The concept of patent cleanliness is key in patent law. Its determination is made in order to identify violations of the exclusive rights of third parties to intellectual property. The examination process consists of several stages, and consideration is given not only to the technical object as a whole, but also to its components, parts, components and materials.
General concept
Intellectual property protection is one of the most important components of business in the modern world. Patent purity of technical objects determines the possibility of their production and sale on the market of services or goods. This concept is inextricably linked with a patent that gives the exclusive right to its owner to legal protection of intellectual property rights. If in the process of research it is revealed that the technique does not fall within the scope of patents in a given country, then they speak about the patent purity of the object.
In order to conduct a qualitative analysis, it is necessary to take into account some subtleties: the legislation of the state, regarding which the search for patented analogues is carried out, the uniqueness of individual product elements, the validity period of security documents. The lack of patent cleanliness and the ensuing violation of intellectual property rights leads to large financial losses. This can be expressed in the form of payment of fines, seizure of finished products, a ban on its sale. Therefore, the main purpose of research on patent purity is the examination of the possibility of the free use of technical solutions.
Main criteria
According to the definition set forth in the Civil Code of the Russian Federation, an object is used in a given product or manufacturing method if it is determined that each feature is described in the security documentation (patent issued for an invention or utility model).
Consideration of this factor should be made already in the early stages of production planning - during the design of equipment. Requirements for patent purity are characterized by territorial effect. That is, a valid patent can be found in the United States and protection laws apply to that country. But if no such documents were found in Russia, then the object has patent purity on its territory.
A similar situation is observed if the patent has already expired. Thus, this concept is relative and tied to a specific state and date.
Main directions
In the process of conducting research on the patent purity of objects, the following main tasks are implemented:
- determination of the object to be examined;
- highlighting the technical solutions contained in it;
- development of tasks and work procedures;
- patent search in databases and technical literature;
- systematization of the found documentation;
- analysis of the object under study and the formulas set out in the security documents;
- compilation of a report containing the results of the study.
The rules for documentation in all areas are set out in GOST R 15.011-96.
The objects
The subject of research on patent purity may include:
- industrial and scientific-technical products;
- medical and agricultural products;
- chemical substances;
- biotechnology;
- methods of treatment;
- technological processes and other objects covered by legal protection (Civil Code of the Russian Federation, part 4).
The search is performed among 3 types of security documents: patents for inventions, patents for utility models and experimental designs.
If the subject of the study is a technical device, then patent purity can be checked with respect to the following elements:
- layout or circuit diagram;
- component units or parts;
- operating principle;
- used semi-finished products and materials.
When evaluating the technological process, the objects of expertise are:
- the whole technology as a whole;
- its individual stages;
- materials or semi-finished products used in the production;
- methods for producing intermediate products;
- end results and their scope.
Goals
As part of business development, a patent check may also have the following objectives:
- determining compliance with the criteria of novelty in the preparation of an application for a patent;
- minimizing the risk of duplication of already patented solutions at the stage of development and putting products into mass production;
- study of a patent situation;
- development of recommendations for the application of scientific and technical solutions;
- acquisition of licenses for the right to issue objects protected by patents;
- the resolution of legal disputes upon presentation of claims by third parties regarding the violation of their exclusive rights;
- analysis of unimpeded implementation in the market conditions of the country to which exports are planned.
Task and regulations
Patent studies can be carried out by business entities themselves (entrepreneurs, inventors, companies), and specialized organizations in the field of patenting or patent attorneys. In the latter case, a power of attorney is issued for such work.
The contractor is given the task to carry out the examination, which contains information about the object of study and the tasks set. In addition, a regulation is being developed that describes the stages of the work, types of studies, deadlines, data on those responsible and executors, the form of reporting documents is indicated. The regulations can be drawn up for the whole task as a whole or for each stage.
Classifiers
Immediately before conducting a search for documentation, classification rubrics are determined according to which it will be produced. The most common and generally accepted at present is UDC, the basis of which is made up of tables constructed according to the hierarchical principle of division using a decimal code. They are published in various languages and are applied, including in Russia.
