The concept of patent law: basic principles and norms

11.05.2017

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What is protected by patent law, where and how to apply for it, and what criteria the objects of patent rights must meet.

1. Patentability conditions
2. What do patent rights include?
3. Registration of inventions, models and samples
4. Patent protection

Patent rights are intellectual rights to:

• inventions, that is, solutions to technical problems related to a material object;
• utility models, that is, intangible objects related to devices;
• industrial designs, that is, the design, appearance and ergonomic properties of the product.

There are three types of patent rights:

• exclusive rights (aka commercial);
• right of authorship (that is, the right to be called the author of an invention, model, sample);
• other rights (for example, the right to patent).

Concept of patent law

Patent law is understood as a system of legal norms guaranteed by the state and regulating property and non-property relations associated with industrial property.
Industrial property is inventions, utility models, industrial designs. In addition to these objects, intellectual property includes copyright and related rights, rights to means of individualization (trademarks, trade names, appellations of origin of goods and geographical indications), know-how and selection achievements.

Patent law serves to secure copyright in industrial property and protect it from illegal use by others without the permission of the patent owner. Legitimate technology exchange can be carried out on a contractual basis.

Patent law has the following main features:

What does Chapter 72 of the Civil Code of the Russian Federation say?

As mentioned above, Chapter 72 of the Civil Code of the Russian Federation is considered the main source of patent law. It consists of 8 paragraphs.

The fundamental provisions of patent law in the Civil Code of the Russian Federation are given in §1. It reveals the essence of patent rights and introduces the concept of a patent. Also, this part of the Civil Code of the Russian Federation includes norms that define objects subject to patenting and explain who may be the author of these objects.

The next two paragraphs are devoted to more detailed regulation of patent rights. They determine who owns the right to register a patent, regulate the procedure for using and disposing of an object that is the result of intellectual work, as well as exclusive rights to it, and establish the validity period of patent rights.

§4 discusses issues related to the creation of objects in connection with the work of their developer or the performance of certain work in accordance with the terms of the contract.

Next are two paragraphs that reveal the specifics of obtaining, terminating and reinstating a patent.

§§7-8 addresses issues related to the protection of the rights of creators of objects and patent holders. The legal status of inventions that are considered secret is also determined.

Patent law system

The main features of the modern patent law system developed already at the end of the 19th century and were enshrined in the Paris Convention in 1886. Compliance with its rules is a mandatory condition for the countries participating in the convention, including Russia.

The features of this system are:

• Territorial action. There is no single “international patent”. Protection is provided only on the territory of a certain state. However, it is possible to register a patent in several countries at once under international agreements.
• Urgent nature - protection is provided only for a certain period, after which the information becomes public domain. The duration of protection depends on the type of intellectual property and the specifics of the national legislation of the country in which it is provided. For the Russian system, these deadlines are indicated later in the article.
• Prohibitive nature – you cannot use a technical solution without the consent of the copyright holder.
• Right of priority - an earlier date of filing an application with the patent office provides an advantage for the further use of a technical solution. However, there is also a right of prior use. If the development was used in good faith on the territory of Russia by another manufacturer before its registration, then the right to further free use is retained.

What types of activities can you buy a patent for?

Any that are not prohibited.

According to the new rules, only these types of activities are not covered by a patent.

1. Activities under simple partnership agreements or property trust management agreements.
2. Production of excisable goods, extraction and sale of minerals.
3. Wholesale trade and trade under supply contracts.
4. Freight and passenger transportation, if you own or rent more than 20 vehicles.
5. Securities transactions, credit and financial services.

The Tax Code lists 80 types of activities permitted for PSN. These include catering and retail trade, various services to the population, car services and parking lots, hotels, etc.

But the final decision remains with the regional authorities. They can either expand this list or shorten it. To find out what activities you can buy a patent for in your region, check your local law. Open the “Patent taxation system” section on the website of the Federal Tax Service of Russia, and select your subject of the Russian Federation in the upper left corner. At the end of the section there will be links to laws in your region.

Attention! In connection with changes to the patent system and the abolition of UTII, regional laws will be updated and supplemented. Stay tuned for changes.

Subjects and objects

The main components of the patent system are subjects and objects.

• Subjects include
• Objects of patent law

• The author is a citizen who directly developed a new technical solution in the process of creative work. There may be several authors (co-authors). Those persons who provided purely technical or organizational support in the creation of a new solution cannot be authors.
• Patent holders are individuals or legal entities who can dispose of exclusive rights to a technical solution. Both the authors and the copyright holder are indicated in the application and in the patent itself. A patent is issued to the copyright holder.
• Patent license holders and assigns. Property rights to a patent (but not the right of authorship) can be inherited.

• An invention is a technical solution in any field of activity (method, process, device, design, substance, strain, cell culture).
• A utility model is a constructive technical solution. Utility models, as an object of patent law, do not exist in all countries. In Russia they are called “small inventions”, since protection is provided only to the design or device; the technical solution is subject to less stringent requirements, and a patent is issued in a shorter period of time. If you plan to enter the international market in the future, then registration of the invention is preferable.
• Industrial design – a technical solution relating only to appearance, design, ergonomics (including for handicrafts, website design, packaging)
• Breeding achievements – new plant varieties and animal breeds.

How the patent will change in 2021

On November 23, the President signed Federal Law No. 373 on changes to the patent taxation system. The amendments come into force on January 1, 2021.

The point of the changes is to make the transition from UTII to patent convenient.

To achieve this, we expanded the list of activities at PSN and increased the maximum area of ​​the hall for retail and catering from 50 to 150 square meters. And most importantly, they allowed the cost of a patent to be reduced by insurance premiums.

Entrepreneurs will not have to rack their brains with choosing a tax regime. Almost everyone who works on imputation will be able to transfer their business to a patent from January 1, 2021.

