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Patents

Patent Regulations

Issued on 30 September 1980. Amended 31 December 1985, 4 November 1986, 25 June 1992, 1 March 1996, 1 April 1997, 1 July 1997, 15 July 2000, 2 April 2001, 1 January 2003, 21 April 2005, 6 March 2006, 13 December 2007, 1 November 2008, 1 March 2010, 1 April 2010 and 1 November 2011.

1. GENERAL REGULATIONS
Section 1

Patent Regulations apply to:
1) Finnish patent applications, with the exception of what is provided for in section 41 a;
2) international patent applications pursued in Finland in compliance with section 31 of the Patents Act or accepted for examination in compliance with section 38 of the Patents Act, with the exception of what is provided for in section 41 a;
3) applications for European patents which have been converted into national patent applications in compliance with section 70 of the Patents Act, with the exception of what is provided for in section 41 a;
4) European patents and applications for European patents in which Finland has been designated for protection, for the part of the provisions of sections 31, 32 and 41 a;
5) patents granted in Finland under section 20 of the Patents Act.

Additional instructions may be issued as special orders.

Section 2

Special orders concerning patent applications relating to biological material, its production or use are given in Chapter 6.

Special orders applicable to patent applications concerning foodstuffs or medicinal products that have been or are deemed to have been filed before 1 January 1995 are issued in Annex I.

Special orders concerning electronic filing are issued in Annex 2.

The orders issued in Annex 2 are applicable to patent applications filed in CD-R format. When the application is filed in CD-R format, the applicant must at the same time submit a signed application document that contains a list of the files on the CD-R.

Section 3

The functioning of the Patent Office as a Receiving Office under the Patent Cooperation Treaty is governed by the provisions of sections 45 to 51a of the Patents Decree.

The National Board of Patents and Registration of Finland, the Swedish Patent Office or the European Patent Office (EPO) may act, at the option of the applicant, as International Searching Authorities and International Preliminary Examining Authorities. The international patent application must be filed in Finnish, Swedish or English, if the applicant wishes its examination to be conducted by either the National Board of Patents and Registration of Finland or the Swedish Patent Office, and in English, if the applicant wishes the examination to be conducted by the EPO.

2. PATENT APPLICATIONS AND PATENTS

Application document and its annexes

Section 4

The application document (application form) is submitted to the National Board of Patents and Registration in two copies.

Subsection 2 repealed 1 November 2011.

The description as well as the drawing, the patent claims and the abstract must be submitted in two copies. Any amendments to these documents must be filed in one copy.

Subsection 4 repealed 1 November 2011.

Accordance of a filing date

Section 4a

The accordance of a date of filing for an application is determined in compliance with section 8 b of the Patents Act. The Patent Authority must accord a date of filing to the application if the application meets the requirements listed in section 8 b of the Patents Act.

The term ‘filing date’ refers to the date from which the rights in respect of the application and the patent to be granted on the basis of it begin.

The term ‘date of receipt’ refers to the date on which the Patent Authority received the application.

Postponement of a filing date

Section 4b

The filing date may be postponed in compliance with the provisions of section 8 c of the Patents Act. According to section 8 c (1) of the Patents Act, the Patent Authority need not examine whether the application is deficient, but if the Patent Authority finds that parts of the description or drawings, or elements which are referred to in the description or drawings, are missing, the applicant must immediately be invited to complement the application within a specified time limit.

Description

Section 5

The description must begin with a brief and factual title of the invention and it must comprise:
1) A general part, which illustrates the scope of application of the invention and the technique upon which the invention is based (the state of the art). The presentation of the state of the art must include references to literature, known to the applicant, which discloses the technique. It must also present the special features of the invention over the state of the art, as well as the means necessary for achieving them. The last-mentioned presentation must conform to the presentation given in the claims and it may consist of a reference to the claims.

If the invention in itself does not disclose how it can be exploited industrially, this is to be stated in the description.

2) A specific part in which the invention is described in detail, primarily by giving examples and embodiments and possibly by referring to a drawing. The invention must be illustrated with examples in such a way that that the claims can be considered as substantiated.

If the description contains a drawing, generally a list of all the figures in the drawing must be presented as an introduction to the specific part of the description.

