The turn of 2017 marked 25 years from the day of adoption of the 1992 Patent Law of the Russian Federation, which for the first time provided for a legal concept of a utility model along with patents for inventions. The introduction of utility models in the Russian patent legislation was preceded by the cancellation of legislative regulation of protection of rationalization proposals, which existed in the USSR.

A rationalization proposal was recognized as a technical solution for being new and useful to the enterprise, organization, or institution that created it and providing for a change in the design of articles, manufacturing process, and applied technology, or a change in the material composition.

Applications for rationalization proposals were filed in the USSR in the number comparative to that of applications for inventions; absolute cancellation of protection of rationalization proposals, without introducing any protectable item close to such proposals into the new Russian patent legislation, could result in impairment of rights and interests of many innovators and enterprises. Thus, when developing a Russian patent law, it was proposed to introduce protection of utility models along with inventions.

As of the time of introduction of the utility model concept in Russia, there was such a form of protection in many countries worldwide. However, while the legislation of the countries worldwide is rather harmonized with regard to inventions, there are very great differences as to the same on utility models. In some countries, products (devices and substances) and methods are protected as utility model items by analogy with invention items. In other countries, only products are protected as utility model items. At the same time, in some countries, utility model patents are issued without an expert examination of applications on the merits, but, in other countries, a complete expert examination is carried out by analogy with an expert examination of applications for inventions. In some countries, patentability requirements to a utility model are actually similar to those of inventions (novelty, inventive step, and industrial applicability). In other countries, no inventive step applies to a utility model.

The Russian legislation also added to this variety its own legal component. The Patent Law of the Russian Federation enacted in 1992 set forth that "utility models shall be design implementation of means of production and articles of consumption as well as of their components" (clause 1 of Article 5 of the Patent Law). Thus, it was decided that a technical solution relating to a device, but not to a method or substance, shall be protected as a utility model. Further, only industrial applicability and novelty requirements come upon a utility model. In addition, when checking the claimed utility model for compliance with the novelty requirement, not all features of a utility model included by the applicant in the claims (as set forth for inventions), but only essential ones are taken into account. In the Russian patent practice, the features influencing the achievement of the technical result specified in the application (a technical problem solution) are recognized as essential. Any other features, notwithstanding they are included by the applicant in the summary of a utility model, are not taken into consideration when evaluating compliance of a utility model with the novelty requirement.

The patent law established a simplified procedure for consideration of applications for utility models. An expert examination was carried out only regarding compliance with requirements as to form an application for utility model, and it was checked whether the claimed technical solution was relating to a device. If, following such incomplete expert examination, it was found that the requirements to form an application were complied with, and the claimed technical solution was relating to a device, then a utility model patent was issued under the application. Almost the same requirements as to an application for invention came upon the scope and content of the materials of an application for issuance of a utility model patent.

Under certain conditions, it was allowed to transform the already filed application for invention into an application for a utility model. Usually, such transformation makes sense if, after the application for invention has been filed, a doubt that the invention meets the "inventive step" criterion arises. Transformation of an application for utility model into an application for invention was also allowed, which was feasible if an application for an item not protectable as a utility model (for example, a method or a substance) or an application for a group of utility models was filed.

The concept of the Russian utility model was significantly changed in 2014. After the amendments to the law in 2014, one application for a utility model may relate only to one utility model, while, in an application for invention, a group of inventions united by a single inventive concept may be claimed. The claims of a utility model, therefore, may contain only one independent claim. Moreover, the independent claim shall not contain any alternative features.

As a result of the amendments to the law in 2014, the possibility to change applications for utility models became significantly limited. Any changes are allowed only in response to the patent office's request. Furthermore, only those changes are allowed, which do not change the subject of an application: without supplementing the claims with any features absent in the original application; without supplementing or replacing the claims with any other independent claim; without supplementing the application materials with an indication to the technical result not related to the originally indicated technical result.

In the utility model concept adopted in 1992 that existed until 2014, a utility model was not checked for compliance with the patentability requirements (novelty and industrial applicability), but during the entire validity period a utility model patent could be contested by any person by filing an opposition to a patent office and held invalid due to its incompliance with the patentability requirements. The definition in the law of the state of art, with regard to which novelty of utility models is evaluated, underwent certain changes over the years.

Before the 2014 amendments, the state of art included any information published anywhere in the world on means of the same purpose as the claimed utility model and on the use thereof in the Russian Federation if such information was made available to the public before the priority date of the utility model. The state of art also included all applications previously filed to the patent office by other applicants. As to utility models, like as to inventions, the law establishes a 6-month "grace period" to file an application after the essence of a utility model is disclosed by an applicant, author, or any third party, who, directly or indirectly, obtained the information on the utility model from the applicant or the author.

After the 2014 amendments, when evaluating novelty of utility models, like for inventions, the state of art includes any information made available to the public anywhere in the world before the filing (priority) date of a utility model. It also includes the information made available to the public as a result of open use of the relevant device anywhere in the world. The new concept will certainly prevent unscrupulous persons from obtaining patents for technical means known and openly used abroad but not in the Russian Federation. A utility model patent grants actually the same exclusive rights as a patent for invention. The only difference is that, beginning in 2014, when evaluating infringement of a utility model patent, no doctrine of equivalents applies as in case of a patent for invention, i. e. only literal infringement is recognized. The exclusion of the doctrine of equivalents from application resulted from the 2014 amendments to Part Four of the Civil Code of Russia.

A utility model patent may be claimed in case of entry of an international PCT application into the national phase.

Simultaneous filing of both an application for an invention and an application for a utility model for the same item is allowed. At the same time, after obtaining a patent under any application (as a rule, it is an application for utility model), a patent under another application may be obtained only subject to a simultaneous waiver of the previously issued patent with regard to the matching items.