Sources of patent law

The main source (or legal act) of patent law in Russia is Part 4 of the Civil Code.

Patent law is governed by the following international regulations:

• The Paris Convention for the Protection of Industrial Property is a key international agreement. It enshrines the provision of equal rights to protect industrial property for both residents and citizens of other states; the possibility of using the priority of an application in any of the countries party to the agreement to obtain a patent in other countries; independence of patents - obtaining a patent in one country does not oblige the issuance of a patent in another state due to the peculiarities of national legislation.
• International Patent Cooperation Treaty PCT, which allows you to file one application for patent registration in several participating countries (at the applicant’s choice).
• The PLT Patent Law Treaty, which simplifies the electronic filing of applications and procedures in national patent offices.
• The Eurasian Patent Convention is a regional patent agreement to which Russia and 8 CIS countries (former union republics) are parties. The Eurasian patent is valid in the territory of all these states.
• International Convention for the Protection of New Varieties of Plants. The main purpose of this agreement is to protect the rights of plant breeders.
• the Locarno Agreement, which establishes a single international classification for industrial designs, and the Strasbourg Agreement for inventions and utility models.
• The Hague Agreement Concerning the International Registration of Industrial Designs.
• TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights). It contains standards for IP protection and prescribes sanctions for countries that violate these principles.
• Agreements between the government of the Russian Federation and a number of former Soviet republics on patent cooperation, simplification of interaction between patent offices (in particular, on the possibility of direct appeal to national patent offices).

On the territory of Russia there are several administrative regulations (AR) and rules of the Federal State Budgetary Institution FIPS (Rospatent) governing the procedure for interaction with the patent office. The main ones are listed in the table below.

Copyright and Patent Law (Key Differences)

The main differences between copyright and patent law are listed in the table below.

Industrial property objects

Legal protection as an industrial design includes a variety of products that are distinguished by a new and original appearance:

• Tools, devices;
• Cloth;
• Food products;
• Packaging, containers;
• Household items;
• Vehicles;
• Dishes;
• Construction materials;
• Souvenirs, toys;
• Emblems, labels;
• Furniture;
• Printed products;
• Interface of web resources.

A closed list of objects for which legal protection is not provided can be found in clause 5 of Article 1352 of the Civil Code of the Russian Federation.

Types of patent rights

Patent rights can be divided into several types according to the following criteria:

• By type of civil legal relationship:
• Personal non-property rights belonging to all developers of a new technical solution: the right of authorship, that is, recognition as the author;
• the right to a name, that is, using a patent under your own name or not indicating it in the application.

What taxes are paid on a patent and what are not?

PSN does not pay personal income tax (it is replaced by the cost of the patent), VAT and property tax that the individual entrepreneur uses in business activities.

There are exceptions.

1. Only income from patent activities, for example, income from trading in a store, are exempt from personal income tax. If an individual entrepreneur sold an apartment or received other income, this no longer falls under the PSN.
2. VAT will have to be paid if an entrepreneur imports goods from abroad.
3. If the property is valued at cadastral value and is included in a special list of local authorities, tax on such property must be paid.

If an individual entrepreneur has transport, land, or uses water resources, property taxes must be paid.

If there are employees, insurance premiums must be paid for them as usual and personal income tax must be withheld. Individual entrepreneurs also need to pay insurance premiums for themselves.

Conditions for protectability (patentability) of objects of patent rights

The necessary conditions for obtaining a patent for an invention are:

• Industrial applicability (positive effect), that is, the possibility of practical use of the proposed technical solution. The word “industrial” does not limit the scope of application; it can be any area of ​​human activity. This criterion is checked by Rospatent experts first of all. Technical solutions of the “perpetual motion machine” type and others that contradict the laws of nature do not satisfy the condition of protectability. On the other hand, this requirement is one of the “softest” for an invention, since it is almost always possible to find an application for any innovation. Actual use at the time of application is not required, only theoretical possibility is sufficient.
• The novelty of the technical solution as of the date of filing the application. In Russia, inventions are subject to the requirement of world novelty, that is, information should not be publicly available in any country in the world and in any language. Disclosure of data by the inventor himself is allowed no more than 6 months before filing the application (novelty benefit), otherwise the novelty requirement is considered not to be met. To check this, a patent search is conducted before filing an application.
• Inventive level. This condition of protectability is the most controversial, as it depends on the subjective assessment of the expert. The proposed technical solution should not be too simple and should not follow in an obvious way from the existing state of the art for a specialist in this field of activity. Determining inventive step also requires preliminary patent research. Most often, refusal at the substantive examination stage is associated precisely with non-compliance with this condition. You can challenge the expert’s decision by providing reasoned arguments in favor of your creative idea.

Utility models are subject to only the requirements of novelty and industrial applicability, since their contribution to the state of the art is considered less significant. For the same reason, the procedure for issuing patents for utility models is simpler and is subject to lower government duties.

Industrial designs are subject to the condition of world novelty and originality of essential features of a technical solution. Since this category of industrial property is associated with the appearance of products, verification of coincidence or complete identity is carried out using previously registered (declared) industrial designs, trademarks, service marks, inventions and utility models, which constitutes a significant sample size.

Why RTM Group?

• The profile of RTM Group is conducting examinations in the field of IT and cybersecurity
• Questions about the legality of a particular activity are an integral part of the work of RTM Group lawyers
• We have licenses: License of FSTEC of Russia for activities related to technical protection of confidential information
• License of FSTEC of Russia for activities related to the development and production of means of protecting confidential information
• License of the FSB of Russia to work with cryptographic protection tools

Rights and obligations of the patent owner

In addition to the above rights, the patent holder is provided with the following opportunities from the state:

• the right to apply for a patent;
• the right to transfer exclusive rights to other persons;
• the right to use your technical solution by any means not prohibited by law (production, sale, storage and other methods of introduction into civil circulation, inclusion in the authorized capital);
• the right to prohibit the use of a patented technical solution by others without the consent of the patent owner;
• the right to receive compensation for illegal use of a patent for profit (for commercial purposes).
• The responsibilities of the copyright holder include:
• compliance with generally accepted norms and rules of competition, requirements No. 135-FZ “On Protection of Competition”;
• timely payment of state fees for registering a patent and maintaining it in force (annually, for inventions and industrial designs - starting from the third year from the date of filing the application, for utility models - from the first year);
• practical use of patented technical solutions.

