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A new referral has been submitted to the Enlarged Board of Appeal (EBoA) of the EPO concerning adaptation of the description to correspond to amended claims. This was indeed to be expected, following the recent decision G1/24 (see our news item on decision G1/24 here), as according to this decision, the description is always to be used for interpretation of the claims.
In the decision T397/22 which is the basis for this referral, the adaption of the description became relevant in a situation where the opposition division had accepted into the proceedings a new auxiliary set of claims that was filed during oral proceedings. Also the board of appeal was of the opinion that the decision to accept the set of claims into the proceedings was correct, and thus this set of claims was also part of the appeal proceedings.
The patentee had filed also an amended description during the opposition proceedings. The opponent submitted that the description was however in conflict with the amended claims, i.e. contradicting Article 84 EPC. Article 84 EPC says, i.a., that the claims must be supported by the description. In the present case, claim 1 had been limited with respect to a certain feature, making it a mandatory feature, while in the amended description, this feature was still presented as optional. The board of appel agreed with the opponent, i.e. that there was an inconsistency between the claims and the description.
According to the board of appeal, if such an inconsistency between amended claims and the description is contrary to Article 84 EPC, the conclusion is that the amended set of claims and the amended description are not allowable. In the opposite case, they are allowable.
Thereafter, the board of appeal researched previous decisions of boards of appeal on this question, and concluded that they were divided in two groups. The decisions consulted included also decisions on appeals from application proceedings. A majority of the decisions concluded that it was necessary to adapt the description to correspond to amended claims. In these decisions, there were however five different lines of arguments as to the legal basis in the EPC and its Implementing provisions. A minority of the decisions which arrived at a conclusion that there is no need for such an adaption were all recent and taken in examination appeals. There exists thus a basis for the referral, due to the diverging case law.
The referral asks the following questions.
An affirmative answer to the above questions would have a significant impact on prosecution. If the decision was affirmative and the EPO would adopt a strict view on the issue, the patentee would need to ensure that every time they file an amended set of claims, they would also file a correspondingly amended description. Correspondingly, an applicant should, at the latest at the grant phase, ensure that the description corresponds to the claims, if amended during prosecution of the application.
Otherwise, it is possible that a board of appeal would decide that a lack of adapted description is something that can no longer be corrected in appeal proceedings, unless it is done immediately when filing the first brief (grounds of appeal or reply to appeal). A board that applies the rules of procedure of the boards of appeal strictly can even decide that if the amended set of claims was already pending in the first instance proceedings, filing of a correspondingly amended description only during appeal is too late and thus not allowed.
This is what actually happened in the case at hand. Before the oral proceedings in front of the boards of appeal, the patentee was of the opinion that it was not necessary to further adapt the description, in order to make it correspond to the set of claims in question, even though there was an inconsistency between the description and the claims. During oral proceedings, the patentee however submitted a new, amended description that corresponded to the amended set of claims.
The opponent argued that this adapted description should not be admitted into the proceedings as being late filed. Additionally, the opponent submitted that the amended description constituted an amendment of the patentee’s case and it should not be admitted into the proceedings also on this ground. The board of appeal agreed with this latter view, and did thus not admit the amended description into the proceedings.
Should the decision be affirmative, it is possible that it is applied also retroactively, at least in boards of appeal. It might thus be wise to take this referral into account also in pending opposition proceedings.
On the other hand, a local division of the Unified Patent Court (UPC) has in April 2025 handled a case, in which the UPC decided that the claims limited during prosecution of the application and the description were not in line with each other. According to the UPC, this is not allowed, and the patentee was not allowed to refer to the description and to try to expand the scope of protection of the claims in this manner. The patent was however held in force in the granted form, despite this inconsistency between the claims and the description, i.e. this kind of unallowed issue did not invalidate the patent. Should this become the general view of the UPC, it is comforting for the patentee to know that even if the EPO changes their view in that the description must be adapted to the amended claims, this would not have an effect of the validity of the patent, at least not retroactively and in front of the UPC.
In my opinion a decision stating that the description does not need to be adapted to amended claims would be in contradiction with the recent decision G1/24.
Personally, I hope that the EBoA decides that adaptation is necessary. One can of course argue many ways on this issue, but the situation in infringement proceedings would be clearer, if the patentee could not refer to the description to try and expand the scope of protection from to what it was previously limited to. A description adapted to amended claims would thus also increase third parties’ legal certainty.
Within a year we will most probably know the view of the EBoA on this question.
