- Presenting 3D-models as part of application materials will be possible
- Patents will be granted in electronic form in Russia
A Law introducing amendments to the Civil Code of the Russian Federation relating to 3D-models and grant of patents for inventions and utility models in electronic form has been adopted. It was published on 20 July 2020 and should come into force within 180 days from this date. Therefore, in around 6 months it should be possible for applicants to submit 3D-models alongside drawings as part of the application process, and patents will be granted in electronic form.
According to Rospatent, the Russian IP Office, it is primarily big corporations using 3D-modeling systems such as CAD to develop their technical solutions that should benefit from these amendments The process of drafting patent applications should become easier as a lot of mistakes are usually made during the conversion of 3D-models into drawings, and the applicant will no longer have to present drawings if there is a 3D-model. The amendments will also help improve the quality of examination since a technical solution presented as a 3D-model will become clearer to the examiner. Consequently, the term of examination should be reduced. A few more important points to note:
- Presenting 3D-models will not be obligatory.
- 3D-models will be used for interpreting the claims of inventions and utility models as well as drawings, which should allow patent owners to more effectively defend their exclusive rights.
- As a base file format, the format STEP is suggested, which is a standard file format allowing to open 3D models in different CAD (Computer-Aided Design) programs.
- 3D-models will not be published. Third parties will still be able to familiarize themselves with 3D-models; however, 3D-printing will be prohibited.
- For electronic patents, it should be noted that an applicant, if they desire, will still be able to obtain a patent in paper form provided that a relevant official fee is paid.
Undoubtedly, a 3D-model can illustrate an invention or utility model better than drawings. Therefore, we believe that including 3D-models in application materials could help attract a potential licensee. For the same reason, however, a 3D-model may assist a potential infringer since it could disclose parts of the technical solution. The overall design of a 3D-model may also be copied before the patent owner decides to protect it as an industrial design.
Given that in Russia 3D-models will not be published, it appears that information safety clearly outweighs potential licensees’ interests. Yet the prohibition of 3D-printing alone in the process of familiarization with application materials is unlikely to guarantee the patent owner that their exclusive rights will be totally safe. First, it is still unclear whether 2D-printing of 3D-models will be allowed. Of course, 2D-printing is less risky in terms of information safety than 3D printing; yet there is still a risk. In the end, a lot of the know-how as well as other technical features important for implementing a technical solution can be written down, sketched or simply remembered by the person reviewing a 3D-model.
Further, it does not seem likely that adding clarity to a technical solution by presenting a 3D-model to the examiner will contribute a lot in reducing the overall term of examination. It is also worth mentioning that this term has already been significantly reduced over recent years so that it currently takes about six months from the filing date for an examiner to issue the first office action, which is very quick indeed bearing in mind that it used to take at least a year before.
Of course, the amendments will require that the Rules and Regulations be amended accordingly, and a lot should then become clearer. For now, however, we would only recommend applicants filing 3D-models if:
- there are actually difficulties in preparing drawings based on a ready 3D-model as noted by Rospatent;
- the applicant’s priority is a reliable patent that is hard to oppose and, accordingly, the examiner will need to understand the invention as clearly as possible so as to carry out high-quality examination including a patent search.
As for electronic patents, it is unclear what information it will include and form it will take. Technically, since any patent is essentially a certificate confirming exclusive rights, an electronic patent should have some features of a certificate and not just an extract from the patent register. Although, as we say above, we expect this to become clearer once the Rules and Regulations have been amended.
We will report back once the Rules have been amended with further guidance.