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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)?
In August, Germany passed a law to ratify the Unified Patent Court Agreement (UPCA). Since then, at the end of September Germany brought the Unified Patent Court (UPC) and Unitary Patent (UP) one step closer to coming into being by ratifying the Protocol on the Provisional Application of the UPCA (PPA).
Ratification of the PPA will provide the UPC with all means necessary to prepare so that the court can initiate litigation and take action.
For the PPA to enter into force, at least thirteen countries must ratify. Particular named countries including Germany must ratify even if the minimum number is reached.
On 19 November 2021, the Austrian Parliament unanimously passed the government bill in view of ratifying the Protocol to the Agreement on a Unified Patent Court (UPC) on provisional application (PPA). Thus, we are closer to the entry into force of the PPA.
For UPC and UP, this means the court could begin operations in 2023, and some forecasts suggest a possible time in the end of 2022 and the start of a three-month sunrise period even earlier. Although, there can and probably will be further hiccoughs down the road, it appears that the UPC is finally back on track.
Laine IP’s roster of European Patent Attorneys was recently increased to twenty, as our successful candidates Liisa, Jouni-Tapio and Toimi have been added to the EPO’s list of representatives. The trio is very pleased to pass the examination, as the pass rate is below 50%.
A candidate can spend around a thousand hours of intense preparation, according to Toimi. He spent countless evenings and weekends studying. Training courses and Laine’s internal study group also played a part in preparation.
“The EQE requires a long-term mindset regarding studying, as the syllabus is thousands of pages”, says Toimi.
According to Jouni, European qualification is a natural career development for a Finnish Patent Attorney.
“I wanted to challenge myself and follow in the footsteps of my colleagues. As an EPA, I can now represent clients in all EPO proceedings, which allows me to help clients in more ways than before”, states Jouni.
Liisa points out that preparing for the exam is a key part of learning the profession and developing one’s skills. In this, an important role was played by more experienced colleagues.
“We have a supportive atmosphere regarding studies. Colleagues would give tips on what to study for the exam, and also help to explain difficult matters”, says Liisa.
CEO Jarkko Tiilikainen congratulates the trio, as it is no easy task to pass the EQE.
“I am proud that we have smart and ambitious attorneys. It is important for our firm that we are constantly developing a new generation of top experts”, Jarkko states.
According to Jarkko, the European Patent Attorney qualification is a kind of guarantee in patent matters. A client can trust that an EPA knows the law and can apply it in practical situations.
“EP qualification is an indicator that the basics are well in hand. After qualification, the attorney will develop their skills even further”, says Jarkko, who passed the EQE in 2001.
It is a point of pride at Laine IP to support our staff in developing their skills. For example, the firm organizes internal as well as external training for EQE candidates.
Text: Matti Remes
English translation: Toimi Teelahti
Photos: Laine IP
To get a marketing authorization for a new pharmaceutical, a set of detailed experiments is needed to make sure that the product is safe and efficient. This takes plenty of time, which can take up a considerable portion of the patent term because the patent application has to be made before the invention can be published.
Supplementary Protection Certificate (SPC) has been established to compensate the time needed for getting a marketing authorization. Furthermore, SPC gives companies that develop new pharmaceuticals time to get back at least a part of the, typically substantial, development costs so that the companies will keep investing in drug development in the future.
SPC is granted to the active ingredient or to the combination of active ingredients of a pharmaceutical or a plant protection product if:
SPC does not determine the scope of protection but the scope of protection is based on the patent and the marketing authorization. SPC covers the product, for which the marketing authorization has been granted, as disclosed in the patent. SPC therefore does not typically cover the whole patent but only the part that has gotten the marketing authorization.
For most parts, SPC gives the same rights as a patent and it comes with the same responsibilities and limitations. For example, annual payments have to made just like for a patent.
In 2019 a new regulation was adopted which allows the manufacture of an SPC protected product six months before the SPC expires if the product is exported outside the EU or it is produced for storage. This regulation aims at strengthening competitiveness of companies within the EU in comparison to third-country companies.
SPC becomes valid after the patent term expires and the maximum duration is 5 years. The SPC term is affected by the time it takes from filing the patent application to receiving a marketing authorization in the EU in following manner:
In addition, a 6-month extension can be applied for if the pharmaceutical product has been studied in children according to Pediatric Investigation Plan. This is to encourage companies to test new medicine also in children.
SPC application is submitted to the Finnish Patent and Registration office with a specific form. The application must be filed within six months from the date the product was granted its first marketing authorization in Finland or within six months from the grant of the patent, if the patent has been granted after the marketing authorization.
