Patentability of a utility model on the basis of novelty

Patentability of a utility model on the basis of novelty. Arbitrage practice.

Technical solutions related to devices are protected by Russian law as utility models, the unique rights to which are certified by patenting.

At the same time, the features of patentability are novelty and industrial applicability.

The Presidium of the Intellectual Property Rights Court expressed a legal position regarding the procedure for determining the novelty feature of a utility model in order to establish the possibility of obtaining a patent for it.

Case plot:

Society 1, on the basis of an agreement on the alienation of the exclusive right, has a patent for a utility model.

Company 2 submitted to the Federal Service for Intellectual Property (Rospatent) objections, confirmed by pre-existing patent documents and publication on the Internet, against the issuance of a patent used by Company 1 due to the non-compliance of the useful model with the patentability condition "novelty".

Based on the results of consideration of the objections of the Company 2, Rospatent came to the conclusion that the totality of the essential features of the utility model formula for the disputed patent was disclosed in the patent documents submitted by the Company 2, in connection with which the disputed patent was declared invalid by Rospatent in full.

The application of the Company 1 for the recognition of the specified decision of Rospatent as invalid was left by the Court for Intellectual Property Rights without satisfaction, however, the decision of the court of first instance was canceled by the court of cassation, the case was sent for a new trial.

Judicial act: Resolution of the Presidium of the Intellectual Property Rights Court dated October 25, 2021 in case No. SIP-1137/2020.

Court's findings:

1. From the provisions of paragraph 2 of Article 1351 of the Civil Code of the Russian Federation, paragraph 2 of Article 1354 of the Civil Code of the Russian Federation, it follows that a utility model can be considered new if the totality of its essential features, including the characteristics of the purpose, based, among other things, on the description and drawings, is not known from the prior art , which is estimated according to the information published in the world about the means of the same purpose. Signs will be considered significant if there is a causal relationship between them and the technical result provided by the utility model, and such signs affect the possibility of obtaining such a technical result.

2. When evaluating the patentability of utility models, they should be opposed to specific devices known from sources of information, and not to such sources themselves. In one source of information, different devices can be disclosed, just as one device can be disclosed in different sources of information.

3. The court of first instance erroneously considered it possible to establish the absence of a novelty feature of a utility model from the totality of features of not one, but several means of the same purpose, mentioned in one source.

4. A combination of individual features belonging to different means that are described in the same document is allowed if such a combination clearly follows from the document itself or if such a combination was disclosed specifically.

Comments:

1. The position of the court on this issue must be taken into account both when intending to patent a specific utility model, and when intending to challenge another person's utility model patent in order to understand the prospects for establishing one of the two necessary features in relation to such a model - a feature of novelty.

At the same time, the court has the right to determine the presence of this sign without appointing any forensic examinations, according to its inner conviction, taking into account the requirements established by the Rules approved by Order of the Ministry of Economic Development of the Russian Federation of September 30, 2015 No. 701.

2. To evaluate a utility model for its patentability on the basis of novelty, it is first necessary to analyze the similarity of the essential features of such a utility model with other specific devices, information about which may be contained in various sources, taking into account the fact that such similar features must be present in the aggregate each opposing device.

3. An exception are cases when the document disclosing information about opposed devices directly allows a combination of individual features of various devices described in it, which can be taken into account when evaluating the novelty feature of a utility model.

4. Taking into account the approach set out by the court, holders of patents for utility models can count on providing more substantive protection of their rights, including through a more thorough analysis of the similarity of the essential features of their utility models with features of other previously described devices.

Please note that in 2020 the law firm Vetrov & Partners was marked by the industry rating of law firms Pravo.ru-300 in the nominations Arbitration Proceedings, Dispute Resolution in Courts of General Jurisdiction and is one of the regional companies throughout Russia in these nominations.

In the event that your litigation or other dispute, contractual work or any other form of activity concerns the issues discussed in this or our other material, we recommend that you check and make sure that your legal position complies with the latest changes in practice and legislation.

We will be happy to provide you with legal assistance regarding the minimization of legal risks and available opportunities. We will try to find a solution that is right for you.

Call +7 (383) 310-38-76 or write to info@vitvet.com.

Our law firm provides various legal services in different cities of Russia (including Novosibirsk, Tomsk, Omsk, Barnaul, Krasnoyarsk, Kemerovo, Novokuznetsk, Irkutsk, Chita, Vladivostok, Moscow, St. Petersburg, Yekaterinburg, Nizhny Novgorod, Kazan, Samara, Chelyabinsk, Rostov-on-Don, Ufa, Volgograd, Perm, Voronezh, Saratov, Krasnodar, Tolyatti, Sochi).

David Glikshtein, manager. I write articles, look for interesting information and suggest ways to use it in practice. I believe that thanks to high-quality legal analytics, clients come to a law firm, and not vice versa. Do you agree? Then let's be friends on Facebook.