Invention and Utility Model Patent Registration

An inventor can ensure protection for their technical solution in Russia by obtaining a patent for either an invention or a utility model.

As in most jurisdictions, an invention in Russia relates to:

• a product (including a device, a substance, a microorganism strain, a plant or animal cell culture); or
• a method (performing actions on material objects with the use of material facilities).

A utility model relates only to a device.

The Russian Patent Office, officially named the Federal Service for Intellectual Property (Rospatent), examines patent applications for both inventions and utility models with regard to their meeting patentability criteria. The patentability criteria for inventions include novelty, an inventive step (non-obviousness), and industrial applicability, whereas a utility model is not required to meet the inventive step criterion. Therefore, a utility model is perceived as a “minor” or “small invention”. For the inventor, it is easier to obtain a utility model patent and, in case the patent is challenged by a third party, there is one less ground for invalidation (the inventive step). The downside for a utility model patent is its term of validity – ten years compared to twenty years for an invention patent. The main advantage is a relatively quick grant – about 9-12 months from the filing date.

An alternative opportunity to protect your technical solution may be a Eurasian patent (applicable for inventions only) valid in eight countries including Russia.

Russian invention/utility model patent applications and Eurasian patent applications may claim priority under the Paris Convention and can be filed as national (regional) phases of international (PCT) applications.

Our patent prosecution and litigation team is widely recognized for its expertise in all patent-related matters. As a leading and by far the oldest Russian and Eurasian patent law firms, Sojuzpatent provides a full range of patenting services, including:

• drafting and filing patent applications;
• handling the processing of the application up to and including the grant and obtaining the letters patent;
• paying annuities for maintaining patent validity;
• recordation of changes, transfers of rights and licenses, including the drafting of assignment, license, franchise, security and pledge agreements;
• defending the obtained patents in invalidation actions;
• revocation of other parties’ patents;
• bringing legal actions against eventual infringers;
• representing clients’ interests in other patent-related issues before judicial and administrative bodies in Russia and the neighboring countries.