We are honored and very pleased to announce that for the first time ever, our firm is appraised as a leading firm in Leaders League for patent prosecution in Finland. Five of our experts: European Patent Attorney Karri Leskinen, European Patent Attorney Jaana Hämäläinen, European Patent Attorney Sini-Maaria Mikkilä, European Patent Attorney Jonna Sahlin and European Patent Attorney Christian Westerholm were listed in the ranking.
Boco IP was also ranked a Leading firm in trademark prosecution. Here is the link to both rankings:
Leaders League specializes in putting together rankings and market research, used by a wide range of corporations and executives when making their decisions.
Their rankings cover the entire business chain and serve as an up-to-date and essential guide for navigating international markets.
Boco IP’s patent professionals can be reached with the following contact details:
We are honored and very pleased to announce that for the first time ever, our firm is appraised as a Leading firm in Leaders League for trademark prosecution in Finland. Five of our experts: IP Lawyers Elina Heikkilä, Jerry Härkönen, Pamela Lönnqvist, Laura Roselius and Peter Åkerlund were listed in the ranking.
Boco IP was also ranked a leading firm in patent prosecution. Here is the link to both rankings:
Leaders League puts together rankings and market research
Leaders League specializes in putting together rankings and market research, used by a wide range of corporations and executives when making their decisions.
Their rankings cover the entire business chain and serve as an up-to-date and essential guide for navigating international markets.
Please do not hesitate to contact Boco IP’s trademark professionals with the following contact details:
According to the IAM, Boco IP “has had another banner year: it has seen an uptick in EPO matters, particularly from international clients; moved over to a new case-management platform which allows its IP experts to spend more valuable face-to-face time with clients; and onboarded several new practitioners to an already deep bench.”
As described by IAM, the firm’s Managing Director and Partner, Karri Leskinen, is entrusted with ”the most complex and super technical matters . You can undoubtedly rely on him to deliver work of the highest quality and the cooperation is guaranteed to be smooth too.” Jonna Sahlin “is appreciated by patrons for her ability to communicate clearly, explain complex technical arguments to judges in a way that is easy to understand, and provide commercially insightful analyses that are vital to those looking to mitigate risk”. Jaana Hämäläinen “really gets to grips with the technology behind an invention and looks to build a great rapport with inventors, and as a result she brings great value to the patents she drafts.”
”For those looking to overcome seemingly insurmountable oppositions hurdles, Christian Westerholm is a wise choice, while industrial machinery expert Sini-Maaria Mikkilä is a big-picture thinker with a great eye for detail and a tremendous knowledge of patenting processes across multiple jurisdictions. As a former senior IP manager at Nokia, Marja-Liisa Autti has an intimate understanding of the telecommunications industry and knows the best way forward in research and development (R&D) settings.”
Anu Keinänen is described to be “extremely diligent and insightful” who is ”exceptionally talented at drafting applications due to her ability to cooperate well with inventors, understand the invention at its core, and formulate claims precisely and clearly.”
Commenting on the results, Managing Director and Partner, Karri Leskinen said, “We are more than delighted about the results. Sincere thanks to our clients for the reviews they gave to the IAM researchers, and especially our devoted personnel for all the work that we have done together over the years.”
Jonna Sahlin, is European Patent Attorney and an Authorized Patent Attorney in Finland. She has also successfully completed the CEIPI course on Patent Litigation in Europe. She consults clients on matters relating to intellectual property and IP strategy and prosecutes Finnish and European patents in the fields of chemistry, biochemistry, pharmaceuticals, diagnostics, food industry, process technology and biofuels. She also handles opposition and appeal cases and has been involved in patent litigation cases as well as Finnish national utility model registration nullity actions. She further conducts freedom-to-operate analyses and prepares opinions on the interpretation of patents. She has been employed at Boco IP since 1998.
The list, first published in 2013, recognizes “senior female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year.” The list is put together based on feedback and recommendations from clients and peers in the IP industry and clients and reflects to importance of the selected practitioners to the success of their firms.
