Why in Russia the patent is almost useless
In the previous article, I promised to talk about how I obtained a patent for a utility model, as well as about its uselessness in the event of patent infringement. Now, albeit with a big delay, but still fulfill his promise. Immediately, I’m noting that I’m not a lawyer or a patent expert, so the article may contain inaccurate wording and naive ideas, but I hope very much that there are no factual errors.
The main idea is as follows. In theory, any patent should have two functions - permissive and prohibitive. First, a patent allows its holder to do something, for example, to produce and sell a patented product. And secondly (and this is the main thing), the patent prohibits an indefinite number of persons from carrying out any actions related to the object of patent. That is, having a patent, a person may prohibit another person to produce, sell, store, use, etc. product in which this patent is used.
In Russia, unfortunately, the main one - the prohibitive function of the patent has been completely destroyed. Therefore, to protect intellectual property in Russia actually does not make sense.
To begin with, any patent, whether it is a patent for a utility model or a patent for an invention, has a prototype. It is assumed that the inventor did not develop his idea from a complete zero, but took as a basis something known, a prototype, and this prototype somehow improved. And this improvement allowed us to get some new and necessarily useful property. Improvement should not be just an addition, if this addition does not have qualitatively new useful properties.
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What to take for the prototype? In the case of a utility model, another utility model, or an invention, or any known construction, object, method, or method, can act as a prototype. In practical terms, the search for a prototype should be started from here: go to http://www1.fips.ru , hereinafter “Information resources”, “Open registries”, “Register of utility models” (for example). Next, set the parameter “Index of the IPC” and enter this same index. The index is pre-recognized by the classifier . In my case it will be A47D9 / 02. As a result of all these actions, we get a list of useful models of this index. For example, my patent has the number 112007. Next, we read all the patents from the list and select something suitable as a prototype. Of course, the sources of the prototype selection are not limited to this list. You can, for example, look in international patents for utility models and inventions.
Choosing a prototype, you should come up with a patent formula. This is a key component of any patent. It is the patent formula that has legal significance, it is the formula that determines the boundaries of patent protection. Formulating a formula is an art, there are many nuances and unobvious moments. In the formula of a utility model or invention, all essential features of the utility model or invention are stated. In turn, a sign is such a unit of meaning, a brick, which makes up a patent formula.
From Wikipedia:
An example of a patent formula (in this case, the patent for useful model 112007):
Let's take a closer look at what is in this formula. So:
First comes the independent part of the formula.
Rocking device,
- The object of patenting, the object of legal protection. The following are listed restrictive signs.
containing supporting structure
- first sign
bed,
- the second sign
hangers connecting the bed with the supporting structure,
- the third sign
electromagnet with winding located on the basis of the supporting structure,
- fourth sign
connected to the network of electric current through the breaker with the control unit,
- the fifth sign
and a metal plate mounted on the bottom of the bed with the possibility of interaction with the electromagnet,
- the sixth sign. All, the restrictive part of the patent formula is over. This is followed by a distinctive part, beginning “characterized by the fact that ...”.
characterized in that the metal plate is offset relative to the electromagnet in the direction of swing of the bed.
- one distinguishing feature. Everything, independent clause of the formula has ended. This is followed by dependent clauses (numbered). They are no longer so interesting, because their legal value is much less than the value of the independent claim.
Having dealt with the fact that such a patent formula, we go further.
According to paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation
In turn, in accordance with paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation
Thus, it would seem, the Civil Code uniquely identifies the use cases, for example, of the utility model. If suddenly on the market there is a device containing a support structure, a bed, suspension, etc. according to the formula of the utility model, and this device, conditionally speaking, is not mine - it means that it violates my exclusive (patent) rights to the utility model.
It should be so. So it is in other countries. But, unfortunately, not in Russia.
And in Russia, you can do so. Watch your hands carefully.
We add, for example, one more coil to the rocking device and consider that this change gives some advantages (in fact, this is not necessarily the case, but let's say that it is so). For example, let's say that it adds smoothness. Leave the rest as is. As a prototype, we take the original utility model (PM) 112007 and get a patent for its own utility model, for example, with the number 122860. Then we will quietly release beds with a rocking device using all the features of PM 112007, but having a second coil in the drive unit. And we will say that the beds are produced according to the patent 122860.
It is obvious that the product with two coils uses both PM 112007 and PM 122860. And, it would seem, take the HA and apply to this occasion. But ... (drum roll ...) attention, a hole in the legislation:
Paragraph 9 of the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation of December 13, 2007 N 122 "Review of the practice of arbitration cases of cases involving the application of intellectual property laws":
Later, the Presidium of the Supreme Arbitration Court of the Russian Federation confirmed its position (this was not a mistake!) By Resolution No. 8091/09 of December 1, 2009, extending it to inventions.
Thus, now I have to prove not that the two-coil product uses my patent 112007, but that the later patent 122860 is invalid. It looks absurd, but it really is. Moreover, it is not possible to prove the invalidity of the patent 122860, since it was issued according to all the formal rules and in general is quite well worth it.
