Posts by: Love Koci | (9) posts

The Unitary Patent takes an (inventive) step towards grant

The Unitary Patent provides a new way for innovators and companies to protect their intellectual property in the EU. Currently, European patents are granted centrally by the European Patent Office (EPO), but result in a bundle of national patents which must be enforced on a country-by-country basis. In contrast, the Unitary Patent means that a granted patent can be activated in all participating EU member states by a simple and speedy procedure.

Last week, the Select Committee responsible for supervising the EPO’s activities with regard to the Unitary Patent came to an agreement on the distribution of the uniform renewal fees to be paid by the Unitary Patent proprietors. According to the agreement 50% of the fees will be retained by the EPO while the remainder (minus an administrative charge) will be distributed among the participating countries according to a formula that takes account of the GDP and the number of applications filed from that country.

According to the Unitary Patent fee model which was agreed upon on 24 June 2015 by the Select Committee, the annual renewal fees will correspond to the combined renewal fees of Germany, the UK, France and the Netherlands, being the four EU countries in which “classical” European patents are most frequently validated by European patent applicants. The renewal fees, based on the so called “True Top 4 proposal”, start at €35 in the 2nd year to reach €4,855 in the 20th year. Hence, the costs of renewing a Unitary Patent will be €4,685 in total for the first ten years, while maintaining it over the full 20-year term will amount to €35,555.

Considering that the renewal fee issue has been one of the major hurdles for the implementation of the Unitary Patent in Europe, this agreement is an important step to making the Unitary Patent a reality as soon as possible. The Unitary Patent advances the common interest in having an effective and attractive patent system, and shows a clear determination to move forward its implementation.

Love Koci, MSc, PhD, European Patent Attorney

Global Innovation Index 2015: Switzerland, UK and Sweden at the top

The recently issued Global Innovation Index (GII), which is co-published by the World Intellectual Property Organization (WIPO), Cornell University and INSEAD Business School, ranks the innovation performance of 141 countries and economies around the world based on 79 indicators.

Published annually since 2007, the GII is used as a tool for policymakers, business leaders and other stakeholders when evaluating the impact of innovation policies on an economy’s degree of development. The index strives to encompass several aspects of innovation, including policies that promote growth and productivity.

“Innovation holds far-reaching promise for spurring economic growth in countries at all stages of development. However, realizing this promise is not automatic,” said WIPO Director General Francis Gurry. He adds: “Each nation must find the right mix of policies to mobilize the innate innovative and creative potential in their economies.”

Sweden defends its 3rd position from 2014, a feat which according to Susanne Ås Sivborg, president of the Swedish Patent Office (PRV), is “fantastic”.

Regarding the rankings of the most innovative companies, it is highly interesting to compare different lists, statistics and opinions. For example, although the Swedish telecom giant Ericsson stands out regarding the number of filed patent applications (9th position of companies in terms of applications filed at the European Patent Office (EPO) in 2014), the retail-clothing company H&M is the only Swedish company in Forbes’s recent listing of the 100 most innovative companies in the world , found at place 86.

Love Koci, MSc, PhD, European Patent Attorney

Paving the IP way for SMEs

Small and medium-sized enterprises (SMEs) often face difficult decisions about how to prioritize between various efforts, such as marketing, product development and intellectual property (IP). To facilitate the introduction of IP into these companies, Awapatent has recently launched a new service called “Startup Services – IP for the newborn company”. This initiative strives to inaugurate a possibility to create an asset for these companies which could well become their most valuable one, namely an IP portfolio comprising one or more patents, trademark or design protections.

The Startup Services are aimed at companies fulfilling three requirements:

  • The company should not be older than two years
  • The turnover of the company should be less than 500 000 SEK
  • A brief application should be sent, containing company name, address and IP right sought

Within this service, Awapatent guarantees a safe, streamlined and cost-effective process from the first contact with one of its attorneys to the filing of an IP right. The first meeting is free of charge. The service offer also includes agreements, for example a non-disclosure agreement to be used when meeting potential clients or collaborators.

To further illuminate the possibilities for SMEs in this field, the innovation agency of Sweden, VINNOVA, has recently started its distribution of innovation cheques. The goal of this project, which will last until 2017, is to stimulate the development of innovation in SMEs and help improving their innovation capacity. The project will provide the companies with a quick and efficient access to funds for consulting external IP expertise.

