Think of the names Thomas Edison, Steve Jobs, Henry Ford, James Watt and Guglielmo Marconi and you think of inventions which changed the world. But did you know that in each instance, they were not the first to create that with which their name has become synonymous? Joseph Swan (lightbulb), Bill Gates(tablet computer), Karl Benz (motorcar), Thomas Newcomen (steam engine) and Russia’s very own Alexander Stepanovich Popov (radio) came before them.
These are just a few examples of the turbulent world of intellectual property. So why do some inventors succeed where others fail? Why did their ‘invention’ stick whilst others disappeared?
Put simply, they were the first to register and protect that invention with a patent. A patent successful prevents others from stealing, copying and making money from your ‘intellectual property’.
So, you have an invention? The first thing you must do is protect it. Here, the law is essential to your success. But why? With a successful patent comes protection. It means no one can sell or manufacture your invention unless you allow it.
There are complex waters which need navigating to be successfully granted a patent. What protection do you need? Where do you want it to be protected? Is my invention patentable? So many questions, but can you provide all the answers? It would be foolish not to utilise the skills and experience of experts such as Prof-patent to guide you.
In addition, the worlds of innovation and business have become more competitive. Today, we are more likely to see instances of small incremental improvements of existing designs than an entirely new invention. Take the ‘smartphone’ as an example, ubiquitous today but only 40 years ago the ‘mobile phone’ was revolutionary. But how many iterations have there been since that first brick-sized device? SMS, MMS, cameras, processors, operating systems, touch screens, haptics, GPS and waterproofing. Each and every new improvement protected with a specific individual patent.
As most ‘inventions’ these days are not completely new, the law offers a solution which is less arduous to achieve than a full patent, but may serve you just as well. The ‘Utility model’ in the Russian Federation can be described as a ‘second-class patent.’It offers you similar rights but with less stringent requirements than a full ‘patent’. It is available for a maximum 10-year term (as opposed to a 20-year patent term), and excludes certain classes of invention such as animal or plant culture, substance or micro-organism. But there is no substantive examination procedure and this means there is much less delay from application to granting of the Utility model patent in the Russian Federation.
Again, this is where Utility model protection requires expert guidance. If the application for the Utility model is not executed correctly then protection will not be provided if prosecution or litigation is ever instigated. In addition to this, if the patent has already been granted to another or the invention is already for sale or known, then no patent (Utility model or otherwise) will offer protection. It is these pitfalls which make it an absolute necessity to engage with a patent attorney. They can advise you which patent is in your best interests to apply for. They can carry out a preliminary patent search to ensure your invention is patentable. They can do this all with unclouded judgement that you, with a vested interest, may struggle to achieve. Their experience is valuable in dealing with these complex procedures.
After a patent or Utility model has been granted there are further considerations. Patent annual maintenance fees must be paid. Litigation may be needed to enforce against potential infringement. If you wish to licence your invention, contracts will need to be drawn up that ensure no unintended rights are conferred on the licensee.
The most challenging aspect is that you will not really know if the actions you undertook when making your initial application are correct until it is too late. The onus is on you to investigate your invention and frame your patent so that it falls within the confines of the law but you must do this at the very outset of the process. If you cannot enforce the patent due to any of the above reasons, then it will not be worth the paper it’s written on. Is it worth the risk?
