Gowling WLG (International) Inc - Russia
In many countries, patent laws on utility models are not as developed as those for inventions. Each country has its own unique set of laws in this area. In Russia, the Patent Act 1992 made obtaining utility model protection possible. The law then changed in 2003, 2008 and again in 2014. Further, utility model patents are regulated under Part IV of the Civil Code.
Technical solutions relating to devices may be registered as invention or utility model patents. All subject matter that is not protectable as an invention is excluded from utility model protection. This includes discoveries, scientific theories, mathematical methods, solutions pertaining solely to the appearance of articles and directed at satisfying aesthetic needs, rules and methods of games, intellectual or economic activities, computer programs, solutions related strictly to the presentation of information, plant varieties, animal breeds and integrated circuit topographies.
Eligible subject matter for utility models is restricted to technical, mechanical types of solutions and may include features that have no components or parts or features consisting of two or more parts that are interconnected using assembly operations with functional and constructive consistency (assembly units). On the other hand, protection excludes the following:
- methods (ie, processes for performing actions on a material object using material means);
- uses of a product or a method according to a specific purpose; and
- strains of microorganism and plant or animal cell cultures.
If the subject matter qualifies for protection as a utility model it must also be novel and have industrial applicability. Therefore, the main advantage of such patents is that they are less assailable because of the absence of the inventive step condition. To determine whether a utility model complies with the requirement for novelty, the first step is to remove any non-essential features from the analysis (ie, features that have no technical effect) and to focus on essential features only (ie, solve the applicant’s technical problem and achieve the described technical effect).
Evaluating the novelty of a utility model is a requirement because Russian legislation contains no patentability condition that connects a utility model patent to the prior art. The specification of novelty as a set of features with a cause-and-effect relation to the technical effect eliminates the potential to abuse exclusive rights and blocks technological development as a result.
In addition, the utility model must focus on a single technical solution. This means that it must solve a technical problem that could not be solved with analogues alone, and the desired technical effect must occur. A technical effect includes an event, property or technical outcome resulting from the event or property that can be demonstrated when manufacturing or using the utility model. This effect is characterised, as a rule, by physical, chemical or biological elements. The description of the utility model in the application must disclose its function, so that, a person skilled in the art should be able to implement it.
Until October 2014, utility model patents were granted without any substantive examination during prosecution – applicants need only meet the standard formalities around preparing and filing an application, including a determination of whether the claimed subject matter was a device and whether the singularity requirement was fulfilled.
Since 2014 applications for utility models have been subjected to both formalities and substantive examination, which includes a search and evaluation of the industrial applicability and novelty of the utility model, as well as scrutiny of the description to ensure completeness of disclosure of its essence.
The peculiarity of the Russian approach is the ‘one application for one utility model’ rule. It is not permitted to state alternative features of a utility model in claims or to set out multiple independent claims containing variants. The singularity of the utility model requirement is fulfilled when claims comprise a single-claim set consisting of one independent claim or a multi-claim set consisting of one independent claim with dependent claims.
It is possible to convert an international Patent Cooperation Treaty invention patent application to a national application for a utility model patent in Russia. In addition, shortened terms of examination apply to applications for utility model patents.
The quid pro quo associated with faster examination time and no requirement for inventive ingenuity is that a utility model has a shortened patent term of 10 years with no renewal option.
In the context of infringement analysis, the product in question must use each and every feature set out in the independent claim of the utility model patent. There must be clear infringement and the doctrine of equivalents is specifically excluded under the Civil Code.
Faced with the strategic question as to whether to seek patent protection in Russia for an invention or utility model, one should consider the following:
- a utility model patent application takes about half the time to proceed to grant;
- it may claim priority from an earlier application filed for an invention patent;
- the fees are lower;
- utility model patents are easier to obtain because there is no requirement for inventive ingenuity; and
a utility model patent is an effective way to create prior art in Russia in order to block trolls and others from claiming ownership of designs for themselves.