FAQ

The time to apply for a patent is when the development of the invention has progressed to a point where commercial aspects of the invention can be guessed at. However, a patent application needs to be filed before the invention is disclosed, i.e. before it is presented at trade fairs, on websites, in promotional materials etc. The reason for this is that a patent can only be granted for an invention that is new. An invention that has been disclosed – irrespective of who has disclosed it – is no longer new, and can thus not be patented.

If you apply for a patent too early, the result may be that you will be granted a patent for a preliminary version of the invention, but the patent won’t protect your final marketable product. However, applying too late is also risky as your invention may become public or there might be competitor activity in the field.

In principle, yes. Software-based inventions are commonly patented around the world. A computer program as such cannot be patented in Europe, but a software-based technical feature can. In addition to processes and devices, patent claims that encompass software solutions are acceptable within certain limits. If a computer is used to realize a new and inventive process that solves a technical problem, the solution can be patented.

Unfortunately, the so-called international trademark does not offer protection everywhere in the world. Instead, it is a treaty-based international registration framework that enables rights holders to apply for trademark protection in multiple countries at the same time, while also providing some possibilities for the centralized management of these rights.

An international trademark always requires a domestic (FI/EU) “home” application or registration, which is then used as the basis for a centralized application to the World Intellectual Property Organization (WIPO). The WIPO application will list the countries for which the international trademark protection is sought. The WIPO then sends the application to the appropriate countries, where the trademarks are evaluated in accordance with local laws and procedures.

The international trademark system includes a very comprehensive list of countries, but it does not extend to all countries.

The concept of priority means that a patent applicant can, within one year (12 months) from the date of first filing, submit another application that concerns wholly or in part the same invention, and request that this second application be granted precedence over the first. This means that when the novelty and inventive step of the invention are evaluated, the later application will be treated as if it were filed on the same date as the first. In practice, this gives the opportunity to defer the decision on possible foreign patent applications by up to one year, at which time the patent office (e.g. PRH in Finland) has already evaluated the possible obstacles to patenting the invention.

The same application can request precedence over several earlier applications, provided that all of them have been filed within the previous 12 months.

For trademarks, the priority period is six months.

A pending Finnish or European Patent application covering Finland can be converted to a utility model application.

If the patent application has been dismissed, the application must first be reinstated before it can be converted into a utility model application. If the patent application has been refused, it is possible to convert it into a utility model application during the appeal period.

If more than four years have elapsed since the filing of the patent application, the first patent renewal fee must be paid in conjunction with the utility model application; if more than eight years have passed, both the first and second renewal fees must be paid.

Tietyissä maissa patenttia voi hakea ns. jälkikäteen eli teknisen ratkaisun (keksinnön) julkiseksi tulon jälkeenkin. Esimerkiksi USA:ssa on mahdollista hakea patenttia vuoden ajan keksinnön julkiseksi tulosta ns. ”grace period”-säännön myötä. Tämä ”lisäaika” on ehdoton takaraja, eli Yhdysvalloissa hakemus on jätettävä alle vuosi julkiseksi tulosta (päivän tarkkuudella).

Toki on huomioitava myös, että vaikka julkaistua tietoa voidaan käyttää patenttihakemusta vastaan, keksintöä on voitu julkiseksi tulon jälkeen salassa parannella tai kehittää niin, että ”käsillä oleva ratkaisu” on uusi ja olennaisesti erilainen aikaisempaan, julkiseksi tulleeseen versioon nähden. Sellaisessa tapauksessa voidaan tästä uudesta, alkuperäisen teknisen ratkaisun kehitysversiosta tehdä oma patenttihakemuksensa.

Keksinnön julkiseksi tuloa pitää aina arvioida kunkin maan kansallisen lainsäädännön mukaan, eli onko keksintö tullut oikeasti yleiseen tietouteen?

Mikäli olet tilanteessa, jossa keksintö on päässyt julkisuuteen ”ennen aikojaan”, kannattaa ottaa nopeasti yhteyttä asiantuntijaamme tilanteen arvioimiseksi. Voimme ripeästi, aikarajojen puitteissa, tehdä mahdolliset toimenpiteet, jotka katsotaan järkeviksi liiketoiminnan ja suojauksen kannalta.

The ® symbol indicates that the trademark has been registered. Consequently, it should only be used with registered trademarks and in the countries where the registration is valid.

The ™ symbol can be used even if the trademark has not been registered, since it only indicates that the mark is being used as a trademark. However, it is important to remember that by using the ™ symbol, you are specifically claiming your right to use the mark as a trademark, so if the mark has not been registered, at the very minimum you should ensure you are not infringing on any third-party rights.

Using the ® and ™ symbols is not mandatory, but it can be advantageous in many situations.

The time needed for trademark registration depends greatly on which office is handling the application, as well as on the details of the individual application process. The progress of the application is highly contingent on e.g. whether the process involves office actions or oppositions.

The application process at the EUIPO is relatively fast. If there are no office actions, the application will be advertised for oppositions. The opposition period is three months. If no oppositions are filed, the trademark will usually be entered into the registry within four to six months of filing.

The Finnish Patent and Registration Office examines earlier rights as per normal procedure, which influences the duration of the application process. If there are no office actions, the trademark is usually registered in four to six months from the filing date, after which the trademark is advertised for oppositions. The opposition period is two months, so the final confirmation of trademark registration will take approximately six to eight months in total.

The time needed from filing a patent application to the issuance of the patent depends on which office is handling the application, as well as on the details of the individual application process. Significant factors include the amount of discovered publications that are relevant for the patentability of the invention, as well as what kind of changes are made to the patent application during the application process.

Typically, the first step is to apply for a national (Finnish) patent due to the relatively fast and affordable application process. This helps provide a quick assessment of the patentability of the invention. At the Finnish Patent and Registration Office, the average time needed for handling patent applications is 2.5 to 3 years. However, the issued patent will be in force retroactively from the date of publishing of the application, so the application period already provides protection for the invention. Patent applications are published 18 months from the date of filing.

Patent prosecution with the European Patent Office or the US Patent and Trademark Office usually takes three to five years.