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Liisa Sarnes Salokoski, a European patent attorney at Laine IP, has been recognized as a “Rising Star” by Managing IP.
Managing IP’s Rising Stars recognises some of the best up-and-coming intellectual property practitioners in private practice who have contributed to the success of their firms and clients.
Laine IP congratulates Liisa on this achievement, and we are proud to have Liisa as part of our chemistry team.
This year’s Nordic NIR meeting gathered 160 IP professionals from Denmark, Finland, Norway and Sweden in Oslo on 28 to 30 August 2022. Climate change had been selected as the overall theme of the conference.
After a traditional update on legal developments in the Nordic countries in light of recent court cases, as well as a review on the present status of preliminary injunctions, the participants heard presentations on – and actively discussed – a number of issues relating to IP and sustainability under the general heading: “How does IP influence sustainability, and how can IP be used to improve sustainability?” Topics considered included “Exhaustion of rights and the reuse of products in a circular economy”, “Patents and the transition to renewables” and “Sanctions in IP infringement cases”. With regard to sanctions, one of the questions discussed was whether sell-off periods, compulsory licenses and obligations to amend should be imposed rather than implementing injunctions and destructions; even donations of infringing goods to charities were proposed as an alternative.
The last session of the conference considered what kind of business and IP commercialisation models are required to respond adequately to increasing demands that businesses must operate and act in sustainable ways.
Finnish contributions during the conference were presented by Attorneys-at-law Åsa Krook, Rainer Hilli and Mikael Segercrantz and by Adjunct Professor Max Oker-Blom and Vice President Legal Helena Wetterstrand.
The social programme included a presentation of the exhibitions at the Munch Museum as well as a visit to the museum which recently opened in an impressive building in Bjørvika.
The next NIR meeting, which will be the 36th meeting of its kind, will be held in Finland in 2024.
The basic requirement for patenting is that the invention at hand is novel. Novelty is determined by comparing the features of the invention to prior solutions from which the invention must differ.
The invention must be novel over prior art that has become public before the filing date of the patent application. If the application claims priority from an earlier application, the invention is compared to prior art that has been made available to the public before the priority date. Read more about how an invention becomes public.
Prior art publications are compared to the invention one at the time and determined whether all the features of the invention are found as one entity in the said publication. If the invention differs from the prior art solution by at least one feature, the invention is novel. If an independent claim is novel, all dependent claims referring to it are novel, because the scope of protection of dependent claims is narrower than of the independent claim. If an independent claim is not novel, the novelty of dependent claims is evaluated separately.
Only the technical features of the invention are taken into consideration when establishing novelty. A technical feature is, as its name suggests, a technical solution to a technical problem. The features related to the purpose of the invention are usually treated as if the invention is suitable for said purpose and therefore the purpose is not limiting the claim when establishing novelty. For example, if the patent claim discloses a coating comprising substances A and B, all mixtures comprising substance A and B are novelty destroying even though the use as a coating would not be mentioned. On the other hand, if the purpose of the invention sets some technical limitations, these are taken into consideration. For example, if the invention is a mold for molten steel, a mold for ice cubes cannot be novelty destroying because its technical features are not suitable for molten steel.
An exception to what was said above is the medical use of compounds for which a so-called second medical use is known. This means that a compound that is already known to be used for treating one indication can be patented for use in another indication. For example if a compound is known to be used for treating headache, it can still be patented for use in the treatment of asthma.
Each feature must be included in the prior art document either explicitly, that is directly expressed, or implicitly, that is suggested unambiguously though not directly expressed. If it is not certain whether a feature is included in the prior art document, the document is not novelty destroying. Sometimes claims present alternative solutions to a feature. In these cases, the invention is not novel if even one of the alternative solutions is presented in the prior art document.
Typically mentioning a feature at a general level does not take away novelty from a specific example. For example if the prior art publication mentions using metal, the use of copper can still be novel. On the other hand, a specific example takes away novelty from the general level, e.g. mention of copper takes novelty away from metal.
In some cases the features of the invention are disclosed in the prior art publication in lists that have many optional features. According to the European practice, if the solution of the invention requires selecting features from at least two lists, the requirement for novelty is usually fulfilled. In other cases, the prior art publication may disclose a region for a parameter that overlaps with the invention. Here the European practice is that novelty is usually established if the region of the invention is narrower than what is disclosed in the prior art document and the region does not include any specific examples or end points that are mentioned in the prior art document. Further, the new region cannot be arbitrary selected but must have been selected for a reason (purposive selection). These practices can however greatly differ from what was said above in non-European countries.
When assessing the novelty of the invention the aim is to ensure that only new innovations are being patented. After ruling the invention novel, it has to be ensured that the solution would not be obvious to a skilled person in the art. Read more about determining inventiveness of an invention.
The 2022 edition of the IAM Patent 1000 (guide) has been published. We are pleased to share that Laine IP received a Silver ranking and excellent reviews in the Prosecution category. In addition, our European patent attorneys Jarkko Tiilikainen, Hanna Laurén, and Christoffer Sundman and our U.S. attorney, Mark Scott, were individually named as Recommended practitioners in the 2022 IAM Patent 1000’s listing of 1000 standout practitioners across the globe.
According to IAM, the 2022 IAM Patent 1000 is based on an extensive research process. In particular, to develop the guide, IAM interviewed approximately 1,800 lawyers, patent attorneys and in-house experts during its investigation, which lasted more than five months, in order to gather information about the leading law firms in the field. Individual practitioners qualify for a listing in the 2022 IAM Patent 1000 when they receive sufficient positive feedback from peers and clients with knowledge of their practice and the market within which they operate. A more detailed description of the method and research to generate the guide can be found at here.
In awarding Laine IP its Silver ranking, the guide highlighted that “[c]ollaboration, dedication and a passion for innovation characterises Laine IP and its crew of patent attorneys.” The guide also mentions our “strong EPO practice,” which includes more than 20 European patent attorneys, several of whom are Centre for International Intellectual Property Studies tutors and lecturers.
In addition, the 2022 IAM Patent 1000 describes our individual Recommended experts in the following words (freely translated from the citations in the guide). The original descriptions can be found here.
Jarkko Tiilikainen, an expert in our ICT/mechanics team with in-depth knowledge of the EPO’s legal practices, is a “safe pair of hands” in opposition and appeal proceedings.
For FTO analyzes with a commercial perspective, the 2022 IAM Patent 1000 recommends our Chemistry Team Leader, Hanna Laurén, who impresses with her professional approach and impeccable legal knowledge.
Her colleague and “chemistry ace,” Christoffer Sundman, with over forty years of experience is highly skilled at creating IP strategies and providing his clients with insights they didn’t even know how to ask for.
Further, one special feature of Laine IP is its US Team based in Helsinki, of which the 2022 IAM Patent 1000 highlights U.S. Attorney, Mark Scott, as a shining star. According to the guide, Mark’s previous work experience at Siemens brings an additional dimension to his activities; Mark advises strategically, keeps his clients’ business objectives front and center, and is a superb choice in the commercialization phase.
Congratulations to our team, and we all sincerely appreciate our clients continued trust in our firm and for their feedback in IAM’s selection process.
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.
Laine IP Oy
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Tel: (09) 6859 560
Fax: (09) 6859 5610
Email: posti@laineip.fi
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