Unfortunately, the courts when considering patent disputes are guided by this very decision of the Presidium of the Supreme Arbitration Court of the Russian Federation. We are fine with law enforcement.
This completely unhealthy situation is well known to patent specialists and people "in the subject." For example, on Wikipedia, it is described and named the “Case of Legal Vandalism” (the article “Invention”).
Thus, to patent something serious in Russia does not make sense. Anyone can get their patent for a similar utility model, slightly modifying it, and using it without any problems. Patents in Russia as a result are worth nothing — it will be much cheaper to do this simple trick than, for example, buying a license to use an existing patent. It is also meaningless to invest some money in the development of new devices, technologies, and methods in Russia - investments that will have to pay off from the sale of licenses will also go nowhere.
A patent in the conditions of Russia is needed only in one case - if you yourself produce a product on it. In this case, at least no one will forbid you to do this. And you yourself cannot forbid anyone to produce a similar product - your opponent will have his patent (later, and in a particularly cynical case, your utility model will be used as a prototype), as a result of which you will be legitimately sent to paragraph 9 of the Presidium Information Letter The Supreme Arbitration Court of the Russian Federation dated 13.12.2007 N 122.
The main idea is as follows. In theory, any patent should have two functions - permissive and prohibitive. First, a patent allows its holder to do something, for example, to produce and sell a patented product. And secondly (and this is the main thing), the patent prohibits an indefinite number of persons from carrying out any actions related to the object of patent. That is, having a patent, a person may prohibit another person to produce, sell, store, use, etc. product in which this patent is used.
In Russia, unfortunately, the main one - the prohibitive function of the patent has been completely destroyed. Therefore, to protect intellectual property in Russia actually does not make sense.
To begin with, any patent, whether it is a patent for a utility model or a patent for an invention, has a prototype. It is assumed that the inventor did not develop his idea from a complete zero, but took as a basis something known, a prototype, and this prototype somehow improved. And this improvement allowed us to get some new and necessarily useful property. Improvement should not be just an addition, if this addition does not have qualitatively new useful properties.
')
For example, we have a mop ...
For example, we have a mop. We take the whistle and tape it to the mop. It turned out a new object - a mop with a whistle. You can wash, and you can whistle. Great! Can this be patented as a utility model? Most likely no. Since it is functional, this gizmo can be washed like a mop and can whistle like a whistle. It turned out the sum of functions that the original objects already had.
And now we take a mop and we put a flashlight on it. And we get a new feature - the ability to wash in dark corners. This function was not separately neither the flashlight nor the mop. Such a new device can already be tried to be patented as a utility model.
And now we take a mop and we put a flashlight on it. And we get a new feature - the ability to wash in dark corners. This function was not separately neither the flashlight nor the mop. Such a new device can already be tried to be patented as a utility model.
What to take for the prototype? In the case of a utility model, another utility model, or an invention, or any known construction, object, method, or method, can act as a prototype. In practical terms, the search for a prototype should be started from here: go to http://www1.fips.ru , hereinafter “Information resources”, “Open registries”, “Register of utility models” (for example). Next, set the parameter “Index of the IPC” and enter this same index. The index is pre-recognized by the classifier . In my case it will be A47D9 / 02. As a result of all these actions, we get a list of useful models of this index. For example, my patent has the number 112007. Next, we read all the patents from the list and select something suitable as a prototype. Of course, the sources of the prototype selection are not limited to this list. You can, for example, look in international patents for utility models and inventions.
Choosing a prototype, you should come up with a patent formula. This is a key component of any patent. It is the patent formula that has legal significance, it is the formula that determines the boundaries of patent protection. Formulating a formula is an art, there are many nuances and unobvious moments. In the formula of a utility model or invention, all essential features of the utility model or invention are stated. In turn, a sign is such a unit of meaning, a brick, which makes up a patent formula.
From Wikipedia:
Claims of the invention consist of one or several points. Each clause of this formula usually consists of two parts, called the restrictive part and the distinctive part, separated by the phrase “differing” in that ... The restrictive part of the claim contains the title of the invention and its important features already known from the prior art. The distinctive part contains the signs that make up the essence of the invention, and are new. Each claim is one sentence. The claims are divided into dependent and independent. An independent claim characterizes an invention with a combination of its features defining the scope of the requested legal protection, and is presented as a logical definition of the subject matter of the invention. The dependent claim contains a refinement or development of the invention disclosed in the independent claim.
An example of a patent formula (in this case, the patent for useful model 112007):
1. A device for swinging a bed containing a supporting structure, a bed, hangers connecting the bed with a supporting structure, an electromagnet with a winding connected to an electric current network through a breaker with a control unit, and a metal plate fixed to the bottom of the bed with the possibility of interaction with the electromagnet, characterized in that the metal plate is offset relative to the electromagnet in the direction of swing of the bed.
2. A device for rocking the bed according to claim 1, characterized in that the metal plate is made of metal with residual magnetization.
3. A device for rocking the bed according to claim 1, characterized in that the control unit is made on the basis of a microcontroller.
4. Device for swinging a bed according to claim 1, characterized in that it is additionally equipped with a remote control.
