The History of DO-RA Project Patent War

Introduction

When 2011 was approaching to its end, first DO-RA samples started to work with different models of smartphones on key mobile platforms: iOS, Android, WP, Java ME, etc. At this time, there was no doubt that soon it will be possible to launch into production gadgets for measuring the level of ionizing radiation around us. The name “DO-RA” is a combination of the first letters of device’s functional - DOsimeter-RAdiometer. The invention of the device was made immediately after the technogenic disaster at the Fukushima nuclear power plant and was intended to measure and control the level of ionizing radiation near DO-RA user’s location. At that time, the number of orders for devices of this type were estimated in hundreds of thousands of pieces only for Japan.

The basic patent of the Russian Federation № 109625 for DO-RA utility model was registered with a priority of July 24, 2011, and at the end of the same year the first mini grant of the Skolkovo Foundation was received for support of the DO-RA project development (http://do-ra.ru).

In September 2011, I organized a flight to Tokyo to visit my friend who arranged a meeting with top managers of Japanese companies Fuji and Fujitsu for the presentation of the first DO-RA prototype, in the hope that DO-RA project can get potential investment and technological production in Japan.

The history of the DO-RA project creation, technological principles of device’s operation have been described in a series of articles posted on the popular Internet portals for software and hardware developers “Habrahabr” and “4PDA” in 2011.

Also, in November 2011 at the exhibition "Atomtech-2011" that was held in Moscow, Intersoft Eurasia Company demonstrated a cross-platform model DO-PA.005, which operated directly on several mobile platforms, later this version was named DO-RA.Uni because of its universality, and received a patent of the Russian Federation № 125008. The reportage about this event was demonstrated on the Moscow-24 TV channel, November 1, 2011.

During the same period, the article "Safety of Nuclear Technologies and the Environment" was written and transmitted to the International Journal No. 4 for 2011, although this magazine was published only at the end of January 2012.

Later, you will understand why all these events are mentioned in the Introduction to this article.

 

General Part

Patent landscape

When you start to invent, it's worth remembering that this is not just entertainment - a hobby, but a real business on the global market, where all types of risks, luck and frustrations are taking into account. It is not necessary to demonstrate and publish materials about your own development beforehand, otherwise by finding vulnerabilities on them, your competitors will definitely take advantage of this and create a bunch of problems for your project.

And so, approximately, in mid-2012, our patent experts, studying the patent landscape regarding similar developments, noted an extremely similar analogue of DO-RA patent. They sent me the text, the formula of the invention, the block diagram and the description of the device's working capacity under the patent from the unexpectedly surfaced competitor. Penetrating the essence of the competitive solution, I was getting more and more surprised.

First of all, I was surprised by the choice of my patent as a prototype of a competitor, but that's not all. When inventing something, you always select the closest analogue to describe your own, more efficient and better solution for the newly registered invention or utility model. I was surprised more by the fact that many of the phrases and word combinations were just copied from my patent. At this moment I thought, well, the field of nuclear dosimetry is rather narrow and specific, then so be it.

Secondly, I noted for myself that the inventors of a competing patent for some reason defame my patent unnecessarily, exaggerating their technological solution, without adding anything special to the one chosen as the analogue prototype. Moreover, all the solutions described in the competitors’ patent, I have already announced in various sources of information: from Internet blogs, offline media - magazines and newspapers, to television about a year before they received their patent (see Introduction to this article). And then, a year before, the DO-RA device was announced in the media sources as an experimental model capable to operate via an audio channel through a mini jack of any smartphone and phone, using a protocol based on phase manipulation.

Thirdly, by making a comparative technical assessment of our patent of the Russian Federation № 109625 and competitors’ patent, it was found out that all the blocks that make up the integrity of both patents are virtually identical and bear identical functions. And there is no special novelty or advantage in the competitive solution, so that it would be worth giving such a patent.

 

Do not trust, do not fear, do not ask

After getting in touch with one of the inventors of the competitive patent, we agreed to arrange a meeting at my office. During the meeting, I told my inventor colleague what I thought about their technical solution and the possible origins of such an “insight”. In response, my colleague assured me that their solution would have limited circulation. And that they with their partner-inventor are inclined to release only a small, limited lot of products under their patent for a foreign market, and they would never go on the Russian market. Because everything was said straight from the horse’s mouth, and was quite convincing, I believed to his story and relaxed.

It's been about six months since the "heart to heart" meeting, when I accidentally discovered the gadgets of competitors on the shelfs of “Re: Store”, which is a popular retailer of consumer electronics, and their stores located in many regions of Russia.

Then I asked the General Manager of this respected trading network to explain the situation with a patent for a similar technology with reference to the relevant article in the Patent Law of the Russian Federation. The answer was: "Your question has been redirected to the right holder who is permanently residing abroad."

The answer from foreigners, at the first glance, was quite convincing, but something elusive still made us continue to struggle for our rightness as an innovator of portable gadget for smartphones with a dosimeter-radiometer function.

