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At Laine IP we are extremely proud to be recocnized among the best patent law firms in Europe. We have for a long time systematically invested in training our experts and raising the level of our expertise in especially the European level. 19 of our 26 patent attorneys are qualified European Patent Attorneys, authorizing them to represent our clients in the European Patent Office, EPO. In the near future, as the Unitary Patent (UP) system, covering several EU countries, is introduced, with the addition of the Unitary Patent Court (UPC) dealing with infringements and validity of both European and Unitary Patents, the significance of European wide competence of patent attorneys will highly increase.
Laine IP Oy would like to thank all clients and colleagues from all over the world who took part in this survey. Our persistent effort and investment in client-focused service has been fruitful. Development of our operations and improvement of client experience will continue to be at the centre of our activites also in the future. We also thank each and everyone of our employees, who are committed to giving their best efforts for the benefit of our clients IPR’s.
The survey ”Europe’s Leading Patent Law Firms” by the Financial Times is objective and impartial and is based on recommendations by clients and other patent law firms. Firms recognized in the survey have no influence on the results. The whole ranking list and the methodology of the survey can be found here.
A patentable invention needs to be novel, which is why it cannot be made available to the public before filing a patent application. A wide range of actions are considered publication, so the safest measure is to keep the invention completely in secrecy until a patent application has been filed.
Disclosing an invention means that the invention has been made available to the public. It does not only mean scientific publication or other detailed, written description of the invention. Mere discussing the invention with friends in a local bar can be seen as disclosing the invention. The following ways of disclosing the invention can be for example problematic for patenting:
It is not important in any of the cases if someone has actually read or seen the disclosure, but only if the material has been publicly available. Even public availability for a short period of time is an obstacle for patenting the invention.
An exception to this rule is when the invention has been presented to an audience, which cannot understand the invention. In this case, it is considered that the invention has not been disclosed.
Prior art includes everything that has been disclosed before the filing date of the patent application. Therefore, the invention can be published even on the same day as the patent application is filed. It is however safer to wait at least to the day after in order to have time to notice whether there has been technical problems with filing the application.
The best way to ensure that the invention has not been made public is to keep it as a secret until the patent application has been filed. However, sometimes it is necessary to present the invention to customers or partners during the development phase. In these cases, one has to make sure that there is a written non-disclosure agreement. Under such agreement, the discussion will not affect patentability of the invention.
It is always a good idea to consult a patent attorney before disclosing an invention in any form to make sure patenting will remain a future option. Laine IP is happy to help you with any questions you might have.
The applicant must have the right to the invention to which a patent is sought. According to the current practice, the inventor, and thus the original owner of the invention, is always a natural person (see for example the decision J 8/20* of the legal Board of Appeal of the EPO, in which an artificial intelligence named DABUS had been named as the inventor; according to the EPO, an artificial intelligence cannot be an inventor).
Depending on the country, the inventor may be under obligation to inform one’s employer of the invention made, and the employer may have the right to the invention, in certain conditions. For example, the Finnish employment invention law is based on this principle. However, if the inventor is not an employee of the applicant, or the requirements of the employment invention law are not fulfilled, the rights to the invention shall be transferred with a separate assignment.
Most typically the rights are transferred with a simple form, which includes information about which invention is assigned (for example defined by its title and/or claim 1), what rights are assigned (often the invention, right to priority and possibly an application), to whom the rights are assigned, and the name of the assignor, date and signature. In some countries, also a signature of the assignee is required.
An assignment can also made as a confirmatory assignment, which confirms, in a written format, an earlier assignment, such as an oral agreement or assignment based on employment invention law. A confirmatory assignment can also be used when the rights have been transferred based on an agreement which the parties do not wish to file to a patent office. Often such confirmatory assignments are made between two companies, or the assignment of rights has been agreed on in a contract of employment (not possible in Finland).
The applicant must have the right to the invention, when the application is filed at the patent office. Thus, the rights must be assigned at the latest on the date of filing, before filing.
In a worst case scenario the application is not valid at all, or the applicant is not entitled to priority (which may lead to a situation where the invention is not novel or inventive). Most of the time any problems relating to assignment are discovered only after grant, when the validity of the patent is assessed in opposition proceedings or nullity actions. At this point of time, the applicant/patentee has thus already used a significant amount of money to obtain protection, and the protection is such that also other parties are interested in it, since they wish to revoke the patent or limit its scope of protection.
