A decision has been received to refuse to issue a patent or to recognize the application as withdrawn. What to do?

Under certain circumstances, an entrepreneur may decide to terminate activities as a PSN payer. In this case, he submits an application to the tax authority to terminate patent activity in the prescribed form. In addition, situations are possible in which an entrepreneur loses the right to use PSN. In this case, an application is also submitted in the prescribed form to the tax authority. In the article we will consider under what circumstances and how these applications are submitted to the Federal Tax Service.

Voluntary renunciation of a patent

By decision of the entrepreneur, refusal to use the PSN may be caused by different situations. If an entrepreneur changes his mind about applying the patent system immediately after filing documents for a patent, then he can withdraw his decision until the patent is issued to him. In accordance with the established procedure, patent documents are reviewed within 5 days. That is, that is exactly how much time the entrepreneur has to withdraw his application. Another situation is also possible in which, after the entrepreneur received a patent, changes were made to the legislation of the region and changes occurred in the territory of validity of the patent. Therefore, an entrepreneur cannot apply a patent on his territory, which means he will need to abandon it.

Also, the need to renounce a patent arises if the entrepreneur ceases to engage in activities for which the PSN is applied. In such a situation, the entrepreneur submits an application to the Federal Tax Service in form 26.5-4.

Important! An application to the Federal Tax Service must be submitted within 10 days from the date of the decision to terminate activities on the patent. The date of deregistration is considered to be the day the entrepreneur ceases to operate on the PSN.

The most common are other situations in which the use of PSN is terminated as a result of the entrepreneur exceeding the restrictions provided for by tax legislation.

A decision has been received to refuse to issue a patent or to recognize the application as withdrawn. What to do?

More and more often, Applicants, after filing an application for an invention or utility model, receive decisions to refuse to issue a patent or to recognize the application as withdrawn and do not know what to do about it. Let's try to figure it out.

First, let's turn to the legislation and find out for what reasons one or another negative decision could be obtained.

1. And so, in accordance with the current patent legislation, regarding the issuance of refusals,

If, during the examination of an application for an invention, utility model, it is essentially established that the claimed invention, utility model, which is expressed by the formula proposed by the applicant,

refers to objects that cannot be the subject of patent rights:

1) methods of human cloning and his clone;

2) methods for modifying the genetic integrity of human germline cells;

3) use of human embryos for industrial and commercial purposes;

4) results of intellectual activity, if they contradict public interests, principles of humanity and morality;

does not meet the conditions of patentability : for inventions - world novelty, inventive step and industrial applicability, and for utility models - world novelty and industrial applicability;

is not an invention or utility model, since it relates, in particular, to:

1) discoveries;

2) scientific theories and mathematical methods;

3) decisions relating only to the appearance of products and aimed at satisfying aesthetic needs;

4) rules and methods of games, intellectual or economic activities;

5) computer programs;

6) decisions involving only the provision of information.

7) plant varieties, animal breeds and biological methods for their production, that is, methods consisting entirely of crossing and selection, with the exception of microbiological methods and products obtained by such methods; And

the essence of the claimed invention, utility model in the application documents, and presented on the date of its filing, is disclosed with completeness that is not sufficient for the implementation of the invention, utility model,

The federal executive body for intellectual property makes a decision to refuse to issue a patent.

It should be noted that for inventions, before a decision is made to refuse to issue a patent, the federal executive authority for intellectual property sends the applicant a notice of the results of checking the patentability of the claimed invention with an invitation to present their arguments on the grounds given in the notification. The applicant's response, containing arguments on the grounds given in the notification, may be submitted within six months from the date of sending the notification to him.

After receiving a response to this notification, the office makes a decision either to refuse to issue a patent or to issue a patent.

As for the utility model, if it does not comply with the above requirements and it is impossible to correct the application materials or the formula of the utility model, in the opinion of the examination, the office may send a decision to refuse to issue a patent based on the results of the substantive examination immediately, without sending a preliminary request to the applicant, that is, without giving the opportunity to speak. As a rule, such refusals are issued on applications that are drawn up and submitted by the inventors themselves, applicants who do not have sufficient knowledge of patent law.

Thus, in order to reduce the likelihood of receiving refusals to issue patents, and often eliminate the possibility of being refused, we recommend that when preparing application materials, contact specialists, patent attorneys who have special knowledge in the field of patent law and will help at the stage of filing the application protect applicants from possible refusals, suggest ways to solve the problem and, in the worst case scenario, recommend not to spend money and not to file an application in order to avoid an obvious refusal to issue a patent.

