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No worries, it might still be possible, just contact your IPR partner.
Should one wish to obtain protection for an Invention or a design, no publication should take place before filing of the application. Thus, it is best to contact your IPR partner well in advance of any publication. Sometimes one can however forget it, or one does not think about protection in advance. Is all hope lost in such a case?
In many countries yes, but luckily not in all, depending on the form of protection. In such cases it is possible to take advantage of the so-called grace period. Grace period denotes the time that starts from publication of the invention or design, and during which it is still possible to apply for protection in certain countries.
For patents, the grace period is known, among the most common countries, only in the US, Canada, Australia, Korea and Japan, and lasts 12 months. In Russia, the grace period exists but lasts only 6 months. The European Patent Convention and for example the patent law of Chine does not recognise such grace period.
In most countries one must, upon filing, inform the patent office that grace period is to be applied, i.e., such notification cannot be added at a later stage. Typically, it is not possible to benefit from the grace period in cases where the publication was as a patent application or a granted patent. Also, for most countries, the time limit is calculated backwards from the date of filing, not the date of priority. This means that depending on the country, one must file either directly a national patent application or a PCT-application within 6 or 12 months from the publication.
In most countries, it is also possible to obtain protection via a patent even after someone else has published the invention, without permission from the owner of the invention. For example, at the European Patent Office (EPO) and in China the time limit is 6 months from publication. Often one needs to be able to prove the unpermitted publication, and for example at the EPO, it is required that the publication was made with an intention to harm the owner of the invention.
For designs, grace period is available in several countries, and its length varies from 3 to 12 months. However, for example in China a grace period for designs is not recognised, either, and it is thus not possible to apply for a design registration in China after disclosure In Finland, within the EU and in the US, the grace period is 12 months.
Should the time limit for taking advantage of the grace period be already over, it is possible to try to find a feature in the invention that is not yet public and based on which it would still be possible to apply for a patent. For designs, it is similarly possible to modify the design in such a manner that it fulfils the requirements of novelty and individual character, or it might be possible to obtain protection for a three-dimensional trademark. In the EU, a so-called unregistered Community design is also recognised. One can claim such protection provided the first disclosure of the design has taken place within the EU, and that the design was novel and had individual character at the time. The disadvantages of an unregistered Community design include narrow scope of protection and, compared to a registered Community design, a significantly shorter period of protection, only three years from disclosure. In some countries, it is also possible to register a copyright, which is worth considering in case other forms of protection are not available.
Trademarks do not have a similar requirement for novelty as designs and patents, but also for trademarks, it is recommended to apply for protection at an early stage. Without a registered trademark, it may for instance be difficult and time-consuming to prevent any unauthorised use by others.
If you or your company have concerned or foresee a threat of potential litigation from a US patent owner, there are presently three (3) primary avenues to challenge the validity of the US patent outside of a Federal courtroom and within the United States Patent and Trademark Office (USPTO). The three avenues are: Post-Grant Review, Inter Partes Review, and Ex Parte Reexamination. The differences there between and key features of each are summarized in the Table below. One key difference, for example, is that Post Grant Review is available to attack patent validity on any basis while Inter Partes Review and Ex Parte Reexamination are limited to novelty/obviousness challenges based on printed publications.
If you or your company have concerns over any third party’s patent, please contact a member of our US Team to discuss your concerns.
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SUMMARY OF U.S. POST-GRANT PATENT CHALLENGE PROCEEDINGS |
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| Post-Grant Review | Inter Partes Review | Ex Parte Reexamination | |
| Expected Costs | 175-250,000+ USD | 100-200,000+ USD | 20-50,000+ USD |
| Expected Timeframe | 12-18 months with an aim of under 12 months. | 18-24 months | 2-3 years |
| Who can initiate proceeding? | Any third party except for a plaintiff challenging validity of the subject patent in a US court. | Any third party except for a plaintiff challenging validity of the subject patent in a US court. | The Patent Owner or a Third Party, including USPTO Director. |
| Window for Filing | No later than 9 months after patent issuance or issuance of reissue (patent must have an effective filing date on or after March 16, 2013). | Later of: (i) on or after 9 months after patent issuance or issuance of reissue; or (ii) termination of Post-Grant Review. 1 | Anytime during enforceability of patent (may be 6 years past expiration due to past damages). |
| Basis for Attacking Validity of the Subject Patent(s) | Any ground (except for failure to comply with the best mode requirement). | 35 USC § 102 (novelty) and/or 35 USC § 103 (obviousness) based upon one or more patents and/or printed publications. | 35 USC § 102 (novelty) and/or 35 USC § 103 (obviousness) based upon one or more patents and/or printed publications. |
| Standard to Overcome for Initiating Proceeding | “More likely than not” that at least one of the claims challenged is unpatentable. | A “reasonable likelihood that the petitioner would prevail” with respect to at least one challenged claim. | Substantial New Question of Patentability. |
