Using utility model patents
Comment


Three types of patent are available in Russia: patents for inventions, patents for utility models and patents for industrial designs. Each type has its own peculiarities (for further details please see "Patent strategies for foreign companies"). The main purpose of this update is to advise foreign companies on current patent legislation and practice in Russia and to provide practical advice on the best approach to patent protection and enforcement.

Using utility model patents

Scope and duration of protection
Russian patents for utility models can protect technical creations such as devices, constructions and systems, but not methods or processes. A Russian patent for a utility model is valid for a maximum of 13 years, calculated from the application filing date (ie, 10 years, plus an extra three years at the patentee's request). A utility model can be used if a novel device cannot be protected as an invention because it is obvious and therefore lacks an inventive step. Equally, each new model, variant or modification of a known device can potentially be protected as a utility model.

Most countries in the Commonwealth of Independent States (CIS) also provide for utility model protection.(1) However, there are some differences in the protection available - for example, Ukrainian patent legislation allows methods to be protected by a utility model patent.

Utility model patents and the Patent Cooperation Treaty
Foreign companies generally prefer to use the Patent Cooperation Treaty (PCT) procedure for filing an international patent application, as it provides a 30 to 31-month time limit from the earliest priority date for entering the national or regional stages, as well as other significant advantages. However, not every company is aware that Russian patent legislation allows for both an invention patent and a utility model patent to be obtained using an initial PCT application. For example, a Russian application for an invention patent can be transformed into an application for a utility model patent. A divisional application for a utility model patent can be filed until:

  • the date on which the grant decision is issued in respect of the parent application; or
  • the final deadline for appeal against a refusal decision.

The point of a utility model patent is that the scope of protection is potentially much broader than that of an invention patent. A novel device is protectable as a utility model even if all elements or features can be adapted from prior art (ie, so that each distinguishing feature can be separately known from prior art). In this respect a Russian utility model must contain at least one essential distinguishing technical feature providing novelty. In other words, in order to be patentable, the device as a whole - as characterised in an independent claim - must be novel (ie, not known from a single, publicly available source of prior art information).

Under current legislation, an application for a utility model is not examined in terms of patentability requirements; rather, a patent is granted if the application meets formal requirements. Thus, it is relatively easy to obtain a patent for a utility model, which need meet only formal requirements upon examination.

Open use outside Russia
Another peculiarity of Russian law on utility models is that open use of a novel device outside Russia does not constitute prior art for the relevant Russian utility model patent. Therefore, if a party sells novel devices outside Russia and has no evidence describing these devices except sales samples and payment documents (which constitute 'open use' for these purposes), such evidence cannot be adduced as prior art to invalidate or nullify a Russian patent for the relevant utility model. Foreign companies have previously been surprised to encounter third-party Russian patents for utility models that cover devices of theirs which are sold only outside Russia. However, if the company has sold at least one example of the product in Russia or can indicate a generally available publication that describes the product, this information can be used as evidence and as a relevant reference to prior art. Any publicly available source of information may constitute prior art if:

  • such information was disclosed before the filing date of a utility model application; and
  • any person might reasonably have been able to access the information.

Comment

The following practical points may help foreign companies to obtain the best patent protection in Russia and other CIS countries:

  • If an invention has a limited scope due to a large number of distinguishing features, one or several utility model patents can be used to obtain optimal patent protection with a broader scope of rights and a minimal number of distinguishing features;
  • Each new model, variant or modification of a known device that may have commercial potential in Russia should be considered a reason to obtain a patent for a utility model protecting this new version, thereby extending the patent protection in (or to) Russia;
  • Both types of patent are equally enforceable in Russia, but patents for utility models are likely to prove stronger in the event of invalidation attacks, as one prior art reference must describe all features of the relevant independent claim in order to invalidate a utility model patent. Furthermore, features of dependent claims can be used to amend the relevant independent claim during the invalidation procedure, which may allow a new patent to be obtained in place of the invalidated patent. Therefore, the scope of initial patent protection can be gradually limited by using a patent for an invention and a patent for a utility model.
  • Several patents for inventions and utility models can be based on one PCT application in order to transfer or convert an application for an invention into an application for a utility model, or to file one or several divisional applications for utility models;
  • A patent for a utility model can be obtained within six to eight months of the filing date, whereas a patent for an invention can usually be obtained within 18 to 24 months;
  • A patent for a utility model does not affect a patent for an invention (or vice versa) if, in each case, the scope of rights is different when comparing features of independent claims; and
  • A patent for a utility model is valid for 13 years, whereas a patent for an invention is valid for 20.

It is advisable to consider all options under national patent legislation when patenting in Russia - this will help to ensure the best patent protection for further successful enforcement.

Patent statistics show an increase in the number of utility model patents obtained by foreign companies in Russia, but also an increase in disputes arising from such patents.

For further information on this topic please contact Yuri Pylnev at Baker & McKenzie - CIS Limited by telephone (+7 495 787 2700), fax (+7 495 787 2701) or email (yuri.pylnev@bakermckenzie.com).

Endnotes

(1) Such protection is also available in Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Kyrgyzstan, Moldova, Tajikistan, Ukraine and Uzbekistan.