The present meeting was again an intensive event including recent IP topics discussed within platforms, workshops and lectures. In the exhibition grounds it was possible to get in touch with the services providers of the constantly developing field. Berggren INTA participants this year were Managing Director Jorma Hanski, and IP Lawyers Tarja Tchernych (Team Manager), Jukka Palm and Erkki Holmila from Berggren Legal Team.

−Last year we arranged in connection with the INTA conference in San Francisco our own 75 years celebration reception. Over 500 guests from our colleague network attended the reception and the night was immemorial. This year it was our turn to be on the move all day long. The days were filled with prearranged one-to-one meetings with our partners in cooperation. For example Patrafee AB had its own impressive stand in the conference area, Managing Director Jorma Hanski says.

According to IP Lawyer Erkki Holmila the most interesting part of the INTA conference program were the discussions of highly topical matters in the INTA Internet committee, meetings with international clients and deepening colleague networks.

IP Lawyer Jukka Palm, who is an active expert member of the INTA discussion forums, published the article Battle for a reputed brand – top court clash in curious case of rebranding in the IAM Magazine Brands on the Boardroom summary, which was given out in the conference. Read Jukka Palm’s article here: Palm_Brands on the Boardroom. The publication as a whole can be read in www.iam-magazine.com.

Protecting computer programs is a delicate skill

Protecting computer programs with a patent is indeed possible. It works out when the patent application is drawn up to cover not only a computer program but also the technical invention involved in the computer program and preferably also the hardware encompassing the computer program.

When a patent attorney is confronted with an invention that can be implemented by a computer program, he/she will very quickly start to ponder which devices are involved in running the computer program and what kind of technical impacts the program has on these devices. If the technical impacts are new and involve an inventive step, the invention in the computer program is patentable as long as it is evident that the patent application is not about the computer program only. Consequently, the device, in which the computer program is run and on whose operation the computer program has an impact, has to be presented to the necessary extent in the patent application.

Moreover, the claims have to be drawn up in such a way that the patent protection covers both the device and the software and also the method underlying the computer program. In other words, although the claims present the computer program in the form of method steps and/or computer program commands, they must always include the device or system executing the method as well. This provides the applicant with strong support to give the patent authority grounds why the subject matter of the patent application is not the computer program as such.

If everything were simple, patent protection could thus be obtained for a computer program in which a clear connection between the hardware and the software can be shown. However, the situation is complicated by the various ways in which patent offices in different countries look at computer program claims – in spite of the fact that the computer program is presented in the claims via the hardware.

USA is relatively strict on terms

The United States has a reputation of being more permissive of claims which are not within the scope of patentable inventions elsewhere in the world (for example, business methods). Nevertheless, it has also become customary for the U.S. Patent and Trademark Office to request the applicant to add the definition non-transitory in a claim that includes a computer program, if the Examiner finds that the claim can also be interpreted to relate to a transitory signal, for example in a data network.

China requires the itemization of hardware parts

In China, a computer program is patentable, if the claims present a hardware-software combination which, as an entity, improves the prior art and gives technical results and also forms a complete technical solution. This means that the software claim should itemize not only the software but also those hardware parts which execute each program command.

South Korea requires storing onto a storage medium 

The South Korean Patent Office requires that the claims present computer programs stored on a storage medium, for example a CD‑ROM or a disc, for allowing the claims. Moreover, the claim should describe the invention relating to a computer program as a software-hardware combination which represents a development of the state of art, has a technical impact, and forms a complete technical solution.

In India, the decision may depend on the Office

In India, the patenting of computer programs may depend on the regional office where the application is filed within India. An invention involving a computer program may be patentable, if a significant part of the invention presented in a claim relates to hardware and if the hardware is described sufficiently well in the application. In practice, the patent authority may very easily interpret even conventional apparatus claims as software claims, if the devices belonging to the apparatus are arranged to execute computer program commands.

In Japan, you can either succeed or fail

Japan differs from the preceding countries in that computer programs are considered product inventions and hence patentable there. This is naturally an excellent opportunity for the applicant, but taking into account the number of Japanese patents/patent applications accepted/published by the Japanese office and not filed abroad, it is obvious that obtaining a patent in Japan for a patent application involving a computer program may turn out to be very difficult because of documents of prior art.

