The significant step is behind, and Essi, Saoussen and Anastasiia are now starting to prepare for the main exams ahead.
What is EQE?
According to CEIPI’s web pages: “Established in 1979, the European qualifying examination (EQE) is widely regarded as one of the most difficult and demanding professional examinations, both intellectually and physically, with candidates required to prove their aptitude and knowledge in four papers spread over three consecutive days. Although 80% of all candidates who enroll for the EQE are eventually successful – some of them only after many attempts – the success rate of first-time candidates is just 30 – 40%. ”
We are thrilled to share that Boco IP has received four nominations on the shortlists for Managing IP EMEA Awards for 2024:
Finland Patent Prosecution Firm of the Year
Finland Trademark Prosecution Firm of the Year
Finland Practitioner of the Year
Nordic Firm of the Year
Among these nominations, our Chairman of the Board, Partner, and European Patent Attorney, Jonna Sahlin, has been shortlisted for Practitioner of the Year (Patent & Trademark Attorney Firms) in Finland.
The Managing IP EMEA Awards celebrate the achievements of firms, individuals, and companies that have demonstrated outstanding performance and leadership in the realm of intellectual property across Europe, the Middle East, and Africa. Being shortlisted for these acknowledgments reflects the dedication and expertise that our talented team continuously provides to our clients worldwide.
Our best wishes also go to all the other nominees.
Boco IP has been awarded the prestigious gold category in the IAM Patent 1000rankings. This recognition underscores Boco IP’s outstanding expertise and success in the field of patent prosecution. The IAM Patent 1000 rankings are highly regarded within the intellectual property community, and Boco IP’s position in the gold category highlights our commitment to delivering exceptional patent services to our clients.
In addition to seven earlier listed recommended individuals, Thomas Carlsson and Tomi Salter make their debut in the guide this year.
The IAM Patent 1000 is an annual publication that recognizes and ranks leading patent law firms and practitioners worldwide. These rankings are based on extensive research, including interviews with clients and peers, to assess the capabilities and expertise of various firms and individuals in handling patent prosecution matters.
Boco IP’s inclusion in the gold category is a testament to our excellence and the high level of satisfaction among our clients. The gold award signifies Boco IP’s exceptional skills, deep industry knowledge, and ability to provide outstanding service in patent prosecution.
According to IAM Patent 1000, 2023:
“Managing director and head of chemistry, Karri Leskinen is favoured among those in the fields of pharmaceuticals, food and processing industries, and polymer technologies. Chairman of the board Jonna Sahlin provides secure IP protection strategies paired with commercial sensibilities for a roster of prestige clients in the chemistry-related sectors. Patrons admire Sahlin for her ability to break down complex technical matters in a clear and concise manner before the Finnish and European patent offices. Boasting profound knowledge in the life sciences, Jaana Hämäläinen is enlisted by those in biotechnology, chemistry and plant biology-related sectors to handle matters domestically and internationally.
On the mechanics front are Sini-Maaria Mikkilä and Christian Westerholm. Mikkilä provides comprehensive protection of inventions related to automation technology, both locally and internationally, while Westerholm handles opposition proceedings before the Finnish and European patent offices on behalf of those in the mechanical engineering field. Drawing on two decades of IP experience, Marja Liisa Autti is called on by players in the computer-implemented inventions and the medical appliances spaces. With a background in applied electronics and bioelectronics, she has mastered the ability to translate complex technical matters into digestible advice.
Also instilling confidence is, physicist Anu Keinänen, who used to practice in IT, micro- and nanotechnology. Thomas Carlsson and Tomi Salter make their debut in the guide this year. A specialist in small devices and complex systems ranging from microtechnology to electrochemistry, Carlsson has applied his expertise to write a book on best patent drafting practices. Salter’s extensive technical background in mechanical and industrial engineering, as well as his product development and industrial management experience, proves vital for clientele in a wide range of industries, including mining, manufacturing and marine technology. ”
Boco IP gold category in IAM Patent 1000 2023
Boco IP’s gold category position in the IAM Patent 1000 rankings serves as a testament to our exceptional skills, dedication, and commitment to excellence in patent prosecution. This well-deserved recognition highlights our industry-leading expertise and the level of satisfaction among our clients. Boco IP’s continued success in securing valuable patent rights for our clients demonstrates our ability to navigate complex legal landscapes while delivering outstanding results. As we celebrate this remarkable achievement, Boco IP further solidifies its position as a trusted and esteemed player in the field of patent law.
Dupes are legal and openly marketed as alternative options to the original products, often at a lower price. They are intended to provide a similar experience or aesthetic appeal at a more affordable price. Manufacturers of dupes typically market their products openly as alternatives or “inspired by” certain brands or products. They do not claim to be the original products and often have their own branding or labeling to avoid confusion. This means that they are legitimate products, as long as they do not infringe on any copyright, trademark, or patent rights of the original products.
Counterfeits are unauthorized replicas or copies of branded products which are produced with the intent to deceive consumers into believing they are purchasing genuine items. Counterfeit products are designed to mimic the appearance, logos, trademarks, and packaging of the original products, aiming to pass off as authentic. Counterfeits are illegal, since they involve unauthorized copying or replication of protected intellectual property, including trademarks, logos, and copyrights. Producing, selling, or purchasing counterfeit products can result in legal penalties.
Unfortunately, not many people understand the difference between look-alike dupes and illegal counterfeits.
In recent years content around dupes has surged especially on TikTok: The hashtag #dupe has now gained more than 3 billion views on the app. A lot of bloggers and influencers are actively promoting copycats – both dupes and counterfeits. Finding dupes has escalated into one of the most popular trends in 2023 and TikTok functions as an effective dupes search engine.
Why dupes?
The reasoning behind dupes is that anyone can climb the social hierarchy of popular designer items by taking a shortcut with a dupe. The attraction of a product dupe is to get a desired look for less, and also to spread the details of the made purchase. The aim of a dupe is to recreate the product or look as closely as possible, but at a significantly lower cost.
Non-branded goods, be it clothing, accessories or cosmetics, have long been seen as a definite no-no. While cheaper brands have always existed side by side with designer and branded products, especially in the fashion scene, dupes have never been so openly worn before. It has become an achievement and especially cool among young people born between the late 1990s and the early 2010s, to find and share the dupes of expensive designer goods. And TikTok is the platform to share all those dupes on with likeminded people. The platform has become a hub for trends and viral challenges. Just about any content where you present alternatives to desired designer items seem to gather views on TikTok. Gen Z has realized that presenting dupes is a successful way to create content.
The format of TikTok, with its short and engaging videos, makes it easy for creators to quickly showcase and explain dupes in an accessible and entertaining way. As a result, TikTok has become a go-to platform for users seeking budget-friendly alternatives and hacks, and the platform has greatly contributed to the rise of the dupes culture.
It is understandable that the dupes trend has become so attractive among the most active TikTok users who range from Gen Z to millennials. These age groups are focused on continuously giving out a perfect image on social media, and a person’s outer appearance and style has become a significant trait. These generations are tirelessly following fashion trends, but do not necessarily have the income to buy original designer goods or high-end brands. Their affordability makes dupes attractive to consumers who want to achieve a similar look or experience without paying a premium price. Dupes often emerge in response to popular trends or cult-favorite products. As consumers become interested in a particular item, demand for more affordable alternatives naturally arises. Dupes are accessible to everyone, irrespective of social standing or budget.
Dodgy dupes
Even if the popularity of dupes has soared, there are undoubtedly challenges related to the dupes culture. Fashion and appearance trends are constantly changing, and retailers, e-commerce marketplaces and fast fashion sites such as Shein, Amazon, DHGate, AliExpress and Taobao are more than happy to offer cheap low-quality goods to satiate this endless need. Unfortunately, without meeting environmental or social standards. The party to gain most from the dupes is the fast fashion industry. It is well-known for its lack of environmental and social responsibility.
As we cannot buy high-end versions of every fashion or cosmetics trend, consumers turn to cheaper, less reputable brands. In doing so, we forget all our original principles about product quality and design to stay on top of trends and present the perfect online image of ourselves.
Content creators and influencers get more views and followers when they are continuously presenting new and desired styles. It seems that in spite of the received criticism for the impact on the environment and the allegations of mistreatment of workers, fast fashion sales and the number of views are ever increasing. Dupes promote this toxic culture.
In a dupes culture, there is a diminished emphasis on originality and innovation. When people prioritize duplicating existing ideas or content, it stifles creativity and limits the development of new and unique contributions. A dupes culture may also inhibit progress by discouraging individuals from exploring new possibilities and instead favoring replication of what already exists. When duplication is ranked higher than originality, it leads to a proliferation of low-quality imitations. Focusing on quantity rather than quality can result in a lack of diversity and a homogenization of ideas and products. If duplication is encouraged and even celebrated, the efforts of individuals who have invested time and effort into developing and designing unique products become undervalued.
It has been said that unlike other creative sectors, there are rarely legal consequences for copying a design. If dupes are not technically counterfeits, should brands even be concerned? An increasing number of young content creators on various social networks are promoting not only acceptable dupes, but blatantly counterfeit goods and the videos “unboxing” these goods get millions of views. This way influencers shape the perception of dupes and counterfeits as being trendy, sassy and not at all harmful.
Plagiarism and varying degrees of intellectual property violations are indisputably consequences associated with dupes. If people are encouraged to copy or reproduce without proper authorization, it undermines the rights of creators and can definitely have legal consequences. Even if all dupes are not directly illegal, they can be at least morally dubious and have an impact on the original brands in the form of financial losses.
Ways to overcome problems associated with dupes
One way to overcome the problem with dupes is to increase public awareness about the negative consequences of dupes and to encourage consumers to make informed choices. We have to educate consumers about the importance of supporting original designs, the value of craftsmanship, and the impact of infringing products on each industry sector and its workers. We must shift people’s attention and make it attractive to both design and use quality goods. A recent article stated that the number of clothing items that it would be environmentally sustainable to purchase, is 5 items a year. This number should be something for all of us to strive to achieve.
Further, we should make it socially acceptable to support a version of dupes that just takes inspiration from a certain design without copying it directly. Enabling collaboration between designers, brands and manufacturers to create affordable fashion and other product lines for a wider range of consumers, would also help to bridge the gap between design items and affordable options. Especially fashion brands need to adopt ethical and sustainable manufacturing practices and to promote transparencyor risk fake products becoming even more trendy among the younger generations.
We should also strengthen intellectual property legislation and enforcement practices to protect original creations. Encouraging designers and fashion brands to actively register their trademarks and copyrights whenever possible, would make it easier to identify and take legal action against infringing products.
Laura Roselius is a Partner and IP Lawyer at Boco IP Oy Ab
Trademark monitoring may feel painstaking or even impossible. That’s why tools have been developed for continuous trademark monitoring, which are available to our customers with every new filed trademark application.
A registered trademark provides strong protection to the trademark owner for the goods and services (such as clothing, confectionery, or entertainment services) within the geographical area where the trademark is registered. Trademarks are often linked to economic interests as long-term use of a trademark can create significant monetary value to the mark. However, registration itself does not prevent others from infringing or otherwise exploiting a registered trademark.
National authorities in many countries cite previously registered identical and similar trademarks as obstacles when examining new applications. On the other hand, the European Union Intellectual Property Office (EUIPO), which examines and manages EU trademarks, does not automatically monitor the rights of owner of previous marks. The EUIPO does not take a position on how the previous trademark owner should act if a third party applies for an identical EU trademark. Instead, the trademark owners are responsible for monitoring and systematically defending their registered trademarks against third parties.
Manual monitoring of the EU register is very arduous. For example, in 2020, the EU agency received a total of approximately 180,000 trademark applications. In addition to the EU trademark register, it is advisable to monitor the national trademark registers of all 27 EU member states, as similar marks can also appear in the national registers of the member states. Manual trademark monitoring is practically impossible.
Tools for Trademark Monitoring
Effective tools are needed for trademark monitoring, which is why we offer our monitoring service to all our domestic clients with every new trademark application. Our monitoring focuses on the trademark registers of the countries where the application is pending and where the mark is registered. The purpose of the monitoring is to check if any third parties are seeking protection for identical or similar marks in the same geographical area. The first year of monitoring is free of charge. During this time, the clients can get an idea of the competitive landscape of their own mark and can then determine how actively they need to address third-party registrations.
In our monitoring service, we find trademark applications which are identical or similar to our client’s’ marks in the same goods and service classes. The monitoring is directed at the trademark registers of the various countries where the client’s trademark has been protected. Two of our trademark attorneys review and assess these findings on a daily basis. We only report significant findings, such as identical or nearly identical marks in key market areas. Although there may be numerous matches, it may not be necessary to react to all of them. It is advisable to develop a clear and systematic strategy for monitoring your marks. We assist in creating the plan and report only the most relevant hits.
The trademark monitoring service also includes providing the customer with recommendations on how to proceed as regards any detected problematic marks. There is no universally applicable recommendation, as each case is considered individually to determine whether it is worth addressing a certain located mark. Factors affecting the assessment include the geographical coverage of the detected mark, the goods or services it covers, and the nature of the mark.
Negotiated solutions
Through systematic and continuous monitoring, we enable timely evaluation together with the customer to determine which findings require action, such as oppositions or negotiations between the parties. When a similar mark is found, and wehave decided to take action against that mark together with the customer, we often start with a warning letter or approach the other party with a negotiation request. Negotiations often lead to amicable settlement solutions. However, sometimes filing an opposition is the only appropriate solution, and in some cases, filing an opposition or at least threatening to do so, can also expedite negotiations. Occasionally, an opposition is filed for precautionary reasons to protect the client’s own rights while continuing negotiations outside the opposition proceedings.
It is worthwhile to monitor and defend your own trademark
If a trademark proprietor does not react in any way to a located identical trademark application, for instance not filing an opposition may be interpreted as a silent acceptance of the new trademark. In case of a direct competitor, we always recommend at least a warning letter, where the applicant is requested to limit or withdraw his application in its entirety. Otherwise, there is a risk that the space of your own mark is narrowed when another other party takes advantage of your well-known brand. Reacting by sending a warning letter is a very light process compared to getting the competitor to abandon an already registered and launched trademark. The competitor may have made significant marketing investments in his mark, which add to his reluctance to abandon the trademark.
By monitoring and defending your own trademark you make sure that all the recognition is tied to your brand and that all the benefits of your made investments end up in your own pocket. Generally, a systematic monitoring is always recommended, so that the trademark proprietor gets information about identical and similar trademarks in time and may then decide whether a certain hit is one that requires actions. A determined defense of your rights is always worth it, so that no one else gets to take advantage of the trademark you have protected and the reputation and goodwill that it has accumulated.
The author is an IP lawyer and a partner at Boco IP. She handles European, domestic, and international trademark applications and design rights matters, as well as conducts trademark and trade name searches. Laura is also involved in developing clients’ trademark protection strategies and provides consultation in cases of product counterfeiting. Additionally, she drafts agreements related to trademarks and intellectual property rights (IPR) matters.
In the past, trademark owners have repeatedly tried to hold online marketplaces liable for trademark infringements that take place on their platforms. Earlier the matter has circled around the interpretation of the term “use”. The term is not further explained in the EU Trade Mark Regulation. Some manners of use are mentioned, but the Regulation does not contain an exhaustive list of conduct or actions to be described as trademark use. So far, the operator of a marketplace or platform has been liable for any infringement only if the trademark has been used. Previous decisions have confirmed that the mere operation of an online marketplace is not sufficient to be considered trade mark use.
Facts of the case
In a landmark decision for trademark owners, (CJEU 22.12 2022, Christian Louboutin v. Amazon, C‑148/21 and C‑184/21), the French luxury shoe designer Christian Louboutin accused Amazon of a uniform and misleading way of displaying any search results and products in trademark infringement proceedings before the courts of both Luxembourg and Brussels. The action was brought as Amazon regularly displayed advertisements for goods which infringe Louboutin’s iconic red-soled stiletto, which is registered as both an EU and Benelux trade mark.
Mr. Louboutin argued that by displaying advertisements of shoes bearing a red sole on its online stores as well as by stocking, shipping and delivering the infringing goods to the end consumers, Amazon had used his trade mark without his consent. Louboutin claimed that while Amazon was not selling the counterfeit products directly themselves, they were involved in the distribution, storage and advertising of those products as well as in presenting the infringing products on its platform in the same manner as products sold under Amazon’s own name. Both national courts decided to suspend their proceedings until the CJEU had answered their preliminary questions.
The questions referred to the CJEU were whether Amazon could be held directly liable for using the trademark, where a third-party seller places an advertisement for counterfeit products on the Amazon platform. Could such third-party trade mark infringements constitute “use” of a trademark?
In its judgement, the CJEU has finally given guidelines for assessing the liability of an online marketplace. The CJEU held that operators of online marketplaces could be held directly liable for third-party advertisements. Users could mistakenly think Amazon themselves are selling shoes on behalf of Louboutin, particularly when Amazon displays its own logo on the third-party sellers’ advertisement, and also stores and ships the shoes to their end users.
Multiple factors are listed in the decision as examples of circumstances in favour of online platform liability:
Uniform presentation of all offers by displaying platform’s own advertisements alongside those of third parties and adding the logo of the online marketplace to those advertisements.
Platform operator offers additional services to its third-party sellers (presentation of advertisements, storage and dispatch of goods).
Offering customer care services (responding to buyer enquiries, handling returns) to third-party sellers.
Labelling your own as well as third-party goods as “bestselling”, “most requested”, “most offered” without distinguishing between goods according to origin.
Practical implications of the decision
The CJEU has provided widely followed and useful guideline as to when online marketplace operators should be held liable for trademark infringement by third parties. The decision allows trademark owners to take action, not only against the original infringers, but also against those who assist in the online distribution of infringing products. Brand owners will welcome this decision in their ever-ongoing fight against counterfeit goods online. It signals a departure from the earlier approach, where the operator of an online marketplace was considered not to be “using” the infringing trademarks.
Amazon now has a responsibility to ensure that it can no longer just stand by and allow trademark infringement to take place on its own platform. Online platform providers need to consider how their marketplaces will be perceived by users and it should be evident when products are being sold directly, and when they are sold by a third party. The decision also shows the risks of allowing third-party vendors to advertise and sell (counterfeit) products via online marketplaces.
We will of course have to wait and see how the national courts will apply and interpret the decision. It is, however, likely that the decision will have clear-cut implications for Amazon’s own business. The decision should prompt also other online marketplace operators to re-design their websites and carefully consider the layout of their platform to ensure that users are able to distinguish between goods sold under the operator’s own name and those sold by third parties on the same marketplace.
Laura Roselius works as an IP Lawyer and Partner at Boco IP.
Both events attracted a large number of participants, including for example, entrepreneurs, investors, professionals from the technology sector, as well as a plethora of service providers from other fields. More specifically, both events attracted over 12 000 participants from different fields. While the actual “main Slush” concentrated generally on start-up entrepreneurship and its challenges, Web3’s main focus was to bring together the world’s most ambitious entrepreneurs and aficionados working on decentralized technologies. The event featured several discussion sessions, networking events as well as workshops concentrating on the latest developments and trends in the field.
The actual main Slush is nowadays such a well-known event, especially in the start-up field, that it does not really need further introduction. Last year’s exceptional circumstances have, however, hit especially the event sector so hard that it was extremely interesting to get to see how the circumstances have affected an event of such magnitude as Slush.
Just by walking in through the main doors of the venue, all uncertainties vanished at once. While walking down the main stairs leading to the actual event area, it became immediately clear that the event was still what it used to be, and attendees were rolling in in numbers even bigger than in previous years. Masses of different color hoodies were flowing on the floors of the exhibition centre like masses of water, and the highly appraised Slush volunteers were eagerly greeting participants and answering their practical questions. All that seemed to be remaining from the pandemic and resulting endless event cancellation notices were the hygiene reminder posters and rows of hand sanitizing stations.
Slush met the expectations also this year
As an event, this year’s Slush was largely following in the footsteps of previous iterations. Speakers chosen to get on the various different stages were extremely inspiring, presentations carefully structured and well executed, and participants from all around the world represented a very wide range of expertise. The venue itself was slightly more compact than last time, but yet, the event felt in no way like a “diluted” version of the previous years. As a service provider, and thus having the main task of contacting possible new sales leads, I found to my dismay, that the number of stands directed mainly at smaller startups was somewhat smaller, and the focus had clearly been shifted more onto the matchmaking side. However, as the whole event is tailor-made for mainly start-up entrepreneurs and investors, this is quite understandable, and I did not let it affect my own networking. The new focus mainly just meant that I had to alter my strategy for conversation openings by shifting them from the vicinity of the stands next to coffee machines, events-in-event such as pitching competitions and to the joint stands/show areas of bigger companies and start up ecosystems. Despite the above, striking up conversations was as easy as previously, and entrepreneurs were glad to shed light on their inventions and activities. To my pleasant surprise, I quickly noticed that the acronym “IPR” seemed to ring a bell in more conversations than last time. It could be that this is due to just better luck with selecting people to talk with, but I strongly believe that the more plausible explanation is the IPR-marketing, informing, and other educational activities that have been done in the field, at least in Finland within the past years. Unprotected brands were still discovered to some extent, but at least in the big picture, brand protection seemed to be on a very good level and even some fresher start-ups had handled at least the basic level of protection in time and properly. Even though the focus of the majority of the start-ups seemed to fall onto the field of software, where protection of innovations through, for example patents is generally not that popular, many entrepreneurs were proudly showcasing their patent portfolios, too.
Slush, generated art and artificial intelligence art – what does it mean?
The most important part of the event from an IPR perspective was generated art and AI art, which was the hot topic especially in the Web3-spinoff event. Generated art and AI art are forms of art that are created using artificial intelligence and algorithms. These forms of art are relatively new and have only recently begun to gain popularity, but they are quickly becoming an important and exciting area of the art world.
Generated art is a type of art that is created entirely by an algorithm or an AI system. This can include various art forms, from visual art and music to literature and performance art. Generated art is often created using complex algorithms that are designed to mimic the creative process of a human artist, and the resulting art is often highly unique and unpredictable.
AI art, on the other hand, is a type of art created with the help of artificial intelligence but still involves some level of human input. This can include art that is created by AI systems that are trained on large datasets of human-generated art or art that are created by humans using AI tools and algorithms to assist in the creative process. Both generated art and AI art are fascinating because they challenge our traditional understanding of what it means to be an artist. With these forms of art, the line between human creativity and machine intelligence is blurred, and the resulting art often has unique characteristics.
As AI and algorithms continue to advance, it is likely that generated art and AI art will become even more prevalent in the art world. For anyone interested in the intersection of art and technology, these forms of art are definitely worth keeping an eye on.
Overall, Slush WEB3 is an exciting and unique event that brings together some of the most innovative and ambitious minds in the world of decentralized technology.
Even though you wouldn’t be attending Slush for the main reason of searching, for example for investors to back up your start-up or for a partner to handle your prototyping needs, you’ll definitely walk away at least richer in inspiration. Being in the middle of so many innovators and ideas, it is extremely hard not to be inspired – no matter what your own field of expertise is.
Writers of the blog are Jerry Härkönen and Mari Nieminen. Jerry works as IP Advisor and IP Lawyer and Mari as IP Legal Trainee at Boco IP.
The Unified Patent Court (UPC) will very likely start its operations in April 2023, after a sunrise period which lasts from January to April. As I explained in an earlier blog post, the court will have exclusive jurisdiction in all disputes which relate to unitary patents. Additionally, during a transition period of at least seven years, the court will have shared jurisdiction in matters relating to European patents that (a) have been validated in UPC countries and (b) have not been opted out of from UPC jurisdiction.
The current UPC countries are shown in blue in figure 1. More countries are likely to join in the coming years.
Figure 1
From April 2023, European patent applications granted by the EPO can be put in force as unitary patents which covers all the blue countries. The applicant can also validate the same European patent in any non-UPC country. A single European patent application can thereby yield the patent family illustrated in figure 2: a unitary patent (blue countries, UPC jurisdiction) + validated national patents (other colors, national jurisdiction).
Figure 2
There is no obligation to use the unitary patent. The applicant can still perform national validations in any EPC country just as before. The unitary patent is just an addition to the options that existed previously. But double patenting will be prohibited, so selecting the unitary patent according to figure 1 closes the possibility of national validation in UPC countries.
The sunrise period: Early request for unitary effect or postponement of grant
The request for a unitary patent must be filed no later than one month after the mention of the grant of the European patent is published in the European Patent Bulletin. Starting in January, extra measures may be used if your European patent application has recently (September 2022 – November 2022) received a Rule 71(3) communication from the EPO and if you want to put it in force as a unitary patent, or at least consider this possibility:
If you already know you want a unitary patent, you can file an early request for unitary effect before the Rule 71(3) response deadline expires. The patent will be put in force as a unitary patent when the UPC system becomes operational in April 2024. You might even become the proud owner of the first ever unitary patent!
If you want more time to think about it, you can, as you reply to the Rule 71(3) communication, request a delay to the patent grant. The grant will then be published in April 2024 (or later), and after that you will have one month to decide whether or not the patent should be put in force as a unitary patent.
Read more about the two transitional provisions (1) and (2) here.
Furthermore, if you currently have a Rule 71(3) communication with an open response deadline, you can postpone the grant of your patent in the usual way: by responding to the Rule 71(3) communication without approving the text intended to be granted. Submitting a minor correction or two will lead to a new Rule 71(3) communication being issued by the EPO, which in practice delays the grant process sufficiently to make this patent eligible for unitary effect.
The new system has its advantages (the unitary patent covers a broad geographical area at a relatively low price), but it is certainly does not make European patenting any simpler. 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.
Have you ever thought what it’s like to work at Boco IP? Anastasiia, Boco IP’s new Trainee Patent Attorney, gives a glimpse into her daily work.
1) Welcome onboard Anastasiia: how has the few weeks been like? What were your expectations and how were those met?
The first few weeks flew by very fast. In short – I couldn’t expect a better start! At all times I have felt very welcome and I got involved into company’s routines right away. I was also impressed by the amount of tutoring I got from the very first day. Although the training was supposed to be the biggest part of my work at start, I didn’t expect so much of attention since of course my colleagues are extremely busy with their work. So in many ways reality was even better than the expectations I had before starting.
2) What have you enjoyed the most?
The working atmosphere is definitely the most enjoyable part. It’s quite common to feel out of place when starting new job, but it didn’t happen at Boco IP at all. Even despite the fact that most work is arranged remotely, Boco IP manages to maintain warm and friendly relationships. And, of course, the job itself is very inspiring and motivating! Although there is a lot to learn, learning can be done on the fly while doing some actual useful work which is of course much more interesting than just studying by taking courses and reading.
3) Have you been able to focus on cases already?
Yes, this is another part that happened very fast! At the moment, I am working on one case writing a patent application and I have already got involved in other aspects of patent attorney work, like replying to office actions from the EPO or doing novelty searches. I appreciate the strong support from my tutors Thomas and Michael – obviously it would take much longer time to learn and complete things without them answering my questions and providing feedback.
4) Do you want to share any info about how you relax / how you spend your free time?
Working at Boco IP allows a very nice work-life balance, so I manage to keep up with my regular ways of spending free time. I enjoy various sports every day – from yoga and gym to tennis and biking, especially during this warm season. Before the pandemic, I used to travel several times a year, but these days exploration is slightly limited to the Helsinki area. However, it feels good to discover new places here which I wouldn’t do if travelling was still an option!
Here is Anastasiia’s contact details, do not hesitate to contact her: Read more about Anastasiia.
Great efforts are currently being made to discover vaccines that would be effective against the COVID-19 virus. When effective and safe vaccines have been discovered and tested, they will likely be produced on a very large scale.
Any patent rights that pertain to the components of the vaccine or the equipment needed for manufacturing them could then affect the production process. If, for example, company A owns a patent which gives it an exclusive right to produce component X in lots of countries, and if component X is in great demand due to the vaccination effort, then company A could cause harmful delays in the production of the vaccine by insisting that no one else should fabricate component X.
The World Health Organization recently proposed that a COVID-19 patent pool should be created to proactively overcome any obstacles that the vaccination effort may face from patent rights. At the present time this is just a proposal and it will presumably require a lot of debate and compromise before any formal agreement can be reached. But let’s take a look at what the proposal might mean.
A patent pool is an agreement where a group of patent holders (typically companies) agree to aggregate their exclusive patent rights in a “pool”. The pool then sells licenses to these patent rights to third parties. These licenses might cover all rights included in the pool, or any particular subset of them. Patent pools are nowadays found mostly in the field of electronic communication and electronics (although even there, their number is quite small), where their creation often goes hand in hand with technology standardization. The MPEG-2 standard is one example.
It could be very profitable to own an exclusive patent right to a piece of technology which is essential to a standardized solution: the standard will force everyone to adopt the standardized technology, so the demand for a patent license will inevitably be high and the owner of the patent could in principle freely set the price. To prevent patent owners from abusing their monopoly, standardization organizations often pose certain requirements on patent owners before a standard is finalized. Patent pooling can be one way to meet such requirements. Once a patent pool is formed around a standardized technology, developers who adopt the standardized technology do not have to negotiate a separately for a bundle of different licenses. Instead they can get everything they need from one place by signing a licensing agreement with the patent pool.
Patent pools focused on disease prevention bear some similarities to ones formed around standardized technologies. The Medicines Patent Pool backed by the United Nations has effectively expanded the worldwide availability of medicines for treating HIV, Tuberculosis and Hepatitis C in the past decade. Patent owners voluntarily agree to license their patents to the pool under certain conditions. The pool then makes licenses available to third parties, such as generic drug manufacturers, so that they can manufacture cheaper generic drugs for use in developing countries. The third parties obtain their licenses far cheaper than they would do if they negotiated directly with every patent owner. The patent owners gain royalties and positive publicity. They are also relieved of the need to exercise oversight over the licensees – the UN-administered patent pool checks qualifications before granting the license and sees to it that the terms of the licenses are followed.
The Medicines Patent Pool might provide a useful practical template for how a COVID-19 patent pool might be administered. Like any patent pool, a COVID-19 patent pool would have to be voluntary. However, the COVID-pandemic also differs so much from HIV, Tuberculosis and Hepatitis that the patent pool will face a number of entirely novel challenges.
First, while we know that vaccination is needed urgently, it is uncertain which particular vaccines will in the end be approved for production. In contrast, HIV, Tuberculosis and Hepatitis have been treated for decades, and the state of research is much more settled. Companies might be reluctant to voluntarily cede their intellectual property rights to a patent pool in these early stages if it is still uncertain whether or not those rights will actually be needed for fighting the pandemic. The COVID-19 patent pool might therefore have to be administratively linked to the vaccine development process so that the vaccine selection process can proceed hand-in-hand with the building of the patent pool.
Second, the global character of the pandemic makes the problems more complex than anything the Medicines Patent Pool has faced. Companies are presumably more reluctant to voluntarily cede their patent rights globally than to cede them only in selected developing countries, as they do in the Medicines Patent Pool. The geographical coverage of a COVID-19 patent pool may have to be weighed against its practical feasibility – would it be worthwhile to narrow the coverage of the pool if that would increase the amount of voluntary contributions? The same tradeoff may have to be considered with regard to technological coverage – instead of trying to cover every key technology relating to COVID-19 prevention, would it be more feasible to implement a voluntary patent pool only for a small number of technologies which allow cheap vaccine production in and for poor countries?
Third, the economic consequences of the pandemic could influence how much enthusiasm patent owners show for voluntarily ceding their patent rights to a common pool. Both small and big patent-owning companies face uncertain times. The patent pool would probably have a better chance of success if the necessary patent rights are owned by large companies with sufficient resources for weathering the pandemic than if they are owned by small companies struggling to survive.
And fourth, in addition to the fact that the best vaccines are still unknown, it is also unknown how effective they will be. The Medicines Patent Pool was needed because HIV, Tuberculosis and Hepatitis C proved to be difficult to eradicate (for different reasons). Companies might be reluctant to voluntarily cede their patent rights to a Covid-19 patent pool for a long time period if seems likely that the prevention efforts could be very effective and short-lived. Our knowledge of the virus and its prevention are changing so rapidly that nobody can predict what the situation will look like a year from now. In order to persuade companies to cede their patent rights, the pool may have to implement a “sunset clause” which guarantees that the rights will return to their owners when the pandemic has subsided.
Any of the four points raised above could lead us to wonder if it would really be possible to create a voluntary COVID-19 patent pool. This leads to a bigger question: perhaps the COVID-19 patent pool should not be voluntary? Could patent rights just be revoked or temporarily suspended by government fiat? This seems unlikely in the current epidemic unless it takes a sharp turn for the worse and it becomes clear that the exclusive rights exercised by some patent owners clearly stand in the way of effective treatment.
However, the pandemic has already forced decision-makers to take harsh and rapid short-term actions to prevent the spread of the virus. Political actions in the medium and long term will hopefully involve new legislation which aims to make societies more resilient against pandemics in the future. Such legislation could include revisions to patent law as well. That is, instead of asking for voluntary contributions to a patent pool when a pandemic is already under way, governments could enact legislation which sets up a framework for a temporary suspension of patent rights in some field of technology whenever societies are threatened by a pandemic.
Such legislation would be undoubtedly be complicated and I will not here speculate on what it might include. But it is clear that this pandemic could in the long run give us reason to re-evaluate the well-known tradeoff between public and private interest in patent law: in exchange for making their inventions public (which benefits society by enabling new innovations), inventors are granted a temporary monopoly to their invention (which benefits the inventor but may harm society since it limits competition). If the lesson of the COVID-19 pandemic would be that the monopolies provided by patent rights can in some circumstances form a hindrance to quick and effective relief efforts against a global pandemic, then one way to improve the patent system might be to enact rules which suspend some patent rights for a few years when a pandemic strikes.
At the time of writing we still know very little about the rules by which a COVID-19 patent pool might be administered, about the willingness of companies to voluntarily cede their patent rights to the pool, and whether or not such a patent pool would even serve a useful purpose. But even if the COVID-19 patent pool never sees the light of day, the consequences of this pandemic could certainly in the coming years extend into patent law as well.