Related links:
G1/25: https://www.epo.org/en/case-law-appeals/communications/referral-enlarged-board-appeal
G1/24: https://www.epo.org/en/boards-of-appeal/decisions/g240001ex1
T697/22: https://www.epo.org/en/boards-of-appeal/decisions/t220697ex1
Managing Intellectual Property, the leading publication in the IPR sector, has published the results of its survey for the previous year. Laine IP has received a new MIP STAR, with our lawyer Tom-Erik Hagelberg receiving a MIP STAR mention for his trademark work.
In total, 9 Laine IP experts have received the MIP STAR award. Others include Tatu Ahlskog and Kathy Wasström for patent work, and Tom-Erik Hagelberg, Reijo Kokko, Jemina Koskela and Joose Kilpimaa for trademark work.
In addition to the MIP STAR awards, Tiia-Riikka Kittilä, Liisa Sarnes Salokoski and Joni Vehmas have been awarded the “Rising Star” award.
We are particularly proud that Kathy Wasström has been selected for the “Top 250 Women in IP” list in addition to the MIP STAR award.
At the corporate level, we are at the highest “Tier 1” level in both the patent and trademark categories. You can find the rankings here.
These rankings are very important to us, as they are based on ratings from clients and peers. Already a quarter of our experts are included in the MIP STAR ranking, and at the firm level we have maintained the highest level.
A big thank you for all this goes to our clients and colleagues around the world who have contributed to the survey by commenting on our work. Our success in this important survey motivates us to keep improving, and we will do our part to support our clients in their success.
About a year ago we wrote about a referral to the Enlarged Board of Appeal, G1/24, which related to the use of description in interpretation of claims. The decision has now been given, according to which the description is to always be used when interpreting the claims. Thus, the EBoA did not answer the third question (is it possible to disregard a definition given in the description of a term used in the claims?).
The European Patent Office has traditionally been of the opinion that Article 69(1) EPC and the Protocol on the Interpretation of Article 69 EPC, according to which the extent of the protection conferred by an EP application or an EP patent is determined by the claims, but the description and drawings shall be used to interpret the claims, only concerns courts of law, not the EPO itself.
During the years this opinion has however partly changed, and the opinions as well as the decisions of the Boards of Appeal have diverged at the EPO. Thus, a referral was made to the EBoA. In the case at the basis of the referral, the independent claim had a term, which when interpreted as is typical in the field, made the claim novel, whereas when interpreted as defined in the description, made the invention previously known.
Furthermore, he Court of Appeal of the UPC gave, in March 2024, a decision UPC_CoA_335/2023, according to which the description and drawings are always to be used to interpret the claims, instead of being used only for resolving unclarities.
The decision of the EBoA is unambiguously that even though the claims are the starting point and the basis for assessing the patentability, the description and drawings are to always be used for interpreting them. It is thus not permitted to consult the description only when the person skilled in the art does not understand the claim on its own, or when the claim is unclear.
The referral also requested a decision on the question on which article of the EP the decision is based. The referral presented as options Article 69 and its Protocol on Interpretation, or alternatively Article 84. According to the EBoA, neither is a fully satisfactory basis for the conclusion reached. The first option is clearly intended for infringement actions, while the second is a guidance for the applicant on how to draft the application.
According to the EBoA, there is thus no clear basis in the EPC on how to interpret the claims when assessing patentability.
The EBoA concludes that as has been summarised by the referring board, the boards of appeal are unanimous in that the claims from the starting point and the basis for assessing the patentability. However, there are two lines in the decisions of the boards on appeal on the question of whether the description and drawings are to always be used for interpretation of the claims, only when something is unclear.
According to the EBoA, the latter interpretation, i.e. that the description and drawings are to be used only when something is unclear, is however contrary to the terminology of Article 69, and thus against its principle. Further, it is contrary to decisions of courts.
This led the EBoA to conclude, that it is not in the interest of the EPO to deal with this issue in a manner that is different on how it is dealt with in those courts, that deal with patents granted by the EPO.
The exhibition booth of Exertus Oy from Seinäjoki drew a steady stream of visitors at this year’s Bauma trade fair in Munich, as the manufacturer of control systems for mobile machinery introduced itself to potential customers. According to Sami Takaneva, Exertus’ Head of Marketing and Communications, the attention the company received at the world’s largest construction machinery trade fair was many times greater than in previous years. This was partly due to the booth’s renewed appearance.
“Updating the company logo and all marketing communications was a worthwhile investment. Clarifying the brand supports our growth leap in international markets,” Takaneva says.
Exertus develops and provides control systems, as well as related software and components, for sectors such as earthmoving, mining, forestry, and specialty vehicles. Their solutions include vehicle control, hydraulic management, user interfaces, and machine safety systems.