In the European Union, you are mostly in the clear

The European Patent Office defines more clearly than the above-mentioned offices, what kind of computer programs can be protected by a patent: computer programs having a technical impact that involves an inventive step. In other words, a process involving a computer program is patentable when the process has an impact on the physical and technical functionality of a device, when data to be processed include operating parameters for the device, and when the process solves a technical problem. The European Patent Office does not tell how the claims should be written but tells what should become evident in the claims.

Country-specific amendments are often necessary in an application

It is relatively rare that a computer program claim drawn up in one way would be acceptable as such by different offices. Claims written in the style of Computer program stored on a readable medium are recommendable in applications in South Korea. However, in applications to be filed with the Chinese Patent Office, a claim relating to a computer program should be described in a sufficiently comprehensive way through the hardware as well. The European patent authority usually does not require any specific form for the claims, as soon as the prerequisites set by the European Patent Office for protecting software are disclosed. The U.S. Patent and Trademark Office may ask for amendments in the claim, if the computer program can be interpreted widely as a mere signal.

Because of the different practices, a claim relating to a computer program has to be amended during the patenting procedure in the country in question. And for that to be successful, the patent application describing the software invention has to be drawn up in such a way that support for all the above-mentioned variations can be found. This is because a claim cannot be later supplemented with anything that has not been disclosed in the application (except for the term non-transitory which can be included in claims filed in the USA even if it had not been mentioned before).

However, the patent examiner being human and having his/her own subjective interpretation on the claims, he/she may, even after all the comprehensive groundwork, say that the claim still relates to mental acts, presentations of information, or a mathematical method… none of which are patentable. As such.

Copyright is not sufficient – why not?

A computer program code is interpreted as a literary work which is protected by copyright. The copyright covers such a written format of the program, in which the program has been drawn up. In other words, a program written in the C Programming Language enjoys copyright in the format written in this language only. If the algorithm underlying the program is implemented in any other programming language, the previous copyright does not cover this new format. This means that anybody can thus copy the idea and implement it in another programming language without infringing the copyright of the previous implementation.

More extensive protection can be obtained by a patent, because in a patent application there is no need to commit oneself to implementing the program in any specific programming language. Examples can be given, but they do not need to be committed to. Thus, anybody who implements a patented computer program in any programming language may infringe said patent and may be liable for damages. Consequently, significantly wider commercial benefits can be achieved by patent protection than by copyright protection.

Computer programs can be used for implementing various inventions, and they can be used in a variety of businesses. Therefore, the claims have to be written in such a way that they protect the business but also take into account possible expansions in the business. For this reason, it is not sufficient to protect, for example, merely a single computer. It is thus the task of the patent attorney and the client together to contemplate, among other things, the user’s computer, the Internet server, the programs and data to be sold, the Internet services, the user interface, and the business method (for the USA).

It is worthwhile to utilize other forms of protection as well

The protection of computer programs thus requires a lot of contemplation of what is possible and worthwhile to protect. And because software-related business is global, it is important to know the practices in different countries. If the invention in a computer program does not meet the requirements of patentability, it is also important to think, in addition to or instead of patent protection, what other forms of protection can be utilized for protecting the computer program. Design protection is very often feasible for protecting the appearance or parts of a user interface, for example icons. And a trademark distinguishing your computer program from the computer programs of others is at least as good as patent protection.

What is then worthwhile doing when you have invented a computer program that you are planning to patent? You can call any one of the patent attorneys of the Berggren Group (see our Specialists, search with software or IT) conversant with computers and particularly computer programs, and arrange an appointment. Our patent attorneys can draw up the patent application of best quality possible, and give recommendations on other possible forms of protection for protecting exactly your computer program – wherever you want to bring the invention.

Marjut Lattu-Hietamies
Patent Attorney
Tampereen Patenttitoimisto Oy
marjut.lattu-hietamies@tampatent.eu

“The Greip™ service will continue to be an integral part of the progressive and comprehensive service package that we offer to our clients,” says Jorma Hanski, Managing Director of Berggren Oy Ab. “However, the Greip™ service has huge potential and this is the time to sell it to all companies that require versatile IP management services. We have enlisted the services of a reliable external sales organisation with operating methods that suit our needs.

