Head of Department / Patent Attorney/ Mechanics Engineer
In 2000 Olga graduated from the Donbass State Engineering Academy, specialty "Technology of mechanical engineering" with assignment of qualification "engineer-mechanic".
In 2003 she graduated from Russian State Institute of Intellectual property. Olga has a diploma, giving the right to conduct professional activity in the sphere of legal protection and use of intellectual property.
Olga is fluent in English, has International certificate City & Guilds.
Olga has the status of patent attorney of the Russian Federation.
In the company Zuykov and Partners LLC she specializes in:
- Patent search on inventions and utility models.
- Preparation and filing of patent applications on inventions, utility models, software and database.
- Response preparation on request for substantive examination on inventions, utility models, software and database applications.
- Annual maintenance of a patent due to the fact that patent must be maintained on the annual basis, otherwise it will be held invalid/
- Change of the patent’s holder information as in case of change in right holders’ name/address is necessary to introduce changes into the patent register.
- PCT application filing.
- Patent dispute and cancellation as due to the current legislation of the Russian Federation within the validity period a patent for invention, utility model or industrial design can be cancelled entirely or partially.
• 2001–2009 — engineer on patent and innovation work in CJSC "Starooskolskiy plant of automotive and tractor electrical equipment in the name of. A. M. Mamonov";
However, there are a number of effective ways to reduce the cost of patenting, but not everyone knows about them. Let’s see how the most effective among them work.
Tip 1: Protecting several solutions within a single patent. This method would work in the case of an application for an invention. The current patent law allows several technical solutions which are linked in a way that they form a single patentable inventive concept. This condition is mandatory when filing an application for several solutions and is met if the claims characterize a group of inventions:
- One intended to produce (make) the other e.g., a device or substance and a process for producing (making) the device or substance as a whole or a part thereof;
- One intended to carry out the other (e.g., a process and apparatus for carrying out the process as a whole or one of its acts);
- One intended for the use of the other (in the other) e.g., a process and a substance intended for use in a process; a process or apparatus and a part thereof;
- Relating to objects of the same kind (several devices, several substances, etc.), of the same purpose, providing the same technical result (variants).
Here is an example of a patent that protects several technical solutions: “A method and apparatus for estimating the mass of fresh air in the combustion chamber, a method for estimating total fill, a recording unit for these methods, and a vehicle equipped with an estimating apparatus.” As it can be seen from the title of the invention, the patent protects 5 technical solutions, namely, the method for estimating the mass of fresh air in the combustion chamber, the device for estimating the mass of fresh air in the combustion chamber, the method for estimating complete filling, the recording unit and the car. Thus, instead of filing five applications, the applicant filed one application and thereby reduced its costs by an average of three times for the services of patent specialists and five times for filing fees.
Tip 2: Filing an application indicating a privileged category of persons as the applicant. Not everyone is aware that the state provides a number of discounts on the payment of fees for certain groups of persons and entities and thus encourages applicants to file as many applications and obtain as many patents as possible. Here are the main categories of applicants (patent holders), who are entitled to a reduced rate of payment of various types of fees:
- The applicant is the author of an invention, utility model or industrial design, which belongs to one of the categories: disabled person, pensioner, student, researcher, scientific-pedagogical worker or a collective of these persons;
- Applicant is a natural person and the sole author who applies for a patent in his or her name;
- Applicant is a legal entity that belongs to one of the following categories: small business, educational organization with state accreditation, scientific organization.
Depending on the type of legally binding arrangement for which the patent fee is to be paid, its amount is reduced by 65-90% in relation to the established amounts.
In addition, we note that more than 70 types of legally binding arrangements fall under the privilege, according to which the established fees are reduced by 30% in case the applicant applies to Rospatent for performing legally binding arrangements in electronic form. The said benefit is applied in addition to the benefits mentioned above, that is, the applicant has the right to request two discounts simultaneously. In such a case, it should be taken into account that the discounts are not summed up, but are charged sequentially. So, for example if the amount of the fee for filing the invention application for a pensioner is 330 rubles, then an additional discount of 30% of this amount can be made when filing the application in the electronic form through customer account. Thus, taking into account the discount, the amount of the fee for filing an invention application will be 231 rubles, and the full amount for filing an application, not including the discount is 3300 rubles, which is a significant savings.
Tip 3: Public alienation of the patent. In accordance with paragraph 4 of Article 1366 of the Civil Code of the Russian Federation the applicant, who is the sole author of the invention, before the decision on granting a patent or on refusing to grant a patent or on declaring the application withdrawn may file a statement to the effect that if the patent is granted, he or she undertakes to conclude an agreement on assignment of the patent on terms corresponding to the established practice with any Russian individual or Russian legal entity, who first expressed such desire and notified the patent owner and the Federal Executive Body of the Russian Federation about it. Where such a declaration is made, the prescribed patent fees shall not be charged from the applicant in respect of the application for the grant of a patent for the invention and in respect of the patent granted in respect of that application.
The number of applications filed within a year by one applicant in respect of which he or she is exempted from the payment of patent fees shall be established by the Government of the Russian Federation and shall not exceed 10 applications.
A person who has entered into an agreement with the patentee on the assignment of the invention patent on the basis of his or her application, shall be obliged to pay all the patent fees from which the applicant (patentee) was exempted.
Thus, in this situation, the applicant/grantee saves on the fees, the amount of which may vary from several thousands to several tens of thousands rubles.
Tip 4: Conducting a preliminary international search on patentability to assess the chances of obtaining a patent. It is a fact of life that not all technical solutions applied for are protected by patents. In our practice, there is a certain percentage of rejected applications for which patents have not been granted, for one reason or another. The main reason for rejection is that the technical solution does not meet the established criteria of patentability: novelty, inventive step and industrial applicability. If, for example, industrial applicability is obvious, then world novelty and inventive step are quite complicated. It is not always the case that our applying inventors would be aware that similar solutions exist in other countries, and could be convinced that such an invention does not exist anywhere else in the world. However, during an inspection, it turns out that someone in another country has already invented the same solution and even obtained a patent for it, and the money for the patenting has been spent and cannot be returned. Not only was the patent denied, but the money was also spent. Therefore, in order to protect yourself from receiving a possible refusal from the patent office, it is recommended to conduct a preliminary search which is better to entrust to patent attorneys.
Tip 5: Getting a patent on your own. Of course, this method is the most cost-effective, as there is no need to pay for the services of patent specialists, you do not even have to pay patent fees (according to method 3) or reduce their size to a minimum (according to method 2) and eventually get a patent for free, but do not forget that to issue an application for invention and prepare a set of all necessary documents yourself, given never seeing them before it, it is quite difficult, and in some cases impossible.
Therefore, before you save on the services of a patent attorney, think about how much you will have to pay later to correct all the errors and get the long-awaited patent. In many cases, this will cost a lot more than if you had gone straight to a patent practitioner and take a lot more time. In some situations, however, there is nothing to fix and nothing to do but start all over again and draw up a new application.
To sum up, we have to accept the fact that everyone has to do the job he or she is qualified for: a hairdresser has to cut hair, a doctor has to cure, and a patent attorney has to file patents and before you decide to do it yourself, think about what you can get out of it and how much money you will have to spend extra.
From the very beginning, it should be emphasized that patent protection is based on the territoriality principle. Patents are issued in accordance with the requirements of the national legislation and are valid only in the country in which it is obtained. It is also necessary to take into account that in some countries, in accordance with national legislation, it is forbidden to obtain patents in foreign countries without obtaining a patent, or rather, without filing an application in the country of residence. This is due to the fact that all technical solutions are tested for secrecy and can be classified in the interests of the state.
Thus, for example in Russia, according to the Article 1395 of the Russian Civil Code of the Russian Federation (hereinafter the Civil Code), an application for a patent for an invention or utility model created in the Russian Federation may be filed in a foreign country or with an international organization after expiration of six months from the date of filing of the respective application with the Federal Executive Authority on Intellectual Property if the applicant has not been notified within the abovementioned term that the application contains information considered as the state secret.
The application for an invention or utility model may be filed prior to the said time limit but only after the verification of the existence of the information constituting state secret in the application, which has to be requested by the applicant. The procedure for such verification shall be established by the national government. There is an administrative liability for violation of this rule.
So, the first patent must be obtained in the country of the applicant’s residence. As it was defined above, the patent must be obtained in each country separately. The first patent applicant must obtain it in its country, but it is still not clear, in which particular countries it better to obtain a patent.
Since a patent certifies the exclusive right to the patented solution, namely, the right to allow and prohibit the use of the patented solution by third parties in the territory where the patent is obtained, it follows that a patent should be obtained in the countries where the applicant wants to prohibit or allow the use of the patented product. At the same time, it should be noted that it is not possible to prohibit the use of the solution all over the world, due to the high financial cost of patenting. Obtaining a patent in 100 countries is rather expensive. Some applicants, however, can afford patenting in multiple countries, but hardly anyone will agree to spend tens of millions to get a patent in 100 countries. That is unnecessary. Common sense and understanding of what it is all for should prevail in all actions.
So, the first foreign country for patenting should be the one where the manufacturing of the product is supposed to take place, if that country is different from Russia. For example, the applicant is planning to set up manufacturing in China, so it needs to get the patent in China.
Then, for example, the commercialization of the solution will be carried out in the US, Europe and Japan, so in these countries, the applicant also needs to take care of protecting its product and obtaining exclusive rights to it.
The applicant should mind the possibility of obtaining a regional patent, which will be valid in several countries at the same time. For example, there is a need and opportunity to sell a patented product in several CIS countries such as Kazakhstan, Belarus and Armenia. In such a case, it would be best to try to obtain a single Eurasian patent which covers 8 countries of the ex-USSR, including but not limited to Russia, Belarus, Kazakhstan and Armenia.
The application shall be filed in Russian, then a substantive examination is carried out and a decision is rendered. Next, the patent has to be maintained by paying the fees. The fees are paid to the Eurasian Patent Organization (EAPO). The right holder can maintain the patent in one country, in several countries of interest or in all eight. The amount of the maintenance fee depends on the number of countries. The patent is valid for 20 years, and when it expires, it goes into the public domain, i.e., any interested person can use it for economic benefit, without any consequences. Submission of one Eurasian application will significantly reduce the cost of patenting, in comparison with the submission of several applications to the selected states.
Special attention should be paid to obtaining protection in Europe. Thus, in Europe it is possible to obtain a regional patent by filing an application at the European Patent Office (EPO), which includes 38 countries of the European Union (EU). One application is filed in one of the three languages: English, German or French, which is subjected to an international search and examination on the merits. After the decision to grant the patent, the claims are translated into two other languages different from the language of the application, the patent fee is paid and then the patent validation procedure is completed.
To date, the peculiarity of the procedure for obtaining a European patent is that the obtained protection document does not provide final protection in most member states of the European Patent Convention (EPC). In order to complete the procedure for patenting, it is necessary to pass the so-called validation, i.e., the provision to the national patent offices of translations of the application materials (in whole or in parts, depending on the country) into the relevant national language. Maintenance of the European patent, all other legally significant actions, as well as judicial proceedings take place in each of the countries of action selected by the applicant, according to the national procedure.
Thus, filing an application to the EPO is expedient in case of commercialization of the product in three or more countries of the EU. If the product is planned to be sold in a couple of EU countries, it is more appropriate to file national applications in the selected countries. This procedure for obtaining national patents will significantly reduce the cost of patenting.
In conclusion, we would like to add that the procedure for obtaining a patent in foreign countries is not only expensive, but also time consuming. There are a number of foreign countries, where the term of consideration of applications is 8-10 years, which is half the life of a patent, given the term of a patent is 20 years. Such countries include, but are not limited to: Egypt, UAE, Saudi Arabia, Mexico, Brazil and Argentina. This should not be forgotten and should be taken into account when choosing one or another country for patenting.
 ConsultantPlus Legal Reference Database
Let’s break this down in detail. Authorship and ownership of inventions are key legal principles in patent law and practice, but are still misunderstood by many, leading to friction between different parties, including colleagues who work for the same company, and sometimes to litigation. In this paper, we will look at some basic but important issues about authorship and ownership to help inventors and patentees better understand the importance of forward planning with respect to their rights and responsibilities.
It should be noted at the outset that authorship and patent ownership, i.e., patent ownership or title, are not the same thing. Authorship and ownership refer to different legal concepts and should not be confused. In general, authorship generally refers to the individuals who contributed to the creation of the invention, whereas ownership is related to the parties, i.e., individuals or legal entities, who own the ownership rights to the invention.
According to Article 1347 of the Civil Code of the Russian Federation (hereinafter the Civil Code), the author of an invention, utility model or industrial design is the citizen by who’s creative labour the relevant result of intellectual activity has been created. Unless otherwise proven, the person mentioned as the author in a patent application filed for an invention, utility model or industrial design shall be deemed the author of the invention, utility model or industrial design. Thus, it follows from this definition that only a natural person may be an author.
Hereby, it is natural to ask if there can be several authors. We can find the answer in the Civil Code: citizens who have created an invention, utility model or industrial design by joint creative work are recognized as co-authors. It follows by definition that there may be several authors.
It should be noted that according to Article 1228 of the Civil Code, citizens who did not personally contributed to the creation of such result, including those who provided only technical, consulting, organizational or material assistance or help to the author or only facilitated the registration of rights for such result or its use, as well as citizens who supervised the implementation of the relevant works are not recognized as authors of the result of intellectual activity.
The author of the result of intellectual activity has the right of authorship, the right to name and other personal non-property rights. Consequently, the author must be indicated as such in the application for an invention, utility model or industrial design. But what happens if the author is not indicated when submitting the application or the author is indicated who is not a real author? If such an error occurred by accident, it is necessary to take all necessary actions and include the valid author in the application or exclude the one who is not the real author. Patent law allows this to be done by submitting certain documents to the patent office.
But what are the consequences if the application intentionally lists an author who is not or does not include an author who’s really the author? Intentional submitting of incorrect author information to the patent office can have serious legal consequences. In general, such an act can be considered fraudulent, make the patent vulnerable, and lead to its revocation or invalidation.
The right of authorship, the right to the name and other personal non-property rights of the author are inalienable and non-transferable.
Authorship and the name of the author are protected without limitation in time.
The exclusive right to the result of intellectual activity, generated by creative work, initially arises with its author. This right may be transferred by the author to another person under the contract, and may also pass to other persons on other grounds established by law.
The rights to the result of intellectual activity, created by joint creative work of two or more citizens, i.e., co-authorship, belong to co-authors jointly.
Thus, the exclusive right arises initially with the author, but can be transferred to another person.
A citizen, i.e., individual or a legal entity possessing an exclusive right to a result of intellectual activity or to a visual identity is called a right holder and has the right to use such result or such identity at its own discretion in any way not contradicting the law. The right holder may exercise of the exclusive right to the result of intellectual activity, unless otherwise is stipulated by a rule of law.
The right holder may at its own discretion allow or prohibit others to use the result of intellectual activity or visual identity. Absence of the prohibition is not considered as consent (permission).
Other persons may not use the relevant intellectual activity result or identity without the consent of the right holder, except for the cases stipulated by the legislation. The use of the result of intellectual activity or identity, if such use is carried out without the consent of the right holder, is illegal and entails liability established by the patent legislation, other laws, except for cases where the use of the result of intellectual activity or identity by persons other than the right holder without its consent is allowed by the Civil Code.
The exclusive right on the result of intellectual activity or on the means of individualization can belong to one person or several persons together.
The right holder may be not only a natural person or a legal entity but also a group of individuals, a group of legal entities, and an individual and a legal entity together.
In case the exclusive right to the result of intellectual activity or identity belongs to several persons jointly, each of the right holders may use such result or such identity at their own discretion, if the Civil Code or the agreement between the right holders does not provide otherwise. Relations between the persons to whom the exclusive right belongs jointly shall be determined by the agreement between them.
Exercising of the exclusive right to the result of intellectual activity or to identity shall be carried out jointly by the right holders, unless the Civil Code or the agreement between the right holders provides otherwise.
The income from joint use of the result of intellectual activity or identity or from joint exercise of the exclusive right for such result or for such identity shall be distributed between all the right holders in equal shares unless the agreement between them stipulates otherwise.
In conclusion, we note that the right holder can exercise his exclusive rights at its own discretion, in particular, to change the name of the right holder, address, alienate, donate or sell its patent to any interested person, grant the right to use it for a certain period, and in case of violation of rights to file a lawsuit and demand compensation.
Eurasian patent system provides for a regional patent, as it combines, so to speak, eight national patents. If the inventor obtains a patent and pays the appropriate patent maintenance fees, it will be valid in all countries such as Turkmenistan, Belarus, Tajikistan, Russian Federation, Kazakhstan, Azerbaijan, Kyrgyz Republic and Armenia. As it follows from the list of the member countries of the Eurasian Convention, Ukraine does not belong to it. Thus, the inventor also wants to be protected in Ukraine, there is a need to submit a separate application directly to the State Enterprise “Ukrainian Institute of Industrial Property” or Ukrainian Patent Office (Ukrpatent).
Only inventions are protected by Eurasian patents. In accordance with paragraph 1.1 of the Rules for Drafting, Filing and Cxamination of Eurasian Applications with the Eurasian Patent Office: “The objects of invention may be man-made or transformed material objects or processes, in particular, a device, method, substance, biotechnological product as well as application of the device, method, substance, biotechnological product.
Apparatus as object of an invention include embodiments and articles of manufacture.
Methods as objects of an invention include processes of performing actions, i.e., operations and techniques leading to the creation of new or change of known material objects or their research.
Substance as object of the invention includes:
· Chemical compounds, which contain high-molecular-weight compounds;
· Compositions and mixtures;
· Products of nuclear transformation.
Biotechnological products as objects of the invention include products isolated from their natural environment or obtained by other means.
Biotechnological products are divided into living products, in particular plants and animals, microorganisms, plant and animal cells, microorganism strains, plant and animal strains and cell lines, other plant and animal elements, and non-living products, in particular proteins, peptides, antibodies, nucleic acids, genetic constructions. An invention relating to a plant or animal is protectable if its essence is not limited to a particular variety of plant or breed of animal.
The use of a device, method, substance, biotechnological product means its use for an unknown purpose”.
A patent for an invention must meet the criteria of novelty, essentially referring to the originality of the idea, have an inventive level and be industrially applicable. Only if all three conditions are met is it possible to obtain a Eurasian patent. Eurasian patent is valid for 20 years from the date of filing the Eurasian application.
The Eurasian application is filed with the Eurasian Patent Office or to the national patent office of the country which is a party to the Eurasian Convention, i.e., to one of the patent offices of the mentioned eight countries, if the legislation of this country provides for it, namely to the country, the applicant is a resident of. For example, if the applicant is a resident of the Russian Federation, then the application shall be filed with the Russian Patent Office, and if the applicant is a resident of Kazakhstan, then with the RSE “National Institute of Intellectual Property” of the Ministry of Justice of the Republic of Kazakhstan (KAZPATENT).
Thus, for all eight member states of the Eurasian Convention there is one application, which undergoes formal examination, a search to assess patentability, an examination on the merits, and one decision is made for all these countries. It is worth noting that the application is filed in Russian language and there is no need to translate it into other national languages of Eurasian member states.
Submission of the Eurasian application and obtaining a Eurasian patent is a rather expensive procedure, given the level of the established fees. For instance, the fee for filing an application only shall be 28,000 rubles. However, only few applicants are aware of the benefits they are entitled to. Let’s consider this point in detail and say that applicants who are individuals and residents of countries party to the Eurasian Convention, pay only 10% of a fixed fee. That is, they are given a discount of 90% (e.g., for an application, they would be required to pay only 2,800 rubles instead of the fixed fee of 28,000 rubles), public research and educational organizations shall be discounted 30%, and legal persons from the member countries have a 90% discount. As a result, it turns out that the applicant belongs to one of the differential categories, then applying to Eurasia does not seem to be very expensive.
The application can be submitted by the applicant itself or its representative, who must necessarily provide the Office with a power of attorney confirming the authority. The power of attorney must be filed simultaneously with the submission of the Eurasian application materials. There are situations when the applicant is unable to promptly submit the power of attorney. In this case, it is possible to send the power of attorney later, but later submission of the power of attorney entails the payment of the relevant fee to the Office. If the application is filed through a Eurasian patent attorney, the power of attorney is not required.
