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Licensing and License Agreements

Instead of a company or inventor, a university, for example, can also act as a licensor, as long as it’s the owner of the intellectual property. On the other hand, the licensee often lacks the opportunity to develop missing resources internally, so they are acquired through collaboration agreements or corporate arrangements. Additionally, through licensing, the licensee may also seek operational freedom or fast entry into the market.

Licensing Agreements in Business

Licensing grants the right to use the intellectual property of the licensor as defined in the agreement (known as licensing agreements). License agreements can also involve the transfer of manufacturing and/or distribution rights of an intangible asset. The license agreement may also include provisions for the other party to further develop and license the intellectual property covered by the agreement. The subject of the exploitation and usage rights transferred through a license agreement can include technology protected by patents or utility models, trademarks, or copyright-protected computer programs. In return, the licensee pays a financial compensation for the granted usage rights. Thus, a license provides the holder of intellectual property rights with the opportunity for additional income through exclusive rights.

A licensing agreement specifies the intellectual property to be licensed, defines responsibilities and the limits of the usage rights, and outlines the compensation to be paid to the licensor. The license fee can be a fixed annual fee or a royalty-based compensation. The license may be royalty-free as well.

The extent of the granted usage rights can vary significantly. A license can be exclusive, where the licensor transfers all usage rights to the licensee. Exclusive license agreements prohibit the licensor from granting license rights to other parties. However, the ownership of intellectual property rights remains with the licensor. An exclusive license can also be limited to a specific mode of use. Instead of an exclusive license, a license can be granted as a non-exclusive license, allowing the usage rights to be granted to multiple parties simultaneously. A license can also be a sole license, where the licensor grants the licensee exclusive usage rights but retains the right to exploit the subject of the agreement.

It is important to draft licensing agreements with expertise since they are often developed in complex production and distribution environments. The goal of a licensing agreement is to establish an ongoing cooperation that benefits both parties.

Granting licenses can be beneficial to a company in various ways. A company can generate license fees by licensing its technology and strive to standardize its technical solution to reach larger commercial markets. On the other hand, licensing can also be motivated by the desire to prevent potential infringements of intellectual property rights.

Typically, the licensee pays ongoing royalties or license fees in exchange for the granted usage rights. However, there are also licenses that are granted without monetary compensation, such as open-source licenses. Open-source technology transferred without consideration can serve as value-added marketing for a company.

Licensing Agreements and Technology Licensing

When a company considers licensing its technology or other inventions, it is advisable to assess the market and the existing technology in the industry to find potential licensors and identify the market. In addition to the license agreement, confidentiality should also be addressed in the licensing negotiations.

Know-how licenses are granted for the utilization of trade secrets. Obtaining a patent usually takes years, and the value of an invention may remain limited in a rapidly changing world if one waits for the patent to be granted. In such cases, the main point is to have a pending patent application. If the licensable invention is protected solely as a trade secret, maintaining the confidentiality of the invention is particularly critical to preserve its novelty. It is generally advisable to seek a patent or utility model for an invention before licensing in order to secure the licensor’s rights on the invention.

When negotiating the licensing of a patent or utility model, the temporal duration and territorial scope of the patent or utility model should be taken into account.

Trademark Licensing

Trademark licensing can cover all goods and services or only a portion of the goods and services covered by the mark. Licensing a trademark can be a means for the licensor to generate long-term income through royalty payments. Additionally, trademark licensing promotes the visibility of the mark and can strengthen its brand value. In recent years, co-branding has emerged as a popular form of licensing and marketing strategy.

When licensing a trademark, it is advisable to agree on quality criteria for products bearing the licensed trademark and establish quality control measures. The licensor may also define how the licensed trademark can be used on products and in marketing. In negotiating the license agreement, it is also important to establish geographic and temporal restrictions on the use of the trademark.

International Patent Application System (PCT)

Applicants who have already filed a national application or a European patent application have the opportunity to utilize a 12-month priority period within the International Patent Application System. During this time, the PCT application is examined as if it had been filed at the same time as the earlier patent application.