Managing Intellectual Property (MIP) recently published its IP Stars ranking of individuals in the IP field for 2022. IP Stars is one of the world’s leading specialist guides to IP law firms and practitioners. Boco IP is delighted to announce that five of its professionals have been recognised as IP Stars in the ranking this year:
Karri Leskinen, Managing Director and Partner – Patent Star 2022
Jonna Sahlin, Chair of the Board and Partner – Patent Star 2022
Christian Westerholm, European Patent Attorney and Partner – Patent star 2022
Peter Åkerlund, IP Lawyer and Partner – Trademark Star 2022
Pamela Lönnqvist, IP Lawyer – Trademark Star 2022*
Boco IP was recently ranked as a Tier 1 firm in Managing IP 2022 IP Stars for trademark prosecution in Finland.
Background information about the IP Stars survey
IP STARS is the leading resource for companies or individuals looking for experienced legal practitioners for contentious and non-contentious IP advice around the world. The research for IP STARS covers a variety of IP practice areas and more than 70 jurisdictions, making it the most comprehensive and widely respected IP guide in the legal profession. The aspects assessed for the firm rankings include expertise, workload, market reputation, track record, outcomes achieved for clients as well as unique strengths in a given practice area. Judgements about which firms to include in the rankings, and which tier and practice area they should be in, take account of all this information. The data from the IP STARS research is also used for the Managing IP awards.
IP STARS is an exclusive rankings publication; they do not rank all firms and individuals offering IP services. There is no fee to pay or cost to participate in the research, firms and individuals are chosen based on merit through a rigorous and impartial research process and cannot buy entry into this award body. Participation in the research does also not guarantee ranking.
The rankings are based on the review submitted by firms, publicly available information as well as market feedback. The companies being ranked do not know which clients have been contacted or what their assessment has been.
Top Tier Firm 2022
For the first time ever, earlier this year Boco IP received the highest Tier 1 ranking in the IP Stars (Managing IP) this year; see https://www.ipstars.com/firm/boco-ip-finland/profile/101673#rankings. The results confirm Boco IP’s position as a high-quality expert in the trademark field, especially as regards the category for trademark prosecution.
These rankings highlight the quality and expertise of our trademark practice and of our commitment to provide the best IP solutions for our clients. We are delighted that our work has once again been so well noted in the international MIP rankings. We are indeed most grateful for the excellent feedback we have received and wish to thank both our clients and all our international colleagues participating in the study. The latest rankings continue the firm’s longstanding IP Stars success, as Boco IP has consistently been featured among the world’s top intellectual property firms.
On 1 April 2022, Boco IP will move to new future premises in Kamppi, where a unique innovation centre has been renovated and is now ready.
The project was carried out in collaboration with CAPMAN and Innovation Home. Our magnificent new premises are located in the heart of Helsinki on Kansakoulukatu 3. You are most welcome to meet us in either Kamppi or Tampere. It would be nice to see you face-to-face, pop in for a cup of coffee.
As of 1 April 2022, our postal address is Boco IP, Kansakoulukatu 3, 00100 Helsinki, Finland
The unitary patent is coming soon. But what is it actually? The European patent system will undergo a significant change in 2023. When the European Patent Office (EPO) grants an application, the applicant can choose to receive a unitary patent which covers multiple countries. A Unified Patent Court (UPC) is about to be instituted this year, and it will have jurisdiction in all disputes which relate to unitary patents. Even disputes relating to old European patents may in some cases be resolved by the Unified Patent Court unless the proprietor requests an OPT-OUT from the new system. I will here explain the practical consequences of these changes for companies who own patents granted by the EPO or are currently applying for such patents.
The present system (1973 – 2022)
Almost all European countries have signed the European Patent Convention (EPC). These countries are marked red in figure 1. A patent right can be obtained in any of these countries by submitting a European patent application to the EPO.
Figure 1: The EPC countries
The EPO examines European patent application according to the criteria set forth in the EPC and decides whether or not the application can be granted. However, when the EPO grants an application, the applicant does not automatically obtain a patent which covers all the red countries. Instead applicants must choose where they want to put in force the patent right which the EPO has granted. This process is called validation of the European patent (or EP validation). European patents are usually not validated in all red countries because every validation produces additional costs and annuities must be paid separately in each country.
