Legal regime and guarantees

Legal regime of patenting is a complex of special rules, stated by the IUCI, agreements of the interested parties concerning patenting and also by the related and applicable rules of the international law and national legislations of certain countries, regulating relations of participants of patenting and other persons in connection with holding of patenting procedures and application of their results and consequences.

 

Legal regime of patenting includes the following elements:

1) legal regime, based on general rules of patenting and implementation of its results, stated by the IUCI;

2) legal regime, based on agreements of the IUCI and the interested parties concerning patenting;

3) legal regime, based on patenting guarantees, provided by the IUCI to the interested parties;

4) legal regime of the arbitration support of patenting.

 

General legal regime of patenting is divided into four regime periods depending on terms of legal validity of patenting results (expert verdict), as well as documents and attributes prepared on the basis of such results:

 

First – Initial secure (regime) period - one calendar year from the moment of the official formalization (announcement) of patenting results. This period includes the preliminary determination of author’s priority, because during the stated first year of patenting protection and two following years representatives of the open international expert community and persons concerned can express their opinions concerning the patentability of the patenting object. Such synchronous procedure of constant expert assessment and support of the creative activity result allows providing openness (democracy), objectivity and fairness of the patenting mechanism, wide distribution of information about the object and patenting protection. During the stated preliminary period the IASHE considers statements of experts and inquiries of persons concerned, prejudicing the patentability of the relevant object. If these applications are multiple (more than 3), representative (coming from persons not connected with each other in any way), verified (claims are based on legitimate documents and undisputable facts) and fair (authors of claims do not have own purposes), the IUCI will have the right to temporarily stop granting the patenting priority – up to the examination of all consequences of emerging disputes. Following the results of such examination presence of grounds for the acknowledgement of the author’s priority for the similar, same or fundamentally equal result of creative activity of another person may be detected. In this case the granted patent is recalled and the patenting priority based on it loses its legal force. If the open international expert community approves the presence of patentability criteria in the relevant creative activity result by the majority of not less than 2/3 of votes during the Initial regime period, the patent for this object will be prolonged for one year and the author of such object will get the prolongation of the official acknowledgement of the author’s priority. In other case previously granted patent and the relevant legal consequences will be cancelled.

 

Second – Official regime period – one calendar year following the Initial regime period. This period includes comprehensive verification of patentability of the object and substantiation of the author’s priority granting. During the second year of patenting protection and the year following representatives of the open international expert community and persons concerned can go on expressing own opinions concerning patentability of the patenting object. During the stated preliminary period the IUCI continues considering statements of experts and inquiries of persons concerned, prejudicing the patentability of the relevant object. If these applications are multiple (more than 5), representative (coming from persons not connected with each other in any way), verified (claims are based on legitimate documents and undisputable facts) and fair (authors of claims do not have own purposes), the IUCI will have the right to temporarily stop granting the patenting priority – up to the examination of all consequences of emerging disputes. Following the results of such examination presence of grounds for the acknowledgement of the author’s priority for the similar, same or fundamentally equal result of creative activity of another person may be detected. In this case the granted patent is recalled and the patenting priority based on it loses its legal force. If the open international expert community approves the presence of patentability criteria in the relevant creative activity result by the majority of not less than 60% of votes during the Official regime period, the patent for this object will be prolonged for one year and the author of such object will get the prolongation of the official acknowledgement of the author’s priority. In other case previously granted patent and the relevant legal consequences will be cancelled. On the basis of the successful passing of the Official regime period of patenting by the creative activity result the verification of the relevant author’s priority is accompanied by the significant strengthening of legal protection of the patenting object. This presupposes: signing of the open one-year agreement between the author (or another authorized possessor of rights) and the IUCI concerning the international distribution of the patenting object; setting up commercial contracts by the IUCI on behalf and in interests of possessors of rights; settlement of disputes with third parties on terms and conditions coordinated in the agreement. This agreement includes the arbitration clause and indicates the special competence of the American International Commercial Arbitration Court (AICAC, Wilmington, USA). Thus, in case if the dispute with persons concerned and the IUCI concerning the copyright or the related rights for the patenting object arises, the AICAC will have the alternative competence (with grounds for the primary jurisdiction) to settle such a dispute. Settlement of the stated disputes by the AICAC will be beneficial for authors of patenting objects or other possessors of rights because all data, information and evidences related to facts of author’s priority are provided by the IUCI to the AICAC after the conclusion of the abovementioned agreement – even before possible emergence of any disputes. 

