New Approach to Prosecution of the Computer-implemented Inventions and Utility models introduced into RU PTO Rules provides long-expected Clarity for the IT Market

New amendments into Russian legislation in relation to prosecution of computer-implemented inventions provide clarity for applicants and hopes for the IT market in obtaining patent protection for their digital technologies, also using AI.

As it was recently mentioned during the report of the Director General on the Sixty-Fifth Series of Meetings of the Assemblies of the WIPO Member States “almost a third of all patents filed today relates to digital technologies”[1] and it confirms that an adequate system of protection of computer-implemented inventions and utility models is required worldwide.

The Russian Federation previously had a very complicated approach to prosecution of computer-implemented inventions and utility models[2] and obtaining a computer-implemented patent was always unpredictable for the applicant. According to point 5 of Art. 1350 (to which the corresponding Article in relation to utility models refers to, namely, point 5 of Art. 1351) of the Civil Code of the Russian Federation mathematical methods; rules and methods of games, intellectual or economic activity; computer software; decisions, related to provision of information are excluded from patent protection with an exception that application filed relates to said objects as such. At the same time, there was no regulation on the exact features, technical result, etc. to be indicated for computer-implemented inventions to have a patent granted. Absence of the exact regulation in the legislation produced office actions and refusals from the RUPTO, wherein the examiner referred to the impossibility of granting a patent based on the Articles cited above.

Since May 25, 2024, new amendments into the Order “On Registration of the inventions”[3] and separate Rules on prosecution of utility model applications[4] have entered into force, determined to improve and to clarify the mechanism for protecting technical solutions in the field of information technology.

Utility Model and an Invention in the Field of Information Technology

Special attention should be paid to the introduction of such notions to the legislation as a utility model in the field of information technology, an invention in the field of information technology and inclusion of relevant sections clarifying the features that are considered technical for utility models/inventions in the field of information technology, including separately for technical solutions based on the use of artificial intelligence. Based on this, changes have been made to the relevant regulations regarding the procedure for conducting a prior art search for inventions and utility models.

In accordance with the amendments, a utility model in the field of information technology is “a technical solution related to a device that contains a programmable (customizable) multifunctional tool or is a programmable (customizable) multifunctional tool, at least one of the features of which is implemented using software”, and an invention in the field of information technology is “a technical solution related to products or methods that are characterized by the use of programmable (customizable) multifunctional means, in particular, computer devices, information and telecommunication networks, at least one of the features of which is carried out using software, as well as technical solutions related to machine-readable storage media containing a program for an electronic computer and (or) data, the form or content of which is intended for the operation of programmable (customizable) multifunctional tools”.

Technical Results for Inventions and Utility Models in the Field of Information Technology

Separate sections, clarifying the notions “technical result” and “technical feature” specifically for solutions in the field of information technology and separate requirements for the sufficiency of disclosure of objects related to said solutions are introduced into the Russian legislation.

As for the prosecution of the utility models, the results considered non-technical are now clearly stipulated by the Rules on prosecution of the utility model applications, referring to the exact objects of point 5 of Art.1351 of the Civil Code of the Russian Federation, providing the possibility to determine achievement of other results in relation to computer-implemented devices to be technical. As for inventions, technical are considered the results “that are determined with the use of a programmable (customizable) multifunctional tool to obtain data about the required physical, chemical or biological parameters, including probabilistic ones, of a material object, including an object of nature, or a process occurring with a material object, obtained by processing the initial data about the specified parameters of the material object or process, associated with the desired parameters by dependence, based on natural laws; information by semantic processing of text in natural language, wherein the parameters of the obtained information, for example, reliability, completeness, relevance, quality of ranking of search results, quality of machine translation, can be objectively assessed using an assessment technique known from the prior art before the priority date of the invention or disclosed in the application documents”.

Sufficiency of disclosure

Indication on what features and characteristics, methods, means are sufficient for computer-implemented technologies to be considered sufficiently disclosed in the application was finally introduced into the legislation in relation to utility models and inventions.