Filing a PCT Application

A PCT application can be filed with the Patent and Registration Office, the International Bureau, or a regional patent office such as the European Patent Office. In the application, the applicant can also claim priority based on a previous application for the same invention.

By default, all member states of the Patent Cooperation Treaty and regional patent systems are considered designated countries for the sought-after patent protection in the application, unless the applicant specifically limits the geographical scope of the desired protection in the application.

Processing of PCT Application

The compliance with the formal requirements of an international patent application under the PCT system is verified by the receiving patent office. Next, a filing date is granted to the application, and it is transmitted to the international bureau. The international bureau sends notifications of the application to the designated offices of the target countries and regional systems, along with a copy of the application to the novelty search authority.

The novelty search authority conducts a search for prior art and prepares a preliminary opinion on the application and the patentability of the claimed invention. The applicant receives the novelty search report and a written opinion approximately three months from the date the novelty search authority received the application, or nine months from the priority date if this period expires later.

The written opinion in the novelty search report includes an assessment of the novelty, inventive step, and industrial applicability of the invention. The international bureau publishes the application and the international preliminary examination report 18 months from the filing or priority date. Based on the international preliminary examination report, the applicant can choose to enter the national phase directly or request an international preliminary examination report from the chosen international preliminary examination authority.

Entering the national phase requires the applicant to submit the necessary documents and pay the required national fees to the patent offices of the target countries and regional systems within a period of 30-31 months from the filing or priority date, depending on the country. If the applicant enters the national phase, each national patent office dealing with the sought-after protection continues the examination according to its national procedure.

The national patent office may choose to conduct a novelty search for the technical solution claimed in the application, as the novelty search report is not binding on the national phase authorities.

Instead of entering the national phase, if the applicant requests an international preliminary examination, it must be done either within three months from the date mentioned in the novelty search report or within 22 months from the earliest priority date. The international preliminary examination is conducted by a examiner in the international preliminary examination authority, who prepares a preliminary opinion on the patentability of the invention.

After the international preliminary examination, the application proceeds to the national procedure, where the substantive requirements of the application are examined at the national level. In Finland, the national phase must be entered within 31 months from the filing or priority date, and the application fee must be paid within the same period.

Priority or Right of Priority

The right of priority allows an applicant to file an equivalent patent application within 12 months from the filing date of the first patent application and claim priority for that application. In practice, the right of priority enables the applicant to delay expanding the scope of patent protection to foreign countries for a period of 12 months from the initial filing date.

Requesting the Right of Priority

To request the right of priority, it is sufficient for the patent office to grant a filing date to the patent application. However, in subsequent applications, the right of priority can only be obtained for those parts of the invention that were also disclosed in the earlier patent application. The right of priority cannot be obtained for subject matter that has not been previously disclosed. Therefore, a high-quality first application plays a significant role in ensuring the validity of the right of priority.

Benefits of the Right of Priority

 For an applicant who has applied for a patent in their home country, the right of priority can provide several significant benefits. The applicant has more time to assess the patentability and commercial viability of the invention before pursuing patent protection abroad, and domestic disclosure of the invention is possible after the filing of the first application without creating a barrier to foreign patenting. Additionally, the novelty and inventive step of the invention are evaluated during the priority year as if the subsequent application had been filed at the same time as the first application.

Opposition and Invalidity of a Patent

For a patent granted by the Finnish Patent and Registration Office, a claim against the patent is made to the Patent and Registration Office, and the claim is usually examined by the same examiner who handled the patent application. In the case of a European patent, the opposition is filed with the European Patent Office. As a result of the opposition procedure, the granted patent can be revoked, or the scope of patent protection can be restricted. Additionally, the patent holder can request the patent authority or a court to restrict the granted patent through a procedure called limitation. In the limitation procedure, it is possible to restrict the scope of the patent either nationally or, for a European patent, centrally by submitting a limitation request to the European Patent Office.

