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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.
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. According to our latest information, the referendum will be arranged in June 2024, so we look forward to seeing if Ireland makes progress towards the UPC.
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.
We are thrilled to announce that Laine IP has been elevated to the prestigious Silver-category in the latest World Trademark Review 1000 (WTR 1000) rankings for 2024. This promotion is a testament to our unwavering commitment to delivering exceptional trademark services and exceeding the expectations of our clients.
In the latest review, our clients have praised our team’s ability to understand and maintain the overall brand strategy, ensuring the effective management and elevation of the value of intellectual property assets. They have commended us for our swift approach, likening our team to in-house counsel, which they find extremely beneficial.
Heading our trademark team, Reijo Kokko has been recognized for his brilliant grasp of legal and business needs, offering holistic brand strategy with to-the-point and actionable advice. Joose Kilpimaa, overseeing the management and protection of global brand portfolios, has been lauded for his expertise in handling opposition proceedings and raising IP awareness. Our expert Tom-Erik Hagelberg plays a crucial role in building and implementing trademark strategies, further solidifying our team’s expertise and dedication to our clients’ success. Moreover, our clients have emphasized the importance of practitioners like Joose and Tom-Erik in educating and identifying the best ways to protect IP rights in a cost-effective manner.
We are also extremely grateful to all of our clients and partners, whose continual trust and support have been an essential part of our success in securing this promotion to the Silver-category in the WTR 1000 rankings. Furthermore, we are happy and honored to be recognized among the world’s leading trademark professionals and firms, and we remain committed to providing strategic solutions that empower our clients to protect and maximize the value of their intellectual property assets also in the future.
The office action you have received contains a negative opinion on your patent application, stating that the independent claims are already disclosed in the prior art. The publication referred to in the office action does indeed appear to contain all the features of the independent claims. How unfortunate! Should we raise a white flag at this stage and abandon the application? In most cases, no.
The Examiner uses the independent claims as a starting point for the examination because they define the scope of protection of the invention in its broadest form. The patent attorney tries to draft an independent claim in such a way that it has at least one distinguishing feature over the prior art. Nevertheless, as it is not desirable to limit the scope of protection of an invention unnecessarily, it is advisable to avoid adding excessive distinguishing features to an independent claim when drafting claims.
However, when drafting a patent application, it is practically impossible to be aware of all the material constituting the state of the art and it is therefore advisable to be prepared in advance for the possibility that the Examiner will probably find publications which were not known by the patent attorney when the patent application was drafted. Moreover, once filed, no new content can be added to the patent application, which poses its own challenges in overcoming the objections to patentability.
When drafting a patent application, potential obstacles to patentability are anticipated by creating so-called fallback positions, which can be used if it appears that the obstacles identified by the Office cannot be overcome without limiting the scope of protection of the independent claims. The most common form of fallback positions are therefore dependent claims.
In addition to the obstacles regarding patentability, the office action may also indicate which claims are new. If the novelty assessment in the office action is correct, and one of the dependent claims considered to be novel contains a feature or features which, when added to an independent claim, do not excessively limit the scope of protection, it is worth considering limiting the independent claim to such feature or features.
As a general practice, the drafted independent claim contains all the features necessary for the invention, and the optional features of the various embodiments of the invention will be the fallback positions in the dependent claims. In addition, it is possible to include in the specification of the patent application, separately, advantageous embodiments which may be later useful in limiting the independent claims.
When preparing fallback positions, it is good to take care that the dependent claims are not too narrow, which could unacceptably reduce the scope of protection of the invention. The ideal fallback position limits the scope of protection only to what is needed to distinguish the independent claim from the prior art and to make the independent claim inventive. On the other hand, scattering obvious features as dependent claims may not be the most effective way to ensure patentability. Often, a feature of an invention has, in addition to its broadest form, several narrower forms, each of which provides some additional advantage (which advantageously is also disclosed in the application), and such narrower forms are typically presented as preferred embodiments. Of these preferred embodiments, the most appropriate may be used as a limiting feature if the fallback position of the broadest scope of protection is not enough to provide a sufficient difference to the state of art. However, when limiting the scope of the claims, it should be noted that if two different features are limited, some Offices may require that all the limitations selected must be from the same so-called preference level.
Applicants from an EPC contracting state not having English, French or German as an official language can, in certain conditions, benefit from a reduction of some fees.
Presently, for example a Finnish applicant that is a small or medium-sized enterprise (according to a definition by the EU), a natural person, a non-profit organisation, a university or a public research organisation (a so called R.6(4)-entity) can benefit from a 30 % reduction from the examination fee when the request for examination is made in Finnish. This is a significant advantage in that the applicant does not need to do anything else than declare themselves to be a R.6(4)-entity and to add one phrase in Finnish to the request for grant form. The filing fee is also reduced, if the application is filed in Finnish, but the fee reduction is significantly smaller than the cost for translation.