The validity period of a utility model patent changed in the law as follows.

From 1992 to 2007, the Patent Law of Russia (1992) provided for the maximum protection period equal to 8 years. After the patent legislation was transferred to the Civil Code, the protection period for utility models was increased up to 13 years, but, as a result of the 2014 amendments, the maximum protection period for a utility model was decreased to 10 years.

During a patent's validity period, a patent maintenance fee should be paid: such fee is charged from the first year from the filing date for utility models and from the third year for patents for inventions. The patent maintenance fee amounts become equal from the third year.

A utility model patent may be contested and held invalid for the same reasons as a patent for invention, including on grounds of noncompliance with the patentability requirements.

Beginning from 2014, in case a patent for invention is contested on grounds of its non-compliance with the patentability requirements for inventions (for example, lack of an inventive step), a patent holder may petition to transform a patent for invention into a utility model patent if, at the same time, the item is found to comply with the patentability requirements for utility models. If the petition is satisfied, the patent for invention is recognized as completely invalid, and a new patent – a utility model patent – is issued for the period remaining until expiration of the statutory protection period for utility models. However, the most significant change in the utility model concept introduced in 1992 was due to the introduction in 2014 of an expert examination on the merits of utility models. Such expert examination on the merits was introduced because a lot of utility model patents without novelty were issued according to the procedure provided for in the 1992 legislation.

The introduction of an expert examination on the merits was preceded by the extended search for solutions and the experience of other countries, where utility models are protected. One of the proposals to change the law was to oblige the owners, while continuing to issue utility model patents without conducting an expert examination on the merits, to obtain from the patent office an opinion on compliance with the patentability requirements before they decide to lodge claims against any third parties for infringement of their patents. But, in the end, other amendments were adopted in 2014, and, with regard to utility models, a procedure for expert examination on the merits evaluating the patentability before issuance of a patent was introduced.

Now, in case an expert examination as to form is positive, an expert examination of an application for a utility model on the merits is carried out, which includes an information search to determine the state of art, check of the claimed utility model for compliance with the patentability requirements, and check for adequate disclosure of the essence of the claimed utility model in the application documents as at its filing date.

Tightening of the procedure for patentability evaluation certainly cut the likelihood of patenting widely known things. However, it resulted in an extension of the period between the application filing date and the patent issuance date, which originally was considered as one of the advantages of the introduction of the utility model legal concept. Although, it should be noted that, if there are no grounds to make a request on the application, the period for its consideration is currently about 4 months, which is rather satisfactory to the public.

One of the disputable issues in the utility model protection regime is an approach, which significantly changed over time, of the patent office to determine the item that is protectable as a utility model being a device that is now construed by Rospatent (Federal Service for Intellectual Property) to an extremely limited extent.

Initially, neither applicants nor the patent office differentiated an approach to devices in applications for inventions and utility models: the same device item could be the subject of an application for invention or an application for utility model, regardless of its sophistication and complexity. But, beginning from about 2010 to 2012, Rospatent suddenly changed its practice for expert examination of applications for utility models and began to recognize as patentable device for a utility model only those devices that consist of one part (design component, unit, or any other functional part of a device) or several parts interlinked functionally and coupled mechanically, but not, for example, electrically, electromagnetically, or optically.

Moreover, after 2014, the patent office's Rules for consideration of applications for utility models stated the following definition of a device:

"Devices are articles not having any components (parts) or consisting of two or more parts coupled with each other through assembly operations and being united functionally in design (assembly units)". At the same time, for most Russian patent law experts it is obvious that neither the Patent Law of Russia, nor Part Four of the Civil Code of Russia, differentiates the content of notion "device" for an invention and of notion "device" for a utility model.

Nonetheless, this changed practice of the patent office was, surprisingly for experts, supported by the Intellectual Property Rights Court. Thus, the Presidium of the Intellectual Property Rights Court adopted a resolution dated June 1, 2015, on case No. SIP-926/2014, which recognized such approach of Rospatent as compliant with the legislation. Moreover, this resolution of the Presidium of the Intellectual Property Rights Court was further supported even by the Supreme Court of Russia (determination dated September 23, 2009, on case No. 300-KG15-10890).

As we can see, the limits of protectable items, the limits of applicant's rights under applications for utility models, and the scope of rights of a holder of a utility model patent reduced more and more over time. Obtaining protection for a utility model now requires more funds and time.

Although there is no harmonized protection system for utility models in the world, it is possible to say that the protection of utility models in Russia has its clear-cut features. Such features and trends in development of the legislation and the patent office's practice, which have emerged lately, make obtaining protection of a utility model in Russia attractive only for those technical solutions, which do not have any inventive step. In all other cases, it seems more reasonable to obtain a traditional patent for invention.

The statistics of the applications filed and patents issued in the Russian patent office evidences that the number of applications being annually filed and patents being annually issued for utility models make about one-third of the number of applications and patents for inventions, respectively. If we take into account only applications and patents from foreign applicants (patent holders), such comparison is more against utility models: the annual number of applications and patents for utility models is less than 10% of the number of applications and patents for inventions, respectively. We suppose that it is the national peculiarities examined in this article which makes protection of utility models in Russia so unpopular.

Now in Russia, there is still a discussion between patent experts and Rospatent on interpretation of a "device" as a utility model and on many other restrictions introduced when amending the law in 2014, and there is a chance that it will work well to convince Rospatent to ease unreasonable restrictions and to expand the scope of application of the "utility model concept".

However, while such disputes remain, we believe that it is for the benefit of an applicant to claim protection of his/her/its technical achievements in the form of a patent for invention in Russia.

Originally published by The Patent Lawyer by CTC Legal Media, Issue 38, September/October 2018

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