Thus, if an applicant wants to avoid unnecessary costs, it is indispensable to take care of timely preparation of the power of attorney.
An issued Eurasian patent is valid in all eight countries and has the same legal effect in each particular country, as a national patent.
In order for a Eurasian patent to be valid, annual patent maintenance fees must be paid. The patent can be maintained in all eight countries, and one or more countries of interest can be selected. If fees are paid in these countries, the patent will be valid only in the selected countries, in all other countries it will cease to be valid. In most countries, maintenance has to be paid starting from the third year of the patent, exceptions are Kazakhstan and Turkmenistan, as well as Armenia, where maintenance is paid from the first and second year of the patent, respectively. Fees increase every year, i.e., the older the patent, the higher the fees, but in some countries, there are differential categories who can pay reduced fees. Such categories include, in particular, applicants/owners who are individuals.
In conclusion, the peculiarities of revocation or invalidation of a Eurasian patent have to be noted. Since a patent, in fact, is a national patent in each individual country, it should and can only be invalidated in each country separately in accordance with the national patent legislation of that country. If a patent is invalidated entirely in one country, this does not mean that it will automatically be invalidated in all other countries.
First, let us understand what the software is and how it is protected under the current law.
According to Article 1261 of the Civil Code of the Russian Federation (hereinafter the Civil Code), the term of software is used to refer to the computer program used in a computer system in an objective form of a set of data and commands intended for the functioning of the computer and other computer devices in order to obtain a certain result, including preparatory materials obtained during the development of the computer program and the audio-visual images generated by it. This article also states that copyrights for all types of computer programs, including operating systems and software packages that can be expressed in any language and in any form, including source code and object code, are protected in the same way as copyrights for works of literature. Thus, a computer program is a copyright-protected item protected as a literary work, that is, as text.
From the moment of its creation, there is an exclusive right to this item, which is valid everywhere and is not subject to official registration. Copyright is valid throughout the life of the author, who survived other co-authors, and 70 years, counting from January 1 of the year following the year of his death.
Notwithstanding that the copyright is not subject to binding registration, there is an opportunity to get a state registration certificate for a computer program at Rospatent. This certificate confirms authorship and exclusive right to the registered software.
The advantages of obtaining a certificate are as follows: the procedure takes no more than 2 months from the date of filing the required set of documents for registration with the Patent Office, i.e. it is the fastest in comparison with other types of registration of rights and the period of validity of rights is rather long.
However, there are also disadvantages: the certificate of authorship protects the software only from 100% copying and reproduction. That is, any person who wishes to use your software without your permission and payment of fees will be able to do so, provided the changes are made. There is another disadvantage as the minimal period of time to obtain the certificate is due to the fact that the software is not subject to verification or examination in substance, that is, no one checks the area of software application and its source code. The program is checked according to formal requirements and is registered under the responsibility of the applicant. In a best-case scenario, it is possible to check the trademarks of third parties contained in the software title.
Thus, the applicant is not protected from violation of third parties’ rights. He or she may simply not know that someone has already registered such a software. As a result, a complaint may be lodged by a third party and further legal action may be taken in court.
Since the program code is easy enough to change, which is confirmed by widespread and very frequent updates, modifications of existing programs, it becomes clear that the copyright certificate only formally confirms the rights, while the level of protection is low.
To protect a computer program properly, it must be patented as an invention. In spite of the fact that according to Article 1350 of the Civil Code of the Russian Federation, computer programs are not inventions, it is necessary to consider the program as a method which is a set of sequences, functions, algorithms, i.e. to prescribe not specific codes, but to patent its essence and meaning through algorithms.
As an example, let us give a formula for the invention of one of the patents, which in fact is a source code, but which is described in the form of a sequence of actions, algorithms.
A way to save the content of a web page containing static objects and dynamic objects, with the web page displayed in a browser running on an electronic device with built-in memory, the method is performed by an electronic device and includes:
- Saving information about static objects in an archive file;
- Saving information about dynamic objects in an archive file;
differing in what includes identification of at least one link between dynamic objects and static objects, presented as a link between them; saving information about this connection in an archive file; saving an archive file in memory.
The above-mentioned saving of information about the specified connection includes:
- Formation of a link tracker, which serves to bind static objects to the bound identifier of the hibernation mode, and formation of the table of information elements, which is responsible for binding the identifier of the static object and bound identifier of the hibernation mode, while the binding contains a unique record identifier;
As we can see from the example above, the formula does not use any code. It is the sequence of actions and the algorithm itself that are patented. This approach to the computer program provides its widest and best quality protection.
It should be emphasized that it is very difficult to prove the violation of the rights of a patented method in this way.
In addition to the claims, it is mandatory to make a comprehensive description of the software product. It is necessary to specify the engineering test record, the architecture of the program, as well as to identify its components and provide flowcharts. There is a need to prove and demonstrate the possibility of achieving a set of essential features of the specified engineering test record and provide specific examples of method implementation.
It is worth noting that the procedure for obtaining a patent for the invention in terms of time is one and a half years and, of course, compared to the registration of the computer program, has an obvious disadvantage, but the exclusive rights obtained in the registration of the invention have clear advantages.
To conclude, our inventors often find it very difficult to describe their software as presented above, and they choose the simplest, fastest and cheapest way to protect themselves, which is a registration of a computer program as an object of copyright and obtaining a registration certificate.
The new Rules establish the procedure for consideration and resolution of disputes on the protection of intellectual rights related to filing and consideration of applications for patents for inventions, utility models, industrial designs, trademarks, service marks, geographical indications and appellations of origin of goods, with the state registration of these results of intellectual activity and visual identity, with the issuance of the relevant documents of title, and a procedure for challenging the granting of defense of a right.
Now, the electronic interaction between the applicants and Rospatent have been worked out in more detail. Also, there is a number of clarifications of the procedural rules concerning the consideration of cases in the Chamber for Patent Disputes.
As to the electronic interaction, it is obvious that Rospatent in every possible way encourages applicants to electronic filing of documents. For that method, it is enough to use a simple electronic signature, which will not only facilitate the procedure, but also reduce the time needed, in particular the formal examination period. As a result, the terms of formal examination have been reduced to 5 work days.
When sending an inquiry at the stage of formal examination, the applicant will be given two months to rectify the circumstances that served as the reasons for sending the inquiry, after which the verification of the rectification and decision-making on the results will take up to ten work days.
Nevertheless, the possibility of submitting a printed-out opposition has also been preserved, but the innovation is that now all documents are submitted in one copy and with a copy of materials in a hard copy. The applicant must attach an electronic medium containing copies of the opposition and application and attached documents and materials in PDF format.
Stiffer requirements now apply to the translation of documents attached. From now on, the translation requires mandatory certification by the translator with confirmation of his qualification in a particular language.
In addition, the new Rules set forth the requirement to provide a review not later than 10 work days before the board meeting. If the review is submitted directly to the meeting, it can be postponed.
One of the main innovations is the provision under which the Chamber for Patent Disputes has the right to suspend the consideration of a dispute at the request of one of the parties or by the decision of a tribunal, if a case is considered in an administrative or judicial procedure, the decision on which may have an impact on the results of this dispute. Such suspension shall be possible until the decision on the said administrative or judicial case takes effect or until the interim measures against the intellectual property object being the subject of the dispute are lifted. This innovation may be useful on the one hand, but on the other hand, it will allow to delay the decision for a sufficiently long time, depending on the duration of a particular court proceeding. In total, the period of time for the board's decision can be extended to a year and a half for the situation.
The next significant change is that the new Rules allow applicants to submit additional arguments on submitted oppositions and applications, additional supporting documents and other materials in the process of consideration of the dispute. Following the old Rules, the applicant could only provide additional information from the dictionary and reference publications.
The powers of the members of the Board of the Chamber for Patent Disputes during the consideration of the dispute have also changed. The members of the Board of the Chamber for Patent Disputes can now identify additional grounds, other than those indicated by the applicant, to invalidate the granting of defense of a right to an intellectual property or grounds that prevent the granting. Information on such grounds shall be communicated to the parties to the dispute within 5 work days from the date of the meeting of the tribunal at which they are identified. The parties shall be given an opportunity to present their reasoning.
In addition, the applicant and the right holder may make changes in the application or the state register, if these changes can eliminate the reasons preventing the granting or preservation of defense of a right (in whole or in part).
A person who filed an opposition or a statement has the right to request, with the submission of relevant materials, an amendment of the requested scope of defense of a right to the invention, utility model or industrial design.
The said motions may be filed provided that the requested amendments may eliminate the reasons preventing the granting of legal protection to the claimed subject matter or if, without making the relevant changes, the granting of defense of a right should be denied in full or in part.
Within the framework of the dispute consideration, the right holder also has the right to apply with the submission of the following materials:
- Those that change the scope of defense of a right granted by the patent in compliance with the requirements of Article 1378 of the Civil Code of the Russian Federation, provided that this does not lead to the expansion of the scope of defense of a right;
- Those that transform a patent for an invention into a utility model certificate.
Thus, taking into account the introduction of the new Rules, we can hope that not only the terms of consideration of cases in the Chamber for Patent Disputes will be observed, but also the quality of office work and the decisions rendered will improve.
As a general rule, applications on the above issues are considered at the first stage by the Federal Executive Authority on Intellectual Property. The Civil Code establishes the basic rules describing the fundamental rules of law in this area.
However, for a smooth and efficient functioning of any procedure, a set of provisions describing the procedure in detail is required. When it comes to appealing actions and decisions of a patent office, such are the Rules for Consideration and Resolution of Administrative Disputes by the Federal Executive Authority on Intellectual Property (hereinafter - the Rules), effective as of September 6, 2020.
The text of the document is published on the official web portal of the Center of Public Access to Legal Information of the Russian Federation: http://publication.pravo.gov.ru/Document/View/0001202008260011?index=0&rangeSize=1.
According to the Civil Code of the Russian Federation and the abovementioned Rules, the following categories of cases for which the abovementioned Rules apply are distinguished:
- Disputes over the oppositions of applicants to the decisions of Rospatent based on the results of the examination of intellectual property.
- Consideration of appeals related to the challenge or termination of existing legal protection.
Due to the fact that the Rules describing the procedure of consideration appeals by the concerned parties were in force in Russia before, the adopted Rules should not be considered fundamentally new. However, the introduced provisions have a number of innovations that may be summarized as follows.
- Simplification of the procedure for filing oppositions, statements, reviews, clarifications and other legally binding documents. The Patent Office has an active policy of replacing paper media with electronic analogues. Now applicants have the right to send to Rospatent an appeal in digital format. At the same time, other parties to the conflict will also be able to provide necessary information in the remote mode. If the documents are submitted on paper, it is necessary to attach the flash memory with printed out copies. The advantages of this method are obvious: for both individuals and legal entities, it is a saving of time and money. As for the state authority, it is alignment of document flow, reduction of possible errors and reduction of the period of consideration of cases.
- Accretion of power of the parties. Under the new Rules, participants are authorized to present new arguments during the consideration of a dispute, as well as to refer to the newly discovered evidence for the decision of the patent office upon examination of the case. Information on additional arguments will be sent to the other party within 5 work days from the date of their receipt. In this case, the latter party shall have the right to submit its opinion. Thus, the proceedings will be fair and more dynamic, as the actual information may affect the course of the case and the decision adopted.
- Opportunity for applicant and right holder to make changes in the application or information in the state register during consideration of the dispute. This is acceptable if such actions will eliminate the reasons preventing the provision or preservation of defense of a right (in whole or in part).
The main objectives of the new version of the Rules are to optimize the activities of the patent office, reduce the volume of paper flow, accelerate the process of resolving cases and expand the scope of authority of the parties to a dispute.
On top of that, the adopted Rules will allow the following.
- Acceleration of consideration of appeals. As Grigory Ivliev, the head of Rospatent noted: “Formal inspection and acceptance of an opposition or application for consideration will take no longer than 5 work days”. In case of timely payment of the state duty, the consideration of the case on the opposition against the decision of Rospatent will begin within one month after the receipt of the application for consideration. In other cases, it will take no longer than two months from the date of acceptance for consideration.
- Combination of several disputes into one record keeping procedure, if the parties are the same persons or entities and they agree to such actions.
- Increase in publicity and openness of consideration of disputes. According to the information provided by the patent office: “Documents and materials, as well as other information on the case will be published on the official website within five work days from the date of their receipt”. Clause 47 of the Rules provides for mandatory audio and (or) video recording of the Board meeting. Carriers with the recordings shall be kept for at least four months from the date of the meeting, with the possibility of providing a written request within 5 days by either party to the dispute.
- Simplification of the procedure for participation in the consideration of the dispute. Interested parties have the right to submit an application for participation in the meeting using video-conferencing not less than 15 work days before the date of consideration of the case.
It should also be noted that any innovations first require application in practice, and only then there will be an opportunity to analyze the level of their applicability, as well as the pros and cons of the adopted rules.
The State Register is maintained by entering the information on the invention into the State Register by the authority that has made a decision on the grant of a patent, and by making appropriate amendments and supplements to the State Register records.
The registers of the subject matters of intellectual industrial property, namely the Register of the Inventions, the Register of the Utility Models, are maintained by the authorized organization of Rospatent – the Federal State Budgetary Institution “Federal Institute of Industrial Property” (FIPS).
There is the information resource “Open Registers” at the official website of the Patent Office of the Russian Federation, which is formed on the basis of the publicly available information on the registered results of intellectual activities and the means of individualization, including the inventions and the utility models entered into the relevant state registers and published in the official publications of Rospatent, by regular updating.
The above resource is the information reference source that can be used by any person to search for the information on the registered results of the intellectual activities and the means of individualization, as well as other information related to the status of the granted patent/certificate or the state of the office proceedings for the applications filed to Rospatent. The reference information is structured by a number of the patent/certificate or by a registration number of the application.
Please note that the information resource “Open Registers” may contain errors caused by technical distorting the information, while updating the resource. The errors are corrected immediately as they are detected. The above resource may be used by any person absolutely free of charge, it is in the public domain.
If it is necessary to confirm officially the information published in the information resource “Open Registers,” the FIPS provides, at the user’s request, an official written certificate prepared on the basis of the information from the relevant state register.
It is possible to view the official publication in a PDF format for the patents/certificates for: The inventions and the utility models published starting from 10.01.2005 (for the inventions – from No. 2243631, for the utility models – from No. 43117).
We shall consider at the example of the State Register of the Inventions of the Russian Federation the way the information is entered into the register, the basis for entering it into the state register and the information that is contained in the state register.
So, the basis for entering the information on the state registration of the invention into the State Register of the Inventions of the Russian Federation shall be the decision of Rospatent on the grant of the patent adopted in accordance with the procedure established by the legislation.
The state registration of the invention and the grant of the patent shall be carried out in accordance with Paragraph 2 of Article 1393 of the Civil Code of the Russian Federation, subject to the payment of a relevant patent fee (a fee for the grant of the patent and its registration). If the applicant has failed to pay the patent fee in the established manner, the registration of the invention and the grant of the patent shall not be carried out, and the relevant application shall be deemed withdrawn on the basis of the decision of the Federal Executive Authority on Intellectual Property. If the applicant submits a document confirming the grounds for exemption from the payment of the patent fee, the state registration of the invention and the grant of the patent shall be carried out without the payment of the patent fee for the registration of the invention and the grant of the patent.
Rospatent shall enter the following information into the State Register of the Inventions of the Russian Federation:
- the registration number of the invention (the patent number);
- the registration number of the application for the grant of the patent;
- the date of filing the application for the grant of the patent;
- the start date of counting the patent validity period;
- the priority date(s) of the invention;
- the information on the author(s) of the invention: the surname, the name, the patronymic (in full), the code(s) of the country(countries) of his (their) place(s) of residence in accordance with the standard of the World Intellectual Property Organization (hereinafter referred to as the WIPO) ST.3 “The recommended standard for two-letter codes for representing countries, administrative divisions and intergovernmental organizations” (hereinafter referred to as the WIPO ST.3);
- the information on the patent holder: the surname, the name, the patronymic (in full), the name of a legal entity, his/its (their) place of residence, location with the indication of the code of the country in accordance with the WIPO standard ST.3. If the patent is granted in the name of the Russian Federation or the subject of the Russian Federation, the name of the state customer acting on behalf of the Russian Federation, the subject of the Russian Federation shall be indicated additionally. If the patent is granted in the name of the performer of a state or municipal contract, the fact that he/it is the performer of the relevant contract shall be indicated additionally in the information;
- an address for correspondence with the patent holder or his/its representative;
- the name of the invention;
- the additional information (in particular, the information on the existence of the application for the alienation of the patent, the information on the existence of the representative of the patent holder, the information on the state customer, if the patent is granted in the name of the performer of the state or municipal contract);
- the date of the registration of the invention;
- the date of the grant of the patent;
- the date of the publication of the information on the grant of the patent and the number of the official bulletin.
If the author has refused to be mentioned as such, when publishing the information on the grant of the patent, then the mark “not published” shall be entered into the State Register of the Inventions of the Russian Federation.
All the above information is publicly available, that is, any interested person can get acquainted with it, and it is in the public domain. If one needs any of the above information, he should simply select the relevant register at the official website of the Patent Office in the section “Open Registers”, enter the patent number into a search box and get all the information regarding this patent.
As to entering the records on the amendments and the supplements into the information of the State Register of the Inventions of the Russian Federation, the following records with the indication of the date of the publication of the amendment or supplement shall be entered into the State Register of the Inventions of the Russian Federation containing the information on the registered invention, under the heading “Amendments and Supplements”:
- on correcting the obvious and technical errors in the records of the State Register of the Inventions of the Russian Federation;
- on the registered agreement on the alienation of the exclusive right to the invention;
- on the registered license (sub-license) agreement on granting the right to the use of the invention;
- on the registered franchise (sub-franchise) agreement on granting the right to the use of the invention;
- on the registered pledge (subsequent pledge) agreement of the exclusive right to the invention;
- on the registered amendment entered into the registered agreement;
- on the registered transfer of the exclusive right to the invention without the agreement;
- on terminating (early terminating) the registered license (sub-license) agreement, franchise (sub-franchise) agreement, or pledge (subsequent pledge) agreement;
- on cancelling the patent due to the fact that it is recognized as invalid in full or in part;
- on early terminating the patent at the request of the patent holder;
- on terminating the patent for an invention (a group of inventions) in connection with the grant of the patent for an identical utility model (a group of utility models);
- on early terminating the patent due to the non-payment of the patent fee for maintaining the patent in force within the established period;
- on restoring the patent;
- on filing the application for an open license;
- on withdrawing the application for an open license;
- on withdrawing the application for the alienation of the patent;
- on amending the name and/or address of the location of the patent holder being a legal entity;
- on amending the surname, the name, the patronymic of the author, the patent holder being an individual and/or on amending the country code of the place of residence of the patent holder, the author of the invention;
- on extending the validity period of the patent;
- on granting a duplicate patent;
- on amending the address for correspondence with the patent holder or his representative;
- on granting (for the remaining period) the patent due to the termination of the USSR copyright certificate for an invention on the territory of the Russian Federation;
- on other amendments related to the registration of the invention.
The information on the patents for the utility models is contained in the Register of the Utility Models. This Register is formed in approximately the same way as the Register of the Inventions and it contains the similar information.
So, according to Article 1379 “The Conversion of the Application for an Invention, a Utility model or an Industrial Design” of the Civil Code of the Russian Federation:
1. Before the publication of the information on the application for an invention (Paragraph 1 of Article 1385), but not later than the date of making a decision to grant a patent for an invention, and in the case of making a decision to refuse to grant the patent for an invention or to recognize the application as withdrawn – before the possibility of filing an objection against this decision stipulated by the Code is exhausted, the applicant shall be entitled to convert it to the application for a utility model or an industrial design by filing an appropriate statement to the Federal Executive Authority on Intellectual Property, except the case, if the applicant has filed the statement stipulated by Paragraph 1 of Article 1366 of this Code on the proposal to conclude an agreement on alienating the patent.
2. The conversion of the application for a utility model to the application for an invention or an industrial design, or the application for an industrial design to the application for an invention or a utility model shall be allowed according to the statement filed by the applicant to the Federal Executive Authority on Intellectual Property before the date of making a decision to grant the patent, and in the case of making a decision to refuse granting the patent or to recognize the application as withdrawn – before the possibility to file an objection against this decision stipulated by this Code is exhausted.
