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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.
We are pleased to announce that Mark Scott has been appointed as the new Manager of the US IP Team, effective 01 February 2023. With 20 years of experience in Intellectual Property (IP), Mark brings a wealth of expertise to the US IP Team. Mark has been with Laine IP since 2019. The US IP Team (Mark Scott, Matthew Swanson, Toimi Teelahti, Samuel Moy, Ross Worrell, and Ida Laine) provides a full range of IP services including:
– patent application preparation and prosecution,
– trademark application preparation and prosecution,
– drafting of license and other IP-related agreements,
– drafting of validity, infringement, and freedom-to-operate opinions, and
– patent portfolio valuation.
Please contact a member of the US IP Team if you would like to discuss any of your IP-related US needs.
Distinctiveness of a trademark means the ability of the mark to distinguish it from trademarks of others. In order to be distinctive, the trademark must not describe the goods and services it is applied for, and that the trademark is not a generic term for these goods and services. Distinctiveness is an absolute requirement for registration of trademark. Therefore applications for non-distinctive or descriptive trademarks will rejected by the trademark office.
A patentable invention must be industrially applicable. Industry is however a term understood very broadly, as i.a. agriculture is considered to be an industry in the patent world. In practice, almost all use is industrial, with the exception of specific exclusions, such as methods of treatment, presentation of information or processes for cloning human beings. Some of these are in fact excluded from patentability in the patent laws for some other reason than lack of industrial applicability.
The requirement of inventive step means that the invention to be protected is sufficiently different from known inventions. The conditions for recognising the presence of inventive step differ slightly from one country and system to another, and it is typically the most discussed subject in the communications with the patent office during prosecution. Typically, an invention is considered to be inventive, if it is a combination of two known inventions, and it would not have been obvious to make such a combination. More about inventive step in our article here.
The requirement of novelty is absolute, that is, the invention or design to be protected must not have been made available to the public in any form and in any manner. Novelty can also be described as a photo, i.e. a method or product is novel, if exactly the same is not previously known. (A small exception in some cases is the grace period, see our article here).
A trademark may not be confusingly similar to an earlier registered trademark covering the same or similar goods and services. Trademarks are considered as confusingly similar if the marks are the same or similar. Similarity between trademarks is examined through visual, phonetic and conceptual similarity. If the trademarks are considered as similar, there is a risk of confusion among the relevant target group, which leads to the rejection of the application of the latter mark or to the prohibition of use of the latter mark.
Patent and utility model applications need to be unitary, i.e. the claims must define only one invention. A new patent application must fulfil the requirement of unity when filed, but the claims must be unitary also during prosecution of the application. It is thus possible that an application that was unitary when filed becomes non-unitary during prosecution. Sometimes it is thus necessary to file a divisional application on the second (or further) invention. More about divisional applications here.
Abbreviations in the field of IPR here.
We thank our clients for placing their trust in Laine IP for assistance with their global intellectual property (IP) needs in 2022, including utilizing our internal US Team to handle US IP-related matters.
2023 promises to be an exciting year for Laine IP and the US Team!
In 2022, Laine IP helped acquire 69 US patents for its clients, thereby bringing the total number of US Patents acquired by the US Team since its inception in 2010 to 491. The annual number of US patents obtained by Laine IP (formerly Seppo Laine Oy) is shown below.
At the current count of 491, it is expected that the US Team will acquire the 500th patent for its clients within the first quarter of 2023! With permission of the patent owner, we will provide an announcement and potential feature of the 500th patent to issue.
The US Team continues to be a resource to clients having global IP interests, which include the US. The US Team offers services, such as the:
If you have any questions or concerns involving US Intellectual Property Issues, please contact a member of our US Team.
We look forward to working with you in 2023. Happy New Year!
We thank all our clients for the past year and wish you a Merry Christmas and a Happy New Year 2023!
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This year we support MIELI Mental Health Finland’s work for young people. We have also supported the work of Save the Children in Ukraine.
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Laine IP Oy team
Starting December 3, 2022, U.S. trademark applicants will have now have a 3-month period vs. the current 6-month period to respond to the majority of pre-registration U.S. Office Actions [read more]. In such cases, if an Applicant needs more than 3 months to respond, the Applicant can file a Request for Extension of Time to File a Response (“Extension”) for a single 125 USD fee for an additional 3 months. The Extension will need to be filed on or before the initial 3-month deadline of the Office Action.
The new 3-month deadline will apply to pre-registration deadlines as of December 3, 2022 as mentioned, and will apply to post-registration deadlines for US trademark registrants starting October 7, 2023.
In addition, it is noted that the new 3-month deadline will apply to Use in Commerce applications under Section 1(a); Intent to Use applications filed under Section 1(b); Foreign applications filed under Section 44(e); and Foreign applications under Section 44(d) of the Trademark Act.
The 3-month deadline will not apply to Madrid Protocol Section 66(a) applications. Instead, the deadline for responding to office actions for Madrid Protocol Section 66(a) applications will remain at 6 months, given the additional processing time these applications require [read more].
The stated purposes by the USPTO for the shortened response time are to:
This is logical given the current wait time to receive a first Office Action is currently approximately 10 months. Coupled with a 6-month period for response and the possibility of multiple Office Actions, the pendency of US trademark applications may be relatively long. This further increases uncertainty for individuals and companies attempting to register mark(s) or who are monitoring the US trademark application(s) of others.
The best way to prepare for the shorter deadlines, reduce pendency, and reduce costs continues to be to work closely with a trademark practitioner upfront to address any potential issues and address all formalities early in the application process to avoid any needless delay.
Joose and Mark
As we’ve previously reported, all foreign-domiciled trademark applicants and registrants (having a permanent legal residence or principal place of business outside the US) must be represented by a licensed US attorney in the US [read more]. Our Legal and Trademark Team currently includes, Mark Scott – a licensed US attorney – who can readily assist you with your US trademark needs.
Please contact Mark, Joose, or any of our other trademark practitioners directly for assistance.
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
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