Posts by: Julia Mannesson | (4) posts

Your guiding star

A successful and effective company is organized such that the points of the Star Model – Strategy, Structure, Processes, Rewards and People – are aligned and mutually reinforce the business model. As well as using this model to improve the performance of a company, it can be applied when improving management of Intellectual Property (IP).

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An IP strategy reflects what kind of player you want to be – defensive or offensive? It answers questions such as what your IP portfolio will look like after a certain period of time. Or why you use IP and for what.

What about the structure? Consider who makes the decisions about your IP. Is it the R&D manager, or maybe the communication manager? Do you need an IP department in-house or will you be outsourcing everything to an IP firm such as ours? Or perhaps a combination would be best for you? If you want to shorten your lead time you might consider acquiring IP from other parties, cross-licensing, or maybe open innovation.

If you, for example, want to grow your patent portfolio quickly, your employees need to have time for innovation. As a further incentive, you may want to reward all invention disclosures – not only the ones leading to a patent application.

Do you have the right people with the right skills and mindset? Do your employees and co-workers have enough knowledge not to jeopardise your IP strategy, and instead act in line with it?

You probably have tollgates checking development goals but have you included IP in the tollgates? Are you keeping things secret that ought to be kept as a trade secret? Have you checked that your agreements do not include clauses in which all development goes to the other party? Those and other reviews should preferably be part of your processes.

Many companies invest far too much time drawing the organization chart and far too little on processes and rewards. In a fast-changing business environment, and in matrix organizations, structure is becoming less important, while processes, rewards and people are becoming more important.

To sum up, when working strategically with IP, it is not enough only to cover the legal aspects or the technology. You must also consider processes, reward systems and people.

Julia Mannesson, European Patent Attorney and Swedish Authorized Patent Attorney

Potential market size for Unitary Patents is 25% larger than for US patents and 90% larger than for traditional European patents

As you might already know, a European patent application is examined by the European Patent Office (EPO). If a patent is granted, it does not result in a patent that is valid in the whole of Europe. Instead, the patentee needs to validate the patent in each state where protection is to be obtained, resulting in a bundle of national patents. This of course means several fees to be paid to the national patent offices, costs for translations of the patent text, and in some cases a need to use different national agents. In addition to this, each national patent has to be renewed annually.

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(EPO=European Patent Office, NPO=National Patent Office)

Due to the costs involved, many patentees choose to protect their innovation in just a few countries, maybe four or five, leaving their innovation completely unprotected in the rest of Europe and available for exploitation by their competitors.

In the Unitary Patent system, which will hopefully be up and running at the beginning of 2017, the patent application is still examined by the EPO. If a patent is granted and unitary effect is requested, the patent becomes a true European patent. The term unitary effect means that the patent is valid in all participating member states. Presently, approximately 25 states have undertaken to join the Unitary Patent.

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Looking at the potential market sizes for a US patent, a traditional European patent and a Unitary Patent, it is interesting to compare populations. The three most common states in which a traditional European patent is validated are France, Germany, and United Kingdom, which in total have a population of about 210 million (1). The US has about 320 million inhabitants, while the member states of the Unitary Patent have a total population of 400 million. In other words, a Unitary Patent may provide an exclusive right to an innovation on a 25% larger market than a US patent and a 90% larger market than a traditional European patent.

Julia Mannesson, European Patent Attorney and Swedish Authorized Patent Attorney


1 International Monetary Fund, 2014

You have a right to remain silent

(Or: What do midwives and patent attorneys authorized in Sweden have in common?)

As a citizen in a society, you have an obligation to give evidence if you are called as a witness. There are several sanctions that can be imposed upon those who refuse. However, an exception to the obligation to give evidence applies to Swedish authorized patent attorneys (as far as concerns patent matters) and midwives.

According to 5§ chapter 36 of the Swedish Code of Judicial Procedure, lawyers, doctors, dentists, midwives, nurses, psychologists, psychotherapists, family advisors, and patent attorneys authorized in Sweden are excluded from the requirement to testify regarding subject matter that has been entrusted to them during their exercise of profession, or that has come to their knowledge in relation to their exercise of profession. The court is not even allowed to ask questions regarding these matters.

According to the Patent Authorization Act, patent matters are matters concerning patentability of an invention, patent application and the prosecution of the patent application, the validity of a patent, the scope of a patent or patent application, and oral proceedings and preparations prior to the oral proceedings.

So now you know one of the perks of being, and hiring, a Swedish authorized patent attorney.

Julia Mannesson, European Patent Attorney and Swedish Authorized Patent Attorney

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)