3. Converting the application for an invention, a utility model or an industrial design in accordance with Paragraph 1 or 2 of this Article shall be allowed, if the priority and the date of filing the converted application are maintained in compliance with the requirements of Paragraph 3 of Article 1375, Paragraph 3 of Article 1376, Paragraph 3 of Article 1377, Paragraph 3 of Article 1381 or Article 1382 of this Code.
It should be noted at once that it is possible to convert the application for an invention to the application for a utility model only if the subject matter of patenting is the device located in a single housing, which elements are rigidly connected with each other, as according to the patent legislation, only the particular device meeting the above requirements can be defended as a utility model.
If as a subject matter, there are several subject matters, such as a device and a method of manufacturing it, in the application for an invention, then it is possible to convert the application to a utility model only in relation to the device, as the subject matter “method” cannot be defended by the patent for a utility model.
There are the applications for inventions, where the defense, for example, of several variants of the device is stipulated. In such situation, it is possible to convert the application only in relation to one device. And again, this is due to the norms of the legislation, which dictate strictly the subject matter for a utility model and the condition that it can be only one.
There are also known the applications in which several different methods, compositions (one or more), systems can be claimed, however, they do not contain the subject matter of the device, which falls under a utility model definition. In this case, it is not possible to convert the application for an invention to the application for a utility model.
As to the reverse conversion, that is, when it is necessary to convert the application for a utility model to the application for an invention, this is always possible. There are no restrictions for the above variant.
Now, let us consider the situation, when there is nevertheless a need to convert and it makes sense.
We shall consider the situation, when the application for an invention (the subject matter is a devise) has been filed without carrying out a preliminary international search to estimate the chances of obtaining the patent, i.e., blindly, at the applicant’s risk, and in the course of a substantive examination, it turns out that the claimed invention meets the patentability criterion “novelty,” but it does not meet the patentability criterion “inventive step” – the solution is not obvious from the prior art to the person skilled in the art, that is, for the examination, this decision is obvious and follows from the prior art. This conclusion is confirmed by the conclusions of the examination set out in several requests, which the applicant cannot overcome and the examination insists on its opinion. As a result, the applicant, after numerous attempts to overcome the objections of the examination, is faced with the fact that the Office makes a decision to refuse granting the patent. It is at this moment that the applicant has a possibility to file a request to convert the application for an invention filed for a device to the application for a utility model, as the claimed invention is recognized as new, and in order to obtain the patent for a utility model, in contrast to the patent for an invention, the compliance of the technical solution to the condition “inventive step” is not required, only “novelty” is required.
Thus, out of two evils – not to obtain the patent at all or to obtain the patent for at least a utility model – it is more appropriate to choose the second evil, while the applicant loses absolutely nothing in relation to the scope of his rights, which is determined by the claims of the invention/utility model, as they remain unchanged.
Now let us consider a reverse variant, when the application is filed for a utility model. Let us assume the situation in which, in the course of carrying out the substantive examination, it turns out that the claimed device meets not only the patentability criterion “novelty, but the patentability criterion “inventive step” as well. The examination is ready to make a positive decision to grant the patent. At this point, the applicant has a possibility to file a request to convert the application for a utility model to the application for an invention. It is necessary to pay special attention to the fact that this action must be carried out no later than the date of making a decision to grant the patent, otherwise, such possibility will be exhausted, and you will be refused to satisfy the request. If all the necessary actions are carried out in due time, obtaining the patent for an invention, for example, will allow extending its validity up to 20 years, in contrast to the patent for a utility model, which validity is 10 years. Thus, the validity of the exclusive rights to the patented device will be 10 years longer.
In conclusion, I would like to add that the possibility and expedience of converting the application for an invention to the application for a utility model and the reverse should be estimated in each particular case, and only the specialists that are highly qualified in this field, patent attorneys, will help you to make the right decision.
The legislation will help us with this, namely, Article 1358 of the Civil Code of the Russian Federation, according to which the use of an invention, a utility model shall be considered to be the following, in particular:
1) importing into the territory of the Russian Federation, manufacturing, applying, offering for sale, selling, other introducing into civil circulation or storing for such purposes the product, in which the invention or the utility model has been used;
2) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of the product obtained directly by a patented method. If the product obtainable by the patented method is new, an identical product shall be considered to have been obtained by using the patented method, as there is no evidence to the contrary;
3) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of a device, during the functioning (operation) of which in accordance with its purpose the patented method is realized automatically;
4) performing the acts stipulated by Subparagraph 1 of this Paragraph in respect of the product designated for applying it in accordance with its purpose indicated in the claims, while protecting the invention in the form of applying the product according to a certain purpose;
5) realizing the method, in which the invention is used, including by the applying this method.
The invention shall be deemed to have been used in the product or the method, if the product comprises and the method involves each feature of the invention given in the independent claim of the claims in the patent for an invention, or the feature, which is equivalent thereto and which has become known as such in this art before the priority date of the invention. It is necessary to point out that the equivalent features are the ones that coincide according to the function performable and the result achievable.
The utility model shall be deemed to have been used in the product, if the product comprises each feature of the utility model given in the independent claim of the claims in the patent for a utility model.
Special attention should be paid to the last two unnumbered paragraphs, and more precisely, to the phrase that the invention or the utility model shall be deemed to have been used, if each feature of the independent claim of the claims of the invention or the utility model has been used. We shall omit equivalence, and we shall not consider it for ease of understanding.
Thus, following the logic - in order not to use the patent for an invention or a utility model, it is necessary not to use at least one feature given in the independent claim of the claims of the invention or the utility model.
To show how this works in practice, we shall give a specific example of independent claim 1 of the utility model. So, a patent for a utility model was granted in 2019 comprising independent claim 1 of the utility model, namely: “1. The children’s chair consists of a frame in the form of interconnected ties of the left and right sidewalls, each of which is a horizontal plank connecting the front and rear legs, while the rear leg is made with a curve, a seat with the back is fixed at the frame, and a footboard is installed between the front legs, characterized in that each of the sidewalls is a single integral component, and the footboard is equipped with strengthening ribs in the form of a cellular structure.” To understand the patented design of the children’s chair, we shall give an illustration below.
In order not to violate the patent or, from the viewpoint of the legal language, not to use the patent, it is adequate not to use in the own product at least one feature indicated above, in claim 1. For example, such feature as “the rear leg is made with a curve” is used in the claims. If to use the rear leg in the own design without the curve, that is, a straight one, then this feature will not be used, therefore, the patent is not violated, one can manufacture safely the product that is similar to the patented chair and not to be afraid that the right holder will come to you with a claim for a violation of the rights.
Using the same claims of the utility model, we shall consider another example of how it is possible to circumvent the patent and not to violate the rights of the right holder of this patent. So, independent claim 1 of the utility model of the indicated patent comprises the following feature “the footboard is equipped with strengthening ribs in the form of a cellular structure.” In order to circumvent the patent, one can simply either not apply the footboard in his design, or, if it is really much needed, one can use the footboard without the strengthening ribs - a smooth one, or one can use the ribs in such a way, that they would form not the cellular structure, like in the patent, but, for example, so that they would be made in the form of parallel, vertical or horizontal lines. Thus, you will circumvent the patented solution, and you will not violate someone else’s patent, but in fact you will manufacture the same solution.
I particularly would like to pay special attention to the claims that comprise the alternative features in their independent claims, which features being often indicated with the use of conjunction “or,” and which are also enumerated being separated by a comma. For example, “the pharmaceutical composition is administered to the indicated subject as a single-unit form for administration, selected from the group consisting of the forms that are administered orally, such as tablets, gelatin capsules, powders, granules and suspensions or solutions for oral administration.” As one can see from the example given above, several alternatives are used here, in fact, several different solutions-variants are defended in the same patent, and one should be very careful, while using this feature. Even if to assume that it is possible not to use one or two alternatives, this does not mean that the patent is not being violated. In order not to violate this patent, it is necessary not to use each of the indicated alternatives. If at least one variant remains, which is impossible not to be used, the patent will be deemed to have been violated.
In conclusion, I would like to add that according to the current legislation, the following acts shall not be the violation of the exclusive right to an invention, a utility model:
1) applying the product, in which the invention or the utility model has been used, in the design, in auxiliary equipment, or during the operation of vehicles (water, air, automobile and railway transport) or the space-based technology of foreign states, provided that these vehicles or this space-based technology is located temporally or accidentally within the territory of the Russian Federation, and that the indicated product is applied solely for the needs of the vehicles or the space-based technology. Such an act shall not be deemed to be the violation of the exclusive right in respect of the vehicles and the space-based technology of those foreign states, which grant the same rights in respect of the vehicles and the space-based technology registered in the Russian Federation;
2) conducting scientific research of the product or the method, in which the invention or the utility model has been used, or conducting an experiment over such product or method;
3) using the invention, the utility model in emergency situations (natural disasters, catastrophes, accidents), provided that the patent holder is notified as soon as possible about such use and with the following payment of reasonable damages to him;
4) using the invention, the utility model to satisfy the private, family, domestic, or other needs that are not related to business activity, if the purpose of such use is not to gain profit or income;
5) extemporaneous preparing medicines on physicians’ prescriptions in pharmacies with the use of the invention;
6) importing into the territory of the Russian Federation, applying, offering for sale, selling, other introducing into civil circulation or storing for such purposes the product, in which the invention or the utility model has been used, if such product has been introduced into civil circulation earlier within the territory of the Russian Federation by the patent holder or by another person with the patent holder’s consent, provided that such introduction has been exercised lawfully.
Thus, if you use the patent in cases 1-6 above, then you have the right to use the patent in full, and you will not be considered a patent violator. Good luck in using other people’s patents!
2. An applicant wishing to use the right of conventional priority in relation to an application for an invention or utility model must inform the federal executive authority for intellectual property about this and submit to this federal authority a certified copy of the first application within sixteen months from the date of its filing in the patent Office of the State Party to the Paris Convention for the Protection of Industrial Property.If a certified copy of the first application is not submitted within the specified period, the priority right can nevertheless be recognized by the federal executive authority for intellectual property at the request of the applicant submitted to this federal authority before the expiration of the specified period, provided that a copy of the first application is requested by the applicant in the patent agency to which the first application is submitted, within fourteen months from the date of filing the first application and submitted to the federal executive authority for intellectual property within two months from the date of its receipt by the applicant.It should be noted that the Federal Executive Body for Intellectual Property has the right to require the applicant to submit a translation into Russian of the first application for an invention or utility model only if the verification of the claim to priority of the invention or utility model is associated with establishing the patentability of the claimed invention or utility model.Thus, priority is an important tool in establishing the primacy and fixing it, and the priority date is important for assessing the patentability of your technical solution and the sooner you submit an application, the more chances you have to get exclusive rights to your development.
Day by day, more and more customers are showing interest in patenting issues in a country like China. After all, it is no secret that this country is ahead of the rest in many respects.It is interesting how the situation with patenting in China is. Let’s look in numbers.Statistics on intellectual property data in 2019 indicate the following: the percentage of granting patents for inventions was 44.3%, the percentage of granting patents for utility models was 79.9%. These are very good indicators, especially with regard to utility models.Below you can see a diagram of the trends in filing applications for various patents in 2015-2019, which makes it clear that the most popular patent in China is a utility model, the number of filed applications for this object increases from year to year.
The percentage of granted patents is shown in the diagram below. As you can see, the percentage of patents granted for all objects in 2019 decreased compared to 2018, however, remains at a high level for utility models and industrial designs.
It should be pointed out that the total number of applications filed for an invention in China in 2019 amounted to 1.401 million, which is 9.1% less than the previous year; the number of patents granted for an invention amounted to 453 000, which is 4.8% more compared to the previous year.In 2019, decisions were made on a total of 1,023 million applications for the invention, while the percentage of granting a patent was 44.3%, which is 9.2% less than 53.5% in 2018.
Data comparison in 2019 and 2018
From January to December 2019, 2.268 million applications for a utility model were filed, and 1.582 million were issued in China. By the end of December 2019, the number of valid patents for a utility model was 5.262 million.In 2019, decisions were made on a total of 1.981 million applications for a utility model, while the percentage of issuance was 79.9%, an increase of 1% compared to 78.9% in 2018.
Data comparison in 2019 and 2018
In 2019, the number of applications and patents filed increased by 195879 and 103212, respectively.From January to December, 712000 industrial design patent applications were filed and 557000 were issued in China. By the end of December 2019, the number of valid patents for an industrial design was 1.79 million.In 2019, decisions were made on a total of 744000 applications for industrial design, while the percentage of granting a patent was 74.9%, decreasing by 5.5% from 80.4% in 2018.
Data comparison in 2019 and 2018
Over the past year, the number of applications and patents filed increased by 2818 and 20278, respectively.In 2019, China received a total of 61000 international PCT applications, which is 10.4% more than last year. Among them, 57000 were Chinese, which is 9.4% more than last year. The main 3 provinces of China (regions and cities) for PCT international patent applications are Guangdong (24700), Beijing (7200) and Jiangsu (6600).A total of 55000 requests for re-examinations were also received, and 37000 cases were closed in China. 6000 requests for invalidation were received and 5000 cases were closed.In addition, the number of patent applications for inventions from abroad reached 157000, which is 6.0% more than in the previous year.In terms of country breakdown, Japan, the United States and Germany took the first 3 places in filing applications for inventions in China with the number of applications 49000, 39000 and 16000, which is 7.9%, 1.5% and 6.4% year-on-year respectively.U.S. patent applications for Chinese companies show the fastest growth in 2019.Statistics show that the total number of patents issued by the United States to mainland Chinese companies grew by 34% in 2019, which is the strongest growth among the largest economically developed countries.U.S. filings reached an all-time high in 2019, when 333530 patents were granted, an unprecedented 15% increase over 2018, according to an annual report published by IFI Claims, a New Haven-based patent service.Applications of Chinese companies from mainland China increased from 12599 to 16900, registering an increase of 34.14%. The number of applications from US companies increased by 15.95%, which resulted in the second fastest growth.According to the report, the United States own a 49% share of U.S. patents granted in 2019, followed by Japan and Korea. China increased its share up to 5% and took fourth place, overtaking Germany for the first time.Two mainland Chinese companies are in the top 15 this year. Huawei climbed six positions to 10, while BOE Technology climbed four positions to 13.In addition, the top 10 fastest growing technologies in terms of US patent growth include the CRISPR technology, the creation of new hybrid plants, dashboards (mainly related to automobiles), 3D printing and pharmaceuticals (especially for cancer treatment).Thus, based on the presented statistical information, we can conclude that in intellectual property issues, in terms of the number of applications filed and patents received, China is a leader and seeks to increase the number of its intellectual property not only in its country, but far beyond it as well.
More and more often our customers are interested in acquisition of patents in Arab countries, in particular, in the UAE and Saudi Arabia. However, not everyone knows how many patenting details are hidden in such a country as the United Arab Emirates, and there are many of them. Invention of something new, including a new method or a new device, is often the first step in developing of a company and launching of a completely new opportunity for an individual or a group of people. Each country is responsible for registering patents within its territory. Registration of patents in the UAE is made by the Ministry of Economy of the UAE. In particular, patents are managed by the Department of Intellectual Property Protection, which is also the ministry and the body authorized to grant patents. Applications should comply with certain standards for registration, such as novelty, inventive step and industrial applicability. In other words, a patent should be granted for something new, inventive, and also have actual application in a particular industry or in several industries. Here, the legislation of the UAE is similar to many other countries, in particular, to Russia.
Meeting of the above requirements, namely, compliance with the patentability standards such as “novelty”, “inventive step” and “industrial applicability”, is a required condition for a positive decision on the application. The latter standard, namely industrial applicability is very important and is often overlooked. It limits granting of patents for inventions that can be produced and used within the industry. Without taking into account this patentability standard, any type of abstract design can be patented and kept in force, preventing actual development at a later time, when technology and production capabilities will allow catching up with the intellectual essence of the invention.
There are many patent applications which are declined in the UAE, as well as in other registration offices in other countries. The role of the Ministry of Economy and a specific department of the intellectual property protection is in considering of the application, determining whether it complies with the patentability standard and whether it can be patented.
In some cases, a certain type of a technical solution, for which the application is filed, and may not comply with the established restrictions provided for in the patent law. For example, it is not possible to patent a living organism, such as a plant or an animal.
In addition, certain scientific methods used in the development of microorganisms and medical methods of treatment, including surgical procedures, mathematical or scientific theories or business methods, cannot be patented. Also, any invention that is believed to violate morality or public order cannot be patented in the UAE.
In order to avoid problems with granting a patent under the application, it is strongly recommended to work with a patent attorney. Patent attorneys can also play an important role in determining whether patent rights have already exised in the UAE for a similar invention that could be infringed. Unlike some countries, it is not possible to search for currently registered patents in the UAE with the use of the official request or a specific department or a website.
Patent firms can make a search in the intellectual property journals in which approved and granted patents are listed. Since this is a laborious process, it’s not possible to manage without a legal support. In addition, patent search is an important source of funding that is used before going through the application process and paying fees.
To file a patent application in the UAE, there are several steps involved in this process. Special documentation that must go along with the initial application is also needed.
Each patent application requires relevant documents for its granting. This documents should contain information about patent applicants, as well as any details about the authors. This can be difficult if the patent is filed by a company or legal entity. In such situations, the application must contain a memorandum of association or organization charter, which must be certified and legalized through the UAE embassy. If the applicant is not an author, then an assignment agreement must also be submitted with the application. The specified document should be legalized at the UAE Embassy.
In some cases, an application is an application claiming priority by the date of filling of the initial application. This requires a priority document, which is signed and notarized by a notary in the UAE. If there is the priority document, the application deadline is twelve months from the date of the priority documentation filing.
In addition to this documentation, the application should contain drawings of the invention or its description. The application should also contain an abstract describing a specific invention, including its use in industry. All documents should be submitted, both in English and in Arabic, within 90 days from the date of application filing.
For foreign companies or applicants, a power of attorney is required, which can be issued to the UAE law firm or other recognized organization to complete the application process. The power of attorney must also be approved and legalized at the UAE Embassy and will accompany the application documentation.
After the application is considered and accepted, it is sent for the examination. The examination requires additional fees and may take up to two years. During the examination, the application is carefully examined according to three standards, and it is quite possible that more information and documentation may be requested during the examination period.
If there is a decision on refusal to grant a patent, the applicant has sixty days to submit an application for a reconsideration of the application. Cooperation with a patent attorney to develop an exhaustive argument to remove the cause of refusal is the most effective way to reverse denial.
If a patent application is accepted, the Ministry of Economy publishes information on a patent application in the official UAE bulletin. There is a period of sixty days to receive comments. During this time, any person who objects to the granting of a patent under the application may submit in writing any objection including information on why the patent should not be granted.
This argument will be heard and considered, and the patent will either be granted, or a decision will be made on refusal to grant a patent on the basis of this argument and objections.
As can be seen from the above, the way to obtaining a patent in the UAE can be difficult. Thanks to legal representation throughout the process, many common delays can be avoided, especially when it comes to incomplete documentation and incomplete application materials.
For most part of new applications, from the initial filing to the receipt of a patent, this period is about eight years. Companies or individuals holding patents for the same product in other countries can use this patent as a basis for filing an application in the UAE, which can speed up the process.
Once a patent has been granted in the UAE, it is valid for twenty years and cannot be renewed. Every year of this period there is a mandatory patent fee, which must be paid in order to keep the patent valid and prevent its termination. In addition, if a company or an individual who owns a patent has not been using it for three years from the date of its issuance, then a third party may obtain a permit or license to manufacture this product.
With a valid patent in the UAE, no other company can manufacture or copy this invention. This gives a possibility for the author of the invention or a company which has the rights to the invention to develop the invention in full and create a sales market for his product or service.
More and more often, the Applicants, after filing an application for an invention or a utility model, receive the decisions on the refusal of granting a patent or on the recognition of the application as withdrawn, and they do not know what to do with it. Let us try to find out in it.
At first, let us refer to the legislation and find out for what reasons a certain negative decision can be obtained.
