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Conducting research, development and other work for the creation of new technology, it is necessary to decide at what point to start the patenting of inventions. As it was already noted, preparation of patent applications for high-tech solutions that are created without or with budgetary financing, should begin immediately with the start of development, before the plan will be implemented. Otherwise, at the stage of creating final product, when project costs often reach many millions of rubles, it can turn out that the product is already patented by someone.
In the review of modern patent technologies [2], the section "Solution of inventive problems and patenting in the field of high technologies in the initial stages of research" was highlighted. It was noted that "under the terms of the funding of research it is necessary to submit applications for inventions in the beginning, when the final technical solution is not developed yet. In this case, it is advisable in general to formulate the inventive solution that covers subsequent specific designs". The possibility of patenting the maximum generalized technical solutions, allowing their development in the further process of the research, was also noted.
Let us consider some concrete examples of the approach to the patenting of technical solutions before their implementation in hardware or technology.
In the first example, under the terms of the contract it was necessary to submit application for "Multi-probe contour-type sensor for scanning probe microscope" before its fabrication and testing. This multi-probe sensor should to consist of mechanical parts – a circular base 1 (Fig.) with a diameter of a few millimeters, and a set of micromechanical parts 8. Each micromechanical part 8 is fixed in the area of generatrix 2 of round base 1 through the transition element 3 and is a flexible console 4 with probe 5 located in the peripheral area of the console 7. Sensor 5 regardless of the manufacturing technology ends with the edge 6. The dimensions of the micromechanical part 8 are calculated in microns. The installation module 9 is used for connection with external devices. The diagram shows four micromechanical parts 4 (flexible console), which may correspond to one of the embodiments of the multi-probe sensor. As a rule, the number of flexible consoles 4 can amount to several tens.
Under the terms of the contract it was necessary to apply for a patent of the Russian Federation at the moment when the multi-probe sensor has not been made yet. The formation of the micromechanical part 8 is a process that consists of many stages and is not always predictable. Accordingly, it was quite difficult to formulate the final inventive characteristics of this part and its technical results. It is easier with the mechanical part in this respect, because if necessary one part of characteristics can be tested on models, and other part can mentally simulated based on previous experience of development of similar mechanical devices. Therefore, micromechanical features in the formula of the invention (application No. 2013143064) was formed on the basis of known at the time solutions and their minor modifications. They concerned a coordinate binding of needles 6 to the round base 1, marking of probes 5, the implementation of flexible consoles 4 of different thicknesses and widths, a coating with various materials. These features were not contrary to the laws of physics, but could differ from future implementation. Mechanical features concerned implementation of the installation module 9 and the fixing conditions of a multi-probe sensor in the head (external) device, were formulated sufficiently close to the final solution. They included sets of protrusions and holes formed in the round base 1 required for manipulation and orientation of a multi-probe sensor. Experts have opposed the known solutions to a part of the features and they were excluded from the formula of the invention, however, the remaining features allowed to obtain primary patent RU2592048. At the same time, the remaining possibility of development this solution (primarily of micromechanical part 8) in the process of production of a multi-probe sensor allows to obtain another patent that includes the final version of the micromechanical part and have the patent RU2592048 as a prototype.
Thus, the initial patenting, in addition to the interim report for budgetary financing allowed in this case to use the results of the state patent examination to adjust the production technology of micromechanical parts 8. It should also be noted that the patent RU2592048 was preceded by RU2244256 patent of the same applicant with the same name, protected almost 10 years before him. At that time it was not planned to manufacture multi-probe sensors, as there was no objectives for their use and microelectronics technology then would hardly allow to manufacture such sensors. But based on the experience of the development and use of multi-probe sensors with a linear arrangement of probes (see, for example, patent RU2249263) it was succeeded to predict the further development of technology in this area, and, in fact, to patent the idea on the basis of layout solution, which uses a round base 1 of a multi-probe sensor with consoles 4 (in fact, it was the only distinctive features) arranged at an angle to each other.
Patent RU2244256 was used effectively as prototypes for subsequent patenting of a multi-probe sensors. Also, this patent has allowed to reduce the likelihood of possible claims from competitors about use of features of independent claims that could occur, if the patents of other people are used as prototypes. In addition, the image component of the early patenting is important, because quite often at various events (exhibitions, conferences, symposia), regardless of the novelty and inventive level of the presented project, competitors may claim that everything is already patented in this area. Of course, at such events, no one will get to compare the technical features of the solutions and their results, therefore, the priority, the name and general configuration of the object are of paramount importance. For example, patent US7597717 of American competitors for the multi-probe sensor from 06.10.2009 could be contrasted with patent RU2592048 from 20.07.2016 if the Russian patentee do not have patent RU2244256 from 10.01.2005.