What to do with the cash register when switching to PSN

If you already have a cash register and used it for trading in a different mode, you need to change the tax regime in the settings and generate a report on changes in registration parameters. It is important that the receipt reflects the current taxation system, otherwise there will be a fine.

You need to change the settings before you issue the first check using the new tax system. For example, if you start work in the new year on January 11, then already on January 11, before the opening of the shift, the new tax regime must be indicated at the cash desk.

Protection of inventive rights in the Russian Federation

In case of violation of exclusive rights to industrial property, sanctions of 3 types are imposed:

• There are 2 types of compensation provided for by the Civil Code (at the choice of the copyright holder): in the amount of 10 thousand - 5 million rubles; in the amount of double the price for the lawful use of the patent.
• Under the criminal code, if the illegal use of a patent caused damage on a large scale: a fine of up to 250 thousand rubles. or in the amount of the offender’s income for 18 months; compulsory (up to 480 hours) or forced (up to 2 years) work. When a crime is committed by a group of persons: a fine of 100-300 thousand rubles, in the amount of income for up to 2 years; forced labor (up to 5 years); arrest for 6 months or imprisonment for up to 5 years.
• Fines in favor of the state under the administrative code: physical. persons - 1500-2000 rubles, officials - 10-20 thousand rubles, legal entities. persons – 30-40 thousand rubles. These fines may also be imposed when the essence of a patent is disclosed before its registration without the consent of the author (applicant), when authorship is assigned or when it is forced to do so. Administrative and civil penalties may be applied simultaneously to the violator.

Protection of exclusive rights is carried out in court. An extrajudicial (administrative) procedure is provided for challenging decisions of Rospatent when registering a patent. To do this, you need to contact the Chamber of Patent Disputes.

Legal protection for technical solutions is provided only if they have successfully passed state registration with Rospatent. Until this point, third parties can use them without adverse consequences. “Provisional” protection is provided from the date the application is filed until the patent is issued.

Registration of patent rights (Functions of a patent and the procedure for obtaining it)

• Patent Search
• Submitting an application to Rospatent
• Application stages

Patent search to check the conditions of patentability.

This stage is carried out at the request of the applicant. You can make it yourself or order it from the patent office. The advantages of the latter method are that patent attorneys have special tools for conducting searches, have access to full-text patents of the Federal State Budgetary Institution "FIPS" (the search system operates on a paid basis), to international patent systems (to determine world novelty), research is carried out with using a methodology based on international classification, and the experience of specialists allows us to reduce search time. The patent and non-patent information on which it is conducted represents a huge amount of data. Thus, according to statistics from WIPO (World Intellectual Property Organization), in 2021 alone, 3.2 million applications for inventions were filed worldwide.

Drawing up an application, collecting a package of documents, submitting them to Rospatent.

Sample applications are posted on the website of the Federal State Budgetary Institution “FIPS”. The application must be accompanied by graphic materials that allow you to fully disclose the essence of the technical solution, formula, description, abstract, payment document confirming payment of the state fee for registration of the application and formal examination, consent to the processing of personal data for all authors, translation of documents into Russian ( for foreign applicants), power of attorney for the applicant’s representative. Applications for citizens of other countries (except for CIS countries with which mutual cooperation agreements have been concluded) must be submitted only through a patent attorney. You can submit an application in the traditional “paper form” or through electronic services. In the latter case, a preferential rate of duties is established - 30% less. Our patent office has customized workstations for filing an electronic application certified with an enhanced digital signature.

The stages that an application goes through at the patent office:

1. Publication of the application in the official bulletin posted on the official website of Rospatent.
2. Formal examination – checking the correctness and completeness of application documents.
3. Substantive examination - checking compliance with the requirements of patent legislation (Articles 1350, 1351 of the Civil Code of the Russian Federation) and the regulations of the Federal State Budgetary Institution "FIPS", links to which are given above. If inconsistencies are identified, patent office employees send the applicant a notification about the need to correct the documents within a specified time frame (usually no more than 2 months).
4. Making a decision based on the results of the examination on the issue of a patent or refusal to issue it.
5. Publication of information about the patent in the official bulletin.
6. Issuance of a patent.

CPU Automated control systems and industrial safety

Teacher Gryadunov I.M.

1. The concept of a patent

A patent (Latin brevet) is a document confirming the exclusive right of the patent holder to an invention, utility model or industrial design. A patent also certifies priority and authorship. The validity period of a patent depends on the subject of patenting and ranges from 8 to 20 years. A patent is issued by an authorized government body; in the Russian Federation, such body is Rospatent.

The patent performs the following functions:

— establishes priority for the object of patent law;

— establishes personal non-property rights of the subject of patent law;

— certifies exclusive rights.

Protection of intellectual rights for an invention or utility model is provided on the basis of a patent to the extent determined by the claims of the invention or, respectively, the utility model contained in the patent. The description and drawings may be used to interpret the claims and utility model claims.

Protection of intellectual rights to an industrial design is provided on the basis of a patent to the extent determined by the totality of essential features of the industrial design, reflected in the images of the appearance of the product contained in the patent for the industrial design.