- So, as to making the refusals in accordance with the current patent legislation,
If during a substantive examination of the application for the invention, the utility model, it is established that the claimed invention, utility model, which is expressed by the claims provided by the applicant,
refers to the subject matters that cannot be the subject matters of the patent rights:
1) the ways of human cloning and his clone;
2) the ways to modifying the genetic integrity of the cells of the human germ line;
3) the use of human embryos for industrial and commercial purposes;
4) the results of the intellectual activities, if they contradict the public interests, principles of humanity and morality;
does not comply with the conditions of patentability: for inventions – with world novelty, inventive step and industrial applicability, and for utility models – with world novelty and industrial applicability;
is not an invention, a utility model, as it relates, in particular, to:
2) scientific theories and mathematical methods;
3) the decisions, which concern only the appearance of the products, and which is aimed at satisfying aesthetic needs;
4) the rules and methods of games, intellectual or economic activities;
5) programs for electronic computing machines;
6) the decisions consisting only of providing information.
7) plant varieties, animal breeds and biological methods for obtaining them, that is, the methods consisting entirely of crossing and selecting, with the exception of microbiological methods and the products obtained by such methods; and
the substance of the invention, the utility model claimed in the application documents, and which are submitted as of the date of its filing, is disclosed with the completeness that is not sufficient for the implementation of the invention, the utility model,
the Federal Executive Authority on Intellectual Property makes a decision on the refusal of granting the patent.
It should be noted that in respect of the inventions, before making the decision on the refusal of granting the patent, the Federal Executive Authority on Intellectual Property sends the applicant a notice on the results of the check of the patentability of the claimed invention with a proposal to submit the own arguments regarding the reasons given in the notice. The applicant’s response containing the arguments regarding the reasons given in the notice may be submitted within six months from the date of sending him the notice.
After receiving the response to this notice, the Office makes the decision either on the refusal of granting the patent or on granting the patent.
As for the utility model, if it does not comply with the above requirements and it is impossible to correct the application materials or the claims of the utility model, in the opinion of the examination, the Office may send the decision on the refusal of granting the patent based on the results of carrying out the substantive examination immediately, without sending the applicant a preliminary request, that is, without giving an opportunity to speak out. As a rule, the refusals of that kind are made regarding the applications that are being formalized and filed by the inventors themselves, who are the applicants, and who do not have the sufficient knowledge of the patent law.
Thus, in order to reduce the probability of getting the refusals of granting the patents, and often to exclude the possibility of getting the refusal, we would recommend, while preparing the application materials, to address to the specialists, the patent attorneys, who have the special knowledge in the field of the patent law, and already at the stage of filing the application, they will help to protect the applicants from the possible refusals, offer the ways of solving the problem and, in the worst case scenario, recommend not to spend money and not to file the application to avoid the obvious refusal of granting the patent.
- Now let us find out, in which cases the Office makes the decision on the recognition of the application as withdrawn. Thus, the decision on the recognition of the application as withdrawn is made if:
the fee for the legally significant action has not been paid within the period established by the legislation, or the fee paid for the action stipulated by the Paragraphs of the attachment to the Regulations on Fees is less than the amount of the fee established by the Regulations on Fees;
the request for the substantive examination of the application for the invention has not been filed within the period that is established or extended according to an established procedure;
in connection with the request for additional materials, the additional materials, without which it is impossible to carry out the examination or to make a decision on the grant of the patent, have not been presented within three months from the date of filing the request or the copies of the materials opposed to the application and requested by the applicant within two months from the date of sending the request, and this period has not been extended according to the procedure established by the legislation of the Russian Federation;
an agreement identifying the applicant according to the application in the case of the submission of the applications for the identical inventions or the identical invention and utility model filed by the different applicants with the same priority date has not been submitted within twelve months from the date of sending the notice, and this period has not been extended according to the legislation of the Russian Federation;
a notification on the choice of the application made by the applicant has not been submitted, if he had filed the applications for the identical inventions or the identical invention and utility model within twelve months from the date of sending the correspondent notice, and this period has not been extended according to the legislation of the Russian Federation;
the applicant has not filed a statement on the termination of the patent in respect of the identical utility model for which the patent had been granted within twelve months from the date of sending the correspondent notice.
We shall note separately that, due to any circumstances, the applicant on his own initiative is entitled to withdraw the application for the invention, the utility model filed by him before the state registration of the invention, the utility model in the correspondent register, by filing the certain request.
So, what the applicant must do to avoid getting the decision on the withdrawal of the application. As a rule, all the above grounds according to which the applications are withdrawn are due to the fault of the applicant, for example, due to the fact that he does not know or lacks the deep knowledge of the patent legislation, and sometimes, due to the fact that nobody has advised him about that. To avoid the withdrawal of the application, one should follow clearly the recommendations of the Office’s experts, pay the fees in time, send the responses to the requests and comply with all the periods established by the legislation for the certain actions. If you understand that you are not able to cope with these tasks by 100%, then to avoid such situations, we would recommend addressing to the skilled specialists – the patent attorneys, who will help you to avoid the withdrawal of the application, undertake all the necessary actions and do everything possible to get the long-awaited patent.
In conclusion, we shall note that if you do not agree with the decision made, then the Decision of the Federal Executive Authority on Intellectual Property on the refusal of granting the patent for the invention, the utility model, or on the recognition of the application for the invention, the utility model as withdrawn may be disputed by the applicant by filing an objection to the said Federal Executive Authority within seven months from the date of sending by it to the applicant the correspondent decision or the copies of the materials requested in the said Federal Executive Authority, which are opposed to the application and indicated in the decision on the refusal of granting the patent, provided that the applicant has requested the copies of these materials within three months from the date of sending the decision made regarding the application for the invention or the utility model.
In today’s world, everyone strives to defend his development and to gain profit from it. One of the ways to defend the own developments is a patent. However, many inventors make a large number of mistakes, while patenting, and many of these mistakes cannot be corrected. Below, we shall consider the common mistakes made by the authors, while developing various solutions.
Probably, the most common problem of the inventors is ignorance of the law, the lack of understanding of the elementary, basic things, and the gross mistakes related thereto. Let us enumerate some of these mistakes:
“I want to get a patent of the Russian Federation, and it is also enough to carry out a search only over the Russian patents, there is no need to carry out the search over the world databases” – unfortunately, in order to get the patent, it is necessary for the proposed solution to comply with the established criteria for patentability. In accordance with Article 1350 of the Civil Code of the Russian Federation, the state of the art includes any information that has become known in the world before a priority date of the invention. This measure has been introduced for different objectives. One of these objectives is to exclude various fraudulent activities. For example, you saw an interesting solution in another country and decided that it would bring you profit, and in the case, if the check had been carried out only on the territory of Russia, then you, in fact, would have appropriated other person’s solution, while not being its author.
“I want to get a patent, therefore, the materials of scientific articles, popular reviews, blogs, YouTube videos, etc. cannot be opposed to me” or “How dare they oppose the document published in 1938 to me? We live in the 21st century!” – and again we return to Article 1350 of the Civil Code of the Russian Federation. The information that is opposed by the examiner, when considering the application, can be any, the main requirement is that it should be publicly available. The publicly available information will not include specifications, project documentation, i.e. the documents, which access is restricted for one reason or another.
“This invention is mine, but the application has been filed by some stranger. Well, what of the fact that I have blurted out everything to him?” or “Well, what of the fact that I have told all about my invention myself before filing the application? Can the examination really oppose my own words to me?” – Yes, it can. In this case, the author of the invention has only 6 months from the date of the publication of the information in order to file the application for the invention. It is no longer possible to obtain the patent after the said period. It is also established by the law that the burden of proving the existence of the circumstance due to which the disclosure of the information does not hinder the patentability of the invention lies with the applicant. Thus, the legislation fully shifts the responsibility to the author for the disclosure of the information about his decision.
“I have obtained the patent of the Russian Federation, so, now no one in the rest of the world can use my invention without my permission” – alas, but this is also one of the misconceptions. The patent is, in its essence, the right of monopoly and it is in effect on a certain territory, namely, only on the territory of the country, where the patent is issued. It is also necessary to take into account the fact that depending on a particular country, the defense as the patent is granted to different solutions. This statement will be true in part for the right to be called the author of some solution, i.e. if you have come up with this solution, then you do not need to prove it in every country of the world.
“The invention, do you say? Oh, Yes, this is also the copyright” or “The patent is a kind of a scientific publication. I obtained it, I put it in an annual report – and I pinned it to the wall.” The authors sometimes pursue exactly this goal, while obtaining the patent. But the purpose of the patent is not just the publication of your labour. The patent is a protection document certifying the exclusive right, the authorship and a priority of the invention.
“I have obtained the patent for the invention, so it is certainly in demand at the market” – No, the Patent Office does not carry out an analyze of the market prospects, this is not the responsibility of the Office. That is, the availability of the patent does not yet give you the grounds to say that this solution will be interesting to people and companies at all.
“I have the wonderful invention, it is really in demand at the market, I already have the first sales. Hence, if the invention is cool, then the patent is automatically cool” – No, the quality of the invention is not comparable with its legal force, and therefore, with the commercial quality of the patent. The invention can be genius, but the patent can be written so badly that it turns into an empty piece of paper that has no value. Such patent can be easily “bypassed,” as soon as the sales reach the level that is interesting for the competitors.
“The patent is obtained, so I am with it as safe as houses” – No, a large number of patents are canceled every year – for the lack of a novelty, for the lack of an industrial applicability, etc. You are with it “as safe as houses” till your patent is hanging on the wall and no one needs it. As soon as you try to sell it and find a buyer, your patent will be subjected to the closest study, and the result may be unexpected for you. Only that thing is bought, which is impossible to be stolen.
“If others have not registered this invention, then the patent is ours!” – the Russian legislation lodges a lot of requirements to the invention. In addition to the main criterion – the novelty, Rospatent analyzes it for an inventive step. That is, the invention should not be obvious to the one skilled in the art. There are many examples, when the technical solution lacks the inventive step. For example, it is only the minor modification of the existing technology, which is obvious to the specialist. Another variant is when two patented technologies are combined into one. For example, if one part of the invention includes all the features of one patent and the other part includes all the features of another, then the Patent Office may declare that the “invention” does not correspond to the inventive step.
The above examples are only a small part of how the authors can make mistakes and be under a delusion, while trying to patent their development. Dear authors and inventors, do not make these mistakes, be smarter, and before committing any actions in the field of patenting, do address to the specialists for competent and qualified help.
In accordance with Article 1361 of the Civil Code of the Russian Federation, “The prior use right to an invention, utility model or industrial design,”
1. A person, who, before the priority date of an invention, utility model or industrial design (Articles 1381 and 1382), has used in good faith on the territory of the Russian Federation an identical solution created independently of the author or the solution that is different from the invention only with the equivalent features (Paragraph 3 of Article 1358), or who has made the necessary preparations for this, shall retain the right to the further gratuitous use of the identical solution without expanding the scope of such use (a prior use right).
2. The prior use right can be transferred to another person only together with the enterprise, where the use of the identical solution has taken place or the necessary preparations for this have been made.
As it follows from the above Article, the effect of the prior use right implies the availability of the following conditions:
- the good faith use of the identical solution (or the good faith necessary preparations for such use) on the territory of Russia before the priority date of the invention, utility model or industrial design;
- the creation of the identical solution that is independent of the author of the invention, utility model or industrial design;
- the non-expansion of the scope of the use of the identical solution.
Thus, the prior use right can be qualified as the case of the free (gratuitous) use of the invention, utility model or industrial design created in parallel (i.e., one’s own, but not someone else’s).
The prior use right is a subjective civil right that has an individual character and operates within the territory of Russia.
Paragraph 2 of the Article stipulates the only way of transferring the prior use right to another person: only together with the enterprise, where the use of the identical solution has taken place or the necessary preparations for this have been made.This means that the prior use right as a part of the enterprise shall not be allowed, a transaction in relation to the enterprise as a whole is necessary, and an independent transfer of this right being separate from this enterprise is not allowed as well.
Here are the examples of how the prior use right is considered by courts.
Example 1. Some Limited Liability Company filed a statement of claim to the Arbitration Court against some company on stopping the use of the utility model in its manufacture activities.
Satisfying the claim, the Court proceeded from the fact that the plaintiff had been granted a patent for the utility model. The defendant had violated the plaintiff’s exclusive rights to its use, because while manufacturing its products, it was using every feature presented in the independent claims of the utility model.
The Court of Appeal, while upholding the decision of the first-instance court, rejected the defendant’s arguments that before the priority date of the utility model, the defendant had created an identical solution independently of the plaintiff and retained the right to its further gratuitous use without expanding the scope.
At the same time, the Court of Appeal pointed out to the fact that the person’s availability of the prior use right was to be established through the legal proceedings. The defendant did not file to the court the correspondent claims, it did not file a counterclaim on the recognition of the prior use right, therefore, it did not prove according to the procedure established by the law the fact of the recognition for itself the prior use right within a particular scope.
The Court of Cassation canceled the adopted judicial acts and sent the case for a new consideration under the following grounds.
As it is known from the patent law norms, the exclusive right to the utility model belongs to the patent holder. No one shall be entitled to use the patented utility model without the permission of the patent holder, including to import into the territory of the Russian Federation, to manufacture, to use, to offer for sale, to sale or to introduce in other way into the civil circulation, or to store for these purposes the product, in which the patented utility model is used, except in the cases, if such actions are not the violation of the exclusive right of the patent holder.
Any person, who, prior to the priority date of the utility model, has used in good faith on the territory of the Russian Federation the identical solution created independently of its author or has made the necessary preparations for this, shall retain the right to its further gratuitous use without expanding the scope of such use.
The disputes on the violation of the exclusive right to the utility model and on the prior use right shall be considered in court.
In addition, the courts had not investigated the issue on the prior use right and the scopes of its use by the defendant. In this regard, the Court of Cassation canceled the decision of the first-instance court and the resolution of the Court of Appeal, and sent the case to the first-instance court for a new consideration.
Here is another example.
Example 2. If there are two patents for the utility model with the same features that are presented in the independent claim, before the patent with the later priority date is recognized as invalid according to the established procedure, the actions of the holder of this patent regarding its use cannot be considered as the violation of the patent with the earlier priority date.
Some Limited Liability Company filed a statement of claim to the Arbitration Court against some individual entrepreneur on stopping the violation of the exclusive rights to the utility model. To justify the claims, the plaintiff pointed out to the use by the defendant, while manufacturing his products, the utility model, which patent holder was the plaintiff. The defendant did not recognize the statement of claim explaining that he was also the holder of the patent for the utility model, and he was using that particular utility model, while manufacturing his products. The individual entrepreneur referred to the use by him in the manufactured products of the technical solution that was different from the plaintiff’s one.
The Court satisfied the claim under the following grounds. The plaintiff had the exclusive rights to the utility model with the earlier priority date than the defendant had. The patented utility model shall be recognized as used in a product or method, if the product comprises and the method uses every feature of the utility model presented in the independent claim of the utility model and that has become known as such in this art.
According to the examiner’s opinion based on the results of carrying out a patent examination appointed by the Court, every feature of the independent claim of the plaintiff’s utility model was used in the product manufactured by the defendant. An agreement on the transfer of the exclusive rights to the use of the utility model had not been concluded between the patent holder and the defendant. In such circumstances, the defendant’s actions for the use of the plaintiff’s utility model were the violation of the patent. The Court of Cassation canceled the decision of the first-instance court and dismissed the statement of claim pointing out to the following.
The first-instance court did not take into account the fact that both the plaintiff and the defendant had registered the right to the corresponding utility models. According to the examiner’s opinion, the defendant had used every feature of the independent claim of the plaintiff’s utility model in the manufactured product, however, at the same time, he was the holder of the rights to the utility model with the same features of the independent claim.
As it is known from the patent law norms, if there are several protection documents for the utility model with the same features presented in the independent claim, the issue on the recognition of any of these patents as invalid is referred to the competence of the Chamber for Patent Disputes. In the case that one of the patents is recognized as invalid, the holder of the rights to another patent shall be entitled to address again to the court for the defense of his rights, including by the way of damages for the entire period of the use of his patent, taking into account the fact that the recognition of the patent as invalid means the absence of the legal protection of such patent from the moment of filing an application for the grant of the patent to the Federal Service for Intellectual Property, Patents and Trademarks (hereinafter referred to as Rospatent).
If there are two patents for the utility model with the same features presented in the independent claim, before the patent with the later priority date is recognized as invalid according to the established procedure, the actions of the holder of this patent regarding its use cannot be considered as the violation of the patent with the earlier priority date.
Many inventors, when creating their invention, utility model, industrial design, often take in full some technical solution already defended by a patent as the closest analogue; they modify it by adding one or more features, and they do not think whether this may be done and what is involved by such actions, and sometimes, they are not even aware of the possible consequences for themselves.
Let us turn to the legislation and find out what it says about this. So, according to Article 1358.1:
1. The invention, the utility model, or the industrial design, whose use in a product or a method is impossible without the use of another invention, utility model or another industrial design protected by the patent and having an earlier priority, shall be respectively a dependent invention, a dependent utility model or a dependent industrial design.
The dependent invention, in particular, is the invention that is protected by using it according to a particular purpose of the product, in which another invention protected by the patent and having the earlier priority is used.
The invention or the utility model relating to the product or the method is also dependent, if the difference between the claims of such invention or utility model and the claims of another patented invention or another patented utility model having the earlier priority is only in the purpose of the product or the method.
2. The invention, the utility model or the industrial design may not be used without a permission of the holder of the patent to another invention, another utility model or other industrial design in relation to which they are dependent.
Before the entry of the said Article into force, the Russian legislation has contained only the norms on the dependent invention. The dependent invention has long been interpreted as the patentable invention improving, supplementing or modifying another protected invention. In the modern literature, the essence of the dependent invention is explained by the case, when, while using one patented invention, another patented invention or patented utility model is used “automatically.” Formally, “the law recognizes the patented invention to be the dependent one, if all its features given in the independent claim are used, while using the patented another invention or utility model.”
Thus, the traditional understanding of the dependent invention shall be the following: the dependent invention contains every one of the features of the basic invention, but it also always contains the additional features that are not contained in the basic invention, but which allow speaking about a novelty of the dependent invention (for example, if a mug is the dependent invention in relation to a glass, which is the basic invention: the mug contains all the glass’s features, without which it cannot be used, but the mug’s handle appears as the additional very important feature).
The traditional understanding of the dependency is extended in the Article by means of the invention or the utility model for the application, i.e. for the application of the patented invention or utility model according to the new purpose. Since the dependent subject matter of the patent rights contains all the features of the basic subject matter, the use of the dependent subject matter will always violate the rights of the holder of the patent to the basic subject matter. Therefore, Paragraph 2 of the Article introduces a restriction on the use of the dependent subject matter of the patent rights - such use is allowed only with the permission of the holder of the patent to the basic subject matter of the patent rights. The permission of the holder of the basic patent means that he has granted a license to the use of the dependent subject matter. In relation to the dependent invention (and the invention solely), the possibility of claiming, under some certain conditions, the grant of the compulsory license is stipulated (Paragraph 2 of Article 1362 of the Civil Code of the Russian Federation). If the exclusive right to the basic subject matter of the patent rights has terminated, the use of the dependent subject matter shall be carried out without any permission.
This is what the dependent invention means in practice. Just imagine that there is the patent for some bicycle somewhere, and you have come up with the bicycle having handles on a handlebar, like a saucepan has, and you even have justified from the technical point of view what it was necessary for and what positive effect that device had. It is reasonable to assume that even if you manage to patent your bicycle with the “magic” handles, you will not be able to sell it without the permission of the holder of the patent to that “some bicycle.”
Let us give another example of the dependent patent: just assume there is the patent for some stool, and you have come up with a chair being the same stool, but not quite, and you have added a back to it; you have proved the importance and the need for that back, and finally, you have even obtained the patent. However, your chair without the stool is nothing, since there is the patent for the stool, and you do not have the right to sell your chair without a consent of the right holder of the patent to the stool. An example of such consent may be, in particular, concluding a license agreement. Otherwise, if you fail to conclude the license agreement intentionally, you may be claimed for the violation of the exclusive rights.
The need to conclude such agreement arises only in the case of the exclusive rights of the first patent (the patent has not expired, the fees for maintaining the patent in force have been paid), if the patent has terminated for any reasons, then the actions of this kind are not expedient. You can sell your product safely and not be afraid of the claims from third parties.
The paradox of the situation is that the dependence of the patent is not registered anywhere. The inventors often learn about it only in court.
However, there is still a way out; as a rule, for the newly created subject matters that are planned to be realized/sold, a patent search is carried out in order to ensure their patent purity.
