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After reading the patent claims, someone interested in the invention may wonder, “How can this be put into practice?” The description of the patent will help you find the answer!
The purpose of the description is to provide the necessary support for the patent claims to enable the invention to be used. The description contains a short and a descriptive title for the invention, and a general and specific part describing the invention.
The general part describes the field of the invention and the prior art related to the invention, how the invention solves or improves upon the disadvantages of the prior art, and the means necessary to achieve this. The prior art may be presented, for example, by reference to earlier patent publications, although it is advisable to make as few references as possible to facilitate prosecution.
In the specific part, the invention is described in detail by means of embodiments and possibly by reference to drawings. For example, if the invention is a new type of lawnmower blade, the structure and function of the blade should be described in sufficient detail to enable a person skilled in the art to reproduce the blade and to understand its advantages over the prior art. It is not necessary to include all the details, such as the dimensions of the bolts used to secure the blade, if the advantages of the invention do not relate to them and are obvious to the person skilled in the art.
If the description includes a drawing, it is recommended to include a list of all the figures in the drawing as an introduction to a specific part of the description.
Examples are necessary when the means for carrying out the invention and the advantages achieved over the prior art are not obvious from the described function or structure of the invention alone. For example, if a patent application alleges that a lawnmower blade according to the invention stays sharper for longer, an example of an experimental arrangement can be presented, in which a reference blade and a blade according to the invention are used for a certain period of time in conditions that similar to actual lawnmowing. Finally, the example may refer to a microscope image or a graph accompanying the drawings illustrating the difference in sharpness between the two blades after the experiment.
In patent applications, examples play an important role not only in demonstrating the differences between the prior art and the invention, but also in proving that the invention can be carried out. The lack of examples is particularly problematic in patent applications related to chemistry. The structural formula of a chemical compound can easily be set out in a patent claim, but if the person skilled in the art cannot make the compound on the basis of the description, invention is not sufficiently disclosed. Where a general structure for a group of compounds is claimed, it is beneficial to provide a wide range of examples of the preparation and the effects of compounds belonging to that group to credibly demonstrate the utility of the invention within the full scope of the claim.
Sometimes, the Office examiner may raise concerns about the sufficiency of the disclosure if the description has left doubt as to the applicability of the invention within the full scope of the patent claim. Although added subject matter cannot be introduced to the patent application, additional examples may be submitted to most offices to support the findings already presented in the description. Some deficiencies in the description may be difficult or even impossible to remedy after the filing of the patent application. Therefore, careful preparation of the patent application by a professional will help to ensure that your invention is successfully protected.
Any questions? Do not hesitate to contact our experts – we’re here to help you!
We are pleased to share that two of our colleagues, Thomas Öhman and Adam Herrala Bricker, have successfully passed the USPTO registration examination. Congratulations to Thomas and Adam! Laine IP now has four registered U.S. patent practitioners, further strengthening our ability to support clients with U.S. patent filings and patent prosecution. We also welcome Benjamin Finley as a trainee. Benjamin’s ICT experience will further augment the team’s capabilities.
These milestones reflect Laine IP’s ongoing commitment ensuring that our clients receive the highest level of support in navigating the complexities of U.S. patent law. Further, as Thomas and Adam are both located in Turku, Finland, we now have a wide set of services available via our Turku office: Expertise in European patents, Trademarks, and U.S. patent prosecution.
Having joined Laine in late 2023, Thomas has been a valuable part of our U.S. IP team, contributing with his expertise in chemistry-related technologies. As a U.S. patent agent, Thomas is well-positioned to assist clients in securing patent rights in the U.S.A. Thomas is able to provide services in Swedish, Finnish and English.
” I’m pleased that Laine has two new registered U.S patent agents. This broadens our firm’s expertise in several industries. Additionally, I’m happy to collaborate closely with Mark, Adam and Toimi to further develop our U.S. patent prosecution services.”
Learn more about Thomas here
On the non-chemical front, Adam has demonstrated strong technical and legal skills during his time with us, especially when working on AI inventions. Adam joined us in August 2024 from his previous position as a postdoctoral researcher at the University of Turku.
“Doubling the number of registered practitioners is a real achievement for the U.S. team. It significantly expands our capabilities, allowing us to provide our clients with faster, more personalized service, as well as broadening the overall knowledgebase of the team.”