The priority of an invention, utility model or industrial design is established by the date of filing the application for the invention with the federal executive body for intellectual property. When an application is filed for which priority is claimed, the earlier application is considered withdrawn. Priority cannot be established by the filing date of an application for which an earlier priority has already been claimed.

The priority of an invention, utility model or industrial design can be established by the date of filing the first application for an invention, utility model or industrial design in a state party to the Paris Convention for the Protection of Industrial Property (convention priority), subject to the filing of an application with the federal executive body for intellectual property for an invention or utility model within twelve months from the specified date, and applications for an industrial design - within six months from the specified date. If, due to circumstances beyond the control of the applicant, the application for which convention priority is claimed could not be filed within the specified period, this period may be extended by the federal executive body for intellectual property, but not more than for two months.

If during the examination it is established that different applicants have filed applications for identical inventions, utility models or industrial designs and these applications have the same priority date, a patent for an invention, utility model or industrial design can be issued only for one of such applications to the person determined by agreement between the applicants.

2. Subjects of patent law

The terms “subjects of patent law” and “subjects of patent rights” should be distinguished. The first is broader and, along with holders of exclusive and other property and personal non-property rights to inventions, utility models and industrial designs, also includes other persons involved in patent legal relations - Rospatent and representatives in patent matters. The subjects of patent rights are the authors of inventions, utility models and industrial designs, patent holders, as well as other persons who acquire certain patent rights by law or contract.

Authors of inventions

The authors of inventions, utility models and industrial designs are recognized as individuals whose creative work has created the corresponding results of intellectual activity (Article 1347 of the Civil Code of the Russian Federation).

Individuals who have not made a personal creative contribution to the creation of an object of industrial property, who have provided the author (authors) only with technical, organizational or material assistance, or who have only contributed to the registration of rights to it and its use, are not recognized as authors.

Article 1347 establishes the presumption of authorship: a person indicated as an author in an application for a patent is considered to be the author of an invention, utility model or industrial design, unless proven otherwise.

If several individuals participated in the creation of an invention, utility model or industrial design, all of them are considered co-authors. According to paragraph 2 of Art. 1348 of the Civil Code of the Russian Federation, each of the co-authors has the right to use the invention, utility model or industrial design at its own discretion, unless otherwise established by agreement between them, also in accordance with clause 4 of Art. 1348 each of the co-authors has the right to independently take measures to protect their patent rights. At the same time, income from the joint use of an invention, utility model or industrial design must be distributed equally among the co-authors, and the disposal of exclusive rights jointly, unless otherwise established by agreement between the co-authors (clause 3 of Article 1348 and clause 3 of Article 1229 of the Civil Code of the Russian Federation) . Disposal by co-authors of the right to obtain a patent is possible only jointly (clause 3 of Article 1348).

Patent owner

The patent holder is the person to whom a patent for an invention, a patent for a utility model or a patent for an industrial design has been issued. The right to obtain a patent for an invention, utility model or industrial design initially belongs to its author (Article 1357 of the Civil Code of the Russian Federation). Such a right may pass to another person (legal successor) or be transferred to him in cases and on the grounds established by law, including through universal succession, or under a contract, including an employment contract.

The law allows for the possibility of issuing a patent to several persons (clause 4 of article 1358 of the Civil Code of the Russian Federation).

The right to obtain a patent for an invention, utility model, or industrial design created by an employee (author) in connection with the performance of his job duties or a specific assignment of the employer belongs to the employer (Article 1370 of the Civil Code of the Russian Federation).

The Russian Federation and other public legal entities have an exclusive right to objects of industrial property if such right is transferred to them in the manner prescribed by law, for example, by virtue of inheritance. Relations arising during the creation of inventions, utility models and industrial designs when performing work under a state or municipal contract are regulated by Art. 1373 Civil Code of the Russian Federation.

In Art. 1371 and 1372 of the Civil Code of the Russian Federation contain provisions on the distribution of rights to obtain a patent between the contractor (performer) and the customer in cases where an invention, utility model or industrial design was created during the performance of work under a contract or a contract for research, development and development or technological work.

Other subjects of patent law include individuals and legal entities acquiring patent rights on the basis of a law or an agreement on the alienation of an exclusive right or a license agreement, in particular, the legal successors of authors and patent holders who acquired patent rights by inheritance, as a result of the reorganization of a legal entity or on the basis of a patent alienation agreement.

Applying for a patent is a fairly complex process. Contacts with Rospatent require special knowledge not only in the field of legal regulation of intellectual property relations, but also in the field of preparation of documents included in the application. A special category of representatives in patent cases are patent attorneys certified by Rospatent and entered into a special state register. The activities of patent attorneys are regulated by the Federal Law of December 30, 2008 No. 316-FE “On Patent Attorneys”.

In ch. 69 of the Civil Code of the Russian Federation, which contains general provisions on rights to the results of intellectual activity and means of individualization, the legislator included one article dedicated to patent attorneys - Art. 1247, which generally preserves the previous rules on the status of a patent attorney, but raises the legal level of such rules to the status of federal law. In accordance with paragraphs 1 and 2 of this article, business with the federal executive body for intellectual property can be carried out by the applicant, copyright holder, or other interested party independently, or through a patent attorney registered with the specified federal body, or through another representative.

Citizens permanently residing outside the territory of the Russian Federation and foreign legal entities conduct business with the federal executive body for intellectual property through patent attorneys registered with the said federal body, unless an international treaty of the Russian Federation provides otherwise.

If an applicant, copyright holder, or other interested party conducts business with the federal executive body for intellectual property (Rospatent) independently or through a representative who is not a patent attorney registered with the said federal body, they are obliged, at the request of this body, to provide their address on the territory of the Russian Federation for correspondence .

The powers of a patent attorney or other representative are certified by a power of attorney issued by the applicant, copyright holder or other interested party.