Claim of a Patent, Section 1: Processing the Claim by the Authority

Upon receipt of a claim against a patent, a receipt notification is sent to both the claimant and the patent holder. The patent holder is also sent the claim documents as attachments to the receipt notification. However, if there are less than two months remaining in the opposition period, the receipt notification is not sent.

After the nine-month opposition period, the received claims undergo a formal examination. In the first phase of the formal claim examination, the requirements that must be fulfilled before the end of the opposition period are checked. Then, in the second phase of the formal examination, the requirements that can still be supplemented even after the opposition period are checked.

Upon request, the claimant must correct any deficiencies in their claim, or else the claim will not be examined. After this, the claimant receives a reasoned decision, which is also sent to the patent holder. The claimant has the right to appeal the reasoned decision to the Market Court.

Both the patent holder and the claimant have the right to provide statements regarding the claim before the claim matter is resolved. After the opposition period, the patent holder is given a referral regarding the possible claim and a six-month period to submit a statement. The patent holder’s statement is then notified to the claimant, who in turn has a three-month period to submit a statement. The claimant’s statement is notified to the patent holder, who has a three-month period to submit a statement. If the patent holder submits an additional statement, it is notified to the claimant without the possibility of commenting on it.

In the correspondence related to the claim matter, all documents related to the claim are provided to the parties involved. Additionally, the patent authority may continue the correspondence with additional letters if necessary before resolving the claim matter.

The patent holder and the claimant can request an oral hearing in writing regarding the claim matter if there are sufficient grounds for the request. The patent authority responds to the request by either summoning the parties to an oral hearing or sending a reasoned letter rejecting the request as unnecessary. However, a final decision on the claim matter cannot be made during the oral hearing, and a final decision cannot be based solely on the issues raised during the oral hearing.

The authority examines the claim based on the grounds and scope presented in the claim. The examination takes into account all relevant material related to the claim that is known to the patent authority and the parties involved. The patent authority makes a decision on the claim procedure, either revoking the patent, maintaining it, or maintaining it in amended form. If the patent is maintained in amended form, the patent should be reprinted.

Section 2: Nullity of a Patent

Nullity is the process of removing an erroneous decision to grant a patent for an invention that should not have been granted a patent. As a result of nullity, the legal effects of the patent cease retroactively as if the patent had never been granted in the first place.

The European Patent Convention provides harmonized grounds for nullity of a patent in all member states of the Convention. Nullity can be based, for example, on errors that occurred during the examination of the application or on the absence of the conditions for granting the patent. In Finland, a nullity action is handled by the Market Court and can also be combined with other intellectual property matters. In practice, nullity actions can be brought by parties who are adversely affected by the patent. However, the patent holder cannot initiate a nullity action themselves.

In some cases, a patent can be partially nullified by the Market Court, but in such instances, the patent holder must have submitted narrower patent claims to the court.

Plant Breeder’s Rights

Plant breeder’s rights is one of the industrial property rights, although it is less commonly discussed. Plant breeder’s rights are a form of intellectual property protection applied to plant varieties. It refers to the exclusive right to a plant variety. A plant variety is defined as a group of plants that can be propagated without altering their characteristics. Additionally, the variety must have at least one characteristic that is not found in any other variety.

Plant breeding was initiated in Finland in the early 20th century, and new plant varieties (later referred to as cultivars) were introduced for cultivation. In 1977, the law on the promotion of plant breeding activities was enacted. It is considered Finland’s first plant breeder’s rights law. In 1992, the actual law on plant breeder’s rights was established.

Plant breeder’s rights grant the holder an exclusive right to commercially exploit the protected plant variety. In this case, the protected plant variety cannot be propagated, conditioned for propagation purposes, marketed, or commercially stored without the permission of the plant breeder’s rights holder. Unauthorized use may lead to legal consequences, such as fines or damages. However, the use of the variety for private, non-commercial purposes, breeding, or experimental activities is not restricted. Additionally, farmers have the right to use and produce propagating material of protected varieties on their own farms by paying compensation. In seed trade, only varieties approved in the official variety catalog can be marketed.

