IT: patents must not be kept secret
By asking lawyers about the possibility of patenting IT development, you can get a whole range of opinions from “everything is possible” to “nothing is possible”, and the number of opinions expressed may exceed the number of lawyers expressing them. Further, briefly and clearly about what can and cannot be patented in information technology.
What can and cannot be patented as inventions
In practice, this means the following: the result of intellectual activity in the field of information technology (RID IT) can be patented as an invention, as an algorithm (that is, as a method) and / or as a device that implements this method. In this case, the method may well be based on the discovery or on the scientific theory and contain mathematical methods, rules and methods of games, intellectual or economic activity and relate to the presentation of information. But the way should not consist exclusively in these entities.
Patentable may be, for example, compression algorithms or encryption of information for storage on the media or for transmission in a channel, algorithms for multifactor authorization, server load balancing algorithms, algorithms for detecting certain elements in an image, etc. In particular, the mathematical method for determining the minimum length of an M-sequence to ensure a given noise immunity, which consists in solving a system of matrix equations of a certain type, cannot be patented as an invention, and the way to optimize noise-resistant coding in a communication channel based on it is quite possible. Moreover, in practice, the method and device for its implementation are usually simultaneously patented, stating them separately in the independent claims.
Examples of RID IT patented as an invention:
US5708422 (AT & T Corporation (US)) Transaction authorization and alert system.
US6078908 (SCHMITZ, KIM (DE)) Method for authorizing in data transmission systems
US4464650 (SPERRY CORPORATION (US)) Apparatus for compressed data signals
RU2438172C2 (Visa International Service Association (US)) A method and system for performing two-factor authentication for transactions involving mail and telephone orders.
RU2495488C1 (Closed Joint Stock Company Kaspersky Lab (RU)) A system and method for controlling devices and applications when using multifactor authentication.
RU2313916C2 (Quelcomm Incorporated (US)) System and method of acoustic two-factor authentication.
What can and can’t be patented as utility models
In practice, this means that for utility models, in addition to the limitations relating to the patenting of inventions, the method has been excluded from the number of objects of patenting, i.e. Only a device can be patented as a utility model, and one (kits, systems, and complexes consisting of several devices are not patented as a utility model). In other words, for patenting algorithms one should use the institute of inventions, but not utility models.
What can and cannot be patented as industrial designs.
In practice, this means that designation (in the Russian sense of the word - appearance) of products can be patented as an industrial design, but objects related to inventions, utility models, trademarks, appellations of origin are not allowed. In particular, as an industrial design, you can patent the original appearance of the product, the original appearance of its packaging, the elements of the graphical user interface.
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What can and can not be registered as trademarks
In practice, this means that you can register as a trademark the name of the product, the name of its developer / manufacturer, literary, graphic (graphic), cinematic or game character (including, in bulk), logo, slogan (including in sound form), the color itself and even the flavor. It is impossible to register a technical solution as a trademark (by the way, this is why the main Lego cube with eight projections was not registered as a European trademark).
What to do with knowingly unpatentable RID IT
If RID IT does not belong to patent law or to means of individualization, it can be protected in other ways.
1. Protect them as objects of copyright. For example, register as a computer program or as a database. This method of protection of exclusive rights is simple and cheap, but ineffective, since (a) only a small code fragment (several pages in printed form) can be deposited as part of an application and (b) the program algorithm can be implemented in a thousand ways that do not coincide with the registered program, including in different programming languages. Nevertheless, registration of programs and databases is quite suitable as an additional means of protection. Another way is to deposit the work (say, the plot of the game) in the form of a literary work in any official depository, for example, in the Russian State Library (RSL).
2. Save the development as a secret of production (know-how). Recent changes in Russian legislation have made this path quite realistic, since in order to introduce a commercial secret regime at an enterprise, it is no longer necessary to convert it into a Soviet-type pb from the military-industrial complex with its first and second departments and the secret library.
3. Put the development in free access. The meaning of this step is to openly publish the development in order to prevent its patenting or registration by other persons and the subsequent presentation of claims to its actual developer if patenting or registration by the developer is impossible or undesirable (for example, for ideological reasons). The publication in this case should be documented (obtain a certificate of deposit with the application of a certified copy of the deposited document, issue a notarial inspection certificate of the site and, possibly, apostil it for international purposes, etc.). In this sense, the use of open repositories on the Internet is meaningless, since the very layout of the plot, game mechanics or code can hardly serve as a defensive publication due to the difficulty of proving the electronic publication date and the immutability of the published information.