Learn more about Adam here
To prepare the patent application, a meeting is scheduled where the features of the invention and the protection objectives are discussed together with the client. The invention must be new and not obvious to a skilled person in the field. Therefore, the patent application must be filed before the invention is publicly disclosed, for example, on websites, at trade fairs, or when the first products are sent to customers. No new matter can be added to the application during the application process, so it is important to ensure that the invention is described as accurately and in as much detail as possible when drafting the application.
The patent application includes several parts:
It is advisable to use the assistance of a patent attorney who is familiar with the patent field and the preparation of patent applications, as a professionally and carefully drafted application has better chances of success.
Once the patent application is complete, it is filed, meaning it is submitted to the patent office for examination. The application first undergoes a formal examination to ensure that all necessary documents are included and the filing fee has been paid.
Following this, the patent office examines the patentability of the invention, i.e., whether the invention is new, involves an inventive step and is industrially applicable, and ensures that the description and patent claims meet the patent legislation.
If the requirements for patenting are met and there are no obstacles to the acceptance of the application, the patent office will grant the patent. If the basic requirements for patenting are not met or there are other objections to the grant of the patent, the patent office will issue an office action requesting corrections. In these cases, the applicant has the opportunity to, within the given deadline, make amendments to the patent application, for example, by amending the patent claims, and/or submit arguments for novelty and inventive step. Any amendments must be based on the application as filed.
Once the applicant has submitted the response to the office action, the patent office will review the submitted documents. After that, the patent office has the option to grant the patent, submit a new office action, or submit a decision of refusal. Typically, the patent office issues 1 to 3 office actions before grant or refusal of the patent.
The patent application is published 18 months after the filing date. With this publication, others are able to access and review the application.
After the examination of the patent application and any office actions, the patent office makes a final decision on the grant or refusal of the patent. If the invention meets all the requirements for patentability, the patent is granted. After the grant, the patent holder has the right to exclude others from using the patented invention without permission.
If the patent office refuses the patent and you do not agree with the decision, you can file an appeal.
Patents are generally country-specific, and the exclusive rights apply only in the countries where the patent holder has a valid patent. Usually, after the first application, i.e., the priority application, it may be necessary to extend the patent protection to other countries. The invention may also have undergone improvements or modifications as a result of further development that were not included in the priority application. Consequently, subsequent applications can be filed, and it is advisable to file them within 12 months of the filing date of the priority application so that the subsequent applications share the same filing date and any publications that may have occurred in the meantime do not prevent the patent from being granted. If this 12-month period has passed and the invention has not been published otherwise, one may consider filing subsequent applications before the priority application is published.
A patent can remain in force for up to 20 years from the filing date by paying renewal fees. Depending on the country, renewal fees may need to be paid starting from the application date (usually from the second year after the application is filed) or only from the date the patent is granted onward.
Patenting is a multi-stage process and requires careful preparation and precise monitoring. Through patenting, the owner of the invention can ensure that the invention is not used by others without permission. To ensure the success of the patenting process, we recommend contacting our experts well in advance of the publication of the invention.
Any questions? Do not hesitate to contact our experts – we’re here to help you!
Laine IP’s trademark practice has been ranked in the Silver category in this year’s listing. The reasoning provided by the WTR 1000 publication includes the following: “Laine IP stands as a prominent firm in the Finnish IP landscape. The firm’s trademark team serves clients from multiple locations and is a reliable partner for Finnish, European, and U.S. brand owners seeking top-tier trademark services.”
Team leader, Reijo Kokko has been recognized for his brilliant grasp of legal and business needs. According to the WTR 1000 Reijo is known for “his pragmatic and proactive approach to trademark management, meticulously monitoring trademarks in selected countries and delivering robust asset protection”.
Portfolio management ace Joose Kilpimaa is recommended by colleagues as a “go-to practitioner in the local market for swift and commercially savvy advice”.
The WTR 1000 states that Tom-Erik Hagelberg “demonstrates exceptional skill in grasping his clients’ visions while utilising sharp business insights to provide top-quality trademark prosecution services.”
Moreover, our clients have emphasized the importance of practitioners like Tom-Erik, Reijo and Joose in educating and identifying the best ways to protect IP rights in a cost-effective manner.
Additionally, Tom-Erik Hagelberg and Reijo Kokko were named as Recommended Individuals in the 2025 WTR 1000’s listing.
We are grateful to all of our clients and partners, whose trust and support have been an essential part of our success in securing this position in the Silver-category. We remain committed to providing and developing high quality trademark services to our clients also in the future.