The current language reduction applies also after 1.4.2024, but additionally all applicants that are R.6(4)-entities, except SME’s, can benefit from a reduction of some further fees, i.e. without any requirement as to the language or the place of business or residence. Applicants can also benefit from both reductions.
The reduction remains 30 %, and in addition to the filing and examination fee, it is available for the search, designation, grant and renewal fees.
Microenterprises have been added to the list of possible beneficiaries of the fee reductions, meaning enterprises employing fewer than 10 persons and having a turnover or balance sheet sum not exceeding 2 MEUR. Such companies have also previously been eligible for the language reductions, as the definition of SME’s has not had a lower limit for employees or their finances.
This rather generous new fee reduction policy has however been limited to applicants that have filed less than five EP-applications (including PCT regional phase applications at the EPO, i.e. Euro-PCT-applications) within the preceding five years. The period of five years is calculated from the filing date of the EP-application or the date of entry into regional phase at the EPO for Euro-PCT-applications. This means that for example universities and public research organisations, as well as actively patenting companies will rarely be eligible for these fee reductions.
In case there are several applicants, all applicants must be entitled to the fee reductions. The right to the reduction is to be fulfilled on the date of payment of the fee, for example when paying a renewal fee.
At the same time as the above changes, the EPO deletes some rarely used fees and increases some fees, although not all. Mainly the increase is of about 4 %, while the renewal fee for the fourth year increases for almost 30 %.
Some background and the decision of the Administrative Council can be found here:
https://link.epo.org/ac-document/CA/63/23%20-%20En.pdf
https://link.epo.org/ac-document/CA/D%2016/23%20-%20En.pdf
The next part of our series IPR easily will introduce the European patent system and the processes therein.
A European patent granting organisation, for which the European Patent Office EPO examines and grants a patent.
To obtain an EP-patent, the applicant files an application at the European patent office (EPO) and pays the required fees. The search examiner of the EPO carries out a novelty search, i.e. compares the invention to known solutions. The examiner then sends the applicant an extended European search report, i.e. a list of documents found, copies of said documents as well as comments on them. The comments relate to novelty and inventive step of the invention, and may also relate to other issues, such as clarity of the claims or the scope of protection when compared to the description.
Thereafter, the applicant replies to the comments by filing arguments and possibly amended claims, and by paying official fees if need be. An examining division considers the reply and amendments, and if they are not satisfied that the reply answers all questions raised, they issue an office action (called “communication”).
Once the examining division is convinced that the invention presented in the claims is patentable, and the application fulfils all the requirements of the European Patent Convention, the office gives a so-called allowing office action (Communication pursuant to Rule 71(3)), enclosing the application text in the form intended to grant. If the applicant accepts this form the communication is replied to by paying the grant fee and by filing a translation of the claims into the two other official languages of the EPO (which are English, French and German). Thereafter, the EPO grants the patent.
Within three months of the grant, the applicant must validate the patent in those countries where protection is wished to be maintained. Depending on the country, this means either paying only the renewal fees in the country in question, or additionally filing a local address, or still additionally filing a translation of the claims or of the whole patent into a national language of the country. After validation, the EP-patent is in the country in question considered as a national patent, i.e. for example invalidity or infringement proceedings are handled separately in each country.
Once the unitary patent system has come into force, the patentee can, within one month of grant, request registration of unitary effect. In this case the patent will, in the participating member states, be considered as a single patent (and not as a bundle of national patents).
An EP-patent can be requested by filing either an application directly at the EPO, claiming priority or not, or via the PCT-system. The latter is called a Euro-PCT-application, and it is mainly handled in the same manner as a direct EP-application. The due dates for some fees are different, and if the EPO has not been the PCT searching authority, the EPO will carry out a supplementary search.
EESR, Extended European Search Report: novelty search report accompanied by the opinion of the search examiner.
71(3): Communication under Rule 71(3), i.e. allowing office action.
Druckexemplar: the form of the application that the EPO intends to grant to patent.
Filing fee: to be paid when filing the application.
Search fee: to be paid when filing the application.
Claims fee: to be paid when filing the application, if the application has more than 15 claims. One fee/claim.
Examination fee: to be paid when replying to the EESR, or when filing a Euro-PCT-application.
Designation fee: to be paid when replying to the EESR, or when filing a Euro-PCT-application. A relic of the times when contracting states had to be separately designated in the application and pay a separate fee for each designation.
Fee for grant: to be paid when replying to the allowing office action.