 

Third – Legitimate regime period – one calendar year following the Official regime period. This period includes the final verification of patentability of the object and substantiation of the author’s priority granting. During the third year of patenting protection representatives of the open international expert community do not examine the patentability of creative activity results. At the same time persons concerned still can address the IUCI with inquiries prejudicing the patentability of the relevant object. If these applications are multiple (more than 5), representative (coming from persons not connected with each other in any way), verified (claims are based on legitimate documents and undisputable facts) and fair (authors of claims do not have own purposes), the IUCI will have the right to temporarily stop granting the patenting priority – up to the examination of all consequences of emerging disputes. Following the results of such examination presence of grounds for the acknowledgement of the author’s priority for the similar, same or fundamentally equal result of creative activity of another person may be detected. In this case the granted patent is recalled and the patenting priority based on it loses its legal force. If presence of patentability criteria of the relevant creative activity result is verified during the Legitimate regime period, patent granted for such an object will be permanently prolonged and its author will get the exceptional regime of acknowledgement of the author’s priority. In other case previously granted patent and the relevant legal consequences will be cancelled.

 

During the Legitimate regime period of patenting the verification of the relevant author’s priority is accompanied by the significant strengthening of legal protection of the patenting object – possibility to provide the interested author or another possessor of rights with the absolute legal guarantee of the IUCI.

 

Fourth – Exceptional regime period is not limited in time. It allows additional verification of legitimacy of patenting through legal guarantees of the IUCI as well as procedures of arbitration verification and support of patenting. During the stated period the author’s priority cannot be disputed through direct inquiries to the IUCI from persons concerned.

 

SPECIAL CLAUSES, CONNECTED WITH RESULTS OF VOTING OF REPRESENTATIVES OF THE OPEN INTERNATIONAL EXPERT COMMUNITY:

 

I. Within 1-3 regime periods the influence of notes (petitions and applications prejudicing patentability of the object) and results of voting of representatives of the open international expert community on the procedure and results of patenting expertise has the following nature: 

 

Opinion of representatives of the open international expert community examined by professional experts of the IUCI

Up to 3 or 5 notes recognized as baseless*

 

Up to 3 or 5 notes, at least one of which was recognized as baseless*

 

More than 3 or 5 notes recognized as baseless

More than 3 or 5 notes, at least one of which was recognized as baseless

 

Verification of patentability of the object by the necessary number of votes of representatives of the open international expert community (except 3rd regime period)*****

Rejection of patentability of the object on the basis of insufficiency of votes of represen-tatives of the open international expert community

 (except 3rd regime period)*****

Stage of the patenting period / influence of the patenting procedure

Denial of patentability of the whole object**, confirmed by experts of the IUCI

Denial of patentability of separate elements (parts) of the object**,  confirmed by experts of the IUCI

Denial of patentability of the whole object,  confirmed by experts of the IUCI

Denial of patentability of separate elements (parts) of the object,  confirmed by experts of the IUCI

During a period

Course of the period before expert notes

Uninter-ruptedly

Uninter-ruptedly

Uninter-ruptedly

Suspended

Suspended

Suspended

 

       -//-

     

       -//-

Course of the period after expert notes

Stopped

Stopped

Continuing

****

Stopped

Stopped

 

       -//-

 

       -//-

Patent

Legitimate

Cancelled

Changed with presentation of a new object to patenting***

Legitimate

Cancelled

Changed with presentation of a new object to patenting

 

       -//-

      

        -//-

On completion of the period

Course of the period

Transition of the procedure to the next patenting period upon condition of consent of the open international expert community (except the 3rd regime period)

Stopped

Stopped

Suspended

Stopped

Stopped

Transition of the procedure to the next patenting period

Stopped

Patent

Legitimate

Cancelled

Changed with presentation of a new object to patenting ***

Continuing

Cancelled

Changed with presentation of a new object to patenting

Legitimate

Cancelled

* - Reasonableness or groundlessness of notes is determined by the joint opinion of the group of professional experts of the IUCI that initially determined the patentability of the object and author’s priority of its creator.