Section 6

If the patent claims contain several independent claims, the inventions corresponding to them are to be presented in the description in the way specified in section 5. Also the subject matter for which protection is requested in a dependent claim (embodiment) must be presented in the description to such extent as is necessary for the claim to be understood. The inclusion of the last-mentioned in the specific part of the description is to be considered sufficient.

Section 7

Made-up titles may not be used.

By way of exception, trademarks may nevertheless be used when the article in question cannot be properly designated by any other well-established title. In such cases it must, however, be clearly indicated that a trademark is concerned. If the trademark is registered in this country, this must be indicated, preferably by using the symbol ®. The kind of the article must always be indicated.

Section 8

The textual part of the description and the drawing must be submitted as individual documents. Tables as well as chemical and mathematical formulas may be inserted in the text.

Section 9

When references are made to literature, the instructions given in section 83 must be observed.

Patent claims

Section 10

A claim must contain a preamble presenting the details under section 14(1), paragraphs 1 and 2 of the Patents Decree, and a characterising part presenting the details under paragraph 3 of the said provision. The characterising part must begin with the words ‘characterised in’ or with an equivalent expression.

It is also allowed to draw up the patent claims in another form, if there is good reason for this, for example when the claims relate to a category of use.

Section 11

Each claim must disclose those special features that are necessary for achieving the intended effect.

Section 12

Generally, a product or an apparatus must be defined by disclosing its composition or its structural details. If an invention cannot be properly disclosed in any other way, it is possible to proceed to a closer definition by presenting the workings or the functions of its details. A product, especially a chemical product, may also, if its definition otherwise is remarkably difficult, be described by disclosing its manufacturing process (product-by-process), when necessary, together with other parameters concerning the product.

Section 13

When applying for a patent for substances or compounds that as such are previously known, on the ground that the substance or compound will, for the first time, be used in surgery, therapy or diagnosis, the use must be disclosed in the claim.

Section 14

A process must be defined through information about operations or functions.

Section 15

A claim relating to a use must disclose the special purpose for which the product or process will be used. When necessary, the claim must also contain more detailed information about the product or process.

Section 16

A single application may contain several independent claims belonging to different categories , such as claims on a product and a process, although the invention is defined in the claims by technical details with the same content.

Section 17

Several independent claims falling into the same category may be contained in a single application only if the inventions are based on the same inventive idea; if they are technically very closely connected; and if there is considerable difficulty in describing the inventions accurately enough, for example in the form of alternatives, if they were presented in the same claim and defined by shared elements. Also inventions of the type ‘transmitter - receiver’ can be presented as separate independent claims.

Section 18

An independent claim may refer to another independent claim. This is the case for example when a claim refers to a claim falling into a different category (for example “A method for producing a product according to patent claim 1…” or “A device for carrying out a method according to patent claim 1…”). Similarly, in an application relating to elements that have a functional connection with each other (such as a socket and a contact plug) it is possible, in an independent claim that defines one element, to refer to another independent claim defining another element. In these cases, however, consideration must be given to the extent the claim contains the special features that have been presented in the claim it refers to.

Section 19

A dependent claim may, either directly or through another dependent claim, refer back to one previous independent claim or several previous independent claims. Patent claims must be grouped together in the most appropriate way possible.

A dependent claim must not relate to mere self-evident or obviously simple, structural or method technical operations. Claims must not consist of mere lists of conventional examples.

Section 20

Both in the preamble and in the characterising part of a claim there must be reference letters or numbers, preferably in parenthesis, which correspond to the drawing. The claim must, however, even without the references, clearly disclose the invention for which protection is sought. General remarks, such as ‘as explained’ or ‘as shown in the drawing’ cannot be accepted in the claims. Exceptionally, a claim may directly refer to curve diagrams, or the like, in the drawing.

Trademarks are usually not accepted in the claims.

Abstract

Section 21

The abstract must be drawn up so that it provides a useful aid for the assessment of novelty in the technical field in question.

The abstract must contain a brief summary of the contents of the description, claims and drawing. The summary must indicate the technical field to which the invention pertains. It must in an easily understandable manner disclose the technical problem to which the invention relates, the principle of the solution contained by the invention as well as the primary field or fields of use of the invention. The abstract must present the chemical formula that, from among the formulas given in the application, best characterises the invention. The abstract must not contain any arguments for the advantages or value, or the intended use, of the invention.