Article 1247 (clause 3) establishes only one requirement for a patent attorney: a citizen of the Russian Federation permanently residing in Russia can be registered as a patent attorney. Other requirements for a patent attorney, the procedure for his certification and registration, as well as his powers in relation to conducting cases related to the legal protection of the results of intellectual activity and means of individualization are established by the above-mentioned law on patent attorneys.

3. Completing and submitting an application

An invention, utility model or industrial design that meets all the conditions for patentability becomes the object of exclusive rights only after their state registration and the issuance of a patent. Until this moment, they are not subject to legal protection and can be used by third parties without any adverse consequences for them. Registration of patent rights consists of the following stages:

1. drawing up and submitting an application for a patent to Rospatent. The application is submitted by the author, employer or their legal successors to the Patent Office (Federal Institute of Industrial Property). Application m.b. filed directly, or through a patent attorney registered with the Patent Office (for foreigners, filing an application through a patent attorney is mandatory).

An application for a patent must comply with the requirement of unity of invention, utility model or industrial design - relate to one invention (utility model, industrial design) or a group of inventions (utility models, industrial designs) interconnected so much that they form a single inventive (creative) ) intention.

An application for a patent for an invention (utility model) must contain: 1) an application for the grant of a patent indicating the author of the invention and the person in whose name the patent is sought, as well as the place of residence or location of each of them; 2) a description of the invention, disclosing it from completeness sufficient for implementation; 3) claims expressing its essence and entirely based on its description; 4) drawings and other materials, if they are necessary to understand the essence of the invention; 5) abstract.

An application for a patent for an industrial design must contain slightly different documents: 1) an application for a patent indicating the author of the industrial design and the person in whose name the patent is sought, as well as the place of residence or location of each of them; 2) a set of images of the product giving a complete detailed picture of the appearance of the product; 3) a drawing of the general appearance of the product, an ergonomic diagram, a configuration card, if they are necessary to reveal the essence of the industrial design; 4) a description of the industrial design; 5) a list of essential features of the industrial design.

The central document of the application is a description of the development, which is drawn up according to a certain scheme and reveals the essence of the solution.

The application is accompanied by a document confirming payment of the established patent fee, or a document confirming the grounds for exemption from payment of the patent fee, or a reduction in its amount, or a deferment of its payment. The applicant has the right at any time before registration of an invention, utility model or industrial design to withdraw the application submitted by him. He may make corrections and clarifications to the application documents without changing the essence of the claimed invention, utility model or industrial design before a decision is made on this application to issue a patent or to refuse to issue a patent.

Application filing date - the date of receipt by Rospatent of an application containing an application for a patent, a description of the invention and drawings, if there is a reference to them in the description, and if these documents are not submitted simultaneously, the date of receipt of the last of the documents.

2. Consideration of the application by Rospatent. First, a formal examination is carried out, where the application is checked for compliance with the unity requirement, the presence of the necessary documents and compliance with the requirements imposed on them.

The result of a formal examination can be one of three decisions. If an application is submitted for a development related to patentable objects, the application includes all the necessary documents and these documents are correctly executed, a positive decision is made.

For different objects of industrial property, it will have different meanings: applications for an invention and industrial design are accepted for further consideration, and an application for a utility model is considered satisfied.

A positive decision of the formal examination of an application for a utility model is the basis for issuing a title of protection for the utility model (the so-called spontaneous patenting procedure).

If, as a result of a formal examination, it is determined that the application is for a proposal that is not related to patentable subject matter, a decision is made to refuse to issue a patent.

If the application contains defects in the execution of individual documents, etc., the applicant is given the opportunity to submit corrected or missing documents within 2 months (if there is no response to the request, the application is considered withdrawn).

Applications for inventions and industrial designs that have successfully passed the formal examination are subject to a substantive examination, during which all the criteria for protection are checked for the development.

To submit an application for an invention for substantive examination, a petition from the applicant is required, which can be filed within 3 years from the date of filing the application; in relation to an application for an industrial design, such a petition is not required.

The result of the substantive examination can be either a refusal to issue a patent or a decision to issue a patent. In case of disagreement with the decision to refuse to issue a patent, the applicant may file a corresponding objection to the Chamber of Patent Disputes. The general period for filing objections is 6 months from the date of receipt of such a decision.

3. Issuance of a patent. Rospatent enters information about an invention, utility model or industrial design into the State Register. register of inventions of the Russian Federation, State. register of utility models of the Russian Federation or State. the register of industrial designs of the Russian Federation and issues a patent.

Information on the issuance of a patent must be published in the official bulletin of Rospatent.

The publication is subject to information about the name of the author (provided that he did not refuse to be mentioned) and the patent holder, the name and formula of the invention or utility model, or a list of essential features of the industrial design and its image.

After such publication, application documents become open for review.

Registration of patent rights for secret inventions.

Applications for a patent for secret inventions with a high degree of secrecy (“top secret”, “special importance”), as well as inventions related to weapons, military equipment, methods and means in the field of intelligence, counterintelligence and operational investigative activities, are submitted depending on their thematic affiliation, to the executive authorities authorized by the Government of the Russian Federation. Other applications for secret inventions are sent to the Patent Office of the Russian Federation and are considered by it in compliance with the requirements of the legislation on state secrets.

Consideration of applications for secret inventions is carried out in principle according to the same procedure. Peculiarities. Firstly, for obvious reasons, information about the application is not published for 18 months after the date of its submission; secondly, in a special procedure established by the authorized body, objections to the decision made on the application are considered; thirdly, information about secret inventions entered into the State Register of Inventions is not published.