Regarding plant breeder’s rights, the principles of the International Union for the Protection of New Varieties of Plants (UPOV) are followed, representing the international system for the protection of plant varieties. Finland joined UPOV in 1993. In each member country, the local plant variety authority grants plant breeder’s rights upon application. In Finland, the authority responsible is the Finnish Food Authority (Ruokavirasto), which maintains the plant breeder’s rights register.

After approval, plant variety protection is valid in Finland for 30 years by paying an annual fee. If a plant variety has significant markets in multiple EU member states, it is advisable to seek EU-wide protection. The Community Plant Variety Office (CPVO) grants protection for the entire EU territory with a single application. The EU Plant Variety Right (CPVR) is valid for 25 years, except for grapevines, trees, and potatoes, which have a duration of 30 years. The fundamental principles of national and EU plant breeder’s rights are the same. However, both protections cannot be valid simultaneously. In practice, Finnish breeders apply for EU plant breeder’s rights very infrequently.

Plant breeder’s rights can be granted to varieties of all botanical plant genera and species. The conditions for granting plant breeder’s rights include the variety being new, distinct from other known varieties, having a uniform growth habit, and exhibiting stable characteristics. A variety is considered new if it has not been marketed in Finland for more than one year prior to the application (or for woody plants, more than four years internationally). The distinctness, uniformity, and stability of varieties are assessed through DUS (Distinctness, Uniformity, and Stability) testing. In Finland, the current form of DUS testing was implemented with UPOV membership.

Additionally, the variety must have an acceptable name, which is registered at the same time the plant breeder’s rights are granted. The variety name should not be confused with other holders’ trademarks, names, trade names, or other exclusive identifying marks.

The protection of plant varieties produced through traditional breeding methods is possible through plant breeder’s rights, not through patents.

Intellectual Property Rights and Their Commercialization

Before the actual commercialization of intangible assets, it would be beneficial for a company to consider protecting its technology and other intangible assets (“intellectual property rights”) resulting from its product development, conducting market research, and evaluating the value of its intangible assets. Intangible assets are often sold in connection with corporate acquisitions, where the company’s intellectual property rights are assessed as part of expert-performed due diligence. On the other hand, the sale of intangible assets may also be relevant for a company when the intangible assets generated in the course of its business do not belong to its core business activities.

Types of Intellectual Property Rights

There are several types of intellectual property rights, the most common of which include:

  • Copyrights: Protect literary, artistic, and musical works as well as software.
  • Patents: Protect technical inventions and grant exclusive rights for commercial exploitation for a limited period.
  • Trademarks: Protect identifiers such as logos or brand names that distinguish products or services from competitors.
  • Design Rights: Protect the appearance or design of a product.
  • Trade Secrets: Protect confidential business information such as manufacturing processes or customer lists.

Forms of Commercialization

The commercialization of intellectual property can take various forms, depending on the nature of the rights and the strategic goals of the owner:

  • Licensing: The owner grants another party the right to use the intellectual property under specified conditions. Licensing can be exclusive or non-exclusive.
  • Sale: A complete transfer of intellectual property rights to another party, in which the seller relinquishes all rights.
  • Franchising: A business model where the right to use a business concept—often involving trademarks, trade secrets, and other IPRs—is granted.
  • Collaborative Agreements: Companies may join forces to develop and commercialize intellectual property together.
  • Startups: Innovations and patents are often commercialized by founding a new company focused on their development and marketing.

Benefits and Challenges

Commercializing intellectual property offers significant opportunities for financial gain and competitive advantage. Key benefits include:

  • Revenue Streams: Income from licensing fees, royalties, and sales.
  • Competitive Edge: Protected rights prevent competitors from using the same innovations.
  • Brand Value Enhancement: Trademarks and copyrights can strengthen a company’s image and customer loyalty.

