According to national regulations in the Russian Federation, a technical solution can be patented as an invention or a utility model. In this article, we will try to structure the similarities and differences of these two objects. We hope that this will help applicants make the right choice for them.
Patentability criteria for inventions: novelty, inventive level, industrial applicability. Inventive level is a criterion that is most difficult to prove, i.e. each essential feature affecting the technical result should not be known from the prior knowledge. It is getting easier when it comes to utility models. Here it is only necessary to prove the novelty and industrial applicability.
There is, however, one disadvantage. Only one device can be patented as a utility model. Such devices do not have parts (items), or of two or more parts interconnected by assembly operations, being in the constructive-functional unity (subassemblies). At the same time, inventions can be methods and systems, and other substances. Moreover, due to recent changes in Russian Civil Law, series of utility series models cannot be patented; meanwhile inventions have not been affected by these changes. There is even no need to allocate one common essential feature; it suffices to prove that each object of the series reaches the same technical result or intended for use in another object.
On October 1, 2014, a compulsory examination of novelty for utility model applications was introduced. The time period for issuing a patent for a utility model, therefore, has increased significantly (from four months to one year). The time period for issuing a patent for an invention is 1-2 years usually. The number of requests for examination is usually no more than two for each application. As a general rule, the examination does not send the examination report to the applicant. The application for the invention can be converted into a utility model application and vice versa. The fee for filing an application for a utility model is almost twice lower than for the invention. At the same time, the fee for substantive examination for the utility model is not yet available at all.
The validity of the utility model is only 10 years, and of the invention – 20 years (+ 5 for certain types of development). In practice, patents are maintained within 7-8 years. By virtue of technical progress, the old technical solutions are replaced with new patentable technical solutions. Annual fees for the utility model shall be paid in the first year of validity, and for the invention – from the third year. The fees for the utility model in 10 years are equal to the fees for the first 10 years of the invention.
These are the features of the procedures of patenting utility models and inventions and their further validity periods. The choice of type of a preferable legal protection remains with the applicant.
Nevertheless, due to the complexity of the Russian language and the peculiarities of the national patent examination system in Russia it is recommended to use the services of specialists, who will help to avoid a foot-dragging of procedures due to an incorrect interpretation of the features and translation errors.