How to independently verify whether you can patent your product and conduct a patent search

Published on July 30, 2018

How to independently verify whether you can patent your product and conduct a patent search

    I think you at least once thought about getting a patent for your idea or product.
    Perhaps they even made inquiries about how best to do this, but realizing that the procedure was complicated and expensive, they decided to postpone it until better times.

    How to independently conduct a patent search

    And it is good, if later it turns out that the project was unsuccessful, and in fact there was nothing to patent. Much worse if the product is copied by stronger competitors and put all the profits from its implementation in your pocket.

    In this article I will talk about how you can figure out for yourself if there are any prospects for patenting, and whether it makes sense to pay money for a full-fledged patent search.

    It is necessary to replace that the patent holder may require the violator of his right to pay compensation in the amount of up to 5 million rubles, seizure of a counterfeit product and a ban on its implementation, and under certain conditions, to bring the perpetrator to criminal responsibility. That is, patenting gives significant advantages in the market.

    So, first you need to understand what you can and cannot be “patented,” in principle. In Russia, patents are granted for inventions, utility models and industrial designs that protect only the appearance of the product.

    Therefore, if you want to secure for yourself the features of the product related to its shape, color and other external design, in other words “to patent the design”, then your choice is an industrial design, about obtaining a patent for which I will tell in another article.

    If the peculiarity of your product is not in its appearance, but in the fact that it gives some technical result, then you have to choose between obtaining a patent for a utility model and an invention.

    We will immediately list what is “patented”, in principle, impossible.
    First, it is impossible to obtain a patent for discovery, that is, for the discovered pattern existing in the material world. For example, if the law of the world was opened today, it would be impossible to patent it.

    Secondly, scientific theories and mathematical methods are not patented.

    Thirdly, Rospatent will refuse to issue a patent for a rule or method of play. Looking ahead, let's say that, despite this, it is quite possible to patent a gaming machine as a device that gives a certain technical result.

    Fourthly, it is impossible to patent the rules and methods of economic activity, to which so many businessmen strive.

    In other words, if you invented a new business process, a social network based on new principles, a coupon site operating according to previously unknown rules, then it’s impossible to make anyone no longer be able to repeat your idea.

    However, you can obtain a patent for a system consisting of material objects (for example, computing blocks) and implementing the necessary functionality. And then the one who wants to use it will face great difficulties.

    A utility model is a device that is new (that is, previously unknown from open sources) and industrially applicable (that is, that can be used in economic activity).

    An invention is either a product (that is, again a device, as well as a substance, a strain of a microorganism, etc.), or a method, that is, actions on material objects performed by material means that are new , industrially applicable and haveinventive step .

    Hence it is clear that the utility model is easier to register, because the inventive step is not needed for it. Enough to be a novelty and industrial applicability.

    But the utility model has limitations, because it can only be a device. That is, neither substance nor method can be patented as a utility model.

    Now suppose that the device is just what we need. It remains only to check whether it has industrial applicability and novelty, and go to submit an application.

    With the first condition, usually everything is simple. If we invented a non-perpetual motion machine, and were able to substantiate in the application how a technical result is achieved with the help of a utility model, then there should be no problems.

    Note in parentheses that attempts to patent the perpetual motion machine have not ceased until now. For example, one of the "inventors" stated several years ago in the Chamber of Patent Disputes that the second law of thermodynamics is known to him, but it does not apply to its engine.

    If the technical result contradicts modern scientific data or the laws of nature or there is no causal relationship between it and the features of the utility model, then the patent will be denied.

    As for novelty, in order to establish it, a patent search is being conducted, which should show whether we have invented something new or invented a bicycle.

    It is carried out on the basis of the level of technology existing in the world at the time of application. Therefore, the utility model should be new, not only for Russia, but also for the whole world, which greatly complicates the search. True, not only for us, but also for experts of Rospatent, since they take information from the same sources.

    So, in order to test our utility model for novelty, we will look for a technical solution (that is, not necessarily only a utility model) that gives the same technical result and has the same essential features as our device.

    Let's explain with an example. Suppose we had a brilliant business idea. We decided to start the production and sale of jeans and pack them in pairs: women and men.
    We pack it this way: first we roll it up into a roll, then, we stretch the polyethylene cover from above so that they do not unwind during transportation and storage, and apply it on the image packaging. Because of the shape of the package, we will call this novelty “Denim Roll”. To stimulate sales we will hold a contest for the best pair, photographed in our jeans.
    What of all this can be "patented"?