Renewal fee: to be paid yearly on the last day of the month containing the filing date, from the moment the application turns two, until grant.
The decision follows an opposition proceedings (G1/22) and grant proceedings (G2/22), in which the priority application is the same. The EP-patent subject to the opposition proceedings is based on a Euro-PCT application, and the EP-application in the grant proceedings is a divisional application thereof. The priority application was filed in the US under the previous patent law, i.e. at a time when only the inventors could be applicants in the US. The applicants of the priority application were the three inventors, and the applicants of the PCT-application were the inventors for US and two other parties for the other countries. In the opposition and grant proceedings the priority claim was held invalid, as only one of the inventors had transferred their right to the priority to the party that was the applicant at the time of grant, before filing of the PCT-application. The two other inventors had transferred this right only after filing of the PCT-application. In consequence, claim 1 of the patent was not novel and the application was refused.
According to EBoA, right to claim priority is to be assessed under the EPC, although the national law may need to be taken into account, for example when assessing the existence of legal entities as parties to the transfer. Furthermore, the EBoA decided that there are no formal requirements for the transfer of the priority right.
One conclusion of the EboA is also that entitlement to priority is to be presumed to exits. The burden to prove that there is in fact no right to priority is on the party alleging this and facts that support strong doubts that at the time of filing of the application, the applicant did not have the right to claim priority, must be given in support of the allegation.
The EBoA was even of the opinion (paragraph 100 of the decision), that the right to claim priority does not need be transferred before the filing date of the application, unless the national law so requires. The board was thus of the opinion that the EPO cannot require more than what national law does.
The Enlarged Board of Appeal therefore confirmed the previous approach of the EPO on transfer of priority, i.a. that if the EP-application has at least one same applicant as the priority application, the applicants are presumed to have the right to priority, unless proven to the contrary. The board was also significantly more liberal that EPO’s previous approach as to the timing of the transfer, by allowing transfer even after filing of the application (if allowed by national law).
It is also worth noticing that according to the decision (paragraph 35), it also applies to situations where a document cited as a bar to the patentability claims priority, and not only to situations where the application or patent under examination claims priority. It is thus good to check also the priority data of relevant prior art.
Even after decision G1/22 and G2/22 it is recommended to ensure, with a written agreement, that right to claim priority is transferred before filing of the application. Alternatively, for example if there is no time before filing of the application, the later application can be filed in the name of the applicant of the priority application, and a transfer effected after filing. The reason is that decisions of EPO’s EBoA are not binding on national courts or the Unified Patent Court (UPC), although the EPO and the UPC aim at harmonised proceedings.
Any questions? Please contact kaisa.suominen@laineip.fi
a regional IP organisation, mainly in the southern part of Africa. Grants IP rights.
A European patent granting organisation, for which the European Patent Office EPO examines and grants a patent.
EU-wide system for protection of registered designs. Competent Authority is European Intellectual Property Office EUIPO.
EU-wide system for protection of trademarks. Competent Authority is European Intellectual Property Office EUIPO.
A patent granting organisation in the Eurasian region.
previously known as the Gulf Cooperation Council, GCC. It includes a patent granting organisation of Arab countries.
System for international registration of design/industrial designs. Covers approximately 100 jurisdictions. Competent authority is World Intellectual Property Organization WIPO.
System for international registration of trademarks. Covers most jurisdictions worldwide. Competent authority is World Intellectual Property Organization WIPO.
a regional IP organisation, mainly in the eastern part of central Africa. Grants IP rights.
An international organisation for patent applications, which allows postponing the decision of countries in which protection is sought. Covers almost all countries of the world.
A patent granted by the EPO for which unitary effect has been requested. The protection in the participating member states is then unitary, i.e. one renewal fee is due and it is handled in court as a single patent.
European patent attorney of Laine IP, Jari Nieminen, now has the right to represent clients before the new Unified Patent Court (UPC), which has started its operation on 1.6.2023. The right is based on additional qualifications and Jari is a holder of Diplôme d’Université d’Etudes Superieures sur le Contentieux des Brevets en Europe (University diploma ”Patent Litigation in Europe”) from the university of Strasbourg.
Now four European patent attorneys of Laine IP, Mirja Matilainen, Jarkko Tiilikainen, Kaisa Suominen and Jari Nieminen, have the right to represent clients before the UPC. They can thus for example file requests to opt out European patents without a need for a power of attorney, which reduces the bureaucratic burden.
If need arises, they can also represent parties in litigation.
The 2023 edition of the IAM Patent 1000 Guide has now been published. We are pleased to share that Laine IP received a Silver ranking and excellent reviews in the Prosecution category.
