Brexit – it’s a deal!

The UK left the European Union on 1st February. What does that actually mean? Are any actions needed to secure your IP rights?

As a consequence of Brexit, IP rights currently in force in EU will cease to have effect in the UK. However, there will be a so-called transition period that will last until 31 December 2020. During that period EU IP law remains applicable to, and in, the UK, in the same way that it does now, with all the rights and obligations that entails. This means that EU trademarks and EU designs will continue to be valid and enforceable also in the UK until the end of the year. European patents will be untouched even at the end of the transition period as the European Patent Office is independent of the EU. In other words, no rights will be lost as a result of Brexit!

The Withdrawal Agreement concluded between the EU and the UK aims to secure that the holder of intellectual property rights which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the UK under the laws of the United Kingdom. This means that these EU rights will automatically be transformed into national registered rights in the UK.

Applications for EU trademarks and EU designs still pending on 1st January 2021 as well as accepted EU designs that remain unpublished on 1st January 2021 will not automatically cover the UK. The same applies to international trademarks pursuant to the Madrid system and international designs pursuant to the Hague system designating the EU, which have not yet been granted protection in the EU by 1st January 2021.

Owners of EU trademark and EU design applications that are pending on 1st January 2021 will be given the opportunity to apply for national protection in the UK within a nine–month window, maintaining the filing and priority or seniority dates of the pending EU application. After expiry of the transition period, separate trademarks and design rights will be required in the UK and EU, if protection is needed in both territories.

We will continue to provide updates on the implications of Brexit on IP rights holders and contact our clients when action is needed. Should any queries related to the effect of Brexit on your IP rights arise, please feel free to contact us at any time.

Laine IP Oy included in Worldwide Listing of Top Patent Firms for Securing U.S. Patents!

According to Harrity LLP listing 2019’s Top Patent Firms, Laine IP Oy (formerly Seppo Laine Oy) secured eighty (80) U.S. Utility Patents for its clients in 2019, which ranked #1 in Finland and #1 in the Nordic region.

The listing includes law firms having secured 50 or more U.S. utility patents in 2019.

Laine IP Oy’s U.S. Team consists of Matthew Swanson (Mechanical, Electronics), Toimi Teelahti (Electronics, Computer-related Technologies), Mark W. Scott (Chemistry, Materials, Biotechnology), and Leena Marquis (Chemistry).

With all members of the group in its Helsinki office, Laine IP’s U.S. Team can seamlessly collaborate with you and your European/Finnish Patent Counsel to fully optimize global prosecution strategy, and ensure smooth, efficient, and effective U.S. prosecution.

In particular, the presence of Laine IP Oy’s U.S. Team within Finland continues to produce effective U.S. prosecution (as demonstrated by 2019’s results) due to the availability of all parties for discussion and Examiner Interviews within the same/similar time zone, the elimination of additional layers of communication with counsel based in the U.S., increased cost control, and increased responsibility for U.S. prosecution.

Please contact a member of Laine IP Oy’s U.S. Team to discuss how we can also optimize your U.S. prosecution from the Nordic region in 2020.

We are now officially Laine IP Oy

Our official company name is Laine IP Oy as of 24.1.2020.

Our business ID 0590525-5 remains unchanged.

Our addresses, phone numbers and other contact information also work as is.

Merry Christmas and Happy New Year 2020!

Navigate – Nordic maritime expo in Turku on 22-23 January 2020

Navigate is Finland’s biggest maritime event, where the marine industry, shipping companies and maritime logistics meet. The event is an important meeting place offering the participants an opportunity to network and create new contacts and reinforce the existing ones.

This year the top themes are e.g. digitalization, green shipping, maritime logistics and future of knowledge and know-how.

LAINE Intellectual Property will attend Navigate 2020 in Turku on January 22.1.-23.1.2020. Our European Patent Attorneys Teemu Kiviniemi (M.Sc. Naval Architecture and Ocean Engineering) and Jouni Smolander (M.Sc. Electrical Engineering) as well as our European Trademark and Design Attorney, IP Lawyer Jemina Koskela (LL.M.) are at your service.

Come and enter the marine IPR world. Let´s boost your marine business to the next level with the power of IPR. You can visit us at booth A55 or make an appointment in advance via e-mail to Teemu teemu.kiviniemi@laineip.fi

See you at Navigate 2020!

Finland’s Independence Day 6 December

Please note that our offices are closed on Friday 6 December 2019 due to Finland’s Independence Day.

Happy Holidays!

“Reasonable expectation of success” is not to be confused with the “hope to succeed”

A new subsection has been added to the EPO Guidelines on obviousness in the field of biotechnology (G-VII, 13: Inventive step assessment in the field of biotechnology). The new Guidelines apply as from 1 November 2019.

This new subsection imports especially Boards of Appeal case law from T 296/93 on the meaning of “reasonable expectation of success” in the context of an obviousness analysis. According to the new Guidelines, “in the field of biotechnology obviousness is considered at hand not only when results are clearly predictable, but also when there is a reasonable expectation of success.” Thus, for rendering a technical solution obvious, it will now be sufficient pursuant to the new Guidelines, “to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success.” The Guidelines point out that  the “mere ‘try and see’ attitude in light of the closest prior art does not necessarily render the solution inventive.”

Further, the updated Guidelines emphasize that “reasonable expectation of success“ must not be confused with the “hope to succeed”. In the new subsection of the Guidelines, the foregoing is exemplified by the case where researchers know beforehand that, when attempting to reach a technical solution, they will  need “not only technical skill but also the ability to make the right non-trivial decisions along the way”, then this hope should not be considered to amount to a “reasonable expectation of success”.

SLUSH 2019: November 21-22 – Our Experts on Site

Mark W. Scott featured in NW Lawyer magazine

Our U.S. Patent and Trademark Attorney, Mark W. Scott, is featured in November’s Northwest Lawyer (US) magazine!

Since joining the firm in February 2019, Mark has obtained more than a dozen allowances in US patent applications via substantive responses and Examiner Interviews.

Mark is part of our Chemistry team and our internal U.S. team, which also specializes in computer-related, electronics, and mechanical inventions, as well as designs and trademarks.

To discuss efficient prosecution of your patent and trademark portfolio, please contact Mark or a member of our U.S. team.

Mark´s story in NW Lawyer – Nov 2019 – page 36

USPTO issues updated October 2019 eligibility guidance

The United States Patent and Trademark Office has again updated the Patent Eligibility Guidance directed to Office personnel, specifying how patent claims are to be treated under 35 U.S.C §101. The newest update follows the January 2019 update and continues an unofficial trend of the USPTO issuing annual or biannual updates dating back to 2014. The guidance and the accompanying material are available at the USPTO’s Eligibility Guidance website here.

The October 2019 Guidance provides four new exemplary cases with detailed analysis. The examples are directed to the life sciences and data processing technical field. In addition, the Guidance provides further details on the following aspects of §101 rejections:

(I) evaluating whether a claim recites a judicial exception;

(II) the groupings of abstract ideas enumerated in the 2019 PEG;

(III) evaluating whether a judicial exception is integrated into a practical application;

(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and

(V) the application of the 2019 PEG in the patent examining corps.

Based on our initial review of the updated Guidance, it appears that the issue of patent eligibility in the U.S. is moving towards increased clarity.  However, it should be kept in mind that legislation or new precedential court cases may change the situation in the coming months. We are currently digesting the new guidance within the US team at LAINE Intellectual Property and will present a synopsis of the Guidance within the upcoming weeks – stay tuned!