As a second example, let us consider "Scanning probe microscope with a device for operation of a multi-probe sensor" (patent RU2538412). This patent was previously analyzed as an example of good execution of graphic materials for complex design solutions [3, 4]. Here we will focus on finding distinctive features and their presentation in the claims prior to the completion of development and realization of the device in the "metal" that the same as in the previous examples was provided by the terms of the contract. The technical solution includes the use of "multi-probe contour-type sensor for scanning probe microscope" (patent RU2592048) with the first permanent magnet in a circular base 1 (Fig.) as the installation module 9, which ensures its fixation in the scanning probe microscope (head device) by means of a second permanent magnet. At the time of application submission only this feature was fully implemented "in metal". But mountings of this kind have repeatedly been used and described in the literature. There were also patents of competitors for the versions of such mounting, which could in the future hinder the sale of products in the international market. In addition, competitors continued a further modification of the multi-probe sensors. It was therefore decided to develop additional options for fixing the multi-probe sensor and to include them in the claims before completion of development. These options are based on use of the solenoid instead of the second magnet, the joint use of the second magnet and the solenoid, and also a possibility of the adjustment and alteration of the polarity of the magnetic field of the solenoid. This set of features have created additional technical results, confirmed by calculations, in the form of adjusting the clamping force of a multi-probe sensor and of facilitate its removal at a reversed polarity of magnetic field of the solenoid.
The second set of features concerns the orientation of a multi-probe sensor by torsion bars of circular cross section, which abut in generatrix 2 of round base 1. For more reliable fixing of the round base 1 on generatrix 2 the notches, microflanges or selections were formed. This set of features was implemented. However, the most accurate orientation could be achieved by using flat springs (instead of round torsions) that have a high stiffness in the direction of orientation (along a generatrix 2) and a low stiffness in the direction of pressure (along the radius of the round base 1). But the process of manufacturing these flat springs is rather complicated and would delay full implementation of the entire product "in the metal". It was therefore decided to introduce these features in the claims before the completion of the development and testing of final products.
The third set of features concerns the rotation drive of a multi-probe sensor, which has a linkage with installation module 9, and transmits to it the rotation from the head unit. This set of features includes the use of a flexible shaft and gears, which were made only in the drawings.
The fourth and fifth sets of features were created in the process of preparing a patent application when a low inventive level of the product was revealed. The fourth set of features concerns the automatic replacement of a multi-probe sensor, and the fifth – the recovery of the probes 5 and, in particular, their needles 6. These features were also included in the claims before their implementation and testing. In a result, more than half of the dependent features of claims were included in it before the end of product development. This has increased the probability of obtaining a patent, and has solved the problem with the patent purity of the product due to the creation of the original components that have improved the technical characteristics of the final product.
The following example describes the creating inventions in the field of microbiology. It was necessary to protect the technology of introduction of special molecules into the cells of living organisms with the purpose of the modification of the cellular genetic apparatus. Early patenting of this invention, in addition to direct protection, had to solve complex tactical task. Given the active patenting of microbiology objects in Russia by foreign companies, it was necessary to protect the achievements of authors in a unique researches to at least not fall under the ban of competitors to use own technology. On the one hand, it was necessary to provide potential investors with sufficient information about the patent protection of the technology for modification of the genetic apparatus of cells. On the other hand, it was necessary to highlight the areas of development of this technology, protecting her until full implementation, but leaving the possibility of additional patent protection after creating a final version. To solve this problem, the first paragraph of the formula of the invention under the application No. 2010120268 includes the unification of microbiological technology of the formation of an array of working cells and micromechanical technology of formation of arrays of needles, which implement the mechanical impacts on the cells for the introduction of target molecules. Thus, a basic component of the proposed method was protected. Nine dependent claims describe variants of fixing of the working cells on the culture substrate, which has been implemented and tested. The remaining ten dependent claims concerned the manufacturing of the arrays of needles. Most of these features were not implemented at the time of application. However, based on many years of experience in the use of MEMS technology, the developers had no doubts about the possibility of implementation of these technologies, it did not cause doubt also in the examination process, and patent RU2560567 was received. Thus, it was succeeded to protect investments into future works.
However, there was a whole range of problems concerning the automation of the convergence of an array of cells with an array of needles, their orientation in space and the dynamics of puncture of cells. In this area it is possible to include in the proposed integrated technology of the methods of controlled micro- and nanodisplacement used in scanning probe microscopy. The possibility of additional patenting in the framework of the project doesn't raise doubts, as the known probe technologies will be further developed in accordance with the known specificity of movement of the arrays of needles, but will lead to new technical results. It is advisable to use as prototype for new solutions the patent RU2560567 protecting the proposed integrated technology that will enhance the quality of future patents and will reduce the complexity of obtaining them.