Let’s assume that an applicant validates a granted European patent in Finland, Sweden, Great Britain, Spain, Germany, Poland, Austria and Greece. The end result is illustrated in figure 2.
Figure 2: National validation
The applicant now owns a patent right in all EPC-countries where the European patent was validated. These rights are separate national patents and are therefore marked with different colors. These patents are not under the jurisdiction of a common European patent court (no such court exists in the present system). Instead, each national patent is under the jurisdiction of the corresponding national court.
The EU has a large internal market but the protection which can be obtained from a European patent is fragmented under a multitude of jurisdictions. If a patent right is infringed in multiple countries, the proprietor must undertake separate legal action in each country. Competitors must also file separate lawsuits in each country where they want to challenge an existing patent right. The main objective of the UPC system is to provide an improvement to this aspect of the European patent system.
The future system (probably from 2030 onwards)
It is easiest to understand the UPC system in its final form, after the transition period has ended. Presently this means the year 2030, it is possible that the system enters its final stage as late as 2037 if the transition period is extended.
In its final form the system will work like this:
European patent applications will be examined at the EPO just as before, so the criteria by which applications are judged will not change. Furthermore, all countries shown in red in figure 1 will still participate in one form or another in the system (either as a UPC member or as a non-member). It will be possible to obtain patents in exactly the same countries as before.
The most important novelty is this: When the EPO grants a European patent application, the applicant can decide to put the patent in force as a unitary patent which covers all UPC-countries. The 16 countries which have to date ratified the Agreement on a Unified Patent Court are shown in blue in figure 3. Eight further countries (Cyprus, the Czech Republic, Slovakia, Greece, Hungary, Oreland, Malta and Romania) will hopefully also ratify the agreement within a few years. Unitary patents are always under the jurisdiction of the Unified Patent Court. Just a single lawsuit to the UPC is needed if a patent proprietor suspects that patent infringement is taking place in many blue countries. The decision given by the court will cover all UPC countries. Competitors can likewise file an invalidation lawsuit at the Unified Patent Court. If the Court considers the patent invalid, the patent right will be simultaneously revoked in all blue countries.
Figure 3: The countries which have ratified the UPC Agreement
When the EPO grants a European patent application, the applicant can also validate the patent in any country. This EP validation yields a national patent under national jurisdiction, just as it does in the present system. A single European patent application can thereby yield the patent family illustrated in figure 4: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).
Figure 4: A patent family in the future system
There is no obligation to use the unitary patent. In other words, the applicant can still perform national validations in any countries and obtain the patent rights illustrated in figure 2. But double patenting will be prohibited, so selecting the unitary patent according to figure 4 closes the possibility of national validation in UPC countries.
Transition phase (2023 – probably 2030): changes for new granted EP-applications
Let’s now take a look at the transition phase which begins nest year. At the time of writing (3/2022), practical preparations are under way for starting the operations of the Unified Patent Court and it looks like the UPC agreement will come into force in the fall of 2022 or the 2023 winter. This will mark the start of the transition period, when the system will work like this:
A. When the EPO grants a European patent application, the applicant can validate the European patent in any EPC country (the red countries in figure 1). The end result of this EP validation will then be a bundle of national patents.
Although EP validation is performed exactly like before during the transition period, the legal status of the validated patent will be different from what it used to be in the old system. All patents which are validated in UPC countries will during the transition period by default be placed under the jurisdiction of the UPC court when the new system is operational in 2023. These patents will therefore be both under the jurisdiction of a national court and under the jurisdiction of the UPC (unless the applicant makes an UPC OPT-OUT announcement – I will say more about this below).