CORE Partners already provides the best and most innovative solutions in Finland for electronic commerce and boosting sales and marketing, for example. “Greip™ is the ideal addition to the services offered and we are looking forward to getting started with the sales work,” says Mikko Niemelä, CEO at CORE Partners.

Further information on our new partner can be found at the address www.corepartners.fi

Design as a competitive factor 

Also corporate businesses can benefit from design. Practice provides concrete proof for it. For example mobile phone manufacturers are in a constant battle for gaining the affection of consumers for new smart phone models. Design products or casings are a major competitive factor. More attention than ever is paid for the design of everyday life items such as food casings, vacuum cleaners, perfume bottles, streetlights as well as drinking glasses and bottles. A company’s successful design product enchants the viewer so that the consumer grows to desire the product. Design touches, but also commits. A company that manages to produce design items that facilitate everyday life is a charmer.

Get inspired by design and protect the valuable property of your company: design rights 

Protecting your design is a lifeline for success. Is it absurd or extravagant if a company spends 2.000 EUR for EU design rights and immediately gains protection in 27 EU countries? In addition, based on the design rights a company can make a customs surveillance application, which secures the right to step in on infringement cases already on the outer limits of Finland. Also based on the design rights, the company may also get a temporary refusal for a competitor who is impudently marketing a copied product. Design rights might actually be a vitally important acquisition for the company. At their best, design rights may prepare the way for the success story of the company, and neglecting the protection might, at worst, vitiate the whole business operation.

Now is the most fascinating time to protect models

Welcome to come discuss protection opportunities! Think about what kind of new design your company possesses. A product or a part of it is usually protected for a five year period, and the design right may be renewed four times. Therefore the whole protection time is 25 years in total. In addition to own use, the design rights may be utilized by licensing and profit can be made also this way.

For a design right, the design has to be new and have individual character. A design is considered new, if a similar design has not been made available for public before filing the application. A design is considered to have individual character, when the general impression of the design differs enough from designs that are already made available for public.

Get inspired, fall in love and go crazy about design, especially during the Design World Capital Year of 2012, and protect your design rights!

Best regards,

Hannu Halmetoja
IP Lawyer, EU Trademark and Design Attorney
Berggren Oy Ab

Design as a competitive factor 

Also corporate businesses can benefit from design. Practice provides concrete proof for it. For example mobile phone manufacturers are in a constant battle for gaining the affection of consumers for new smart phone models. Design products or casings are a major competitive factor. More attention than ever is paid for the design of everyday life items such as food casings, vacuum cleaners, perfume bottles, streetlights as well as drinking glasses and bottles. A company’s successful design product enchants the viewer so that the consumer grows to desire the product. Design touches, but also commits. A company that manages to produce design items that facilitate everyday life is a charmer.

Get inspired by design and protect the valuable property of your company: design rights 

Protecting your design is a lifeline for success. Is it absurd or extravagant if a company spends 2.000 EUR for EU design rights and immediately gains protection in 27 EU countries? In addition, based on the design rights a company can make a customs surveillance application, which secures the right to step in on infringement cases already on the outer limits of Finland. Also based on the design rights, the company may also get a temporary refusal for a competitor who is impudently marketing a copied product. Design rights might actually be a vitally important acquisition for the company. At their best, design rights may prepare the way for the success story of the company, and neglecting the protection might, at worst, vitiate the whole business operation.

Now is the most fascinating time to protect models

Welcome to come discuss protection opportunities! Think about what kind of new design your company possesses. A product or a part of it is usually protected for a five year period, and the design right may be renewed four times. Therefore the whole protection time is 25 years in total. In addition to own use, the design rights may be utilized by licensing and profit can be made also this way.

For a design right, the design has to be new and have individual character. A design is considered new, if a similar design has not been made available for public before filing the application. A design is considered to have individual character, when the general impression of the design differs enough from designs that are already made available for public.

Get inspired, fall in love and go crazy about design, especially during the Design World Capital Year of 2012, and protect your design rights!

Best regards,

Hannu Halmetoja
IP Lawyer, EU Trademark and Design Attorney
Berggren Oy Ab

Always a fair trade?