Obtaining rights to an invention is a paid service. The costs to be paid by the applicant include:
|WORK STAGE||COST (RUBLES)|
|Identifying the invention and conducting a patent search through databases||30 000|
|Writing a description formula and an abstract||20 000|
|Registration and filing of the application with the Federal State Budgetary Institution FIPS||12 000|
|State fee* for registration of application for an invention patent||577.50|
|Additional fee* for each claim over 10||122.50|
|State fee* for substantive examination of invention application when filing application and sending information search report before the expiration of 7 months from the date of satisfaction of the application***||2187.50|
|Additional fee* for substantive examination of invention application for each independent claim over 1 ***||1690|
|Supporting the application and obtaining a patent||25 000|
|Fee* for the registration of an invention||525|
|Fee* for an invention patent||1 050|
|TOTAL for work on patenting the invention||87 000|
|TOTAL for work and state fees||107 878|
|Fee to a patent attorney for conducting a patent search||20 000|
|Writing and abstract fees||20 000|
|Fee for the execution of documents and registration of the application||12 000|
|Fee* for registration of application for a Russian Federation utility model patent||245|
|Fee* for substantive examination of utility model application and making a decision on its results||437.50|
|Fee for supporting the application during the examination stage. Preparation and sending responses (including justification of the applicant's position) to any requests and notifications of the patent office||regardless of their number and complexity|
|Fee* for the registration of a utility model||525|
|Пошлина* за выдачу патента на полезную модель||1 050|
|TOTAL for work on the patenting of a utility model||67 000|
|TOTAL for work and state fees||69 257.50|
* Paid in 5-7 days based on the results of the search
** Payable in approximately 6-12 months after a positive decision on registration
*** Fees include a 30% discount for the executor
***Or 822.50+490 for each independent claim over 1, but not more than 5 + 5400 for each independent claim over 5 (when filing a request for substantive examination after the application for patent registration and sending the information search report before the expiration of 12 months after the request is granted.
The price may be higher depending on the complexity of the subject matter.
Patent maintenance fee - payable beginning in the third year and continuing through the end of the registration period.
The maintenance of the patent is done by making annual payments. For inventions, the said patent maintenance fee is to be paid from the third year until the termination of legal protection (this term is 20 years with the possibility of extension for some inventions for another 5 years).
The fee for prolongation for 3 and 4 years is 850 rubles each, for 5 and 6 years - 1250 rubles each, etc.
The development of unique technical solutions can take many years and is accompanied by intellectual labor. Registration of an invention will help protect your own project from unauthorized use by others, the author or owner of the specified object can obtain a special document - a patent. The decision procedure for patenting a device is based on the results of verification of the application and the patentability features. Prof-Patent specialists will assist you with the documentation and the procedure of filing an application with the Federal Service for Intellectual Property, Patents and Trademarks.
1. Conducting a patent search
A patent search is carried out to identify already registered similar technical projects. This step can be done independently, but it will require manual verification of a lot of information and data. This procedure can be considerably simplified and accelerated by contacting patent attorneys. These specialists have access to the registers and will perform all actions in the shortest possible time.
2. Drafting and filing a patent application
The application consists of: description, claims, abstract and drawings.
In order to register an invention it is necessary to properly draw up a patent application and send it to FIPS. The documents may be submitted by the right holder himself or by his representative by proxy. The application includes a description of the device and its claims, an abstract and drawings. Please note that mistakes in drafting the application and other supporting documents are one of the most common reasons for rejection by Rospatent.
3. Formal and substantive expertise
4. Registering and obtaining a patent for an invention
After the examination, in case of a positive answer, the object is registered in the register, information is published in the bulletin of Rospatent and a patent is issued to the applicant, after which the regime of legal protection of the invention is established.
It is possible to simultaneously submit an application for a domestic patent, as well as for registration of rights at the international level. In order to comply with all the requirements of legislative acts and international treaties, it is advisable to carry out all actions through attorneys.
Registration of a patent for an invention secures the intellectual property rights of its owner for 20 years (25 years for some inventions), subject to timely payment of the annual state fee. If the right holder fails to pay the annual state fee, the patent will be suspended. The restoration of exclusive rights is allowed at the request of the right holder within three years - this document should be sent to the service of Rospatent. The amount of the fee for the restoration is calculated on the basis of the annual payment for the support of the patent, multiplied by 2.5 times.
Also, the patent is terminated from the moment of conclusion of the alienation agreement. In this case, the patent rights are transferred to a third party, which, in turn, will be able to dispose of the object and will be obliged to remit the annual fee.
In order to patent an invention or innovative production method, the following attributes must be proven:
In order to confirm the listed features, a substantive examination will be carried out at the FIPS. However, even before applying to the patent office, it is necessary to make sure that the invention will not coincide with previously registered objects. For this purpose, a search is made through databases of intellectual property objects.
