PPH in Finnish Patent and Registration Office

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1 PPH in Finnish Patent and Registration Office Juha Rekola PPH User Seminar on 22 July 2014 at DPMA

2 The Finnish Patent and Registration Office Our name in English changed from the National Board of Patents and Registration of Finland (NBPR) to the Finnish Patent and Registration Office (PRH) in January 2014 Board of appeals was relocated to the Market Court in 2013 Personnel 440 at the end of 2013

3 Patents and Innovations Line Grants patents and registers utility models Acts as receiving authority for PCT-applications PCT/ISA and PCT/IPEA since 2005 Publishes translations of European patents validated in Finland Disseminates patent (and utility model) information In 2013 the PRH received 1737 national patent applications, 800 PCT/ISA and 93 PCT/IPEA applications and 480 utility model applications Patents and Innovations Line has 126 patent examiners

4 Organization

5 Patent applications filed with the PRH in

6 Patents granted for Finland

7 All EP-validations in Finland

8 Top 20 technical fields Computer technology; 9,0 % Others; 17,8 % Digital communication; 8,8 % Machine tools; 2,3 % Basic materials chemistry; 2,4 % Environmental technology; 2,4 % Handling; 7,4 % Transport; 2,4 % Audio-visual technology; 2,5% Surface technology, coating; 2,5 % Textile and paper machines; 6,0 % Medical technology; 2,6 % Thermal processes and apparatus; 2,6 % Civil engineering; 5,4 % Materials, metallurgy; 2,7 % Engines, pumps, turbines; 3,1 % Other special machines; 3,2% Chemical engineering; 3,7 % Measurement; 4,3 % Telecommunications; 4,0 % Electrical machinery, apparatus, energy; 4,9 % Source: WIPO database, applications to PRH

9 Utility model applications

10 Patent applications filed by Finnish applicants Partner PPH IP5 offices Other PPH partners > CN JP KR US AU AT CA DE IL NO RU SE GB Source: WIPO statistics

11 Language reform filing an application in English Hopefully this reform will also simplify and encourage applicants to utilize the PPH-agreements more efficiently Since November 1st 2011, applicants have had a possibility to request processing of a Finnish patent application in English at the PRH 853 applications (out of 1737) were filed in English in 2013 (~49%) When English is chosen as the proceedings language, the whole collegial procedure is in English The application, all office actions and applicant s replies are in the same language Abstract and claims must be translated into either of the official languages before the application becomes public

12 Language of the proceedings after grant After grant, the procedural language is either of the official languages (Finnish or Swedish) Opposition, infringement, invalidation The language is the same to which the claims have been translated into During opposition period, when the description is in English, the applicant must provide also translation into Finnish or Swedish upon request Also is the applicant wishes to appeal in a matter concerning the application, Finnish or Swedish translations of description, claims and abstract must be provided to the Market Court The Market Court also requests a translation of the office action in question from the PRH

13 The Market Court The Market Court is a special court hearing market law, competition law, public procurement and civil IPR cases in Finland The language of the proceedings is Finnish or Swedish The court resides in Helsinki The decision in the Market Court in IPR cases is done by judges and Market Court engineers Also part-time expert members may participate in the hearings Decision is based mainly on literal material, but oral proceedings may also be held Decisions of the Market Court can be appealed against to the Supreme Administrative Court of Finland, if a permission to appeal is granted Infringement cases are appealed against to the Supreme Court of Finland

14 PPH countries 2014 PRH has 20 PPH-agreements By the end of June 2014 PRH has received 10 PPH requests 130 PPH requests were filed to the other offices (end of 2013) based on the examination by the PRH

15 PRH PPH agreements PRH joined Global PPH 6 January 2014 GPPH currently 17 countries PRH has four bilateral PPH agreements: SIPO, DPMA, APO and IPO-CZ By the end of June 2014 PRH has received 10 PPH requests: 4 US, 2 JP, 2 CA, 1 SE, 1 FI 130 PPH requests were filed to the other offices: 94 US, 13 JP, 8 CA, 7 KR, 5 CN, 3 RU

16 To make PPH more attractive to FI users Opportunity for FI filers who want faster patent prosecution and cost savings PRH is typically office of first filing (OFF) To make PPH more attractive PRH needs to have first written opinion within 8 months from filing Preferable within 6 months And second written opinion within one year from filing

17 PPH promotion Past promotional events: 2011 with JPO and USPTO 2013 event from user request Presentations in our regular user meetings PPH seminar with USPTO next autumn PPH brochure in July 2014 More information about PRH: PPH webpages:

18 Danke! Thank you! Kiitos!

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