The abstract must also provide sufficient grounds for the decision whether it is necessary to consult the application or the patent itself.

The abstract may not contain more than 150 words.

Section 22

If a patent application contains drawings, generally the figure that is chosen by the applicant is to be published together with the abstract. The Patent Office may exceptionally override the applicant’s choice of figure or, if the applicant has not chosen any figure, make the choice. Each special feature of the invention that is presented in the abstract and illustrated by a drawing must be provided with a reference number or letter in parenthesis.

Drawing

Section 23

Drawings must be of size A4. If there are too many figures to be presented on a single sheet, it is allowed to use more sheets. The drawings must be made on white paper. The minimum width of the margin is 2,5 cm at the top, 2,5 cm on the left-hand side, 1,5 cm on the right-hand side and 1,0 cm at the bottom. No frames are allowed in the drawings.

Section 24

The details that are necessary for the understanding of the description must be included in the drawings and they must be marked with the same numbers or letters both in the description and in the drawing. The drawing must not contain any other markings than those mentioned in the description, and there must not be more markings than is necessary for the description to be understood. Neither must the drawing contain any explanatory text, except for short expressions such as ‘water’, ‘steam’, ‘section A-B’ or ‘closed’. Block diagrams, flowcharts and electric circuit diagrams must be provided with explanatory texts that facilitate their immediate understanding.

Section 25

Figures and all writing on the drawing must be made in black, clear lines without colours.

Section surfaces must be obliquely ruled. All characters in the drawings (numbers and letters) must be clear and readable. Complex figures must not contain so many details that this might cause confusion. Individual figures must be at a suitable distance from each other. Irrespective of the number of sheets of drawings, the figures must be marked with consecutive numbering, for example figure 1 or fig 1 or possibly, with letters attached to them, for example figure 1a or fig 1a, preferably in the order in which they appear in the drawing. The elements of an embodiment must be marked with corresponding references in all figures.

Further orders regarding description, abstract and annexes

Section 26

The description, the claims and the abstract must be executed in black colour by word processing on white paper of A4 size. The typing must be 1 1/2 spaced and the font size must be chosen to allow upper case letters a size of at least 0,28 cm when using for example the font Times New Roman 12, or Courier New 12; the following margins must be left: 2.5 to 4 cm on the left-hand side, 2 to 4 cm on top, 2 to 3 cm at the bottom, and 2 to 3 cm on the right-hand side. The lines of the abstract should be 11 cm long. The text may be written on one side of the sheet only. It must be even and individual letters must be sharp and easily readable. If the text matter contains hand-written marks or formulas, they must be in black colour.

The word ”characterised” or the like in the claims must be spaced out or highlighted in some other suitable manner.

The sheets of the description, the claims and the abstract must be numbered in consecutive Arabic numerals. The numbers must be placed in the middle, at a minimum distance of 2 cm from the top of the sheet. Every fifth line of the description and of the claims should be numbered in Arabic numerals placed at a minimum distance of 2.5 cm from the left-hand side of the sheet.

The claims may be written on a separate sheet. The abstract must be written on a separate sheet.

Section 27

Units of measurement must be expressed in compliance with the international system of units of measurement (SI). Commonly approved symbols, atomic weights and molecular or structural formulas must be used in chemical formulas. Otherwise, only such technical terms, signs and symbols are to be used as are generally approved in the field concerned.

Section 28

The communications to be submitted to the Patent Office must be drawn up on white paper of A4 size. The serial number of the application must be marked on the first page of the communication.

Specimens etc.

Section 29

Specimens, samples and similar material may be submitted only if it is necessary for the understanding of the description. They are generally not returned.

Authorisation

Section 30

If the applicant is not domiciled in Finland, they must have a representative resident in the European Economic Area who is authorised to represent them in all matters concerning the application.

Correspondingly, during the opposition proceedings, a patent holder who is not domiciled in Finland must have a representative resident in the European Economic Area.

A patent applicant or patent holder domiciled in Finland may also appoint a representative.

Section 31

To authorise a representative, the applicant must either give the name, domicile and complete postal address of the representative in the application document or submit a special, signed power of attorney which, besides the above information, also contains the title of the invention or the serial number of the patent application.