The patent purity is a legal property of the subject matter of intellectual property, which means that it can be used freely in a particular country without a risk of violating the patents being in force on its territory that belong to third parties. The purpose of the search for the patent purity is to identify the features of the patented invention that have been used in the subject matter, despite the differences in other features.
Checking the patent purity should be an integral part of the general patent researches carried out both before and during the development of the particular product, and then you will more likely not violate someone's rights.
A patent attorney runs the cases with the Federal Executive Authority on Intellectual Property on behalf of the applicants, the right holders and other interested citizens and the legal entities residing permanently (for citizens) or having a location (for the legal entities) in the Russian Federation and abroad.
The patent attorney will help you to defend your intellectual property. Sometimes, due the fact that someone is not a specialist in a particular field of activity, the hardly correct solutions and mistakes can be made. Sometimes, a lot depends on the advice of the qualified specialist. The patent attorney is a qualified specialist in the field of intellectual property. To obtain such a status, a qualification examination is held, according to which results a decision is made by the Federal Executive Authority in the field of intellectual property on the grant of such a status, or on the refusal to grant such a status. The information on the patent attorney is entered in the State Register of Patent Attorneys, the patent attorney is assigned a registration number.
Let us consider the meaning of the patent attorney as applicable to inventions or utility models.
We shall note at once that no one the most remarkable applicant, the inventor having a wide experience of patenting, knows thoroughly the patent legislation to the extent that is known to the narrow specialist in the field, and especially how to apply it in practice.
Currently, there are a lot of people, who know how to read the legislation acts, but not many people can understand their interpretation and how to apply these normative documents in practice, for example, how to formalize correctly and competently an application for an invention, what to do, if a request for examination is received and how to get out of the situation, when the period for submitting a reply to the request is missed. These and other questions can be easily answered by the patent attorney.
The patent attorney is capable of identifying and formulating the essence of the invention according to the technical documentation provided by the developer of the invention.
He can carry out professionally a search for the analogues unknown to the inventor over the funds of the domestic and foreign patent documentation and over the scientific and technical literature, assess the patentability of the developed technical solution, that is, the chances of obtaining a patent even before filing the application for the invention with the Office. While carrying out the search, the most difficult thing is to identify and understand an object for the search.
In addition, the search is necessary in order to formalize competently the application materials, as one of the sections of the application is the section “Prior Art,” and this very section contains the identified analogues with the indication of their shortcomings.
Sometimes, after the search is carried out, it turns out that the invention created is not new, as it has long been created by someone. More often, the competent search allows understanding what is already available in the prior art in respect of the problem solved by the inventor, and what can be patented. According to the results of the search, it is necessary to separate the general features with the technical solutions known from the prior art and to identify the features, which differ your technical solution from the nearest analogues. The developer himself often is not capable of doing this and he needs the help of the patent specialists. In the case of the necessity of making amendments, supplements into the application materials just after filing the application, one should understand that after filing the application, it is not allowed supplementing it with the data changing its essence.
After the search is carried out and the nearest analogue is selected, it is necessary to compose the claims. While performing this work, one should remember that it is just the claims that determine the scope of the exclusive right granted by the patent.
Therefore, it is especially important to be capable of composing the claims so that the totality of the features included in it will provide the maximum scope of the legal protection to the patented invention.
It is important for each feature of the claims to be necessary, and all together they should be sufficient to achieve the claimed technical result, because only in this case, the competitors, who would want to use the patented invention, will fail to ignore the patent by refusing from the use of at least one feature of the claims.
The ability to compose the claims, as well as carrying out the patent search competently requires high skill. The cost of the patent depends largely on how the claims are composed.
In this regard, Former President of the Austrian Patent Office, Dr. Otmar Rafeiner, speaking at the seminars in Russia on the topic “Filing an Application for an Invention” noted that there were two very different indicators of the patenting process:
— the quality of the patent,
— the quality of the invention.
The quality of the patent and the quality of the invention may be at the same level, and they may differ substantively.
The quality of the patent granted is largely determined by the quality of the description to the patent and the quality of the claims. There may be the cases, when the high-class invention is protected by the weak patent, with the poor quality of the description and the inaccurate formulations. This circumstance undoubtedly influences negatively on the fate of the invention and the patent — it can be ignored. In this case, its cost will be small.
The description composed skillfully, on the one hand, complies with the requirements of the legislation. The description of the invention must be composed so fully and clearly that it is possible to implement the invention using it, and it must contain only precise formulations.
On the other hand, the description does not give anything superfluous — anything that will do damage to the commercial interests of the patent holder.
If you need to find a happy medium between the quality of the patent and the quality of the invention, turn for help to the qualified specialists, the patent attorneys, and you will certainly never regret it.
The patented inventions have penetrated, in fact, in all spheres of the human life – from electric lighting (the patents hold by Edison and Swan) and plastics (the patents hold by Baekeland) to ballpoint pens (the patents hold by Biro) and microprocessors (the patents hold, for example, by Intel company).
The inventors and even the companies that use their own inventions in their work often do not think about the fact that they can and should be patented. This is because the inventors do not see any use in obtaining a patent. However, there is the use, and it is very significant. It manifests itself in the following:
After receiving a decision on granting a patent, the payment of the relevant fees for the grant of the patent and its registration with the State Register of the Inventions of the Russian Federation, the right holder, which can be both a legal entity, an individual, and a group of legal entities and individuals jointly, obtains an exclusive right to this technical solution. That means that at the end of the registration procedure, the inventor becomes a holder, and his invention becomes property.
Thus, after the end of the registration of the patent and its entry into the State Register, the utility model or the invention can act as a commodity.
The registered invention can be sold, donated, transferred for a temporary use for a certain number of years (at your discretion and according to your wishes).
If the state body represented by the patent office issues the patent and registers the invention, which is hold by the enterprise, it increases its intangible assets, what can attract additional investments.
In addition, the property right and the right of the use for the utility model or the invention is a type of contribution to the charter capital of the enterprise.
The availability of the patented technical solutions in the asset of the enterprise increases its business reputation.
The business partners, investors, clients perceive the availability of a multiple of the patents hold by you as the proof of a high level of the competence, specialization and technical capabilities of the company. This can be useful for involving the funds, searching partners, enhancing the image and the market value of your company. Some enterprises mention or specify their patents in advertising in order to create and bring to the attention of the most general public the image of your company as an innovative enterprise.
Thus, patenting the invention makes it possible to gain profit legally. In the case of the use of the invention by third parties without permission, the sanctions stipulated by the law will be applied to them.
It is possible to prevent other persons from patenting the same invention by obtaining the patent protection, as well as to reduce the likelihood of violating other persons’ rights, while using your products for the commercial purposes.
While the patent itself does not give “a freedom of the use,” it prevents other persons from patenting the same or similar inventions and it confirms that the patented invention is new and that it differs significantly from the technical solutions known in the world.
It should also be noted that as soon as the knowledge becomes available to the general public, the very nature of the knowledge implies that it can be used by an unlimited number of people simultaneously. Though this is undoubtedly perfectly acceptable with regard to the general knowledge, however, it creates a dilemma in terms of the commercial use of the technical knowledge. If this kind of the knowledge is not protected, “lazybones” can use easily the technical knowledge inherent in the invention, without any recognition of the creative merits of the inventor or the contribution to the investments made by the inventor. As a consequence, the inventors understandably lose a desire to bring new inventions to the market, and they prefer to keep in secret their inventions having a commercial value. The patent system is designed to correct this lack of ensuring the innovation activities by granting the inventors the limited exclusive rights, thereby enabling the inventors to get the relevant income from their innovation activities.
In a broader sense, the public disclosure of the technical knowledge contained in the patent, along with the exclusive right granted by the patent, encourage the competitors to seek for the alternative solutions and to the further inventive activities based on the first invention. These incentives and disseminating the knowledge about the new inventions contribute to the further innovation activities, which ensure a continuous improvement in the human life quality and the society welfare.
Who are the patent trolls? Let us give them a definition. A patent troll is an individual or a legal entity specializing in lodging patent statements of claim.
The patent trolls prefer to call themselves the patent holdings or the patent dealers. Other names are also applied: a non-practicing entity, a non-manufacturing patentee or a non-manufacturing entity, a patent marketer, which are mainly applied to the patentees, who do not carry out independent manufacturing activities. In fact, these are the persons, who have received as many patents as possible in their names, while these patents are only on paper, they do not have their own manufacturing facilities, that is, those, who do not implement the patent, but lodge the claims actively against the companies that violate their rights.
The analysis of the patent dispute practice shows that it is possible to obtain a patent for a well-known technical solution, if one is familiar with a certain terminology and knows the subtleties and nuances of the procedure for considering a patent application that are related to an examiner's evaluation. At the same time, the feature inherent in the already well-known products or technology is made as the main distinguishing feature for some particular new “invention,” by veiling, masking it, that is, by using a different terminology, and in fact, stating the same. Such a way is the most efficient for obtaining a patent for a utility model, since the main criterion for patentability is only a “novelty” and even insignificant differences can be recognized by the office, the main thing is to describe them correctly, unlike an invention, when the specified difference can be recognized as being from the prior art and therefore not complying with the patentability criterion an “inventive level.” The risk of the said manipulations is minimal (the patent simply will not be obtained), the punishments for trying to patent the already known invention are not stipulated by the Russian legislation, and a possible income and longing for easy money motivate very much.
In Russia, the patent trolls began to appear actively in the late 1990s - the beginning of 2000s.
The first case of the patent trolling, which is known to a wide circle of persons in Russia, was patent of the RF No. 2139818 published in 1999 for the invention “Glass Vessel,” the description of which corresponds fully to a glass bottle. Kalinichenko S.V. and Toritsyn I.V. were indicated as the authors of the said invention, and LLC Technopolis was indicated as the patentee.
Here is a part of the description of this patent: “The object of the invention, according to the patent, is to create a glass vessel ensuring a structurally embedded shape and/or a structurally embedded change in its thickness to facilitate a disposal process and/or the use as a structural element.”
Further, I quote independent claim 1, which determines a scope of the rights: “A glass vessel containing in cross-section the boundaries of an outer and inner sides, characterized in that, at least at the boundary of the outer and/or inner side, a part of the boundary line of at least one of the cross-sections is made in the form of a fragment or a combination of the fragments of the oblique conical section of a right circular cone.”
Immediately after receiving the patent, LLC Technopolis began demanding from all companies that manufacture beer and soft drinks the conclusion of license agreements and the payment of remuneration for the use of the patented product in the amount of at least 0.5% of the revenue. Technopolis formally had the grounds for such payments: they owned the patent for the technical solution, which at that time was used without permission by all manufacturers of liquids in glass containers.
However, according to the decision of the Chamber for Patent Disputes made in 2000, the patent was canceled in full, and the corresponding entry about it was published in the Register of the Patents for Inventions of 20.04.2001.
The second, also well-known history of the patent trolling in the RF is connected with the patentee of patents of the RF Nos. 2448291, 74862, 74603 and 74602 with the common priority date of December 27, 2006 (the patent for an invention and three patents for utility models with the common name “Vehicle Shock Absorber”). The author, Oleg Tikhonenko, tried to get significant amounts in euros from foreign companies – the manufacturers of automobile shock absorbers. Among the infringers of the patent rights of O.Tikhonenko were: the Japanese company Kayaba, the German company ZF Trading and the American company Gates.
The patentee appealed to the departments for economic crimes in order to stop the sale of the counterfeit, to his mind, shock absorbers and he was a success: the warehouse of one of the suppliers was arrested. Despite the fact that, according to the experts, the shock absorbers’ device of O. Tikhonenko had been described previously in the patent of the USA, and the mathematical formula, with the help of which the patent of O. Tikhonenko described the action of his improved shock absorbers had been taken from the Soviet Technical Manual, the Board of the Chamber for Patent Disputes managed to cancel the patents of Tikhonenko only in November 2009. However, it is difficult to say how much money he managed to get during the validity period of the patents and by an illegal way.
In 2014, the utility model “Toothpick Stand,” patent No. 116032, was disputed in the Chamber for Patent Disputes. According to the decision of Rospatent of 21.10.2014, based on the results of the consideration of the Chamber for Patent Disputes, Patent of the Russian Federation for a utility model No. 116032 was invalidated in full. Patent for an invention No. 2500008 “Holder for the Label of the Dial of the Wall Clock” was also invalidated in full. The date of entry in the State Register is 01.03.2017. In fact, the issue is about the boxes covered with the lids. The right holder of both these patents and another more than 800 patents of the Russian Federation is Alexander Maksimov, who is currently litigating with the pharmacy chains all over Russia, which are allegedly using his inventions illegally.
The patent troll’ claims for money damages are often dismissed and, what is more important, the patent owned by him is cancelled. Currently, this practice is widely used and quite successfully.
Currently, the authorities of different countries, being aware of the danger arisen from the patent trolling, are developing actively the measures to oppose it. For example, in the course of one of the round-tables devoted to the creation of a single regulator in the field of intellectual property on the basis of Rospatent, it was announced that in order to fight against the patent trolling, the office will issue a set of the practical recommendations, which will be published, in particular, on the website of Rospatent.
As you can see, currently, there are no purely legal methods to fight against the patent trolling, and the only effective way to oppose the patent trolls is to obtain timely the patents for all own developments, in particular, for their components, or to identify their patentees and to conclude the appropriate agreements with them.
According to Article 1363 “The periods of the validity of the exclusive rights to an invention, a utility model, an industrial design” of Part 4 of the Civil Code of the Russian Federation.
The exclusive right to the invention, the utility model, the industrial design and the patent certifying this right shall be valid subject to the compliance with the requirements established by this Code from the date of filing an application for the grant of the patent with the Federal Executive Authority on Intellectual Property or in the case of dividing the application (Paragraph 4 of Article 1381) from the date of filing the initial application:
twenty years – for inventions;
ten years – for utility models;
five years – for industrial designs.
The defense of the exclusive right certified by the patent may be exercised only after the state registration of the invention, the utility model or the industrial design and the grant of the patent.
It is worth dwelling on the conditions for the compliance with the requirements under which the exclusive right operates.
The most important condition is the payment of the annual fees for maintaining the validity of the patent. If the fee for maintaining the validity of the patent is not paid, the patent shall terminate, but it should be clarified here that in the case of a delay in the payment of the fee within the established period, it can be paid within an additional 6-month period with an increase in the amount of the fees by 50%. If this condition is complied, the patent will continue to be valid.
What will happen, if the grace 6-month period is missed? The right holder has 3 years, during which he can restore his rights. If he does not use this right and he does not restore the patent within the above period, then this possibility will be exhausted and the patent will no longer be able to be restored, even if the total cumulative period of its validity, which is, for example, 20 years for the inventions, has not expired.
In this case, the exclusive right shall be terminated and the patent shall transfer to the public domain. What it is will be disclosed a little later.
And now, we shall consider the moment of the extension of the period of the exclusive right to the invention of some special products, namely, drugs, pesticides and agrochemicals, for which there is an exception to the rules.
So, if more than five years have passed from the date of filing the application for the grant of the patent for the invention related to such product as a drug, a pesticide or an agrochemical, the use of which requires obtaining a permission due to the order stipulated by the law, before the date of obtaining the first permission for the use, then the period of the validity of the exclusive right to the corresponding invention and the patent that certifies this right shall be extended at the request of the patent holder by the Federal Executive Authority on Intellectual Property.
The above period shall be extended for the period that have passed from the date of filing the application for the grant of the patent for the invention before the date of obtaining the first permission for the use of the product minus five years, but not more than for five years.
The application for the extension of the period is filed by the patent holder within the period of the validity of the patent before the expiration of six months from the date of obtaining the first permission for the use of the product or from the date of the grant of the patent, whichever of these periods expires later.
Some additional materials may be requested from the patent holder, if the application cannot be considered without them. The additional materials must be submitted within three months from the date of sending such a request. If the patent holder fails to submit the requested materials within this period, or if he fails to submit a request to extend the period, the application shall not be satisfied. The period established for submitting the additional materials may be extended by the Federal Executive Authority on Intellectual Property not more than for ten months.
When the period of the validity of the exclusive right based on unnumbered paragraph one of this paragraph, an additional patent shall be granted, which has the claims containing a combination of the features of the patented invention, which characterizes the product, for the use of which the permission is obtained.
According to Article 1364 “The transfer of the invention, the utility model or the industrial design to the public domain” of Part 4 of the Civil Code of the Russian Federation
Upon the termination of the exclusive right, the invention, the utility model or the industrial design shall transfer to the public domain.
The invention, the utility model or the industrial design that have transferred to the public domain may be used freely by any person without anyone's consent or permission and without the payment of remuneration for the use.
It should be noted that the invention, the utility model, the industrial design transfer to the public domain not only upon the expiration of the exclusive right to these subject matters, but also in the case of a death of the patent holder (if the patent holder is an individual), if the patent holder has no heirs, or none of the heirs has the right to inherit, or all heirs are suspended from the inheritance, or nobody from the heirs has accepted the inheritance, or all heirs have refused the inheritance and, at the same time, none of them has stated on refusing in favor of another heir, or in the case of the termination of the patent holder (if the patent holder is a legal entity), if the legal entity has not a successor.
The Paris Convention, which was adopted in 1883, deals with the issues of industrial property in the broadest sense of the word, including patents, trademarks, industrial designs, utility models, service marks, company names, geographical indications and commercial designations. This international treaty was the first step within the framework of the efforts aimed at assisting the authors to ensure the protection of their intellectual works in other countries. The member countries of the Convention form the Union for the protection of industrial property. There are 177 member states of the Convention.
The Convention was ratified by the USSR in 1968 with the proviso that the Article on the procedure for the resolution of the disputes on the interpretation and application of the Convention (the resolution of the disputes in the International Court of Justice) should not be applied to the USSR, and with the following statement: “the provisions of the Convention stipulating the extension of its effect by the Contracting Parties on the territory, for whose international relations they are responsible, are obsolete and contradict the Declaration of the UN General Assembly on the grant of independence to colonial peoples and countries.”
Let us consider the specifics of the subject matters of the protection.
According to the Convention, as it has been mentioned, the subject matters of the protection of industrial property shall be patents for inventions, utility models, industrial designs, trademarks, service marks, company names and indications of origin or names of the place of origin, as well as the suppression of unfair competition.
Industrial property is understood in the broadest sense and it covers not only industry and trade in the proper sense of the word, but also the fields of the agricultural industry and the mining industry and all products of industrial or natural origin.
The rights to the subject matters of industrial property, as well as the rights to the subject matters of the copyright and related rights, have exclusively a territorial character. With respect to the subject matters of industrial property, this means that these subjects are protected only on the territory of the state, in which the protection documents (the use of the subject matter of industrial property, which is unpatented in a particular country, is possible without restrictions and without a payment of remuneration) are obtained. The protection documents are usually patents, registration certificates, etc. The patent certifies the authorship to an invention, the exclusive right to an invention and other the subject matters of industrial property. The person using the invention, etc. without the patent holder’s consent shall be responsible for the violation of the patent.
In addition, the national legislation of different states imposes different requirements for the recognition of the technical solution as an invention and the grant of a patent (somewhere only novelty is required, somewhere utility, non-obviousness, etc. are also required).
Such properties of the subject matters of the protection of industrial property raise a problem of their protection abroad, what the Paris Convention is devoted to. This document is aimed at establishing common rules, while implementing foreign patenting.
The Convention did not create an international patent. It facilitated the process of patenting, which continues to remain national. The Convention establishes a national regime for the citizens of the Union countries with respect to the protection of industrial property (i.e., the own citizens and the foreigners shall become equal in the patent rights on the territory of this state). In addition, the Convention shall be applied not only to the citizens of the Union countries, but also to the persons, whose enterprises are located on the territory of the member countries of the Union.
The Convention establishes the rule of priority under the Paris Convention, which is as follows:
Any person, who has duly filed an application for a patent for an invention, a utility model, an industrial design or a trademark in one of the member countries of the Union shall enjoy the right of priority to file the application in other countries within 12 months for patents for inventions and utility models and within 6 months for industrial designs and trademarks. Each filing an application that has the effect of properly executed national filing an application in accordance with the national legislation of each country of the Union shall be recognized as a basis for the emergence of the right of priority. Properly executed national filing an application shall be understood as any filing that is sufficient to establish the date of filing the application in the correspondent country. Due to this, subsequent filing an application in one of the other member countries of the Union before the expiration of the indicated period cannot be recognized void, in particular, on the basis of another filing the application, the publication of the invention or its use, etc. Any person wishing to take advantage of priority on the basis of the previous application shall be obliged to file a declaration with the indication of the date of filing and the country, where it has been filed.