| Anonymity | No, all real parties in interest must be identified. | No, all real parties in interest must be identified. | Yes, can be anonymous. |
| Extent of Estoppel | After a final decision (by PTAB), the petitioner, third party, or privy of the petitioner is estopped from challenging the patent(s) in the USPTO, ITC or district court on any ground the real party of interest raised or which could have been reasonably raised in the Post Grant Review. 2 | After a final decision (by PTAB), the petitioner, third party, or privy of the petitioner is estopped from challenging the patent(s) in a district court on any ground the real party of interest raised or which could have been raised in the Inter Partes Review. 3 | None officially, but may be tougher to overcome similar arguments which failed downstream. |
| Effect on Concurrent Proceeding | If a court case for invalidity was filed, a Post Grant Review cannot be filed; if a Post Grant Review is filed, then later filed court proceeding automatically stayed. | If a court case for invalidity was filed, an Inter Partes Review cannot be filed; if an Inter Partes Review is filed, then later filed court proceeding automatically stayed. | No effect. |
| Third Party Involvement following initiation | Post grant Review provides for limited discovery, a Petitioner reply, and an oral hearing before a three judge panel before a decision on the merits. | Inter Partes Review provides for limited discovery, a Petitioner reply, and an oral hearing before a three judge panel before a decision on the merits. | None, unless the patent owner files a statement which rebuts the requester’s assertion(s) of a substantial new question of patentability. 4 |
| USPTO Branch Handling Proceeding | Patent Trial and Appeal Board (PTAB) | Patent Trial and Appeal Board (PTAB) | Different Examiner(s) from that of Examination |
[1] Also, note per 35 U.S.C. 315(b), an Inter Partes Review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
[2] See also 35 U.S.C. 325(e)(2) stating “The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”
[3] See also 35 U.S.C. 315(e)(2) stating “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”
[4] See 37 C.F.R. 1.535.
Revocation at PRH is possible only based on non-use of the trade name. If the trade name has been registered contrary to law, cansellation action needs to brought at the Market Court.
Revocation of a trade name requires that it causes harm. The trade name may, for instance, form an unnecessary obstacle to a later trade mark or trade name of someone else. Revocation may be applied for if the trade name has not been used in the past five years and there are no acceptable reason for non-use. PRH may cancel the registration of the trade name in its entirety or partially by restricting the line of business if registered too broadly.
If you have any questions regarding this topic, please do not hesitate to contact our experts.
A divisional patent application is a type of patent application, which contains subject matter disclosed in a previously filed parent application. Typically, the description and drawings of such divisional application are identical with or similar to the parent application. However, the claims of the divisional application defining the scope of protection must be different to the claims of the parent application. It is not possible to add new subject matter (new information) to the divisional application, i.e. the divisional application can only be based on what is disclosed in the parent application.
In other words, by filing of a divisional application it is potentially possible to obtain patent protection for aspects or viewpoints not claimed but disclosed in the parent application. The divisional application will be considered as an independent patent application after filing, i.e. its prosecution is not dependent on the parent application. It will expire at the latest at the same time as the parent application.
The last possible moment for filing a divisional application varies from one country to another. For example, at the European Patent Office, filing of a divisional application is only possible as long as the parent application is pending, i.e. before grant of a patent in the parent case. In some countries, it is only possible to file a divisional before replying to a first office action, while in others, it may even be possible to file a divisional shortly after grant.
This depends on the country and the possible last moment for filing the divisional. A brief consideration should ideally be made every time the claims are amended, i.e. to think whether the possible deleted subject-matter could still be pursued in a divisional application. Similarly, in case the application has on purpose been drafted such that it contains unclaimed subject-matter in its description, this is good to keep in mind during prosecution of the application.
Generally, filing of a divisional application is available in most jurisdictions.
Filing of one or more divisional application(s) can i.a. provide the following advantages:
The costs for filing and prosecution of a divisional application are similar to the costs of filing and prosecution in the parent case. However, in some jurisdictions, such as at the European Patent Office, all renewal fees that have been due for the parent application, must also be paid for the divisional application upon filing.
Filing of a divisional application is of particular interest with regards to technology considered as future core technology.
Filing of a divisional application is of particular interest with regards to future core markets. The need to file a divisional application also depends on the expected scope of protection in a given jurisdiction.
Should you have any questions, please, do not hesitate to contact us!
“Laine IP is driven by a passion for trademark law and brands. It positions itself as a trusted partner to the businesses it assists and has astutely developed its offering to include services lines that fuel company growth and strengthen existing frameworks. Anchoring the practice, Tom-Erik Hagelberg stands out for his energy, enthusiasm and no-nonsense approach. Although equally adroit on both sides of the contentious/non-contentious divide, Hagelberg is best known for his finely honed strategies and opposition capabilities.”