Claims are the core of a patent application in determining the scope of protection, i.e. the limits of a right of prohibition, of a possible patent, so with what kind of claims should a patent be applied for.
Particular attention should be paid to independent claims, as they define the scope of an invention in its broadest form. Dependent claims, in turn, facilitate modification of a patent application during its prosecution. Dependent claims also help the office examiner to target a novelty search, especially if independent claim proves to be known from the prior art. There may be several independent and dependent claims and those may relate to a product or a method. Further, product claims may relate for example to a product itself, a device or a system, while method claims may refer for example to a manufacturing method, a method of analysis or use.
While drafting claims, one should always keep in mind the basic requirements defined for claims, which require that claim is clear and understandable on its own. Thus, claims must be precise, justified in scope and unambiguous. Description and drawings can be used for interpretation of the scope of protection but claims should also be understood as such. Further, it should be remembered that a patent can be applied only for one invention per patent application, wherein all claims must be unitary, i.e. comprise the same inventive concept.
Independent claims include the most important, i.e. essential and necessary, features of the invention. It is good to remember that the scope of independent claims also largely determines the scope of the search made by the office. If a patent is sought with rather broad claims, “hiding” the actual invention in dependent claims, it may be that the actually more significant, narrower, scope is completely unexamined.
A broad scope can typically be sought when being in a completely new technological field where there is not much knowledge and information available yet. In such situations, even so-called general basic solutions can meet the requirements of patentability. However, broad claim generally requires a relatively large amount of support in order to be considered acceptable, i.e. the description must describe broadly various embodiments and examples through the whole claimed scope. The scope of protection sought must therefore be proportionate to the technical information contained in the application.
On the other hand, it is typically worthwhile to apply for a more limited protection right from the start if the invention relates to a technical field in which much is already known. This could be, for example, a specific solution to improve an existing product or a method. It is also worth choosing a narrower protection if it is desired to achieve protection for the invention as quickly as possible. With detailed claims, the difference to prior art is typically more easily justified in a way that it is also approved by the patent office.
However, it is also good to note that an overly broad claim is much easier to narrow (based on dependent claims and/or description and drawings) than to extend a narrowly scoped claim. Extending a narrow claim requires much more argumentation for the right to a broader protection, and may not always succeed.
Dependent claims are intended to describe the preferred embodiments of the invention and they always refer to an independent or other dependent claim, thus always including the essential features of the invention disclosed in a dependent claim.
During prosecution of a patent application, dependent claims are used, if necessary, to supplement the independent claims if revealed prior art requires narrowing the scope of independent claims. In other words, the main purpose of dependent claims is to act as a fallback position if the invention is not patentable in the form of claims as originally defined. It is therefore advisable to include in dependent claims features which make a difference to the prior art, solutions generally known in the field in question do not contribute patentability of the invention. It is also useful to describe in the description the additional benefits of these additional features in relation to those achieved by the solutions of independent claim.
Thus, various features specifying the invention can be added to the dependent claims since they do not limit the scope of protection when in dependent claims. However, when drafting them up, it is worth bearing in mind the additional claim fees in use in several countries if the number of claims exceeds a certain limit. In most areas, such as in Finland and EPO (European Patent Office), the application fee includes 15 claims and there is an additional fee for excess claims. In many technical fields, 15 claims are sufficient to describe features relevant to the invention.
Once an applicant has filed a patent application for a particular invention, he has the opportunity, within 12 months of the filing date of the application, to file a similar application and request priority for the earlier application. Priority means that when considering the novelty and inventive step of an invention, a subsequent application is considered to have been filed at the same time as the first application, in which case documents published during the priority year cannot serve as prior art publications.
The right to priority is based on Article 4 of the Paris Convention. In short, the article states that an applicant from one Contracting State may use the filing date of the first application as the filing date of the second application in another Contracting State when that applicant files the second application within 12 months of the filing date of the first application.
The first and second applications may equally well be national patent or utility model applications, regional applications such as European patent applications or international PCT applications. The priority year is calculated one year from the day following the date of the first application, i.e. if the application is filed on 21 July 2021, the second application must be filed no later than 21 July 2022.
The applicant shall not lose his right to priority even if prosecution of the first application is terminated or the application is withdrawn before the application is published. It is sufficient for the right of priority that the Patent Office has given a filing date to the first application. However, it is worth remembering that even if the procecution of the first application is terminated or the application is withdrawn, before the application is published, it will become public as part of the documents of the second application upon request of priority.