**- Denial of patentability of the whole object assumes the denial of criteria of patentability of its general innovativeness, basic features or the majority of its elements. Denial of patentability of separate parts (elements) of the object assumes the denial of criteria of patentability of such elements (parts) without the denial of patentability of general innovativeness, basic features or the majority of elements of the object.

***- Due to the acknowledgement of denial of patentability of separate elements (parts) of the object by the professional expertise, the rest of parts of such object may be submitted by the author to a new patenting expertise (if they correspond to criteria of patentability)

**** - Continuation of the course of the regime period after the suspension (connected with consideration of notes and acknowledgement them as groundless) assumes the recovery of calculation of time of the regime period, starting from the moment the course of such period was stopped at.

***** - Verification of patentability of the object on the basis of the joint opinion of representatives of the open expert community is carried out following the results of the 1st regime period by the majority of votes (not less than 2/3 of the general number of voters) and 2nd period – not less than 60% of the general number of voters. Denial of patentability of the object on the basis of the joint opinion of representatives of the open expert community is carried out following the results of the 1st  and 2nd  regime periods upon condition of discrepancy between the general number of positive votes and limits established for every period.

 

II. Notes

 

Notes are official petitions of persons concerned or justification of points of view of the open international expert community representatives, connected with the denial of presence of patentability criteria at the object under the patenting expertise within first three periods of patenting expertise. Notes are directly connected with negative voting of the corresponding person during his participation in first three regime periods of patenting expertise. Notes prepared in accordance with the announced rules and properly reasoned are considered and given the corresponding legal status within the patenting expertise. Content of the Note must correspond to signs of relevance (direct relevance to the object and the procedure of its patenting), admissibility, (consequences, analytical assessments and conclusions presented in the Note must be correct from factual, legal and moral-ethic points of view), objectivity (facts presented in the Note must be valid and assessments and conclusions must be logically based on factual consequences), fairness (Note may be submitted by the person concerned only in order to determine the legal truth and social justice), logical reasonableness (all statements of the Note must be presented in consequent logical order of development and with cause-effect relations between statements and conclusions).

 

Notes not corresponding to the mentioned signs are not to be considered and admitted to application within the patenting expertise. The same person can submit a Note concerning the same object of patenting only once during each of the first three regime periods of patenting. Every subsequent Note must differ from the previous one by fact-based and reasoning parts.

 

Every Note will be considered by the professional expert group of IUCI connected with the procedure of patenting of the relevant object. If necessary in order to provide the objectivity of consideration of the Note, representatives of such group may ask additional questions to the author of the Note and request necessary documents and information about facts connected with the patenting procedure. On the basis of the joint decision of professional experts the Note may be acknowledged as:

a) reasonable and subject to redress;

b) groundless and subject to denial. Decision concerning the redress or the denial of the Note is not the subject of appeal.

 

Within one regime period the representative of the open international expert community has the right to recall his Note any time during a period of 10 days from the moment of its announcement.

 

III. Voting

 

In the process of passing two first periods of patenting expertise representatives of the open international expert community have the right to vote for confirmation or denial of patentability criteria regarding objects of patenting expertise. 

 

Positive voting assumes the consent of the representative of the open international expert community with presence of patentability criteria of the relevant object, emerging from the information about such object, announced within the framework of the patenting procedure. Positive voting also confirms the decision of the professional expert group of the IUCI (the group that had made a basic decision regarding the patentability of the object and admission of the object to the open patenting procedure).

 

Negative voting assumes the opinion of the representative of the open international expert community regarding the absence of criteria of patentability of the relevant object. Negative voting must be accompanied by the announcement of the relevant Note of the stated form and contents by such a person. Apart from results of consideration of the Note by a professional expert group, the negative vote is taken into account within the framework of the voting procedure upon condition that contents of the Note presuppose fairness and objective and professional nature of statements.

 

Within one regime period the representative of the open international expert community has the right to recall his vote or to change the result of his voting any time during a period of 10 days from the moment of voting.

 

The same person can vote for the same object of patenting only once within every of the first two regime periods of patenting.

