On November 23, 2023, the 18th consultation session on intellectual property for exporters takes place
A representative of an organization producing air rifles for biathlon asked in what case the design of a rifle developed by the company's designers could be patented on behalf of the company itself.
The answer was based on the norms of Belarusian patent legislation.
In accordance with paragraph 2 of Article 6 of the Law of the Republic of Belarus “On Patents for Inventions, Utility Models, Industrial Designs” (hereinafter – the Law), the right to obtain a patent belongs to:
1. the author (co-authors) of an invention, utility model, industrial design;
2. a natural or legal person who is the employer of the author of an invention, utility model or industrial design in the cases provided for in paragraph 3 of the Article;
3. the customer under a contract for the performance of research, experimental [1] design or technological work in respect of an invention, utility model or industrial design created during the performance of the contract, unless the contract provides otherwise;
4. a natural and/or legal person or several natural and/or legal persons to whom the right to obtain a patent has been transferred by the persons referred to in paragraphs 2-4 of this section prior to the registration date of the invention, utility model, industrial design;
5. to the legal successor(s) of the persons referred to in this paragraph.
In accordance with paragraph 3 of this Article, the right to obtain a patent for a service invention, utility model or industrial design belongs to the employer, unless the contract between the employer and the employee who created the service invention, utility model or industrial design provides otherwise.
As explained by the representative of the company, the authors received a work assignment to develop the design of the rifle.
In accordance with paragraph 3 of Article 6 of the Law, an invention, utility model or industrial design is considered official if it is created by an employee due to the fulfillment of duties stipulated by the employment contract or a specific assignment received from the employer, or if the activity that led to the creation of the invention, utility model or industrial design falls within the scope of the employer's activities and the employee used the employer's experience and (or) means to create the invention, utility model or industrial design.
Since the authors created the design solution as part of their work assignment, their employer has every reason to file an application for an industrial design on his behalf, naming the authors.
In accordance with paragraph 1 of Article 5 of the Law, the author of an invention, utility model or industrial design is recognized as a natural person whose creative work produced them.
The second question was raised by a representative of the Republican Medical Research Institute. The question concerned the possibility of overcoming the alleged refusal to recognize the claimed technical solution as patentable due to its non-compliance, in the opinion of the examination, with the criterion of “inventive step”.
As it became known from the dialog with the consultee, in the opinion of the examiner, the claimed process relating to methods of automatic apheresis is obvious to a person skilled in the art. To support the argument, the examination cited a source of information according to which the mathematical expression given in the claims is obvious.
The applicant twice expressed disagreement with the arguments of the examination, trying to prove that the proposed mathematical dependence as a distinctive feature of the claims leads to a positive technical result.
In its turn, the examination three times questioned the applicant's reasoning, demanding to provide evidence of compliance of the claimed technical solution with the criterion “inventive step”, expressed in the feature characterized by the mathematical expression.
The answer was based on the provisions of the Regulations on the procedure for drawing up an application for the grant of a patent for invention, examination thereon and decision on the results of the examination (hereinafter referred to as the Regulations). In accordance with paragraph 180 of the Regulations, mathematical formulas (expressions) and symbols may be used in the description, claims and abstract. In accordance with Clause 181 of the Regulations, the claims may contain mathematical formulas (expressions) the use of which is necessary for understanding the invention. Formulas (expressions) may characterize, for example, a ratio of dimensions, the parameters of a process, or contain information on the method of obtaining the desired value, if it refers to a method of analysis, determination or control. Since the proposed invention relates to a method of determining and controlling, the expression of a distinctive feature of the claims of the proposed invention through a mathematical relationship is permissible and acceptable.
In accordance with paragraph 182 of the Regulations, a mathematical formula (expression) may occupy a different place in the claims of the invention (for example, if a method is characterized by the performance of a calculation operation carried out in the process of its implementation, the result of which affects the nature of the implementation of further operations of the method, the calculation formula will occupy the corresponding place in the enumeration of operations that implement the method).
That is the norm of the by-law patent act that should be raised by the applicant during his possible participation in the joint consideration of issues arising during the examination of the invention application.
In accordance with paragraphs 262-264 of the Regulations, the consideration of issues arising during the examination of an invention application with the participation of the applicant should be conducted at the suggestion of the Patent Office or at the request of the applicant after preliminary familiarization of the parties with the issues to be considered. The questions of the Patent Office may be set out in its request, which additionally informs about the expediency of their consideration jointly with the applicant, the applicant's questions – in a request for joint consideration of the issues arising during the examination of the invention application, in which arguments on the expediency of such consideration are given. Where a request of the patent office is made, the applicant should respond to it within the time limit prescribed by the Law, irrespective of whether the applicant intends to participate in the joint examination of the issues raised therein. The date and time of examination of the invention application with the applicant's participation are agreed upon in advance. Examination of the invention application with the participation of the applicant (carried out by negotiation, if the issues can be resolved directly by the examiner and the applicant, or at an expert meeting, if the resolution of the issues requires the participation of a number of specialists on the part of the patent authority.
The applicant was recommended to listen carefully to the arguments of the examination and try to prove that the proposed mathematical dependence characterizing the essential distinctive feature of the claims, in conjunction with the features of the prior art, leads to the manifestation of the synergistic “sum effect” of the features, and not to the expected result, as claimed by the examination.