“An intelligent control system is the brain of a machine. Our solutions are suited to applications where reliable performance, durability, and ease of integration are essential.”
Exertus’ customer base includes both domestic and international machinery manufacturers. One such client is Normet, with whom Exertus has developed control solutions for underground vehicles and spraying equipment.
In consumer markets, a company’s brand is everything—but according to Takaneva, it is also crucial for an industrial subcontractor.
“For us, the Exertus brand is a symbol of trust and credibility. Our products and services are often part of customers’ critical systems, where quality and performance are of utmost importance. When a customer sees the Exertus name on a device or software, it signals a safe, tested, and reliable solution,” Takaneva explains.
As part of the brand renewal, the company registered the Exertus® trademark in its key markets. In addition, Exertus uses product-specific brand names, which are protected as necessary.
“Trademark protection helps prevent misuse of our name without permission or with compromised quality.”
Takaneva notes that protecting trademarks also supports long-term customer relationships, as it ensures continuity and a consistently developing product range.
“The value of the Exertus brand doesn’t come just from visibility—it stems from its ongoing representation of quality and expertise.”
In managing trademarks, Exertus works closely with Laine IP.
Exertus brings a business-driven perspective to trademark management—what the company wants to protect, why, and in which markets. Laine IP, in turn, acts as an expert partner in both strategic planning and practical execution.
“Laine IP is responsible for tasks such as drafting applications, handling official procedures, and monitoring and enforcement,” Takaneva says.
He emphasizes that the collaboration is built on continuous dialogue.
“Laine IP brings the legal expertise. We define the commercial goals. The division of work functions well—allowing us to focus on product and brand development, while Laine IP ensures protection is carried out effectively and correctly.”
According to Takaneva, a successful partnership with an IP law firm is based above all on trust, expertise, and an understanding of business needs.
“It’s important to us that our IPR partner can look at things not only from a legal but also a strategic perspective: what’s worth protecting, to what extent, and in which regions. A good partner also dares to ask questions, suggest solutions, and challenge when needed.”
Takaneva expects the IP law firm to communicate clearly, respond quickly, and translate even complex legal matters into business-relevant insights.
“Laine IP has met these expectations excellently. Their expertise and experience are evident in how smoothly and proactively they operate in various situations—whether it’s trademarks, contracts, or international protection.”
“This kind of partnership provides peace of mind and lets us focus on our core competencies. We know our IPR matters are in good hands,” Takaneva emphasizes.
In addition to trademarks, Exertus has carefully considered the protection of other intellectual property rights. The goal of the company’s IPR strategy is to safeguard both its own and its customers’ competitiveness—and ensure that developed solutions retain their value well into the future.
“Our key IPR concerns involve copyrights related to software and electronic design, as well as trademark protection. In terms of patents, we mainly focus on customer-specific solutions, where ownership of innovations is defined on a project basis.”
“We also have proprietary technology, the uniqueness of which we protect either through technical means, such as closed software architectures, or—when needed—via formal IPR methods.”
Exertus, part of the Swedish Dacke Industri Group, has an annual turnover of around 10 million euros. The Ostrobothnia region is home to many similarly innovative technology companies. According to Takaneva, businesses operating in international markets have already recognized the importance of IPR matters quite well.
“Still, there’s untapped potential.”
Takaneva has observed that the benefits of trademarks and other IPR rights are often viewed too narrowly—limited to technical protection or legal obligations. IPRs may not yet be seen as strategic tools for brand building, market positioning, or securing customer relationships.
“For companies like Exertus, this offers an opportunity to share expertise and raise awareness of how IPR protection can genuinely support growth and internationalization in a cost-effective and sustainable way.”
Text: Matti Remes
Photos: Exertus Oy
The 2025 edition of the IAM Patent 1000 Guide has now been published. The Guide includes recommended patent law firms and a listing of 1000 standout patent practitioners from across the globe.
We are pleased to share that Laine IP has maintained a Silver ranking and been provided with excellent reviews in the Patent Prosecution category: “Laine IP stands as one of the best patent agencies in Finland, specialising in top-tier patent prosecution work.” “Direct, swift and efficient”, its team is a favoured choice among local start-ups and major conglomerates alike.
Several individuals received recognition in the guide. On the electronics and ICT side, Managing Director and European Patent Attorney, Jouni Smolander; as well as EPA Jarkko Tiilikainen and EPA and US patent agent Toimi Teelahti were named as Recommended Practitioners.
Within our Chemistry team, European patent attorneys, Kaisa Suominen, Hanna Laurén, and Kathy Wasström, as well as our U.S. patent attorney Mark Scott were named as Recommended Practitioners.
