-
Services
-
No need this year to gather travel documents and travel for a minimum of 15 hours from Helsinki across five time zones to Hangzhou in China. The reasons for not doing this are of course terrible and although it is great to travel to new places and meet colleagues from around the world there are a number of benefits, not least the above-mentioned 15hours and five time zones. AIPPI World Congress 2020 has been held entirely online and for members of AIPPI, free of charge.
This year instead of being spread over a relatively short three or four days, AIPPI World Congress 2020 started on 5th October and ended on 14th October. The reason for this is, no doubt, time zones.
A typical day started at 12:30 with two panel session running in parallel until 2:00 pm, followed immediately by two roundtable session running in parallel from 2:00 pm until 3:00pm, a plenary session from 3:00 to 5:00 pm and second brace of roundtable sessions between 5:00 and 6:00 pm followed ultimately by a doublet of panel session starting at 6:00 and ending at 7:30 pm. Overlapping sessions were poles apart content wise reducing the likelihood that a delegate might need to be in two virtual rooms at once.
As you can see, being in Europe is a blessing timetable wise. For those colleagues in Sao Paolo, an early session would have started at 6:30 am, while for those in Hangzhou, a late session would have finished at 12:30 am. Neither of these times are impossible for those panelists who are scattered around the world or for those congress delegates who desperately want to participate in Q&A at a panel session.
Delegates who couldn’t get out of bed, couldn’t wait to get to bed or felt the need to be in two places at once were also catered for. All of the panel sessions have been recorded and will be available for delegates to view until 15th November through the AIPPI World Congress portal.
In addition to panel sessions, roundtables and plenary sessions there is traditionally the opportunity for one-to-one meetings with colleagues past, present and future to discuss cooperation between firms across continents. These opportunities were also available in the online arena. There was a lounge area for making initial contact after which parties could agree (or decline) a meeting.
One aspect of an online conference that is impossible to replicate is of course the social events in the evenings in which even IP professionals can loosen up and talk non IP-related trivia to others who are just as interested in not talking about IP.
So is the online conference the new normal? In the short term it is and simply because in addition to the threat of Covid 19 it makes economic sense. Flight costs, hotel costs, daily allowance costs are all reduced to zero. In addition to attending sessions, delegates are able to work fulltime efficiently from wherever it is that they choose to work these days. Long term it is more difficult to guess, but if organisations such as AIPPI decide that sessions will be made available online at either no cost or at a greatly reduced cost, conferences could become a thing of the past. This of course is not what we wish or hope for. Despite the cost and jet lag-related benefits, no man is an island. It is a pleasure to meet and discuss with colleagues from around the world and it is a pleasure to visit new and interesting places. I hope to be able to meet colleagues in person and explore Hangzhou in October next year at AIPPI World congress 2021.
Business Essentials for Scientists (BES) (2 ECTS) is a course aimed at doctoral students at University of Turku and Åbo Akademi University. After the course the doctoral student has a basic understanding of business development and commercialisation in the academia.
Our expert, European Patent Attorney, Christoffer Sundman, will talk about “Protecting your invention” on October 15, 2020.
Laine IP Oy (Laine IP) has had an internal U.S. Team, located in Helsinki, to handle U.S. patent and trademark prosecution since 2010. The close collaboration of the U.S. Team with our other experts is a key component in securing the strongest global Intellectual Property (IP) rights for our clients.
A recent sequence of events in a U.S. patent application illustrates the benefit of such collaboration between members of Laine IP in handling a U.S. IPR matter for a Finnish company:
Traditional models between U.S. practitioners (agents) and European Patent Attorneys (EPA) do not fully utilize collaboration. Such a process for responding to a U.S. Office Action involving a client, an EPA, and a U.S. agent is shown below:
In contrast, Laine IP’s EPA/U.S. agent approach with its internal team can be illustrated as follows:
As can be seen, the Laine IP approach utilizes, depending on the case, significantly greater collaboration between the parties and promotes more efficient prosecution with potentially broader patent protection in line with the client’s specific business goals. Additionally, Laine IP’s clients can easily discuss their cases directly with our internal U.S. practitioners located in Helsinki – either in a face-to-face meeting or over the phone in the same time zone.
