Laine IP Leverages Collaboration to Enhance U.S. Prosecution

Laine IP Oy (Laine IP) has had an internal U.S. Team, located in Helsinki, to handle U.S. patent and trademark prosecution since 2010. The close collaboration of the U.S. Team with our other experts is a key component in securing the strongest global Intellectual Property (IP) rights for our clients.

A recent sequence of events in a U.S. patent application illustrates the benefit of such collaboration between members of Laine IP in handling a U.S. IPR matter for a Finnish company:

1. First, Laine IP’s European Patent Attorney (EPA) reviewed a U.S. Office Action and compared the issues with those from other corresponding global applications in a subject patent family. Knowing the client’s IPR portfolio and technology, as well as the client’s patent-specific goals, the EPA brought their ideas for a response to Laine IP’s internal U.S. counsel.
2. In a face-to-face discussion, Laine IP’s U.S. counsel and the EPA collaborated to arrive at a response which would address the issues raised in the U.S. application. Critically, the internal U.S. counsel was able to raise additional questions for discussion based on his experience and knowledge of US-specific law and, in turn, draw upon the EPA’s knowledge of the client as mentioned above. A proposed response was collectively drafted by Laine IP’s European (EPA) and U.S. counsel, and then discussed with the client in the same day.
3. The US counsel subsequently called the U.S. Patent Examiner in the case to discuss the application. As a result of the Examiner’s input, the Examiner and U.S. counsel agreed to certain amendments, as well as a second independent claim, to expand the scope of the patent application’s claims for the client.
4. This modified approach was immediately discussed by the EPA and U.S. counsel and readily accepted by the client. A response consistent with the modifications was rapidly filed and a Notice of Allowance from the USPTO issued soon thereafter.

Traditional models between U.S. practitioners (agents) and European Patent Attorneys (EPA) do not fully utilize collaboration. Such a  process for responding to a U.S. Office Action involving a client, an EPA, and a U.S. agent is shown below:

In contrast, Laine IP’s EPA/U.S. agent approach with its internal team can be illustrated as follows:

As can be seen, the Laine IP approach utilizes, depending on the case,  significantly greater collaboration between the parties and promotes more efficient prosecution with potentially broader patent protection in line with the client’s specific business goals. Additionally, Laine IP’s clients can easily discuss their cases directly with our internal U.S. practitioners located in Helsinki – either in a face-to-face meeting or over the phone in the same time zone.

To date, this collaborative approach has resulted in three hundred twenty eight (328) U.S. patents since the inception of the U.S. team in 2010. The below graph illustrated the number of U.S. Patents obtained by Laine IP on behalf of its clients over the past 7 years and total from 2010-present. Note: Laine IP was previously named Seppo Laine Oy.

In summary, the above positive results were achieved by the strong collaboration between Laine IP’s European counsel (EPA), U.S. practitioners, clients, and the U.S. Patent Office. The client’s active and exemplary involvement in the patent prosecution process also allows the U.S. patent prosecution process to be completed more efficiently and in line with the client’s IPR goals. Further, the combined expertise of both the European and U.S. practitioners and full access to the relevant information, including corresponding foreign applications and internal notes, has allowed Laine IP to effectively obtain the protection desired by the client in the U.S. market. Laine IP is constantly improving its processes so that our clients receive the benefits of collaboration between its European and U.S. practitioners.

We thank our clients for entrusting their IP to our care and are happy to answer any questions you might have, including discussing how we may increase the effectiveness of your U.S. prosecution at usdesk@laineip.fi

Author

Leena Marquis

Matthew Swanson

Mark W. Scott

Toimi Teelahti