The most important requirements for companies wishing to apply for an innovation cheque are as follows:

  • The company should have 3 – 249 employees
  • The company should have conducted business at least 1 year and have a net turnover of at least 1.5 MSEK

The innovation cheque, which may amount to 100 000 SEK, can be used for the purchase of services from consultants having the expertise to provide strategic business advice on the management of IP assets.

In my opinion, Awapatent’s Startup Service and VINNOVA’s innovation cheques should be highly interesting for young aspiring companies. The Startup Service significantly lowers the threshold which many companies associate with IP in terms of complexity and cost. Furthermore, once companies take their first steps into the field of IP, they often gain a deeper insight in its importance, possibilities and reward. I also believe that the innovation cheques directed towards somewhat more mature SMEs are praiseworthy and serve a similar purpose, namely to boost the recognition of IP as an important business tool.

To conclude, I strongly advise SMEs to explore the possibilities of receiving advice and services by acknowledged IP consultants related to Awapatent’s Startup Service and/or VINNOVA’s innovation cheques, regardless of the size of the company’s current IP portfolio.

Love Koci, MSc, PhD, European Patent Attorney

Accelerated processing of Standard Essential Patent (SEP) applications?

Numerous industries have benefited from standard-setting organizations (SSOs), whose primary activities encompass developing, coordinating and producing technical standards intended to address the needs of affected adopters. The SSOs may advance technology, as standardization promotes interoperability, quality and user-friendliness.

Technical solutions developed within the scope of a standard may provide significant added value to its users, and standard-essential patents (SEP) may hereby be rewarded to companies which invest in their R&D to provide these solutions. However, a balance needs to be established between a fair return on investment and the possibility of a user to access the standard. This balance forms the fundament of the FRAND (fair, reasonable and non-discriminatory) licensing terms, whereby SEPs may become widely available.

The observation by the President of the Institute of Professional Representatives before the European Patent Office (epi), Mr. Tony Tangena, sent to the European Commission on 6th February 2015, emphasizes the advantages of FRAND terms related to SEPs. In his observation, Mr. Tangena states that SEPs take on a special role in the patent system, as an exclusion of prospective users from a standard could undermine the standardization impact. Hence, the FRAND principles should be defended to mitigate unreasonable, unfair or discriminatory royalties while still adequately rewarding the companies providing the technical solutions protected by their SEPs. In short, a win-win situation for licensor and licensee should, if not always attained, at least be the principles’ goal.

Given the importance of SEPs, it is unsatisfactory that their processing may suffer from patent offices’ backlogs and/or relatively long lead times until grant. To further expedite the processing of patent applications declared to an SSO as standard essential, the President addresses the idea of providing an acceleration program for these patent applications, similar to other programs such as the Patent Prosecution Highway (PPH), the Accelerated Prosecution of European Patent Applications (PACE), etc.

In my opinion, the possibility of letting standard-related patent applications enjoy a shorter and more efficient processing within an acceleration program is highly interesting. This is even further substantiated when considering the processing of patent applications in an area such as telecommunications. In this area, companies often participate extensively in standardization, and shorter patent application processing times are paramount as the average life-time of granted patents within telecommunications is significantly shorter than in other fields such as mechanics or pharmaceuticals. Hence, as standardization strives to serve consumer welfare, and whereby praiseworthy licensing agreements such as FRAND, in their turn, improve the availability of the SEP technologies, I sincerely welcome an acceleration of the processing of standard-related patent applications to increase the patent protection transparency.

Love Koci, European Patent Attorney

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Fertile grounds for patent applications

According to a recently published survey by the Swedish Patent and Registration Office (PRV), geographical areas where universities and large companies are present promote innovation, and consequently, also the number of filed patent applications.

Some Swedish counties (e.g. Stockholm, Uppsala and Skåne) stand out in the PRV statistics of the number of national patent applications per capita. Common to these counties is that each of them has several renowned universities and colleges, as well as a vast amount of mid- and large-sized companies.

Susanne Ås Sivborg, the president of PRV, is convinced that the society’s support of innovations has a large impact on the number of filed patent applications. Based on the recent statistics, she states that the strongest fields in terms of patent application activity in Sweden are found in the mechanics, vehicle and engineering industry sectors.

The Swedish industry has, to a large amount, been based on innovations which have been patented, and the adjustable spanner, the ball bearing and the tetrahedron-shaped paper carton are well-known examples of economic success stories. Whether or not coming patent applications will thrive in the more traditional field of mechanics, or in rapidly expanding sectors such as telecommunications, Mrs. Ås Sivborg wishes not only a strong inter-county collaboration for innovation development but also an increased knowledge what an innovation is and how to protect it by a patent application.

