A Point Of Principle

• Published date: 28 June 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Patent, Music and the Arts
• Law Firm: Gorodissky & Partners
• Author: Ms Elena Nazina

Novelty is one of the three mandatory criteria for patentability of an invention established by the Patent Law of the Russian Federation, the Eurasian patent legislation, and also by the patent legislation of all countries where there is a patent protection system.

Moreover, the "novelty" patentability criterion of an invention has always been considered as the most clearly defined and simple enough to establish that a claimed invention complies with it.

However, the practice of consideration of applications for inventions and administrative cases on invalidation of Russian and Eurasian patents by the Federal Service for IP (Rospatent) in recent years and the consideration of such cases by the IP Court shows that the long-standing approaches to evaluating the "novelty" patentability criterion of an invention have been notably changing.

At the same time, there is an inexplicable trend to pivot from the principles of evaluating this criterion adopted worldwide to those previously applied as an exception to the general rule in case of extremely specific and limited situations.

To understand what basic requirements are established by the current patent legislation of the Russian Federation and the Eurasian Patent Convention for the "novelty" patentability criterion of an invention, a brief overview of the relevant provisions of the Russian and Eurasian patent legislations is provided below.

The key condition for compliance of an invention with the "novelty" patentability criterion both in accordance with the Civil Code of the Russian Federation (chapter 4, article 1350, clause 4) (CC RF) and in accordance with the Instruction to the Eurasian Patent Convention (rule 3 [1]) (the Instruction to the EAPC) is as follows.

An invention is new if it is unknown in the art/is not a part of the prior art

The "novelty" patentability criterion of an invention is defined in more detail in the "Rules for Preparation, Filing, and Consideration of Documents Constituting a Basis for Taking Legal Actions on State Registration of Inventions and Their Forms" (RU PTO Rules) and the "Rules for Preparation, Filing, and Consideration of Eurasian Applications with the Eurasian Patent Office" (EAPO Rules).

In accordance with the RU PTO Rules (clause 70): "During novelty assessment, an invention is recognised as new if it is established that the set of features of the invention presented in an independent claim of the set claims is unknown from the information that has become publicly available worldwide before the priority date of the invention."

The RU PTO Administrative Regulations adopted in 2008 and (currently repealed) contained a slightly different definition of novelty of an invention: "An invention is recognised as known in the prior art and not compliant with the novelty criterion if the prior art discloses a means having all features inherent to the invention characterised by the set of claims proposed by the applicant."

In accordance with the EAPO Rules (clause 5.7): "The check for novelty is conducted for the entire set of the features characterising the invention, ie, contained in the set of the claims. The invention is not recognised as new if the prior art reveals information about a subject that has features identical to all features contained in an independent claim of the set of claims."

Thus, both Russian and Eurasian patent legislations clearly establish that it is necessary to identify in the prior art a mean/subject characterised by the set of features identical to those characterising the invention in the set of claims.

At the same time, in accordance with the "Explanatory Dictionary of the Russian Language" (SI Ozhegov, N Yu Shvedova): "Identical means the same, being entirely identical."

Based on the above requirements, it is obvious that an invention may be recognised as non-compliant with the "novelty" patentability criterion only if a mean/subject characterised by an entirely identical set of features is disclosed in the prior art.

In terms of the generally accepted interpretation of the meaning of the term "identical", it can by no means be concluded that the feature expressed by the general concept (and a range of any numerical values is undoubtedly a feature expressed by the general concept) is identical to (or entirely congruent with) the feature expressed by a particular or narrower concept (in particular by the narrower range).

It follows from the above analysis that the Russian and Eurasian legislation provides for no exception to the established general approach to evaluation of the "novelty" patentability criterion.

This conclusion is also supported by the explanations provided in the RU PTO Guidelines adopted in 2011, which is now repealed (clause 5.4.2), and the current RU PTO Guidelines adopted in 2018 (clause 2.9.10), which clearly define the general approach to assessment of the "novelty" patentability criterion, which is that "a general disclosure does not usually deprive a particular disclosure of novelty but a particular disclosure deprives the general claims, covering the particular disclosure, of novelty".

The guidelines of 2011 and 2018 are not legislation but they are recommendations to the RU PTO examiners on the use of certain methodological approaches developed by the practice of application of the relevant provisions of the Russian legislation.

Furthermore, these guidelines contain no...