For the utility models, the division of features that characterise computer devices and programmable (customizable) multifunctional tools based on the use of artificial intelligence is made. In case the computer devices are characterised, the specification should contain the following features: “the presence of a programmable (customizable) multifunctional tool capable of performing multiple computational and logical operations based on a given program and information; availability of input, output, information storage devices, actuators; the presence of computational and logical operations performed on information by a programmable (customizable) multifunctional tool; the presence of a machine-readable storage medium containing software that ensures that a programmable (customizable) multifunctional tool performs certain computational and logical operations; the presence of a machine-readable storage medium containing data, the form of presentation of which (structure or format) or the content of which ensures control of the operation of a programmable (customizable) multifunctional tool that processes information.” As for programmable (customizable) multifunctional tools, based on the use of artificial intelligence, the following features should be disclosed: “the presence of a programmable (customizable) multifunctional tool; availability of input, output, information storage devices; the presence of a function of a programmable (customizable) multifunctional tool for performing computational and logical operations, characterized, in particular, by the features of the artificial intelligence algorithm, including the information processing method, parameters of the information processing method; the presence of a programmable (customizable) multifunctional tool for performing actions to train an artificial intelligence algorithm”.

Certain features are required in order to be sufficiently disclosed for characterizing the invention in the field of information technology, namely: methods in the field of information technology; methods in the field of information technology based on data processing using AI, programmable (customizable) multifunctional tool and a programmable (customizable) multifunctional tool embodying artificial intelligence systems. For example, to characterize methods in the field of information technology based on data processing using AI, the following features are used: “the presence of actions to perform computational and logical operations by a programmable (customizable) multifunctional tool, characterized, in particular, by the features of the AI algorithm, including the information processing method, parameters of the information processing method; the presence of actions to train the AI algorithm; availability of used tools (programmable (customizable) multifunctional tool, input, output, information storage devices, actuators, data lines); the presence of actions to collect and pre-process information for training the artificial intelligence algorithm and etc.”

Approach to assessment of the inventive level of an invention in the field of informational technology

When checking the inventive level of an invention in the field of information technology, the knowledge of the use of a computer device or an information and telecommunication network can be confirmed using the general knowledge of a specialist (examiner) in this field of technology. However, if the applicant provides (in the response to the OA) grounded arguments refuting the conclusions about the knowledge of the computer device or its parts, the examiner has to confirm said knowledge referring to sources of information during further prosecution of the application. It should be also noted that when defining a “specialist,” the concept of a hypothetical person is removed from the legislation and a specialist in a given field of technology is understood as a person who has access to the entire level of technology and has general knowledge in a given field of technology based on information contained in reference books, monographs and textbooks. The features, that refer to objects not considered inventions (stipulated in point 5 of Art.1350) are not checked during the inventive level evaluation until they affect the achievement of a technical result.

Conclusion

Introduced amendments to the Russian legislation provide greater clarity when patenting objects in the field of information technology for the IT market. This is a bold and long-awaited step by Rospatent towards applicants wishing to obtain a legal protection for rather difficult-to-describe technologies in the field of information technology, as well as in the field of artificial intelligence. Changes in legislation should also lead to the emergence of separate recommendations (or additions to existing recommendations) that will bring even greater understanding to the paperwork, possible office actions and refusals to issue patents in the field of computer-implemented technologies. Time, for sure, will show, how the new approach will actually work in practice but these amendments provide great hope for the elaboration of an adequate and up-to-date patent protection system in Russia for computer-implemented technologies, especially using AI.

[1] https://www.wipo.int/about-wipo/en/dg_tang/speeches/a-65-speech.html

[2] Two types of protection for the technical solutions are available in Russia: utility models – a device only (should be novel and industrially applicable) and inventions – products, methods, use, etc. (should be novel, should have inventive level and should be industrially applicable).

[3] Order of the Ministry of Economic Development of the Russian Federation dated February 21, 2023 N 107 “On state registration of inventions”.

[4] Order of the Ministry of Economic Development of the Russian Federation dated September 30, 2015 N 701 “On approval of the Rules for the preparation, submission and prosecution of documents that are the basis for performing legally significant actions for state registration of utility models, and their forms, Requirements for documents of an application for a utility model patent, Contents of information on the grant of a patent for a utility model, published in the official bulletin of the Federal Service for Intellectual Property, Contents of information indicated in the form of a patent for a utility model, form of a patent for a utility model”.