Defence of inventions in the Chamber for Patent Disputes
In recent years disputes between applicants and experts on non-recognition of inventive technical solutions are occurring more frequently. In case of disputes, applicants should be ready to defend their inventions at the sessions of the board of the Chamber for patent disputes.
According to paragraphs 1.1-1.4 of the Rules for submission of objections and applications and their respective review in the Chamber, available on the website of the Federal Institute of Industrial Property (http://www.fips.ru), the following types of objections may be submitted for inventions, utility models and industrial designs:
•against a decision on refusal to grant a patent or to issue a patent for an invention, utility model, industrial design;
•against a decision on recognition of the application for an invention, utility model and industrial design as revoked;
•against issuance of a patent for an invention, utility model and industrial design
•against the validity on the territory of the Russian Federation of a previously issued copyright certificate or a USSR patent for an invention, a certificate or USSR patent for an industrial design, a Eurasian patent for an invention issued in accordance with the Eurasian patent Convention of 9 September 1994.
This article provides some recommendations regarding the first two bullets.
The important provisions of the Rules are paragraph 2.2, which states that an objection is composed in any form, and paragraph 2.5, which states that an objection should contain a rationale explaining the illegitimacy of the challenged decision. Other requirements concerning the submission of objections are broadly and clearly described in the rules (see the link), and do not need further commenting. An objection is submitted by an applicant against a decision on granting a patent for an invention, utility model, industrial design, after which the applicant receives a notification with the time of the session held by the Chamber Board. This information can also be found at http://www.fips.ru/sitedocs/Boards.pdf in the section "Schedule of the Chamber Board for patent disputes".
The examination process of a technical solution submitted by an applicant to the Chamber Board has already been briefly described in [1,2], which refer to the dispute on "the method of measuring the quantum nonlocality energy of particles, making infinite movements". Below, we will elaborate on this case more in detail.
At the examination stage of the application, the technical arguments, theoretical estimates and experimental outcomes brought up by the applicant did not convince the expert that the proposed method was applicable in the industry. This partly seemed reasonable because the invention was rather revolutionary in nature and was based on the discovery of a new effect, which. at the time of application, had not been published in open sources yet. Of course, the experts had reasons to doubt the existence of this effect (discovery). However, by the time of the session held by the Chamber Board, the information on this discovery and the examples of its development and use had already been published in several scientific and popular sources, including foreign ones. This information was beyond the scope of the original application materials, but there were no plans to use the information as additional materials for inclusion in the text of the application, or, even more so in the claims. Nevertheless, the publications were presented to the Chamber Board, because they explained the main points of the discovery in a simple form and from different standpoints, substantiating the objectivity and feasibility of the proposed method. Furthermore, during the initial objection, the Chamber Board was provided with a revised version of the invention claims, which had partly taken into account the remarks of the examiners. Yet, the expert, who made a decision on refusal to grant a patent, did not change his opinion. Therefore, a second session of the Chamber Board with another expert was summoned. The second Board session decided to resume the examination and granted the patent for the method proposed .
As a second example, we would like to refer to the session of the Chamber in relation to the decision on recognition of an application as revoked (Form No. 05, PM, PO-2011) for an invention that provided a clock in the form of an architectural object represented by an assembly of fountains. The fountains showing seconds, minutes and hours were to be placed in the pool in three circles having different diameters. It was proposed to place three illumination circles of different diameters on a solid surface around the fountains. Each second, minute and hour corresponded to the respective fountain with the illumination source switching on according to the time.
