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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.
Double patenting means granting two patents for the same invention, for the same applicant and for the same geographical area. In practice, this is typically encountered when the priority application has been granted to patent, and the applicant would wish to have another patent for the same invention via for example a PCT-application filed within the priority year. In Finland, this is not a problem, but at the EPO, in view of this decision, it is prohibited.
In the case at the basis of this decision, the EPO had refused an application having claims identical to the claims of an EP-patent of the same applicant, while the application claimed priority from this granted patent. As double patenting is not explicitly prohibited in the EPC, the question went to the Enlarged BoA. The main argument of the applicant was that the applicant should have the right to a second patent for the same subject-matter when the term of protection of the second patent would be longer than that of the first patent.
The Enlarged BoA did not acknowledge such right and decided that an application can be refused on the basis that it claims the same subject-matter as an earlier European patent which has been granted to the same applicant and which does not otherwise affect its patentability. The EPC and its travaux préparatoires thus contain, in the opinion of the Enlarged BoA, a legal basis for such a refusal. Therefore, there is no difference whether the later application is filed on the same day as the earlier one, whether it is a parent or a divisional application, or whether it claims priority from the earlier application (in so far as this is the meaning of the definition in point 2. c) of the headnote).
The applicant will need to carefully assess the pros and cons of obtaining a patent from a first filing at the EPO as soon as possible, i.e. obtaining protection is Europe quickly on one hand, and having the protection end at the same time everywhere, on the other hand. It is not possible to have both, although it is possible to try and get protection in Europe quickly by allowing the priority application to lapse and filing a new EP-application claiming priority, in which case the term of protection is the same everywhere.
It also remains to be seen how the EPO will interpret the concept of “same subject-matter”, i.e. will the prohibition only apply to cases having fully identical claims or also claims which are almost identical (and where is the boundary between the two). The decision specifically mentions that it does not take a stance in this matter, likewise for the concept of “same applicant”. Let us hope that the Guidelines for Examination of the EPO will however give some guidance at least in respect of what is considered the same subject-matter. We will however need to wait until at least March 2022 for the next edition to be published.
These achievements have been made possible by our experts and collaboration with our dedicated clients and foreign partners. We thank both our clients and partners for their trust and feedback.
For more than 20 years, the prestigious Managing IP publication in the IPR industry has assessed the quality of work and customer satisfaction of patent and trademark attorneys through its annual survey. The IP STARS ranking is based on extensive interviews and surveys of IPR professionals and clients covering more than 80 countries. It has become one of the most respected and well-known indicators in the IPR field.
Ceipi, center for international intellectual property studies (part of University of Strasbourg) organises again its traditional Ceipi Summer School on IP in Europe-seminar, this year online.
The seminar covers protection of various industrial property rights in Europe, but also for example court practices and the effect of EU legislation on IP. The participants also have a possibility to follow a series of pre-recorded videos, that cover issues that cannot be covered in depth during the seminar.
The seminar is aimed at European and non-European students, IP attorneys and lawyers.
Laine IP’s European patent attorney Kaisa Suominen tutors at the seminar with two colleagues, Daniel X. Thomas (former director at the EPO) and Claire Mouget-Goniot (EPA, IPAZ). Their subject-matter is oral proceedings at the EPO. Traditionally, the session has included an overview of oral proceedings and a brief mock oral proceedings. This year the schedule is tighter, thus the session will mainly focus on why oppositions are filed, what are the roles of the different parties in the proceedings, both during the opposition proceedings in general and during the oral proceedings in particular.
Read more: https://www.ceipi.edu/en/training-seminars/summer-school/
No worries, it might still be possible, just contact your IPR partner.
Should one wish to obtain protection for an Invention or a design, no publication should take place before filing of the application. Thus, it is best to contact your IPR partner well in advance of any publication. Sometimes one can however forget it, or one does not think about protection in advance. Is all hope lost in such a case?
In many countries yes, but luckily not in all, depending on the form of protection. In such cases it is possible to take advantage of the so-called grace period. Grace period denotes the time that starts from publication of the invention or design, and during which it is still possible to apply for protection in certain countries.
For patents, the grace period is known, among the most common countries, only in the US, Canada, Australia, Korea and Japan, and lasts 12 months. In Russia, the grace period exists but lasts only 6 months. The European Patent Convention and for example the patent law of Chine does not recognise such grace period.
In most countries one must, upon filing, inform the patent office that grace period is to be applied, i.e., such notification cannot be added at a later stage. Typically, it is not possible to benefit from the grace period in cases where the publication was as a patent application or a granted patent. Also, for most countries, the time limit is calculated backwards from the date of filing, not the date of priority. This means that depending on the country, one must file either directly a national patent application or a PCT-application within 6 or 12 months from the publication.
In most countries, it is also possible to obtain protection via a patent even after someone else has published the invention, without permission from the owner of the invention. For example, at the European Patent Office (EPO) and in China the time limit is 6 months from publication. Often one needs to be able to prove the unpermitted publication, and for example at the EPO, it is required that the publication was made with an intention to harm the owner of the invention.
For designs, grace period is available in several countries, and its length varies from 3 to 12 months. However, for example in China a grace period for designs is not recognised, either, and it is thus not possible to apply for a design registration in China after disclosure In Finland, within the EU and in the US, the grace period is 12 months.
Should the time limit for taking advantage of the grace period be already over, it is possible to try to find a feature in the invention that is not yet public and based on which it would still be possible to apply for a patent. For designs, it is similarly possible to modify the design in such a manner that it fulfils the requirements of novelty and individual character, or it might be possible to obtain protection for a three-dimensional trademark. In the EU, a so-called unregistered Community design is also recognised. One can claim such protection provided the first disclosure of the design has taken place within the EU, and that the design was novel and had individual character at the time. The disadvantages of an unregistered Community design include narrow scope of protection and, compared to a registered Community design, a significantly shorter period of protection, only three years from disclosure. In some countries, it is also possible to register a copyright, which is worth considering in case other forms of protection are not available.
Trademarks do not have a similar requirement for novelty as designs and patents, but also for trademarks, it is recommended to apply for protection at an early stage. Without a registered trademark, it may for instance be difficult and time-consuming to prevent any unauthorised use by others.
Laine IP Oy
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Fax: (09) 6859 5610
Email: posti@laineip.fi
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