A developer has come up with a new device and wants to protect it. The very first question: what to file — a patent application for an invention, a utility model or an industrial design? A mistake at this step is costly: a wrongly chosen object leads to a refusal, loss of the fee and, worse, loss of priority. We examine how the three types of protection differ, what a patent application for an invention includes and how filing a patent application for an invention works in practice.
What is the difference between a patent application for an invention, a utility model and an industrial design
All three objects are governed by Part Four of the Civil Code, but they protect different things.
An invention is a technical solution in any field relating to a product or a method. It is protected under Article 1350 of the Civil Code of the Russian Federation and must meet three conditions: novelty, inventive step and industrial applicability. The patent term is 20 years.
A utility model is a technical solution relating only to a device. Two conditions are sufficient here: novelty and industrial applicability; an inventive step is not required. This is precisely why a patent application for an invention and for a utility model differ in complexity. A utility model is easier and faster to obtain. The term of protection is 10 years.
An industrial design protects not the technical essence but the appearance of an article: its shape, configuration, ornament and combination of colors. The criteria are novelty and originality. The term is 5 years, extendable up to 25 years.
If the solution concerns a method or a complex technology, it is an invention. If it is the design of a device and speed matters, it is a utility model. And if the value lies in the design, it is an industrial design. In some cases a single development is protected comprehensively by filing several applications.
What a patent application for an invention includes
A patent application for an invention includes five main documents, and each performs its own function.
- A request for the grant of a patent, indicating the author and the applicant.
- A description of the invention, disclosing the solution with completeness sufficient for it to be carried out by a person skilled in the art.
- The claims of the invention — the central document that defines the scope of legal protection.
- Drawings and other materials, if they are needed to understand the essence.
- An abstract — a brief summary of the essence of the solution.
The key element is the claims. It is by the claims that what is protected by the patent, and what remains outside it, is determined. Claims that are too narrow will allow competitors to circumvent the patent with a minimal change. And claims that are too broad will not pass examination because of known analogues.
The filing date of the patent application for an invention should also be kept in mind. It is established as the day on which documents containing at least the request, the description and the drawings, if they are referred to, are received by Rospatent (Роспатент). This date determines priority — in a dispute with a later application for a similar solution, priority decides the outcome.
Patent application for an invention and a utility model: differences in procedure
The procedure for a utility model is simpler in composition and faster in timing. The claims here are single-element — multi-element claims with several independent items are not permitted, whereas for an invention this is possible.
It is also significant that the inventive step is not examined for a utility model. It is sufficient for the solution to be new and industrially applicable. Therefore “application for a useful invention” is a common wording behind which there usually lies a choice between two different objects. It is worth clarifying this before filing: changing the type of protection later is possible, but it means additional time and costs.
Application for an industrial design: special requirements
An application for an industrial design is prepared differently: its core is a set of images of the article that unambiguously discloses its appearance. Views from all necessary sides are required, and image quality is critical — it is the images that determine the scope of protection.
In addition, a request, a description of the design and, if necessary, a general-view drawing, a confection card or a diagram are attached. Claims are not used here.
How to file a patent application for an invention through FIPS and Rospatent
The rules for filing a patent application for an invention provide for several ways to submit documents: in person to Rospatent, by mail, and electronically through the FIPS website and the public services portal. The electronic format is used most often — the application is filed through a personal account with an electronic signature. With this method, a discount on patent fees is provided.
The further path of an application for obtaining a patent proceeds in two stages.
First comes the formal examination: the completeness of the documents, the correctness of their preparation and the payment of the fee are checked. If something is missing, the office sends a request, and a limited period is allowed for the reply — missing it leads to the application being deemed withdrawn.
Then, at the applicant’s request, a substantive examination is appointed. The request may be filed immediately or later, within the period established by law from the filing date.
Substantive examination of a patent application for an invention: what is checked
Substantive examination of a patent application for an invention is the main stage at which the fate of the patent is decided. The examiner conducts an information search in worldwide patent and scientific and technical collections and assesses the solution against three criteria.
- Novelty: whether the solution is known from the prior art as of the priority date.
- Inventive step: whether it follows in an obvious way from known solutions for a person skilled in the relevant field.
- Industrial applicability: whether it can be used in industry or another sphere.
If obstacles are identified, the examiner sends a request, and the applicant has the opportunity to amend the claims or present arguments. Based on the results, a decision is issued either to grant a patent or to refuse, which can be appealed.
The main reason for refusals is the discovery of an analogue of which the applicant was unaware. That is exactly why a patent search before filing saves both time and fees.
How “POSINT” prepares a patent application for an invention or a utility model
An application for registering an invention begins not with filling in forms but with analysis: you need to understand whether the niche is free and which object of protection to choose.
The “POSINT” Service helps at the preparatory stage:
- conducts patent search in Russian and international databases;
- assesses the novelty of the solution before documents are filed;
- finds close analogues that may become an obstacle at examination;
- prepares analytical materials for drawing up the application.
This approach reduces the risk of refusal. Most problems at examination are caused precisely by insufficient study of the prior art before filing.
Conclusion
The choice between an invention, a utility model and an industrial design determines the scope of protection, the timing and the likelihood of obtaining a patent. An invention gives the strongest protection but requires an inventive step, a utility model is simpler and faster, and an industrial design protects design.
Two factors have the greatest influence on the result: the quality of the patent search before filing and competently drafted claims.
If you are preparing a development for patenting, leave a request, and “POSINT” will conduct a patent search and help you choose the optimal form of protection.