1. Now let’s find out in what cases the agency makes a decision to recognize an application as withdrawn. And so, a decision to recognize an application as withdrawn is made if:

the fee for a legally significant action is not paid within the deadlines established by law or the fee paid for the action provided for in the paragraphs of the appendix to the Regulations on Duties is less than the amount of the fee established by the Regulations on Duties ;

the petition for an examination of the application for an invention on the merits was not filed within the established or extended period in accordance with the established procedure;

in connection with the request for additional materials, additional materials , without which it is impossible to conduct an examination or make a decision to grant a patent, are not submitted within three months from the date of sending the request or copies of materials opposed to the application and requested by the applicant within two months from the date of sending the request, and this period was not extended in accordance with the procedure established by the legislation of the Russian Federation;

an agreement has not been submitted defining the applicant for the application in the event of submission of applications for identical inventions or identical inventions and utility models filed by different applicants with the same priority date, within twelve months from the date of sending the relevant notification, and this period has not been extended in accordance with the legislation of the Russian Federation Federation order;

a notice of the choice of application made by the applicant has not been submitted if he has filed applications for identical inventions or identical inventions and utility models within twelve months from the date of sending the relevant notification, and this period has not been extended in accordance with the procedure established by the legislation of the Russian Federation;

the applicant has not filed an application for termination of the patent in relation to an identical utility model for which the patent was issued within twelve months from the date of sending the relevant notification

Separately, we note that due to any circumstances, the applicant, on his own initiative, has the right to withdraw his submitted application for an invention, utility model before the state registration of the invention, utility model in the relevant register, by filing a specific petition.

So what does an applicant need to do to avoid receiving a decision to withdraw the application? As a rule, all of the above reasons for which applications are withdrawn are due to the fault of the applicant, for example, due to his ignorance or insufficient knowledge of patent legislation, and sometimes because he has no one to advise him. To prevent the application from being withdrawn, it is necessary to strictly follow the recommendations of the department’s experts, pay fees on time, send responses to requests and comply with all deadlines established by law for certain actions. If you understand that you yourself are not able to cope with these tasks 100%, then to avoid such situations, we recommend contacting qualified specialists - patent attorneys who will help you avoid withdrawal of the application, take all necessary actions and do everything possible to obtain long-awaited patent.

In conclusion, we note that if you do not agree with the decision made, then the decision of the federal executive body for intellectual property to refuse to issue a patent for an invention, utility model or to recognize an application for an invention, utility model as withdrawn can be challenged by the applicant by filing an objection to the specified federal executive body within seven months from the date it sent the applicant the relevant decision or copies of materials requested from the specified federal executive body that are opposed to the application and indicated in the decision to refuse to issue a patent, provided that the applicant requested copies of these materials within three months from the date of sending the decision made on the application for an invention or utility model.

Source: https://zuykov.com/ru/about/articles/2020/03/16/polucheno-reshenie-ob-otkaze-v-vydache-patenta-ili/

Forced relinquishment of a patent

An entrepreneur will have to abandon PSN if his income exceeds 60 million rubles, or his staff exceeds the established limit of 15 people. In accordance with current legislation, the entrepreneur loses the right to use PSN in this case.

Previously, an entrepreneur had to stop operating at the PNS if timely payment of the cost of the patent was not made. Today these requirements are somewhat softer. Starting from 2021, the entrepreneur does not lose the right to use the patent, but at the same time he will have to pay arrears, penalties and fines.

Important! If the entrepreneur has not paid for the previous patent, the Federal Tax Service will refuse to issue him the next one.

In order to inform about the termination of the use of PSN, there is a statement of form 26.5-3. It is submitted to the Federal Tax Service within 10 days from the date of occurrence of the circumstances that served as the basis for termination of application of the patent. The entrepreneur is required to submit such an application to any tax authority in which the entrepreneur is a PSN payer. The obligation to notify the Federal Tax Service of the loss of the right to use PSN is established by Art. 346.45 Tax Code of the Russian Federation.

The application form contains a line to indicate the date of occurrence of the circumstances that served as the basis for the loss of the right to the patent taxation regime.

Patent system: brief description

The main feature of PSN is the absence of the need to submit tax reports. However, not every entrepreneur is allowed to apply this regime, since the type of activity of a businessman must be included in the established Art. 346.43 Tax Code of the Russian Federation list.

In addition, a number of restrictions are imposed on financial indicators and the number of employees. Thus, income from activities at PSN cannot be more than 60 million rubles per year, and the number of personnel should not exceed 15 people.

The cost of a patent can be calculated by the taxpayer himself or using the Federal Tax Service service.

How to fill out an application for termination of patent activity in form 26.5-4

Based on the application in Form 26.5-4, the Federal Tax Service is notified of the entrepreneur’s termination of patent activities. It is submitted by the entrepreneur if the decision to terminate the patent was made by the individual entrepreneur before the end of its validity period. An application must be submitted to the Federal Tax Service within 10 calendar days from the date of termination of patent activity.

