Expertise/Intellectual Property

Service

Patenting Utility Models

The construction of a device is filed with Rospatent as a utility model, with the involvement of patent attorneys, so that others cannot manufacture, offer or import a product of that construction without the company's consent.

We are most often instructed by:

  • Manufacturers of products, equipment and tooling
  • Companies whose devices were designed by employees or contractors
  • Applicants whose application has already been filed, including by another representative
  • Patent holders who need to maintain or restore a patent

The information on this website is provided for information purposes only and does not constitute a public offer.

What the Service Includes

Timing and Fees
–timing on request
from ₽fee on request

Timing and fees are indicative and are confirmed when the engagement is agreed.

01 / Overview
What a utility model provides

A utility model patent secures the exclusive right to a technical solution relating to a device. Another manufacturer's product falls within the scope of protection if it has every feature of an independent claim. Replacing a single feature may take the product outside the claims: the claims are worked out together with the applicant so that the independent claim contains only the features without which the construction does not achieve its result.

A utility model is chosen when a construction needs to be protected quickly: mass-produced products, mechanisms, tooling, accessories. A utility model differs from an invention in that only a device is protected and inventive step is not examined on grant. Substantive examination of the application begins without a separate request, and the procedure usually takes less time; protection lasts for a shorter period and cannot be extended. The appearance of a product is protected by an industrial design patent.

Where the value of a product lies not only in its construction but also in the way it is used, separate applications are filed for the construction and for the method of its use. A utility model application can be converted into an application for another type of patent while retaining the priority date: the form of protection is changed if it becomes clear during examination that the solution needs broader protection.

The patent is used against copying of the construction: it is relied on in a letter of claim to the manufacturer of the copy and in a request to a platform.

If the device was created by a contractor and the contract did not expressly provide for its creation, the right to obtain a patent may remain with the contractor: documents on the applicant's rights are gathered before filing.

When an investor is brought in or the business changes hands, it is checked who owns the right to the utility model, what the claims cover, whether the patent is maintained in force and whether the rights of the inventors and contractors have passed to the company.

02 / Outcome
Service Outcome
  • Patentability opinionA conclusion, before the application is filed, on the likelihood of a patent being granted and the scope in which the construction can be claimed.
  • Utility model applicationClaims, description, drawings and abstract, in the scope agreed with the applicant, filed with Rospatent.
  • Documents on the applicant's rightsDocuments under which the company, rather than the inventor or contractor, is named as the rights holder.
  • Responses and objectionsResponses to examiners' queries, amended claims and an objection to a refusal to grant a patent.
  • Patent maintenanceMonitoring of the deadlines for paying official fees, and documents for restoring the patent and changing its details.

The outcome of the service is the work performed within the scope agreed with the client.

03 / Preparation
What the application is built on

  1. Materials

    The application is built on information about the subject matter and the applicant; the following points are relevant.

    • DeviceWhat the construction consists of, how it works and how it differs from products already known on the market.
    • DisclosureWhether the device was shown before filing: exhibitions, catalogues, publications, deliveries.
    • Inventors and contractsWho created the construction, employment contracts, contracts with contractors.
    • Production plansWhen the product is coming to market and what changes to the construction are expected.

  2. Assessment

    On the basis of the materials, the prospects of the examination, possible obstacles and ways of overcoming them are assessed.

  3. Plan

    For the chosen option, a plan is drawn up: the documents required, the sequence of steps and the timing.

04 / Projects
Selected Projects
01 / 04

Acting for the buyer

Intellectual property rights in the acquisition of an equipment and digital solutions manufacturer

Challenge

The buyer was acquiring shares in a foreign company that owned a Russian manufacturer of industrial equipment and digital solutions for equipment management and monitoring, as well as shares in a Russian legal entity. The acquisition of the foreign company was governed by English law.

What was done

The comprehensive legal due diligence of the Russian business covered intellectual property rights, as well as the corporate history, business operations, contractual relationships and other matters material to the transaction. The foreign ownership structure, title to the shares being acquired and the legal aspects of the buyer's entry into the existing corporate structure were analysed separately.

The structure and documents of the transaction were agreed. The findings on the Russian and foreign parts of the structure were reflected in the terms of the transaction and the arrangements for its closing.

Preparing for franchising

Consolidation of rights to a group's accounts, websites and materials before franchising

Challenge

A group of companies was engaged in extensive marketing, but its accounts, websites and rights to the materials created were registered in the names of different entities within the group. To set up franchises later, the rights had to be brought together in the group's management company.

What was done

It was established which group entity held each asset, and the transfer of rights to the management company was documented. The rights to the group's marketing assets were put in order and consolidated in the hands of a single entity.

Trademark dispute

Non-use dispute over a trademark that blocked registration of the client's mark

Challenge

The client needed to register a trademark to brand the services of a travel agency. Registration was blocked by another company's mark: that company used it for a cosmetics brand, but the protection of the mark also extended to a number of Nice classes the client needed.

What was done

Claims for early termination of the legal protection of the mark for non-use were prepared in respect of those classes. The claims were put to the rights holder at the pre-trial stage, and the dispute was settled without going to court.

Purchase of an interest

Review of an app developer's intellectual property rights

Challenge

The buyer was acquiring an interest in a company developing a healthy lifestyle app with a weekly audience of more than 1.5 million users worldwide. Comprehensive legal due diligence of the business being acquired was a key part of the engagement.

What was done

The company's intellectual property rights were analysed, as well as its corporate history, business operations and employment relationships. The due diligence findings were taken into account in structuring the transaction and preparing the contractual documentation.

05 / Questions
Frequently Asked Questions

The examination assesses the novelty of a utility model on the basis of an information search. If the cited reference does not contain all the features of the claims, arguments on the differences are prepared; if it contains all of them, the claims are amended by adding features from the description that are absent from the reference.

An application can be taken over at any stage: the materials filed and the correspondence with Rospatent are reviewed, the response deadlines are checked and a power of attorney is issued to the new representative. The application is then prosecuted until Rospatent's decision or, if it is refused, until the objection has been considered.

An hourly rate, a fixed fee or a combined model is used; in some cases part of the fee depends on the outcome achieved. The fee is determined by the time actually spent, the complexity of the matter and the overall timeframe of the project, and is agreed before work begins.

Key Contacts
Deni Murdalov Deni Murdalov Partner, PhD (Law), LL.M. Ilya Smirnov Ilya Smirnov Partner

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Other Services in This Practice
Trademarks Protection and Disputes Brand Transactions Licence Agreements Franchising Assignment of Exclusive Rights Computer Programs and Databases Account Disputes Domain Name Disputes Madrid System Trade Secrets and Know-How Inventions Industrial Designs Documents and Consultations

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