Common Patent Terminology

Question 1

Abstract

Answer 1

The section of a patent that provides a brief summary of the invention described in a patent

Реферат

Question 2

Amendment (of part application)

Answer 2

A modification of a portion of an application, which may be in the specification, the claims, or the abstract

Изменение (части заявки)

Question 3

Annuity

Answer 3

A fee required to be paid annually to the patent-granting organization of a country to maintain a patent application or a patent. See Maintenance Fee (for U. S. patents)

Платеж за поддержание патента в силе

Question 4

Application

Answer 4

A document submitted to the patent office of a country to describe an invention for which a patent is sought

Заявка

Question 5

Patent is sought (seeking patent)

Answer 5

Испрашивается патент (испрашивание патента)

Question 6

Application publication

Answer 6

The publication by the patent office of a country or by WIPO of an application submitted by an applicant for patent. The publication ordinary occurs (происходит, возникает, случается, наступает, появляется) 18 months after the filing date of the application (дата подачи заявки), or 18 months after the earliest claimed priority date

Публикация заявки

Question 7

Claim

Answer 7

A statement that defines the invention protected by a patent

In patent law, the claim is the specification by the applicant for a patent of the particular things in which he insists his Invention is novel and patentable; it is the clause in the application in which the applicant defines precisely what his invention is.

Притязание, требование

Question 8

An independent claim

Answer 8

Defines an invention without referring to another claim, for example, “Claim 1. A
compound represented by the following formula (I)…”

Независимый пункт формулы

Question 9

A multiply dependent claim

Answer 9

Depends on more than one claim, for example, “Claim 3. A compound according
to any one of claim 1 or 2, wherein Y is a heterocyclic aromatic five-membered
ring structure.”

Пункт, зависимый от более чем одного другого пункта

Question 10

Continuing Application (or continuation application)

Answer 10

An application that contains the same description of the invention as a prior filed application and claims the benefit of the filing date of the prior application. See also Request for Continued Examination.

Заявка в продолжение ранее поданной

Question 11

Disclosure

Answer 11

Description of the invention in a patent application or a patent. Disclosure is often used interchangeably with Specification in referring to a patent or patent application. See also Duty of disclosure and Invention disclosure.

Раскрытие сущности изобретения

Question 12

Divisional application

Answer 12

An application that contains the same description of the invention (or inventions) as a prior filed application and claims the benefit of the filing date of the earlier application, but contains claims that are related to only a portion of the original disclosure.

Question 13

Drawings (or figures of drawings)

Answer 13

Line drawings or photographs submitted as part of a patent application to help describe the invention.

Чертежи

Question 14

File wrapper; also prosecution history

Answer 14

The physical file at the PTO that contains the official record of the examination of the application.

Файл, который содержит записи об экспертизе по заявке

Question 15

Filing receipt

Answer 15

A document issued by the PTO formally acknowledging the filing of a patent application and informing the applicant of the filing date and serial number of the application. Since 2001, the filing receipt also indicates the confirmation number that serves as a cross-check for identifying the application.

Уведомление с сообщением регистрационного номера заявки и даты поступления документов на руки

Question 16

Final office action (or final rejection)

Answer 16

A formal written communication from the PTO that maintains on a “final” basis a rejection stated in a prior office action. After the issuance of a final office action, the applicant has the right to appeal the examiner’s decision immediately to the PTO’s Board of Patent Appeals and Interferences, and the option of submitting another written response to the rejection.

Окончательное решение или окончательный отказ

Question 17

Grant or issue (of patent)

Answer 17

Publication of the formal grant of a patent, on which date the patentee can begin enforcing the patent.

Выдача патента

Question 18

Information material to patentability

Answer 18

Information that compels a conclusion that a claim of a patent application is unpatentable.

Информация, вынуждающая прийти к выводу о том, что формула из заявки на патент не соответствует патентоспособности

Question 19

Infringement

Answer 19

The trespass on the rights of the owner of a patent by another party.

Question 20

Intellectual property

Answer 20

A generic description encompassing patents, trademarks, copyrights, and other available forms of protection for the products of mental work. In some countries, industrial property is used interchangeably with intellectual property.

