Patenting: an informal FAQ for startups

  • Tutorial
This FAQ contains the most common questions that I have to answer when working with inventors and applicants. If possible, the style of questions is preserved (for liveliness of perception), the grammar is corrected if necessary. The answers are also presented in free form and will allow you to look into the kitchen of the patent industry.

Q: “Tell me bluntly, do I need to patent my developments or not?”
A:You know better. To answer the question of the advisability of patenting an invention in each specific country (or group of countries), a calculator will help: debit - potential profit from the sale of products (goods, services) on the market of a particular country during the term of the patent; loan - the cost of preparing a patent application, the fees and fees of representatives in the patenting process and the cost of maintaining the validity of the granted patent. It also makes sense to take into account related factors: the likelihood of claims from patent holders infringing your products, the cost of patent disputes, etc., since having a strong patent portfolio sometimes helps to resolve a patent dispute out of court, for example, through cross-licensing.

Q: “All the so-called“ patent specialists ”are bent that who does not have NN kilobaks, that goes through the forest.”
A: Essentially, true. Relatively cheap patenting in one particular Russia is rarely of interest to anyone because of the limited market and the not always predictable interpretation of patent law by Russian courts. Patenting abroad is not an expensive business. To start preparing a patent application for an invention, you need to have at least 5k $ of free money and be ready to pay out about the same amount for 2-3 months, and only 30-300k $ for 10 years per each application, depending on the number of foreign countries in which it is proposed to obtain a patent.

Q: “Why is it so expensive to write an application, doesn’t a patent specialist need to invent anything?”
A:The cost of preparing an application for an invention on the patent market of Russia varies greatly: you can find offers from 10 tr up to 500 tr Some patent offices even declare the possibility of free assistance to individual inventors through the pro bono program . The cost of work is determined by a number of factors: the purpose of the application, the qualification of the contractor, the complexity, the market niche and load.
The goals can be different: someone just needs to submit an application under the terms of the state contract or grant - the cheapest option is suitable here, for example, an application for a utility model through this service. Another is required to obtain a patent for a rather complicated invention in 30 countries, and such that competitors could not then annul it for one or two.
Qualification is engineering and managerial experience plus patent experience; engineering experience is needed to understand the essence of the invention and to set it out technically correctly, management experience - to squeeze out from the confused inventor and his employer all the information necessary for the preparation and filing of an application, patent experience - to ensure the maximum amount of legal protection and at the same time minimize Applicant's risks associated with both obtaining a patent and patent disputes.
Labor inputpreparation and filing of a solid application (including comprehension of the meaning of confused notes and conflicting sketches of the inventors, conducting a patent search and analysis, drawing up a description and claims, preparing illustrations, aligning text and illustrations with the inventors and their superiors, elaborating “gray areas” with external experts, preparation of documents establishing the legal relationship of the inventors with the applicant, preparation of the application container for electronic filing, payment of fees, taking into account all privileges granted to the applicant, application submission, receipt of confirmation of submission) is from 150 to 350 person-hours. Considering that an experienced specialist with a well-established practice is unlikely to agree to work in less than 1000 rubles per hour, it is easy to calculate how much time will be spent on your application if they take, say,
Market niche - the intersection of the subject area of ​​patenting (IT, Telecom, Biotech, Pharma, etc.) and the price sector of the patent market (one thing is the familiar junior patent specialist in the Russian province, the other is Baker & McKenzie); each niche has its own prevailing prices.
Download - to a good patent specialist, like to a good dentist or auto electrician, it is almost always the turn; guess what you need to do to be at the beginning, not the end.

Q: “Why do I need a patent search? I already know all my competitors. ”
A: Patent search provides data for further analysis, which is of two types.
1. Analysis of patentability ( patentability analysis) - allows predicting possible complications during the substantive examination of the application and the risks of canceling the granted patent.
If the search revealed generally similar technical solutions, the examination, taking into account the priority, may refuse the novelty of the claimed invention. If the search revealed partially similar technical solutions, the examination, taking into account the priority, can combine them and fail according to the inventive step.
As practice shows, state experts are looking worse than search specialists, primarily because their time is more limited by the application review plan (in 2011 I was told that in Rospatent there were 16 applications per month for an ordinary expert, i.e. a state expert spent an average of about 6 hours searching and analyzing one application). But if someone wants to revoke your patent, then they will not spare time and money, they will search until exhaustion. You need to be prepared for this.
2. Analysis to patent purity ( freedom to operate analysis ) - allows you to predict possible claims of patent holders infringed by your products, which may be your competitors, scientific and research organizations, consortia, patent aggregators, etc.
Moreover, even the most thorough search does not give a 100% guarantee, firstly, because the search results are always probabilistic in nature, and secondly, there are already submitted, but still unpublished applications and the so-called “underwater” applications and patents written in this way to make it as difficult as possible to find them with search tools. Nevertheless, a high-quality search allows us to generally assess the patent situation in this sector of the market and its results can be taken into account when choosing a development protection strategy, for example, patenting, keeping the development in know-how mode, buying a license, applying an open license, etc.

