Archive | 2013, November | (3) posts

“The more you learn, the more enjoyable it gets”

What does it mean that something is ”new”? New to you, new to some designated person, or new in an absolute sense? This naively straight forward, but in practice very complex, concept was the subject of our last class in preparation for the European Qualifying Examination (EQE). How can it be “new” to make a chemical reaction at, say, 73oC when someone previously proposed making the same reaction in the range 50-90oC? How can something be considered “not new” just because a doctoral thesis on the subject was just given a date stamp at a library?

Most people who have come across the patent world know that you may need professional representation to prosecute your case. Fewer know that those who want to become a European Patent Attorney must pass a fairly comprehensive examination that spans across three days and tests the candidate on most aspects of European patent law. And only those who actually prepared for the examination understand just how much detail you need to master in order to pass.

About half of all patent professionals at Awapatent are qualified European Patent Attorneys. To maintain a high pass rate at the examination, we have our own internal training program which dates back 20 years. It has had various names over the years, but today we simply call it EQE Basic. It runs for almost a year and includes 12 full-day classes, a substantial amount of homework, diagnostic tests, and a final in-house exam.

I was myself a student at the program during 2001-2002, and have been one of the tutors since 2004 together with Magnus Johansson and Sören Giver. It is one of the most rewarding tasks I have in my professional life, having the pleasure of each year training a dozen or so eager candidates. It is indeed true that you learn a lot by being a teacher! And the more you learn, the more enjoyable it gets. Or as I sometimes put it: “When you read a decision from an EPO Board of Appeal and actually enjoy it, you’ve come a long way.”

Mattias Pierrou, European Patent Attorney, Partner and Vice President

Wider scope of protection for Swedish patents?

Last week the Swedish government referred an amendment of the Swedish patent law to the Council on Legislation for reconsideration. According to the suggested amendment, patent applications filed in English need not be translated into Swedish. Instead, they can be granted in English.

For applicants filing a Swedish patent application in English and wishing to obtain a Swedish patent, this ought to be a major cost saver. However, many of my clients use the Swedish patent system for receiving a quick and not so expensive search and examination and then, after receiving the first Office Action, they abandon the patent application. The patent protection in Sweden is instead obtained by validating a European patent in Sweden. With the new legislation though, there can be benefits in keeping the Swedish application alive.

There will be occasions when the applicant might have to file a translation of the claims, e.g., when publishing the patent application in order to obtain provisional protection and upon receiving an intention to grant. Further, during opposition or litigation, the patentee can be requested to file a translation of the description and the abstract. It is however the claims in English that determine the scope of the patent.

When validating a European patent in Sweden, the scope is instead determined by what is present in both the claims of the European patent and the claims of the Swedish translation. This can be a problem if the translator chooses a narrower wording than the wording in the original application. Hence, one advantage with letting the Swedish patent application become a patent might be a wider scope of protection.

To sum up, the suggested amendment provides both cost savings and supposedly a wider scope of protection. Whether it will lead to an increase in filing rates, we can only guess.

If the amendment is passed, it will become effective 1 July 2014.

Update: The Council on Legislation have now reviewed the amendment and have no objections. The next step is that the Swedish government presents a parliamentary bill to the Riksdag. (25 Nov 2013)

Julia Mannesson, European Patent Attorney 

Link to more information (in Swedish)

Patent Prosecution Highway: New possibilities for Swedish patent applicants

Swedish patent applicants and others using the Swedish Patent- och registreringsverket (PRV) as the office for first filing of patent applications are getting new possibilities for obtaining accelerated prosecution of their following foreign patent applications; the PRV are expanding their participation in the international PPH network with a number of new PPH agreements.

Effective 1 October 2013 the PRV together with the JPO launched their first PPH agreement using national work products.

Furthermore, the PRV and the Korean IP Office (KIPO) have signed pilot PPH agreements using both national and PCT work products. These pilot agrements will, according to the PRV website, take effect on 1 January 2014.

Finally, the PRV also plans on signing a pilot PPH agreement using national work products with the USPTO. This pilot agreement is, again according to the PRV website, planned to enter into force on 1 January 2014.

Hence, so far it is now, or will within short be, possible to request accelerated prosecution of a Japanese, Korean or US patent application claiming priority of a Swedish patent application based on the examination results of the PRV. Furthermore, it is not unlikely that more PPH agreements will follow – and in any event the Awapatent IP Blog will follow the developments. 

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Link to the PPH site of the PRV