Is “Sufficiency of Disclosure” an Additional Condition for Patentability?

Often, when turning to patent attorneys to formalize and submit an application for an invention, applicants present their solution at the level of an idea, a concept, citing the fact that they have never seen anything like this anywhere in the world before.

However, they do not realize that in order to be able to patent an “idea” it is not enough to come up with something unique, it is necessary to have a complete understanding of how it will be “arranged” in detailed detail so that the specialist clearly understands how the proposed solution can be implemented or manufactured, and how it will function, work. At the same time, it is necessary to describe the technical solution in detail, providing specific examples and data confirming the implementation of the purpose and the achievement of the specified positive effect (technical result). Ideally, what is conceived by the author-developer should be implemented into a specific ready-made technical solution, which will already be manufactured (a prototype has been received) and tested by the date of filing the application.

According to Article 1375 of the Civil Code of the Russian Federation dated December 18, 2006 No. 230-FZ (as amended on January 30, 2024), an application for a patent for an invention:

• firstly, it must relate to one invention or to a group of inventions so interconnected that they form a single inventive concept;
• secondly, in addition to the application for a patent indicating the author of the invention and the applicant; claims that clearly express its essence and are entirely based on its description; abstract; drawings and other materials, if they are necessary to understand the essence of the invention (if desired, a three-dimensional model in electronic form); must necessarily contain a description of the invention, revealing its essence with completeness sufficient for the implementation of the invention by a specialist in this field of technology.

Even if the applicant receives a patent for an invention that meets the conditions of patentability “novelty”, “inventive step”, “industrial applicability”, but a competitor reveals a discrepancy between the application documents for an invention or utility model, submitted on the date of its filing, and the requirement to disclose the essence invention with completeness sufficient for implementation of the invention by a specialist in this field of technology, then this may be grounds for invalidating the patent for the invention (Article 1398 of the Civil Code of the Russian Federation).

In this case, the interested person will prepare a corresponding objection to the Chamber of Patent Disputes of Rospatent and cancel such a patent.

Thus, to obtain a patent for an invention, it must not only be new, inventive and industrially applicable, but also sufficiently disclosed.

What is "sufficiency of disclosure"?

Let’s take a closer look at what experts and patent specialists understand by this term – “sufficiency of disclosure.” To do this, let us turn to the latest edition of the Rules approved by Order of the Ministry of Economic Development No. 107 dated February 21, 2023.

When checking the sufficiency of disclosure of the essence of the claimed invention in the application documents and submitted on the date of its filing, for the implementation of the invention by a specialist in the field of technology, the following is checked in these documents:

• whether the purpose of the invention is indicated;
• whether the technical problem solved by the creation of the invention and the technical result, the obtainment of which is ensured by the invention, are indicated;
• whether the set of essential features necessary to achieve the technical result specified by the applicant has been disclosed;
• is at least one example of the invention given? The example must confirm with experimental data or theoretical justification the possibility of realizing the purpose of the invention with achieving a technical result. A technical result is a characteristic of a technical effect, phenomenon, property, etc., objectively manifested during the implementation of a method or during the manufacture or use of a product, including when using a product obtained directly by the method embodying the invention;
• whether the application documents or the state of the art as of the date of filing the application disclose methods and means by which it is possible to implement the invention with the implementation of the purpose in the form as it is characterized in each of the claims, including in the case of using general concepts for characterization signs;
• is an example of the invention given showing how the invention can be implemented using at least one particular form of implementation of a feature expressed by a general concept, or at least one value of a parameter included in the interval, if at least one general concept is used in the claims or the range of values of any parameter to characterize a feature of the invention. The example must confirm with experimental data or theoretical justification the possibility of implementing the purpose of the invention with achieving a technical result using at least one particular form of implementation of a feature expressed by a general concept, or one parameter value included in the range of parameter values.

Moreover, if the applicant uses an interval of values of any parameter, then the description must provide a sufficient number of examples, for example, at the extreme values of the interval and on average, to confirm the possibility of implementing the purpose with obtaining the technical result specified by the applicant in the entire declared interval.

Why would an applicant contact a patent attorney?

In the absence of at least one of the listed information/data within the framework of the substantive examination of the application, the expert sends to the applicant a request for additional materials indicating such deficiencies, providing links to regulatory legal acts and an invitation to submit additional materials within three months from the date of sending the request. The request for additional materials also provides a justification for the insufficiency or incorrectness of the examples presented in the description, including taking into account information from scientific and technical literature. There can be several requests, in practice one or three.

Thus, if the applicant has not thoroughly worked out his idea in advance, and has not provided the missing information requested by the expert (examples, experimental data) within the prescribed period, then such an application will be considered withdrawn, or if the applicant responds to the request formally, without removing all objections - he will be denied a patent.

In connection with the above, inexperienced applicants who are faced with the patenting of inventions for the first time are recommended to contact specialists - patent experts or patent examiners, who will first check the materials of his application for sufficiency of disclosure and give him appropriate recommendations if it is necessary to supplement the description, which will help the applicant quickly understand the rules patent laws, which regularly change to make applications more stringent, will significantly reduce the time it takes to obtain a patent.