Of all types of patent searches, the prior art search is the one that is crucial before filing a priority patent application. This is necessary to evaluate the chances that the patent for the claimed invention/utility model will be granted. To this end, our patent attorney can perform a preliminary search aimed at discovering relevant prior art and assessing whether or not the solution at issue will meet patentability criteria.
To protect one’s technical solution, when is it more appropriate to file an application for an invention, and when for a utility model?
This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.
|Object of protection||Product (in particular device, substance, strain of microorganism, cell culture of plants or animals) or method||Device|
|Patentability criteria||Novelty, inventive step, industrial applicability||Novelty, industrial applicability|
|Term of protection||20 years (with a possible extension up to 5 years for inventions relating to such products as a drug, pesticide or agrochemical product, if their use requires a statutory authorization and more than five years have lapsed from the filing date of the patent application to the date of obtaining the first authorization)||10 years|
|Approximate time to obtain a patent||24 – 36 months||6 - 12 months|
As one can see from the table, only a device can be protected as a utility model. At the same time, invention patents grant protection to devices, chemical substances, strains of microorganisms, cell cultures of plants or animals, as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.
As far as a device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent, one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. An inventive step is not required in this case.
However, the extent of legal protection of an invention is somewhat broader than the one of a utility model because the assessment of infringement of IP rights includes equivalents doctrine.
When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions have to satisfy the additional patentability requirement of an inventive step (obviousness), possible invalidation actions can have additional grounds – lack of an inventive step. Therefore, in some cases, utility model patents can be considered as potentially more stable.
Can an inventor file an application for an invention that was disclosed by the inventor in specialized literature earlier?
There is a so-called six month novelty grace period. The disclosure of information relating to the invention by the inventor, applicant or by any person having obtained the information directly or indirectly from them (including when invention is displayed at an exhibition), as a result of which information on the subject matter of the invention has become publically available, does not destroy the novelty of the invention provided that the patent application was filed with the RUPTO within six months from the date of the information disclosure.
Can I get a patent term extension in Russia?
In case more than five years have lapsed between the filing date of an application for an invention related to a medication, pesticide or agrochemical product (if its use requires authorization) and the date of the first marketing authorisation, the term of the patent shall be extended upon request of the patent owner by the Russian Patent and Trademark office. The term shall be extended for the period computed from the filing date of the patent to the date of the first authorisation minus five years, with the proviso that the term of the patent may not be extended for a period exceeding five years.
The request for extension of the term should be submitted by the patent owner during the term of the patent’s validity within six months after obtaining the first authorisation or of the patent grant, whichever comes last.
How can I transfer the Russian part of an international patent application (PCT) and of a Eurasian patent (application)?
The Russian part of a PCT application (as any Russian patent or patent application) can be transferred/assigned to another party on the base of an agreement between the parties (the recordation of the transfer of rights under a Russian patent takes about two months within the RUPTO plus preparation work).
A transfer/assignment of a Eurasian patent (patent application) can only take place with regard to all the contracting states (Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, Turkmenistan). Therefore, if the patent holder intends to transfer their patent rights with regard to Russia only, they will be unable to do so as long as the Eurasian patent is maintained in force in other countries. (And even if the patent holder has recently stopped paying annuities for some countries, the 3-year reinstatement right would be transferred together with the Eurasian patent).
Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?
The signer does not have to hold any specific position or to be an executive of a certain rank. However, his or her position should be clearly indicated in the PoA. The signer should be duly authorized to act on behalf of the company, not just assigned to oversee certain cases. It is normally requested that the documents that empower the signer be mentioned in the text of the power of attorney.
If the signer deals on the basis of a proxy, the powers of the person who has signed the proxy may also be checked. It is highly advisable that all the corporate titles coincide in different documents. For example, if the proxy is signed by the Chairman of the Board of Directors and the official title of the person who can sign according to the bylaws is Director, the respective Court may not accept the documents without requesting further clarifications.
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