4. Consideration of the application at the patent office

Applications received by the Patent Office are registered and submitted for examination. The rules for conducting examination of applications for an invention, utility model and industrial design differ significantly from each other. If applications for inventions and industrial designs are checked both from the point of view of the correctness of their preparation and from the point of view of their essence, then when examining applications for utility models, verification of the compliance of the declared solution with the patentability criteria established by law is not carried out. In turn, the rules for examining applications for inventions and industrial designs also do not coincide. If in relation to applications for industrial designs that have successfully passed the formal examination, a substantive examination is carried out without any exceptions or additional conditions, then applications for inventions are subject to such examination only at the special request of the applicant or third parties. Thus, the new Patent Law of the Russian Federation establishes: a) a verification system for examining applications for a patent for an industrial design; b) deferred (delayed) system of examination of applications for a patent for an invention; c) an on-site (registration) system for examining applications for the issuance of a utility model certificate. Each of these patenting procedures has its own characteristics, which will be reflected in the further discussion.

All patent applications, no matter what subject of industrial property they concern, are checked in relation to their compliance with established formal requirements. This examination, which is called formal or preliminary, is carried out according to uniform rules, enshrined in paragraphs. 1-5 Article 21 of the Patent Law of the Russian Federation and the developed Rules for the preparation, submission and consideration of applications for the issuance of documents of protection. During the formal examination of the application, the following is checked: a) the availability of the necessary documents; b) the correctness of their preparation; c) the relevance of the declared proposal to objects that can be recognized, respectively, as inventions, utility models or industrial designs; d) compliance with the requirement of unity of invention, utility model or industrial design; e) whether additional materials, if they are presented, change the essence of the declared object of industrial property and whether the established procedure for their presentation is observed; f) the correct classification of an invention or utility model according to the IPC and an industrial design according to the IPC; g) compliance with the procedure for filing an application through a patent attorney, including the presence and correct execution of a power of attorney certifying the powers of the patent attorney. In addition, the formal examination usually establishes a priority date for the application, unless the applicant claims an earlier priority than the date of receipt of the underlying materials.

As a general rule, a formal examination of an application is carried out after two months from the date of its receipt by the Patent Office (clause 1 of Article 21 of the Patent Law of the Russian Federation). Such a delay in conducting the examination is established in the interests of the applicants, who, in accordance with Art. 20 of the Patent Law of the Russian Federation, within two months, they have the right to introduce corrections and clarifications into the application materials without changing the essence of the claimed invention, utility model, industrial design and provided that these corrections or clarifications are not aimed at eliminating violations of the established requirements for application documents. However, at the request of the applicant, expressed in his written request to the Patent Office, the formal examination may begin before the expiration of the specified two-month period. However, in this case, from the moment of filing such a petition, as a general rule, the applicant is deprived of the right to correct and clarify application documents on his own initiative. However, in relation to applications for inventions, applicants who filed this petition, as well as those who missed the two-month deadline for correcting and clarifying the application, retain this opportunity until a decision is made based on the results of the substantive examination and subject to payment of a special fee in the amount of 0.5 minimum wage ( Part 2 of Article 20 of the Patent Law of the Russian Federation).

If the applicant submits additional materials on the application, during the formal examination it is checked whether they change the essence of the claimed development. Additional materials in the part that change the essence of the claimed development, for example, containing new features included in the formula of the invention (utility model) or a set of essential features of an industrial design, are not taken into account when considering the application and can be submitted by the applicant as an independent application.

The Patent Law of the Russian Federation does not establish a specific period during which the formal examination must be completed, which should be recognized as an omission of the legislator. In practice, the average time for consideration of accepted applications at the stage of formal examination is 1.8 months for inventions and about a month for industrial designs1.

Based on the results of the formal examination, one of the following decisions can be made. If an application is submitted for a development related to patentable objects, the application includes all the necessary documents and these documents are correctly executed, a positive decision is made. This means that applications for an invention and industrial design are accepted for further consideration, and an application for a utility model is considered satisfied. The applicant is notified of the positive decision of the formal examination and the establishment of priority in accordance with the rules established by law. If the applicant violates the requirement of unity of development, he is invited, within two months from the date of receipt of the relevant notification, to inform which of the solutions contained in the application should be considered, and, if necessary, make clarifications in the application documents. Other decisions included in the materials of the initial application may be formalized as separate applications. If the applicant, within two months after receiving a notice of violation of the unity requirement, does not inform which of the proposals needs to be considered and does not submit updated documents, the object specified in the formula first is considered.

If, as a result of a formal examination, it is determined that the application is for a proposal that does not relate to patentable subject matter, a decision is made to refuse to issue a patent. Before a decision is made, the applicant may be sent a request with arguments that may serve as a basis for refusal to issue a patent, and links to relevant sources of information, if necessary, and a proposal to refute the arguments given. Refusal to issue a patent on this basis is a new provision of Russian patent law, since previously such an application was simply not accepted for consideration. An objection to this decision may be filed with the Appeals Chamber of the Patent Office within two months from the date of its receipt by the applicant. A fee of 0.3 minimum wages is charged for filing an objection. The objection must be considered by the Appeals Chamber within two months from the date of its receipt. The decision of the Appeals Chamber, in turn, can be appealed to the Higher Patent Chamber of Rospatent upon payment of a fee in the amount of 0.2 minimum wages.

In the process of formal examination, the declared object of industrial property may be recognized as secret. In this case, the applicant is notified of the impossibility of providing him with legal protection in accordance with the Patent Law of the Russian Federation.

For an application completed in violation of the requirements for its documents, the applicant is sent a request with an offer to submit corrected or missing documents within two months from the date of its receipt. The grounds for the request may be: a) the absence in the application materials of any documents listed in Art. 16-19 of the Patent Law of the Russian Federation; b) identification by the body carrying out the examination of the need to introduce clarifications into the application. The need to clarify the application may be, in particular, due to:

1) the presence of such shortcomings in the design and content of documents that make it impossible to use these documents in accordance with their purpose; 2) the absence in the documents of the details and signatures provided for by the current rules; 3) establishing that the application was filed through a patent attorney who is not registered with the Patent Office of the Russian Federation, etc.