However, commercialization also presents challenges:

  • Protection of Rights: Monitoring and addressing IPR infringements can be costly and time-consuming.
  • Market Understanding: The value of rights can vary by market and industry.
  • Contract Complexity: Licensing and collaboration agreements require careful legal planning.

Legislation and Internationalization

The protection and commercialization of IPRs vary by country. International agreements, such as the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights), aim to harmonize practices globally. Nonetheless, each country has its own legal framework that affects commercialization opportunities.

Conclusion

Intellectual property rights are a vital resource for businesses and individuals, capable of delivering significant economic benefits when effectively commercialized. Successful commercialization requires strategic planning, legal awareness, and market insight. In this way, IPRs can serve as drivers of innovation and economic growth.

Requirements for Utility Model Protection

1.1 Novelty of utility model

A utility model must be new compared to solutions that have become publicly known worldwide by the filing date of the application.

The novelty requirement is absolute, so any form of public disclosure, such as through public use or oral presentation, is a barrier to the registration of a utility model.

1.2 Inventiveness of utility model

The level of inventiveness required for a utility model is slightly lower than that required for a patent, so the requirements for utility model protection may be met even if the requirements for a patent are not. The technology of the utility model must clearly differ from the prior art, whereas a patent requires a significant difference from the prior art.

In practice, this has been interpreted to mean that the invention must not be obviously derivable from the prior art, and it must also not be self-evident to an average person skilled in the art.

2. Registration of a utility model

The registration of a utility model is carried out by submitting an application to the Finnish Patent and Registration Office and paying the registration fee. The application form should include the name and address details of the applicant and the inventor, as well as the title of the invention.

As an attachment to the utility model application form, the most essential part of the application, which includes the description of the invention, the claims, and the drawings, should be included. The application should contain all the relevant information regarding the invention, as no new information about the invention can be added to the application after the filing date.

2.1 Processing of a utility model application

 Utility models are subject to a notification procedure. The registration authority only examines the formal registration requirements of the utility model. If necessary, the registration authority issues an interim decision requesting the applicant to correct any formal deficiencies in the application. The applicant must respond to the interim decision and make the necessary corrections within two months.

Novelty and distinctiveness compared to prior art are not generally examined by the registration authority, so the responsibility for conducting such examinations lies with the applicant. In practice, the applicant has the option to request an examination by the registration authority for a fee. Additionally, if necessary, the applicant must claim priority from an earlier application in their application. The condition for claiming priority is that the application is filed within 12 months of the earlier application.

The application can be submitted to the Finnish Patent and Registration Office in Finnish or Swedish if the applicant is domiciled in Finland. However, the registration of a utility model requires that the claims be provided in both Finnish and Swedish, so the applicant must either translate the claims themselves or have them translated at the Patent and Registration Office. A written request for translation must be made, and a translation fee must be paid.

2.2 Publication of Application Documents

 The application documents become public from the date of registration or 15 months from the filing or priority date. An approved application is recorded in the utility model register and announced by publication in the electronic Utility Model Journal.

The registration of a utility model can be deferred for up to 15 months from the filing or priority date if the applicant requests a deferral in writing within two months from the filing date and pays the deferral fee.

3. Conversion of a Patent Application

 A Finnish patent application, a European patent application, and an international application in the PCT phase can be converted into a utility model application while still pending. Additionally, it is possible for the applicant to simultaneously apply for both a utility model and a patent for the same invention. However, it is not possible to convert a utility model application into a patent application, nor is it possible to convert a design application into a utility model application.

The conversion of an application is done by submitting a request to the Finnish Patent and Registration Office. The request should include the patent application number and filing date. When converting the application, the actual invention must remain the same, and the scope of protection for the invention must not be expanded. If the original application included method or use claims, these must be removed from the application as they do not fall within the scope of protection of a utility model.