In the word-combination “priority under the Paris Convention,” the word-combination “under the Paris Convention” means a special case of establishing priority on the basis of Article 4 of the Paris Convention for the protection of industrial property of 1883. The term “priority” means in the general sense “primacy,” “the pre-emption right,” and in this case, it is the date, on which the novelty and the inventive step of the invention or other features of protectability of other subject matter of industrial property (a utility model, an industrial design, a trademark) is determined.
Priority under the Paris Convention is the most important rule (the norm of the substantive law), which is established by the Paris Convention. It consists in the following. The person, who is filing an application for a patent for an invention/utility model/industrial design or for the registration of a trademark shall be entitled to require the novelty, the inventive step or other features of protectability of the claimed subject matter to be determined on the date of the previous application filed by that person (or its successor) in another member country of the Paris Convention. At the same time, the period of the benefit for priority, i.e. the period of priority under the Paris Convention may not exceed 12 months for inventions and utility models and 6 months for industrial designs and trademarks.
The Convention establishes that the patents, the applications for which have been filed in different countries of the Convention by the citizens of its member countries are independent on the patents for the same invention obtained in other countries, which are the members or not the members of the Convention. This extremely important rule means:
the cancellation or termination of the effect of the patent for an invention in one country of the Convention shall not have any legal effect on the patents for the same invention obtained in other countries of the Convention;
the deadlines of the effect of the patents for the same invention obtained in different countries of the Convention shall not depend on each other;
the deadlines of the effect of the patents for the inventions in the countries of the Convention shall not depend on whether the rules on priority under the Paris Convention have been used while obtaining them.
The introduction of the rule of priority under the Paris Convention is explained by the fact that the principle that the patent shall be obtained by the person, who has first filed an application is usually applied with respect to the subject matters of industrial property. The Convention changes this rule with respect to those subject matters for which the patent has already been obtained in another member state of the Union.
In addition, the Convention also includes the rule of priority of exhibition, the purpose of which is to stimulate the demonstration of the inventions at exhibitions.
The rule of priority under the Paris Convention also implies that the member countries of the Union shall provide the temporary protection under their domestic legislation to the inventions, the utility models, the industrial designs as well as the trademarks for the products exhibited at the official or officially recognized international exhibitions organized on the territory of one of these countries. And if the right of priority is subsequently claimed, the effect of the exclusive right shall be calculated from the date of the placement of the relevant product at the exhibition. That is, in the case of exhibiting any new product, new industrial design or other subject matter at an international exhibition, the inventor enjoys the right of priority to obtain the protection document in other states, while filing an application for a patent. To prove the identity of the exhibited subject matter and the date of its placement at the exhibition, it is necessary to submit the confirming documents, while filing an application.
The provisions of the Paris Convention were reflected in the norms of Part 4 of the Civil Code of the Russian Federation, and it also served as a starting point for deepening the international cooperation in the field of the protection of industrial property.
This article will focus on obtaining a patent by a Russian individual or legal entity for an invention, a utility model abroad. Patenting abroad is obtaining a patent for an invention, a utility model abroad, for which an application has already been filed or a patent has been obtained in the own country or an applicant’s country, i.e. the Russian Federation. The availability of such institution is due to the fact that currently there is no international worldwide unified patent that provides the exclusive right to a patented technical solution all over the world simultaneously. According to a general rule, the patent is in effect only on the territory of the country, where it is granted (the exception are the regional patents that are in effect on the territories of the member countries to the relevant international treaties, for example, a Eurasian patent within the member countries to the Eurasian Patent Convention or a European patent within the member countries to the European Patent Convention). While carrying out patenting abroad, the process of patenting in each state begins again and it is regulated by the national legislation. To obtain a patent in a foreign state, it is necessary to file an application with the patent office of this state in accordance with its national legislation.
Patenting inventions abroad is carried out first of all to ensure the economic interests of the applicant/right holder abroad, for example, in the countries of the intended export, the possible location of the manufacture, as well as to defend the inventions exhibited at international exhibitions, etc.
Patenting an invention in the foreign state, as a rule, takes place after filing an application with the national office. According to Article 1395 of the Code of the Russian Federation, the application for the grant of a patent for the invention or the utility model created in the Russian Federation, may be filed in a foreign state or to an international organization after six months from the date of filing the corresponding application with the Federal Executive Authority on Intellectual Property, if the applicant is not notified within the indicated period that the application contains the information constituting a state secret. The application for an invention or a utility model may be filed earlier than the indicated period, but after carrying out, at the request of the applicant, a check for the availability in the application of the information constituting a state secret. The procedure for carrying out such check shall be established by the Government of the Russian Federation.
In addition, patenting under the Patent Cooperation Treaty or the Eurasian Patent Convention the invention or the utility model created in the Russian Federation is allowed without prior filing the correspondent application with the Federal Executive Authority on Intellectual Property, if the application under the Patent Cooperation Treaty (an international application), is filed with the Federal Executive Authority on Intellectual Property as a receiving office and the Russian Federation is indicated in it as the state, in which the applicant intends to obtain a patent and the Eurasian application is filed through the Federal Executive Authority on Intellectual Property.
Executing the application to obtain a patent abroad is a complex process. Applicants often turn to patent attorneys – the professionals, who carry out filing an application to obtain a patent.
It is necessary to note that when obtaining a patent in a foreign state, the rule of priority established by the Paris Convention for the Protection of Industrial Property of 1883 should be observed.
The Convention establishes the rule of priority under the Paris Convention, which is as follows:
Any person, who has duly filed an application for a patent for an invention, a utility model, an industrial design or a trademark in one of the member countries shall enjoy the right of priority to file the application in other countries within 12 months for patents for inventions and utility models and within 6 months for industrial designs and trademarks. Each filing an application that has the effect of properly executed national filing an application in accordance with the national legislation of each country shall be recognized as a basis for the emergence of the right of priority. Properly executed national filing an application shall be understood as any filing that is sufficient to establish the date of filing the application in the correspondent country. Due to this, subsequent filing an application in one of the other member countries before the expiration of the indicated period can not be recognized void, in particular, on the basis of another filing an application, the publication of the invention or its use, etc. Any person wishing to take advantage of priority on the basis of the previous application is obliged to file a declaration with the indication of the date of filing and the country, where it has been filed.
Thus, the rule of priority under the Paris Convention consists in that when two applications for the same invention are filed simultaneously, the applicant, who has first filed the application with his national office, shall enjoy priority.
The establishment of the rule of priority is explained by the fact that the principle that the patent shall be obtained by the person, who has first filed an application is usually applied with respect to the subject matters of industrial property. The Convention changes this rule with respect to those subject matters for which the patent has already been obtained in another member state.
The Convention also includes the rule of priority of exhibition, which implies that the member countries shall provide priority protection of the patentable inventions, the utility models, the industrial designs as well as the trademarks for the products exhibited at the official or officially recognized international exhibitions organized on the territory of one of these countries. In this case, when filing an application for a patent next time, the period of the right of priority shall be calculated since the date of placing the product at the exhibition. That is, in case of exhibiting any new product, new industrial design or other subject matter at an international exhibition, the inventor enjoys the right of priority to obtain a protection document in other states. To prove the identity of the exhibited subject matter and the date of its placement at the exhibition, the necessary documents may be requested.
There is a possibility of obtaining a patent in a foreign country in accordance with the international treaties in the field of intellectual property.
The norms on an international application and an international search are contained in the Patent Cooperation Treaty of 1970. (The Washington Treaty or the PCT). The Russian Federation is a member to this Treaty. Currently, the member countries of the above said Treaty are 152 countries. Consequently, the applicant has an opportunity to file an application and to obtain a patent in any of these countries.
The application is called “international” because the applicant indicates in it the states, where he wants to obtain protection of his invention (patent). The international application must contain a declaration, a description of the invention, one or more claims of the claims, one or more drawings (if necessary) and an abstract.
Any international application that complies with the requirements enumerated in the Treaty and in respect of which the date of international filing is established shall have the effect of properly executed national filing an application in each indicated state since the date of international filing, which shall be considered as the date of actual filing in each indicated state.
The international application shall be filed with the national patent office of the member state to the Treaty, which shall transfer it to the office entitled to an international search and one copy shall be transferred to the International Bureau of the WIPO for registration.
The international search according to the PCT Treaty shall be carried out in respect of each international application. The purpose of the international search is to identify the appropriate state of art, the definition of the novelty and inventive step of the scientific and technical achievement. The international search is carried out on the basis of the claims taking into account the description of the invention and the drawings (if any). Not all patent offices enjoy the right to carry out an international search. We shall not enumerate all the offices and organizations that are authorized to act as an international searching authority, but we shall only note that the Russian patent office is such one. The international search facilitates in future carrying out an examination in the national offices of the countries, where the application for a patent is being filed to.
The results of the consideration of the application in the form of an international search report and a written communication from the international searching authority shall be forwarded to the applicant and the International Bureau of the WIPO. The application and the search report shall be sent then to the states, where the patent is sought. The further procedure for obtaining a patent shall be determined by the national legislation.
The PCT Treaty has not created an international patent; it only allowed filing one international application instead of a plurality of ones to different countries. The result of filing an international application is obtaining an individual patent in each country indicated in the application. The rights of a patent holder in each state are determined by the national legislation, according to which the applicant must file (transfer) his application to the selected foreign national office within 30-31 months from the date of filing the first application. The above said period depends on a particular country. It should be noted specially that the applicant himself does not have the right to file an application directly to the foreign state, which is of interest to him, but he must use the services of a patent attorney, who is authorized to run business with foreign applicants. Zuykov and Partners provides a whole range of the services for filing applications and maintaining the paperwork around the world, and the company will always be happy to help you to obtain a patent in the country, which is of interest to you.
In the modern world, more and more companies – the manufacturers of products or services – face competitors in the market, and they are searching for different ways to eliminate them.
Today, the companies can increase their competitiveness in a variety of ways by devoting their time and resources to an important part of the business – protecting their intellectual property (IP).
The IP assets are of great value to the companies, as well as the reasons due to which they should be managed within the framework of a business strategy. For example, this can help to promote the company to a leading position in business or trade.
Many violators will seek to find out quickly how seriously their so-called potential victims are defending their rights. Defending its rights in an insistent and relentless manner, the company increases its chances that the alleged competitor, violator will decide to search for an easier target elsewhere.
In many situations, the ownership of the intellectual property rights and a threat of a statement of claim for the violation of the rights may be sufficient to deter the violators or even to bring the company to a competitive position.
The short product life cycles and increasing competition have a huge impact on enterprises forcing them to embark on an innovative path of development and to seek access to the innovations of other enterprises in order to maintain competitiveness in the domestic and foreign markets.
The exclusive rights granted by a patent can be critical to the prosperity of innovative enterprises in an energy-intensive, risky and dynamically developing business environment.
What are the advantages of patenting inventions, obtaining patents and how will their availability help in the fight against competitors?
Firstly, the availability of the patent contributes to strengthening the company's position in the market and the competitive advantages. The patent holder owns the exclusive right to the use of an invention. The patent holder may dispose of the exclusive right to an invention. The use of an invention shall be considered in particular the following: importing into the territory of the Russian Federation, manufacturing, applying, offering for sale, selling, another introduction into the civil law circulation or storage for such purposes of the product, in which the invention is used.
Thus, the patent gives the patent holder the exclusive right to prevent other persons from using the patented invention for commercial purposes or to suspend such use, what reduces uncertainty, a risk and a competition on behalf of those involved in the illegal use of the patented products.
If your company has obtained a permission to use the patented invention of high value, by using it, it can create an obstacle for its competitors planning to enter the market with the same invention. This will help you to occupy a dominate position in the relevant segment of the market.
Secondly, the patent allows gaining higher profits or income from investments. If your company has spent a considerable amount of time and money to conduct research and development, the patent protection of the created inventions will help to reimburse such costs and to obtain higher income from the investments.
Thirdly, having a patent will provide you with additional revenue from a license activity or alienation (sale) of the patent. As a patent holder, you may issue licenses for the inventions to other persons in exchange for a lump sum payment and/or license fees (royalties), what is a source of additional revenue for the company. The sale (or alienation) of the patent means a transfer of the exclusive right to the invention in full, whereas licensing means only granting a permit to the use of the invention under the terms specified in the license agreement.
Fourthly, the patents obtained in different countries, namely, of the intended export, will give you access to new markets. Licensing these patents to other companies may give you access to the new markets that are otherwise unavailable.
It is also possible to prevent other persons from patenting the same invention by obtaining patent protection, as well as to reduce the likelihood of violating other persons’ rights while using your products for commercial purposes. While the patent itself does not give “a freedom of the use,” it prevents other persons from patenting the same or similar inventions and confirms that the patented invention is new and it differs significantly from “the prior art.”
In order to defend effectively the exclusive right granted by the patent, it may sometimes become necessary to get into judicial proceedings or to bring the information about your patents to the persons, who violate the patent rights owned by you. Having a patent enhances greatly your ability to handle successfully the judicial proceedings against the persons, who in any way violate the rights to the patented invention.
Finally, if you have a large number of patents, then your business partners, investors, clients perceive their availability as evidence of a high level of the competence, specialization and technical capabilities of the company. This can be useful for involving funds, searching for partners, enhancing the image and market value of your company, what is also a means of fighting against a competitor. Some enterprises mention or specify their patents in advertising in order to create and bring to the attention of the most general public the image of the company as an innovative enterprise. And many competitors may simply be intimidated by such information and they will decide to keep away from you.
Thus, the availability of the exclusive rights to the manufacture of a certain product, the ability to regulate this product circulation in the market, increasing the advertising opportunities and expanding the opportunities of the promotion give the patent holder significant competitive advantages. On the other hand, the patents can be used to restrict the scope of the competitors' activities by closing a part of their manufacture activities. This is achieved by patenting other technical solutions in this field in the required scope. In this case, we can talk about the use of patents as a competitive weapon. Recently, this property of patents has been used increasingly.
The representatives of various companies or inventors very often turn to our company and provide the descriptions of their ideas, which are not implemented as particular technical solutions, with a request to help them to get a patent or, if this is not possible, to defend their ideas in any possible way, especially this refers to the frameworks of an enterprise/organization.
As you know, the idea that is not implemented in a particular technical solution can not be patented as an invention, utility model or industrial design, therefore in such cases we tell our clients about the impossibility of patenting their ideas.
However, the employees of enterprises or the inventors do not stop after getting a refusal and continue to insist on getting the possible proposals from us to protect their ideas, which are set out on paper, but they can not be realized due to various circumstances.
Some clients are interested in the following question: Can the information be defended, in particular, the documentation describing the technical solution that is not implemented, such as know-how? Let us try to answer this question. To do so, let us turn to the legislation.
In accordance with Article 1465 of Part 4 of the Civil Code of the Russian Federation
1. Know-how is a manufacturing secret, which is recognized as the information of any nature (manufacturing, technical, economic, organizational and others) about the results of the intellectual activity in a scientific and technical field and about the methods of carrying out the professional activity that has a real or potential commercial value due to the fact that it is unknown to third parties, if the third parties have not a free access to this information on the legal grounds, and the holder of such information undertakes the reasonable measures aimed at keeping its confidentiality, including by introducing a commercial secret regime.
2. The information, which is subject to be disclosed obligatory or a restriction of the access to which is not allowed in accordance with the law or other legal act, can not be recognized as a manufacturing secret.
In accordance with Article 1466 of Part 4 of the Civil Code of the Russian Federation
1. The holder of the manufacturing secret has an exclusive right to use it in accordance with Article 1229 of this Code in any manner, which does not contradict to the law (an exclusive right to the manufacturing secret), including in the case of manufacturing articles and implementing economic and organizational solutions. The holder of the manufacturing secret may dispose of the said exclusive right.
2. The person who has become a holder of the information constituting a protected manufacturing secret in good faith and independently from other holders of the manufacturing secret shall acquire an independent exclusive right to this manufacturing secret.
In accordance with Article 1467 of Part 4 of the Civil Code of the Russian Federation
The exclusive right to the manufacturing secret shall be in effect as long as the confidentiality of the information constituting its content is kept. The exclusive right to the manufacturing secret shall be terminated for all right holders since the moment the correspondent information ceases to be confidential.
Thus, know-how allows its holder to gain advantages in the market (a commercial benefit), due to the fact that the information is unknown and inaccessible to the third parties.
Such information is a valuable asset of the organization, which has an impact on its competitiveness in the market. Disclosing such information can cost the company a lot of money or even results in the loss of the entire business.
In this connection, it is very important to take timely the measures to keep its confidentiality.
How can one defend one’s know-how?
Currently, the most effective method and the most widely used one is the introduction of a commercial secret regime in the enterprise/company.
A commercial secret is a special regime of confidentiality of the information (know-how), which implies undertaking the following measures by its holder:
1. determining the list of the information constituting the commercial secret;
2. restricting an access to this information;
3. registering the persons, who have an access to this information;
4. including the relevant duties on keeping the commercial secret into the job agreements with the employees and the economic agreements with the partners and clients;
5. placing a mark “commercial secret” with the indication of its holder on the documents, other media (including flash-drives, disks, etc.).
Thus, in order to defend the company's know-how, it is necessary to adopt a Provision on a Commercial Secret, in which you must indicate the information, which has a restricted access, as well as a procedure for an admission to the confidential information and handling it.
In order to protect one’s know-how, it is important to formalize competently the documents with the employees and counterparties, to organize a document circulation of the information constituting know-how, in particular to conclude a Confidentiality Agreement with the employees and with the legal entities/counterparties, with whom you plan to share the secret information.
Thus, for example, the employees should sign an order on non-disclosure of the information; and also, the corresponding duties (on observing the commercial secret) should be included in the job agreements. Each employee must be acquainted with the Provision on a Commercial Secret against signature.
It is also necessary to appoint an employee (employees) responsible for keeping records of the persons, who are admitted to the confidential information. The whole know-how information must be documented and kept separately from other information and documents of the company.
In case of disclosure of the commercial secret, disciplinary sanctions may be applied to the employee, in particular, the dismissal according to Subparagraph в of Paragraph 6 of Part 1 of Article 81 of the Labour Code of the Russian Federation. In addition, the employee, who has disclosed know-how, is subject to bear full material responsibility (Article 243 of the Labour Code of the Russian Federation).
As to the legal entities, the similar Confidentiality Agreement shall also be signed with them, by analogy with the one that our company signed with you, when you had sent us the information about your technical solution (idea).
Such agreement should be concluded even at the stage of the negotiations, since involving the counterparties is often carried out by providing the information about the product, which, in one way or another, includes the confidential information.
Thus, the main purpose of the Confidentiality Agreement is to defend the confidential information of the parties, which they share with each other during the negotiations, transactions and the fulfillment of the obligations.
Further, if any agreements are concluded with the counterparties, they shall also include the conditions on non-disclosure of the confidential information, as well as the responsibility in case of disclosing it.
Based on the above, it can be concluded that the defence of the technical solutions that are not implemented and set out on paper, which contain the information about the design features, manufacturing technology, any documentation relating to this solution or other information in the capacity of know-how is possible and it is an alternative to patenting. At the same time, it should be noted that a patenting procedure involves disclosing the essence of the solution with its further publication and providing the information about the technical solution to an unlimited range of persons, what contradicts the nature of know-how.
Every day more and more different technical solutions such as inventions, utility models and industrial designs are created under a state or municipal contract, for which reason a number of questions arises, for example, what rights are and whom they belong to in this case, what the author can expect – he is the very worker of the created invention, utility model, or industrial design?
In order to find the answers to the questions set forth, let us turn to the legislation and find out what Article 1373 of the Civil Code of the Russian Federation says to us in this respect.
So, according to the said Article:
1. The right to obtain a patent and an exclusive right to an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs shall belong to the organization carrying out the state or municipal contract (a contractor), unless the state or municipal contract stipulates that this right belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity on behalf of which the state or municipal customer is acting, or to the contractor and the Russian Federation jointly, to the contractor and a subject of the Russian Federation, or to the contractor and a municipal entity.
