Все новости от 23 июля 2004 г.

New push for utility models

Dr. Anatoly N. Pavlovsky
Deputy Managing Partner
"Gorodissky & Partners"
Russian and Eurasian patent attorney

One of the important changes, introduced into the Russian Patent Law is that the rights to a utility model are now confirmed by a utility model patent, not by a certificate as has been the case up to now. This enhances the significance of protection of a utility model at present in Russia.

A utility model patent is valid for five years from the date of filing an application with the Russian PTO. The term of validity of a utility model patent may be extended at the request of the patent owner, but for not more than three years.

The scope of legal protection of a utility model is determined by the claims, wherewith the specification and drawings may be used for interpretation of the claims.

However, only a device is protected as a utility model. To obtain protection for a utility model it should conform with the patentability conditions such as novelty and industrial applicability. Involvement of an inventive step is deleted from the conditions of patentability for a utility model.

But nevertheless an owner has the exclusive right to a patented utility model. This means that nobody has the right to use a patented utility model without the consent of its owner. However, the patent owner may assign his exclusive right to any individual or legal entity. The assignment deed should be registered at the Russian PTO.

...only a device is protected as a utility model. The only formal examination is carried out in respect to an application for a utility model and not in conformity with the conditions of patentability.

The filing date of an application for a utility model is determined by the date of its receipt by the Russian PTO. Claims for the utility model are not necessary to establish the filing date of the application.

Priority of a utility model may be determined by the filing date of an earlier application filed by the same applicant, disclosing the utility model and not having been withdrawn at the filing date of the application in respect to which priority is requested, in the case where the application is filed not later than six months from the filing date of the earlier application for the utility model.

In the case where the priority dates of an invention and identical utility model on the basis of applications of one and the same applicant coincide, after a patent is granted in respect to one of such applications, the grant of a patent on the basis of the other application is possible only under condition that a request is filed with the Russian PTO by the owner of the earlier patent to invalidate the patent in respect to the identical invention or identical utility model. The validity of the earlier patent in respect to the identical invention or identical utility model terminates at the date of publication of information on the grant of a patent on the basis of the other application. The publication of information on the grant of a patent on the basis of an application for an invention or utility model and the publication of information on the termination of validity of an earlier patent in respect to an identical invention or identical utility model are carried out simultaneously.

The only formal examination is carried out in respect to an application for a utility model and not in conformity with the conditions of patentability.

Conversion of an application for a utility model into an application for an invention is possible prior to the date at which a decision is taken to grant a patent, and in the case where a decision is taken to refuse the grant of a patent - prior to the date at which the possibility for lodging an appeal against such a decision is exhausted. With such conversion, the priority and filing date of the application are retained.

Newsletter #2(13) 2003, "Gorodissky & Partners"