Let's take a closer look at what is in this formula. So:
First comes the independent part of the formula.
Rocking device,
- The object of patenting, the object of legal protection. The following are listed restrictive signs.
containing supporting structure
- first sign
bed,
- the second sign
hangers connecting the bed with the supporting structure,
- the third sign
electromagnet with winding located on the basis of the supporting structure,
- fourth sign
connected to the network of electric current through the breaker with the control unit,
- the fifth sign
and a metal plate mounted on the bottom of the bed with the possibility of interaction with the electromagnet,
- the sixth sign. All, the restrictive part of the patent formula is over. This is followed by a distinctive part, beginning “characterized by the fact that ...”.
characterized in that the metal plate is offset relative to the electromagnet in the direction of swing of the bed.
- one distinguishing feature. Everything, independent clause of the formula has ended. This is followed by dependent clauses (numbered). They are no longer so interesting, because their legal value is much less than the value of the independent claim.
Having dealt with the fact that such a patent formula, we go further.
According to paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation
an invention or utility model is recognized to be used in a product or method if the product contains, and in the method each characteristic of the invention or utility model is used, given in the independent clause of the invention or utility model in the patent, or a feature equivalent to it and which has become known as such in the field of technology prior to the performance of the relevant product or course of action provided for in paragraph 2 of this article.
In turn, in accordance with paragraph 3 of Art. 1358 of the Civil Code of the Russian Federation
the use of an invention, utility model or industrial design is considered, in particular, the importation into the territory of the Russian Federation, the manufacture, use, offer to sell, sell, otherwise introduce into public circulation or store for these purposes a product in which the invention or utility model is used, or products in which the industrial design is used.
Thus, it would seem, the Civil Code uniquely identifies the use cases, for example, of the utility model. If suddenly on the market there is a device containing a support structure, a bed, suspension, etc. according to the formula of the utility model, and this device, conditionally speaking, is not mine - it means that it violates my exclusive (patent) rights to the utility model.
It should be so. So it is in other countries. But, unfortunately, not in Russia.
And in Russia, you can do so. Watch your hands carefully.
We add, for example, one more coil to the rocking device and consider that this change gives some advantages (in fact, this is not necessarily the case, but let's say that it is so). For example, let's say that it adds smoothness. Leave the rest as is. As a prototype, we take the original utility model (PM) 112007 and get a patent for its own utility model, for example, with the number 122860. Then we will quietly release beds with a rocking device using all the features of PM 112007, but having a second coil in the drive unit. And we will say that the beds are produced according to the patent 122860.
It is obvious that the product with two coils uses both PM 112007 and PM 122860. And, it would seem, take the HA and apply to this occasion. But ... (drum roll ...) attention, a hole in the legislation:
Paragraph 9 of the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation of December 13, 2007 N 122 "Review of the practice of arbitration cases of cases involving the application of intellectual property laws":
If there are two patents for a utility model with the same or equivalent features given in the independent claim, until the patent is declared invalid in the prescribed manner with a later priority date, the actions of the owner of this patent cannot be regarded as a violation of the patent with an earlier date priority.
Later, the Presidium of the Supreme Arbitration Court of the Russian Federation confirmed its position (this was not a mistake!) By Resolution No. 8091/09 of December 1, 2009, extending it to inventions.
Thus, now I have to prove not that the two-coil product uses my patent 112007, but that the later patent 122860 is invalid. It looks absurd, but it really is. Moreover, it is not possible to prove the invalidity of the patent 122860, since it was issued according to all the formal rules and in general is quite well worth it.
Unfortunately, the courts when considering patent disputes are guided by this very decision of the Presidium of the Supreme Arbitration Court of the Russian Federation. We are fine with law enforcement.
This completely unhealthy situation is well known to patent specialists and people "in the subject." For example, on Wikipedia, it is described and named the “Case of Legal Vandalism” (the article “Invention”).
The meaning of this approach is that the patent owner has the right to use a protected solution, even if a protected solution of a third person is used without the consent of the latter, which completely contradicts the very essence of the exclusive right as a prohibition right and the last sentence of clause 3 of Article 1358 of the Civil Code of the Russian Federation unequivocally relating such actions to the use of the invention.
Thus, to patent something serious in Russia does not make sense. Anyone can get their patent for a similar utility model, slightly modifying it, and using it without any problems. Patents in Russia as a result are worth nothing — it will be much cheaper to do this simple trick than, for example, buying a license to use an existing patent. It is also meaningless to invest some money in the development of new devices, technologies, and methods in Russia - investments that will have to pay off from the sale of licenses will also go nowhere.
A patent in the conditions of Russia is needed only in one case - if you yourself produce a product on it. In this case, at least no one will forbid you to do this. And you yourself cannot forbid anyone to produce a similar product - your opponent will have his patent (later, and in a particularly cynical case, your utility model will be used as a prototype), as a result of which you will be legitimately sent to paragraph 9 of the Presidium Information Letter The Supreme Arbitration Court of the Russian Federation dated 13.12.2007 N 122.
Source: https://habr.com/ru/post/288440/
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