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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.
A precedential (U.S) Federal Circuit decision issued this week in Inguran, LLC v. ABS Global, Inc., No. 22-1385 (Fed. Cir., decided July 5, 2023) illustrates difference between direct infringement and induced infringement of a US patent. On appeal, the Federal Circuit held that the plaintiff was not precluded from bringing an induced patent infringement claim, based on a prior claim of direct infringement under the facts presented.
The subject appeal involved a dispute between Inguran, LLC (doing business as STGenetics (ST)) and ABS Global, Inc. (ABS). ST holds a patent (U.S. Patent No. 8,206,987 (the ‘987 patent) for a method of sorting sperm cells based on their DNA characteristics to preselect the gender of domestic animal offspring.
The litigation history between the parties dates back to 2014 when ABS filed a lawsuit against ST alleging antitrust violations. ST countersued, including a claim of patent infringement against ABS based on the ‘987 patent. ABS stipulated to direct infringement of certain claims of the ‘987 patent.
In the initial trial (ABS I), a jury found that one claim of the ‘987 patent was invalid, while the remaining claims were infringed. The jury awarded ST a lump sum for past infringement and an ongoing royalty on future sales of sexed semen straws. In particular, the district court issued a judgment that granted ST an ongoing royalty of $1.25 per straw of sexed semen sold by ABS using the infringing technology.
ST later filed a further suit (ABS III) asserting additional patent infringement claims on the same ’987 patent, including induced infringement of the ‘987, after learning that ABS had begun selling and licensing ST’s system to third parties. The district court dismissed the induced infringement claims of the ’987 patent on the grounds that the claims were precluded by the judgment in ABS I, based on the doctrine of res judicata. Res judicata is a legal principle that refers to the doctrine of claim preclusion, which prevents the same parties from relitigating the same claims or issues that have already been finally adjudicated by a court.
On appeal, ST challenged the district court’s application of res judicata and its interpretation of the scope of the earlier judgment. The primary focus of the appeal was on the issue of induced infringement, which refers to the occurrence where a party actively encourages or facilitates another’s direct infringement of a US patent. Direct infringement refers to the occurrence where “[a party] without authority makes, uses, offers to sell, or sells [a] patented invention, within the United States or imports into the United States [a] patented invention during the term of [a valid] patent…” 35 U.S.C. § 271(a)
The Federal Circuit reversed the district court’s decision, finding that ST’s claim of induced infringement was not precluded by res judicata. In so holding, the Federal Circuit agreed with ST that an induced infringement claim rests on evidence and elements beyond those required by direct infringement. Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., 30 F.4th 1339, 1351 (Fed. Cir. 2022) (“For induced infringement under 35 U.S.C. § 271(b), the two steps become three. In addition to showing direct infringement . . . , the patentee must also show that the alleged infringer ‘knowingly induced infringement and possessed specific intent to encourage another’s infringement.’” (quoting Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398 407 (Fed. Cir. 2018)).; see also Gammino v. Am. Tel. & Tel. Co., No. 12-666, 2013 WL 6154569, at *2 (D. Del. Nov. 22, 2013) (finding that res judicata did not bar a direct infringement claim because induced and indirect infringement claims arise under different statutes and comprise different causes of action).
The Federal Circuit further held that an induced patent infringement claim brought at the time of ABS I would have been based on speculation, the question of inducement was not considered, and the scope of ABS’s direct infringement allegations cannot reasonably be expanded to cover actions of third-party licensees.
In conclusion, the Federal Circuit reversed the dismissal of ST’s induced infringement suit against ABS and held that ST was not precluded from bringing an induced patent infringement claim in ABS III, based on the judgment in ABS I.
We are extremely proud to be recognized once again as one of the top patent law firms in Europe. We have for a long time systematically invested in training our experts and raising the level of our expertise in especially the European level. 16 of our 24 patent experts are qualified European Patent Attorneys, authorizing them to represent our clients in the European Patent Office, EPO. Now, as the Unitary Patent (UP) system, covering several EU countries, has started, with the addition of the Unitary Patent Court (UPC) dealing with infringements and validity of both European and Unitary Patents, the significance of European wide competence of patent attorneys is highly important.
We extend our heartfelt appreciation to all our clients and colleagues worldwide who actively participated in this survey. The consistent dedication and investments we have made in delivering client-centric services have yielded remarkable results. Moving forward, the advancement of our operations and the enhancement of our clients’ experiences will remain our utmost priority. We would also like to express our gratitude to each and every one of our employees, whose unwavering commitment to our clients’ intellectual property rights has been invaluable.
It is important to note that the survey “Europe’s Leading Patent Law Firms” conducted by the Financial Times – one of the most distinghuished and widely circulated business newspapers in the world – is objective and impartial. The rankings are based on recommendations by clients and other patent law firms, with no influence from the firms recognized. For a detailed overview of the ranking list and the survey methodology, please visit here.
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 UPC Agreement (UPCA) (17 EU member states in the beginning). A European patent with unitary effect may also be referred to as a Unitary Patent (UP).
The countries which have ratified the UPCA are (marked with green in the map): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
All EU member states have not ratified the UPCA. For example Croatia, Poland and Spain have not ratified the UPCA. Non-EU member states cannot participate in the UPC system. For example Great Britain, Norway and Switzerland cannot participate in the UPC system.
Unitary Patent (UP) will be automatically under the jurisdiction of the UPC. UPC’s jurisdiction comprises litigation of UPs and European Patents, precautionary measures, and injunctions in the territory of UPC member states.
Existing European patents will fall under the jurisdiction of the UPC if they are not specifically excluded (opt-out). During the transitional period (at least 7 years), national validations of a traditional European patent may be excluded from the jurisdiction of the UPC, in which case proceedings take place before national courts. It is also possible to withdraw the opt-out (opt-in). However, it is worth remembering that these procedures can be done only once.
National patents are not under the jurisdiction of the UPC. The effects of the UPC system must be taken into account in any case, because of your competitors’ European patents and UPs, for instance.
If your strategy for the UP and UPC is still under planning or you need more information/recommendation, your EP attorney at Laine IP and our UPC specialist team (upc@laineip.fi) will help you forward.
Original news can be found from here.
Assignment/transfer agreement
A document in which the owner of the right transfers the right to another party. For example, an inventor may transfer the right (i.e. ownership) of the invention to the applicant, or a company may transfer a trademark to another company. For transfers between companies, a transfer agreement is often signed in addition to a sales contract, so that the sales contract does not need to be filed at an office.
Employment invention
In some countries, like in Finland, the employer has the right to inventions made by their employees, against a reasonable compensation. If the employment invention law (or for example a research contract) does not apply to the inventor, the inventor is free to do whatever they want with the invention.
License agreement
An agreement between the owner of a right (licensor) and a licensee, giving the licensee the right to use the registered right (patent, trademark, design, utility model). Often a license agreement also covers transfer of for example knowhow. A license agreement may be limited to a geographical area, and it may be exclusive (i.e. the licensee is the only one who can use the right) or non-exclusive (in which case the licensor can give rights also to others).
Power of attorney/authorisation
A document by which the applicant authorises the attorney or agent to act on their behalf towards the office. The attorney thus handles all correspondence with the office.
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