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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.
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.
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