1 January 2011CopyrightLauri Rechardt and Timo Enroth

Business brief 2011: Finland

Patents

How do you register or secure patent rights?

Patent applications must be filed in writing with the National Board of Patents and Registration (the NBPR). The patent application forms are available on the Internet.

An applicant domiciled in Finland may draft the application either in Finnish or Swedish. The application may also be drafted in English and it can be examined in English, if so requested when filing the application. However, the application has to be translated into Finnish or Swedish before it is made available to the public. The application may also be filed in other languages and it can be accorded a filing date, but it will not be examined before it has been translated into Finnish or Swedish.

Is national or international coverage most appropriate?

A national patent granted in Finland is in force within the Finnish territory. The downside with seeking protection in a number of national territories is the high cost associated with the local filings and translations.

Finland is party to the Patent Cooperation Treaty (PCT). The application process for patent protection in multiple territories can begin with a single application made either to the NBPR or WIPO. It is possible to file for a European patent based on the European Patent Convention (EPC).

What are the costs for registering a patent?

The filing fee for a Finnish patent is €450 (electronically, €350). The fee will not be refunded if the application does not lead to the grant of a patent.

A patent is maintained by paying renewal fees. The fee for a patent for the first three years is €200. The first renewal fee is paid during the application phase, at the beginning of the third application year. From there on, the fee shall be paid annually and it increases progressively up to €900 in the 20th year.

What are the costs of defending a patent?

Costs up to the district court decision tend to range between €200,000 and €400,000, depending on the complexity of the case.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

Patent applications must be drafted with care. It is not possible to add anything to the application after the filing date. Claims can be modified, however, while the application is being processed, but the information needed in the modification must be found in the text of the application, either in the description or the original claims.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Patent disputes, in particular in the technology sector, are not uncommon. Patent owners should remain vigilant in their enforcement efforts.

The first step is to send a cease and desist letter to the suspected infringer. Interim injunctions, including ex parte injunctions, are also available and can be effective, but require at least some evidence of the actual infringement.

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

The exclusive trademark right covers the right to use a mark in business and also, when necessary, the right to prohibit others from using in business the mark or marks that may be confused with the protected mark, on similar goods or services.

While it is also possible to obtain protection for a trademark through use, it is recommended that companies (or individuals) protect their trademarks by applying for trademark registration at the NBPR. Use of agents or legal representatives is not obligatory for applicants with residence or commercial establishment in Finland, but applicants with no establishment in Finland must deploy a local agent.

What are the costs for registering a trademark, and what are the costs of defending it?

The NBPR charges a fee of €215 for a trademark application, including three classes of goods or services. The agents typically charge either an hourly rate or a single fixed fee.

The NBPR’s fee for filing an opposition to registration is €215 and the legal fees for a simple filing typically remain reasonable.

The costs for legal actions to defend a trademark in Finland are moderate compared to many European jurisdictions or the US. In a normal trademark case, the costs of litigation up to a district court decision should not exceed €30,000 to €50,000. In addition, a successful litigant should have his legal fees covered by the losing party.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

Counterfeiting remains a big problem for rights owners, in part because of the proximity to Russia—it still struggles with IP enforcement efforts. Further, online infringements present an increasing problem in Finland, with pharmaceutical products and luxury goods being the most vulnerable, according to customs statistics.

Finnish brand owners and industry groups have established a very good working relationship with customs. Using customs and filing for a standing application is highly recommended. The local industry anti-counterfeiting and anti-piracy groups also provide effective services and a good first point of contact for trademark owners.

What are the most common mistakes trademark owners make?

Trademark owners are still not active enough in monitoring the markets and intervening in the infringements.

Non-use of a mark and the subsequent risk of cancellation also cause problems. Trademark owners should make sure that their marks are used for all the goods and services they have been registered for. If an owner does not plan to use the mark himself, licensing the mark to a third party should be seriously considered.

Counterfeiting and online piracy

Online piracy is the single biggest problem for the music and film industries in Finland. And with the new digital readers, book publishers are starting to feel the effects of online piracy of books and other print products.

Illegal P2P services remain the main concern for the entertainment industries, while for the brand owners, auction sites and illegal websites are the main channels for illegal products.

The Finnish Anti-Piracy Centre, representing the key entertainment industry associations, runs an effective campaign against online infringement. It is recommended that rights holders keep close contact and co-ordinate their efforts with the centre.

General

There is a draft government bill that proposes to move all civil IPR matters from the civil courts and the NBPR to the Market Court. The objective is to have the move implemented by 2012. The Market Court started operating on March 1, 2002. The court currently has jurisdiction to hear antitrust cases and cases brought under the Unfair Business Practices Act.

Lauri Rechardt is a partner at Procopé & Hornborg. He may be reached at: lauri.rechardt@procope.fi

Timo Enroth is an associate at Procopé & Hornborg. He can be reached at: timo.enroth@procope.fi

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk