Protect your IPR assets

Protection of inventions: Patent

In many cases developing a new product or industrial method requires a substantial financial investment. Patenting makes it possible to obtain exclusive rights to the result of the development work. A patent provides the right to prohibit competitors from using the same solution.

A patent also allows for the sale or licensing of a product development result. Obtaining your own patents will also allow you to secure your freedom to operate by signing a cross-licensing agreement with your competitors. In many cases simply having a patent pending will delay competitors from entering the market, thus giving you an advantage.

Patenting requirements: new, inventive and industrially applicable

An invention is deemed new, if the solution specified in the patent application has not been published prior to the date of application by anyone anywhere in the world. The novelty requirement is thus absolute and global.

A solution is deemed inventive if it is not obvious to a person skilled in the art. The skilled person is considered as having knowledge of prior solutions and to some extent knows how to combine them.

A patent cannot protect an idea as such, but it can protect a practical embodiment of the idea. A scientific theory, artistic creation or design, or a rule or method for performing a mental act, playing a game or doing business are not considered inventions.

In Finland, a pending patent application can be converted to a utility model registration within 10 years of filing the patent application. If desired, a patent application can be left pending and its prosecution continued. A concurrent utility model registration can be advantageous in, for example, cases of infringement, if it becomes necessary to quickly obtain officially registered protection for litigation in a court of law.

The proper drafting and subsequent prosecution of a patent application require professional expertise

When drafting a patent application, it requires skill in defining the special features of an invention in patent claims as well as formulating the specification section in precisely the right way from a protection standpoint.

The scope of patent protection is determined based on the wording of the patent claims. If necessary, the patent description section can be used to assist in interpreting patent claims. Agreements submitted during the patent prosecution may also have an influence on interpreting the scope of protection. The manner in which the application description is drafted and the arguments are formulated and, above all, how the invention is defined in the patent claims are of the utmost importance for the scope of exclusive rights conferred by the patent.

Consequently, you would be well served to use a patent expert, who is well-versed in the field of inventions and various patent practices in the drafting and prosecution of your application. Applying for a patent and drafting patent applications involve a wide variety of formal rules and protocols, which someone not familiar with the field would have a difficult time deciphering.

If a patent is also being sought outside Finland, it is not enough that the patent application has been drafted to provide as comprehensive a protection as possible in Finland, but rather, when drafting the application, attention must be given to European Patent Office and, above all, United States patent practices. The US patent practice differs substantially from the European practice.

In which countries should you protect your patent?

A patent is country-specific. Our experts help you to determine in which countries you should file a patent application.

A national patent application filed in Finland will only result in a patent in Finland. In order to apply for a patent in another country, you should either submit a national patent application to the patent authorities of the country concerned, a European patent application to the European Patent Office or an international PCT application.

When choosing the countries, you should take into account a number of matters: Your markets, the areas in which your toughest competitors operate and how you will be able to ensure that your patents will not be infringed. The extent of protection should be in proportion to your turnover and business objectives and be connected with strategic measures. Sales and marketing can be started as soon as the first patent application has been filed.

It is important that the profits you will be able to generate on your main markets will allow you to recoup the patenting costs (translating and processing the application and maintaining the patent). The patent should also be of such impact that it will make the position of your competitors more difficult on their main markets and/or in countries where competitive production is located. By giving consideration to a number of different aspects, you will be able to select the countries in which a patent will provide you with adequate protection against your competitors with maximum cost-effectiveness.

How to file a foreign patent application?

A foreign patent application can be filed by submitting a national patent application directly to the country in question, by using the PCT system or by making use of different patent conventions, such as the European Patent Convention (EPC).

When filing a foreign patent application you can, in most cases, claim priority if the application is filed within 12 months of the first application. The priority year starts from the date on which the first patent application is filed in the Patent Office. There are, however, countries, in which a national application must be filed directly to the national authorities and/or that do not grant any priority.

If the invention has not yet become public, foreign applications can be filed within 18 months of the filing of the first application. Patent Offices usually publish the application after 18 months have elapsed from the filing of the application or the priority date. After this, the invention no longer meets the novelty requirement and no further applications concerning it should be filed.

In certain countries (such as the USA, Canada and Australia) the inventor is, however, protected by a grace period during which an application may still be filed despite the publication by the inventor her/himself.

When (at what point in the invention development process) should a patent application be filed?

The first application must be filed no later than the date on which the invention is made public in order to prevent the publication from becoming a novelty bar for the application. Foreign patent applications must be filed within one year of filing the first patent application in order to ensure that the foreign application bears the same priority date as the first application.

In very rapidly developing fields of technology, in which new innovations and products are published almost on a daily basis, the first patent application should be filed with the patent authority as soon as possible, even if the commercial product is still under development. We have often encountered situations in which the filing of a patent application has been delayed for years, until every detail of the final product is complete. In the meantime, however, various documents and products preventing the patenting of the invention have been published by other parties.

In addition to the fact that the increasing number of prior art documents makes it more difficult to obtain comprehensive patent protection, it also increases costs when processing official actions, because there are more cited documents to analyse.

As a rule, it can be assumed that the first patent application should be filed immediately upon establishing a principle as a solution to a problem and when at least one practical embodiment of this principle has been realised.

Alternative and supplementary embodiments can be protected with subsequent applications, which may claim from the the first application.

Is a computer program or business method patentable?

Legislation concerning this is contradictory. For example, the Finnish Patents Act states that methods for doing business or programs for computers as such shall not be regarded as patentable inventions. Conversely, WTO member states have agreed that patents should be available to all technical fields. Information technology is obviously a technical field.

This apparent contradiction is circumvented in Europe by stating that an invention must "provide a further technical effect which goes beyond the normal physical interactions between the program and the computer ." This kind of effect can be, for example, an improvement in speed, data security or usability, a reduction in the number of errors, etc. The invention must not be described in the application purely as a computer program, but in more abstract terms, i.e. the computer system design in terms of files and data flows is technical. Where patents are concerned, it is better to refer to computer-implemented inventions than patenting a computer program. Indeed, protecting computer-implemented inventions requires highly specialised professional expertise.

Although methods for doing business are not considered technical, a data system used to implement them is technical. The essential question is whether the inventiveness is only found in the new business idea or the design of a data system requires inventiveness. If the inventiveness is only found in the business idea and its implementation on a computer is straightforward, then, according to current practice, the inventiveness is strictly non-technical and, therefore, the invention is not patentable in Europe.

The current practice in the United States is that, although a method for doing business (an algorithm) is also taken into consideration when assessing inventiveness, a patent will not be granted to the algorithm itself or the use of said algorithm on a generic computer. Instead, a patent can be granted to using the business algorithm appropriately on specifically defined data processing equipment, which, unlike in Europe, does not need to contain a specific inventiveness where the business algorithm is concerned.

• How do I draft an invention report?
• European patent
• PCT System
• National patents