2. If, in accordance with a state or municipal contract, the right to obtain a patent and an exclusive right to an invention, utility model or industrial design belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity, then the state or municipal customer may file an application for issuing the patent within six months from the date of the notification by him/it in a written form of the contractor on obtaining the intellectual activity result that is capable of being entitled to the legal protection as an invention, utility model or industrial design. If within the said period, the state or municipal customer fails to file the application, the right to obtain the patent shall belong to the contractor.
3. If the right to obtain a patent and an exclusive right to an invention, utility model or industrial design on the basis of a state or municipal contract belongs to the Russian Federation, a subject of the Russian Federation or a municipal entity, the contractor shall be obliged, by way of concluding the appropriate agreements with the own employees and third parties, to obtain all rights or to ensure their obtaining for transferring, correspondingly, to the Russian Federation, the subject of the Russian Federation and the municipal entity. In this case, the contractor shall be entitled to reimbursement of the expenses incurred by him/it in connection with the acquisition of the relevant rights from the third parties.
4. If the patent for an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs belongs in accordance with Paragraph 1 of this Article not to the Russian Federation, not to a subject of the Russian Federation or not to a municipal entity, the patent holder upon the request of the state or municipal customer shall be obliged to grant to the person indicated by him/it a gratuitous simple (non-exclusive) license to the use of the invention, utility model or industrial design for the state or municipal needs.
5. If the patent for an invention, utility model or industrial design created in the course of carrying out the works under a state or municipal contract for the state or municipal needs is obtained jointly to the name of the contractor and the Russian Federation, the contractor and a subject of the Russian Federation, or the contractor and a municipal entity, the state or the municipal customer shall be entitled to grant a gratuitous simple (non-exclusive) license to the use of such invention, utility model or industrial design for the purposes of carrying out the works or supplying the products for the state or municipal needs, having notified the contractor on this.
6. If the contractor, who has obtained a patent for an invention, utility model or industrial design in accordance with Paragraph 1 of this Article to his/its name makes a decision on an early termination of the patent, he/it shall be obliged to notify the state or municipal customer on this and upon his/its request to transfer the patent on a gratuitous basis to the Russian Federation, the subject of the Russian Federation or the municipal entity.
In the case of the decision made on the early termination of the patent obtained in accordance with Paragraph 1 of this Article to the name of the Russian Federation, a subject of the Russian Federation or a municipal entity, the state or municipal customer shall be obliged to notify the contractor on this and, upon his/its request, to send him/it the patent on a gratuitous basis.
7. The author of the invention, utility model or industrial design indicated in Paragraph 1 of this Article, who is not a patent holder, shall be paid remuneration in accordance with Paragraph 4 of Article 1370 of this Code.
Paragraph 7 of the Article contains the very important information that defends the interests of the authors, who have participated in carrying out the contractual works due to their employment duties. As in the case of carrying out other customized developments, the employer shall be obliged to pay the author’s remuneration regardless of the fact who will obtain the patent for the relevant inventions, utility models or industrial designs.
The urgency of the problem for allocating the rights to the results of scientific and technical activity created at the expense of the state funds is connected with the need to attract investments in high-tech manufacture, in which the state is interested. The rate of embracing new technologies depends directly on the interest of both the investor and the developers in the rights to the technologies obtained. Therefore, it is necessary to distinguish clearly between the rights of the state to the results of scientific and technical activity financed from the state budget, and the rights of the contractors of such works taking into account the need to encourage enterprises and their employees to innovative activity.
Thus, it is necessary to make changes to the current legislation in the field of the protection and use of inventions, utility models, industrial designs created with the participation of the state, the purpose of which is to ensure the equal rights and observance of the interests of all participants of the legal relations for the creation of the results capable of being entitled to the legal protection that have been obtained at the expense of the budget funds.
Today, the current patent legislation stipulates the temporary legal protection only to inventions. Currently, the temporary legal protection to industrial designs and utility models is not stipulated by the Russian patent legislation, and therefore the rights of applicants are infringed.
The temporary legal protection of an invention starts from the moment of the publication of the information on the application and it shall be in force till the date of the publication of the information on granting a patent (Article 1394). The temporary legal protection shall be granted within the scope of the published claims, but not more than within the scope determined by the claims contained in the decision of the said Federal Authority on granting a patent for the invention.
Thus, after the publication of the application, the temporary legal protection of the invention starts. This means that no one has the right to use the invention without consent of the applicant.
It should be noted that such protection does not defend the applicant from an unauthorized use of his subject matter of protection, but such use entails the payment of monetary compensation in the event that the applicant obtains a patent.
According to Article 1385 “The Publication of the Information on the Application for an Invention,” the Federal Executive Authority on Intellectual Property, upon the expiry of eighteen months from the date of filing the application for an invention that has passed an examination as to form with a positive result, shall publish the information on the application for an invention in the official bulletin.
The publication shall not be made, if before the expiration of fifteen months from the date of filing the application for an invention, it has been withdrawn or recognized as withdrawn or the registration of the invention has taken place on its basis.
Thus, the temporary legal protection may come no earlier than 18 months from the date of filing the application. However, the sooner the temporary legal protection comes, the better, as the person using the claimed invention during the period of the temporary legal protection shall pay monetary remuneration to the patent holder after he obtains a patent. The amount of remuneration shall be determined by an agreement of the parties, and in the case of a dispute – by the court.
So, is it possible to extend the term of the temporary protection of the invention? The unequivocal answer is “yes,” upon the petition of the applicant filed before the expiration of twelve months from the date of filing the application for an invention, the Federal Executive Authority on Intellectual Property may publish the information on the application before the expiry of eighteen months from the date of filing it.
Consequently, by filing the petition for speeding up the publication, the applicant increases the period of the temporary protection of the invention.
It should also be noted that on June 27, 2019, Article 1392 was amended on the basis of Federal Law of December 27, 2018 No. 549-FZ.
In accordance with these amendments, the temporary legal protection will be granted not only to inventions, but to industrial designs as well.
Thus, according to a new version of Article 1392, the industrial design, for which the application has been filed to the Federal Executive Authority on Intellectual Property, shall be granted the temporary legal protection within the scope determined by a set of the essential features of the industrial design, which have been reflected on the images of the appearance of the article, contained in the published application for an industrial design, but not more than within the scope determined by the set of the essential features, which have been reflected on the images of the appearance of the article, contained in the decision of the said Federal Authority on granting the patent for the industrial design, within the period from the date of the publication of the information on the application (Paragraph 4 of Article 1385) till the date of the publication of the information on granting a patent (Article 1394).
However, it is known that currently the publication of the information on the application for an industrial design is not stipulated by the patent legislation.
In connection with the amendments to Article 1392, Article 1385 “The Publication of the Information on the Application for an Invention and an Industrial Design” was also amended, and such amendments will take effect starting from June 27, 2019.
The Federal Executive Authority on Intellectual Property, upon a petition of the applicant, shall publish in the official bulletin the information on the application for an industrial design that has passed an examination as to form with a positive result. The composition of the published information shall be determined by the Federal Executive Authority that exercises the legal and normative regulation in the field of intellectual property.
The publication shall not be made, if the application for an industrial design has been withdrawn or recognized as withdrawn or the registration of the industrial design has taken place on its basis.
It shall be considered that the temporary legal protection has not come into effect, if the application for an invention or an industrial design has been withdrawn or recognized as withdrawn, or the decision has been made to refuse granting a patent with respect to the application for an invention or an industrial design and the possibility of filing an objection to this decision stipulated by the Civil Code of the Russian Federation has been exhausted.
The person using the claimed invention or industrial design during the period of the temporary legal protection shall pay monetary remuneration to the patent holder after he obtains a patent. The amount of remuneration shall be determined by an agreement of the parties, and in the case of a dispute – by the court.
Based on the above, summing up the amendments in the legislation regarding the temporary legal protection, which will take effect in summer of 2019, we would like to hope and believe that the said amendments will help the applicants to defend not only the inventions created by them, but also the industrial designs even at the stage of the paperwork concerning the application.
So, let us consider at first what an employee's invention, an employee's utility model are. To do so, let us turn to the relevant Article of Part 4 of the Civil Code of the Russian Federation, in which the above definitions are disclosed, namely:
The invention, the utility model created by an employee due to the fulfillment of his job duties or an employer’s particular task shall be recognized to be, respectively, an employee's invention, an employee's utility model.
What rights, based on the definition of the employee's invention, the employee's utility model, belong to the author, and what rights belong to the employer?
The right of authorship to an employee's invention, an employee's utility model shall belong to the employee (author).
The exclusive right to an employee's invention, an employee's utility model and the right to obtain a patent shall belong to the employer, unless otherwise is stipulated in a job agreement or a civil law agreement concluded between the employee and the employer.
If otherwise is not stipulated in the agreement concluded between the employer and the employee, the employee must notify the employer in writing on the creation due to the fulfillment of his job duties or the employer’s particular task of such result for which legal protection is possible.
If within four months from the date of notifying by the employee the employer fails to file an application for a patent in respect of the relevant employee's invention, the employee's utility model to the Federal Executive Authority on Intellectual Property, if he fails to transfer the right to obtain a patent for the employee's invention, the employee's utility model to another person, or if he fails to inform the employee about keeping the information about the relevant result of intellectual activity in secret, then the right to obtain a patent for such invention, utility model shall be returned to the employee. In this case, during the term of the patent being in force, the employer shall be entitled to use the employee's invention, the employee's utility model in the own manufacture under the conditions of a simple (non-exclusive) license with the payment of remuneration to the patent holder, the amount, the conditions and the payment procedure of which shall be determined by the agreement concluded between the employee and the employer, and in case of a dispute – by the court.
If the employer obtains a patent for the employee's invention, the employee's utility model, or makes a decision to keep the information about such invention, utility model in secret and notifies the employee about it, or transfers the right to obtain a patent to another person, or fails to obtain the patent based on the application filed by him due to the reasons not depending on him, then the employee shall be entitled to remuneration. The amount of remuneration, the conditions and procedure for its payment by the employer shall be determined by the agreement concluded between him and the employee, and in the case of a dispute – by the court.
The right to remuneration for the employee's invention, the employee's utility model shall be inalienable, but it shall pass to the author’s heirs for the remaining the term of the exclusive right being in force.
The invention, utility model created by the employee using the monetary, technical or other material means of the employer, but not due to the fulfillment of his job duties or the employer’s particular task, shall not be the employee’s ones. The right to obtain a patent and the exclusive right to such invention, utility model shall belong to the employee. In this case, the employer shall be entitled to demand at his own choice either granting him a gratuitous simple (non-exclusive) license for the use of the created result of intellectual activity for his own needs for the entire term of the exclusive right being in force or reimbursement of the costs incurred by him due to the creation of such invention, utility model.
In case of the availability of the agreement concluded between the employer and the employee, which stipulates the conditions, amounts and procedure for the payment of the author's remuneration for the created by him employee’s invention or the employee’s utility model, the parties shall be governed by this agreement. If such agreement is not available, the parties should be governed by the Rules for Paying Remuneration for Employee’s Inventions, Employee’s Utility Models approved by the Government of the Russian Federation, which have come into force since October 1, 2014.
The above Rules establish a procedure for paying remuneration for employee’s inventions, employee’s utility models.
In accordance with the Rules, the remuneration for the creation of an employee’s invention, an employee’s utility model should be 30 percent of the average salary of the employee, who is an author of the employee’s invention, for the last 12 calendar months and 20 percent of the average salary of the employee, who is an author of the employee’s utility model for the last 12 calendar months, which shall be calculated on the date the employer has filed an application for obtaining a patent for such invention, utility model, or on the date he has made a decision to keep the information about them in secret, or on the date the employer has transferred the right to obtain a patent to another person.
The above said payment, depending on the basis of the right to remuneration that the employee has got, shall be exercised by the employer as a lump sum not later than 2 months from the date the employer has received a patent for the employee’s invention, the employee’s utility model, or from the date he has made a decision to keep the information about them in secret, or from the date the employer has transferred the right to obtain a patent to another person, or not later than 18 months from the date of filing an application for obtaining a patent for such invention, utility model, in the event that the employer fails to obtain the patent based on the application filed by him due to the reasons not depending on him.
The remuneration for the use of the employee’s invention, the employee’s utility model shall be paid to the employee, who is their author, in the amount of his average salary for the last 12 calendar months, during which such invention, utility model have been used.
The remuneration shall be paid within a month after the expiration of every 12 calendar months, during which such invention, utility model have been used.
In the event that the employer has granted the right to use the employee’s invention, the employee’s utility model to another person under a license agreement, the employee, who is their author, shall be paid remuneration in the amount of 10 percent of the sum stipulated by the license agreement.
The payment of remuneration to the employee, who is the author of such invention, utility model, shall be exercised by the employer within one month from the date of receipt by him of the remuneration stipulated by the license agreement, or a part of such remuneration, in the event that the license agreement provides for the payment in the form of a fixed lump sum payments or periodic payments, percentage deductions from profit (revenue) or in some other form.
In the event that the employer has transferred to another person the right to obtain a patent or the exclusive right to the employee’s invention, the employee’s utility model under an agreement on the transfer of the right to obtain a patent or an agreement on alienation of the exclusive right, then the employee, who is the author of such invention, utility model, shall be paid remuneration in the amount of 15 percent from the remuneration stipulated by the agreement within one month from the date of receipt by the employer of the mentioned remuneration.
If the employee’s invention, the employee’s utility model have been created by the joint creative work of several employees, who are co-authors of such invention, utility model, then the remuneration shall be divided among them equally, unless otherwise is stipulated by an agreement concluded between such employees.
In the event of the termination of the job relationship between the employee, who is the author of the employee’s invention, the employee’s utility model and the employer, the employer's obligation to pay remuneration shall remain.
Thus, the authors of the inventions, the utility models, created within the framework of the fulfillment of their job duties, shall be entitled to material remuneration, and it is necessary to know this!
It should be noted that intellectual property is protected by law.If you have created a work of science, literature and art, it shall be subjected to thecopyright. According to Paragraph 2 of Article 1228 of the Civil Code of the Russian Federation,the author of the result of intellectual activity holds the right of authorship.If you have an idea of a technical nature, and you express it in the form of a technicalsolution or an object, then the patent rights may be extend to them. In other words, the idea canbe protected in some particular manifestation, expression. Thus, once you expressed an idea, assoon as it appeared and was implemented in some particular technical solution, can we talk aboutits protection. However, how can one protect his idea?For the majority of the ideas, the most convenient is the protection, implemented byprotecting the copyrights of the works, where these ideas are expressed. The law defines thecopyrights as the intellectual property rights for works of science, literature and art. These rightsshall be, according to Article 1255 of the Civil Code of the Russian Federation:1) the exclusive right to the work;2) the right of authorship;3) the author's right to the name;4) the right to integrity of the work;5) right to publish the work.At the same time, it should be noted that the exclusive right is a property right and otherrights are nonproperty rights.According to Article 1257, the author of the work of science, literature or art shall be acitizen, by whose creative work it has been created. The person indicated as an author on theoriginal of the work or on its copy, or otherwise, according to Paragraph 1 of Article 1300 of theCivil Code of the Russian Federation, shall be considered to be its author, unless otherwise hasbeen proved.Not any registration of the work or compliance with any requirements is required for theoccurrence, implementation and protection of the copyrights. However, with regard to computerprogrammes and databases, the Right Holder during the period of validity of the exclusive rightto the computer programme or database may, at his discretion, register such programme ordatabase in the federal executive body for intellectual property. The result of the registration is aState certificate confirming your copyrights.Although the law does not require the state registration of the copyrights, it is notexercised, and no other registration is provided for, however, the majority of authors areincreasingly trying by any possible ways to confirm their authorship by registering their “works”at least somewhere. So, for example, literary works are published in publishing houses byassigning the date of publication, the date of receipt of the work, etc. A great number of worksare currently registered in the RAO (Russian Authors Society) with the assignment of a numberand a date. These registration information is often used by the authors in case of disputes and inorder to prove their rights, for example, in court. In other words, it is evident from practice thatthe registration of the rights in any form of registration is very desirable for an author.The copyright subject matters shall be works of science, literature and art, regardless ofthe merits and the purpose of the work, as well as the way of its expression:literary works;dramatic or dramatic-musical works, script works;choreographic works and mime shows;musical compositions with or without a text;
audiovisual works;painting, sculpture, graphic, design, graphic stories, comics and other works of art;artistic craftsmanship and scenographic works;works of architecture, city planning and landscaping, including designs, drawings, imagesand models;photographic works and works produced by the methods similar to photography;geographic and other maps, layouts, sketches and plastic works that relate to geographyand other sciences;other works.The copyright subject matters also include computer programmes, which are protected asliterary works.The ideas with a technical content also can be protected by the protection of the copyrightworks, but only at a very early stage of their development, until certain technical elements,features, characteristics appear. With the appearance of such features it is already possible tospeak about a technical solution. If the existence or implementation of these technical featuresleads to any technical effect, property, or a manifestation of some phenomenon, it is necessary toconsider about the possibility of patenting. Patenting of technical solutions is carried out in theform of an invention, utility model or industrial design, and it is the most effective way to protecttechnical solutions and developments. The patented technical solutions shall be registered in thestate register and shall be protected by the state. However, a number of serious requirements areimposed on the patented technical solutions, this is, first of all, a world novelty, an industrialapplicability, and for the inventions such requirement is the compliance with an inventive step.As inventions, according to the current patent legislation, a technical solution in any arearelated to the product (in particular, a device, substance, strain of microorganisms, plant oranimal cell culture) or a method (the process of carrying out actions over a material subjectmatter by material means) including to the use of the product or method for a particular purposeshall be protected.As a utility model, the technical solution related only to a device shall be protected.As an industrial design, the implementation of the appearance of an industrial orhandicraft product, namely a design, shall be protected.To protect the ideas, it is also possible to use a know-how regime, namely, a productionsecret. In other words, it is necessary to create the conditions in which the information about theidea will be known only to a certain narrow circle of persons. However, in the majority of cases,for the ideas, the use of such protection is ineffective and useless, because it hinders theirdevelopment and implementation.
or utility models have been claimed. However, the fact of the public use abroad does not refer tothe information discrediting novelty. At the same time, according to the absolute world noveltycriterion, the publications and the public use or any disclosure of the essence of the technicalsolution anywhere in the world prior to the filing date of the application shall be taken intoaccount (Article 22 of the Patent Law of China).I would like to highlight specially one peculiarity of patenting in China, which ourcompany has faced. Let us consider it on a particular example. On behalf of the client, we haveexercised the entry of his international application to the national phase to China, as aninvention. In the process of the paperwork, namely, at the stage of substantive examination, theprovisional refusal with respect to novelty was received, which was successfully overcome. Theclient, hoping to obtain a decision on granting a patent, suddenly, unexpectedly for him, receivesthe following request from the Office, in which the inventive step is declined by the examiner.Having analyzed the request, after the consultation with the client, we weighed all pross andcontras and came to a conclusion that it would be unlikely to overcome the request. However,the client was not ready to refuse from the application and it occurred to us to try, by analogywith the Russian practice of patenting, to convert the application for an invention into anapplication for a utility model. At that time, the application was not withdrawn, and also thesubject matter of patenting complied perfectly with utility models.In such situation, we had a little chance to obtain a patent after all, and we tried to takeadvantage of it. We announced our proposal to the client, informing him that the novelty hadbeen recognized by the examiner and the presence of the inventive step for utility models wasnot required and we, with the agreement of the client, addressed to our Chinese partners with arequest to convert the application for an invention into an application for a utility model. Andwhat was our surprise when, in response to that request, we received a letter with an explanationthat the patent legislation of China did not allow such actions.According to the patent law of China, the applicant, even during exercising the entry ofhis application to the national phase to China or when filing the application with a request forpriority under the Paris Convention, should assess the chances for obtaining a patent, and heshould file an application by choice – either for an invention, or for a utility model. Furthertransformation of one subject matter into another one and vice versa is not stipulated by thelegislation of China. So, in the end, what was the outcome of this case? The client refused fromthe further consideration of the application for an invention, and we received invaluableexperience associated with the peculiarities of patenting utility models in China.
So, we have to find out today what this “grace period” mean and what it is for? The legislation in a number of countries stipulates a “grace period” (ranging from 6 to 12 months from the date of the disclosure by the inventor or the applicant prior to filing an application about the nature of the invention or the utility model), during which the invention retains patentability, despite its disclosure. In such countries it is possible to disclose the nature of the invention, for example, by exhibiting it at an international exhibition or by publishing it in a catalog or technical journal. Filing an application for an invention, a utility model during this grace period does not destroy the patentability of the invention and, therefore, does not deprive the possibility of obtaining a patent.
