Gowling WLG (International) Inc - Russia
The question of what constitutes an invention does not have a universally accepted definition, but according to the Russian Patent Office, there are a number of objects that are excluded from patentability. To succeed in their application, candidates are advised to avoid terms that unambiguously exclude inventions from consideration as patents.
Russian patent law specifies what kinds of objects are excluded from patentability. These include:
- scientific and mathematical methods;
- solutions improving the outer appearance of an object and its aesthetic properties;
- game rules and methods, and economic operations;
- computer programs; and
- solutions that merely provide information.
While most of these exclusions are straightforward, others are less so. One could reasonably ask why mathematical methods, economic operations and computer programs are not defined as inventions in Russia. The short answer is they do not provide a technical effect.
The provision of a technical effect is one of the most important criteria for an examiner during the process of substantive examination in Russia. An invention should deliver an effect of a technical nature that is objectively achieved by implementing a method, or during the manufacture or use of a product. Thus, an invention is either a method (a process of conducting actions on a material object using material means) or a product. Bear in mind that in Russia, effects are not considered technical if:
- it is achieved only through specific actions or rules agreed upon by the participants;
- it consists only of providing information through the use of a mathematical method, computer program or an algorithm; or
- it lies only in the (semantic) content of provided information.
With this logic in mind, it is clear that a mathematical method and a computer program do not involve conducting actions on a material object using material means. In addition, the results of economic operations are not objectively achieved, since they include rules agreed upon by the participants instead of technical means.
Choose your words carefully
One important and complicated aspect is that all of the aforementioned objects are excluded from patentability only when they are claimed as such. This means that the examiner will definitely reject, for example, a computer program claim, but might consider the patentability of a claim for a storage medium containing computer-implemented instructions to implement a particular method.
Unfortunately, not all objects can be transformed in this way to achieve patentability. A real case summary of a patent application that was ultimately rejected serves as a useful example of this.
The applicant put forward a claim for a system for improving the diagnoses of diseases. The first office action indicated that such an invention is excluded from patentability, as it consisted of information being provided through the use of a mathematical method. Discussion with the examiner revealed that, even though the effect of improved diagnostic accuracy could be considered technical in itself, the specification clearly stated that this effect is achieved due to a specific evaluative model that processes data and not because of some physical improvement. It was the only effect indicated in the specification. In view of the fact that the invention could not be connected with any material means based on the originally filed materials, the examiner ultimately rejected the application.
This example goes to show that, according to both Russian patent law and common practices, there are some clear red flags for examiners during the process of substantive examination. The first aspect that an examiner pays attention to during this process is whether there is a technical effect achieved by the claimed invention. An indication of any means that can be considered a mathematical method as the only improvement compared to the original version of the invention will most likely raise objections.
To have the best chance of success, applicants should refrain from using unambiguous references to mathematical methods, or at least provide alternatives in the specification that could help to articulate that the invention provides physical advantages.