To date, this collaborative approach has resulted in three hundred twenty eight (328) U.S. patents since the inception of the U.S. team in 2010. The below graph illustrated the number of U.S. Patents obtained by Laine IP on behalf of its clients over the past 7 years and total from 2010-present. Note: Laine IP was previously named Seppo Laine Oy.
In summary, the above positive results were achieved by the strong collaboration between Laine IP’s European counsel (EPA), U.S. practitioners, clients, and the U.S. Patent Office. The client’s active and exemplary involvement in the patent prosecution process also allows the U.S. patent prosecution process to be completed more efficiently and in line with the client’s IPR goals. Further, the combined expertise of both the European and U.S. practitioners and full access to the relevant information, including corresponding foreign applications and internal notes, has allowed Laine IP to effectively obtain the protection desired by the client in the U.S. market. Laine IP is constantly improving its processes so that our clients receive the benefits of collaboration between its European and U.S. practitioners.
We thank our clients for entrusting their IP to our care and are happy to answer any questions you might have, including discussing how we may increase the effectiveness of your U.S. prosecution at usdesk@laineip.fi
Since 2011, prioritized examination has been available for U.S. patent applications via the Track One pilot program. Now, the newly announced Fast-Track Appeals program provides the opportunity to request prioritized examination of Appeals as well. We introduce both programs below and provide some insights as how they might be used.
The Track One prioritized examination means that the USPTO will aim to provide a Final Office Action (commonly a second technical office action) in less than a year. Consequently, the examination process is started much faster than normal, as the average time to the first Office Action is around 14 months. This is meaningful as any information within Office Actions obtained within the priority year may be used when considering any corresponding patent filings in other countries.
The Track One program requires a substantial fee (4000 USD for large entities), which may reduce its attractiveness with cost-sensitive applicants. The USPTO discount policy applies to the Track One fee as well, which means that small and micro entities may request Track One for 2000 USD and 1000 USD, respectively. Track One is available for most types of patent applications with certain restrictions, but reissue applications are excluded from the program.
In situations where the applicant and the Examiner disagree regarding the patentability of the application, the first instance of appeal is the USPTO’s Patent and Trial Appeal Board (PTAB). Depending on the situation, the appeal process may require extensive work from the U.S. patent agent to ensure that the Appeal Brief properly lays out the facts of the case along with the arguments for patentability and any relevant case law. Another factor which affects the decision to file an appeal is the relatively long time it takes for the USPTO to handle appeals, as the average time to decision is 14 months. The appeal process may thus “freeze” the patent process for some time.
The USPTO has now announced a new Fast Track Appeal pilot program, which allows requesting expedited processing for appeals for a moderate fee (400 USD, no fee reductions). When expedited processing is requested, the PTAB will endeavor to reach a decision within 6 months of the request. The Track One programs and the Fast Track Appeal programs are separate entities. Thus, requesting Track One expedited prosecution of a patent application will not result in expedited processing of an appeal in that application. Nor will requesting Fast Track Appeal expedite the prosecution of the patent application being appealed. During the next year, the USPTO will accept only 500 Fast Track Appeal requests, and the program will terminate in summer 2021. The USPTO has generally continued expired pilot programs with minor changes, so it may be that expedited processing for appeals is here to stay.
USPTO Fast Track Appeal announcement
The Fast Track Appeal pilot program continues the USPTO policy of providing faster processing in return for a fee. While the Track One program speeds up the early stages of the patent application process for a substantial fee, the Fast Track Appeal program is aimed at allowing applicants to obtain a decision on appeal quickly. The expedited appeal process along with the moderate official fee will most likely result in more situations where an appeal is the best way to proceed. However, the appeal process is still costly for applicants and the pilot program does not reduce the costs of appealing. As every patent application is different, expert advice should be taken when considering the use of either of these pilot programs.
Disclaimer: This post is provided for educational purposes only and does not constitute legal guidance.