For possible opposition proceedings the patent applicant may beforehand, in a power of attorney, grant their representative an authorisation to act on their behalf in the course of the opposition proceedings. The authorisation can also be given in a separate power of attorney once an opposition is lodged against a patent.

If a general power of attorney is invoked in a case, there must be a written reference to that power of attorney.

A copy of a power of attorney, or a power of attorney sent by fax, or any other document by which the representative shows their authorisation is also accepted. The Patent Office is entitled to require the submission of the original power of attorney, if necessary.

Section 32

If a representative has the authority referred to in sections 24 and 71 of the Patents Act, this fact must appear from the power of attorney.

Statement on the right to an invention.

Section 32a

If the applicant is not the inventor or they have not made the invention on their own, the applicant must give a statement on what they consider to be the basis for their right to the invention. The statement may contain an announcement that the invention has been transferred to the applicant for example as an employee invention, or by agreement or inheritance. The statement must be enclosed to the application.

Claim to priority and its consequences

Section 33

If priority (section 6 of the Patents Act) is claimed after the filing of the application, or if the applicant files a new priority claim or corrects a previously filed priority claim in compliance with section 10 of the Patents Decree, this must be done in a separate communication and within the time limit laid down in section 10 of the Patents Decree.

Section 34

If a certificate and a copy under section 11(1) of the Patents Decree have been submitted to the Patent Office in connection with an earlier or simultaneously filed application, and the applicant refers to this, or if priority is claimed on the basis of a patent application filed in Finland, the certificate and the copy need to be filed only if the Patent Office requests it in an office action.

Section 35

If there exists a valid priority claim when an application is laid open for public inspection in compliance with section 22 of the Patents Act, the contents of the application must be regarded as previously known (section 2(2) of the Patents Act) from the date of priority onwards for those parts which correspond to the priority document.

Section 36

Withdrawal of a priority claim must be made in a special communication or in a communication referred to in section 33.

International-type Search

Section 37

The same formal requirements as apply to international patent applications also apply, where applicable, to a patent application for which an international-type search (section 9 of the Patents Act, section 5 of the Patents Decree) is requested.

International-type searches are conducted by either the National Board of Patents and Registration of Finland, the Swedish Patent Office (PRV), or the European Patent Office (EPO), at the option of the applicant. If it is requested that this kind of search be conducted by PRV, a translation into Swedish or English of the application must accompany the search request. If it is requested that the search be conducted by EPO, a translation into English of the application must accompany the search request.

Translation of documents filed in a patent matter

Section 38

Section 38a

Repealed 1 November 2011.

Section 39

A translation referred to in section 31 of the Patents Act must contain the description, the patent claims and the abstract.

Unless the Patent Office specifically requires it, the translation does not have to contain such part of the application which the International Searching Authority has considered to form an independent invention and for which the applicant has not paid an additional fee to the International Authority (Article 17.3.a of the Patent Cooperation Treaty) and it may also be limited to comprise only that part of the application with which the applicant proceeds after having made an amendment before the International Bureau (Article 19.1 and 2 of the Patent Cooperation Treaty). Neither needs the translation contain that part of the international application with which the applicant does not proceed after having made an amendment before the International Preliminary Examining Authority (Rule 66 of the Patent Cooperation Treaty) or because of the special provision under section 1(2-4) of the Patents Act or the special provision concerning pharmaceuticals and foodstuffs in the provisions for entry into force and the transitional provisions.

If the applicant, under subsection 2, wants to make use of the opportunity to leave out a specific part of the application, they must give an assurance which clearly indicates which part of the application is not contained in the translation, and also give the reason for leaving it out.

Section 40

A translation of the priority document need not be submitted, unless the Office considers that the legality of the priority document has significance in determining whether the invention concerned is patentable.

Section 41

If a translation conforming with sections 38 to 40 is required, it must be certified by the applicant or the person who has drafted it and who is responsible for the translation, unless the Patent Office specially orders that it must be certified in some other manner.

Translating European patents and applications for European patents

Section 41a

The requirements as to form issued in sections 23 to 26 apply, where applicable, to translations under section 52u or 52v of the Patents Decree or to corrections of translations under section 52y of the Patents Decree.

