Posts by: Oskar Kronsell | (2) posts

“Technical poetry”

With the ambition to become European Patent Attorneys, a dozen of eager “students” follow our in-house EQE basic program, me being one of them. As we have come to learn, the articles and rules in the European Patent Convention (EPC) are often not enough to fully understand the concepts of European Patent Law, but case law, and the knowledge of how to interpret the case law is often necessary. The latest class in the EQE basic program covered the topics of Unity of invention, Disclosure of the invention and Claims.

The first topic, unity of invention, is a mere administrative concept and is not related to the fundamental requirements for granting a patent. EPO wants to get paid, and it wants to get paid for each invention, or rather each inventive concept. Art. 82 EPC ensures that even though an application may contain more than one invention (note, on filing), you cannot pay the fees for only one application if you seek protection for more than one invention. However, even though unity is not a fundamental requirement for granting a patent, the patent application may very well be refused if requirement of unity is not fulfilled.

While unity deals with the fact that EPO wants to get paid, disclosure of the invention (Art 83 EPC) or “sufficiency of disclosure” benefits third parties by enriching technology. The general principle is that the applicant may obtain a monopoly protecting his invention only if he provides a complete disclosure of the invention. Here EPO is tough; if the application on the date of filing fails to teach the skilled person of how to carry out the invention, the application will be refused, and there is no remedy for an insufficient disclosure.

Art. 84 EPC states i.a. that the claims shall be clear and concise. However, a very clear claim (i.e. lots of features) may often unduly limit the scope of protection.  For me, this balancing act between clarity and undue limitations, is often the toughest part in claim drafting. All of the essential features of the invention have to be included in the claim, but preferably not much more. One way of describing claim drafting to an unskilled layman, is in terms of “technical poetry”. However, perhaps contrary to an ordinary poem, the words and terms defining the features of the invention in a claim do not necessary need to flow (but they may very well do so). A logical relationship among the words, terms and features is the key.

Oskar Kronsell, Associate

A visit to the Copenhagen office

This week has so far been one of the most interesting weeks in the Specialist programme (soon to be renamed to the Trainee programme). Topics of the week include infringement, opposition and sales training, not to mention a trip to the Copenhagen office. The latter definitely being one of the highlights of the week.

The Copenhagen office is situated in the eastern part (Østerport) of the city in an old genuine building. The topic of the day was foreign filing which turned out to be a very interesting subject. Acceptance date, PPH (Patent Prosecution Highway), heavy prosecution countries and restriction requirements were all new expressions for the most of us. We found out that there is a lot more to know than EPC and Swedish patent law. Strategic decisions, for example using utility models instead of patents, were especially interesting. And although we didn’t get a hold of any Danish pastry, we had the pleasure to enjoy a Grøn Tuborg.

To analyze claims from another perspective – like when to file an opposition – was the topic of today. Arguing why a claim should not be valid instead of the opposite differed from what we are used to and resulted in many intriguing discussions. Hopefully, it will be more time to deal with oppositions in the upcoming practice period.

Soon, it’s time for sales training and I’m convinced that it will be as instructively as always.

Oskar Kronsell, Associate