inventions and utility models. The name of the game and the main character of the game can be registered as a trademark, the packaging, design of the game, the playing field and game figures can be patented as industrial designs. According to Clause 5 of Article 1350 and Clause 5 of Article 1351 of the Civil Code, the rules and methods of games, solutions consisting only in the presentation of information are not subject to patent protection and are not inventions and utility models. However, such solutions can be deposited as instructions for use, instilled in the game, recommendations.However, despite the limitations, patenting of board and floor games as inventions and utility models is possible, since the elements of games (for example, the playing field, game pieces, various components used for games) are technical solutions related to devices.The choice of the type of protection of the developed game or its parts as an invention or utility model depends on the technical essence of the developed technical solution.At the same time, the technical solution must be new, unique and ensure the achievement of a non-obvious technical result. Examples of patented board and floor games and their elements in RussiaHere are specific examples of patents for industrial designs, utility models and inventions.Patent for industrial design No 147403 "Playing field for a board game".Patent for industrial design No 147485 "Set of game elements for a board game".Utility model patent No 213372 "Folding board for board games".A folding board board comprising a playing field arranged in quarters, characterized by the fact that each quarter contains a side wall in which a storage box is integrated, one side wall being opposite to the side wall with a built-in storage box, and two side walls without built-in storage boxes, with the first and third quarters in the sidewall area, which are opposite to the side walls with built-in storage boxes are connected to each other by their edges relating to the surface of the playing field, and are made with the possibility of folding the playing field to each other, also the second and fourth quarters in the area of the side walls, which are opposite to the side walls with built-in storage boxes, are connected to each other by their edges relating to the surface of the playing field, and are made with the possibility of folding the playing field to each other, while the third and fourth quarters in the area of one of the side walls without built-in boxes are connected by their edges related to the surface located on the reverse side of the playing field, and are made with the possibility of folding the sides of these quarters opposite to each other with the possibility of folding all quarters of the board on top of each other. The technical result achieved by the claimed utility model is to improve the ergonomic characteristics of the folding board for board games - to increase the convenience of its storage, transportation and use.Patent for invention No 2534949 "Game system and method of application".A gaming system (100) comprising: multiple electronic gaming machines (110, 535, 540), each configured for play and comprising at least: a display (120); an interface (215; 220) capable of receiving commands from the player to initiate a game of play; a storage device (125, 126) capable of storing a plurality of software instructions; a random number generator (130) capable of randomly generating game results; and a processor (115) to control the display, interface and random number generator, a controller (105; 400; 525) communicating with each of said electronic gaming machines (110, 535, 540), wherein said controller is configured to: select randomly unchanged bonus code symbols from a set of symbols; randomly selecting the number of game code symbols from the specified set of symbols, and the specified number of game code symbols is equal to the number of unchanged game bonus symbols; prior to each game game at each of the specified electronic gaming machines, randomly determining (320) the direction of travel to select each of the specified game code symbols; in response to a game at one of said electronic gaming machines, changing (330) at least one character of the game code in a specified direction (835) of a randomly selected movement; comparing the corresponding modified symbols (810) of the game code with the corresponding symbols (805) of the bonus code; fixing (570) symbols (810) of the game code that coincide with the specified symbols (805) of the bonus code; and in response to the match of each of the specified game code symbols with the corresponding symbol of the specified bonus code symbols, awarding a reward to players playing at one of the specified online electronic slot machines.The technical result is an increase in the speed of modifying the user interface in a game game.Making a decision to patent a new development in the form of one of the above and several objects of patenting at once depends on the type of game and its components.Thus, it follows from the above examples, as well as from Article 1354 of the Civil Code of the Russian Federation, that the protection of intellectual property rights to an industrial design is granted on the basis of a patent to the extent determined by the totality of the essential features of the industrial design reflected in the images of the appearance of the product contained in the patent for the industrial design. Protection of intellectual property rights to an invention or utility model is granted on the basis of a patent to the extent determined by the claims of the invention or utility model contained in the patent, respectively.At the same time, the claims of the utility model or invention must clearly express the essence of the utility model or invention as a technical solution, that is, contain a set of essential features, including a generic concept reflecting the purpose of the invention, sufficient to solve the technical problem specified by the applicant and obtain a technical result in the implementation of the invention.Thus, any "idea" for the possibility of patenting in the form of an invention or utility model must be implemented in a specific technical solution in the scientific and technical field, which must be aimed at a positive technical result, while entertainment, entertainment and economic aspects are not related to the technical result. For the most complete protection, the applicant (developer) must register the name of the game as a trademark, patent the design of the game (box, playing field, game cards) as industrial designs, and patent the elements of the game (playing field, set of cards) as a utility model or invention.It is important to understand that according to paragraphs 1 and 3 of Article 1363 of the Civil Code of the Russian Federation, a patent for an invention is valid for 20 years, for a utility model - for 10 years. The validity period of a patent for an industrial design is 5 years. However, the right holder can repeatedly extend it for five years, but the total term of the patent cannot exceed 25 years.According to Clause 1 of Article 1491 of the Civil Code of the Russian Federation, the exclusive right to a trademark is valid for ten years from the date of filing an application for state registration of a trademark with Rospatent, with the possibility of extension for 10 years an unlimited number of times at the request of the right holder in accordance with Clause 2 of Article 1491 of the Civil Code of the Russian Federation.At the same time, a registered trademark, patent for an industrial design, utility model or invention is valid only in the territory of the country where they were obtained.Thus, patenting board and floor games is an urgent task for developers. Obtaining a patent allows patent holders to dispose of the exclusive right and protects against copying by third parties. In conclusion of this article, it should be noted that applications for utility models and inventions for board and floor games are quite controversial, since approaches to their patenting are complicated by the provisions of Clause 5 of Article 1350 and Clause 5 of Article 1351 of the Civil Code of the Russian Federation. These solutions are often recognized by FIPS experts as non-technical, and often have refusals to grant patents, in connection with which authors and game developers are recommended to seek help and advice from specialists in the field of intellectual property protection and patent attorneys who know all the subtleties and nuances of patenting such solutions.

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.