In the following example, let us consider the possibility of patenting a potential new product created on the new equipment. This need may arise even before the start of operation of new equipment, in the process of implementation of the project in order that besides real patent protection of a new product it was possible to begin its advertising. Patent RU2533325 on "Multifunctional sensory microelectromechanical system" protects products that can be manufactured on high-tech equipment that is protected by patents RU2522776 and RU2528746, but is under assembly. The primary application for the new product included nine embodiments of microelectromechanical systems, some of which had a questionable novelty. However, they all were included in the formula of the invention and in details disclosed in the description. Even at their exclusion from the formula at a stage of the patent examination, they would in any case remain in the description and it would be possible to advertise equipment with them. The state patent examination revealed the known solutions, which gave the user of these complexes additional information and the ability to maneuver when choosing a product. Thus, the patent RU2533325, in addition to advertising functions, has protected part of future products and fulfilled the tactical objectives when choosing products.
And finally, let us consider, as a preliminary preparation of applications for inventions, if necessary, can play a role of tactical patents in the implementation of state budget projects. It is advisable for companies that create new technologies and actively engaged in their patenting to form a kind of inventive reserve. In accordance with the requirements of the contract on creation of the complex technology of metallographic analysis, it was required to submit in three years five applications for inventions as indicators of the project. Examples of the preparation of umbrella patents for these inventions were considered in [5], here we will consider dynamics of their obtaining. For the first year it was required to report the two applications. However, the development of a comprehensive technology was preceded by the development of equipment for metallographic analysis, which did not allow to consistently create private technology. Two prepared in advance applications for "Method for approaching the probe to sample for scanning probe microscope" and "Method of preparation and surface measurement of large object by scanning probe microscope" were used for the first two indicators. Both solutions are applicable to a wide range of probe measurements, but they "were waiting in the wings" and their patenting was linked to the closure of the first phase of the project. The features of metallographic analysis were accented in technical results, and patents RU2497134 and RU2494407, in addition to the tactical role of project indicators, have defended private technology of convergence of the probe and object adapted for metallographic analysis, as well as the general technology of preparation for this analysis. At the same time, it was succeeded to spend fewer resources for preparation of later patents RU2522721, RU 2522724, RU2537488 and to increase their quality due to creation at an early stage of information base.
The general conclusion that follows from the above examples of the implementation of the strategy of early patenting is that in addition to tactical tasks it improves the quality of subsequent inventions.
Let us consider some concrete examples of the approach to the patenting of technical solutions before their implementation in hardware or technology.
In the first example, under the terms of the contract it was necessary to submit application for "Multi-probe contour-type sensor for scanning probe microscope" before its fabrication and testing. This multi-probe sensor should to consist of mechanical parts – a circular base 1 (Fig.) with a diameter of a few millimeters, and a set of micromechanical parts 8. Each micromechanical part 8 is fixed in the area of generatrix 2 of round base 1 through the transition element 3 and is a flexible console 4 with probe 5 located in the peripheral area of the console 7. Sensor 5 regardless of the manufacturing technology ends with the edge 6. The dimensions of the micromechanical part 8 are calculated in microns. The installation module 9 is used for connection with external devices. The diagram shows four micromechanical parts 4 (flexible console), which may correspond to one of the embodiments of the multi-probe sensor. As a rule, the number of flexible consoles 4 can amount to several tens.
Under the terms of the contract it was necessary to apply for a patent of the Russian Federation at the moment when the multi-probe sensor has not been made yet. The formation of the micromechanical part 8 is a process that consists of many stages and is not always predictable. Accordingly, it was quite difficult to formulate the final inventive characteristics of this part and its technical results. It is easier with the mechanical part in this respect, because if necessary one part of characteristics can be tested on models, and other part can mentally simulated based on previous experience of development of similar mechanical devices. Therefore, micromechanical features in the formula of the invention (application No. 2013143064) was formed on the basis of known at the time solutions and their minor modifications. They concerned a coordinate binding of needles 6 to the round base 1, marking of probes 5, the implementation of flexible consoles 4 of different thicknesses and widths, a coating with various materials. These features were not contrary to the laws of physics, but could differ from future implementation. Mechanical features concerned implementation of the installation module 9 and the fixing conditions of a multi-probe sensor in the head (external) device, were formulated sufficiently close to the final solution. They included sets of protrusions and holes formed in the round base 1 required for manipulation and orientation of a multi-probe sensor. Experts have opposed the known solutions to a part of the features and they were excluded from the formula of the invention, however, the remaining features allowed to obtain primary patent RU2592048. At the same time, the remaining possibility of development this solution (primarily of micromechanical part 8) in the process of production of a multi-probe sensor allows to obtain another patent that includes the final version of the micromechanical part and have the patent RU2592048 as a prototype.