Corrections and additions to the application must be made by the applicant within two months from the date of receipt of the request. At the request of the applicant, this period may be extended subject to payment of a special fee. The specified fee is charged for each month of renewal:

up to 6 months from the date of expiration of the period established for responding to the examination request - in the amount of 0.2 minimum wages;

from 6 to 12 months from the date of expiration of this period - in the amount of 0.5 minimum wage;

more than 12 months from the date of its expiration - in the amount of 1 minimum wage.

A document confirming payment of the fee is submitted along with the application for extension of the established period.

If the applicant does not submit the requested materials or a request to extend this period within the established period, the application is considered withdrawn. The applicant has the right to withdraw his application for an invention, utility model or industrial design on his own initiative. To do this, he just needs to submit a written application to the Patent Office. The applicant is notified that the request has been granted, and the paperwork on the application is terminated.

The completion of a formal examination with a positive result for applications for patents for an invention, utility model and industrial design has different legal consequences. In relation to utility model applications, this serves as the basis for a decision to issue a certificate. Applications for industrial designs are submitted for substantive examination. As for applications for inventions, their further processing is carried out according to the rules of deferred examination. The essence of these rules boils down to the following. After 18 months from the date of receipt of an application that has passed formal examination with a positive result, the Patent Office publishes information about the application, unless it is withdrawn. The composition of published information is determined by the Patent Office. After publication of information about an application, any person has the right to familiarize itself with its materials. At the request of the applicant, the Patent Office may publish information about the application earlier than the specified period.

From the date of publication of information about the application until the date of publication of information about the grant of a patent, the claimed invention is granted temporary legal protection to the extent of the published formula. The nature and content of the applicant’s rights during the period of temporary legal protection of the invention will be discussed in detail below - in the section devoted to the patent form of protection. Here we just note that the maximum period of validity of this protection is three years. During this period, the applicant, as well as any third party, may submit a request to the Patent Office for an examination of the application on its merits. If the request for a substantive examination is not filed within the specified period, the application is considered withdrawn, and the temporary legal protection of the claimed invention is considered terminated.

The patent law of the Russian Federation provides both the applicant and any third parties with the right to request an information search to be carried out on an application for an invention that has passed a formal examination with a positive result to determine the level of technology, in comparison with which the novelty and inventive step of the declared proposal will be assessed. The introduction of this right into law has a double meaning. On the one hand, the results of an information search make it easier for the applicant to decide on the future fate of the application, as they give a clearer idea of ​​the prospects for its consideration. On the other hand, third parties are given the opportunity to better assess the patentability of the claimed solution and, based on this, determine their further actions, for example, acquiring rights to a patent, concluding an agreement with the applicant on the use of the development during the period of its temporary legal protection, using it without the permission of the applicant and etc.

The information search does not stop and is carried out to the end in full, even if during the search in the prior art a means of the same purpose is discovered, characterized by features identical to all the features of the invention for which the search is being carried out.

An information search is carried out and a search report is sent to the person who filed the request for its conduct within four months from the date of receipt of the request, unless the application is withdrawn on the date of receipt of the request, or before the search report is sent.

It should be noted that, at the request of the applicant and third parties, an information search can also be carried out on an application for a utility model (Clause 3, Article 23 of the Patent Law of the Russian Federation). For the issuance of a utility model certificate, the results of this search formally have no significance, since the title of protection in this case is issued without checking the application on its merits. The purpose of this search is to clarify whether the actual utility model meets the patentability criteria established by law, i.e. How reliable is the document of protection issued for her? The specified information search is carried out subject to payment at the established tariff, is carried out on the basis of clause 18 of the Rules for drawing up, filing and consideration of an application for a utility model certificate and practically coincides with the information search carried out on an application for a patent for an invention.

An important provision of Russian patent legislation is the right of the applicant to convert an application for an invention into an application for a utility model and vice versa. In accordance with Art. 28 of the Patent Law of the Russian Federation, a filed application for an invention can be converted into an application for a utility model by filing an appropriate application before the publication of information about the application. Conversion of an application for a utility model into an application for an invention is possible before a decision is made on it to issue a certificate. With these transformations, the priority of the first application is retained. For converting an application for an invention into an application for a utility model, a fee in the amount of 0.1 minimum wage is charged, and for transforming an application for a utility model into an application for an invention - in the amount of 0.6 minimum wage.

Registration fees and deadlines

At each stage of consideration of the application (including for making corrections), it is necessary to pay state fees, the amount of which depends on the number of independent points in the formula and the type of industrial property. If a patent is refused, the fees are not returned to the applicant. A number of persons are given the opportunity to reduce payments (for disabled people, participants in military operations, researchers).

Information on service costs and terms

The cost of services and the amount of state fees depends on the number of countries, classes of the International Classification of Standards and the type of trademark

Accelerated patent registration is provided within 2 months as part of an additional fee. The amount of additional payments in this case is 94.4 thousand rubles. for inventions and utility models (according to 3 IPC classes), 47.2 thousand rubles. for industrial designs (1 class MKPO).

Services for you

Utility model patent

— The difference between an invention and a utility model — Validity period of a utility model patent — Why RTM Group — Order a service for registration of a utility model patent — Cost of service for registration of a utility model patent

Registration of a patent for the site

— Registration of a patent for a website — Pre-trial blocking of sites — Domain protection — Content protection — Protection of site code — Purchasing a website — Why RTM Group — Order a service for registering a patent for a website — Cost of a service for registering a patent for a website

Trademark registration

— Registration and renewal of a trademark — Checking the trademark for uniqueness — What are the types of trademarks? — Trademark registration: stages and deadlines — How much does it cost to register a trademark — Why RTM Group — Order a trademark registration service — Cost of a trademark registration service

Patent duration

The countdown is made not from the date of registration, but from the date of filing the application.