Some patent offices require filing of assignment document, some accept a declaration from the applicant or the patent attorney on how the rights have been transferred. Usually the patent offices do not investigate any further, unless it is apparent that there are potentially problems with the assignment of rights. Such a situation could be for example if the priority application has two applicants while only one of them is the applicant in the application under examination, and no information about a transfer of rights between the applicants of the priority application has been provided to the patent office.
An assignment made in proper form and in due time is a very important document for the applicant.
Assignments are also a current topic at the EPO, where a referral on assignment of priority right is pending at the Enlarged Board of Appeal (G1/22). We will let you know more about it when the decision is issued (probably in 2023 or 2024).
*The decision in its entirety is not yet available, but the EPO has issued a communication about the end result of the oral proceedings, i.e. of the decision: https://www.epo.org/law-practice/case-law-appeals/communications/2021/20211221.html
We condemn Russia’s invasion of Ukraine.
We understand that this is not a war of the Russian people against their Ukrainian friends. This is a terrible war of one man’s reckless administration.
The war must stop!
Our future can only be built on peace, humanity and innovation – not on oppression, destruction and terror.
Our thoughts are with the Ukrainian people in their suffering and grief, and we support the work of Save the Children in Ukraine.
On 18th January 2022, Austria deposited its instrument of ratification of the Protocol on Provisional Application of the UPC Agreement. This resulted in the Secretariat of the Council of the European Union in its role as Depository declaring that the Protocol has entered into force.
The Provisional Application Period entered into force with the declaration on 19th January 2022 and the Unified Patent Court was born as an international organisation.
The final parts of the preparatory work in establishing the court will be carried out, including inaugural meetings of the governing bodies of the court and the recruitment of the judges of the court.
When the state parties are confident that the court functions seamlessly, after an estimated period of at least eight months, Germany will deposit its instrument of ratification of the UPC agreement thereby initiating the countdown until the UPC agreement’s entry into force and setting a date for the start of the Unified Patent Court’s operations.
Applying for the innovation voucher was opened after the Christmas break on 17 January 2022. At the same time, the funding policy was renewed. The value of the innovation voucher is 5000 eur and the self-financing share was abolished. In addition, the funding of the innovation voucher will be paid directly to the applicant company, not to the service provider. The aid is transferred to the beneficiary after the beneficiary has approved and paid for the work performed by the chosen service provider.
The innovation voucher is intended for SMEs that have a new product or service idea and strive for international growth, but taking the concept forward requires external expertise. With the innovation voucher, you can buy research and studies related to IPR, for example. The funding can also be used for patenting and trademark registration services.
We have designed service packages worth EUR 5,000 (+ VAT), from which you can choose the one that suits you and pay with the innovation voucher after receiving a positive financing decision from Business Finland. Check out our service packages on our website!
More information about the innovation voucher on Business Finland website.
An essential feature of patenting that is easily disregarded is the importance of demonstrating that the purpose of an invention is actually achieved. The purpose of the invention should be disclosed in a patent application, and it should be at least plausible that the purpose can be implemented using the description of the application. This issue is particularly linked to the assessment of inventive step.
The below table shows the cases found in the database of the Boards of Appeal of the European Patent Office that explicitly mention, in the keywords of their decisions, the plausibility of an improvement, or another form of solution to a technical problem, in connection with the assessment of inventive step.
| Decision on inventive step (based on plausibility, in main request or auxiliary request) | Yes | No |
| 7 | 3 |
Often this plausibility requires that examples or embodiments are included in the application as evidence, and are described with sufficient detail to provide the person skilled in the art with reasonable likelihood of success when repeating the invention. However, the evidence should also focus on the correct issues.
A problem could arise if a claimed invention differs from the disclosure of the prior art in one feature, and the examples show that the achieved advantages are linked to another feature.
Another problem could arise if comparative tests, described in the application, attempting to demonstrate the differences between the invention and the prior art, are not directly comparable.
A further problem could arise when the prior art cited by the patent office after the filing date of the application results in a reformulation of the problem that is to be solved by the invention. The existing examples might no longer focus on the correct issues, needed to prove inventive step.
Thus, there may be a reason to supply new evidence after the filing date of the application. This evidence would belong to the category of post-published evidence, where the plausibility that the evidence actually solves the correct problem is assessed even further (see the referral to the Enlarged Board of Appeal at the European patent office in case G2/21).
