L.N. Spivakova, Ph.D., patent counsel of the Russian Federation, head of the department of intellectual property, Tomsk State University
Intellectual property can be called the main object in the innovative market, along with goods or services. Unfortunately, most enterprises do not think about protecting their rights to the results of their research activities. Questions begin to arise when a product enters into the market and during competition. Why do knowledge-intensive companies need to protect their intellectual property?
Formalized knowledge is the ability to manage and benefit. Intellectual property protection helps, primarily, to prevent damage from the activities of competitors and unscrupulous customers, as well as the opportunity to increase capitalization. For example, if your product is commercial and you earn revenue from its sale, there is a possibility that a competitor will emerge who sells exactly the same product, but at a much lower price. The ability to show “who wears the pants” is most likely in the case when you took care of protecting your intellectual property in advance: it means not only being “overlaid” by patents but also you have a certain amount of knowledge in this area.
Which authorities are concerned with the protection of intellectual property?
In Russia, these functions of a patent office are accomplished by Rospatent, having the status of an international searching authority and international preliminary examination authority under a contract on patent cooperation (PCT).
Russia participates in most treaties relating to the protection of intellectual property; the system of IP protection is actively forming in Russia. There is a council on intellectual property under the chairmanship of the Federation Council, and since 2013 there has existed a court for intellectual property rights, in 2014 an accounting system was established for the results of intellectual activities in INIS RTD. At the beginning of 2015 a governmental strategy on intellectual property must be approved.
There is positive experience in the realization programs of market development and intellectual rights in Tatarstan, St. Petersburg, Perm Region, etc.
Who is a patent counsel and what are his/her functions?
A patent counsel is a link between the designer (inventor), the head of the company and Rospatent. Ideally, he should combine the knowledge and skills of a lawyer, engineer (designer) and psychologist.
A patent counsel is a specialist in intellectual property protection. The requirements for such experts, the certification procedure and work are determined by the Federal Law “On patent counsels”. In Russia, the institute of patent counsels has begun operating recently, since 1992, the adopting of a block of laws on the legal protection of industrial property. In principle, the inventor himself can do the descriptive part of his technical solution. However, a patent counsel monitors the changes of formal requirements, “surprises” from the law authorities, and will professionally advise on the most effective way of action.
All specialists have their own routine, as well as a list of services that can be restricted by a specialization of a patent counsel or simply its interest in a particular type of object. For example, some work only with inventions and utility models, and industrial designs; they do not formalize. Other patent counsels specialize in working with trademarks. In doing so, all the specialists carry out a patent search, make a patent research in accordance with the All Union State Standard, and provide the agreements (license agreements, alienation agreements, mortgage, etc.).
The procedures for the protection of intellectual property
First of all, it is necessary to understand what to “protect” with a patent and what to keep as a commercial secret. Then everything depends on the protection. On the internet, for example, it is necessary to determine copyright, trademark registration is available for the site name, copyrights to the content, programs for ECM, databases, site or domain as the media.
As for the technical decisions, in a more general case, the first step is to define the subject and the object: for example, inventions (the product for which a technical solution will be patented), to identify its essential features. Next, it is necessary to perform a patent search; it is desirable to use several databases. From identified analogues choose the closest – a prototype – and conduct a comparative analysis. By the way, it is not always beneficial to choose the closest solution as a prototype, sometimes it’s better to review the essential features of his invention. The next step is to make an application which contains the description and the set of claims (utility model) and drawings (pictures). In doing so, it is necessary to use short, clear and definitely understandable wordings. Any “fog” will lead to questions from the expert of the patent office and extra correspondence.
How to keep a trade secret?
It is necessary to think in advance about what information doesn’t have to be disclosed, this part can be just left out of the application materials. In other words, the information in the application doesn’t have to be hidden, it can be submitted in portions, sufficient for providing full disclosure of the invention, but insufficient for direct copying and reproduction of the protect product. Drawings and pictures attached to the application for an invention, on the one hand, should demonstrate the essence of the described technical solution, but on the other hand should not have much specification. So a simplified drawing needs to be provided, not just a copy of the actual drawing.
It is also important to first, prepare and submit an application to the patent office and only after that publicly disclose the essence of the invention. Cases when the author’s information disclosure was used by other people who have received such information occurs not so rarely in practice.
If you do not plan to use the patent in your own production, immediately after the request start to search for potential partners who may be interested in the patented solution. An unused invention is expense, a used one is income.
Where to find information and support?
There are centers of technology and innovation support formed by Rospatent, such a supporting organization in Tomsk is Tomsk Polytechnic University. You can ask there for help in the provision of information resources – for example, for patent search, market search, etc. In addition, the Rospatent website has a special section “Small and medium-sized enterprises for protecting the results of intellectual property”, which is a very useful resource, and the main thing is that it’s understandable for non-specialists.
Russian and international patent applications: what to choose?
There does not exist an international patent that is operational in every country. Patents are valid only in the countries where they were received, with the exception of the Eurasian and European patent. An international application is not a patent, it is just a priority document, which gives the right to determine a list of countries where you can apply for a patent, preserving the rights for a specific period of time. It also provides a transfer of the application to the specific countries for consideration and issue of a national patent.
It must be taken into account that according to Russian legislation, applications for invention and utility models created in Russia can be submitted to a foreign patent office only after checking for the presence of information constituting a state secret. It should be also taken into account that the patent legislation of other countries differs from ours – for example, in some you cannot obtain a patent for food, drugs and therapies, fissile materials and others.
The main problems in the protection of intellectual property in Russia
The first and the main one is a lack of understanding on why it is necessary to protect intellectual property and a reluctance to do it. One of the reasons for this situation is lack of legal knowledge. Also, the inventors forget that they have to pay annual fees, deadlines pass and then they have to deal with recovery with an increase of the size of payments. Sometimes while processing intellectual property for two or more applicants, they do not draw up a contract on joint ownership, which regulates their relations. There is a problem with the institution of a royalty fee, as well as information disclosure, when the author talk about their innovations in publications, on the websites or other sources, before receiving the priority document.
The common mistakes of companies working with specialists for the protection of intellectual property
• Companies do not pay attention to what kind of experience a patent counsel has. Especially important is experience in a particular narrow area and contacts with the experts of Rospatent of appropriate area department.
• Companies prefer specialists who are ready to perform a patent search and draw up an application in a short period of time. Due to this in the “best” case only quality suffers. At worst, a thorough examination is not carried out – the inventor applies at his own risk, with a probability of violating the rights of a third person.
• Companies are attracted by online advertising such as “Express drawing up an application for an invention”: fill out the form and send to an executor. This form of communication is only good at the stage of consultation. Writing an application is a narrow creative process that requires direct communication between a specialist and an inventor. An economy which is achieved by using online advisors is justified only if you wish to receive a priority for not yet finalized result or by sending an application which crosses somebody’s path.
It is important to bear in mind that, talking about Tomsk, specialists in the field of patenting are currently working in universities, R&D organizations, large enterprises and organizations, as well as in small specialized agencies.