During consideration of the case № SIP-1061/2019 the Presidium of the Russian IP Court faced a question on construction of paragraph 16 of the Order on conducting an informational search during the substantive examination of an invention patent application and presentation of the report, approved by Order of Ministry of Economic Development of the Russian Federation as of 25.05.2016 № 316 (Order № 316), in conjunction with paragraph 2 of article 1375 of the Russian Civil code.
Paragraph 16 of Order № 316 states that an application for an invention or utility model with an earlier priority date is included in the prior art in the part of its description and claims contained in this application on the date of its filing.
At the same time, paragraph 2 of article 1375 of the Russian Civil code states that an application for an invention must contain:
- a request to obtain a patent;
- specification of the invention;
- claims of the invention that clearly express its essence and are based entirely on its specification;
- drawings and other materials, if they are necessary for understanding the substance of the invention;
In this case, it was a matter of discussion, what part of an earlier published application should be the part of the prior art, when checking the novelty of a later invention, namely: whether the drawings of an earlier application are included in the prior art. After all, in paragraph 16 of Order № 316 there is neither indication of the possibility of including in the prior art drawings contained in the application with an earlier priority date nor the fact that the drawings are part of the specification of the utility model.
To obtain clarifications on this issue official requests have been sent to the following specialists with theoretical and practical knowledge on the merits of patent disputes: Leo Linnik, Aleksey Zalesov, Vladimir Meshcheryakov, Andrey Fedotov, Valeriy Jermakian.
All the above mentioned leading experts in the field of patent law came to the same conclusion that the content of all materials submitted by other applicants for a patent for invention, utility model and industrial design (not published at the filing date of the later invention but with earlier priority), including drawings, should be included into prior art and affect the novelty of later patent applications.
The Presidium of the IP Court has agreed with the opinions of experts, including the position of the patent attorney Dr. Aleksey Zalesov, Managing Partner of «A.Zalesov & Partners» Patent & Law Firm.
For more details on the case please refer to the link.