Patenting Inventions

A patent for an invention secures to the patent holder the exclusive right to a technical solution: without the patent holder's consent, others may not manufacture, offer or import a product incorporating the solution or use the patented method.

The limits of the right are set by the claims. Another manufacturer's product falls within the patent if it uses every feature of an independent claim or an equivalent of it. Narrow claims can be circumvented by replacing a single feature, while claims that are too broad meet prior-art citations during examination: the scope of the claims is worked out together with the applicant before filing.

For a device, another form of protection is also available – a utility model patent: inventive step is not examined when it is granted, and the protection is shorter and narrower. The appearance of a product is protected by an industrial design patent. A solution whose value lies in competitors not knowing it is sometimes better kept under a trade secret regime: information about an application is published, and after publication the solution becomes known.

The right to a solution created by a contractor under a contract that did not expressly provide for its creation remains with the contractor unless the contract provides otherwise; documents confirming the applicant's right are put in place before filing.

Publishing or showing a solution before filing, including at an exhibition, without a confidentiality condition makes the information about it part of the prior art. Disclosure by the inventor or the applicant does not prevent patenting if the application is filed within a limited period, but some countries have no such rule: the timing of any disclosure is aligned with the filing plan, including filings abroad.

An investor or a buyer of a company checks who owns the exclusive right, what the claims cover, whether the patent is maintained in force and whether the inventors' rights have been documented.

• Patentability opinionA conclusion, before the application is filed, on the features that distinguish the solution from known ones and on the scope in which it can be claimed.
• Invention applicationClaims, description, drawings and abstract, in the scope agreed with the applicant, filed with Rospatent.
• Documents on the applicant's rightsDocuments on the right to obtain a patent from each inventor, employee and contractor.
• Responses and objectionsResponses to examiners' queries, amended claims and an objection to a refusal to grant a patent.
• Patent maintenanceMonitoring of the deadlines for paying official fees, and documents for the restoration or extension of the patent.
• Foreign applicationsApplications in the selected countries claiming the priority of the first application.

The outcome of the service is the work performed within the scope agreed with the client.

1. Materials

   The application is built on information about the subject matter and the applicant; the following points are relevant.

   • Technical descriptionWhat has been created, what technical result is achieved and how the result improves on known solutions.
   • DisclosureWhat was shown to whom before filing: articles, exhibitions, presentations, negotiations.
   • Inventors and contractsWho took part in the creation, employment contracts, contracts with contractors and partners.
   • CountriesWhere the product will be manufactured and marketed.

2. Assessment

   On the basis of the materials, the prospects of the examination, possible obstacles and ways of overcoming them are assessed.

3. Plan

   For the chosen option, a plan is drawn up: the documents required, the sequence of steps and the timing.