This content is from: Russia

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

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

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