3.1 Time Limits for Conversion of an Application

Conversion of a patent application into a utility model application is possible within ten years from the filing date of the patent application. When converting the application, the filing date of the utility model application will be the same as the filing date of the patent application. The conversion of the application does not remove the pending status of the patent application unless the applicant explicitly withdraws the patent application.

Invalidation of a utility model

1.1 Processing of an invalidation claim

The Finnish Patent and Registration Office informs the holder of the utility model about the invalidation claim and provides a three-month period for the holder to respond to the claim. If the holder does not oppose the invalidation claim in writing, the registration will be invalidated.

If the holder opposes the invalidation claim in writing, a round of statements begins. The holder’s statement is sent to the claimant, who has two months to respond to it. The claimant’s statement is then sent to the holder, who again has two months to respond. After this, the holder’s statement is once again sent to the claimant.

If the holder continues to oppose the invalidation after the round of statements, the registration authority examines the invalidation claim and the documents from the statement round.

1.2 Partial Invalidity Possible

In the invalidation procedure, a utility model can only be partially invalidated if the holder of the utility model submits new protection claims that fulfill the requirements for registration in response to the invalidation claim. Unlike patents, utility models can only be invalidated through the invalidation procedure, and there is no separate opposition procedure for utility models.

If the invalidation claim is rejected, the claimant has the possibility to appeal the decision to the Market Court. On the other hand, if the invalidation claim is accepted, the party that lost the registration of the utility model has the right to appeal. Both parties also have the right to appeal in cases of partial invalidation of the utility model.

Registration of an EU trademark

Information to be included in the application for an EU trademark 

An EU trademark is registered by submitting an application to the European Union Intellectual Property Office (EUIPO) and by paying an application fee. In addition to its name and contact details, the applicant must indicate in the application which goods and services the mark is to be registered for and which categories of goods or services in the so-called Nice classification they belong to. 

The applicant may claim so-called priority for the EU trademark application if an earlier application for the same mark, with the same goods and services, has been filed no later than six months before the filing of the EU trademark application. 

Processing of EU trademark applications 

The EUIPO will first check formalities and notifies the applicant if formal deficiencies are found. Within two months of receiving a notification from the EUIPO, the applicant must rectify any formal deficiencies in his application. After the formalities have been resolved, the EUIPO examines other conditions for registering the mark and issues a notification to the applicant if any obstacles to registration are found, such as the mark is non-distinctive or misleading. 

Upon request from the applicant, the EUIPO will send a search report on earlier EU trademarks that may be considered confusingly similar with the applied mark. However, the EUIPO does not reject the application by its own initial,  but the owners of prior rights must intervene on their own behalf by filing oppositions. 

EUIPO will inform the owners of earlier EU trademarks in the search report that an application for a similar mark has been submitted to the EU Intellectual Property Office. The notifications are sent only to holders of previous EU trademarks, not to owners of marks registered on national level in the European Union. 

Opposition period and opposition procedure 

Once the examination is completed, the EUIPO will publish the application,  opening a period of three months within which objections can be made against the registration of the mark by submitting so-called oppositions. The mark will be registered if no oppositions are timely submitted against the application. 

Oppositions can be based on previous protected marks in the EU or in any of the member states of the EU that cover similar goods or services. At the beginning of the opposition proceedings, the EUIPO examines if the opposition fulfils formal requirements. If the opposition passes the formal examination, the applicant and the opposing party will be informed of deadlines of the procedure. 

The applicant and the opposing party will have the opportunity to negotiate an amicable settlement of the case and to even suspend the opposition proceedings for the duration of the negotiations. In the absence of an amicable settlement, the opposing party has the opportunity to submit further argumentation and evidence and the applicant for the trademark application has the right to submit a response to the opposition. 

Once the parties have been allowed to comment on each other’s filings, the EUIPO will issue a decision on the basis of the arguments and evidence presented. The mark will be registered to the extent that the application was not rejected in opposition proceedings. 

Validity and renewal of the registration 

EU trademark registrations is valid for 10 years from the date of submission of the trademark application, and must be renewed each  10 years for the protection to remain in force. 