On filing a translation or the correction of a translation, the applicant, the patent holder, their representative or the translator in question must assure that the translation corresponds to the documents in one of the processing languages of the European Patent Office. If the Patent Office considers that the translation has not been submitted in compliance with the applicable provisions, it must notify the applicant or patent holder of that fact.

3. PROCESSING OF PATENT APPLICATIONS

Section 42a

When a filing date has been accorded to an application in compliance with section 8b or 8c of the Patents Act, the Patent Office issues to the applicant, where necessary, an office action regarding the following deficiencies:
1. the filing fee or part of it is unpaid;
2. the application document is not duly signed;
3. the additional fee for the application remains unpaid in whole or in part;
4. the name and address of the inventor have not been submitted;
5. the applicant has not submitted a statement in which their right to the invention is proved;
6. the name and address of the representative called for by section 12 of the Patents Act have not been submitted and the proof of authorisation is missing; and
7. the original annexes do not contain the description, claims or abstract, or these have not been drafted in compliance with Section 38; a drawing referred to in the description, the claims or the abstract is missing; or one or some of those documents are of the kind that novelty search evidently cannot be conducted.

The office action must be issued as soon as possible once a filing date has been accorded to the application and before the novelty search is conducted. As regards paragraphs 1 and 2, the office action must be issued immediately after the filing date has been accorded to the application.

If any documents mentioned in the application’s list of annexes are missing, the applicant must be notified of this as soon as possible.

Section 43

Repealed 1 April 1997.

Section 44

The applicant must be notified of the possibility of getting help from an expert if the documents submitted to the Office are so drafted that this is considered necessary.

Section 45

If the applicant gives a reply in which they neither withdraw the application nor indicate that the deficiencies mentioned in section 42(1), paragraphs 1 to 4 have been removed, the application must be decided on in its present form as soon as possible, and no further office actions are issued, unless special reasons thereto exist.

Uniformity

General

Section 46

Independent patent claims may be presented in the same application (section 16 of the Patents Decree), if the inventions in them are not independent of each other (section 10 of the Patents Act).

Inventions according to independent patent claims must each be individually patentable.

Inventions falling into the same category

Section 47

As an addition to what is presented in an independent claim, specific details and such qualifications as are suited for increasing the technical effect or which together with an invention according to such independent patent claim bring about additional effect, may be taken into a dependent claim (section 15(2), 2nd sentence, of the Patents Decree), if the addition is considered to comply with the provisions of section 10 of the Patents Act.

In the case of a combination invention, a special embodiment of a part of the combination may be presented in a dependent claim only if this embodiment has significance in attaining a combined effect.

Inventions falling into different categories

Section 48

A patent application cannot be considered to comprise inventions independent of each other (section 16 of the Patents Decree), if it contains:
(1) besides an independent claim relating to a product, an independent claim relating to a method invented for manufacturing the product and an independent claim relating to a use found for the product; or
(2) besides an independent claim relating to a product, an independent claim relating to a method invented for manufacturing the product and an independent claim relating to a means for manufacturing the product; or
3) besides an independent claim relating to a method, an independent claim relating to a means invented for carrying out the method.

Processing of applications from the point of view of unity

Section 49

If the application is lacking unity, the invention which is first mentioned in the patent claims is made the subject of the novelty search. The applicant is informed that the application lacks unity.

Once the Patent Office has conducted a novelty search of the invention first mentioned in the claims, the applicant is no longer allowed to limit their application to relate to an invention which is independent of the first invention.

When the applicant, after having been notified of lack of unity by the Patent Office, has limited the patent claims, they are deemed to have finally renounced, in the same application, the invention or inventions which through limitation have been removed from the patent claims.

Section 50

If a part of an international application has not been the subject of an international search or an international preliminary examination of patentability because the application has been considered to comprise several mutually independent inventions, and the applicant has not within the prescribed time limit paid an additional fee under Article 17.3(a) or 34.3(a) of the Patent Cooperation Treaty, the Patent Office must examine whether the application comprises several mutually independent inventions. If the Office considers that this is the case, the part of the application that has not been the subject of such examination must be considered withdrawn as regards Finland, unless the applicant pays the prescribed additional fee within two months from the date the applicant was notified of the decision taken by the Patent Office. If the Patent Office considers that the application does not comprise several mutually independent inventions, it must continue the processing of the application (Patents Act, section 36).

