MIP Patent and Trademark Stars 2024 announced

Managing Intellectual Property MIP has released the 2024 MIP Stars recognitions last week!

Managing Intellectual Property (MIP), the leading publication in the intellectual property world, has begun the unveiling of its 2024 recognitions by publishing the MIP Stars list, which features the top IP experts from various countries. The MIP Stars recognitions are based on independent research where clients and peer firms evaluate the performance of individuals in the IP field.

The following experts from Laine IP have once again received global recognition:

Patent Star 2024: Tatu Ahlskog & Kathy Wasström
Trademark Star 2024: Joose Kilpimaa & Reijo Kokko

We are proud to be recognized once again among the world’s most esteemed IP firms. We would like to thank not only our clients and partners but also our employees—each and every person at Laine IP—who tirelessly work to protect our clients’ intellectual property rights.

UPC | Romania becomes the 18th Member State

Unified Patent Court (UPC) has started its operation on June 1, 2023. The UPC system simplifies patenting in Europe such that it is possible to request for unitary effect for a granted European patent in the countries, which have ratified the Agreement on a Unified Patent Court (UPCA) (17 EU member states at the moment). A European patent with unitary effect may also be referred to as a Unitary Patent (UP).

The countries which have ratified the UPCA are at the moment (marked with green in the map): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

 

Romania becomes the 18th Member State

The UPCA has been signed by 24 current EU member states, including Romania. Romania belongs to the European Patent Convention (EPC) and has participated in the regulation of the UP. Romania was not a Contracting Member State of the UPC in the beginning though, because Romania had not ratified the UPCA before the UPC started its operation.

Romania has now ratified the UPCA and deposited its instrument of ratification of the agreement, becoming the 18th Member State to join the UP system, one year after the UPCA entered into force.

The UPCA will enter into force in Romania on 1 September 2024.

We will continue to actively monitor the situation and get back to you as soon as we know more.

 

The original news can be found here.

Laine IP is responsible for updating “The Brown Book”

Laine IP Oy took on the responsibility to update the best known handbook of the IP field for Finland, the “Manual for the Handling of Applications for Patents, Designs and Trade Marks Throughout the World” in 2021 and have since every year made sure that the information is up to date.

 

This Manual IP, also known as “The Brown Book,” has been available since 1927 and is published by Kluwer Law International. The handbook, which is available for a fee and online, provides basic information on IP for nearly 240 countries, covering patents, trademarks, utility models, and designs. It includes details such as requirements for patentability, types of marks that can be protected by a trademark, and information about official fees related to designs. The Manual is widely used globally as a source of information in patent agencies, law offices, patent offices, and industry. One of its major advantages is its regular updates.

For Laine IP’s  Kaisa Suominen and  Tom-Erik Hagelberg, it is a privilege and great honour to be selected also this year as trusted experts on Finnish IP practice, tasked with updating this highly renowned source of information.

Laine achieves MIP Tier 1 in Trademark Prosecution

We are thrilled to announce that Laine IP Oy has been recognized as a Tier 1 firm in Trademark Prosecution among Patent & Trademark attorney firms by Managing IP (MIP) for the year. This prestigious accolade highlights our dedication to excellence and innovation in the field of IP.

Building on our previous achievement as a Tier 1 firm in Patent Prosecution last year, this new recognition in Trademark Prosecution further demonstrates our expertise and consistent delivery of exceptional service in both key areas of intellectual property. Being distinguished as a leader in both categories by one of the industry’s most respected bodies is not only an honor but also a testament to our team’s hard work and dedication.

At Laine IP Oy, we believe that such achievements are a reflection of our deep understanding of the IP landscape and our ability to adapt to the dynamic needs of our clients. We are proud to serve a diverse clientele, ranging from individual inventors to large multinational corporations, providing tailored solutions that protect their innovations and brands across the globe.

This dual recognition as a Tier 1 firm in both Patent and Trademark Prosecution allows us to confidently say that Laine IP Oy is equipped to handle the most complex and demanding IP challenges. We remain committed to maintaining our standards of excellence and continuing to innovate within the industry.

We extend our deepest gratitude to our clients for their trust and partnership, which has been integral to our success. We also thank our dedicated team, whose expertise and unwavering commitment to client service have enabled us to achieve this significant milestone.