Another thing to keep in mind is that an application becomes public 18 months after the priority date, i.e. if a second application claims priority from a first application, the second application becomes public 18 months after the first application is filed.
Priority may also be claimed for several previous applications, provided that no more than one year has passed since they were filed. The second application may also differ from the first application, meaning that material may be added to the application. However, priority will be given in subsequent applications only to those parts of the invention which have been disclosed in the first application.
The biggest benefit of the right to priority is that there is no immediate need to decide in which countries to seek protection. An applicant can first file a single application, such as a national application, and see what the patent authority says about the patentability of the invention. Once the applicant has received an opinion from the patent authority on the patentability of the invention, it is easier to start applying for a patent internationally as well.
At the same time, during the priority year, the applicant can, test the market and apply for funding for his invention. These also help to decide whether it is worthwhile to start patenting an invention internationally and in which countries it is worthwhile to file patents.
Another benefit of the right to priority is that the applicant can publish his invention after the filing of a national application, without the publication becoming an obstacle to subsequent patenting.
A utility model, like a patent, is a right of to prevent others from using the invention. The utility model can be obtained for a new technical solution that can be used industrially. In Finland, the utility model can be obtained for a product or a device. However, the utility model cannot be used to protect a method or a use. The utility model is particularly suitable for protection of simple device and product inventions or small improvements to an existing device or product.
Finnish Patent and Registration Office (Patentti- ja rekisterihallitus, PRH), which acts as the patent authority in Finland, does not assess the novelty and inventive step of an invention of a utility model application. Accordingly, it is advisable to become acquainted with the prior art in order to ensure the novelty of the invention. The requirement for a level of inventive step is lower for an invention protected by the utility model than for an invention protected by a patent. When a patentable invention is required to have a “substantial” difference from the prior art, only a “clear” difference is required for the utility model.
Finnish Patent and Registration Office only performs a registrability check on the utility model application, and thus it is possible to obtain protection for the invention very quickly with the utility model. The average processing time for the utility model at Finnish Patent and Registration Office is three months. Thus, protection is obtained faster than with a patent application, which has an average processing time at of 2.5 years. It is also possible to postpone the registration of the utility model upon request for up to 15 months from the filing of the application, if the applicant wishes for the invention not to be published earlier.
In Finland, the registration fee for the utility model application covers the first four years. Thereafter, the utility model can be renewed first for four years (years 5-8) and then for two years (years 9-10) by paying a renewal fee. It is thus possible to maintain the utility model in force for ten years, while the term of protection conferred by a patent is twenty years.
In Finland, it is possible to convert a patent application into a utility model application. Priority may also be claimed from the utility model application in the same way as from the patent application, with a priority period of 12 months.
Anyone may at any time attempt to invalidate the utility model by filing an invalidity claim against it. The free-form invalidity claim and its appendices must be made in writing in Finnish or Swedish. The invalidity claim must be justified and submitted to Finnish Patent and Registration Office. The invalidity claim is subjected to a fee. Finnish Patent and Registration Office makes a decision on the basis of the material submitted in the invalidation claim and a response submitted by the owner of the utility model. As a result of the decision, the utility model may be kept in force in an unchanged form, may be declared partially invalid, or declared completely invalid. The decision can be appealed to the Market Court.
A utility model registered in Finland protects the invention only in Finland. The utility model system is not very common, but in Denmark, Germany, Spain, Estonia, Russia, Japan and China, for example, it is possible to obtain similarly utility model protection for an invention. In countries where there is no utility model, it is possible to apply for a patent.
This Manual is also known as the ”Brown book” already since 1927 and it is published by Kluwer Law International. The handbook, which is available for a fee, also online, presents basic information for each IPR per country, i.e. on patents, trademarks, utility models and designs. It includes for example requirements for patentability, the types of marks protectable by a trademark and information about official fees relating to designs. The Manual covers almost 240 countries and is widely used in the world as a source of information, in patent agencies, law offices, patent offices and industry. A further advantage of the Manual is that it is regularly updated.
It is a privilege and great honour for Laine IP’s Ms Kaisa Suominen and Mr Tom-Erik Hagelberg to be selected as trusted experts on Finnish IP practice with the task of updating this highly renowned source of information.
Laine IP Oy
Contact Details
Tel: (09) 6859 560
Fax: (09) 6859 5610
Email: posti@laineip.fi
Mailing Address
Laine IP Oy
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00181 Helsinki
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