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The secrets of successful patent applications – revealed by a 35-year veteran of the IPR industry


November 29, 2019

Patent Attorney Klaus Roitto has worked at Kolster since 1984. From his long career, he looks back with particular fondness on the inventions that still are used and can be seen in everyday life. But Roitto is still learning new things – most recently how to get faster knowledge of the patentability of an invention for which a patent application has been filed first in the USA.

A successful patent application begins with describing the invention in the simplest possible terms. The patent attorney needs to understand the product’s user environment and the background of the invention before drawing up the application. It is usually not possible to correct errors and omissions in a patent application after it has been filed, so you have to include everything in the application the first time. 

A successful patent application requires the patent attorney to take a broad view of the invention and its realization together with the customer. For example, you need to consider, and sometimes investigate, whether the invention could be implemented in a different way than described by the customer. When you succeed in this, the customer can enjoy effective patent protection and get a leg up on the competition.  

”Drawing up a patent application starts with understanding the technology and where the invention is used” 

My work with a new customer typically starts with a brief telephone conversation about the invention and, sometimes, the patenting process. We then usually agree that the customer will send me a more detailed technical description of the invention, such as a short description accompanied by a drawing. I study the invention, after which we discuss it and the related technology in more detail, either face to face or over the telephone. 

If the invention is strongly integrated with its production or operating environment, the patent attorney should visit the customer at an early stage to see the invention or the process on site. This will give the patent attorney a good working knowledge of the invention and eliminates the risk of taking the wrong track when drafting the application. 

In my career, I have visited customers to see how products like fireplaces and trailers are manufactured.  When I can see the product and discuss it with the customer, I will understand the invention much easier and better than I could from just looking at production drawings. On the site you also see the invention live and in all three dimensions. By visiting the factory, I can also photograph the invention for future reference when drafting out the application. Taking a look at the customer’s production and business environment can also avoid a lot of unnecessary brainwork compared to trying to puzzle out the gist of the invention from a written description. 

”Inventions change, but the essential nature of IPR stays the same – you need to keep up with the times” 

The role of information technology is the biggest current trend in inventions. Computing has become integrated with traditional industries, and few inventions are purely mechanical any more. Today, a typical invention could involve the automation of an industrial process, and the numbers of patent applications involving AI and machine learning have skyrocketed.

The digital revolution has also changed the work of patent attorneys. When I started, we did everything with pen and paper, but today, the computer is the patent attorney’s most important tool. 

Even though the essence of IPR has stayed and will remain the same, i.e. certain basic principles continue to apply, the legislation surrounding them is constantly being amended. Countries are trying to harmonise their legislation and have also succeeded in doing so to a certain extent, especially within the EU, but the laws of many states are still designed to protect national interests. I believe that future patent agents will need to have a much higher level of global awareness to be able to offer the best service to their customers. 

”You learn something new every day in the IPR sector” 

There is always something more to learn about IPR. My latest lesson involved a new way of getting a quick assessment and idea of an invention’s patentability when the first patent application has been filed in the United States for one reason or another, most probably because the inventor was American. If you file your first patent application in the United States, the authority typically will not give you an examination result on the patentability within 12 months – and asking them to expedite the process won’t do any good. 

In practice, this means that the applicant will not receive from the authority the patent authorities’ examination result by the deadline for deciding whether to apply for patent protection in other countries. In other words, the company may have to decide on filing for patents abroad without any idea of the invention’s patentability. This is naturally awkward from a business perspective. 

I have now learned that a company can get the examination result on patentability within one year of filing a patent application in the United States. For this, the company files, soon after the US-application has been filed, in a different country, such as Finland, for the same invention another patent application and notifies the Finnish authority in writing that an examination result is requested within the term for right to priority, i.e. within 12 months of the filing date of the US patent application. 

In such a case, the Finnish authority will give the examination result before the company will have to decide on the wider international patenting of its invention. Without this procedure and a written request referring to a patent application filed in the US, the Finnish patent authorities will not give the examination result within one year.

”I’ve been in IPR since 1984” 

After graduating as a Master of Science in Metallurgy from the Helsinki University of Technology, I got my first job at VTT Technical Research Centre of Finland, where I wrote guidebooks on material technology for four years. The guides were intended for industrial designers and published by the Federation of Finnish Metal and Engineering Industries. The purpose of the publications was to help designers choose materials for different applications and products, and they were based on literature reviews and interviews. 

One day, I noticed Kolster’s advert for a patent attorney's opening in the newspaper. It said that the position required good writing and language skills, as well as familiarity with technology. I got the job, started at Kolster in 1984, and here I still am. 

In my 35-year career, I have worked to protect products in the mechanical engineering, transport and construction, manufacturing and material technology, metallurgy, and fire protection industries.

”You can see some of my client’s inventions in everyday life” 

Inventions you can see in everyday life are close to my heart and these inventions I remember the best.

For instance, I remember helping a customer to patent a street stand used by shops for advertising products on sale. The customer had thought to add springs that enabled the stand’s frame turn relative to the pedestal of the stand, so that the stand could remain stationary and not be blown over or moved by the wind any more. You can still see these spring stands in front of grocery stores.

”Court decision – highlight of my 35-year career” 

The highlight of my 35-year career is clearly when I heard the court decision from the District Court of Helsinki regarding an exceptionally extensive patent case.

According to the court decision, my client’s patent was not only kept in force despite two nullity actions by two companies, but these companies were sentenced to pay vast damages to my client because they were infringing the patent. I was the technical expert in these proceedings for my client. This happened about eight years ago.  

”I represented Finland for six years in FICPI” 

Internet helps me to keep my IPR competence up to date. I also attend conferences and frequently discuss changes in national and regional IPR legislation with my international colleagues. Drawing up patent applications is a continuous learning process about the industries I work with.  

I attend annually the Patent Day organised by the Finnish Association for Industrial Property Rights to hear IPR news and exchange information with my colleagues. I am also a member of FICPI, the International Federation of Intellectual Property Attorneys, an organisation having an impact on the global development of the IPR field. FICPI keeps its membership informed of trends and developments in IPR. I served as Finland’s delegate and representative for FICPI from 2003 to 2009 and have been working as a long-standing member of FICPI’s study & working group for international patent matters.

Contact us

Klaus Roitto
+358 50 524 2403


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