 

Continuing regimes of the patenting procedure ensure objectivity, reasonableness and prestige of this procedure. At the same time this consequence does not mean that the legal fact of passing the procedure of patenting by the relevant object comes into force only after completion of all regime periods of patenting. Patenting procedure consists of several stages. During every stage the fact of passing the patenting is verified, criteria of patentability of the object and the author’s priority of the authorized person (corresponding to the certain level of depth of the expert assessment and relevant legal guarantees and legal protection provided) are defined. The higher the category of patenting expertise carried out and the regime period of patenting, the greater the level of fact-based and legal reasonableness and protectability of patenting results.

 

Regime acceleration is a mechanism of the accelerated passing of secure (regime) periods of patenting by the interested rightholders. This mode may be allowed upon the following conditions:

1) members of the relevant expert commission unanimously positively mark the criteria of patentability of the creative activity product following the results of the full cycle of the next regime period;

2) the majority (75%) of representatives of the open international expert community positively mark the criteria of patentability of the creative activity product following the results of the full cycle of the next regime period.

 

Regime acceleration for 1 regime period is possible for patenting expert assessments of categories 1-3. Regime acceleration for 2 regime periods is possible for patenting expert assessments of categories 4-5. Regime acceleration volume for patenting expert assessments of categories 6-7 is not limited.

 

Patentability and the author’s priority guarantee (hereinafter referred to as the guarantee) may be requested from the IUCI by:

a) author of the patenting object (creative activity product);

b) other possessors of rights; c) official consumer or buyer of the object of patenting (or rights for it).

 

Guarantees may be granted by the IUCI for every regime period separately (regime guarantees) or in the absolute status (absolute guarantees). Guarantee valid for a term of every regime period (regime guarantee) may be requested from the IUCI during first 3 calendar months of every such period. The absolute guarantee of any kind may be given only during the Legitimate and Exceptional periods. It will be unlimited in time if the initiator of patenting or another person concerned annually passes the procedure of prolongation of guarantee bases for patenting. Prolongation of guarantee bases for patenting for a term of one year is carried out through the submission of the declaration concerning the stable unchanged condition of the patented object and absence of claims of alternative rightholders and information about them, and prolongation of guarantee bases for patenting certification, verified by the IUCI if all conditions are met. 

 

Official guarantee of the IUCI is a collateral of the IUCI towards the third parties concerning the correspondence of the patented object to the official results of the patenting expertise (determination of criteria of patentability and the author’s priority) and the obligation of the IUCI to compensate (in the order of subsidiary liability) part of the real and actual material damage, caused to the person by the factual discrepancy between such product of creative activity and the criteria of patentability on the IOSCEAAD-775 standard.

 

Within the official guarantee subsidiary liability of the IUCI is the obligation of the IUCI to compensate part of the actual (real) damage, not compensated to the victim by the holder of rights for the certification object (product of creative activity) responsible for the damage.

 

The official IUCI guarantee (as the subsidiary liability) is implemented on condition of presence of the following legal and actual criteria (conditions):

a) there are no reasons to cancel the patenting results and the IUCI guarantee;

b) the holder of rights for the patenting object has been officially acknowledged as bankrupt;

c) damage caused to a person by using the patented object is not the result of improper (or incorrect) use of the patented object by such person;

d) the patented object is authentic and officially sold to the consumer or the contractor by the proper rightholder;

e) damage caused to a person by the patented object is not the result of an incident or wrongful behavior of the third parties, it was actually inevitable taking the real qualitative condition of the object of patenting into account;

f) damage caused to the person by the use of the object of patenting is not the result of the extraordinary (rare) concourse of circumstances, not verified by the general statistics of mass use of various samples of the patenting object;

g) damage caused to a person by the use of the patenting object could be avoided if such person or the holder of rights for the patented object were properly attentive, disciplined and law-abiding during the process of selling of such an object within the commercial transaction or a retail deal. Within the official guarantee subsidiary liability of the IUCI has the following limits:

1) concerning objects patented under categories 1-3 - 50% of the cost of such expertise;

2) concerning objects patented under categories 4-5 - 60% of the cost of such expertise;

3) concerning objects patented under categories 6-7 - 70% of the cost of such expertise.

 

Liability guarantee of the IUCI is a collateral of the IUCI towards the third parties concerning the correspondence of the patented object to the official results of the patenting expertise (determination of criteria of patentability and the author’s priority) and the obligation of the IUCI to compensate (in the order of solidary liability) part of the real and actual material damage, caused to the person by the factual discrepancy between such product of creative activity and the criteria of patentability on the IOSCEAAD-775 standard.

