How can an author-developer make sure that his solution can be patented?

This article focuses on technical solutions that can be patented as inventions or utility models.

According to paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation, as an invention, a technical solution is protected in any field related to a product (in particular, a device, a substance, a strain of a microorganism, a plant or animal cell culture) or a method (the process of performing actions on a material object using material means), including the use of a product or method for a specific purpose.

An invention is granted legal protection if it is new, involves an inventive step and is industrially applicable.

According to paragraph 1 of Art. 1351 of the Civil Code of the Russian Federation, a technical solution related to the device is protected as a utility model.

A utility model is granted legal protection if it is new and industrially applicable.

Based on the basic requirements for the terms of patentability for inventions and utility models, the author-developer, before submitting an application to the patent office, must be sure that his development has no analogues, i.e. is a "unique" solution in this area, or has significant distinctive features that eliminate the shortcomings of the previous level of technology, while achieving a positive technical result. It should be borne in mind that for inventions, the claimed positive technical result should be non-obvious, unexpected for a specialist. The technical result is a characteristic of the technical effect, phenomenon, properties, etc., objectively manifested in the implementation of the method or in the manufacture or use of the product, including the use of the product obtained directly by the method embodying the invention.

Often, relying on a well-known solution - a prototype, developers make minor changes, for example, to the design of a device, relating only to its shape, geometric dimensions or appearance (design), after which they apply for a patent as a completely new invention or utility model, which is a serious misconception.

It happens that, having peeped, for example, any product abroad, the applicants try to patent it in the Russian Federation, mistakenly believing that since it has not yet been released on the Russian market, therefore, it can be safely passed off as new and receive a territorially valid patent of the Russian Federation.

Indeed, a patent is valid territorially only in the country in which it was obtained, but in order to obtain it, it is necessary that the solution be new at the global level. In other words, the same invention cannot be patented twice in the world.

Thus, it is necessary to conduct a preliminary international patent information search, identify the closest sources of information that disclose similar solutions, in order to make sure that the solution planned for patenting is world-class novelty for utility models, and for an invention, in addition to world novelty, to make sure that for a specialist it does not explicitly follow from the prior art, i. e. the solution cannot be obtained by combining known means to achieve an obvious technical result. Next, it is necessary to conduct a comparative analysis of the technical features of known solutions with those planned for patenting, identify differences that have a positive effect (technical result) and evaluate their significance and non-obviousness.

According to clause 24.5.3 of the Regulations, technical solutions are not recognized as complying with the patentability condition "inventive step", in particular, in cases where they are based on the combination or replacement of any part (parts) of a known means with another known part, if the knowledge of the influence of the replacing part is confirmed on the achieved technical result or, for example, on the choice of optimal or operating parameter values, if the known influence of these parameters on the technical result is confirmed, and the choice can be made by the usual trial and error method or by using conventional technological or design methods.

At the same time, not only the sites of patent offices and international organizations containing databases of published Russian and foreign applications and patents should be used for searching, but also the Internet, as well as libraries of scientific and technical literature. This is due to the fact that absolutely any information published before the priority date that is publicly available to a wide range of people (for example, a publication on a website, a video from YouTube, photos from open pages on social networks, etc.) can be opposed by the lack of world novelty.

In addition, the author must understand that if he managed to disclose information about his development on the Internet, publish an article in a scientific and technical journal or present a prototype at an exhibition, then he has only a six-month grace period for filing an application with Rospatent. Otherwise, such publication or promulgation at the exhibition of his decision will be opposed to him by the non-compliance with the condition of patentability "novelty".

With regard to the condition “industrial applicability” common to both objects of patenting, it should be noted that a solution is recognized as industrially applicable if it can be used in industry, agriculture, healthcare, other sectors of the economy or in the social sphere.

This condition rather refers to the requirement to describe the invention or utility model. The description must be detailed, contain appropriate material resources sufficient to implement the declared solution, taking into account the implementation of its purpose.

When assessing the industrial applicability of the claimed invention or utility model, the possibility of creating a material tool embodying the invention or utility model is established based not only on the information contained directly in the application materials, as a rule, specific examples of implementation, but also on the general knowledge of a specialist. At the same time, the claims of an invention or utility model may contain features formulated at the level of a functional generalization, properties, preferably in order to expand the scope of claims in the form of a term covering various forms of implementation.

Summing up the above, it should be noted that not every technical solution, even at first glance, is new, can be patented. First of all, the solution must be scientific and technical. It should not apply to computer programs, game rules, methods of conducting intellectual and economic activities. According to patent law, it is also impossible to patent discoveries, scientific theories and mathematical methods, solutions consisting only in the presentation of information or concerning only the appearance of products and aimed at satisfying aesthetic needs. No legal protection is granted to topologies of integrated circuits, plant varieties, animal breeds and biological methods for their production, with the exception of microbiological methods and products obtained by such methods.