Key Takeaways
- Rospatent lawfully refused to grant protection to the industrial design entitled “Part of a Mop” in its original version, as the claimed solution did not meet the statutory definition of an “article” under paragraph 1 of Article 1352 of the Civil Code of the Russian Federation (CC RF): a fragment comprising a working element and a portion of the handle does not constitute either an independent article or a separable part visible during normal use.
- The Appeals Board held that amending the denomination to “Mop Attachment” and excluding the explanatory images (1.1, 1.7) from the scope of claims eliminated the grounds for refusal, as the refined object fell within the concept of a “separable part of an article” within the meaning of subparagraph 1(c) of paragraph 32 of the Requirements for Application Documents.
- In assessing the patentability of an industrial design filed through the international registration procedure under the Hague Agreement (Geneva Act of 1999), both the provisions of Part Four of the CC RF and the provisions of the international treaty apply, necessitating compliance with a two-tier legal framework when administratively challenging Rospatent decisions.
- The search report prepared during the examination retained its legal force after the scope of claims was amended, allowing the Board to conclude that the claimed solution met the criteria of novelty and originality without conducting a renewed search.
Legal Analysis
Within the administrative procedure governed by paragraph 3 of Article 1248 of the CC RF and the Patent Dispute Chamber Rules, the Rospatent Appeals Board considered an opposition filed by a foreign applicant against the decision to refuse legal protection to an industrial design under international registration No. DM/245399. The dispute arose regarding the qualification of the claimed subject matter: the original denomination “Part of a Mop” and the set of images depicting a working element and a fragment of the handle were found not to satisfy the concept of an “industrial design” within the meaning of paragraph 1 of Article 1352 of the CC RF, as they did not disclose the external appearance of an article of industrial or handicraft production, or of a separable part thereof.
“Separable part” and the original scope of claims
Under subparagraph 1(c) of paragraph 32 of the Requirements for Application Documents for the Grant of a Patent for an Industrial Design, a “separable part of an article” means a detachable part thereof that is visible during normal use. Analyzing the applicant’s arguments, the Board indicated that the original wording of the scope of claims did not allow the claimed solution to be identified as such: the combination of functionally heterogeneous elements (the working surface and a portion of the handle) did not constitute a unified visual image subject to protection under the industrial design regime.
Amendments in opposition and compliance with Article 1352
A key procedural aspect was the applicant’s ability to amend the scope of claims during the opposition proceedings: changing the denomination to “Mop Attachment” and reclassifying images 1.1 and 1.7 as explanatory images limited the object of protection to a visually separable, functionally complete element visible during intended use. In the Board’s view, this amendment eliminated the conflict with the mandatory requirements of Article 1352 of the CC RF, because an “attachment” as such may be considered a separable part of an article subject to independent legal protection.
Hague Geneva Act, examination, and patentability
In so doing, the Board applied a comprehensive legal framework: under Article 12(1)–(2) of the Geneva Act of the Hague Agreement of 1999, a national office is entitled to refuse the effect of an international registration if the conditions for protection under domestic law are not met, provided that such refusal is reasoned and may be reviewed upon correction of the identified defects. Given the international filing date (December 19, 2024), the patentability assessment was carried out applying the version of the CC RF, Rules No. 695, and the Common Regulations under the Hague Agreement in force at that time.
It is important to note that after the scope of claims was amended, the Board did not find it necessary to conduct a renewed search of information sources: the search report prepared during the formal examination stage was deemed relevant to the amended set of images as well. Based on an analysis of those sources and the application materials, the Board found that the claimed industrial design complied with the requirements of paragraphs 1–3 and 5 of Article 1352 of the CC RF (novelty, originality, industrial applicability, and absence of conflict with public interests).
Thus, the Board’s decision reflects the doctrinal position that amending the scope of claims in an industrial design application during the administrative stage of appealing a refusal is permissible, provided that such amendments do not extend the subject matter as originally filed and are aimed at bringing the wording into compliance with the mandatory requirements of intellectual property legislation.
Commentary by A.V. Leonov, Patent Attorney
In practice, the case at hand illustrates a typical conflict arising in international registration of industrial designs: a discrepancy between wording permissible under the WIPO system and the mandatory requirements of Russian national legislation. For right holders and their representatives, the key takeaway is the need to adapt in advance the denomination and scope of claims to the definitions of Article 1352 of the CC RF at the stage of filing an international application designating Russia.
Recommendations for risk mitigation
- When formulating the denomination of an industrial design, avoid descriptive constructs such as “part of an article,” “fragment,” or “element,” unless such a part is functionally and visually separable within the meaning of subparagraph 1(c) of paragraph 32 of the Requirements. Preferred terms are those established in the relevant industry and reflecting the independence of the object (for example, “attachment,” “replaceable module,” or “decorative panel”).
- Include in the set of images only those views that characterize the claimed object as a unified whole; auxiliary images showing the object as part of a more complex article should be labeled as explanatory from the outset to avoid risks of their being taken into account when determining the scope of legal protection.
- Upon receipt of a reasoned Rospatent refusal based on non-compliance with the concept of an “article,” we recommend promptly preparing an opposition with an amendment to the denomination and/or scope of claims, since, as Board practice shows, such amendments, provided they are limiting in nature, are accepted as eliminating the grounds for refusal.
Prospects for disputes
Cases in this category are generally resolved in favor of the applicant, provided that the scope of claims is amended in good faith and with technical justification. However, it should be borne in mind that a substantial change to the visual image (for example, the elimination of key features) may cause Rospatent to treat the amendment as an impermissible extension or alteration of the subject matter, resulting in a new refusal. Therefore, any changes must be strictly argued from the standpoint of preserving the identity of the visual design.
Related Materials
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