Tom-Erik Hagelberg
WTR1000 is the only independent definitive guide dedicated to identifying the world’s leading trademark professionals and firms in over 80 jurisdictions around the globe. All the WTR1000 rankings for Finland can be found here.
Press release for the WTR 1000 can be found here.
We are pleased to announce that our firm was the representative of record for our clients on: 134 granted European (EPO) patents; 77 issued US patents; and 73 granted Finnish patents in 2020.
The 77 issued US patents brought the overall total number of US issued patents to over 350 for Laine IP Oy’s internal US Team since its creation in 2010.
We wish our clients continued success in 2021!
In November we published a brief article about EPO’s new practices relating to oral proceedings. Some changes came into effect with the new year, namely with respect to Boards of Appeal and hearing of witnesses.
Previously, a Board of Appeal could only hold oral proceedings by ViCo if all the parties agreed. As of 1.1.2021, the decision is at the Board’s hands, and no consent is needed from the parties.
Additionally, the EPO changed its practice (as well as rules 117 and 118 of the European Patent Convention) as of 1.1.2021 to allow hearing of a witness also by ViCo. For any oral proceedings held by ViCo, the witness must also be heard by ViCo and in the presently unlikely event of the oral proceedings being held at the premises of the EPO, the witness can still be heard by ViCo. Hearing of witnesses is not that common during EPO prosecutions, most cases concern oppositions where a public prior use has been presented against novelty. In such a case, a witness may be required to be heard to prove such use.
Merry Christmas and Happy New Year!
We thank you all for the past year and
look forward to a successful 2021.
Laine IP Oy
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This year we have made a donation to the Finnish Medical Foundation.
This could-would determination is, however, possible to utilize also as part of the problem-solution approach.
The could-would method is based on determining whether a person skilled in the art would have made a specific improvement to prior solutions, based on the available prior art. In other words, it is not sufficient that he/she could have made said improvement.
In the problem-solution approach, this could-would approach can be utilized when discussing the publication selected to represent the closest prior art. In said context, it is not sufficient to indicate that the person skilled in the art could have carried out the required changes to the closest prior art, to modify its teachings to provide the invention being evaluated. Instead, the prior art should guide the skilled person in the required direction, so that he/she would have made the required modifications.
Therefore, it is often determined, in this context, whether any of the known publications, i.e. the prior art, includes an incentive, based on which the person skilled in the art could have decided that the required direction of modifications would have been worth testing.
An example would be a case where a certain feature, missing from the publication representing the closest prior art, would make it possible to achieve a certain improvement for a certain product. If it is mentioned in the same publication that it would be of benefit to achieve said improvement, the publication could be considered to include said incentive, which would guide the person skilled in the art towards finding said improvement from another publication.
Similarly, the prior art can be examined to determine whether it includes a teaching that guides the person skilled in the art in the wrong direction (i.e. a “teaching against” the required modification).
For example, if a certain feature is included only in a comparative example, and is interpreted to have a negative effect on the invention described in this document, it can be considered unlikely that the person skilled in the art would still use that feature from another document and combine it with the disclosure from the closest prior art.
As in other methods related to the evaluation of inventive step, only the factors that were commonly known already before the filing date of the patent or patent application to be evaluated can be taken into account in the could-would determination.
See also:
The problem-solution approach in determining inventive step
Difficulties in the determination of the objective technical problem
The objective technical problem is the problem that is solved by the invention to be evaluated, but not solved by the publication considered to represent the closest prior art.
For example, the objective technical problem can be defined as how to improve the solution described by the closest prior art, or it can be defined as how to achieve a certain desired effect in an alternative manner.
In defining the objective technical problem, the point of comparison should be only the publication that has been selected to represent the closest prior art. At this point no other prior art should be considered, no matter how well known. This alone has already proven to be challenging.
Also other difficulties can be encountered when defining the objective technical problem. The definition should refer to some improvements or advantages achieved using the invention to be evaluated, and although this improvement or advantage is not required to be explicitly mentioned in the patent application, it should still somehow be apparent based on the application that such an effect is achieved.
For example, if arguments in favor of inventive step refer to the effect of a particular chemical agent in a particular context, it is sufficient if it is commonly known that said agent has said effect in said context.
Such required effects are, however, not always commonly known.
Although the advantages achieved using the invention are regularly referred to in patent applications, these do not necessarily include the specific advantages that are used in defining the objective technical problem. One possible reason for this is that the advantages used to define the objective technical problem should be ones that are achieved specifically in view of the closest prior art. The closest prior art might, however, not have been known by the applicant when drafting the patent application.
In defining the objective technical problem, any features of the invention, which fail to provide a technical effect (non-technical features), should be disregarded. Such features include, among others, features relating to:
It is, however, not always a simple task to determine which features are non-technical. In practice, most features of inventions have some impact on the overall technical effect of the invention, even if they, as such, are non-technical.
See also:
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