A complex approach
Whenever possible, it is wise to use a combination of different methods. For example, even in the case of patenting, it may be advisable to de facto store it as a trade secret before the publication of the application. Saving the development (for example, a computer game) as a production secret (know-how) is fully combined with the deposit of the plot in the RSL without publication and with the registration of characters as trademarks. Patenting devices as inventions or utility models are sometimes combined with patents as an industrial design, simply citing the appearance of a product protected by a patent for an invention or utility model in an application for a sample.
Well, that's all for Russia. And what about the rest of the world?
Essentially, the same. In different countries, the mechanisms for ensuring the legal protection of RID IT may differ, for example, there is not everywhere an institute of utility models or registration of programs and databases; instead of depositing in the RSL, it may be wiser to use deposit in the USPTO or in a specialized service of protective publications ( www.researchdisclosure.com or ip.com/prior-art-database ), but the principle of optimizing the regime of legal protection depending on the substance of RID IT protected and an integrated approach to protection remains unchanged.
What can and cannot be patented as inventions
Referring to the source
Clause 1, Article. 1350 of the Civil Code of the Russian Federation:
As an invention, a technical solution is protected in any area related to a product (in particular, a device, a substance, a strain of a microorganism, a culture of plant or animal cells) or a method (the process of performing actions on a material object using material means), including the use of product or method for a specific purpose.
Section 5 and Section 6 of Art. 1350 of the Civil Code of the Russian Federation:
They are not inventions, in particular:
1) discoveries;
2) scientific theories and mathematical methods;
3) decisions concerning only the appearance of products and aimed at meeting the aesthetic needs;
4) the rules and methods of games, intellectual or economic activities;
5) computer programs;
6) decisions consisting only in the presentation of information.
In accordance with this clause, the possibility of attributing these objects to inventions is excluded only in the case when the application for the grant of a patent for an invention concerns these objects as such.
No legal protection is granted as an invention:
1) plant varieties, animal breeds and biological methods for their production, that is, methods consisting entirely of crossing and selection, with the exception of microbiological methods and products obtained by such methods;
2) the topologies of integrated circuits.
As an invention, a technical solution is protected in any area related to a product (in particular, a device, a substance, a strain of a microorganism, a culture of plant or animal cells) or a method (the process of performing actions on a material object using material means), including the use of product or method for a specific purpose.
Section 5 and Section 6 of Art. 1350 of the Civil Code of the Russian Federation:
They are not inventions, in particular:
1) discoveries;
2) scientific theories and mathematical methods;
3) decisions concerning only the appearance of products and aimed at meeting the aesthetic needs;
4) the rules and methods of games, intellectual or economic activities;
5) computer programs;
6) decisions consisting only in the presentation of information.
In accordance with this clause, the possibility of attributing these objects to inventions is excluded only in the case when the application for the grant of a patent for an invention concerns these objects as such.
No legal protection is granted as an invention:
1) plant varieties, animal breeds and biological methods for their production, that is, methods consisting entirely of crossing and selection, with the exception of microbiological methods and products obtained by such methods;
2) the topologies of integrated circuits.
In practice, this means the following: the result of intellectual activity in the field of information technology (RID IT) can be patented as an invention, as an algorithm (that is, as a method) and / or as a device that implements this method. In this case, the method may well be based on the discovery or on the scientific theory and contain mathematical methods, rules and methods of games, intellectual or economic activity and relate to the presentation of information. But the way should not consist exclusively in these entities.
Patentable may be, for example, compression algorithms or encryption of information for storage on the media or for transmission in a channel, algorithms for multifactor authorization, server load balancing algorithms, algorithms for detecting certain elements in an image, etc. In particular, the mathematical method for determining the minimum length of an M-sequence to ensure a given noise immunity, which consists in solving a system of matrix equations of a certain type, cannot be patented as an invention, and the way to optimize noise-resistant coding in a communication channel based on it is quite possible. Moreover, in practice, the method and device for its implementation are usually simultaneously patented, stating them separately in the independent claims.
Examples of RID IT patented as an invention:
US5708422 (AT & T Corporation (US)) Transaction authorization and alert system.