As we celebrate this achievement, we look forward to continuing to support our clients with the same level of excellence and dedication that has brought us here. For those interested in learning more about our services and how we can assist in protecting your intellectual property, please explore our website or contact us directly.

Thank you for being a part of our journey. Together, we continue to set the standard in intellectual property protection.

Changes in Indian patent practice

The Patents (Amendment) Rules, 2024 were published by the Ministry of Commerce and Industry on March 15, 2024, bringing significant changes to Indian patent procedures. Key highlights include shortened timelines for certain processes, flexibility in compliance requirements, and revisions to various forms. Notable amendments include:

  • Shortened timeline for filing a Request for Examination (RFE), reduced from 48 months to 31 months from the priority date.
  • Extension of time for filing responses to examination reports.
  • Changes in compliance timelines under Section 8 requirements (information on corresponding foreign applications).
  • Revision of timelines for submitting Working Statements to once every three years.
  • Clarity on divisional applications, allowing filing in respect of provisional or complete applications or a further divisional application.
  • Amendments in pre-grant opposition proceedings, including official fee and procedural changes.
  • Revisions in various forms, such as inclusion of additional categories and information.
  • Introduction of new forms for inventorship certificates and grace periods.

Additionally, changes were made to official fees, including adjustments for extension of time, patent of addition, renewal discounts, post-grant opposition, mentioning an inventor in the application, and surrendering a patent.

Should you have any questions, please do not hesitate to contact our experts Simo Hovi or Teemu Kiviniemi.

UPC | Referendum deferred in Ireland

Unified Patent Court (UPC) has started its operation on June 1, 2023. The UPC system simplifies patenting in Europe such that it is possible to request unitary effect for a granted European patent in countries, which have ratified the Agreement on a Unified Patent Court (UPCA) (17 EU member states at the moment). A European patent with unitary effect may also be referred to as a Unitary Patent (UP).

UPC member states

The countries which have ratified the UPCA are at the moment (marked with green in the map): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.

upc_member_states

Referendum deferred in Ireland

The UPCA has been signed by 24 current EU member states, including Ireland. Ireland is not a Contracting Member State of the UPC yet though, because Ireland has not ratified the UPCA.

Ireland belongs to the European Patent Convention (EPC) anyway and has participated in the regulation of the UP. Consequently, Ireland may choose to ratify the UPCA and become a UPC Contracting Member State.

A referendum has to be arranged in Ireland before joining, because an amendment to the Constitution is required. The plan was to arrange the referendum in Ireland in June 2024, but the referendum has been deferred. According to Minister Burke, more time is needed for public discourse on the matter, but at least he remains committed to Ireland participating in the UPC and sees that it would bring many benefits for their economy.

We will continue to actively monitor the situation and get back to you as soon as we know more.

 

Original news can be found here.

Laine IP “Firm of the Year” in Trademark Prosecution

Laine IP Recognized as “Firm of the Year” for Trademark Prosecution in Finland at the Managing IP Awards 2024

 

We are honored to share that Laine IP has been recognized with the “Firm of the Year” award for Trademark Prosecution in Finland at this year’s Managing IP Awards. The award ceremony, held at the London Hilton on Park Lane, brought together the best of the intellectual property community from across the globe. Our expert Tom-Erik Hagelberg was present at the event and had the honor of accepting the award on behalf of our team.

In today’s digital age, where brand identity and online presence are invaluable assets, the significance of robust trademark protection cannot be overstated. It’s the foundation upon which businesses can build a strong, recognizable brand and safeguard their intellectual property from potential infringement. Our commitment to providing thorough and strategic trademark protection has always been at the forefront of our efforts.

This recognition is a reflection of the dedication and hard work of our entire team over the past year. From our attorneys to our administrative staff, every member of our trademark department has contributed tirelessly to our firm’s success. We’ve navigated challenges, celebrated achievements, and, most importantly, we’ve supported our clients through the complexities of intellectual property law with a steadfast commitment to excellence and integrity.

We also want to take a moment to extend our congratulations to all the nominees and winners of the night. Being among such esteemed company is truly an honor and speaks volumes of the vibrant and dedicated IP community we’re proud to be part of.