Thus, the initial patenting, in addition to the interim report for budgetary financing allowed in this case to use the results of the state patent examination to adjust the production technology of micromechanical parts 8. It should also be noted that the patent RU2592048 was preceded by RU2244256 patent of the same applicant with the same name, protected almost 10 years before him. At that time it was not planned to manufacture multi-probe sensors, as there was no objectives for their use and microelectronics technology then would hardly allow to manufacture such sensors. But based on the experience of the development and use of multi-probe sensors with a linear arrangement of probes (see, for example, patent RU2249263) it was succeeded to predict the further development of technology in this area, and, in fact, to patent the idea on the basis of layout solution, which uses a round base 1 of a multi-probe sensor with consoles 4 (in fact, it was the only distinctive features) arranged at an angle to each other.
Patent RU2244256 was used effectively as prototypes for subsequent patenting of a multi-probe sensors. Also, this patent has allowed to reduce the likelihood of possible claims from competitors about use of features of independent claims that could occur, if the patents of other people are used as prototypes. In addition, the image component of the early patenting is important, because quite often at various events (exhibitions, conferences, symposia), regardless of the novelty and inventive level of the presented project, competitors may claim that everything is already patented in this area. Of course, at such events, no one will get to compare the technical features of the solutions and their results, therefore, the priority, the name and general configuration of the object are of paramount importance. For example, patent US7597717 of American competitors for the multi-probe sensor from 06.10.2009 could be contrasted with patent RU2592048 from 20.07.2016 if the Russian patentee do not have patent RU2244256 from 10.01.2005.
As a second example, let us consider "Scanning probe microscope with a device for operation of a multi-probe sensor" (patent RU2538412). This patent was previously analyzed as an example of good execution of graphic materials for complex design solutions [3, 4]. Here we will focus on finding distinctive features and their presentation in the claims prior to the completion of development and realization of the device in the "metal" that the same as in the previous examples was provided by the terms of the contract. The technical solution includes the use of "multi-probe contour-type sensor for scanning probe microscope" (patent RU2592048) with the first permanent magnet in a circular base 1 (Fig.) as the installation module 9, which ensures its fixation in the scanning probe microscope (head device) by means of a second permanent magnet. At the time of application submission only this feature was fully implemented "in metal". But mountings of this kind have repeatedly been used and described in the literature. There were also patents of competitors for the versions of such mounting, which could in the future hinder the sale of products in the international market. In addition, competitors continued a further modification of the multi-probe sensors. It was therefore decided to develop additional options for fixing the multi-probe sensor and to include them in the claims before completion of development. These options are based on use of the solenoid instead of the second magnet, the joint use of the second magnet and the solenoid, and also a possibility of the adjustment and alteration of the polarity of the magnetic field of the solenoid. This set of features have created additional technical results, confirmed by calculations, in the form of adjusting the clamping force of a multi-probe sensor and of facilitate its removal at a reversed polarity of magnetic field of the solenoid.
The second set of features concerns the orientation of a multi-probe sensor by torsion bars of circular cross section, which abut in generatrix 2 of round base 1. For more reliable fixing of the round base 1 on generatrix 2 the notches, microflanges or selections were formed. This set of features was implemented. However, the most accurate orientation could be achieved by using flat springs (instead of round torsions) that have a high stiffness in the direction of orientation (along a generatrix 2) and a low stiffness in the direction of pressure (along the radius of the round base 1). But the process of manufacturing these flat springs is rather complicated and would delay full implementation of the entire product "in the metal". It was therefore decided to introduce these features in the claims before the completion of the development and testing of final products.
The third set of features concerns the rotation drive of a multi-probe sensor, which has a linkage with installation module 9, and transmits to it the rotation from the head unit. This set of features includes the use of a flexible shaft and gears, which were made only in the drawings.
The fourth and fifth sets of features were created in the process of preparing a patent application when a low inventive level of the product was revealed. The fourth set of features concerns the automatic replacement of a multi-probe sensor, and the fifth – the recovery of the probes 5 and, in particular, their needles 6. These features were also included in the claims before their implementation and testing. In a result, more than half of the dependent features of claims were included in it before the end of product development. This has increased the probability of obtaining a patent, and has solved the problem with the patent purity of the product due to the creation of the original components that have improved the technical characteristics of the final product.