Q: “Who is better to involve patent examiners or patent attorneys?”
A:Patent examiners and patent attorneys are non-parallel planes of the patent industry. It follows from the definition that they intersect and are not an absolute alternative to each other.
A patent examiner is the name of a specialty, for example, 04/27/08 Intellectual Property Management. Patent Engineer. " Like, say, an art critic or merchandiser. A broad patent specialist with no technical or scientific specialization is an office plankton, a specialist in transferring patent papers. These are also needed. But not to you. A patent examiner who has long and fruitfully worked in your or related field can be a good option both for compiling an application and for conducting correspondence with the patent office. You should search for such recommendations.
Patent Attorney of the Russian Federation- This is the status in accordance with the Federal Law of the Russian Federation N 316-ФЗ "On Patent Attorneys", which gives its holder a number of privileges, primarily the right to represent the interests of foreign persons before Rospatent. To become a patent attorney, for example, with a specialization of “invention”, you need to have a higher education (any), document the existence of four years of practical experience in this specialization (invention) and pass a qualification exam. Among patent attorneys there are people with a wide variety of education - technical, medical, philological, art criticism ... Their practical experience in a specific subject area is equally widely varied - from the head of the laboratory, say, wide-gap semiconductors, together with the degree of Doctor of Physics and Mathematics, to a complete lack of experience.
By the way, in addition to the specialization of patent attorneys “inventions and utility models”, there are others - “trademarks”, “industrial designs”, “appellations of origin” and “programs for electronic computers, databases, topology of integrated circuits” Therefore, it makes sense to ask about the formal specialization of the patent attorney with whom you are going to deal.
A patent attorney may also be a patent examiner. This may be a good option for you if you obtained patenting experience in your or a related subject area. In addition, a patent attorney may also be a lawyer. This is a plus, ceteris paribus, but it is unlikely to be a determining factor in the light of the preparation of applications.
Complete list of patent attorneyscan be found on the FIPS website .
However, you will not find there substantive (i.e. technical or scientific) specialization of patent attorneys. Patent offices (not only Rospatent) do not deal with this issue in principle, leaving it at the mercy of the market. How to find "your" patent attorney? Answer: also recommendations, word of mouth. You can also search the patent database for applications filed by an attorney (fields “representative” and “address for correspondence”) and figure out which industry he had to deal with the most. Next, you can contact suitable candidates and directly ask what else they have done in life. In large patent firms, as a rule, there are attorneys with practical experience in various industries; this gives a chance that your application will be in the right hands, however,
In the market you can also find patent specialists who are neither patent attorneys, nor patent experts. This is a checkered cab. They just do the job. These are experts from patent firms (the ones that will write your applications, if you contact a patent firm, it’s clear that they work on the side without publicity), state experts (those who will check your applications for patentability, oh terrible horror, but yes, they also unofficially engage in private practice, although - shhh! - they ask not to talk about this ), as well as independent patent experts. The latter is, as a rule, a temporary condition on the way from full-time experts to patent attorneys. Search for all such "passportless" should also be recommended.
I almost forgot: there are still lawyers, including those with a specialization in “intellectual property”. They can be useful in some cases, for example, if you need to draw up a license agreement or write a clause on the results of intellectual activity in a labor or collective agreement. Or when considering a patent dispute in the Chamber for Patent Disputes of Rospatent. Lawyers are also needed - if a patent dispute goes to court. You are unlikely to need lawyers to prepare applications.