Patent documents are classified in accordance with the IPC (International Patent Classification). In accordance with it, each object of intellectual property protection has one or more indexes characterizing the content of the document. This classification was created for a convenient search for patents in order to assess the novelty of a technical solution. IPC are developed in 2 languages: English and French.
Patent Search
After determining the necessary headings of the classifier, a search is made for documents that are relevant to the studied technical solution. This work can also be done on keywords from the context. Sources of information are official patent bulletins published in various countries.
FIPS publishes such collections in Russia (the old name of this organization is Rospatent). The FIPS website provides full-text patents from the latest monthly publication. There you can carry out an abstract search for previous ballots. They publish applications and amendments to patents. Access to their full content requires a contract with this organization for the provision of paid services.
Similar resources are available in patent offices of other states. Their list can also be found on the FIPS website. The international body that carries out coordination activities is the European Patent Office. There are also international search engines, both free and paid, providing services to access databases of security documents of regional and national funds (Patentoscope, PatSearch and others). When conducting this work, it is recommended to use the links that are indicated in the found patent. They facilitate the further search for documentation.
Retrospective
Examination for patent purity is carried out to a certain depth (prescription). It is determined by the validity period of this type of title in the specific country where the search is conducted.
In Russia, this time interval is 20 and 10 years for patents for inventions and utility models, respectively. A patent may terminate early if it is not paid on time to pay the annual state fee for maintaining it (or for other reasons). It can also be extended upon request.
Systematization of documents and analysis
After selection of patent documents, further work is carried out in accordance with the following steps:
- clarification of the terms used in the description of the technical solution;
- systematization of patents;
- verification of their validity;
- a detailed analysis of the documentation with a comparison of the formulas of the investigated object and the patented solution.
Examination of patent purity implies the identification of all similar features of the invention and the possibility of an extensive interpretation of the formulas. If the attribute of at least one constituent element coincides with that in the found document, then the desired condition is not met.
Features of patent purity research
The characteristic features of this type of examination are:
- All technical solutions implemented in the products are evaluated.
- Patent laws and judicial practice of the countries where the search is taken into account, the interpretation of the concept of "violation of intellectual property rights" in a particular state is taken into account.
- The ultimate goal of the study is to identify the features of a patented object, even if there are differences in other features.
- The search is performed according to an exhaustive method, that is, until all documents found are viewed.
- The search depth does not exceed the legally established period of validity of the security documentation.
- Particular attention is paid to the scope of exclusive rights in a patent.
- Examination is very responsible, as its mistakes can bring significant damage to the business.
- The possibility of renewal, termination and restoration of patent rights, as well as penalties in case of violation of rights, is taken into account.
results
The total data of the search and analysis are made out in the form of a report in which they indicate:
- the name of the investigated object and its constituent parts;
- designation contained in the design documentation and used state standards;
- country of study;
- matched attributes
- sources;
- valid security documents.
The findings contain data on whether the attribute of the claim is used in this patent or not, as well as the date on which the object possesses (or vice versa does not possess) the required patent purity. In the analytical part, it is examined in detail by what signs a coincidence is found.
Examples
The following can be cited as examples of patent purity and its infringement:
- Company A developed and patented a new packer design for sealing individual formations in oil wells. Company "B", learning about this, also decided to launch this product in mass production. In this case, the second organization will violate the exclusive rights to produce a patented technical solution. Her product will not have patent purity and it is impossible to obtain a title of protection from it.
- Company A developed and patented a new packer design. Company "B" added an additional element to this design that improves the operational characteristics of this product. The new design has patentability, but does not have patent purity, that is, the packer can not be used without the consent of company "A". The same option is possible if the first organization patented the composite material, which will be used in the new design of the company "B".
- Company "B" decided to produce packers, the layout and materials of which were developed more than 25 years ago. In this case, it does not violate the current legislation, but this object is also not patentable.
An object has patent purity if no valid documents relating to the technical solution as a whole, its component parts or elements were found during the examination process.
What to do if restrictions are identified
If a “nuisance” patent is found, the following measures can be taken:
- Conclude a license agreement with the owner of exclusive rights with payment of royalties.
- Redesign the device design or manufacturing method so that the rights of third parties are not violated.
- To challenge in court the legitimacy of this title of protection.