Laine IP has again been recognized with the highest ranking in its category as a Tier 1 Patent Prosecution firm in Finland, and also has been recognized as a Recommended Trade Mark Prosecution firm in Finland.
These achievements have been made possible by our experts and collaboration with our dedicated clients and foreign partners. We thank both our clients and partners for their trust and feedback.
For more than 20 years, the prestigious Managing IP publication in the IPR industry has assessed the quality of work and customer satisfaction of patent and trademark attorneys through its annual survey. The IP STARS ranking is based on extensive interviews and surveys of IPR professionals and clients covering more than 80 countries. It has become one of the most respected and well-known indicators in the IPR field.
“Vatsaystävällinen Pehmeä” is a bread baked with the enzyme developed and patented by Fazer as a result of a long-term development work. This enzyme breaks down the fructan in wheat and rye during the baking process, thus reducing the amount of compounds that can cause digestion-related symptoms to people with sensitive stomach – without affecting the taste or texture of bread.
The non-alcoholic hand foam developed by the Finnish Nolla Antimicrobial is effective against enveloped viruses, such as coronaviruses. The case was confirmed by studies at the BluTest laboratory in Scotland.
Read more on Nolla Antimicrobial’s website
Fennia Prize is one of Finland’s most prominent design competitions. It is arranged by Design Forum Finland, Fennia Group, Elo and the Finnish Patent and Registration Office.
Our warmest congratulations!
“The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.
In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.”
However, “in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.”
In response to the current coronavirus situation, Patent Offices worldwide are allowing deadlines to be extended. At Laine IP, our policy is to handle any deadlines without using coronavirus extensions. Therefore, we intend to only rely on such extensions when requested to do so. Handling a deadline on time without using a coronavirus extension will have no impact on the application procedure.
Different jurisdictions are applying different measures, which are being updated from time to time. Please see the list below for measures taken by selected Patent Offices – information updated as of May 4, 2020.
Please do not hesitate to contact our professionals in case you need to extend your deadlines.
The European Patent Office is adopting following preventing measures:
All time limits expiring on or after 15 March 2020 are currently extended until 2 June 2020.
All oral proceedings in examination and opposition proceedings scheduled until 30 April 2020 are postponed unless they have already been confirmed to take place by means of videoconferencing.
Please find more information at: https://www.epo.org/news-issues/covid-19.html
The Finnish Patent Office will not extend due dates laid down in the law (for example the priority period). However, an extension may be granted for Office periods, such as the due date to respond to an Office Action, if the Applicant provides a reasoned statement when requesting the extension.
Please find more information at: https://www.prh.fi/en/asiakastiedotteet/2020/P_20544.html
The United States Patent and Trademark Office has stated that certain Office periods due between March 27 and May 31, 2020, including replies to Office Actions, will be extended by 30 days if the filing is accompanied by a statement that the delay was due to the coronavirus. The text of the necessary statement is as follows: A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.
Please find more information at: https://www.uspto.gov/coronavirus
The German Patent and Trademark Office will take into account the current situation when granting of requests for extensions of time limits.
Please find more information at: https://www.dpma.de/english/our_office/publications/important_notices/importantnotices2020/noticeof10march2020/index.html
The EUIPO has declared that all time limits expiring between 9 March 2020 and 17 May 2020 are currently extended until 18 May 2020. In particular, the following statutory time limits are covered by the extension:
Please find more information at: https://euipo.europa.eu/ohimportal/en/news/-/action/view/5726800
The World Intellectual Property Organization is continuing operations under the PCT.
Please find more information at: https://www.wipo.int/portal/en/news/2020/article_0015.html
On behalf of everyone here at LAINE IP, we hope that you stay safe and healthy.
Laine IP Oy
Contact Details
Tel: (09) 6859 560
Fax: (09) 6859 5610
Email: posti@laineip.fi
Personnel Contact Information
Mailing Address
Laine IP Oy
PL 339
00181 Helsinki
Subscribe our Newsletter
Follow Us
Contact
Search