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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.
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.
Laine IP Oy
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