Figure 5 illustrates a patent family obtained by validating a granted European patent in the colored countries during the transition period. The applicant has performed national validations in exactly the countries as in figure 2 but has not exercised the OPT-OUT. Finland, Sweden, Germany, Austria and Greece have been marked with striped colors to illustrate that these national patents are both the jurisdiction of both the UPC and the corresponding national court. The patents in Great Britain, Spain and Poland, on the other hand, are illustrated with a single color. They will not under any circumstance be under the jurisdiction of the UPC since these countries are not UPC states. Greece is here used as an example of a country which has not yet ratified the UPC agreement but may do so in the future. The status of the Greek patent will depend on Greece’s ratification status on the day when the patent was granted: if the grant occurs after Greece has ratified the UPC agreement, then figure 5 is correct. If it occurred before Greece ratified the agreement, then the Greek patent will not be under the jurisdiction of the UPC and Greece should instead be presented with a single color in figure 5.
Figure 5: Joint national and UPC jurisdiction
The proprietor of the patent family in figure 5 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. Correspondingly, a competitor who wants to invalidate the patent family illustrated in figure 5 can tackle this patent right in all striped UPC-countries with one UPC lawsuit, or alternatively deal with them one by one through national lawsuits. But neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: the only way to enforce or invalidate this patent rights in non-UPC countries is to take action in national courts.
The proprietor can during the transition period remove all national patents shown in figure 5 from UPC jurisdiction by making an official OPT-OUT request. It’s possible to make the OPT-OUT request already when an application is being examined by the EPO. The OPT-OUT moves the patent family back to the status illustrated in figure 2: every national patent is only under national jurisdiction, so the proprietor and competitors can only take national legal action. Proprietors who change their mind about the OPT-OUT can return once more to the status shown in figure 5 by requesting an OPT-OUT cancellation. However, no further OPT-OUTs back to figure 2 will then be possible.
The OPT-OUT ensures that the patent proprietor will avoid situations where a competitor tries to invalidate a bundle of national patents at the Unified Patent Court. The OPT-OUT also closes the doors of the UPC for proprietors themselves, but they have the possibility of opening those doors back up by cancelling the OPT-OUT.
B. When the EPO grants a European patent application during the transition period, the applicant’s second option is to decide that the granted patent should be put in force as a unitary patent in the UPC countries. In addition to receiving the unitary patent, the applicant can also decide to validate the granted patent in non-UPC countries. The end result can then for example the patent family shown in figure 6.
Figure 6: A unitary patent and national patents
No OPT-OUTs can be made in the patent family illustrated in figure 6. It is not possible to convert the unitary patent into a bundle of national applications, and the unitary patent cannot be brought under the jurisdiction of national courts in UPC countries.
It should also be noted that a unitary patent can be obtained only through a European patent application which is granted by the EPO after the UPC has come into force, when the application is granted. The patent proprietor cannot convert a bundle of national patents (figure 2 or figure 5) into a unitary patent. This is true regardless of when the application is granted (before or after the UPC start).
Consequently, as soon as the UPC is in force (and the transition period has begun), the applicant has to make decision A or B for every European patent application granted by the EPO.
Additionally, the transition period also brings along some changes for national patent rights that were created by EP-validation before 2023.
Transition phase: changes for European patents granted and validated before 2023
Let’s assume you own a large European patent family which was created many years ago by validating a European patent in the countries which have been colored in Figure 7. The present legal status of this family is shown in Figure 7 – each patent is under national jurisdiction.
Figure 7: A patent family under national jurisdiction
Figure 8 shows the same patent family on the day when the UPC agreement enters into force. The status is unchanged in Great Britain, Spain, Poland and Turkey since these countries are not UPC members. But in the UPC member states of this family; Finland, Sweden, Germany, France, Austria and Italy, the start of the UPC system has shifted the national patents under UPC jurisdiction, although they also still remain under national jurisdiction. These countries have therefore been marked with striped colors.
Figure 8: The same family under joint jurisdiction.
The proprietor of the patent family in figure 8 can file an infringement lawsuit with the Unified Patent Court if infringement takes place in any (striped) UPC-country. The decision given by the UPC will then have legal force in all striped countries. Alternatively, the owner could file separate infringement lawsuits with the national authorities in some or all of the striped countries. The same options are available to a competitor who wants to invalidate the patent family. As before in figure 5, neither the proprietor nor the competitor has any choice when it comes to Great Britain, Spain and Poland: only national legal actions are possible in non-UPC countries.