Extension of the term of protection is carried out at the request of the copyright holder and is also subject to fees.

Early termination and restoration of a patent

Termination of legal protection of a patent ahead of schedule is possible in the following cases:

• upon voluntary refusal upon application from the patent holder;
• in the absence of timely payment of the annual fee for maintaining the patent in force;
• when challenging the grant of a patent in the Chamber of Patent Disputes (a structural unit of the Federal State Budgetary Institution "FIPS"); Any interested parties who provide reasoned arguments about a violation of patent law can challenge the grant.

If the technical solution is not used by the patent holder or is not used enough, then the interested party may demand in court the assignment of rights under a compulsory license of a non-exclusive type (that is, the owner can enter into similar agreements with other persons). Usage refers to the supply of goods and services to the market. The minimum period of non-use is 4 years for inventions and industrial designs, and 3 years for utility models.

If protection was terminated due to non-payment of the fee, the patent can be restored within 3 years at the request of the copyright holder to Rospatent. In this case, it is necessary to pay a fee 2.5 times higher than the amount of the fee for the year in which the application is submitted. So, if the invention is already 15 years old from the date of filing the application, then the amount of the fee will be 30.5 thousand rubles, since the fee for maintaining in force for a 15-year-old is 12.2 thousand rubles.

Invalidation of a patent

Cases in which a patent may be invalidated are specified in Art. 1389 of the Civil Code of the Russian Federation. These include:

• Non-compliance with the conditions of protection listed above. Despite the fact that the technical solution is being examined by Rospatent, it is impossible to verify it absolutely reliably, including the facts of its open use in Russia and abroad.
• The essence of the technical solution is disclosed with insufficient detail in order to “bring it to life” by a specialist in this field of activity. This fact may be discovered when purchasing a license and putting the product into production.
• The priority dates for the same technical solution from different applicants coincide. This can happen if there is a mistake on the part of Rospatent experts. In this case, the issuance of a patent is possible only for one applicant if there is an agreement between them.
• When indicating as the author or copyright holder a person who is not such. This person can challenge the validity of the patent.

A patent may be invalidated for the above reasons during its entire validity period. Invalidity occurs from the moment the application for registration is submitted, and not from the date of issue of the title of protection.

Experts in registration of a patent for an industrial design

• Khomyakova Elena Sergeevna
• Goncharov Andrey Mikhailovich
• Kamakhin Oleg Vladimirovich
• Borisova Olga Viktorovna

Khomyakova Elena Sergeevna

Senior Legal Advisor
Experience: Professional experience in the legal field since 2003

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: Khomyakova Elena Sergeevna All experts

Goncharov Andrey Mikhailovich

Lawyer in the field of information security
Experience: Professional experience in the field of IT law since 2015

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: Goncharov Andrey Mikhailovich All experts

Kamakhin Oleg Vladimirovich

Criminal lawyer in the IT field
Experience: Professional experience in the legal field since 1993

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: Kamakhin Oleg Vladimirovich All experts

Borisova Olga Viktorovna

Lawyer in the field of information security
Experience: Professional experience in the legal field since 2001

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: Borisova Olga Viktorovna All experts

Judicial protection order

The specialized bodies responsible for resolving patent disputes are the Chamber of Patent Disputes and the Intellectual Property Rights Court (IPC). SIP refers to the system of arbitration courts.

If any disputes arise, please contact the following authorities:

• Challenging and establishing authorship and royalties for individuals and entrepreneurs, if the case is not related to economic activity, is carried out by courts of general jurisdiction.
• Objections to early termination of legal protection of patents and invalidation of patents – Chamber of Patent Disputes (pre-trial, administrative resolution of the dispute) or CIP (judicial resolution of the dispute).
• Challenging licenses and alienation agreements for patents, including selection achievements - SIP.
• Challenging the legality of indicating a person in a patent as a copyright holder - CIP.
• Challenging the issuance of a patent that does not meet the requirements of Art. 1389 of the Civil Code of the Russian Federation (discussed in the previous section), – Chamber of Patent Disputes.
• ·Illegal use of a patent in commercial activities and recovery of damages - arbitration courts.

The jurisdiction of the courts involved in the consideration of intellectual property cases is presented in the diagram below.

Based on Article 1250 of the Civil Code of the Russian Federation, the patent holder can legally demand the cessation of illegal production of a patented product. The violator may try to prove the legality of his actions, citing the fact that he is using the technical solution for personal purposes, without receiving commercial profit. In accordance with the legislation of the Russian Federation, the use of someone else's development is also permitted if it occurred in an emergency situation.

Patenting the results of creative activity is the most reliable way to protect them from illegal use, recognized throughout the world. Thus, the companies Siemens, Huawei, Samsung, and LG register more than 2,000 patents annually. The share of intellectual capital in the value of companies often exceeds their tangible assets. This is due to the innovative nature of the development of the modern economy. In this regard, the role of protecting intellectual capital has also increased. The specialists of our patent office will help you choose the optimal scheme for protecting innovations and defend the interests of the client in case of violation of their exclusive rights.

Need for acquisition

There are no incidents in judicial practice yet related to the initiation of criminal cases for the protection of intellectual property. All controversial issues are resolved using the Civil Code. There is no term “trademark” in the legislation; synonyms of this phrase are used. For example, patenting is associated with the concept of “trademark”, and in real life you can often hear the definitions “logo” and “brand”.

Logo registration involves several steps, at each stage certain actions are performed. It has its own details and features. First, you need to think through all the design elements of the trademark, choose a color scheme, choose a font so that the sign is unique and inimitable. Designers are advised to think through the nuances of sign design with professionals, as this increases the chances of creating an individual sign that will be recognizable, easy to remember, and will help its owner in promoting products in the modern consumer market.