1 February 2012CopyrightLauri Rechardt and Timo Enroth

Ins and outs: IP protection and enforcement

Patent basics

Due to Finland’s accession on November 1, 2011, to an agreement on the application of Article 65 of the London Agreement, which is a protocol relating to the European Patent Convention (EPC), Finnish patents may be filed and granted in English. An applicant may draft the application in either Finnish or Swedish and/or in English.

An applicant has to translate the patent application’s abstract and claims into Finnish or Swedish before it is made available to the public. The result will be a patent with its description in English, and its claims and abstract in English and in Finnish or Swedish. The NBPR may use English as the language of decisions for national patent applications alongside Finnish and Swedish on an applicant’s request. Foreign patent applicants can validate their European patents in Finland by submitting a Finnish or Swedish translation of the claims only, while the description can be submitted in English.

A national patent that is granted in Finland is valid and enforceable within the Finnish territory. Finland is party to the Patent Cooperation Treaty (PCT). The PCT application process, which grants patent protection in multiple territories, can begin with a single application that is made to either the NBPR or the World Intellectual Property Organization (WIPO). It is also possible to file for a European patent under the EPC. Under the provisions of the London Agreement, European patents are validated in Finland if their grant was published in the European Patent Bulletin on or aft er November 1, 2011.

The filing fee for a Finnish patent is €450 (if filed 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 the first three years of a patent’s life is €200. The first renewal fee is paid during the application phase, at the beginning of the third application year. From then on, the renewal fee must be paid annually. It also increases annually, to €900 in the 20th year.

The costs of defending a patent in the first instance tend to range between €20,000 and €50,000. However, the cost can increase considerably depending on the complexity of the case.

Patent advice

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

On enforcement, patent disputes in the technology sector are not uncommon in Finland. Patent owners should remain vigilant during their enforcement efforts.

In the event that a patent owner discovers a patent infringement, as a first step it should send a cease and desist letter to the suspected infringer. As unfounded cease and desist claims could lead to counterclaims, such letters must always be formulated with care and only sent after a careful consideration of the merits of such an action. Interim injunctions, including ex parte injunctions, are also available and can be effective, but require at least some evidence of an actual infringement.

Design basics

Design rights can be obtained through registration in Finland. Registration provides an exclusive right to a design and to any results of design work.

"COUNTERFEITING REMAINS A BIG PROBLEM FOR RIGHT OWNERS, IN PART BECAUSE OF FINLAND’S PROXIMITY TO RUSSIA, WHICH STILL STRUGGLES WITH IP ENFORCEMENT EFFORTS."

The application form provided by the NBPR must be completed in Finnish. A registration is valid for five years from the date that an application is filed and can be renewed up four times, with each period lasting five years. Thus the maximum protection time that a design right provides is 25 years. However, if a design is a part of a multipart product and its purpose is to fix the product back to its original state (a spare part), the design provides a maximum of 15 years of protection.

Finnish design right legislation provides for a 12-month grace period. A grace period means that a design can be used for one year before registration without losing novelty. As not all countries, eg, Japan, off er a grace period in legislation, it is recommended that an application be filed before a design is published and released into the public domain.

The design application fee is €185 and renewal fees start at €275 for the first renewal, increasing to €390 for the second renewal, €420 for the third renewal, and €430 for the final renewal. There may also be additional fees. The costs for legal proceedings involving designs normally vary between €10,000 and €30,000, but can vary significantly depending on the complexity of a case.

Amendments to design right protection

Finland’s Registered Designs Act has been amended to comply with international registration systems. The following amendments have been made:

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