It is the task of the National Board of Patents and Registration to ensure that the trade is fair to society. Indeed, a patent will only be granted if legal preconditions are met, in other words, the invention is novel, inventive and industrially applicable. Furthermore, the description of the invention in the patent application must be clear enough to enable a professional person to use the invention on the basis of this. However, it is not the Board’s task to control whether the patent applicant receives a sufficiently comprehensive exclusive right for the patent that he or she would be entitled to with regard to the information he or she has disclosed. Therefore, if an invention is described in a way that enables a person skilled in the art to use it, but some of the methods to carry out the invention are left outside the exclusive right defined with the patent, the trade will be useful for society but unprofitable for the patent holder.

The patent applicant’s interests are only supervised by the patent applicant – or his or her representative. Therefore, the contents of the patent application are crucial.

B is for business-oriented

It is only natural that if the patent applicant is happy with less – i.e. less comprehensive patent protection – than what he or she would be entitled to by making the invention public then the drafting of the patent application as well as its processing, or the trade negotiations, will be considerably easier, faster and less expensive. Let us call this solution patent application A. It is equally natural – as in trades in general – that the one who wants more in exchange for his or her contribution, in this case for making his or her invention public, must be prepared for more challenging negotiations and more laborious drafting of the application. Let us call the application resulting from such efforts patent application B.

Berggren’s IP experts are capable of producing the highest quality of work for the inventor. We are particularly happy to draft business-oriented applications like patent application B. A patent with an effective and sufficiently comprehensive protection is by far a better IP when the idea is to use the invention for successful, long-term business. And who wouldn’t want that? If your company does, read more detailed examples of patent applications A and B – again using the above-mentioned trade analogy. The examples are available here.

With best regards

Janne Väänänen
European Patent Attorney
Berggren Oy Ab

AWEK is a Finnish patent law firm founded in 1996. AWEK has focused on serving its four owners, namely Wärtsilä Oyj Abp, Abloy Oy, STX Finland Oy and EVAC International Oy. AWEK currently employs seven IP professionals. As a result of the transaction, AWEK has become a subsidiary of Berggren Oy Ab. Team manager and European Patent Attorney, Mr. Janne Veräjänkorva is the acting CEO of AWEK.

“Berggren gave us confidence that our issues are in trusted hands in the future, from the viewpoint of a previous owner and customer as well as in the view of the personnel of AWEK. We believe that we have gained the best partner to take care of our IP-related issues,” says General Manager of Intellectual Asset Management of Wärtsilä Oyj Abp, Mr. Timo Vuorimies.

For Berggren, the acquisition brings new clients and a considerable increase in the volume of business. Wärtsilä and Abloy are in among the leading Finnish companies in terms of R&D volume. The expertise and personnel of Berggren are also strengthened by the acquisition.

“The patent attorneys from AWEK will nicely complement our expertise especially in the mechanical arts and electronics. We also obtain new clients who are very strongly oriented on continuous development. We will now be participating with our full intensity in their development from our viewpoint of  work and development of all IP activities,” says acting CEO of AWEK, Mr. Janne Veräjänkorva.

Further details:

Janne Veräjänkorva
Team Manager, European Patent Attorney
+358 10 227 2234
janne.verajankorva@berggren.fi

Always a fair trade?

It is the task of the National Board of Patents and Registration to ensure that the trade is fair to society. Indeed, a patent will only be granted if legal preconditions are met, in other words, the invention is novel, inventive and industrially applicable. Furthermore, the description of the invention in the patent application must be clear enough to enable a professional person to use the invention on the basis of this. However, it is not the Board’s task to control whether the patent applicant receives a sufficiently comprehensive exclusive right for the patent that he or she would be entitled to with regard to the information he or she has disclosed. Therefore, if an invention is described in a way that enables a person skilled in the art to use it, but some of the methods to carry out the invention are left outside the exclusive right defined with the patent, the trade will be useful for society but unprofitable for the patent holder.

The patent applicant’s interests are only supervised by the patent applicant – or his or her representative. Therefore, the contents of the patent application are crucial.

B is for business-oriented

It is only natural that if the patent applicant is happy with less – i.e. less comprehensive patent protection – than what he or she would be entitled to by making the invention public then the drafting of the patent application as well as its processing, or the trade negotiations, will be considerably easier, faster and less expensive. Let us call this solution patent application A. It is equally natural – as in trades in general – that the one who wants more in exchange for his or her contribution, in this case for making his or her invention public, must be prepared for more challenging negotiations and more laborious drafting of the application. Let us call the application resulting from such efforts patent application B.

