Licensing and Intellectual Property Department: regulations, procedures, standards
News, 28 September 2020
Not all the JINR employees use the services provided by the Licensing and Intellectual Property Department (LIPD), so its functions and work results are not widely known compared to the construction or international activities. Admittedly, the Newspaper does not often ask for comments either. Meanwhile, this department protects the most important thing of the Institute’s operation, i.e. the acquired knowledge in the form of intellectual property. Now, Head of the Department Candidate of Physics and Mathematics Nikolay Alexandrovich GOLOVKOV will answer the questions of the editorial board. The reader will learn from the interview how complex and multi-faceted is the world behind the abbreviation LIPD.
Nikolay Alexandrovich, several years ago (No. 27, 2011) you spoke in detail about the activities of your department in our Newspaper. At that time, changes in the legislative and regulatory framework were just beginning to take effect. How have they influenced the operation of the patent service office?
In our previous conversation, I was speaking about changes relating to the patent issues. It was the time when the 4th part of the Civil code of the Russian Federation began to operate that cancelled about a dozen of previously adopted laws in the fields of intellectual property. So, it affected regulations determining the activities aimed to protect industrial intellectual property, and our patent group is in charge of it. By the way, your activities were affected by the adoption and introduction of the 4th part of the Civil Code as well. For example, the abolition of the “Law on copyright and related rights” and the introduction of a special section on copyright in the Civil Code have increased the validity of exclusive rights of authors, including the authors of the JINR Weekly Newspaper “Dubna: Science, Community, Progress”. Russian legislation has become clearer for the last ten years. Some terms and concepts have become more defined, and the experience of specialists working in the patent field has enhanced in accordance with new requirements.
Has this simplified the process of patent registration in our country?
As for the procedures of obtaining patents for inventions, I would not say about any considerable changes in our or any other country. However, a lot of new things happened in the preparatory work. Firstly, the digitalization of patent data has led, on the one hand, to the availability of databases of almost all the patent offices of the world. On the other hand, it has made access more difficult and expensive. Moreover, the Internet allows carrying out a necessary patent search for free but it has become a source of gross errors in recent years. The abundance of commercial proposals and advertising hinders the evaluation and selection of documents and materials necessary for patent activities, and this made communication with authors-inventors more difficult to a certain extent. That is why there is no way we can talk about a simplified patent registration for the result of intellectual activities. It requires way more efforts and patience than the preparation of a scientific publication, for example. Even an application for an invention or a useful model requires compliance with certain formal rules, and this is a strong irritant for inexperienced applicants.
Has a number of inventions and people wishing to register them changed recently?
In the scientific community, there have become more employees who have understood that their results should be sometimes protected legally. At the end of the XX century, CERN former Director General Ch. Llewellyn Smith wrote: “Given that basic scientists are motivated by the desire to gain priority, and generally to publish and publicise their work, whereas applied scientists working in industry are motivated by the desire to protect, hide and patent.” But the globalization led to the understanding that some results of fundamental studies should be protected, i.e. patented. The patent strictly protects the priority of authors on the result of their activities. The patent contains a very detailed and exhaustive description of the invention, which is even more precise than that in a scientific paper. This allows clearly resolving the issue of authorship of a method or a device and subsequently of exclusive rights on it in legal arguments. In particular, some plagiarism scandals exaggerated with pleasure by mass media would have been nipped in the bud if the results had had a patent priority. Moreover, information about a patent is spread by patent offices of more than 150 countries, and this is way much more than a paper can reach being published in the most prestigious scientific journal. It should be noted that the number of applications for inventions submitted by the Institute’s employees has increased in recent years. More than 70 applications were submitted, 66 patents were obtained. 6 applications for software for electronic computing machines obtained state registration of the Russian Federation. Most importantly, the average age of authors has decreased. It is especially pleasing that veteran inventors engage the youth in creative activities. The youngest co-author of inventions by veterans I. A. Golutvin and E. P. Shabalin is younger than 25, so the relay race of creativity has not been interrupted and acquires new fresh strengths. These are not the only examples of cooperation between generations in the field of inventions.
What is the number of patents that JINR currently has? Is it possible to divide them thematically? Are any of them exceptional or unusual?
In total, more than 130 patents have been received during the years of functioning of the Russian Patent Law. More than 50 of them were terminated after a 20-year period or suspended due to the decision of laboratories in order to reduce the costs for their support (it is mostly about patents older than 15 years). Nowadays, the Institute posses 72 active patents.
All the JINR patents thematically correspond to major activities of the Institute and are official. Any of them may be called exclusive and unusual. Otherwise, they would not be inventions. As for outstanding ones, I would enumerate those that just like the crystal embryos can then grow and turn into new large ones. For example, “Method for changing reactivity in pulsed nuclear power plants of periodic action on fast neutrons with threshold-fissionable isotopes” by Shabalin Evgeny Pavlovich and Komyshev Gleb Germanovich. Fours years ago, it was submitted as an application. In 2018, it was acknowledged as an invention (patent received), and today, it is the basis for a project of a brand-new pulsed research fast reactor at threshold isotopes being already considered as a real project. The patent by Julian Aramovich Budagov and Mikhail Vasilievich Lyablin “Device for measuring the inclination angle” with a priority of 2012 now allows creating a new type of devices of the type “Inclinometer” used in seismology. Previously unusual to JINR patents on radiobiology and genetics are now permanent in the register of patents obtained by the Institute.
I have heard that JINR employees possessing patents are offered to pay for them by themselves. What is this fee? Why there have not been such questions before?
The authors from JINR divisions are not patent holders. The copyright holder of these patents is the Institute. It was JINR that paid costs of registration of these patents, including LIPD work (consultations, patent search, registration, examination, correspondence, etc.), and as a copyright holder, JINR annually pays corresponding fees to Rospatent. The amount of these fees increases with the age of the patent, and at a certain point, it becomes an additional burden on the budget. At the same time, a part of the patents have already played a protective role, and it is not practical for the Institute to support them. Patents are sometimes acquired by or transferred to commercial organizations to use them as a statutory contribution. These cases are mostly exceptions rather than a rule. At the same time, according to the Regulation adopted at JINR, in case of the termination of the Institute’s copyright, JINR may offer this copyright to the authors of the patent for free. In this case, the authors become full copyright holders, can carry out all transactions (including selling, transfer, donation, license) independently. Of course, their first duty is the payment of fees for possession of a patent. But I cannot recall any cases when the authors claimed to transfer exclusive rights for a patent to them. It makes almost no sense. The patent market (especially in Russia) is a very specific thing. A manufacturer will buy a patent from you only if it sees a competitor able to introduce your patent into the production and thus to create a competition. In addition, it would be a mistake to think that a buyer-manufacturer will immediately introduce your invention. On the contrary. His aim is not to allow a rival to produce more and cheaper products. And you know, it is not often necessary to buy your patent. There are other ways to get around it.
What problems do you face most often when registering patents?
The main problem is to convince the author that the patent expert sending his comments to his invention is not “a completely ignorant person, knowing and understanding nothing about science and technology.” However, experienced inventors do not need to be strongly convinced of it. But seriously, inventors are creative people with high self-esteem, but they are not always patient. This is the difficulty in work of patent office employees. They should not only be good specialists but also good psychologists. The aim of the patent office is to convince an inventor not to give up on a patent half-way, to suggest correct wording for the response to comments of the patent examination and to bring this work to patent registration. Sometimes all the stages, from filing an application to registration of a patent, take several years. But all the more valuable is the joy of a positive decision on each application. It should be noted that declined and incomplete applications are rare. And this shows a high professional level of employees of our patent group. I should say that all of them have two diplomas, in the fields of technology and patent science. All of them have certificates confirming successful completion of the course at the WIPO Academy (World Intellectual Property Organization). Deputy Head of the Department V. F. Chepurnov is the only patent attorney of the Russian Federation in the territory of the Moscow region to the North of Khimki. A disappointing thing is our age. It is a problem common in Russia so far. It seems that there are no technical universities training patent specialists in our country. This specialization is classified as legal. In fact, that means that the level of such patent specialists for our office is very low. The salary of an engineer in our Department has been smaller than that average at the Institute for many years. And I’ve mentioned before that an employee of a patent office should understand the author of the application and the essence of the invention but not to say what font to choose for printing the text or the size of fields, by which, in fact, employees of numerous patent organizations are limited asking for great fees. Authors can puzzle this out by themselves. While making a correct formula of the invention, not to overload it with anything and not to miss any substantial information – this is the help provided by a patent specialist. Of course, it is necessary to be a tech-savvy person to do it.
The name of your Department includes the word “licence”. Do you issue such documents?