Q: “Who should I contact — a private specialist or a patent firm?”
A: Private traders and Firmachi are also different planes of the patent industry. Both options have their pros and cons.
Freelancer. On the one hand, a private specialist will be cheaper: he has lower taxes and overhead costs (or they don’t have at all), no profit to be earned for the owners of the company, much lower or no image component of the price. The normal hourly rate of a private trader is from 1,000 to 4,000 rubles per hour. The lower limit corresponds to a competent patent attorney from an industrial company, moonlighting on the side in his spare time from the main job, the upper limit corresponds to a patent attorney for private practice. When working with a "private trader", you can be more confident that this particular person will do the work for you. In addition, you will receive more personal attention from a private specialist.
On the other hand, a freelancer works alone and this causes specific risks: illness, accident, tax hitting, problems in his personal life, depression, the urge to drop everything and leave for the islands for a couple of months can be fatal for working on your application. If suddenly in the process of work conflicts arise due to personal characteristics of communication, mode of operation, approach to defense policy, etc., you will either have to endure or stop working with the risk of losing the advance payment.
Patent Firmtakes for work more expensive. The normal hourly rate of the company is from 2,000 to 8,000 rubles per hour. The lower limit corresponds to microfirms consisting of two to three people, the upper limit corresponds to market leaders. Almost all firms work with 100% prepayment of the order. By the way, in more or less large companies they will be happy to tell you about the merits of their patent attorneys, but they will modestly keep silent that some junior associate, or assistant attorney, or patent engineer, and the attorney, at best, will deal with your application , will check diagonally his work before sending. Do not wonder. This is a common practice. But there is more than one person working there and there is someone to pick up the dropped banner, if that. And if you are not satisfied with the specific contractor that you have been allocated, you can mess up and try to get a specialist replacement from the company’s authorities. True, firms As a rule, they work on a stream, and the more solid the company, the wider and faster this stream, and this means that they will not be engaged in “customer education and upbringing”. The client either agrees with the opinion of the company and completely trusts it, or ceases to be a client.
Yes, here's another thing: it’s not a fact that the patent company that you have chosen will wish to serve you. Foreign patenting is a lengthy process with poorly predicted deferred costs, and according to the unspoken code, your Russian representative who has hired a foreign (for example, an American) representative for your application will be required to pay his bills, even if you refuse patenting at some point. It is likely that if you do not provide a guarantee or a bank guarantee, then you will be denied a reputable company under a plausible pretext, for example, referring to a potential conflict of interest with other clients.
By the way, you should be aware that the above hourly rates are the basis of pricing, regardless of who you choose. Even if at the negotiations you insisted on your specific price for a particular job and are glad that you have saved, in practice this will mean that the contractor will simply divide your price by his hour and spend as much time on the work as you paid.

Q: “Which patent application is best filed for an invention or utility model?”
A: It depends on the purpose of patenting - what and how you want to protect. When making a decision, the following features of patenting utility models should be considered.
1. In Russia, a patent for a utility model is two to three times cheaper than a patent for an invention, and it can be obtained almost three times faster - in 6-8 months (obtaining a patent for an invention takes from 12 to 36 months and even more in cases complications of examination, on average - 18 months).
2. A utility model patent is valid for a maximum of 10 years with the possibility of renewal for a maximum of 3 years (a patent for an invention is valid for a maximum of 20 years, in some cases it is possible to extend for a maximum of 5 years).
3. A patent for a utility model can be obtained for a device and not for a method, application for a new purpose, substance, microorganism strain, cell culture.
4. Utility models do not exist in all countries. In the USA, in particular, they are not.
5. In Russia, by law, a utility model must meet two conditions of patentability - novelty and industrial applicability. However, in practice, in the vast majority of cases, patentability testing is not performed, i.e. A utility model patent is issued “under the applicant’s honest word”. Therefore, in the event of an attempt to annul it by a third party, Rospatent will simply “wash its hands” and will not even defend the honor of its uniform, as is usually the case with a patent for an invention.
6. Since the choice of a patent for a utility model as a means of legal protection is dictated, as a rule, by considerations of saving manpower and resources and applications for utility models are written through the sleeves, it is not difficult to revoke such patents in most cases, that is, their value in terms of protecting the interests of business is small.

Q: “Do I need to file a provisional application? And some say, like, cool, others - plywood, money down the drain ... ”
A: Provisional Application (a preliminary patent application in the USA) is the same patenting tool as any other application - national, regional or international. In general, neither better nor worse. It has its own characteristics, advantages and disadvantages. You can read more about the preliminary application here: Provisional Application and what it is for .

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