 

Within the liability guarantee solidary liability of the IUCI is the obligation of the IUCI to compensate part of the actual (real) damage, not compensated to the victim by the holder of rights for the patented object (product of creative activity) responsible for the damage.

 

Within the liability guarantee solidary liability of the IUCI is limited to 75% of cost of the patenting expertise related to the object, covered by the liability guarantee of the IUCI. The IUCI liability guarantee (as the solidary liability) is implemented on condition of presence of the following legal and actual criteria (conditions):

a) there are no reasons to cancel the patenting results and the IUCI guarantee;

b) the holder of rights for the patented object has officially declared the involvement of the IUCI as the solidary debtor in compensation of the material damage caused to the victim by the relevant object of patenting; c) damage caused to a person by using the patented object is not the result of improper (or incorrect) use of the patented object by such person; 

d) the patented object is authentic and officially sold to the consumer or the contractor by the proper rightholder;

e) damage caused to a person by the patented object is not the result of an incident or wrongful behavior of the third parties, it was actually inevitable taking the real qualitative condition of the object of patenting into account;

f) damage caused to the person by the use of the object of patenting is not the result of the extraordinary (rare) concourse of circumstances, not verified by the general statistics of mass use of various samples of the patenting object;

g) damage caused to a person by the use of the patenting object could be avoided if such a person or the holder of rights for the patented object were properly attentive, disciplined and law-abiding during the process of selling of such an object within the commercial transaction or a civil deal.

 

The official and liability guarantees of the IUCI presuppose the relevant limited material responsibility of the IUCI. The limited amounts of the material liability of the IUCI in official (50-70% of the patenting expertise cost) and the liability (75% of the patenting expertise cost) guarantees are the maximum possible material liability amounts on every guarantee of the IUCI of the certain type. Such amounts may be paid by the IUCI to the victim once and in full or in several parts in favor of various persons (indemnity payments) in case of emergence of several guarantee cases under one IUCI guarantee. If the limited total volume of the IUCI material liability (based on the relevant guarantee) is depleted, the next guarantee cases emerging from such guarantees will not be covered by the subsidiary or solidary liability of the IUCI.

 

The IUCI and the interested holder of rights for the patented object can conclude an agreement concerning the changing of standard terms of validity of the IUCI guarantees.

Guarantees of the IUCI act as additional options of the basic patenting procedure. The cost of their preparation is not included into the patenting cost during the calculation of the material liability of the IUCI concerning the guarantees provided. During the calculation of the IUCI material liability concerning the guarantees provided, discounts and other privileges provided to the relevant holder of rights regarding the patenting procedures are excluded from the cost of patenting.

 

In case if the holder of rights for the patenting object illegally uses the IUCI guarantee or claims for the indemnity payments with no reasons for that, the IUCI will cancel the validity of such a guarantee.

 

If the IUCI makes payments not based on the guarantee as a result of the illegal use of the IUCI guarantee by the holder of rights for the patenting object or unreasonable claiming of the indemnity payments from the IUCI, such rightholder will have to return the excessively paid amounts and remunerate one-time penalty - 100% of such amounts.

 

The absolute IUCI guarantee of any kind is a relevant collateral of the IUCI towards the third parties, authors of the patented object directly and other possessors of rights regarding the correspondence of the patenting object to the official results of patenting expertise (determination of criteria of patentability and the author’s priority). The absolute IUCI guarantee is provided to authors and other official rightholders in the following guarantee cases: 1) factor of absence of the patented object’s patentability criteria emerges on the basis of consequences that have appeared before the determination of the author’s priority; 2) another person has the verified author’s priority for the equal or fundamentally similar object (product of creative activity), assigned before the verification of the author’s priority for the patented object by the IUCI.

 

The official and the liability guarantees of the IUCI as well as guarantees granted for separate regime periods involve the relevant material liability of the IUCI limited in the following way:

  • official absolute guarantee: 50-70% of the patenting expertise cost
  • absolute liability guarantee: up to 75% of the patenting expertise cost.

The absolute IUCI guarantee of any kind may be provided during the Legitimate and Exceptional regime periods. It is unlimited in time but guarantee bases of patenting must be prolonged for every following year.