Berggren’s IPR experts are capable of producing the highest quality of work for the inventor. We are particularly happy to draft business-oriented applications like patent application B. A patent with an effective and sufficiently comprehensive protection is by far a better IPR when the idea is to use the invention for successful, long-term business. And who wouldn’t want that? If your company does, read more detailed examples of patent applications A and B – again using the above-mentioned trade analogy. The examples are available here.

With best regards

Janne Väänänen
European Patent Attorney
Berggren Oy Ab

Berggren Group

Developed by one of our clients, the Oulunsalo-based Wegera Oy, Kolibri is a compact 5-axis module for machining small and complex components. The Kolibri module is a self-contained machine tool incorporating CNC (Computerised Numerical Control). In addition to machining, Kolibri can be used to train CNC programmers, machinists and other high-level experts in production technology. The module can also be integrated into modern production processes along with other desktop units. Kolibri requires no network cables, as it can be included in the user’s wireless local area network.

Mechatronics gem

The Innofinland prize, awarded by President Tarja Halonen, came as a pleasant surprise to Wegera.

Project Manager Seppo Kauppi, who was responsible for Kolibri’s product development, and Machinist and Designer Petri Rimpeläinen, who came up with the product idea, were naturally very happy with the award.

Kauppi and Rimpeläinen said: “It seems that the Innofinland judges realised the significance of products of this type. In recent years, mechanical products have been overshadowed by the world of ICT. Decades ago, mechanical engineering helped Finland grow strong, and now we have a new and highly advanced mechatronics product, the likes of which have not been developed here before. Kolibri makes it possible to manufacture complex products in Finland too, in addition to the Far East, where production has been relocated in recent years.”

The patent application for Kolibri was prepared by Jukka Määttä, a European Patent Attorney at Berggren’s office in Oulu.

“Kolibri is an amazingly small powerhouse of a product with high usability and efficiency. Its creation required innovative thinking and an open mind, getting away from conventional solutions,” said Määttä.

Three Es of product development

In the near future, Wegera intends to market Kolibri in Finland and abroad for machining, production engineering and training purposes. According to Veikko Pitkälä, Managing Director of Wegera, the goals for the further development of Kolibri include a miniature FMS cell and laser applications.

Established in 2001, Wegera specialises in machining and assembly services. The company aims to emphasise the three essential Es of innovation by developing products that are ecological, ergonomic and economical.

More information:

www.innosuomi.fi
www.wegera.com
www.kolibri-cnc.fi

Greip™ was selected as a result of critical competitive bidding.
“We were specifically looking for a partner-independent electronic solution that the various parties in our IP management could join and that would allow them to store their documentation in one place. Another important factor was the ability to carry out modern and functional electronic business operations. Measured with these criteria Greip™ was by far the best and most versatile product on the market,” says Pekka Räsänen, Innovation Manager at the University of Oulu.

“It is crucial for us that the processes and tasks related to the protection and management of intellectual property rights are clearly organised. It is also essential that the various parties outside the university can now be included in the process,” says Maarit Jokela, Innovation Manager.

Tailored for the academic world

The University of Oulu uses the Greip™ Service comprehensively in all of its IP management, including academic inventions. Information hierarchy in the service has been tailored to cater for the academic world. An invention tool will be integrated into the service later, and its product development is currently at the final stage.

“Taking the Greip™ Service to the academic world that somewhat differs from the business world has been a very useful experience for us at product development. It is great to find out that Greip™ suits any kind of organisation,” says Heikki Kinnunen, Manager, Business Development at Berggren Group.

Careful implementation, carefree use

At the implementation phase, Berggren Group is outsourcing the competence of Greip™ expert, Sanna Paaso, IPR assistant, to the University of Oulu one day a week. Paaso has assisted experts at the university’s innovation services in various areas such as organising and saving data. Staff orientation in the Greip™ Service will soon be completed.

“The Greip™ Service is easy to use, and it makes things easy to understand. The service’s various graphic windows and functions for creating a complete visual report with just a click or two make working with Greip™ a great pleasure,” Sanna Paaso says.