During the examination, the proposed solution was compared to eight foreign and two domestic patents, and it was judged that the proposal did not meet the inventive level requirement. Thus, a notice was issued (Form No. 26 IZ_2012) on noncompliance with patentability requirements. The applicant conducted a comparative analysis of the proposed and contrasted features, as well as their technical use and expressed his intention to take part in an examination session, if the experts deemed it appropriate. The experts accepted the proposal, and the session members decided to provide some time to have the claims of the invention amended and to allow a more complete comparative analysis. The applicant submitted the results of the analysis in the form of a comparative table, which contained each item of the proposed patent claims with their distinctive features, the features contrasted by the experts, their technical use and the other features and conclusions. The analysis revealed that the features and technical use of two dependent claims of the application were similar in the opposed claims, and those items were excluded from the claims. The features of three items were different from the opposed items and they were remained unchanged in the claims. The features of the remaining items overlapped with the opposed features, but led to a different effect. After conducting the analysis, the examination board received an amended version of claims, which also included additional features, which were based on the original application text, but a word-by-word copy. The applicant said that those features were within the scope of the original materials.
The decision of the expert on recognition of the application as revoked was based on the amended version of the patent claims. The expert noted that the claims included features which were absent in the texts of the claims and in the disclosure were presented with the original application materials, particularly, with reference to the location of the fountains "in the central part of the informative area" and the location of the indicator of seconds of the second set of indicators “in the maximal proximity" to the indicators of seconds of the first set of indicators. The decision stated that "the inclusion in the amended claims... of the features that change the essence of the claimed invention indicates that their contents violate the requirements of paragraph 1 of article 1378 RFCC and paragraph 24.7.(3) of the Administrative execution regulations of the Federal service for intellectual property, patents and trademarks on the state function for submission of applications for inventions and their examination, expert study and granting invention patents of the Russian Federation as prescribed, thus, in compliance with paragraph 24.6.(2) of the regulations, the patent application is recognized as revoked".
Indeed, such features as "the central part of the informative area" and the "maximal proximity" were not explicitly mentioned in the original application materials. However, according to the applicant, they were clear from the drawings and disclosure, which described the diameters of the circles with objects placed thereupon, from which one could see their position relative to each other. The examination board ignored the comparative analysis between the distinctive features of the proposed solution and the opposing features brought by the examination board, as presented by the applicant together with the amended version of the claims.
In the objection sent to the Chamber against the decision on recognition of the applications as revoked, the applicant stressed that, in his opinion, the amended version of the patent claims, in fact, were not out of the scope of the original materials, and he had not insisted on the inclusion of exactly those features into the claims, and that there could be other versions of the disclosure, based on the original application materials. Those versions were specified in the objection and were based on the specification of diameters of the circles in which the objects were placed according to the original disclosure. Besides, the objection included a copy of the comparative analysis of features, which was not taken into account by the examination board.
Since the Chamber Board examined the technical issues and mad a decision within a limited time, additional drawing and photos of the patented items were presented. They were visibly out of the scope of the original materials, but they explained the essence of the invention more lucidly. At the Board session, it was expressly specified and stressed that the applicant did not intend to replace the primary drawings and other materials, but provided additional materials to the Board so its members could better understand the technical side of the issue. Additionally, the photographs provided evidence of the existence of a real object described in the invention claims and the willingness of the applicant to obtain a positive decision on the application. The representative of the examination board was convinced by the arguments of the applicant, and the Chamber Board resumed the work on the application, requiring further examination.
In both the examples, the objections were presented with amending claims. Additional materials, including, those out of the scope of the original materials, were used at the session of the Chamber Board for the sole purpose of explaining technical issues. Such materials may be submitted before the Board meeting, and during the meeting, whenever the applicant believes it to be appropriate. All of this helped the Chamber Board to understand the issues quickly and to make objective decisions.
Many inventors believe that defending their stance at a Chamber Board session is hopeless. Certainly, not all cases are resolved in favor of inventors (see the statistics in the section of the rules on "Decisions of the Federal service for intellectual property, made on the basis of appeals considered by the Board of the Chamber for Patent Disputes" http://www.fips.ru/sitedocs/
pps_all.htm). However, these two examples show that with proper preparation and reasoning, based on objective data, the applicants’ objections may be satisfied.