Question 21

Issue (grant) fee

Answer 21

A fee to be paid to the PTO after a patent application has been allowed, to prompt the PTO to issue (grant) the patent by publishing it. An allowed application becomes abandoned if the issue fee is not paid in a timely manner.

Пошлина за выдачу патента

Question 22

License (of patent)

Answer 22

An agreement, usually in writing, in which the owner of a patent grants to another party the right to practice the patented invention without giving up ownership of the patent. A license may be granted to the party on an exclusive or non-exclusive basis.

Question 23

Maintenance fee

Answer 23

Fee required to be paid periodically to the PTO to maintain an issued patent.

Пошлина за поддержание патента в силе

Question 24

Non-obviousness

Answer 24

A basic requirement for a claimed invention to be patentable under U.S. laws. The claimed invention must not be obvious from previously known technology.

Неочевидность

Question 25

Novelty

Answer 25

A basic requirement for a claimed invention to be patentable. See Anticipation. In the United States, a claim lacks novelty if it is anticipated by a reference

Новизна

Question 26

Obviousness

Answer 26

A basis for rejecting a claim in a patent application because the subject matter claimed is considered by the PTO examiner to be obvious from the technology described in a reference (or references) cited by the examiner.

Очевидность

Question 27

Office action

Answer 27

A formal written communication from a PTO examiner, usually containing a rejection of the claims of a patent application

Запрос (уведомление) органа

Question 28

Patent

Answer 28

A grant by a government to a patentee, as evidenced by an official document, of exclusive rights to the subject matter or invention claimed in the patent

Патент

Question 29

Prior art; prior art reference

Answer 29

A document or other evidence of previously known technology against which the patentability of an invention is assessed

Предшествующий уровень техники

Question 30

Priority (claim to priority)

Answer 30

The claim in a patent application to the benefit of the filing date of an earlier filed patent application for the same invention. Priority may be claimed under the Paris Convention based on the filing date of an earlier foreign application. Priority may also be claimed domestically in the United States based on a prior filed U.S. application

Приоритет (заявить приоретать)

Question 31

Provisional application

Answer 31

A relatively new form of U.S. patent application requiring a much smaller filing fee and less stringent formalities than for a regular patent application. A provisional application automatically expires 1 year after its filing date and must be followed by the filing in the PTO, and in other appropriate patent-granting organizations as desired, of a regular patent application that claims priority based on the provisional application.

Временная заявка (в РФ нет такого)

Question 32

Abandoned application

Answer 32

Отмененная (отозванная) заявка

Question 33

Provisional rights

Answer 33

A new form of patent rights created under the AIPA to grant limited protection to a patentee for the period between the publication of a patent application and the date of issue of a patent

Временные права

Question 34

Rejection (of claim)

Answer 34

A statement by an examiner that a claim in a patent application is not patentable for a reason specified by the examiner.

Отказ в выдаче патента

Question 35

Specification

Answer 35

The portion of a patent application that describes in writing the invention, including the background of the invention.

Спецификация (описание изобретения)

Question 36

Utility

Answer 36

A basic requirement for an invention to be patentable under U.S. law. All applications, whether for utility, plant, or design patents, must describe an invention that has utility for it to be patentable

Полезность

Question 37

What is an invention?

Answer 37

An invention is a technical solution in any field related to a product (e.g., a device, substance, composition, system, microbial strain or cell culture of plants and animals) or a method/process, including the use for a new purpose of a known product and method. Patent protection is given to an invention if it meets the following criteria: novelty, inventive step (non-obvious from prior art), industrial applicability and sufficiency of disclosure in the description for its implementation. A doctrine of equivalents is applicable for patented inventions in Russia.

The maximum duration of patent protection for an invention is 20 years from the application filing date, subject to payment of annuities beginning from the third year as of the filing date and only after the patent is granted.

The term of a patent for an invention related to a medicine, pesticide or agrochemical, the use of which is subject to obtaining special permission (marketing authorization), may be extended at the request of the patent owner for a period not exceeding five years. Such patent term extension may be granted upon a patent owner’s request and a supplemental patent is granted in the scope covering the corresponding product only.
The right to obtain a patent belongs to the inventor, employer of the inventor (in case of an employee’s invention) and their assignees. A patent application must be filed with the Federal Service for Intellectual Property of the Russian Federation (the “Rospatent”).