As we celebrate this achievement, our focus remains on the continuous improvement of our services and staying at the forefront of intellectual property law to better serve our clients. We believe in the power of teamwork, the importance of innovation, and the value of each trademark we protect and prosecute.

To our clients, thank you for entrusting us with the protection of your most valuable assets. Your trust fuels our commitment to excellence. We look forward to continuing to serve you with the dedication and quality that you deserve.

Meet our most recent U.S. Patent Agent trainees!

Becoming a Patent Agent

In the world of intellectual property law, Patent Agents play a pivotal role in safeguarding innovation and ensuring the legal protection of groundbreaking ideas. Becoming a successful Patent Agent requires a diverse set of skills and knowledge spanning legal, business and technical domains. None of the experts entering the profession has all the required skills to begin with and thus in-house training is an important part of the career path.

Laine IP is constantly looking for the best candidates for entering our training program. The training program is a mix of self-study, courses and practical work with real cases and clients. Candidates are closely mentored by an experienced Patent Attorney for several years to ensure that candidates feel confident in tackling all aspects of the profession.

We had a chat with two of our most recent U.S. Patent Agent trainees, Cristina Battistuzzi and Thomas Öhman, about their experiences working at Laine IP as trainees. Let’s see what they have to say about the training period.

What is your background? Did you have any experience with IPR before joining Laine IP?

Thomas: Before joining Laine IP in October 2023, I graduated in September 2023 with an M.Sc. in chemical engineering from Åbo Akademi University, majoring in Natural Materials Technology. I did not have any prior experience with IPR before joining.

Cristina: I have a M.S. in analytical chemistry from the University of Helsinki and a B.S. in Chemistry from a college in the US.  My previous position here in Finland was at Thermo Fisher Scientific as part of the customer/quality control team.  I have quite a varied background, I have research experience in the field of neuroscience while living in New York and teaching middle school science in Italy.  I had no prior experience in IPR before joining Laine.

What is your typical day at the office like?

Thomas: I work in our Turku office, where only a couple of people from the firm work full-time. When I started, I travelled to our Helsinki office a few times a week to work more closely with my mentors Mark Scott and Toimi Teelahti, but now I go to Helsinki around once a week.

I usually arrive at the office between 10 and 11 a.m., after spending the first few hours of the day working at home by studying the material for the exam required for becoming an U.S. Patent Agent. Once at the office, I start looking at the relevant case assigned to me, and usually start drafting either a report for the client or a response to an office action. Other than that, I often communicate with Mark and Toimi and receive feedback for the work I’ve done, which is very valuable for my learning. We also have different team or company meetings at times, but most of the workday is spent working individually on a case.

Cristina: I enjoy a coffee and a chocolate and my day begins by checking assignments and discussing them with my mentor Mark Scott. In-between assignments, I follow the online course.

How is your training organized?

Thomas: I would say I learn about 50% from working on cases and 50% from studying the exam material. I’m currently in the process of completing an online study course which consists of modules with lectures and questions. I work on the study material independently for a few hours each day.

Most of the practical stuff is learned in the company’s actual cases, in which I learn, for example, to argue for patentability. Working on actual cases increases my knowledge of the patenting process as a whole, as the cases can be at any point of the patenting process, for example at the beginning, or nearing an actual patent. Together with Mark and Toimi, we regularly review both the practical work done as well as the material I’ve studied.

Cristina: The training is made up of studying for the Patent Bar Examination, and practical office work to assist the US Team in filing patent applications.  As a study guide, we follow an online course based on the MPEP and in addition we have weekly meetings with Mark and Toimi who share their experience.

What do you like the most?

Thomas: I think some of the best parts are that we get to look at very different inventions, especially in the U.S team, as well as the feeling when you finally find a “break-through” in your arguments, that you believe could lead to a patent. Further, I like the flexible working times and the possibility to work at home.

Cristina: I enjoy problem solving and the continuous learning experience; there is no chance of being bored.

What kind of qualities in your opinion are needed to be a successful trainee?

Thomas: Excellent written English, attention to detail, ability to communicate clearly, and the ability to learn and adapt after receiving feedback.

Cristina: You need to be a curious person, who enjoys learning, and gathering information from different sources and analyzing it in ways that are useful for communication with the US patent office as well as with the client.  Patents are a whole new world if you have never worked with them before, so every day you need to be ready to put on your hiking shoes and go.