The following example describes the creating inventions in the field of microbiology. It was necessary to protect the technology of introduction of special molecules into the cells of living organisms with the purpose of the modification of the cellular genetic apparatus. Early patenting of this invention, in addition to direct protection, had to solve complex tactical task. Given the active patenting of microbiology objects in Russia by foreign companies, it was necessary to protect the achievements of authors in a unique researches to at least not fall under the ban of competitors to use own technology. On the one hand, it was necessary to provide potential investors with sufficient information about the patent protection of the technology for modification of the genetic apparatus of cells. On the other hand, it was necessary to highlight the areas of development of this technology, protecting her until full implementation, but leaving the possibility of additional patent protection after creating a final version. To solve this problem, the first paragraph of the formula of the invention under the application No. 2010120268 includes the unification of microbiological technology of the formation of an array of working cells and micromechanical technology of formation of arrays of needles, which implement the mechanical impacts on the cells for the introduction of target molecules. Thus, a basic component of the proposed method was protected. Nine dependent claims describe variants of fixing of the working cells on the culture substrate, which has been implemented and tested. The remaining ten dependent claims concerned the manufacturing of the arrays of needles. Most of these features were not implemented at the time of application. However, based on many years of experience in the use of MEMS technology, the developers had no doubts about the possibility of implementation of these technologies, it did not cause doubt also in the examination process, and patent RU2560567 was received. Thus, it was succeeded to protect investments into future works.
However, there was a whole range of problems concerning the automation of the convergence of an array of cells with an array of needles, their orientation in space and the dynamics of puncture of cells. In this area it is possible to include in the proposed integrated technology of the methods of controlled micro- and nanodisplacement used in scanning probe microscopy. The possibility of additional patenting in the framework of the project doesn't raise doubts, as the known probe technologies will be further developed in accordance with the known specificity of movement of the arrays of needles, but will lead to new technical results. It is advisable to use as prototype for new solutions the patent RU2560567 protecting the proposed integrated technology that will enhance the quality of future patents and will reduce the complexity of obtaining them.
In the following example, let us consider the possibility of patenting a potential new product created on the new equipment. This need may arise even before the start of operation of new equipment, in the process of implementation of the project in order that besides real patent protection of a new product it was possible to begin its advertising. Patent RU2533325 on "Multifunctional sensory microelectromechanical system" protects products that can be manufactured on high-tech equipment that is protected by patents RU2522776 and RU2528746, but is under assembly. The primary application for the new product included nine embodiments of microelectromechanical systems, some of which had a questionable novelty. However, they all were included in the formula of the invention and in details disclosed in the description. Even at their exclusion from the formula at a stage of the patent examination, they would in any case remain in the description and it would be possible to advertise equipment with them. The state patent examination revealed the known solutions, which gave the user of these complexes additional information and the ability to maneuver when choosing a product. Thus, the patent RU2533325, in addition to advertising functions, has protected part of future products and fulfilled the tactical objectives when choosing products.
And finally, let us consider, as a preliminary preparation of applications for inventions, if necessary, can play a role of tactical patents in the implementation of state budget projects. It is advisable for companies that create new technologies and actively engaged in their patenting to form a kind of inventive reserve. In accordance with the requirements of the contract on creation of the complex technology of metallographic analysis, it was required to submit in three years five applications for inventions as indicators of the project. Examples of the preparation of umbrella patents for these inventions were considered in [5], here we will consider dynamics of their obtaining. For the first year it was required to report the two applications. However, the development of a comprehensive technology was preceded by the development of equipment for metallographic analysis, which did not allow to consistently create private technology. Two prepared in advance applications for "Method for approaching the probe to sample for scanning probe microscope" and "Method of preparation and surface measurement of large object by scanning probe microscope" were used for the first two indicators. Both solutions are applicable to a wide range of probe measurements, but they "were waiting in the wings" and their patenting was linked to the closure of the first phase of the project. The features of metallographic analysis were accented in technical results, and patents RU2497134 and RU2494407, in addition to the tactical role of project indicators, have defended private technology of convergence of the probe and object adapted for metallographic analysis, as well as the general technology of preparation for this analysis. At the same time, it was succeeded to spend fewer resources for preparation of later patents RU2522721, RU 2522724, RU2537488 and to increase their quality due to creation at an early stage of information base.
The general conclusion that follows from the above examples of the implementation of the strategy of early patenting is that in addition to tactical tasks it improves the quality of subsequent inventions.
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