If the applicant intends to file an application to a foreign state, it is desirable to keep the confidentiality of his technical solution before filing an application. In many cases, the public disclosure of an invention or a utility model, before filing an application, deprives the invention or the utility model of a novelty, making it unpatentable, if the legislation of the country does not stipulate a special “grace period.” Thus, it is extremely important for inventors, authors and applicants to try to avoid the facts of any disclosure of the nature of their technical solution prior to filing an application, as this can destroy the patentability of the invention or the utility model.
Let us dwell in more detail on the Russian legislation and understand how this rule on a grace period is regulated in Russia, and whether this period exists at all. According to Paragraph 3 of Article 1350 of Part 4 of the Civil Code of the Russian Federation “The disclosure of the information concerning the invention by the author of the invention, the applicant or any person, who has received this information from them directly or indirectly (including as a result of exhibiting the invention at the exhibition), which made the information on the nature of the invention available to the general public shall not be deemed a circumstance precluding the recognition of the invention's patentability, provided the application for the patent for an invention has been filed to the Federal Executive Authority on Intellectual Property within six months after the date of the disclosure of the information. The burden of proving the fact that the circumstances, due to which the disclosure of the information does not preclude the recognition of the invention's patentability, have existed shall be on the applicant.” In relation to utility models, the same rule is given in Paragraph 3 of Article 1351 of the Civil Code of the Russian Federation.
The existence of this rule allows the applicant, subject to the conditions enumerated therein, obtaining a patent, despite the fact that the information, which is sufficient to deny a novelty (for utility models) and a novelty or an inventive step (for inventions), has been included in the state of art before the priority date of the inventions/utility models.
Thus, the above rule demonstrates that the Russian inventors, authors and applicants have the above 6-month grace period and are entitled to use it.
For a more complete and unambiguous understanding of the “grace period”, how it works and how it is assessed by the Russian Patent Office, we shall give an example from the practice of company Zuykov and Partners.
Company Romashka (the name of the company is fictitious for the purpose of observing the confidentiality of the information) has contacted our company with a request to assess the possibility of patenting the technical solution it had. The experts of our company conducted an international patent and information search to assess the patentability of the technical solution it had. Based on the search results, the patent attorney advised the client to file an application for a utility model. Based on our recommendations, Romashka, LLC made a decision to file an application for a utility model, indicating as an applicant and an author – an individual, who was in labor relations with the above Romashka, LLC, that is, he was this company’s employee. As a result of the substantial examination of the application, the expert of the office made a request, in which the claimed technical solution was contrasted with the catalog of products of Romashka, LLC, published on the official website of the company 4 months prior to the date of filing the application, as a source of information discrediting a novelty of the claimed technical solution.
In order to overcome the examination request, the experts of our company advised the applicant to include into the applicants' list Romashka, LLC, on the site of which the undesirable catalog of products had been identified. After Romashka, LLC was included into the applicants' list, we responded to the request in which we placed an emphasis on a 6-month grace period, which the applicant had after publishing the information disclosing the nature of the technical solution prior to the date of filing the application. Thus, there was no alternative for the examination, but to make a decision on granting a patent. In this situation, it helped that the applicant, an individual, was an employee of Romashka, LLC, and the information on the website had been disclosed by Romashka, LLC, that is, by the applicant itself. Otherwise, if the information had been disclosed by the different company, not related to Romashka, LLC, then it would have been extremely difficult to overcome the examination’s request, and most likely, it would have been impossible, and the refusal to grant a patent would have followed.
Thus, this example demonstrates that the disclosure of the information about one’s own technical decision prior to the date of filing an application to the office can be used against the applicant, and to avoid such problems, it is first necessary to file an application to the office and only then to disclose the nature of one’s own technical decision and publicize it.
В связи с чем же возникает необходимость аннулирования патента? Очень часто, юридическим лицам, которые являются производителями запатентованного товара, не удается, на выгодных для себя условиях, договориться с патентообладателем об использовании его патента. Наиболее выгодным для них решением вопроса становится – объявление войны правообладателю. В чем же заключается война? А заключается это война в попытке, иногда очень успешной, аннулировать мешающий патент.
Стоит заметить, что речь в данной статье пойдет об аннулировании патента на полезную модель. Кроме того, следует также учитывать тот факт, что до 01 октября 2014г. Патентное ведомство РФ (Роспатент) не проводило экспертизу заявленного технического решения по существу, а именно, проверку на соответствие условиям патентоспособности «мировая новизна» и «промышленная применимость», в отношении полезных моделей. В связи с этим можно было встретить два патента на одно и тоже устройство. Патенты на полезные модели выдавались под ответственность заявителя, проводилась только формальная экспертиза на соответствие формальным требованиям законодательства.
Таким образом, все чаще и чаще возникает необходимость в аннулировании того или иного патента на полезную модель.
Рассмотрим основания, по которым возможно аннулировать патент на полезную модель или признать его недействительным полностью. Для этого, обратимся к нормам действующего патентного законодательства.
В соответствии со Статьей 1398 «Признание недействительным патента на изобретение, полезную модель или промышленный образец»
«1. Патент, в частности, на полезную модель может быть признан недействительным полностью или частично в случаях:
1) несоответствия полезной модели условиям патентоспособности, установленным Гражданским Кодексом (ГК);
2) несоответствия документов заявки на или полезную модель, представленных на дату ее подачи, требованию раскрытия сущности полезной модели с полнотой, достаточной для осуществления полезной модели специалистом в данной области техники;
3) наличия в формуле полезной модели, которая содержится в решении о выдаче патента, признаков, не раскрытых на дату подачи заявки в документах, представленных на эту дату;
4) выдачи патента при наличии нескольких заявок на идентичные полезные модели, имеющих одну и ту же дату приоритета;
5) выдачи патента с указанием в нем в качестве автора или патентообладателя лица, не являющегося таковым в соответствии с ГК, либо без указания в патенте в качестве автора или патентообладателя лица, являющегося таковым в соответствии с ГК.
2. Патент на полезную модель в течение срока его действия может быть оспорен путем подачи возражения в федеральный орган исполнительной власти по интеллектуальной собственности любым лицом, которому стало известно о нарушениях, предусмотренных подпунктами 1 - 4 пункта 1 настоящей статьи.
Патент на полезную модель в течение срока его действия может быть оспорен в судебном порядке любым лицом, которому стало известно о нарушениях, предусмотренных подпунктом 5 пункта 1 настоящей статьи.
Патент на полезную модель может быть оспорен заинтересованным лицом и по истечении срока его действия по основаниям и в порядке, которые установлены абзацами первым и вторым настоящего пункта».
Наиболее распространенным критерием для аннулирования патента является, указанный в 1), а именно, несоответствие запатентованного объекта условиям патентоспособности, поэтому далее будем рассматривать только его. В связи с этим для определения возможности прекращения действия документа целесообразно провести международный патентно-информационный поиск для выявления известных в мире решений, которые могут порочить патентоспособность зарегистрированного объекта, в данном случае, «новизну». Выявленными источниками информации для аннулирования патента по новизне могут быть как патентные, так и не патентные, при этом они должны соответствовать определенным требованиям:
- дата их публикации должна быть ранее даты подачи заявки на полезную модель, в случае подачи заявки без приоритета и ранее даты приоритета, в случае подачи заявки с приоритетом;
- техническое решение, раскрытое в найденном источнике, должно быть того же назначения, что и запатентованное техническое решение;
- выявленный источник информации должен содержать всю совокупность признаков, изложенных в независимом пункте формулы полезной модели;
- если документ (источник) выявлен на иностранном языке, то он должен быть переведен на русский язык.
Выявленных источников информации может быть как один, так и несколько.
Если в процессе поиска выявлены источники информации, которые отвечают указанным выше требованиям, смело готовьте возражение против выдачи патента на полезную модель, а лучше всю работу по подготовке и оформлению возражения, включая проведение поиска, доверьте профессионалам - компании «Зуйков и партнеры», в которой имеются высококвалифицированные специалисты своего дела с многолетним опытом работы и положительными результатами в решении данных вопросов.
So, the patent clearance is a legal property of the subject-matter of intellectual property, the essence of which is that it can be freely used in a particular country without the danger of infringement of the valid patents belonging to third parties on its territory.
The purpose of a search for the patent clearance (patent clearance examination) is identifying the features of the patented invention used in the subject-matter, despite the differences contained in other features.
When exercising a search for the patent clearance, the subject-matter shall be checked as a whole. All or most of the technical solutions implemented in it shall be assessed. The search shall be exercised for each particular country. The patent laws, rules and judicial practice of all countries in respect of which the search is exercised shall be taken into account. As a rule, for the newly created subject-matters, the search shall be exercised to ensure their patent clearance and shall be an integral part of the general patent research carried out both before and during the development.
Why is it necessary to determine the patent clearance of the technological items?
The existence of the patent legislation in the majority of countries of the world providing the grant of patents (certificates) for various kinds of industrial property, as well as the liability for the patent infringement, stipulated by the legislation, lead to the necessity to undertake the measures to prevent the possibility of infringing the patents in the countries, where the relevant technological items are being sold, including on the territory of Russia, i.e. the measures to provide their patent clearance.
Providing the patent clearance will allow realizing (using) technological items (machines, devices, equipment, materials and technological processes) freely, without a fear of infringing the exclusive rights of third parties.
It follows from the definition of the patent clearance, that the subject-matters, which have a patent clearance in respect of any country are the subject-matters that are not subject to the effect of the patents for inventions, utility models or industrial designs granted by the authorized patent office and which are valid on the territory of that country. Also, the subject-matters must not infringe the registered trademarks, as well as the firm names and indications of the origin of the goods.
In the world practice, there are also other terms for determining the notion of the patent clearance, for example, “patent invulnerability” (Germany), “freedom from the protected patent rights” (the USA), etc.
It is known that the implementation, exhibition or an offer to sell only a particular material object (device, method, substance) on the territory of the country may lead to the patent infringement. However, it is generally accepted that the notion of “patent clearance” is also applicable to the technical documentation by which this object is manufactured or will be manufactured (including corporate projects, standards, technological documentation, etc.)
Devices, methods, substances shall mean the following, correspondingly:
– articles and means of production, i.e. machines, tools, equipment, apparatus, installations (including construction ones), their components (elements), as well as all other articles which can be characterized by constructive or schematic features and their combination;
– technological processes, methods and operations, characterized mainly by technological features (the sequence of actions and methods, their nature, applicable operating conditions, parameters, apparatus, tools, materials, etc.).
– materials, compounds (compositions), pastes, plastics, paints, etc., characterized by a combination of components (ingredients), their ratio, structure, etc., including those obtained by chemical means.
How to determine the patent clearance?
The patent clearance is a relative concept, that is, it is determined only with respect to particular countries and only for a certain date. It is entirely connected with the territorial and temporal effect of patents. The subject-matter that does not have the patent clearance concerning a number of countries where it is subject to the patents, which are in effect there, may nevertheless have the patent clearance concerning all other countries where there are no such patents. The same subject-matter, in the course of time, will also have the patent clearance in respect of the countries, where is has been subject to the effect of the patents which ceased to be active (due to the termination or for other reasons).
The purpose of the patent clearance examination is to determine the possibility of implementing (using) this subject-matter in a particular country or a group of countries and to identify the measures to ensure this implementation without infringing the patents of third parties. It means the identification of all active patents in a particular country (countries) that concern the subject-matter, their analysis and also the study of the circumstances that could facilitate the free implementation of this subject-matter in the country (countries) concerned.
When carrying out the patent clearance examination, it is necessary to provide a combination of its three aspects: legal (judicial), technical (engineering) and economic, in order to assess correctly the significance of each of them in this particular case.
The legal aspect of the examination involves the proper and full consideration of all legal issues relevant to this case and their assessment in the concrete situation (including when determining the scope of rights from the patent, the possibilities of infringing it, opposing it, etc.).
The technical aspect involves the correct assessment of the technical essence of the invention (utility model) under the patent, in comparison with the subject-matter under examination; the identification of the materiality of particular features and their significance for the patented invention or for the subject-matter under examination; the assessment of the role of the constituent parts and other elements for the subject-matter taken as a whole; and the identification of the ways of the possible circumvention of the patent, etc.
The economic aspect involves the assessment of the scope of possible claims of the patent holder in the event of the infringement of his patent and the damage to be compensated.
Errors and inaccuracies when exercising the patent clearance search can lead to significant material damage, which makes the examination very important.
Thus, the patent clearance examination is much more complicated and requires a higher qualification compared to all other kinds of patent examination. This factor determines the increased requirements for the persons exercising the patent clearance examination.
Every year, the Russians file about 56,000 applications to Rospatent to register their inventions. The whole process of obtaining a patent usually lasts at least a year and costs about 70 thousand roubles (including the services of a professional patent attorney, the document processing and the payment of the official fee). Nevertheless, in the official bulletin of the office, where all new registered patents are usually published, strange and absurd inventions that can lead to confusion continue to appear.
Here are some of the most absurd and ridiculous patents issued in the last decade.
- Glasses for swimming with a front view mirror. Patent No. 162597, author: Petrov Alexander Yurievich.
Picture captions: Reflection of the eye in the mirror
The patent for the glasses with a “front view” mirror was granted by the inventor from Vladimir. Externally, the construction looks like usual glasses for swimming, except that in the area of the bridge of the nose there is a small round mirror fixed on the glasses. With their help, the swimmer can see what is happening right in front of him with his head low. Probably, the mission of the invention is to make swimming safer, and its developer has stuffed a lot of cones against the side of the pool.
- Skrepler. Patent No.163950, author: Borisov Petr Ivanovich.
Petr Borisov, the inventor-paratraker from the Nizhniy Novgorod region, has developed and patented a skrepler. The invention, which looks like a clip, is a piece of wire – its edges are folded so, that both sharp ends are looking at each other at the right angle. Obviously, the skrepler is intended for binding the paper sheets. However, in the official description of the utility model it is not specified how many sheets of paper can be bound together with one skrepler, and if any additional tools are required for this.
- Device for drink consumers. Patent No.164709, authors: Yoffe Sergey, Yoffe Ekaterina, Yoffe Viliam.
Sergey from Irkutsk has obtained a patent for an unusual tube for soft beverages. It is equipped with a sophisticated mechanism consisting of valves and opening lids, thanks to which not only one person, but several persons can drink simultaneously. If someone uses a tube alone, all the valves for other tubes are closed tightly. If others join him, additional valves are opened automatically. All this is for joint drinking from one container.
- The bed sheet with ties. Patent No.163984, author: Belyaeva Elena Nikolaevna.
Elena from Nefteyugansk has obtained a patent for a simple invention. In total, along the perimeter of her bed sheet four long strips are stitched, forming eight strings on the edges of the bed sheet. The length of such strings must necessarily exceed the height of the mattress, and the width of the bed sheet itself should be equal to “the width of the mattress plus two mattress heights, plus two turndowns under the mattress.” It is not clear from the patent what in particular the strings of the bed sheet should be fastened to, as well as what mattress it should be.
The world does not stand still. People constantly invent something to make the life easier for themselves or others. But sometimes the ideas that come to mind to one or another inventor do not always help people, but rather do something on the contrary.
Dear our inventors, we respect you very much. We appreciate and love you. But we ask you very much, before drawing up and filing an application for an invention or utility model, please think whether it is necessary, whether it is any good doing it, and whether the patent will be of use or maybe it will do harm?
What are the most important peculiarities of the new patent system?
The new EU patent system offers applicants another version of the procedure for obtaining a patent.
On the one hand, it allows, as before, confirming the European applications for which the patent has already been issued – a traditional “European patent” in each of the chosen countries (38 countries totally).
On the other hand, the applicant now can file an application with the EPO on the extension of the protection provided for the European applications with the already obtained patent to 27 EU countries – a new “single patent” in the countries, which are the members to a new EU patent system.
Currently, the peculiarity of the procedure for obtaining a European Patent (EP) is that the obtained document of protection does not provide the ultimate protection in the majority of the member countries of the European Patent Convention (EPC). In order to complete the patenting procedure it is necessary to complete the process of the so-called validation – the presentation of the translation of the patent documentation into the correspondent language to the national patent offices. Keeping the European patent valid, all other legally significant actions, as well as the court proceedings take place in each of the countries of action chosen by the applicant, according to the national procedure.
What is necessary to do to obtain a European patent?
1. To create an invention, which is new, has an inventive level and industrial applicability.
2. To draw up a description of the invention and file a correspondent application to the national patent office.
3. Before the expiry of 12 months from the date of filing an application with the national patent office it is necessary to file an International (PCT) or European application. However, in order to file a European application, the applicant who is not an EU citizen or who does not have a location in the member countries of the EPC is obliged to use the services of a European patent attorney. If the applicant has a previously filed PCT application, then it is necessary to transfer it to the regional (European) phase, before the expiration of 31 months from the priority date.
4. After the consideration of the application, the European Patent Office shall issue a search report and publish the application.
During the whole procedure, the applicant has the right to benefit from the procedure of the temporal legal protection in the chosen states, having presented the translation of the claims into the correspondent languages to the indicated countries.
Depending on the search results, the applicant shall make a decision to carry out an examination of the application or to terminate the registration procedure.
The examination of the application lasts from 2 to 6 years from the date of filing the application. At the same time, the annual fees shall be paid to keep the application in force. If the examination is successful, then after its completion, the European Patent Office shall issue a patent.
5. After the issuance of a European patent, it will be in effect automatically in the following countries: Germany, France, the Great Britain, Switzerland, Monaco and Luxembourg (this does not exempt from paying annual fees in these countries).
The obtained patent is subject to validating in all other member countries of the EPC. As already mentioned above, the validation of a patent means the presentation of a translation of its published test to the patent offices of the member states. At the same time, the applicant will have to use the services of the national patent attorneys in all member states.
After the validation procedure is finished, all rules similar to those that are applied in these countries for the national patents shall be applied to the European patents.
6. The payment of annual fees in the participating countries for keeping the European patent valid. In some member states this action shall be carried out only through the national patent attorneys, in other countries this procedure can be performed by a European patent attorney.
The holder of a European patent has the right to stop keeping his patent valid in any number of countries from the list of the applied countries.
Why is the European patent profitable for the applicant?
1. A simplified procedure with the paperwork in one of the official languages of the EPC (English, German, French).
2. A significant reduction of costs for patenting, as the applicant pays for the services of only one agency and only one patent attorney during the period from filing an application to the grant of a patent.
3. Due to the length of the examination procedure, the applicant has enough time to make a final decision on obtaining exclusive rights in one or another member states, depending on the current market conditions, investment opportunities, etc.
4. The European patent is “strong” due to a single procedure, qualitative search and examination, which shall be carried out by highly qualified experts of the EPO – one of the world's leading Patent Offices.
5. The European patent is equally valid in all member states: the same term of protection (20 years), the same degree of protection, in the majority of cases the same text, and also the same reasons for its cancellation.
The attractiveness of the Single European Patent:
1. A single effect on the territory of all participating member states.
2. There is no necessity to validate a patent in the member states, what means a significant cut of the costs related to these procedures.
3. The possibility of paying a single fee for keeping the patent valid. Upon that it is assumed that these fees will be significantly lower than the total value of the current national fees.
4. A single procedure for making entries in the relevant registers on the grant of licenses and the assignment of rights.
Disadvantages of the Single European Patent:
The near-complete depreciation of the national patent offices becomes the main disadvantage, as their powers, which are anyway not too large in the EPC system, will be further curtailed.
In addition, the patent holder will not be able to terminate the Single Patent in certain EU member states and will be compelled to pay appropriate annual fees for all countries. Also, the transformation of the Single Patent into national patents is not stipulated.
One of the significant disadvantages of the system of obtaining the Single Patent is that the patent can be terminated by a single procedure in the European Patent Court on the territory of all 25 member states simultaneously. In this case, the grounds for such termination may be the existence of prior, but unpublished national applications and other applications attacking the novelty of the invention, which are usually not taken into account in the examination of applications for European patents. Currently, in the event of such problems, the applicant has the opportunity to make appropriate changes to the European patent for each particular EPC member state, and in the event of the termination of the European patent in one of the countries, the patent continues to be valid without any restrictions in other countries.