 

Esprit de Corps

Realizing that peaceful dialogues do not lead to anything constructive in the environment of inventors of already invented things, I appealed to the Chamber of Patent Disputes, that was specially established by Rospatent for solving such conflicts, on the issue of recognizing a particular patent is not valid. The reason for this claim was my priority, which was registered approximately 12 months earlier, and as a proof I enclosed a pile of documents, including technical expertise from patent experts and nuclear scientists, and all the original articles on the subject matter.

Approximately 3-4 meetings of the Chamber took place, which in total lasted one year, with the involvement of additional experts and procedures, but, however, my claim on recognition of the competitive patent invalid was refused. At the same time, earlier publications and evidence of the priority in this issue both in Russia and abroad have not helped. Apparently, material evidences in patent law are not always valuable.

My personal opinion with regard to refusal to invalidate the competitor's patent was twofold. On the one hand, it would be worth blaming oneself for blunders in the design of an even more comprehensive Formula of Invention in the patent application, where the phrase "... operates on an audio protocol transmitted via the audio path through the audio jack ..." should be clearly spelled out. On the other hand, part of the blame could also lie on Rospatent, which protects its own uniform even in the presence of an unfairly issued patent without sufficient grounds.

 

Who are the judges?

Having overcome the stage of proceedings in the department of Rospatent, which is now called FIPS - the Federal Institute of Industrial Property, on the recommendation of patent experts, I decided to continue struggle for protection of my ideas in the court of general jurisdiction in the place of residence.

And only later, in practice, it became clear that in such cases it makes sense to apply claims directly to specialized institutions. For example, to CIP - the Court for Intellectual Property Rights, which at that time was only being formed. Nevertheless, after participating in several meetings of SIP, losing one more year, my colleagues and I faced with misunderstanding of the patent disputes’ logic from the Court of General Jurisdiction, it was all too complicated for them. Actually, it was not surprising because the Courts of General Jurisdiction sort out quite trivial questions of our being: who is right and who is guilty at the domestic level, fights, quarrels, hooliganism. Even specialized experts and scientists do not have common opinion on such complicated and highly technological aspects of innovative developments.

Nevertheless, at this stage of the trials, a good evidence base for the DO-RA project was obtained: of unconditional priority, of the technologies used, and of all media information accompanying the development of DO-RA devices and demonstrating the real chronicle of the project development.

 

Offensive Competitive Strategy  

The famous principle of Alexander the Great (Alexander of Macedon): " Attack – is the best form of defence", was used by our competitors in this protracted patent war. They decided to cancel two of my patents at once: the basic patent of the Russian Federation № 109625 and the patent of the Russian Federation № 125008 – for DO-RA.Uni a cross-platform solution, which later became DO-RA.Q. Moreover, both of our developments were more perfect than primitive counterpart of competitors, while actually destroying their conditional monopoly. Our devices are able to work with absolutely any smartphone, phone and computer using any mobile platform or operating system.

FIPS almost immediately rejected the claim of our competitors to invalidate my basic patent № 109625, citing strong arguments on this issue in favour of the legitimacy of issuing the above patent. However, under RF patent № 125008 FIPS made a preliminary decision on its cancellation. At the same time, the wording that sounded in the FIPS decision on patent invalidation was showing that this decision was too superficial and unfair.

 

IP Skolkovo Center

Passions heated up to the limit around the five-year patent war, known only to a limited number of people involved. All this patent bustle was a serious obstacle for Intersoft Eurasia Company, DO-RA project operator. The Company could not launch a previously planned production of various models. Uncertainty of patent rights created the risks of counterclaims with serious financial consequences when developing a full-scale industrial production of DO-RA products. Of course, not as global as between Apple and Samsung, but still the results could be sad.

Having evaluated the situation around the above-described patent disputes, Intersoft Eurasia Company as a resident of Skolkovo applied to the Center for Intellectual Property (IP) of Skolkovo Technopark for additional legal and patent support. As a result, with the help of group of specialists from Skolkovo led by Anton Pushkov, patent disputes were transferred to the CIP - the Court for Intellectual Property Rights, which was founded only  in 2013.

The result of the patent epic was the following. Based on independent expertise from several technical universities, and in particular, Bauman Moscow State Technical University, Moscow Power Engineering Institute, the Court for Intellectual Property Rights issued Decision CIP-15/2017 of 26.05.2017 on the recognition of Rospatent decision of 30.09.2016 as invalid, and the patent № 125008 to remain in force. Recently, I have received an official letter from the Federal Institute of Industrial Property which confirmed end of the "patent war".

 

Conclusions:

• In order to avoid future patent wars, the inventor is obliged, as far as possible, to describe in the Formula of the invention features and differences from the closest analogues and prototypes.

• To save money and time on already arising patent disputes it is necessary to address claim through qualified lawyers straight to the Court for Intellectual Property Rights (CIP).

• Inventors should pay special attention to the expansion of the features and differences of an already obtained patent for the creation of a new patent with an even more advanced version of the utility model, method or technology.