Love Koci, European Patent Attorney


Swedish Government forms Innovation Council

According to a recently published article in the Swedish business journal Veckans Affärer, the Swedish Minister for Enterprise and Innovation, Mikael Damberg, has promised the creation of an Innovation Council during the spring of 2015 which is to be headed by the Swedish Prime Minister. Mr. Damberg states that a Council of this kind has been the wish of the Prime Minister for a long time in order to emphasize the importance of innovation and to strengthen the global competitiveness of Swedish companies. The Innovation Council will comprise, apart from the Prime Minister and other selected ministers, people from the industry and academia.

According to Mr. Damberg, one of the key issues of the Council will be the apportionment of government venture capital (GVC) to companies of interest. He believes that there is room for improvement of the current GVC administration, as a large portion of the capital is not distributed at all or distributed at a too late stage. He emphasizes that GVC plays an important role, especially in the early stages of R&D, when private venture capitalists may hesitate whether or not to invest.

In my opinion, the initiative of forming an Innovation Council is highly promising. I believe that the support from the Council may be specifically beneficial for small to medium-sized R&D companies which often need a financial push for their progress, whether this results in investing in new equipment, hiring more staff, releasing new products on the market or establishing intellectual property rights.

It will be appreciated that Sweden is regarded as an extremely innovative country. The renowned, New York-based Bloomberg site for business and financial market news publishes each year a ranking list of the most innovative countries in the world based on factors such as the countries’ R&D intensity, manufacturing capability, productivity, researcher concentration, patent activity, etc. In the annual rankings of 2012-2015, Sweden has finished fifth, fifth, second, and sixth, respectively, thereby passing the examination magna cum laude. Nevertheless, it is of vital importance to ensure that Sweden’s enormous innovation potential results in new products, services and intellectual property rights, not only for the benefit of the companies involved, but also of the country’s economic prosperity. Therefore, I believe that the most important task of the Innovation Council is to create and develop strategies such that it may constitute this momentous bridge between innovative ideas and economic growth.

Love Koci, European Patent Attorney

The 2014 World Cup from an IP perspective

Football enthusiasts all over the world indulged in the fantastic spectacle of the World Cup in Brazil this summer, enjoying a large goal average (2.88 goals per group stage game), witnessing flabbergasting results (e.g. Spain vs. the Netherlands 1-5 and Brazil vs. Germany 1-7) and reading everything about the headline-making profiles such as Neymar, Suarez, Rodriguez, Robben and Müller. Eventually, as you all know, Germany won their 4th World Cup title.

As a devoted patent attorney, I cannot escape from the thought of the important role IP plays on the pitch (well, perhaps it shouldn’t be construed as the 12th player, but you’ll see my point soon). For example, does the beautifully composed preamble of patent application US2012148741 ring any bells? “A foaming composition for generating temporary foam-made indications used for marking lines and/or areas to be clearly visualized during a limited period of time and then disappearing without leaving any residues or traces…” A great story lies behind this application: the (alleged) inventor of this “vanishing spray” is the Argentinean journalist Pablo C. Silva (seems like a great name for a football player, too). During a football match, Silva had a free kick blocked by defenders rushing towards him. When driving home later after losing the game, Silva thought he must invent something to stop this, eventually leading to the efficient spray now used by many referees.

What about the balls? Needless to say, they are the subject of many patent applications and patents. Adidas AG is the proprietor of US8529386 which reveals the technology leading to the making of the Brazuca match ball. People with expertise in the field say that the ball flies true and doesn’t knuckle anywhere near the extremes that its predecessor managed, making life a bit easier for the goalkeepers. It should be noted that during the World Cup, the Mexican Institute of Industrial Property (IMPI) reported a confiscation of 4,000 fake versions of these Brazuca balls. Furthermore, IMPI reported that in addition to this, two containers with almost 17,000 (!) fake Brazuca balls were retained since a previous confiscation. Enough is enough.

For supporters, the recently published Brazilian (surprised?) utility model BRMU9002206 “Camisa de futebol com dispositivo musical” discloses a football shirt with an incorporated electronic musical device which plays the hymn of the shirt’s team or country. Indispensable, if you ask me.

With the ever-increasing development of football gear and materials, it is of vital importance to obtain protection for the innovations associated therewith. Furthermore, considering that games may attract up to a billion television spectators, the possibility for multinational companies to expose their brands is paramount. Hence, IP plays a vital role in football and means big business – just as Neymar.