 

Special feature of the legal regime of patenting is the corporatization of relations, connected with the preparation of official patenting results. Legal nature of results of patenting is a kind of an open collective contract of adhesion with the participation of the IUCI, the author or another possessor of rights for the patented object, the initiator of patenting and potentially unlimited number of third persons – buyers of the patented object or authors of similar innovations - opponents, concerning the following: acknowledgement of patenting results; legally significant actions, based on such results; determination of possible misbalance between characteristics of patentability of copyright objects and the results of patenting; implementation of legal consequences of determination of possible misbalance between characteristics of patentability of copyright objects and the results of patenting.

 

Besides, the corporate nature of acknowledgment of patenting results may also lie in the reconsideration of them on the initiative of the IUCI on the basis of multiple claims of representatives of the expert community and persons concerned - only if such messages are objective and unprejudiced and the information in them is relatively widespread.

 

Within the legal regime of patenting the author of the patented object, the person who bought the copyright (or part of it), official consumer or buyer of rights for the legal use of the patented object, possessors of the neighbouring rights (rights fir the specific objects of copyright, created with the use of other objects of copyright) can act as rightholders for it. All the above-mentioned persons can act as initiators of patenting. At the same time in every particular case various persons can act as possessors of rights for the patented object. For example: the author is the rightholder for a term of validity of the copyright; heirs of the author can independently use the object of copyright; buyer of the copyright can use his authorities in relation to the object of the copyright on terms and conditions of the relevant agreement; buyer of rights for the object of copyright has contractual authorities for getting certain benefits from such object; author of the neighbouring rights gets the right to create new products of creative activity on the basis of (using) other objects of copyright.

 

Every above-mentioned possessor of rights has the independent right to carry out patenting of the relevant product with consent of the author or another authorized rightholder because the expediency, legal specificity or efficiency of use of the creative activity product greatly depend on its author’s status. The IUCI defines the principle of the "subjectival mobility" of patenting. It allows every next possessor of rights in the chain of the sequential transferring (alienation or temporal transferring) of rights for the patented object to accept official results of patenting as the assignee and the official user of the patenting status for the term of their legal validity. In this regard every next possessor of rights can address the IUCI to receive his own nominal patenting certificate for the patented object (as well as other image patenting attributes, related to such object), applicable to all official operations with the patented object carried out with participation of such rightholders. Without such a document every next possessor of rights will only have the right to refer to the patenting results applicable to the format of the author’s and the neighbouring rights, actually stated by the patenting procedure held.

 

Legal regime of the arbitration support of patenting is implemented by the IUCI together with the American International Commercial Arbitration Court (AICAC, Wilmington, USA).

 

Arbitration support of patenting is possible during the Official, Legitimate and Exceptional regime periods of patenting. Arbitration support is provided for the relevant regime period. It presupposes the verification and formalization of results of patenting expertise objectively determined during such period by means of the international arbitration. The Exceptional regime period is not limited in time. This means that the arbitration support within this period is also not limited in time.

 

Legal regime of the arbitration support of patenting is divided into two spheres:

1) arbitration verification of patenting (patentability and the author’s priority);

2) arbitration support of patenting (patentability and the author’s priority).

 

Arbitration verification of patenting is the mechanism of consideration of correspondence of the patenting results to real condition of patentability of the object and the legitimacy of the author’s priority, determination of necessary consequences and their legal fixation by the decision of the international commercial arbitration court. Arbitration verification of patenting significantly strengthens the legal patenting platform, fixes technical, fact-based and legal signs of patentability of the object, formalizes them by the legal arbitration decision and creates the relevant jurisdiction precedent concerning the determination of patentability and the author’s priority for the particular product.

 

Arbitration support of patenting is a special regime when the process of realization of the copyright and the neighbouring rights (based on patenting results) by the interested persons is under the documentary-juridical control of the AICAC. This mechanism allows the official formalizing of corporatization of the patenting results and obliges all the interested parties to address the AICAC on all legal matters, related to the patentability of the object and the author’s priority for it, as well as concerning disputes based on these matters.

 

Legal regime of the patenting arbitration support is formalized by special agreements of the IUCI, AICAC and persons concerned. It is supported by special certificates, informative signs and additional attributes.