A patent application for an invention may be registered in writing or electronically, and includes:
The application form is approved by Order No. 316 of the Ministry of Economic Development, and verification of the requirements for completion will be verified at the examination stage.
The filing and registration of the application allows the priority of the invention to be established. This means that if similar applications are received from other persons, priority will be given to the previously submitted documents. For the whole period of consideration of documents and examination there will be a temporary legal protection, including at the international level (if the applicant at the same time indicates such a requirement).
The possibility to establish the regime of intellectual property object protection in the Russian Federation applies to utility models, industrial designs and inventions. Registration of a patent for a utility model in Russia and abroad is possible upon confirmation of a number of obligatory features on the specified object. The availability of a patent allows to dispose of the rights under reimbursable or gratuitous contracts, as well as to hold other persons liable for illegal use of someone else's object.
Unlike copyright, the establishment of legal protection of a utility model is carried out in the framework of the registration procedure with the receipt of a patent.
To patent a utility model, the following rules must be taken into account:
The registration of the application can be done independently or through professional specialists - patent attorneys. The optimal option is representation through an attorney, as the search and preparation of the application documentation will go quickly and in strict compliance with the law.
Even before applying to the service of Rospatent (FIPS), it is necessary to check the patentability of the utility model. For this purpose, a search is made through databases of intellectual property objects. In the case of an independent search, this stage will drag on for many months, since all the information on similar technical solutions will have to be checked manually.
When contacting patent attorneys:
In order to register a utility model patent in Russia and abroad, it is necessary to compile and submit the application documentation to FIPS. The rules of drawing up and filing are regulated by the Order of the Ministry of Economic Development dated 30.09.2015 No. 701. The application may be filed not only by the author himself, but also by another person who acquired the rights legally (e.g., on the basis of an employment contract). Even after a patent is registered to another person or organization, the original authorship is not lost, since it is an inalienable right.
The procedure consists of the following stages:
The examination of the application may be accompanied by inquiries from Rospatent specialists to the applicant. The final positive decision on registration of a utility model depends on the timeliness and correctness of the answer to the inquiries, as well as the terms of the procedure. When contacting a specialist, all these risks will be eliminated already at the stage of search and compilation of the application.
The period of registration of a utility model patent is significantly shorter than the duration of a similar procedure for an invention. The law allows, after filing an application for an invention, to reclassify it as an application for a utility model and vice versa, taking into account the term of legal protection and duration of expert actions, as well as the essential features of the object.
The period of consideration of an application for a utility model is short. In most cases, a certificate can be obtained in 6-12 months.
After the granting of the patent, the rights protection regime for the utility model is established. The period of validity of the registration is 10 years, and its extension is not allowed. Within 10 years, the right holder can hold others liable for unlawful use.
In addition, within the specified period the legal owner of the object may execute an agreement on full assignment or conclude a license agreement. The price for compensatory alienation is determined by the right holder himself.
The validity of the patent must be confirmed annually by paying the state duty.
The fee for maintaining a patent is:
Early termination takes place in case of non-payment of the said fee, or upon the application of the right holder. The corresponding decision will be taken by the Rospatent service, and information about the cancellation of rights will be entered in the registry. The reinstatement of the registration is possible by filing a corresponding application within three years after the deadline for payment of the fee and its payment.
The owner has exclusive rights to use and dispose of the utility model, which include:
For the use of someone else's intellectual property object without permission, the law provides for measures of protection, which can be used by the right holder. First of all, for each detected fact of illegal use of a patent, it is possible to send a demand to stop the infringement (e.g., a ban on the production of products using a utility model). A similar demand may be made if the terms of the license agreement are violated - by the territory of the patent use, by the terms and the amount of payments in favor of the owner.
The use of judicial remedies is governed by the following rules:
These protection measures may be applied within the duration of the patent.
Another category of cases is the dispute over the priority of patent applications. In this case, the similarity or dissimilarity of the submitted designs, the date of registration and other factors will be established.