WTR 1000 2025 rankings here
On behalf of Laine IP, I would like to thank all our customers for their trust in us during 2024. I would also like to thank our staff for a great year. Below are some highlights from this rewarding year:
We had the pleasure of welcoming European Patent Attorney Torsti Härkönen (electronics), patent engineer Pia Lindblom (biochemistry) and patent attorney Christoffer Karlsson (chemistry). In December, we were joined by Jari Hovinen, European Patent Attorney, and Tarja Lantto, IP Coordinator. The US team welcomed US patent attorney trainee Adam Herrala Bricker.
In the spring, we received great news: our trademark practice received the Trademark Firm of the Year (Finland) award in the Managing IP Awards
After midsummer, we learned that 7 of our patent experts were recognized in the IAM 1000 guide. In addition, Laine’s experts were ranked as MIP Stars: Tatu Ahlskog and Kathy Wasström (in the patent category) as well as Joose Kilpimaa and Reijo Kokko (in the trademark category). European Patent Attorneys Tiia-Riikka Kittilä and Joni Vehmas, as well as EU Trade Mark and Design Attorney Jemina Koskela, were recognized as Rising Stars.
One of the highlights of the year was our autumn seminar “45 years riding IPR waves”, where we were able to enjoy each other’s company, excellent presentations and Laine’s own beer in beautiful autumn weather. Thanks again to all the speakers and participants!
We also welcomed three newly qualified European Patent Attorneys; Tiia-Riikka Kittilä, Viivi Ruusila and Maria Weintraub completed this demanding examination. Heli Alasaari successfully passed the European patent administration certification (EPAC) exam in the autumn. In addition, Thomas Öhman and Adam Herrala Bricker passed the US agent exam.
During the year, the company invited six new shareholders and we moved to new, larger premises within the same building. Our financial performance was also excellent.
In view of these positive results, we will be able to continue to develop our service as well as our skills in 2025. The coming year will certainly be interesting. Thank you for being with us on our journey!
We thank all our clients for the past year and wish you a Merry Christmas and a Happy New Year 2025!
This year we made a donation to support Save the Children’s work in Finland.
Laine IP Oy team
Laine IP’s patent paralegal Heli Alasaari succeeded in passing the third edition of the European patent administration certification-examination (EPAC) earlier this autumn. The examination is rather demanding, as it is not enough to have a long experience to pass it, one also needs to study hard.
The examination has two parts, a first part with multiple choice questions and a second part with open questions. The second part is corrected only if enough points is obtained in the first part.
Also this year the exam questions were partly very tricky, concerning also situation that one encounters rarely, if ever, in the work of a patent paralegal. A further challenge comes from the time pressure, as it is necessary in a short time to present answers to situations, part of which might be such that the candidate does not have any practical experience of them. Thus, in order to be successfull in the exam, one needs not only to have experience and study, but also to have steady nerves and good stress tolerance.
The persons who have passed this Europe-wide exam can thus refer to these four letters also in order to show proof of their knowledge.
Laine IP warmly congratulates Heli of this great achievement! We are glad that your are part of our team.
The Patentee can start proceedings for infringement in a national court or the UPC. Similarly, a third party having received a request to cease alleged infringement can start proceedings in a court for a declaration of non-infringement.
In case opposition proceedings are pending at the EPO, this third party can intervene in the opposition proceedings, in certain conditions, within three months of the institution of the proceedings in a court. Intervention is also possible when the opposition proceedings are already in the second instance, i.e. an appeal is pending at the Board of Appeal.
A question on whether the intervener can continue the appeal proceedings on their own has been asked at the Enlarged Board of Appeal already previously (G3/04). In this case, the EBoA decided that if all original appellants withdraw their appeals, the appeal proceedings are terminated. The status of the intervener that joins the proceedings only at the appeal stage is thus at the moment different from that of the parties to the first instance proceedings.
The question has been referred to the EBoA again, G2/24, based on the decision T1286/23 of the technical BoA. This decision criticises the earlier decision of the EBoA, i.a. as not being aligned with the Travaux Préparatoires of the EPC1973. The questions referred are as follows.
After withdrawal of all appeals, may the proceedings be continued with a third party who intervened during the appeal proceedings? In particular, may the third party acquire an appellant status corresponding to the status of a person entitled to appeal within the meaning of Article 107, first sentence, EPC?