US6078908 (SCHMITZ, KIM (DE)) Method for authorizing in data transmission systems
US4464650 (SPERRY CORPORATION (US)) Apparatus for compressed data signals
RU2438172C2 (Visa International Service Association (US)) A method and system for performing two-factor authentication for transactions involving mail and telephone orders.
RU2495488C1 (Closed Joint Stock Company Kaspersky Lab (RU)) A system and method for controlling devices and applications when using multifactor authentication.
RU2313916C2 (Quelcomm Incorporated (US)) System and method of acoustic two-factor authentication.
What can and can’t be patented as utility models
Turn again to the original source
Clause 1, Article. 1351 of the Civil Code of the Russian Federation:
A technical solution related to the device is protected as a utility model.
Legal protection is provided to the utility model if it is new and industrially applicable.
Section 5 and Section 6 of Art. 1351 of the Civil Code of the Russian Federation:
Not useful models, in particular, the objects referred to in paragraph 5 of Article 1350 of this Code.
In accordance with this clause, the possibility of classifying these objects as utility models is excluded only if the application for the grant of a patent for a utility model concerns the said objects as such.
Legal protection is not provided as a utility model to the objects specified in paragraph 6 of Article 1350 of this Code.
A technical solution related to the device is protected as a utility model.
Legal protection is provided to the utility model if it is new and industrially applicable.
Section 5 and Section 6 of Art. 1351 of the Civil Code of the Russian Federation:
Not useful models, in particular, the objects referred to in paragraph 5 of Article 1350 of this Code.
In accordance with this clause, the possibility of classifying these objects as utility models is excluded only if the application for the grant of a patent for a utility model concerns the said objects as such.
Legal protection is not provided as a utility model to the objects specified in paragraph 6 of Article 1350 of this Code.
In practice, this means that for utility models, in addition to the limitations relating to the patenting of inventions, the method has been excluded from the number of objects of patenting, i.e. Only a device can be patented as a utility model, and one (kits, systems, and complexes consisting of several devices are not patented as a utility model). In other words, for patenting algorithms one should use the institute of inventions, but not utility models.
What can and cannot be patented as industrial designs.
And again, turn to the source
Clause 1, Article. 1352 of the Civil Code of the Russian Federation:
As an industrial design, the solution to the appearance of an industrial or handicraft product is protected.
Section 5, Art. 1352 of the Civil Code of the Russian Federation:
No legal protection is granted as an industrial design:
1) solutions, all signs of which are due solely to the technical function of the product;
2) decisions that could mislead the consumer of the product, including with regard to the manufacturer of the product, or the place of manufacture of the product, or product for which the product serves as a container, packaging, label, in particular, solutions identical to the objects specified in paragraphs 4–10 Article 1483 of this Code, either producing the same general impression, or including the specified objects, if the rights to the specified objects arose earlier than the priority date of the industrial design, except for cases when the legal protection of the industrial design requested by a person with the exclusive right to such an object.
Provision of legal protection for industrial designs identical to the objects specified in clause 4, sub-clauses 1, 2 clause 9 of article 1483 of this Code, either producing the same general impression or including the said facilities, is allowed with the consent of the owners or persons authorized by them objects.
As an industrial design, the solution to the appearance of an industrial or handicraft product is protected.
Section 5, Art. 1352 of the Civil Code of the Russian Federation:
No legal protection is granted as an industrial design:
1) solutions, all signs of which are due solely to the technical function of the product;
2) decisions that could mislead the consumer of the product, including with regard to the manufacturer of the product, or the place of manufacture of the product, or product for which the product serves as a container, packaging, label, in particular, solutions identical to the objects specified in paragraphs 4–10 Article 1483 of this Code, either producing the same general impression, or including the specified objects, if the rights to the specified objects arose earlier than the priority date of the industrial design, except for cases when the legal protection of the industrial design requested by a person with the exclusive right to such an object.
Provision of legal protection for industrial designs identical to the objects specified in clause 4, sub-clauses 1, 2 clause 9 of article 1483 of this Code, either producing the same general impression or including the said facilities, is allowed with the consent of the owners or persons authorized by them objects.
In practice, this means that designation (in the Russian sense of the word - appearance) of products can be patented as an industrial design, but objects related to inventions, utility models, trademarks, appellations of origin are not allowed. In particular, as an industrial design, you can patent the original appearance of the product, the original appearance of its packaging, the elements of the graphical user interface.