It is a sore issue for me. The name of the Department formed in the 1990-2000s when everything was changing in the country. Research and support department at research institutes were either reduced or eliminated. We have undergone the same: at first, the Patent Department was renamed, and the words “rationalization and inventions” were replaced with “intellectual property” (although the term was new at that time). It was decided to maintain the Department with the name “Department of intellectual property defence”. But it was not taken into account that the bulk of intellectual property of JINR includes copyright in scientific articles, dissertations, photo and video documents, monuments and plaques to scientists, and also some architectural structures. While the Department was responsible for an important but not the largest part of intellectual property – “industrial intellectual property”, namely the objects of patent law.
Then there was a period of “technical regulation” and joining the former Department of standards with a certain reduction of its functions and considerable staff reduction. Then, the Department was assigned to keep track of acquired and prolonged countless business permits-licences. Fortunately, only until 2005. The Government of Russia has sharply reduced the number of licensed business activities, and the bulk of business licences left were transferred to indefinite ones.
However, the word “licences” has emerged once again in the name of the Department but in a different capacity. It was supposed that the change in the patent legislation would lead to a so-called “free market” of patents: Russia was finally admitted to the WTO, the innovation activities would flourish, and patents for inventions, useful models would be sold, bought, and the industry would purchase licences for them. However, as it often happens, we wanted it but it did not work out. There is no invention market or even useful models. As life has shown us, there won’t be any: in some cases, it is easier to find a workaround than to buy a patent or a licence for it. So, licences are used only by the customer and the contractor of contract work. And they are free.
And what name of the Department would be correct in your opinion?
I have proposed several times to change the name of the Department with one more appropriate to its actual activities. However, it is wiser to wait for a more appropriate moment with current bureaucratic requirements for staff issues.
The real activities of the Department, in addition to patent activities, are directly connected with the use of regulatory requirements stipulated by the Law on technical regulation adopted in 2002. This law aimed to arrange regulations and documents that proliferated in the 1990s, which restrained and often stopped any activity. In particular, this law introduced the concept of technical regulations (mandatory to execute) and standards (voluntarily applied to execution). The LIPD standard group was assigned to provide methodological assistance to divisions and to carry out independent standardization at JINR.
Fortunately, many of the problems of standardization in Russia that had arisen after the adoption of the law did not affect the Institute. The fact is that technical regulations, national standards and other regulatory documents that were changing several times a year rarely affected the major activities of the laboratories. And after the newsletter of our information about yet another change in the technical regulation, a code of rules, GOST or the list of the supervisory authorities, it was enough to make changes, add a corresponding instruction, safety rules, Regulations.
At the same time, the Department was engaged in necessary activities of some services aimed to update regulatory and technical documentation. It should be noted that these activities are quite time-consuming. Our library of JINR regulatory and technical documents includes about 10,000 official copies of standards and regulatory documents as of December 2019. About 200 changes and additions are annually made to these documents, all of them being adopted by relevant executive authorities. Official updated copies are a necessary prerequisite for activities of services, such as the Promsanlaboratoria, a meteorology and RSD individual control group and others with certificates for verification, testing and control.
It is obvious that you have no time left to be bored; changes in the Department operation take place almost continuously. Is anything new planned in the near future?
Just like last time, you are interviewing me before significant changes in the Department will happen. However, this time they will affect the regulatory documentation. In 2019, the previous Government of the Russian Federation announced the “regulatory guillotine”. In the frames of the “regulatory guillotine”, Rostechnadzor, for example, is planning to reconsider all current laws and regulations in the fields of Rostechnadzor’s activities and update these documents. All this work was supposed to be carried out until 1 January 2021. But the coronavirus has delayed everything, and this activity has slowed down so far but has not stopped. Even experienced experts have various views on how this will influence the application of standards in our lives. By the way, I should reassure active Internet users who are convinced that compliance with standards is voluntary. This is not true at all. Something is voluntary, but in some cases deviation from the standard is punishable. You can make tea as you like but I do not advise you to use, for example, car plates that are not made according to the state standard (GOST). There are also more serious punishments for violations of some standards than the deprivation of a driving license.
Nikolay Alexandrovich, thank you for the interview! It turned out to be extensive and very informative. However, it is obvious that some topics should be discussed in greater detail. For example, how all this correlates with the international status of the Institute. Or copyrights for articles: when they expire, become public domain; the right for the author’s name, plagiarism, and citation once again. Let’s promise our readers to meet more often and answer the questions of not only a journalist but also of interested readers.
Of course, the staff of our Department is always ready to give advice, help solve problems, prepare documents necessary to ensure the main activities of the Institute’s employees. We will not refuse to aid in solving the issues or providing consultations on related topics.
Material prepared by Galina Myalkovskaya, JINR Weekly Newspaper