    Packaging with pictures under certain conditions can be registered as an industrial design. The name "Denim Roll" as a trademark. We will not be able to obtain a patent for the competition and its conditions because this is the rule of the game. The idea is to sell together women's and men's jeans, too, will not patent, because it is a method of economic activity.

    As a result, we can try to get a patent for a useful model “Package for jeans”, namely two rolled-up jeans with a polyethylene cover stretched from above to fix the roll. As we already know, in the description we need to show what technical result a useful model gives. Obviously, in this case, folding into a roll makes the packaging more compact. Such a result as originality, memorability, etc. It is not technical and is not taken into account.

    What features of this description are significant and will participate in patent searches?

    In order to achieve compactness, it does not matter what is rolled up - jeans or any other flexible product and how many of them are inside. It also does not matter how we fix the product in the collapsed state: putting a cover on it or in another way. True, we can write that our packaging not only makes the product compact, but also saves it from damage, and then the presence of a polyethylene cover will become an essential feature. However, any packaging serves these purposes and it is unlikely that we first came up with it.

    So, in order to confirm the novelty of our utility model, we are looking for a flexible product that provides, due to folding into a roll, a greater compactness compared to its counterparts. If we find this, then you can forget about patenting.

    Where will we look?

    Rospatent prescribes a search, starting from 1920, on:

    - its bulletins and publications of the USSR Patent Office;

    - descriptions of Eurasian patents;

    - Russian applications for the grant of a patent for inventions, utility models and industrial designs, as well as Eurasian applications;

    - patent documents from the USA, Great Britain, Germany, France, Japan, Switzerland, Austria, Australia and Canada, the European Patent Office, the World Intellectual Property Organization, the African Intellectual Property Organization and the African Regional Industrial Property Organization;

    - any other publicly available documents.

    It sounds scary, but you and I are not going to do a professional search across all sources. We will simply search for the most relevant online databases and if we don’t find anything in them, it means there are chances for patenting, and then we will decide whether to turn to professionals.

    Here are the bases.

    Search engine Rospatent. The only one of all paid. One request 60 rubles. You can pay by card. The search is conducted according to the Russian patent documentation .

    Google Patents

    European Patent Office patent

    base The World Intellectual Property Organization Base

    And if we will patent the invention, then it will need to be checked also for the presence of an inventive step. That is, if the sum of its features affecting the technical result is unknown from publicly available sources, you need to find out whether our invention does not follow the obvious way from the prior art.

    For example, Rospatent writes in its recommendations that if we declare as an invention a security system for a museum consisting of sensors that operate when touched pictures, cameras operating in the infrared range, and automatically pointing to pictures when the sensor is triggered, and attached to them recording devices, and fortunately a system that includes all these elements will not be found, this invention will be recognized as new.

    But if, when checking the inventive level, it turns out that the same system is already patented for a bank, where ordinary, non-infrared cameras are automatically guided to safes that they are trying to open, and the camera operating in the infrared range with a VCR connected to it is also known from another patent, we will be denied registration due to the lack of an inventive step, because we simply combined already known elements that give a long-known result.

    Rospatent has another interesting feature. He almost completely ignores information from the Internet, if it comes from non-official sources.

    That is, if a product is widely known on the market, and its description is publicly available, the expert will not take this into account, because he does not know whether this information was published before or after the application was submitted.

    The logic is there. Indeed, it is quite easy, having found the application for an invention, to place an article with its description on any resource, agreeing with the webmaster to put the required publication date, and write to Rospatent a statement that it was known long before the application was submitted.

    True, there is a search engine cache, which can be used to determine when the article was first published, but Rospatent is not yet ready to accept it as a reliable source of information, well, we can use it for our own purposes if you need to patent something that has long been known.

    And here we turn to the question of what exactly and in what cases it is necessary to “patent”. Indeed, as will be clear from what follows, in many cases it is quite possible to get a patent.
    With some knowledge and experience, you can always add additional features to a known method or device, or even take existing ones and “discover” that they give a new technical result. Due to this, thousands of inventions are registered every year in Russia, which are only formally, but absolutely useless in practice because of their economic or technical inefficiency.

    And for a developer, start-up, or a business owner, a problem may arise if a competitor’s development does not fall under the patent he received. That is, their products will not contain all the signs of a patented utility model or invention.

    If you like the article, next time I will try to give examples of patent searches for specific patents.

    PS I immediately agree with my colleagues that the article uses inaccurate terminology, it is written in primitive language, and in general the patent search is done differently, in another way, etc.

    In justification I will write that accuracy had to be sacrificed for the sake of clarity. I hope that this article will be useful as an introduction to those who want to understand the topic.