Question 38

patent term extension

Answer 38

Продление срока действия патента

Question 39

supplemental patent

Answer 39

Дополнительный патент

Question 40

patent application must be filed with the Federal Service for Intellectual Property of the Russian Federation

Answer 40

Заявка на выдачу патента должна быть подана в Роспатент

Question 41

What is a utility model?

Answer 41

A utility model is a technical solution characterizing a single device only. Utility model protection is similar to that of inventions, with certain limitations and restrictions.

Patent protection is granted to a utility model if it meets the criteria of novelty and industrial applicability, and if it is sufficiently disclosed in the description for its implementation.
The term of a utility model’s patent protection is 10 years from the application filing date, subject to the payment of annuities beginning from the first year. One application can cover only one device; variants have not been allowed since 1 October 2014. It is required to prove the use of each feature of independent claim for patent protection purposes.

Question 42

If it meets the criteria of novelty and industrial applicability, and if it is sufficiently disclosed in the description for its implementation.

Answer 42

Если оно соответствует критериям новизны и промышленной применимости и если в описании оно раскрыто с полнотой, достаточной для его осуществления

Question 43

What is an industrial design?

Answer 43

An industrial design is an outer appearance solution of a product of industrial or handicraft origin. Patent protection is granted to an industrial design if it meets worldwide novelty and originality criteria. It is permissible to protect patterns and graphical user interfaces as industrial designs.
Legal protection of industrial design patents granted prior to 1 January 2015 lasts for 15 years, subject to the payment of annuities, and with the possibility of extension for an additional period specified in the application, but not exceeding 10 years. From 1 January 2015, the initial term of validity of an industrial design patent is five years, extendable up to four times for five years (up to 25 years in total).
The Hague System of International Registrations of Designs has been applicable in Russia since 28 February 2018.
Doing Business in Russia
It is obligatory to submit an
original certified priority application copy to Rospatent within three months from the date of publication of the international registration in the International Designs Bulletin. The submission of the required document should be accompanied by a cover letter (free format) identifying the corresponding international application or registration. If the prescribed three-month deadline is missed, the priority claim will be
irrevocably disregarded.
It is also important to note that a single creative concept requirement might be a problem for multi-design applications, as color and size
differences are usually considered by Rospatent as a reason for refusal.

Question 44

How are patentable works protected?

Answer 44

Russia has two valid patent systems for inventions: national and regional.

Under the national patent system, a patent application is filed with Rospatent.
Rospatent examines patent applications within the following terms:
• for inventions — up to 34 months (in practice — 10-15 months on average)
• for utility models — up to 17.5 months (in practice — 6-12 months on average)
• for industrial designs — up to 20.5 months (in practice — 8-12 months on average)
It is possible to reduce the term of the application examination by ordering Rospatent to conduct a special patent search for the acceleration of the examination.

The regional patent system is based on the Eurasian Patent Convention of 1995, which enables one Eurasian patent to cover eight countries that are members of the Commonwealth of Independent States (CIS). For more information, please visit https://www.eapo.org/en/. The Eurasian patent application is filed with the Eurasian Patent Organization (EAPO), which is located in Moscow, Russia.

Question 45

Can granted patents be invalidated?

Answer 45

A granted Russian patent can be invalidated on a limited number of grounds, such as:
• the patented invention, utility model or industrial design not complying with the patentability requirements established by law
• the patented invention, utility model or industrial design not being sufficiently disclosed to enable implementation by a skilled person
• the granted patent has additional essential features in the claims not disclosed in the initially filed application
• the patent being issued when there were several applications for identical inventions, utility models or industrial designs with one and the same priority date
• the patent indicating as the author or patent holder a person not being such or without an indication in the patent of the real author or patent holder
Any person may challenge a patent on the above-mentioned grounds within the term of such patent protection, and after the term of protection, only a person with a legal interest in such invalidation. A claim on invalidation must be filed with the Chamber for Patent Disputes of Rospatent and, in case the patent indicates the wrong author or patent holder, with a court.

Question 46

to comply with the patentability requirements

Answer 46

Соответствовать требованиям патентоспособности

Question 47

What rights are vested in a patent?

Answer 47

Какие права закреплены в патенте?