In the application, the entrepreneur provides the following information:

• FSN code to which the application will be sent (the application is submitted to the authority at the place of registration of the entrepreneur as a PSN payer);
• Full name of the entrepreneur;
• date of termination of activity on the patent;
• details of the patent, which will be terminated on the basis of this application.

In the lower left corner of the application information about the applicant - the entrepreneur himself or his representative - is indicated.

Important! If the application is submitted by a proxy or other representative, then the details of the document confirming the authority of this person are indicated. This may be a power of attorney, a court decision, or another official document.

How can an individual entrepreneur renounce a patent?

Entrepreneurs may need to terminate a patent early for voluntary or compulsory reasons. You can change the taxation system before it expires in different ways, depending on the situation.

Refusal before patent registration

If you have just submitted an application to purchase a patent, the tax office has 5 days to register and issue documents. During this time, you can withdraw your application, which will be considered lawful.

Early closure of a patent

If the need for early closure of a patent arose after its registration, then you need to notify the tax office. When PSN is terminated ahead of schedule, an application is submitted in Form 26.5-3, approved by Order of the Federal Tax Service No. MMV 7-3/ [email protected]

Termination of activities under a patent

PSN applies to a limited number of activities. If you decide to change your business area and the new activity is not covered by a patent, you must also submit an application to the Federal Tax Service, but in Form 26.5-4 (Order No. MMV 7-3/957).

In case of loss of the right to use a patent

The need to terminate a patent may not only be at one’s own request. An entrepreneur will lose the right to use PSN if the amount of annual income exceeds 60 million rubles or more than 15 employees are hired.

If the right to use a patent is lost, the individual entrepreneur must submit a tax application in form 26.5-3 in order to switch to another taxation system.

We recommend reading: Patent renewal for individual entrepreneurs and deadlines for filing an application.

How to submit an application for termination of patent activity to the tax authority

There are several ways to submit an application for termination of patent activity to the Federal Tax Service:

1. Appear in person to the tax authority with an application. In this case, the date of filing the application will be considered the date the entrepreneur applied to the Federal Tax Service.
2. Submit your application by mail. In this case, the letter is issued as a registered letter, with a list of attachments and a notification of delivery. The date of acceptance of the application will be considered the date of receipt of the letter indicated on the postal notification.
3. Contacting the Federal Tax Service through a representative. The entrepreneur's representative must act either on the basis of a power of attorney or on the basis of a court decision. In this case, the date of acceptance of the application is considered to be the date the representative applied to the Federal Tax Service.
4. Submitting an application electronically. This can be done through the entrepreneur’s personal account on the official website of the tax authority. In this case, the date of acceptance of the application will be considered the date of the receipt of the application by the tax authority.

After receiving the application, the tax authority within 5 days removes the individual entrepreneur from registration as a PSN payer. After this, the entrepreneur will be considered a payer of the OSNO (general taxation system), that is, he will have an obligation to pay tax under the general tax regime.

If an entrepreneur combined two special regimes - PSN and simplified tax system, then after submitting an application he will retain the right to use the simplified tax system. He will only lose his status as a patent payer. In this case, he will not switch to the general taxation regime, but will continue to work under the simplified tax system.

Tax recalculation

In the event of a voluntary refusal to use the PSN and the submission of a corresponding application before the expiration of the patent, the tax is recalculated. When an entrepreneur pays the full cost for a patent, he has the right to submit an application to the Federal Tax Service for a refund of the overpayment. In this case, the refund amount will be calculated as follows:

Refund amount = amount paid for the patent - the cost of the patent, calculated based on the validity period.

Let's look at an example:

IP Ivanov I.I. received a patent for 6 months - from January 1 to June 30 and paid the full cost of 36 thousand rubles for it. In May, Ivanov filed an application to the Federal Tax Service to terminate patent activities. Based on this application, he was deregistered as a PSN payer from June 1. At Ivanov’s request, the tax authority recalculated the tax based on the fact that the individual entrepreneur had been operating at PSN for only 5 months. The calculation was made as follows:

36,000 / 6 x 5 = 30,000 rubles.

Thus, the overpayment to be returned to Ivanov amounted to:

36,000 – 30,000 = 6,000 rubles.

When can I get a new patent?

If an individual entrepreneur has lost the status of a PSN payer, then he will be able to issue a new patent no earlier than January 1 of the next year . That is, if an entrepreneur stopped patenting activities in June 2021, then he will be able to become a PSN payer again only in 2021.

This rule is provided for in Art. 346.45 of the Tax Code of the Russian Federation and refers to situations in which an entrepreneur voluntarily refused to use the PSN, or lost this status as a result of violating the conditions for applying this tax regime.