 

If you believe that you would make an excellent Patent Agent, please do not hesitate to contact us! Also have a look at our open position.

IPR easily – EU Trademark (part 9)

EU Trademark

= A system spanning the European Union for the registration of trademarks at the EU Trademark Office, known as the EUIPO.

How does the EU Trademark system work?

To apply for an EU trademark, an applicant must submit an application to the EUIPO. The EUIPO evaluates whether the trademark is distinct enough. Distinctiveness implies that the trademark should not directly describe the goods or services for which protection is sought. Instead, it must stand out from generic terms and abbreviations commonly used in the relevant industry. If a trademark fails to meet this criterion, the EUIPO will deny the application. However, before rejecting an application, the EUIPO issues a Notification of Refusal, giving the applicant an opportunity to contest the grounds for refusal with counterarguments.

Applicants must also specify the goods and services for which they seek trademark protection.

The EUIPO does not assess the similarity of the trademark to any previous registrations that may be identical or similar and registered for related goods or services. The responsibility to identify and challenge similar trademarks falls to the owners of existing trademarks. They must monitor the EUIPO’s publication of new trademarks and, if they find a potentially infringing trademark, file an opposition within three months after its publication in the EUIPO database. Oppositions can be filed by owners of earlier EU trademark registrations or national trademark registrations within any EU Member State. Additionally, any party can oppose a trademark on the basis of insufficient distinctiveness.

Terms

Distinctiveness: A trademark must distinguish the applicant’s goods and services from those of others and should not merely describe or be a generic term for the goods/services applied for. It is a fundamental requirement for trademark registration.

Classification: A classification system to identify the goods and/or services for which trademark protection is sought.

Office Action: A notification of refusal from the EUIPO, requiring a response from the applicant, usually regarding the application’s classification or the trademark’s distinctiveness.

Priority: Date of priority. The filing date of the first application concerning the mark, from which a six-month priority period is calculated. The applicant benefits from this period if they make a subsequent application for the same trademark outside the EU.

Opposition: A process to challenge the registration of a trademark by another party.

Most common fees

Application Fee: A fee associated with submitting a trademark application to the EUIPO. The application will not proceed if this fee is unpaid.

Opposition Fee: An official fee paid to the EUIPO by the party filing an opposition against a newly published EU trademark registration.

Renewal Fee: A fee for maintaining the trademark registration, payable to the EUIPO every ten years, with no limit on the number of renewals.

Managing IP Awards 2024 shortlistings

Laine IP’s Shortlisting for the Managing IP Awards 2024

Laine IP shortlisted for both patent and trademark prosecution -categories

We are thrilled to announce that our firm has been recognized for its outstanding contributions in the IPR field, being shortlisted for the prestigious Managing IP Awards 2024 in several categories. This recognition underscores our dedication to excellence, innovation, and our clients’ success in Finland and beyond.

Our firm has been distinguished in the following categories for Finland:

  • Patent Prosecution: Our team’s expertise and innovative strategies in patent prosecution have been recognized, highlighting our commitment to protecting and maximizing the value of our clients’ intellectual property.
  • Trademark Prosecution: This nomination acknowledges our exceptional services in trademark prosecution, ensuring our clients’ brands are well-protected and thrive in competitive markets.

Additionally, we are proud to announce that one of our esteemed attorneys, Reijo Kokko, has been shortlisted as Practitioner of the Year for his remarkable contributions to trademark law. His dedication and expertise have not only benefited our clients but have also set a high standard in the IP law practice.

Read more about the shortlists here.

About the Managing IP Awards

The Managing IP Awards program, now in its 19th year, celebrates significant achievements and developments in intellectual property over the last year, covering more than 50 jurisdictions and several IP practice areas. The winners will be revealed at a gala dinner hosted at the London Hilton on Park Lane on April 11, 2024.

As we await the announcement of the winners, we extend our heartfelt congratulations to all the shortlisted firms, companies, and individuals. Our firm’s recognition is a testament to our team’s hard work, expertise, and commitment to excellence in the ever-evolving field of IP law.

Stay tuned for more updates, and wish us luck as we look forward to the ceremony in London!