Before submitting an application to Rospatent for registration of a trademark or for obtaining a patent for an object of intellectual property, it is recommended to carry out patent search, but many of the applicants do not understand why it is needed and see it only as a waste of time and money.
In fact, conducting a preliminary search is necessary because its purpose is to determine whether an intellectual property object meets the criteria for its protectability
For example, when
patenting an invention
it is important to identify its compliance with such criteria as novelty (the object should not be known), industrial applicability (the object should be applicable in industry, healthcare and other sectors of the economy), inventive step (the object should not be obvious to a specialist in its field).
If the invention does not meet these criteria, the applicant will be denied a patent, and unscrupulous competitors may take advantage of the lost time, which may even result in loss of business.
Therefore, in order to successfully pass the formal and substantive examination, it is important to conduct a preliminary search before filing an application, which will make it possible to:
- examine the patent purity of the development in order to exclude
its existing analogues;
- find new areas of application for an intellectual object
property;
- determine the prospects for the development of the direction;
- identify competitors working in related fields;
- find clients interested in using the development.
When applying for
trademark registration
Conducting a preliminary search allows you to identify novelty, distinctiveness, respect for the public interest and the absence of signs of misleading the consumer, and therefore avoid possible legal problems in the future. That is, a preliminary search allows you to assess the possibility of registering a designation in the declared form even before filing an application, and, if necessary, correct it in a timely manner to successfully pass the examination. It is especially recommended to conduct a preliminary search when conducting an accelerated trademark registration procedure.
It should be noted that Rospatent has provided users with access to information in the “Search Platform” information system for independent searches about registered trademarks, service marks, well-known trademarks, as well as international trademarks protected in the territory of the Russian Federation. Moreover, the search is available not only by text, but also by images, sound and meaning for verbal trademarks.
As for the preliminary search for inventions and utility models, back in 2020 the Civil Code of the Russian Federation was amended by Federal Law No. 262-FZ “On Amendments to Part Four of the Civil Code of the Russian Federation”, providing for the introduction of a new procedure for conducting a preliminary search and assessing patentability in relation to the claimed invention and utility model by Russian scientific and educational organizations accredited by Rospatent, the procedure for which established by the Government of the Russian Federation, and information about them is posted on the Rospatent website.
Applicants can use this service on a voluntary basis, but they are required to inform Rospatent about contacting an accredited organization before the examination of the application begins or before its completion.
After receiving the results of the preliminary search, the applicant has the right, on his own initiative, to submit an amended claim or utility model that does not substantially change the application for it and, if necessary, make appropriate changes to the description.
Thus, a preliminary search is a search among patent documents or means of individualization immediately before filing an application for registration of an intellectual property object in order to check the presence of designations previously registered by others or patents received by them for inventions or utility models, which allows minimizing all risks.