Registration requirements for trademarks

Non-Confusion with earlier protected mark is a condition for registration 

The confusion of a sign with another trademark is assessed on the basis of the overall impression of the target group of the mark. The assessment of the overall impression takes into account the visual, conceptual and phonetic similarity of the marks. 

Moreover, a trademark must not be confused with earlier company names or the last names of private people. In practice, company names have generally been an obstacle to a trademark registration only if the dominating part of the company name and the trademark have been almost identical. 

Distinctive character as a prerequisite for registration 

Generic names for products and services are not distinctive. However, if the generic term is used differently from its usual meaning, it is a distinctive sign. For example, the word espresso is a distinctive trademark for cars, but not for coffee products. In addition, words or symbols which, for example, purely describe the type, quality, quantity, purpose or price of the product or service are considered to be indistinctive. 

As an, the word weapon cannot be used as a trademark for a shotgun, or the word plus cannot be used as a trademark for a cleaner. Distinctive figurative marks are not considered to be simple patterns in their usual form of expression, such as circles, squares and basic forms of product labels. 

Moreover, shapes that exclusively consist of elements that are needed to obtain a technical result, and which substantially affect the value of the product cannot be protected as a trademark. 

Dilution and distintivity acquired through use 

A registered trademark may become indistinctive if it is used in the market as a generic term describing a product or service. A practical example of a trademark that become indistinctive in the Finland is the word Termos. 

On the other hand, a word, which was originally indistinctive, may, by extensive use, acquire a secondary distinctive meaning in addition to its general language meaning, that enjoys trademark protection. When assessing such changes in distinctivity, particular attention is on the length and extent to which the mark has been used. 

European Patent

The European Patent Convention is an open agreement, which means that it can be utilized by individuals from countries that are not members of the convention. A European patent can also be obtained through the international patent application system known as the Patent Cooperation Treaty (PCT).

In Finland, a European patent application can be filed with the Finnish Patent and Registration Office or directly with the European Patent Office. The applicant can submit the European patent application in any language but must provide a translation into one of the official languages of the European Patent Office (English, French, or German) within a two-month deadline.

Processing of European Patent Application

Upon receipt of the application at the European Patent Office, the application undergoes a formal examination. After the formal examination, a prior art search is conducted, and an examination report is prepared.

As part of the examination report, the European Patent Office provides an opinion on the patentability of the technical solution claimed in the application and highlights any potential patentability obstacles. If the European patent application is a continuation of a PCT application where the examining authority was the European Patent Office, the prior art search is already conducted during the PCT phase.

The examination report is sent to the applicant for information. Based on the examination report, the applicant has the option to withdraw the application if they consider the chances of success to be low.

The European patent application is published 18 months after the filing date or priority date. If the applicant has paid the designation fee upon filing the European patent application, the European Patent Office automatically continues with the examination after the examination report. If the designation fee has not been paid, the applicant must, within six months from the notification of the examination report, request the continuation of the examination and pay the designation fee.

The examination division of the European Patent Office examines the patentability requirements of the application, requesting additional statements or amendments from the applicant as necessary. Subsequently, the examination division either grants the patent or rejects the application. Within four months from the grant decision, the applicant must pay the grant fee and translate the patent claims into two other official languages of the European Patent Office.

Granting of the European Patent

The granting of a European patent is announced by the authority in the European Patent Bulletin, marking the beginning of a nine-month opposition period. After the grant of the European patent, the applicant must separately validate the patent in the member states of the agreement where the European patent has been granted based on designation fees. In principle, the national validation must take place within three months from the announcement of the grant of the patent.

Changes to European Patent Legislation

The European patent system underwent significant changes in 2023, as a granted application at the European Patent Office (EPO) can be validated as a unitary patent, establishing the Unified Patent Court (UPC). The UPC has jurisdiction over all disputes related to unitary patents. Furthermore, disputes concerning existing European patents can also be resolved in UPC courts, unless the patent holder makes an opt-out declaration.