OPT-OUT requests can be filed also for national patents created in UPC-countries through EP validation before 2023. An OPT-OUT request moves the patent family from figure 8 back to the initial state which was illustrated in figure 7. An OPT-OUT can be useful to the patent proprietor because it forces competitors to challenge the national patens one by one if they seek to invalidate this patent family. As mentioned above, proprietors can cancel the OPT-OUT if they at some point want to file an infringement lawsuit with the UPC.
Summary
It’s important to remember that all changes discussed above apply only to European patent applications filed with the EPO and national patents which have been created from such applications through EP-validation when they were granted. The changes do not concern patents granted by national patent offices such as Finland’s PRH. A patent granted by PRH will therefore never come under the jurisdiction of the UPC, but a European patent which was granted by the EPO and then validated in Finland will be under the jurisdiction of the UPC unless the proprietor exercises the OPT-OUT.
The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly not any simpler than the old system. It’s a good idea to consult a patent expert when weighing the benefits, drawbacks and costs of the unitary patent and OPT-OUT decisions.
Don’t hesitate to contact Boco IP’s patent attorneys if you have any questions about the unitary patent, the UPC or European patents. We are happy to help!
Thomas Carlsson is Boco IP’s partner and member of the board. He published the book Good Patent Applications in 2021
We are honored and very pleased to announce that for the first time ever, our firm is appraised as a Tier 1 firm in IP Stars for trademark prosecution in Finland.
We could not be happier to announce that Boco IP has moved to Tier 1 category in the new IP Stars rankings 2022 published this week. We are delighted that our work has been noted so well in the international rankings once again this year.
Background information about the IP Stars survey
IP STARS is the leading resource for companies or individuals looking for experienced legal practitioners for contentious and non-contentious IP advice. Managing IP has been covering IP law and practice since 1990.
The aspects assessed for the firm rankings include expertise, workload, market reputation, track record, outcomes achieved for clients, and unique strengths in a given practice area. Judgements about which firms to include in the rankings, and which tier and practice area they should be in, take account of all this information. The data from the IP STARS research is also used for the Managing IP awards.
The research is rigorous and impartial. No firm or individual can pay to be ranked or to win any of the awards. There is no fee to pay to participate in the research.
WTR 1000 rankings for year 2022 have been published: Boco IP is also this year recommended as a leading firm for protecting trademarks. Professionals Peter Åkerlund, Laura Roselius, Elina Heikkilä and Pamela Lönnqvist are specifically mentioned in the research report.
World Trademark Review (WTR 1000) rankings for 2022 have just been published and there is a lot to celebrate as Boco IP is again ranked as one of the leading trademark firms in Finland.
Boco IP’s trademark practice and IP Lawyers are recognized in the 2022 ranking with the following words: “Boco IP dispatches instructions extremely professionally”: “Clients feel comfortable and secure in any recommendations it provides. One of its key strengths is the timely delivery of its work and the successful outcomes that come with it.”
“Pillars of the practice consists of Peter Åkerlund, Laura Roselius, Elina Heikkilä and Pamela Lönnqvist. The “super-responsive and easy-going” Åkerlund executes tasks efficiently and with utmost precision. He works well with his colleagues and provides cost-effective, practical advice”. A master at navigating trademark processes throughout Europe, Heikkilä acquits herself with distinction when representing brand owners before administrative bodies; while litigator Lönnqvist receives praise for her “high service levels, expertise and brilliant advice”. A strategic thinker and a key contact for those looking to combat counterfeiters, Roselius maintains “an ambitious yet realistic workload and never drops the ball. Her ability to take care of multiple projects in parallel is a great strength. If you were to characterise her in a sentence, she is the complete package”
The results confirm Boco IP’s position as a high quality expert in the trademark field.
World Trademark Review WTR is an independent publication in the Intellectual Property field that researches and ranks leading trademark professionals in over 80 jurisdictions.
Boco IP’s IP trademark professionals can be reached at the following addresses:
