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European Patent Attorney, U.S. Patent agent Toimi Teelahti has been elected Chairman of the Board of Laine IP. Previous chairman Kathy Wasström will continue as a member of the Board, as well as board members Simo Hovi, Tom-Erik Hagelberg and Mirja Matilainen.
Since joining us in 2016, Toimi has become familiar to many of our clients, particularly through his work on US patent prosecution. He is particularly interested in developing our customer and employee experience. Toimi would like to thank all the Laine personnel, including his predecessor Kathy, for their trust and exemplary work.
” IPR as a business will undergo major changes in the near future. A good example of this is the new unitary patent system in Europe. With our young and enthusiastic team, Laine IP will have excellent opportunities to improve our performance and grow.,” says Toimi.
European Patent Attorney Kathy Wasström will continue as a member of Laine’s Board. Kathy states:
” Fresh perspectives and ideas are critical in board work. Being Chairman has been a fantastic role for me as I think Laine is the best company and we have wonderful personnel. However, I wanted to pass the baton to my successor in good time. I am very pleased with our choice of a new Chairman, as Toimi has ideas that are a perfect fit for our company. ”
Laine IP thanks the previous Board for its work and wishes the new Board good luck.
The EUIPO’s SME Fund grant scheme provides financial support for the protection IP to small and medium-sized enterprises. As part of this program, eligible SMEs can apply for the patent voucher, which will be available as from April 27, 2023. The voucher is worth 1500 euros and can be used to cover costs related to patent applications and patent novelty searches carried out by public authorities.
1. Submit an application with the EUIPO website
2. Wait for the grant decision and patent voucher to be issued
3. Apply for a patent!
4. Submit a reimbursement request to the EUIPO
NB Remember to wait for the grant decision and the voucher before submitting a patent application.
The EUIPO SME Fund support program for 2023 will continue until December 8th – but hurry, the funds are limited and available on a first come, first served basis.
Don’t forget that the SME Fund 2023 also offers grants for the protection of trademarks and designs as well as for covering the cost of an IP Scan! Learn more about the SME Fund program on the EUIPO website here or contact our SME Fund expert directly:
Reijo Kokko, reijo.kokko@laineip.fi / +358 44 070 4779
Patent applications must contain an abstract which briefly (typically with a maximum of 150 words) summarises the invention. In most jurisdictions the abstract is only for information, and its final content is determined by the examiner.
Claims should, when possible, be written in two parts, where the characterising part lists the novel and inventive features of the invention. The characterising part follows the terms “characterised in that”.
The scope of protection of patents and utility models is defined by the claims. The claims thus describe in technical terms the invention for which protection is applied for or obtained. Claims are thus the most important part of the application. They must be clear and concise, and a reader must understand the claims on their own, without reference to the description or the drawings. The claims may however comprise reference numbers used in the drawings, while the reference numbers do not affect the scope of protection.
A claim that is in the same category (for example a device, a system, a method) than another claim, and comprises all its features. Often a dependent claim expressly refers to another claim with a number.
If an application contains more than one invention (from the filing or because the claims have been amended), the second or further inventions can be divided to their own application. A divisional application can only contain subject-matter present in the original (parent) application. It has the same effective date as the parent application.
The scope of protection of a design application is defined by the drawings (or photos), and thus the drawings must be identical or very close to the product coming to the market. In some cases, the scope of protection of a trademark application is also defined by a drawing. Patent and utility model applications often have drawings which illustrate the invention and help understanding it. Such drawings do not need to be detailed and to the scale, they can be simplified.
A patent and utility model application has, in addition to the claims defining protection, a description which describes the invention in more details. The description typically has a very brief introduction, a brief background part which discusses the prior art, and a description of the invention. The description of the invention often also includes different variants of features of the invention, also variants that are not in the claims. The description may also contain examples, especially in the field of chemistry.
An invention often has different embodiment, wherein the invention defined in the independent claim is the most narrow (i.e. it has the least features), and the other embodiments have additional features. Different embodiments are described in the claims and the description mainly in view of the situation where the original independent claim is not patentable, but needs to be narrowed by adding additional features therein.
Applications in different countries relating to a same design, trademark or invention for a family. The family is based on a priority application, i.e. the family comprises all applications/registrations which have the same priority, as well as the priority application/registration.
An official fee which has to be paid for the application to remain pending. In some countries the filing fee must be paid to obtain the filing date. During prosecution, the applicant typically must also pay further official fees, at different stages of the prosecution.
A claim which does not refer to another claim and does not contain the subject-matter of another claim in the same category. Claim 1 is in practice always an independent claim, followed by dependent claims referring to it, and thereafter a possible second independent claim.
In a two-part claim, the first part of the claim. The preamble contains those features of the invention which are known, and it ends with the terms “characterised in that”.
A registered trademark does not automatically provide protection for all existing goods and services. Goods and services for which trademark protection is sought have to be identified when filing the application. To make this more simple, a system for classification has been created. This system is applied almost everywhere in the world. The trademark classification system is based on 45 classes for different goods and services. Each class contain an alphabetical list of goods or services in that class. When filing a trademark application, the applicant adds those goods and services in the application for which protection is sought by using the classification system. The added goods and services will determine the final scope of protection of the trademark.
Find more abbreviations in the field of IPR here.
A few considerations with the change:
If you have any questions on the new eGrants (US electronic patents), please do not hesitate to contact Mark Scott or a member of our US IP Team.
A link to the USPTO announcement page on the subject
The European Patent Office (EPO), as well as some other offices such as the Finnish office, assesses inventive step using a so-called problem-solution approach. An important part of this approach is the technical effect achieved by the feature(s) by which the invention differs from the closest prior art.
As we previously told in this news item, a question on this issue was referred to the Enlarged Board of Appeal of the EPO. The decision is finally out, but what does it say? Do we need to draft the applications differently in the future? Does the decision have some other effect?
The referral included a question on how the principle of free evaluation of evidence is to be considered in the situation where the technical effect is proven by a publication that is later than the filing (or priority) date of the application.
The Enlarged Board of Appeal slightly re-phrased the questions asked, and the decision gives has a very clear statement that such evidence may not be disregarded solely on the ground that it had not been public before the filing date of the application or patent. The decision also clearly states that the principle of free evaluation of evidence is to be followed also in cases where the applicant or patentee provides proof of technical effect after the filing date of the application.
The formulation of the Enlarged Board of Appeal differs slightly from what is i.a. used by the EPO in their Guidelines for examination.
According to the decision, an applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The Guidelines (G-VII, 5.2) on the other hand states the following: “It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested.”
The difference is thus that previously the technical effect was linked to a technical problem originally disclosed in the application, but the new decision refers more broadly to the technical teaching and invention in the application. It can thus be expected that this issue will in the future be interpreted in a somewhat more liberal manner. It will be interesting to see how this will be formulated in the next edition of the Guidelines in March 2024.
As expected, the decision also clearly puts forward that it is not possible to give a clear yes- or no-answer applicable to all cases, but rather that the situation depends on the case. For some reason, according to the decision, this may also depend to some extent on the technical field. However, as the patentability criteria should be the same irrespective of the technical field, it remains to be seen how this will be interpreted in practice.
In practice it is quite safe to say that from the viewpoint of an applicant or patentee, the situation is at least not worse than before. The rights of third parties are also secured even in the future, as even after this decision the applicant or patentee cannot come up with a completely new and surprising technical effect, so to say out of the blue, to validly argue inventive step, if the effect is in no way connected to the original invention.
It thus seems that this new decision does not have an effect on how applications are drafted. In the future, it will therefore still be necessary to try to include all possible technical problems that the invention and its embodiments solve, as well as any evidence and support thereof in the application when drafting.
In particular in the field of chemistry and biotech, it is however often necessary to have also comparative examples in order to support the inventive step. According to the decision G2/21, the applicant still does not need to carry out an exhaustive preliminary search to find all possible relevant closest prior arts, and to perform comparative examples in view of all of them prior to filing the application. It is of course important to remember that this decision only applies to the EPO, and not for example outside of Europe.
In addition to what is written above, it is worth to note that in the intermediate conclusions of the decision, it is stated that according to established jurisprudence of the Boards of Appeal of the EPO, it is clear that late filed evidence can be used in proving sufficiency of disclosure in a much narrower way than for inventive step. Examples and comparative examples will thus be important in drafting also in the future.
Link to the decision https://www.epo.org/law-practice/case-law-appeals/recent/g210002ex1.html
Eija Kurvinen, a patent paralegal at Laine IP, was successful in the first European patent administration certification-examination (EPAC-examination), held end of last year. The aim of the examination is to test the knowledge of the candidates on formalities relating to European Patent Convention (EPC), Patent Cooperation Treaty (PCT) and the Paris Convention as well as national laws applying to European patents and patent applications.
A similar examination did not previously exist on the European level, and presumably the inspiration of the examination has been national examinations in some countries, such as Germany. The preparation time was rather short, as the examination was first announced in summer, examination materials were available in September and first model questions in October.
The examination consists of two parts, the first being a set of multiple-choice questions and the second a set of open questions. The second part is corrected only if sufficient points are obtained in the first part.
The examination is a demanding one, both because of the level of the questions and the time pressure. Some questions also concerned situations which paralegals do not usually encounter in the daily work. The questions have also been suggested as possible training material for candidates to the European Qualifying Examination (EQE), which accurately describes their level of difficulty.
Laine IP warmly congratulates Eija on this great achievement and courage to participate in the first-ever examination! We are proud that you are part of our team.
Three European Patent Attorneys of Laine IP, Mirja Matilainen, Jarkko Tiilikainen and Kaisa Suominen now have the right to represent clients before the new Unified Patent Court (UPC), which will start functioning on 1.6.2023. This right is based on additional qualifications. Mirja and Kaisa are holders of Diplôme d’Université d’Etudes Superieures sur le Contentieux des Brevets en Europe from the university of Strasbourg, Jarkko has the Certificato di superamento dell’esame conclusivo del Corso di Proprietà Industriale – Brevetti, from Politecnico di Milano.
Mirja, Jarkko and Kaisa can thus for example file requests to opt out European patents without a need for a power of attorney, which reduces the bureaucratic burden.
If need arises, they can also represent parties in litigation, although we do recommend using also a lawyer.
In the future, when the European Patent Attorneys of Laine IP participate in additional training, we will have more EPA’s who have the right of representation.
For more information on UPC, see here.
If an office action is not replied to or another required action is not carried out, the application is typically deemed withdrawn, i.e. it is no longer pending. This is thus not an active action from the applicant, as a withdrawal, but a passive action. Often an application that is deemed withdrawn can be revived by requesting further processing within a time limit (typically two months), by paying the required fee and carrying out the missing act(s).
A date by which something needs to be done. Due dates (or time limits) typically come either from a law (such as the end of the priority period) or from an office action. Some due dates can be extended either by simple request or by a combination of a request and a fee. Some due dates are not extendible.
The filing date of the application (see below). If the application validly claims priority, the effective date is the priority date, used for assessment of novelty and inventive step.
The date on which the application is filed at the office, and on which it fulfils the requirements for obtaining a filing date. If the application does not fulfil these requirements, a filing date is not obtained until the requirements are met.
End of protection. The protection can end because the protection period expires, or because the protection is no longer maintained.
The period of protection typically denotes the maximum protection time. Trademark registrations can be in force eternally, as long as the registration is renewed in time. Often, it is also necessary to prove to the office that the trademark is in use. Design registrations as well as patents and utility models can only be in force for a limited period of time. For designs, this is typically 15-25 years depending on the country. Patents can be in force for a maximum of 20 years and utility models usually 10 years. Most often a renewal fee needs to be paid regularly to keep the protection in force.
An application is usually filed first in one office, and within the priority period (depending on the type of protection, 6 or 12 months), an application can be filed in other offices, and the trademark, design or invention of the application is examined as if the later application was filed on the priority date. The priority period thus allows the applicant to consider where to seek protection, often get a first opinion from the first office, and for example obtain funding for applying protection in other countries.
Abbreviations in the field of IPR here.
Agent / Attorney
The representative of the applicant during prosecution in the office. Typically, agents are persons skilled in their own art, i.e. they have been trained to draft applications and prosecute them. Trademark and design agents are typically lawyers by training, while patent agents have a university diploma in a field of technology or life science.
Appellant
A party that files an appeal on the decision of the office. Most typically an appeal is filed at a boards of appeal of the patent office, in Finland at the Market court.
Applicant
The party seeking protection (patent, trademark or design). Mostly, the applicant is a company or an organisation such as a university or a research organisation. The applicant can also be a natural person, such as an inventor.
Designer
An individual who has created the design, which has been applied for registration. The designer is always a person. The proprietor of a design can be a company, to whom the designer has transferred the rights to the design. The transfer has to be confirmed in the application. Applies to Finnish applications only.
Examiner
The civil servant of the office, whose duty is to examine the applications filed at the office. At the Finnish patent office, patent applications are examined by one examiner, at the European patent office by an examining division, composed of three examiners.
Inventor
Patent and utility model applications must indicate an inventor, who must be a natural person. Inventor is the person who has created a technical solution to a technical problem, i.e. made the invention. Usually there are several inventors for one application.
Opponent
A party different from the proprietor, who believes that no protection should have been granted, and files an opposition at the office, after grant or registration. In some countries, oppositions are handled before grant. The opponent is party to the opposition proceedings.
Person skilled in the art
The inventive step of an invention and sufficiency of disclosure of a description of a patent application are assessed in relation to a person skilled in the art. This is a fictive person, who knows everything made available to the public, but is unable to make any combinations unless expressly pointed towards such combination. The person skilled in the art can also be a group of persons, for example from different fields of technology.
Proprietor
The applicant becomes the proprietor when the protection is granted or registered. The protection is thus propriety of the proprietor.
Third party
A company or person, who during the application or opposition proceedings is of the opinion that no protection should be granted or upheld, and who wishes to make this opinion known to the office. This is done by filing so-called third party observations, which are sent for information to the applicant/proprietor, while the third party does not become party to the proceedings.
Abbreviations in the field of IPR here.
We are pleased to announce that our trademark group has been praised in the latest edition of WTR 1000: “The group is esteemed for its “swift, practical and solution-oriented” approach, with seasoned attorneys Tom-Erik Hagelberg and Joose Kilpimaa keeping a long-list of illustrious patrons and taking the lead on some of the firm’s largest portfolios. WTR 1000 newcomers Lena Pitkänen and Reijo Kokko also expertly handle domestic and global portfolios, including everything from clearance searches to opposition and litigation services.”
Laine IP’s profile can be found here.
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.
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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