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What can and can not be registered as trademarks
What does the source say
Clause 1 and Clause 2, Article 1482 of the Civil Code of the Russian Federation:
Verbal, pictorial, volumetric and other designations or their combinations can be registered as trademarks.
A trademark can be registered in any color or color combination.
Clause 1, Article. 1483 of the Civil Code of the Russian Federation:
State registration as trademarks of signs that do not possess distinctiveness or consisting only of the elements is not allowed:
1) included in the universal use for the designation of goods of a certain type;
2) being generally accepted symbols and terms;
3) characterizing goods, including those indicating their type, quality, quantity, property, purpose, value, as well as time, place and method of their production or sale;
4) representing the form of goods, which is determined solely or mainly by the property or purpose of the goods.
These elements may be included in the trademark as unprotected elements, if they do not occupy a dominant position in it.
Verbal, pictorial, volumetric and other designations or their combinations can be registered as trademarks.
A trademark can be registered in any color or color combination.
Clause 1, Article. 1483 of the Civil Code of the Russian Federation:
State registration as trademarks of signs that do not possess distinctiveness or consisting only of the elements is not allowed:
1) included in the universal use for the designation of goods of a certain type;
2) being generally accepted symbols and terms;
3) characterizing goods, including those indicating their type, quality, quantity, property, purpose, value, as well as time, place and method of their production or sale;
4) representing the form of goods, which is determined solely or mainly by the property or purpose of the goods.
These elements may be included in the trademark as unprotected elements, if they do not occupy a dominant position in it.
In practice, this means that you can register as a trademark the name of the product, the name of its developer / manufacturer, literary, graphic (graphic), cinematic or game character (including, in bulk), logo, slogan (including in sound form), the color itself and even the flavor. It is impossible to register a technical solution as a trademark (by the way, this is why the main Lego cube with eight projections was not registered as a European trademark).
What to do with knowingly unpatentable RID IT
If RID IT does not belong to patent law or to means of individualization, it can be protected in other ways.
1. Protect them as objects of copyright. For example, register as a computer program or as a database. This method of protection of exclusive rights is simple and cheap, but ineffective, since (a) only a small code fragment (several pages in printed form) can be deposited as part of an application and (b) the program algorithm can be implemented in a thousand ways that do not coincide with the registered program, including in different programming languages. Nevertheless, registration of programs and databases is quite suitable as an additional means of protection. Another way is to deposit the work (say, the plot of the game) in the form of a literary work in any official depository, for example, in the Russian State Library (RSL).
2. Save the development as a secret of production (know-how). Recent changes in Russian legislation have made this path quite realistic, since in order to introduce a commercial secret regime at an enterprise, it is no longer necessary to convert it into a Soviet-type pb from the military-industrial complex with its first and second departments and the secret library.
3. Put the development in free access. The meaning of this step is to openly publish the development in order to prevent its patenting or registration by other persons and the subsequent presentation of claims to its actual developer if patenting or registration by the developer is impossible or undesirable (for example, for ideological reasons). The publication in this case should be documented (obtain a certificate of deposit with the application of a certified copy of the deposited document, issue a notarial inspection certificate of the site and, possibly, apostil it for international purposes, etc.). In this sense, the use of open repositories on the Internet is meaningless, since the very layout of the plot, game mechanics or code can hardly serve as a defensive publication due to the difficulty of proving the electronic publication date and the immutability of the published information.
A complex approach
Whenever possible, it is wise to use a combination of different methods. For example, even in the case of patenting, it may be advisable to de facto store it as a trade secret before the publication of the application. Saving the development (for example, a computer game) as a production secret (know-how) is fully combined with the deposit of the plot in the RSL without publication and with the registration of characters as trademarks. Patenting devices as inventions or utility models are sometimes combined with patents as an industrial design, simply citing the appearance of a product protected by a patent for an invention or utility model in an application for a sample.
Well, that's all for Russia. And what about the rest of the world?
Essentially, the same. In different countries, the mechanisms for ensuring the legal protection of RID IT may differ, for example, there is not everywhere an institute of utility models or registration of programs and databases; instead of depositing in the RSL, it may be wiser to use deposit in the USPTO or in a specialized service of protective publications ( www.researchdisclosure.com or ip.com/prior-art-database ), but the principle of optimizing the regime of legal protection depending on the substance of RID IT protected and an integrated approach to protection remains unchanged.
Source: https://habr.com/ru/post/298796/
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