New Regulations for Preparation and Consideration of Applications for Utility Models

On 27 January 2016, the Rules for Preparation, Filing and Consideration of Utility Model Applications (hereinafter – “Rules”) and the Requirements to the Documents for the Utility Model Applications (hereinafter – “Requirements”) entered into force. The Rules and Requirements specify the use of the new provisions introduced in the Civil Code by Federal Law No. 35-FZ of 12 March 2014 (entered into force on October 1, 2014), as well as some provisions of Chapter 72 (“Patent Rights”) of the Civil Code which were not amended.

In particular, the Rules and the Requirements provide explanation of the new provision of the Civil Code according to which the application for granting a patent for a utility model should be related to only one utility model. The Rules (par. 40) and the Requirements (par. 40) do not allow the applicant to include in the utility model claims more than one independent claim, nor do they allow to include several combinations of the essential features in an independent claim, if each of the combinations affect the achievement of an individual technical result without achieving the overall technical result other than the sum of those individual results. Nor is it allowed now to include in a claim alternative essential features (par. 40 of the Requirements).

The Rules clarify the new provisions of the Civil Code regarding admissible and inadmissible changes to a utility model application (Art. 1738). In particular, the Rules (par. 80) define the circumstances in which the modified claims are recognized containing "another utility model" (inadmissible change), and provide examples where a new technical result, mentioned in the additional materials, is considered to be related to the originally specified technical result (admissible change).

Further, paragraph 37 of the Rules prescribes that when checking the sufficiency of disclosure of the claimed utility model, as provided for by the new wording of Article 1390(1) of the Civil Code, the Examiner should check not only the feasibility of the utility model, i.e. the disclosure in the application of the means enabling to implement each feature of the utility model and the proof of achievability of the intended function of the utility model, but also the ability to achieve the claimed technical result.

In addition to the detailed elaboration of the amended provisions of the Civil Code, the Rules and Requirements provide new regulations for some of unamended provisions of the Civil Code.

In particular, paragraph 34 of the Rules formulates circumstances when the subject matter claimed in the utility model application should be recognized as not eligible for protection by utility model patent in accordance with Article 1350(5) of the Civil Code. According to the Rules, the claimed subject matter shall be recognized as one of those which are excluded from the utility model protection, if the name of the object, as it is given in the claims, or all the features listed in the claims are related to those unprotectable objects, or if all the features listed in the claims provide the achievement of a result which is not technical.

Paragraphs 35 and 36 of the Requirements stipulate that a device can be protected as a utility model, if it either does not have separated parts, i.e. is a single unit, or consists of several parts, which are mechanically connected with each other by assembly operations and are in the functional-constructive unity, i.e. is an assembled unit.

It can also be noted that for the first time in the Russian normative legal act, a definition is given of the concept of "a person skilled in the art" which has been used in the Russian patent law and practice for a long time. The Requirements (par. 35) stated that under such a person is understood "a hypothetical person having access to all levels of technology and who is in the possession of general knowledge in the art based on the information contained in the manuals, monographs and textbooks." The law prescribes, for example, to assess the sufficiency of disclosure of the claimed utility model in the application from the positions of a person skilled in the art. In the patent practice, from the position of this hypothetical person, for example, the obviousness of a mistake made in the application should be assessed.

Along with the Rules and Requirements, the Forms of various documents were approved, which are used for filing and examination of a utility model application, as well as the Form of a patent and the structure of the published information.

The utility models system in Russia has its own clearly pronounced particulars. These particulars, as well as trends of development of law and the Office’s practice allow us to say that utility model protection in Russia may be attractive only for technical solutions related to devices that do not have any inventive level. In all other cases, it seems to be reasonable to obtain a regular patent for invention.

The stat data of the applications filed, and the patents issued in the Russian Patent Office show low demand for this form of protection. The number of annually filed applications and issued patents to utility models is approximately one-third of the number of applications and patents for inventions. If, however, to take into account only applications and patents of foreign applicants (patent owners), the contrast would be even more striking: the annual number of applications for utility models is approximately 6 per cent of the number of applications for inventions and the number of patents for utility models - 7.5 per cent of the number of patents for inventions. We have every reason to believe that it is those national particulars which make the utility model protection in Russia so unpopular.

Nevertheless, the possibility to convert a pending invention application into a utility model application sometimes allows the applicant to ensure patent protection for the technical solution, if in the course of examination of the invention doubts emerge that the invention meets the criterion of the "inventive level." Also, it is allowed to convert a pending utility model application into an invention application to save the application in case the Examiner judges that the application has been filed for an object that is not protected as a utility model (for example, a system containing several devices not constructively connected with each other, or a method, or substance), or the application contains a group of utility models.