The technical BoA proposes in its decision T1286/23 that an intervener that files their intervention during appeal proceedings could have three different statuses depending on the situation (reasons 3.9.4). The intervener would be a respondent, if the patent was revoked in the first instance (this would require the payment of opposition fee only, as an opponent does not have a right to appeal in such a situation); the intervener would have the same status as the appellant, if they pay the appeal fee in addition to the opposition fee; or the intervener would be a party as of right if they so wish and pay the opposition fee.
Currently, there is no basis in the EPC for the payment of appeal fee in this situation and therefore, it will be interesting to see how the EBoA will view such a proposal. As an alternative to the payment of the appeal fee, the technical BoA proposes that in case all appeals are withdrawn, the case is automatically remitted to first instance (reasons 3.16.2), which would leave the possibility to appeal for the intervener, should the decision of first instance not be as desired. This seems an option that would be easier to implement, not necessitating any changes in the Implementing Regulations
Most notably, the increases to existing fees include:
US National Application base filing fees will increase from 1,660 USD to 1,810 USD (664 USD to 724 USD for Small Entities).
Base filing fees for Nonprovisional applications filed directly in the U.S. under 35 U.S.C. 111(a), including divisional or continuation applications of National Stage Applications, will increase from 1,820 USD to 2,000 USD (728 USD to 800 USD for Small Entities).
Excess claim fees will significantly increase – double for excess claims over twenty (20)! Accordingly, it is highly recommended to reduce claims to 20 total / 3 independent claims, upon filing or shortly after filing.
RCE fees will significantly increase as well, particularly for the 2nd+ RCE. Given the high cost of an RCE, an Applicant may strongly wish to consider entering the Appeal process. For comparison, the costs for entering the Appeal process (fees of which will also increase) are also listed below.
Extension fees will increase as well, rendering non-timely filed responses more costly than ever.
The fee for proceeding from allowance to issuance of a US Patent (Issue Fee) will increase slightly: $1,200 -> $1,290 (Large Entity) and $480 -> $516 (Small Entity).
Effective January 19, 2025, there are also new fees for continuing applications (continuation, divisional, or continuation-in-part applications) filed over 6 years and 9 years from the application’s earliest benefit date, as well as new fees for IDS listings with over 50 cumulative cited references. The new fees are presented below:
Of note, the earliest benefit date (EBD) cannot be the filing date of a foreign application or the filing date of a provisional application to which benefit is claimed under 35 U.S.C. 119(e).
There will be new fees, based on the total number of cited references to the USPTO in an IDS, when greater than fifty (50) references.
For more information and the specific fees, please see Federal Guidelines
If you have any questions on this article or on US patents generally, please contact a member of our US IP Team.
In our experience, acceptance into the AFCP 2.0 Program was relatively Examiner-dependent and subjective. When it worked, the AFCP 2.0 Program allowed the Applicant to make clarifying and/or “minor” substantive amendments to the claims After Final, while giving the Examiner at least some additional searching time. As such, Examiners were at least less likely to readily dismiss any substantive claim amendments (made after Final) in an Advisory Action as “requiring further search and consideration.”
The AFCP 2.0 Program is being terminated for economical reasons. According to the USPTO, the AFCP 2.0 Program has allegedly led to significant administrative costs to the USPTO, and a proposed fee structure by the USPTO aimed at offsetting said costs was met by public resistance.
The decision to terminate the AFCP 2.0 Program will likely require Applicant to even more carefully consider whether to make claim amendments after receiving a Final Office Action.
With the AFCP 2.0 Program gone, the After-Final options remain to do one or more of the following:
There are pros and cons to each of the above strategies. The best strategy, however, is to try and avoid being in a position After Final where the Examiner has not yet examined any subject matter of importance to the Applicant. This is further of increased importance given the upcoming January 2025 USPTO fee increases, which will make the Request for Continued Examination (RCE) and Extension fees more costly than ever.
To reduce the likelihood of RCE and Extension fees, we strongly recommend reviewing the Specification and corresponding foreign applications and making amendments / adding new claims as needed at various stages before receiving a Final Office Action, namely:
At Laine IP, we aim to make US patent prosecution as efficient and effective as possible, while meeting our clients’ business objectives. If you have any questions on this article or on US patents generally, please contact a member of our US IP Team.
Laine IP Oy
Contact Details
Tel: (09) 6859 560
Fax: (09) 6859 5610
Email: posti@laineip.fi
Mailing Address
Laine IP Oy
PL 339
00181 Helsinki
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