A link to Laine IP’s page within the 2025 IAM 1000 Guide can be found here.
We sincerely appreciate our clients’ continued trust in our firm and their feedback in IAM’s selection process.
Typically, upon allowance of a patent application, a patent applicant receives a Notice of Allowance setting a 3-month deadline (with no extensions of time available) to pay an Issue Fee to proceed to patent grant. Following payment of the Issue Fee, the USPTO mails an Issue Notification notifying the applicant of the exact date of issue of the subject patent (US patents always issue on a Tuesday).
This shortening of time to patent issuance has been made possible by the USPTO’s move to electronic grants (eGrants) (first introduced in April 2023). An eGrant is an official electronic version of a granted U.S. patent, which replaced paper-based versions as the official version. An eGrant is readily accessible by the public through the USPTO’s Patent Center interface and can be downloaded any number of times.
Although there remains time between the payment of the Issue Fee and transmittal of the Issue Notification, and time between the Issue Notification and Issue Date, the total time period time between payment of the Issue Fee and the Issue Date can now be even shorter.
Thus, we recommend that all decisions regarding any continuing applications (divisional, continuation, or continuation-in-part applications) be made by the time the Issue Fee is paid and that any continuing applications be filed before the next Tuesday following payment of the Issue Fee to ensure copendency of the application (of the issuing patent) and any continuing applications.
If you have any questions, please do not hesitate to contact a member of Laine IP’s US IP Team. Thank you.
The growth of Paptic, a developer of materials that replace plastic, is supported by a carefully built IPR portfolio. In matters of patents and trademarks, Laine IP has been a key partner for the company since its inception.
At Sokos and Stockmann, customers’ clothing purchases are packed not in plastic or paper bags, but in shopping bags made of a material that feels soft and textile-like. These are made using a Finnish manufacturing method developed by Paptic, which produces durable, strong, and recyclable packaging materials as alternatives to plastic.
Esa Torniainen, Paptic’s Chief Development Officer and one of its founders, says that Paptic material combines the best qualities of paper, plastic, and fabric. The innovation, based on development work done at VTT Technical Research Centre of Finland, enables the production of fiber-based products from softwood pulp in a way that conserves both energy and water.
“There are two parts to the Paptic innovation. The first is the recipe—an innovative combination of raw materials that results in a functional and recyclable material. The second part is foam-forming technology. It’s not yet in use, but we’re preparing to scale it,” says Torniainen.
Currently, Paptic’s materials are produced by three contract manufacturers in Europe, using traditional papermaking technology along with Paptic’s recipes and expertise.
In addition to shopping bags, Paptic’s materials are used to package food products, cosmetics, and consumer electronics. They’re also used for packaging toys, leather goods, and tools.
Torniainen emphasizes that Paptic is not a single product, but a family of products designed for different applications. The company aims to comprehensively protect its manufacturing technology and products to ensure freedom to operate in international markets. Strong IPR protection is also crucial for enabling future licensing of the technology to other manufacturers.
“We seek patents and trademarks in a broad and global manner. Of course, we always carefully evaluate what kind of protection is reasonable and cost-effective,” says Torniainen.
Currently, Paptic has nearly 10 patent families for its products and production methods. In addition to registering the Paptic name as a trademark, the company has trademarked the names of each of its four product families. It has also applied for trademarks for products not yet on the market.
“When it comes to IPR, it’s essential to understand what and where to protect. But it’s at least as important to consider how we should go about protecting things. In these discussions, we place great value on Laine IP’s strong expertise,” says Torniainen.
Laine IP became Paptic’s IPR partner when the company was founded in 2015.
Torniainen believes that for a startup, it’s crucial to find a reliable partner for patents and trademarks—one who is ready to start building cooperation even when the business is still in its early stages.
“An IPR partner must also believe in the startup’s potential. We value the fact that Laine IP has taken the time to thoroughly understand our innovations and our business.”
Torniainen expects more than just technical patent application writing and trademark registration from a patent office. He has come to appreciate Laine IP’s strategic and consultative approach.
“Patents and trademarks are not just about protecting technology and products; they’re also a major part of business development. A good IPR partner dares to challenge us and offer their own suggestions. That’s valuable to us, as we are innovators, not IPR experts.”
According to Torniainen, a credible and well-constructed IPR portfolio and strategy are becoming increasingly important for Paptic as the company grows. They are of interest not only to investors, but also to larger clients looking for long-term partnerships.
“A carefully considered IPR strategy is also important for us internally. It supports us as we steer the business and develop new solutions.”
