Russia: Chamber rules that subject matters in inventions can be altered – if supported by features from the specification
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Russia: Chamber rules that subject matters in inventions can be altered – if supported by features from the specification

Sponsored by

gorodissky-400px.png
joanna-kosinska-pbgy3ptga4a-unsplash.jpg

Vladimir Biriulin of Gorodissky & Partners discusses a trademark dispute ruling by the Chamber of Patent Disputes, concerning amendments to invention applications

An applicant filed a patent application (No. 2018119663/03) for a ‘raw mix for making exposed ceramic tiles’, i.e. for substance. The examiner issued an official action of refusal because the subject of the invention was claimed as a ‘substance’, while only features of the composition were indicated in the application. The applicant appealed the decision of the examiner at the Chamber of Patent Disputes.

While examining the appeal and the official action, the Chamber put forward the following considerations.

The applicant indicated in the appeal that he was ready to include features in the claims characterising the temperature of baking the compound, which in the opinion of the applicant is essential for achieving the technical result, and those features had not yet been disclosed in the cited sources of information. The applicant also specified the subject matter of the invention and termed it as ‘a process for making facing ceramic products’.

The collegium of the Chamber pointed out that the earlier submitted claims for the subject matter ‘substance’ did not characterise in full the essence of the invention disclosed in the specification. They also noted that it did not contain the combination of all essential features sufficient for solving the technical problem as posed by the applicant, and for obtaining the technical result during embodiment of the invention.

The collegium also noted that there were regulations for the examination of patent applications (dated May 25 2016) to take into account. In the regulations, paragraph 86 sets forth that if an essential feature is missing in the independent claim – and that technical result described in the specification cannot be obtained without that feature but that feature is contained in the specification – the applicant may amend the claims by including that feature into the independent claim. Also, reasons should be given to confirm that feature is indeed required to obtain the sought technical result.

The collegium agreed with the applicant in that the technical essence disclosed in the application documents would rather dictate to characterise the proposed technical solution as a method of manufacturing facing ceramic products, with the use of features characterising the composition of the mixture as well, as the features characterising the combination of actions directed at obtaining those ceramic products. Substitution of one subject matter for another subject matter may be allowed in such situations during the process of examination of the application.

The Chamber of Patent Disputes agreed that additional documents with the amended claims provided by the applicant do not change the essence of the application. An additional information search was carried out according to which it was found that the invention characterised in the amended claims for a method satisfies patentability requirements for which a patent may be granted.

After careful consideration of the details pertinent to the case, the Chamber cancelled the official action of refusal and ruled to grant a patent for a ‘method of production of facing ceramic products from a batch’, with the features in the claims taken from the specification of the patent application.


 

Vladimir BiriulinPartner, Gorodissky & PartnersE: biriulinv@gorodissky.ru

more from across site and ros bottom lb

More from across our site

Managing IP’s senior reporter Rani Mehta interviewed attendees at the INTA Annual Meeting in Atlanta about how they made the most out of their first day
A team of lawyers who joined Norton Rose Fulbright from Polsinelli say they were drawn to the firm's global platform
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers say a ruling concerning liability for trademark infringement could give company directors an easy way out and create litigation uncertainty
The LMG Life Sciences Awards announces the winners for the 5th annual awards
Some US lawyers have strengthened their connections with European firms as they help clients determine whether the UPC will become a 'centre of gravity'
In the latest episode, the team discusses the battle to take control of listed company and IP business Qantm IP, and looks at some recent hiring trends
To mark Mental Health Awareness Week, lawyers explain how they manage their mental health, and how they pluck up the courage to ask themselves difficult questions
IP lawyers unpick a case heard at the CJEU’s Grand Chamber this week that could potentially create a new world for litigation in Europe
A lawyer who replied to a cease-and-desist letter with just two words has shown others how to deal with vexatious infringement allegations
Gift this article