The patent owner has the sole (exclusive) right to use an invention, utility model or industrial design that is protected by such patent. Without the patent owner’s consent, no one may commercially use a patented object in any way, including importation, manufacture, application, offer for sale, sale or other ways of introducing into commerce, or storage for this purpose.
Since March 2022, the Government of the Russian Federation amended the methodology for determining the amount of compensation paid to a patent owner when a third party decides to use an invention, utility model or industrial design without the consent of the patent owner. These changes apply only to patent owners associated with foreign states who commit so-called unfriendly actions against Russian legal entities and individuals. Such patent owners will receive 0% of the actual revenue of the third party who has used the invention, utility model or industrial design. However, this non-compensation will only apply if the invention, utility model or industrial design is used interests of national security.

Question 48

What constitutes use of a patent?

Answer 48

A patented invention would be deemed used in a product (or by a method) if the product contains (or the method uses) each feature of the patented invention stated in an independent claim of the invention, or a feature equivalent thereto. Equivalence of a feature is generally assessed according to the criteria of identical or adequate replacement and achievement of the same technical function or effect, which became known as such in the relevant technology field before the priority date.

A patented utility model would be deemed used in a product if the product contains each feature of the patented utility model stated in an independent claim of the utility model. Contrary to inventions, since 1 October 2014, the use of features equivalent to the features of the patented utility model does not constitute the use of the patented utility model.

A patented industrial design would be deemed used in a product if the product contains all the essential features of the patented industrial design or set of features giving the consumer the same general impression as the patented industrial design, provided that the products have similar purposes.

Question 49

What patent infringement remedies are available in Russia?

Answer 49

Infringement of patent rights may entail civil, administrative and even criminal liability (see the question on IP rights enforcement below).
Civil remedies are provided for in the Civil Code (see Section 14.7 below) and are applicable at the request of rights holders and/or exclusive licensees.
At present, preliminary injunctions are not available as such in Russia, only provisional remedies that are supposed to secure the “main” claim. Such provisional remedies cannot overlap with the main claim, e.g., if the claim seeks the prohibition of the use of IP rights, it is not possible to ask for the same remedies in a preliminary injunction. Preliminary injunctions (provisional remedies) are rarely granted in practice and it is quite difficult to predict whether they will be granted, since the granting of preliminary injunctions is solely at the judge’s discretion.

There are also criminal and administrative proceedings available for patent disputes but these are rarely used in practice.

Question 50

To entail (something consequences)

Answer 50

Влечь за собой

Question 51

preliminary injunction

Answer 51

Предварительный судебный запрет

Question 52

provisional remedies

Answer 52

Обеспечииельные меры

Question 53

that are supposed

Answer 53

Которые должны

Question 54

To overlap

Answer 54

Дублировать, перекрывать, совпадать

Question 55

the claim (application) seeks the prohibition (priority) of

Answer 55

Испрашивание запрета

Question 56

What should one know about patent litigation in Russia?

Answer 56

It is necessary to have all the information and evidence at hand before initiating the action because:
• there is no discovery
• courts are not likely to satisfy requests to obtain information from
third parties
• once initiated, the proceedings move quickly
• judges rely heavily on forensic examination results, so it is necessary to engage suitable experts for the forensic examination
Patent disputes mostly derive from either patent invalidity or patent infringement. The first is not a defense of the latter, since these are two different types of actions that are handled by different authorities. In addition, if a patent is invalidated partially or wholly, a patent infringement court case may be dismissed or reconsidered. The Chamber for Patent Disputes of Rospatent handles invalidity actions, as Russian arbitrazh (state commercial) courts handle patent infringement suits. The Court for Intellectual Property Rights (the “IP Court”), which operates in Russia since 2013, currently considers all patent disputes as a third (cassation) court instance (see the question on IP courts below) or as the first instance court for cases challenging Rospatent’s decisions on patent invalidation. A declaratory judgment for noninfringement is not available in Russia.

Question 57

Grace period

Answer 57

Авторская льгота (льгота по новизне)

Question 58

Subservient patent

Answer 58

Зависимый патент

Question 59

Dominant patent

Answer 59

Основной патент

Question 60

Incentive

Answer 60

Стимул, поощрения, мотивация, льгота, побуждение