Patent law, regardless of country, must include provisions regarding the technical effect (ie, the improvements and/or advantages) of an invention and its legal consequences. Many national patent requirements include specific provisions on technical effect that should be considered in detail in order to strengthen patent protection. Russian patent law is no exception.
Technical effect is often not considered carefully enough by inventors, applicants and their patent agents both during patent prosecution and after the patent has been granted. This carelessness entails substantial risks. Inventors and unversed patent agents usually consider technical effect a minor and insignificant detail when defining the scope of patent protection by the features of the invention.
Under Russian patent law, an invention is patentable if it meets the requirements of:
- industrial applicability;
- novelty; and
- an inventive step.
Of these requirements, only the inventive step must be considered along with the claimed technical effect. If the technical effect is not clearly described in the application, it can be omitted from consideration of the inventive step and the invention may not qualify for non-obviousness and inherent improvement.
Generally, an invention meets the inventive step requirement where a skilled person would consider it not obvious from prior art. Several prior art references may be used to fulfil the inventive step. The invention will be regarded as meeting the inventive step requirement where:
- no publicly available prior art solutions have been found whose features coincide with the distinguishing features of the invention; or
- if such solutions have been found, the intended results of the claimed technical effect produced by the distinguishing features have not previously been proven.
In this respect, technical effect can be used as a 'quasi-feature' supporting the non-obviousness of the invention. For example, synergism (ie, synergetic effect) produced by two or more known substances in a composition can be claimed as the technical effect supporting non-obviousness.
Furthermore, the features of an independent claim are considered essential if they relate to the claimed technical effect, whereas non-essential features can be omitted when assessing the inventive step.
Under Russian patent law, the inventive step requirement is assessed in three stages:
- identifying the closest prior art reference (ie, a prototype);
- choosing features of an independent claim that distinguish it from the prototype and analysing the claimed technical effect of the distinguishing features; and
- identifying prior art references to the distinguishing features and corresponding technical effect in order to assess the obviousness of the invention.
If the distinguishing features or the corresponding technical effect produced by these distinguishing features are not known from prior art, the invention is considered to meet the inventive step requirement.
Thus, it is important to disclose all of the advantages and/or improvements of the claimed invention in order to specify its relevant technical effect, which may help to support non-obviousness and obtain a broad scope of patent protection.
Russian patent law allows for the technical effect to be amended or additionally defined during the patent examination stage; however, once the patent has been granted, no further amendments or clarifications are possible.
In case of a nullification action (ie, an objection against a granted patent) before the Chamber for Patent Disputes, if the technical effect is unclear or missing from the application, the inventive step requirement may be assessed only within the scope of features included in an independent claim. A nullification action can be filed with the Chamber for Patent Disputes against any Russian patent in order to invalidate it partially or fully due to failure to meet the inventive step and/or other patentability requirements. Many patents are nullified due to failure to meet the inventive step where obviousness has been proved without technical effect or where the definition/explanation of the technical effect is unclear. Furthermore, the technical effect is considered when the doctrine of equivalents is applied in order to prove the utility of the patented invention (for further details please see "Examining the doctrine of equivalents").
The following recommendations should be considered in order to obtain the best patent protection in Russia:
- The technical effect reflecting all of the improvements and/or advantages of the claimed invention should be clearly defined and explained in the application. It is advisable to disclose and explain as many improvements/advantages as possible.
- An independent claim should include all features that contribute to achieving the claimed technical effect.
- A synergetic effect is considered a technical effect, but requires additional examples (eg, experimental data or test results) to prove the synergism.
- Any doubts as to the non-obviousness (inventive step) of the claimed invention should be compensated by the invention's technical effect if allowable.
- Technical effect can be amended and further specified during patent prosecution, but should be clearly defined in the application and supported by relevant examples by the time that the patent is granted.
- Technical effect cannot be amended or further specified after the patent has been granted, but additional explanations of the claimed technical effect and its relation to the features of an independent claim can still be provided in the case of a nullification action or consideration of equivalent features.
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