RUSSIA: Outsourcing of patent examination.
Ekaterina Shekhtman, INCO ltd., Novosibirsk, Russia
INTA Bulletins – Europe Subcommittee
Maria Usova, INCO ltd., Novosibirsk, Russia
On the 1thof August 2021 the amendment to the article 1246 of Russian Civil Code in thefield of patent law came into force. Under the amendment, a preliminary patent searchand preliminary evaluationof patentability procedure is introduced for invention andutility model applications. Mentioned procedure will be made by accreditedspecialized Russian scientific organizations.
Afterfilling the application for the invention or utility model, applicant has theright to apply for accredited organizations, which has competence in the scope referring to the field of art of the application.Information about accredited organizations with an indication of specialization, for which the organization is accredited,will be published on the website of Rospatent. Applicant chooses the accreditedorganization by himself on a commercial basis and informs the Rospatent aboutit.
Applicants,who exercisethe right for accredited organizations services, have following advantages. Incase if specialists of accredited organization under the results of preliminarypatent search make a preliminary conclusion about the non-patentability of thedevelopment, the inventor has an opportunity to withdraw an application andimprove it. Therefore, the inventor reducesthe time for receiving adverseopinion.
Moreover, itis supposed to establish statutorily the reduction of fee for substantial examination in case if result ofpreliminary information search and preliminary evaluationof patentability for applications is transacted to the Rospatentbeforehand. In June, 2021, Government Resolution regarding reduction governmentalfee by 50% in mentioned situation was signed by Chairmanof the Government. As a result, expenses for specialists of accredited organization servicescan be recouped eitherin part or in whole.
Incurrent times pilot organization are nominating forparticipation in program of outsourcing of patent examination. There arefollowing fields of art were selected: pharmaceutical industry; biotechnology in medicine; IT-technology; supercomputer technology; space technology.
Rospatenthas established the educational programfor such institutions, consisted of theoretical and practice parts. Theoreticalpart includes keyaspects of patent law, while practice part covers the questions of the patentsearch and evaluationof patentability of the invention or utility model.
Theprocedures of patent search and thedecision about grant of protection or refusal are still reserved by Rospatent, but the examiner could use the results of preliminary search for thedecision.
To sum up, successful collaboration of scientists and examiners ofRospatent in questions of patent search is highly likely to provide enhancingreliability of granted patents.