Love Koci, Patent attorney

The pride and joy of working as a Patent Attorney

What was your dream job as a child? My best guess would be astronaut, musician, actor, fireman, veterinarian or soccer player. But what about Patent Attorney? Not on your list?

Definitely, the dream job changes if you ask a child compared to a university student or a newly-graduated student. Lists are regularly published regarding the most popular professions and employers for this group, which is not surprising – the information about the favourite professions is used by politicians, universities, etc., to monitor the educational trends, and companies are more than keen to see how popular they are as an employer.

If you study a recent list of the most popular professions in Sweden, you will find engineer, economist and teacher at the top positions. Furthermore, for engineers, traditional and relatively large Swedish companies constitute the major part of the list of the most popular employers, although foreign companies like Google, Microsoft and McKinsey also do well.

Looking from my own perspective, the profession as a Patent Attorney is hard to come across in surveys of this kind. Even though the mentioned list of the most popular employers does not reveal what kind of profession these companies are looking for, my guess is that an employment as a Patent Attorney at the company is not what comes up first in mind for a student. Furthermore, one could note that no patent agency is to be found in the Swedish top 50 list.

My explanation for this is that the profession – for many people – is rather anonymous. When asked my profession at meetings, parties, etc., I actually get the feeling that my answer puzzles my interlocutor. However, when I continue to describe the details in what I do, i.e. having meetings with companies, universities and inventors regarding their technical development and inventions, drafting patent applications and constructing patent strategies, debating with patent offices and having world-wide contacts with fellow patent agencies, the facial expression of the person in front of me often changes as if he or she was thinking “hey, that sounds interesting!”

So, looking for a career where you can combine a technical knowledge with a linguistic aptitude, see the leading edge of technology, get international contacts, develop your legal knowledge and defend the rights of your company/client? Look no further. The job as a Patent Attorney is interesting, dynamic, challenging, fun and rewarding, and should most definitely qualify amongst the most popular professions around.       

Love  Koci, Patent attorney

Explore the benefits of a first national filing

The filing of a patent application is associated with numerous considerations. Should it be firstly filed as an international PCT application? Would it perhaps be better to directly enter one or more regional phases in combination with some selected countries of interest? Alternatively, should the application firstly be filed nationally before deciding how to proceed?

 Obviously, there is no default answer to these questions. Instead, the patent application filing strategy must be decided on a case-to-case basis by considering factors such as geographical locations of clients, competitors, manufacturer sites, possible future markets etc., as well as the applicant’s financial allocation for the application. It is the duty of the patent attorney to analyze these factors and to protect the interests of the applicant, based on the conditions at hand, when deciding where and how to file.

By firstly filing a patent application nationally, the applicant may start the patent journey cautiously and avoid relatively high costs at an early stage. Seen from a local perspective, a patent application may be filed nationally with the Swedish Patent Office (PRV). A filing with the PRV is beneficial in that the filing fee is relatively inexpensive and that the search/opinion regarding the patentability of the application is issued relatively fast. These aspects may be of special interest for applicants desiring to keep initial costs low and/or being unfamiliar with the prior art in the field of the application. Furthermore, a relatively quick patent application procedure gives the applicant a further insight regarding the possibility of obtaining a Swedish patent and/or an indication when contemplating a PCT-route wherein priority is claimed from the Swedish application. In some cases, it is even possible to obtain a national Intention to Grant Communication (“slutföreläggande”) within the priority year, which may even further contribute to the evaluation of a possible PCT filing.

A national patent application may be filed with the PRV in English, followed by a later translation into Swedish. A first filing in English is advantageous in that a continuation into the international PCT phase may thereby be prepared. Furthermore, in a recent press release from 30 June 2011, issued by the Swedish Ministry for Industry, Employment and Communications, it was announced that the Swedish government has decided to investigate the possibility of abolishing Swedish translations of national patent applications filed in English. It will also be investigated if national patents could be granted in English similarly to the validation of European patents in Sweden. The mentioned measures, if put into practice, will lead to further procedural simplifications and translation cost savings for the applicant, and will moreover, as related to this context, influence the step of where/how to file the application.

 To conclude, the above highlights several beneficial aspects of a first national filing. On the other hand, it should be noted that directly filing an international or regional patent application could be preferred, dependent on the case at hand. Although the way of filing a patent application hereby seems rather complex, the content of this text may, as a final remark, be summarized in one sentence: a sound patent application filing strategy, whether international, regional and/or national, is based on the interests of the applicant and the expertise of the patent attorney, aiming to protect these interests.

Love Koci, Patent Attorney, Awapatent