In addition, our European patent attorneys, Jarkko Tiilikainen, Hanna Laurén, Kathy Wasström, and Christoffer Sundman (recently retired), and our U.S. attorney, Mark Scott, were individually named as Recommended Practitioners in the 2023 IAM Patent 1000’s listing of 1000 standout practitioners across the globe.
A link to the 2023 IAM 1000 Guide and Laine IP’s recognitions can be found here:
IAM Selection Process
According to IAM, the 2023 IAM Patent 1000 is based on an extensive research process. In particular, to develop the guide, IAM interviewed approximately 1800 lawyers, patent attorneys and in-house experts during its investigation, which lasted more than five months, in order to gather information about the leading law firms in the field. Individual practitioners qualify for a listing in the 2023 IAM Patent 1000 when they receive sufficient positive feedback from peers and clients with knowledge of their practice and the market within which they operate.
We sincerely appreciate our clients continued trust in our firm and for their feedback in IAM’s selection process.
An invention is compared to known technologies when assessing its patentability. The invention must be novel, meaning that it differs from known solutions by at least one feature. In addition, the invention must be inventive, meaning that it should not be obvious to a person skilled in the art. For example, a product placed on the market can prevent patenting even if the product has not been described in writing.
In the field of chemistry, this can lead to a peculiar situation where the composition is available, but the different components of the composition and their concentrations cannot be deduced without a detailed analysis of the product. The question is whether such composition has become known after the product has been placed on the market.
When drafting the European Patent Convention it was considered that, an invention is disclosed if, by virtue of the disclosure, a person skilled in the art could carry out the invention. Decision G 1/92 further specified that the invention has become known if a person skilled in the art is able to analyse and reproduce the invention without undue burden on the basis of the prior disclosures.
However, the requirement to analyse and reproduce an invention without undue burden is ambiguous and has led to different interpretations in different contexts. A new referral to the Enlarged Board of Appeal of the European Patent Office, G1/23, has therefore been submitted based on decision T 0438/19 of a Technical Board of Appeal. The referral asks for clarification on three issues, in particular with respect to chemical compositions, in order to unify practices.
The first question concerns a situation where a product does not belong to the prior art, because it cannot be analysed or reproduced. In this case, it may be interpreted that the product itself is not part of the prior art, or alternatively that the chemical composition or the internal structure of the product is not known, even though the product itself is known.
The question may seem theoretical, but in practice, problems can arise, for example, when assessing inventive step. If the product itself is not part of the prior art, then a skilled person could not have developed it further. In this case, it is reasonable that the product cannot be used to assess the inventive step of another product.
However, if the product was available, a skilled person could have used it as a starting point for a new invention, even if they could not exactly analyse or reproduce the product. This is especially true if the intended use of the product and its advantages have been disclosed, in which case a person skilled in the art might find the product interesting because of its features. Of course, in these situations it would be natural that a small change in the product would not be sufficient to obtain a patent, even if the exact composition of the product is not known. It may therefore be appropriate to consider that the product has become known, but its composition or internal structure has not
In some situations, an invention may be obvious, even though it cannot be reproduced identically. Should the invention then be considered to have become public or not?
For example, one might consider a situation where the invention is a caramel-colored fizzy drink. It is obvious that Coca-Cola fits the description, but the recipe for Coca-Cola is not known, and a person skilled in the art cannot make an identical copy. Would the invention be novel or not?
Further, some chemical compositions can be very complex, and it can be very difficult to accurately determine their structure and reproduce the product. For example, synthetic polymers comprise similar units linked together in a complex structure. Different polymers may contain same units that are simply organised in different ways. Therefore, such structures are usually described by their properties.
If the reproduction of a composition means making an identical copy, then, for complex compositions, the question arises how to define that a composition is or is not identical when there is no single way to define the composition.
Further, since the decision G 1/92 explicitly states that the principles of analysis and reproduction should be applied to all products, a clarification is also needed for mechanical and electrical inventions. Does the requirement of reproduction concern a part of a product or the entire product? To what extent should the product be reproduced? Must one be able to also analyse the chemical composition of various components? In particular, do the principles of analysis and reproduction also apply to those parts of the product that are irrelevant to the assessment of inventive step?
Often, various marketing materials or technical brochures refer to the features and benefits of a product without providing any details. Obviously, such materials do not permit reproduction of the product, and the question then arises as to whether the published features are prior art.
In the case of the polymers mentioned above, the requirement of reproduction would mean that the way these products are described does not make them or their properties part of the prior art. However, the properties described may be sufficient for a person skilled in the art to use in developing new technologies. In these situations, it would seem appropriate for the disclosed features to be part of the prior art even though they do not enable the product to be reproduced.
Read more here.
Laine IP Oy
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Email: posti@laineip.fi
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