“Our new website reflects our competence in ways that match the enthusiasm, innovation, in-depth expertise and pioneer spirit characteristic of our operations,” says Communications Manager Mariliina Karppo.

“We know that the first few seconds are important when visiting a website. We wanted to give our online service a visual image that enables quick and intuitive browsing. Using the popular Java5 programming language, we wanted to create an online source that allows visitors to see at a glance what we offer and how clients benefit from our services. The website is compatible with the latest Internet-enabled devices, including the Nokia N9 smartphone and iPad. In addition, for the front page, we wanted to create an easy-to-use evaluation tool that enables potential clients to identify their IPR needs and aspirations before proceeding to further information and our experts. This customer-focused IPR tool was developed by ZEF Solutions, one of our clients.

According to Karppo, the sphere shape was selected as the visual theme for the website, because it is a universal symbol that has millions of variations and appeals to inventors. The glass spheres on the website represent a strategic mindset and a business-focused approach, which are Berggren’s strengths.

“Examining the sphere from different angles very aptly symbolises the analytical work in which our IP experts immerse themselves every day.”

The Satumaa advertising agency contributed to the planning of the easily updatable and manageable website, and Viidakkorumpu was responsible for the technical implementation.

An amendment to Finland’s Patents Act took effect at the same time. Joining the London Agreement means that the validation in Finland of European patents granted on or after 1 November 2011 will no longer require the entire text to be translated into Finnish or Swedish. As of November, the description of the patent can also be submitted in English, and only the claims have to be translated into Finnish or Swedish. This means considerably lower registration costs for patent holders.

No significant change likely in the behaviour of patentees

The impact of the reduced costs on the number of registrations in Finland remains to be seen, but in Sweden the number of registrations has been increasing slightly since the country joined the London Agreement, though the general economic situation has probably also affected this trend. In Finland, however, the annual fees to maintain a patent are relatively high.

For this reason, I think it is more likely that there will be no significant changes in the behaviour of  foreign patentees, and that the worst-case forecasts about an explosive increase in patents valid in Finland will not come true.

New language provisions

Under the revised language requirements for national patent applications from the beginning of November, a patent application can be examined in English until the patent is granted. Applications were already accepted in English before, but the entire text had to be translated into Finnish or Swedish before publication (which is 18 months after filing). From November, only the claims will have to be submitted in Finnish or Swedish before the application is published. It should be noted though, that if the rest of the application is submitted in English, the National Board of Patents and Registration will issue official actions in English.  Replies to these official actions will then also need to be filed in English.

If the National Board of Patents and Registration grants a patent in English, it will in certain cases still have to be translated into Finnish or Swedish afterwards, for example when a third party so requests during the opposition period, which is nine months from the date of granting the patent, or when preparing an appeal against the National Board’s decision. I think it is safe to assume, however, that such cases will be rare exceptions.

What are the benefits for Finnish applicants?

In my view, it is Finnish applicants who will benefit most from the amended Patents Act and language provisions. This is because applicants will be able to save costs in future, when first applications can be prepared in English for submission to the National Board of Patents and Registration, which means that subsequent applications to foreign patent offices no longer need to be translated. Although the claims are the most difficult part to translate in a patent application, it is usually less expensive to have the claims translated from English into Finnish than to have the entire text translated from Finnish into English.

Correspondingly, for applicants who already submit their first applications in English it will be more cost-effective to obtain a patent for this first application in Finland – and often faster as well, compared with other routes, such as registering a European patent in Finland later.

I hope everyone will seize the opportunities offered and make full use of the London Agreement.

Ms. Kaisa Suominen
European Patent Attorney
Turun Patenttitoimisto Oy

The writer works as Managing Director of Turun Patenttitoimisto Oy, a subsidiary of Berggren Group.

Gitte Härkönen, Patent Attorney and Team Manager of the chemistry team, Mika Laajalahti and Ari Lakaniemi, Patent Attorneys from the electricity team, and Janne Veräjänkorva, Patent Attorney and Team Manager of the mechanics team, all from the Helsinki office, and Eero Palmgren, Patent Attorney from Tampereen Patenttitoimisto, all passed the exam.

Overall, the level of participation and success of Berggren’s employees was high in all parts of the EQE examination.