Under the EPC, it is a party’s right to request oral proceedings. It therefore makes sense that the choice of format for these oral proceedings can be made by the party who requested them.
The Enlarged Board held that the parties indeed have a fundamental right to oral proceedings that provide them with the opportunity to be heard. A hearing in person is the optimum format and a party may have good reasons to prefer in-person oral proceedings to a videoconference. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons.
The Enlarged Board held that the ongoing pandemic with its associated travel restrictions (as well as restrictions on entry into the EPO premises) is a reason justifying the conduct of oral proceedings by videoconference, even without the consent of all of the parties. A point also taken into consideration by the Enlarged Board was the duration of the restrictions, and that postponement of oral proceedings (in a large number of appeals) would mean a serious impairment of the administration of justice.
The decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person remain a discretionary decision of the Board of Appeal in question.
In order to deviate from the preference of a party requesting in-person oral proceedings, the Board must take into account that firstly, videoconference must be a suitable alternative to in-person hearing. If in a particular case a videoconference is not suitable, the oral proceedings will need to be held in person. Secondly, there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person. These circumstances should relate to limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the EPO.
The Enlarged Board made it quite clear that the question and its answer were limited to situations of general emergency, and hence, it can be expected that once the present restrictions are lifted, consent of all parties for videoconference oral proceedings will be required again for oral proceedings before the Boards of Appeal.
The Enlarged Board limited its decision to oral proceedings before the Boards of Appeal and there remains uncertainty as to the applicability of its reasons for oral proceedings before the opposition divisions, for instance. In our opinion, the reasons of G1/21 should be followed in opposition proceedings. However, as the EPO strongly promotes videoconferences, we expect that in-person oral proceedings will be arranged only in exceptional cases before examining divisions also after the pandemic.
In our opinion, oral proceedings by videoconference are a practical way to save travel time and costs in appropriate cases. However, some cases are better presented in person at the EPO premises. We will advise our clients on the best procedure on a case-by-case basis.
We thank all our clients for the past year and wish you a Merry Christmas and a Happy New Year 2022!
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This year we have made a donation to the Save the Children organization. Save the Children uses the donation to prevent social exclusion and helps poor families in Finland.
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Laine IP Oy team
In October 2021, a new referral was made to the Enlarged Board of Appeal at the EPO, and given the code G2/21. The issue discussed in the referral was briefly named “plausibility”.
The referral was made in decision T0116/18 of the Boards of Appeal. This decision concerned an appeal filed after an opposition against a patent relating to insecticide compositions. The appeal case involved a discussion on inventive step relying on a technical effect that the proprietor had attempted to demonstrate with the help of post-published evidence.
Post-published evidence is evidence that was not public before the filing date of the patent in suit. It is also not part of the application as filed.
It was considered necessary to refer the case to the Enlarged Board of Appeal, since the allowability of the main request of the patent depended on such post-published data as proof of an effect achieved using the insecticides, and since three diverging lines of earlier case law on interpretation of such issues were identified. Thus, they considered it necessary to obtain a decision from the Enlarged Board that would unify these lines of case law. The three lines were identified as follows.
Clearly, these different lines of case law can lead to significant differences in the outcomes of such cases.
The EPO President has decided on 23.11.2021 that all examination and opposition proceedings, the outcome of which entirely depends on the outcome of this referral, will be suspended until the decision of the Enlarged Board has been given.
The following questions were referred to the Enlarged Board of Appeal for decision.
If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having been filed after that date (post-published evidence):
1. Should an exception to the principle of free evaluation of evidence (see e.g. G 3/97, Reasons 5, and G 1/12, Reasons 31) be accepted in that post-published evidence must be disregarded on the ground that the proof of the effect rests exclusively on the post-published evidence?
2. If the answer is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have considered the effect plausible (ab initio plausibility)?
3. If the answer to the first question is yes (the post-published evidence must be disregarded if the proof of the effect rests exclusively on this evidence), can the post-published evidence be taken into consideration if, based on the information in the patent application in suit or the common general knowledge, the skilled person at the filing date of the patent application in suit would have seen no reason to consider the effect implausible (ab initio implausibility)?
Laine IP Oy
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Email: posti@laineip.fi
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