Torniainen notes that one of the key challenges for a startup is constant change. That’s why the IPR strategy, patents, and trademarks must be designed not only for current protection, but also to meet future needs.
Paptic’s growth is driven by a global megatrend seeking alternatives to plastic. In many countries, for example, the use of plastic bags is restricted, and there is a move toward packaging made from renewable materials.
Paptic’s solution first gained traction in shopping bags. In addition to Sokos and Stockmann, reusable bags made from Paptic’s material have been tested at a few K-Supermarkets in Finland. The bags are also used by Luhta and by Moomin Characters, known for Moomin products, which is also a shareholder in Paptic.
Among international customers, one of the largest is the UK retail chain Iceland. According to Torniainen, Paptic’s main focus is on international markets, which already account for the majority of the company’s revenue—€7 million in 2023.
Text: Matti Remes
Photos: Paptic Oy
The Managing IP Awards is the legal industry’s most extensive and highly regarded awards programme for IP law firms. It spans multiple areas of IP practice and includes over 50 jurisdictions. Each year, our research analysts gather insights from thousands of firms, IP professionals, and their clients through interviews and surveys.
The winners of the 2025 MIP EMEA Awards were celebrated at a gala in London on 10 April 2025, marking the event’s 20th anniversary. We are delighted to announce that Laine IP has once again been named Firm of the Year in the Trademark Prosecution category for Finland. This prestigious recognition highlights Laine IP’s top-tier expertise in intellectual property and our commitment to delivering high-quality client service.
Trademark Team: Jemina, Joose, Annika, Tom-Erik, Emma ja Reijo
In addition, European Patent Attorney Kathy Wasström has been awarded the Practitioner of the Year title. This is a fantastic acknowledgment of Kathy’s professionalism and dedicated work in the IP field. Kathy travelled to London to accept the award and shared her thoughts on the experience:
“I’m grateful for the opportunity to represent our company at such an incredible event. The whole evening was amazing, and the atmosphere was absolutely electric. But the best part was meeting all the familiar faces and making new connections.”
Kathy on the red carpet.
We warmly congratulate Kathy and our trademark team, as well as all the other companies and professionals recognised at the event. We also extend our sincere thanks to everyone who provided recommendations for the research process. These awards are highly appreciated and highlight our experts’ uncompromising and skilled work in the ever-evolving IP landscape. We’re excited to move forward from here!
Stay up to date on the latest IPR news and updates by subscribing to the Laine IP newsletter.
Unified Patent Court (UPC) has published its first annual report. UPC started its operation on June 1, 2023, and hence year 2024 was the first calendar during which UPC has operated. The UPC system simplifies patenting in Europe such that it is possible to request for unitary effect for a granted European patent in the countries, which have ratified the Agreement on a Unified Patent Court (UPCA). A European patent with unitary effect may also be referred to as a Unitary Patent (UP).
In the 1st annual report of the UPC, the President of the Court of Appeal of the UPC, Klaus Grabinski raises for example the following:
“Almost 50 years after the signing of the EPC, it is the UPC that now makes it possible to enforce a European patent across borders, in one court common to all those EU Member States that have ratified the Agreement on a Unified Patent Court (UPC Member States), completing the European patent system and bringing to fruition many years of effort.”
According to Grabinski, the UPC has been busy right from the start and as of December 2024, 663 actions had been filed in total. On the other hand, almost 550 000 European patents have been opted out from the jurisdiction of the UPC, out of which the largest part (about 470 000) before the UPC started its operation though.
In addition, the UPCA entered into force in Romania on September 1, 2024. It is therefore now possible to request for unitary effect for a granted European patent in 18 countries, which have ratified the UPCA.
We will continue to actively monitor the situation and continue to report on developments.
If you need more information regarding UPC, your Laine EP representative and our UPC specialist team (upc@laineip.fi) will be happy to answer your questions.
The original news can be found from here.
Managing IP has announced the nominees for the EMEA Awards 2025.
The Managing IP Awards programme recognises remarkable intellectual property achievements and developments in the last year.
Laine IP has been shortlisted in both the “Patent Prosecution” and “Trademark Prosecution” categories. Additionally, European Patent Attorney Kathy Wasström has received an impressive nomination for “Practitioner of the Year.”
The winners of the MIP EMEA Awards 2025 will be announced at the awards ceremony in London on April 10, 2025, marking the event’s 20th edition.
We warmly congratulate all the shortlisted companies and professionals. Laine IP’s recognition is a result of hard work and commitment to handling our clients’ intellectual property rights with top-tier expertise in the ever-evolving IP field.
👉 Read more and view all nominees here
🔹 Follow us on social media for the latest updates on IP and Laine IP’s news!
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