If the applicant wants to protect an independent invention contained in a pursued international application, the application must be divided (Patents Decree, section 22) and a new filing fee must be paid even if the additional fee referred to in subsection 1 has been paid.

Amendments to applications

Patent claims

Section 51

Numerical data and other definitions used in the factual determination of the invention may be included in the patent claims only if they can be deemed to have a counterpart in the basic document. Changes that are corrections of obvious spelling and translation errors may, however, be made in the claims. In such case, however, it must be obvious that the change expresses the original meaning. When assessing this, the wording of the original text, or the contents of possible priority documents can be consulted.

Section 52

In applying section 19(2) of the Patents Decree to amendments made to patent claims after a novelty search, the decisive factor is dependency not in the formal but in the technical sense, i.e. unity in respect of the problem and its solution. The transfer of a claim from one category to another may be accepted, if there is a technical dependency that appears from the basic document.

A claim that has been amended contrary to the provision of section 19(2) of the Patents Decree may be separated from the application by division or separation prior to giving the announcement under section 19(1) of the Patents Act.

Once the announcement under section 19(1) of the Patents Act has been given, patent claims may no longer be amended in a manner that increases the scope of patent protection.

Description

Section 53

As regards the description and the accompanying drawing, the applicant may make only such amendments and additions, for example new embodiments, as are necessary clarifications and corrections, or amendments that are needed when adjusting the description to comply with new or amended claims. The amendments and additions may not be of the kind that gives a broader or different content to the patent claims than is justified by the basic document.

Section 54

When the applicant submits new copies of the description, they must also give an assurance indicating to what extent the description is not literally consistent with a specific, previously at a certain date submitted description, and in what respect the amendment made means that something that is new and has an effect on the matter has been included in the new copies of the description. Unless there is a reason to act otherwise, the person processing the application must approve the above assurance without further inspection.

Sections 55 to 57

Repealed on 1 April 1997.

Division and separation

General

Section 58

Division means that a part of the contents of the basic document of an application (parent application) (section 21 of the Patents Decree and section 11 of the Patents Act) is made the subject of a new, separate application (section 22 of the Patents Decree).

Section 59

Separation is at issue when, by making an addition to the description or the claims or by any other way, an invention that does not appear from the basic document of the application is presented in the patent application, and this invention is made the subject of a new, separate application (section 23 of the Patents Decree).

Section 60

Division and separation must take place before the communication according to section 19(1) of the Patents Act has been given.

If the parent application has been rejected and no communication under section 19(1) of the Patents Act has been given, division and separation may take place as long as the period for appeal runs, irrespective of whether or not any appeals have been lodged.

If the parent application has been dismissed under section 15(2) of the Patents Act, and no communication under section 19(1) of the Patents Act has been given, division and separation may take place during the time limit within which the application may be taken up for further processing, irrespective of whether or not the application is taken up for further processing.

Section 61

Repealed on 1 April 1997

Section 62

The description with the accompanying drawings and the patent claims that are filed simultaneously with the application document of the new application are deemed to make the basic document of the application formed by division or separation (section 24 of the Patents Decree). Once the basic document has been submitted, the applicant is no longer permitted to add any matter separated from the parent application to this application (section 19 of the Patents Decree).

Section 63

In connection with division or separation, the applicant must specify which parts of the parent application form the basis for the claims of a divisional or separated application.

The applicant must indicate in the parent application that a division or separation of the application has taken place.

Section 64

If the priority document contains an invention that does not appear from the basic document (section 21 of the Patents Decree), it is to be deemed that the applicant has voluntarily renounced this invention in their application. For that reason, this kind of invention is not contained in the application and it cannot therefore be separated through division or separation. This provision is in force irrespective of whether the priority document has been submitted before, at the same time, or later than the basic document.

Power of attorney concerning divisional and separated applications

Section 65

Repealed on 15 July 2000.

Period of secrecy of the patent application

Section 66

The 18-month period of secrecy under section 22 of the Patents Act is computed from the date of filing or the priority date of the application. If priority is claimed on the basis of more than one application, the period of secrecy is computed from the first priority date (Act on Computing Prescribed Time Limits, 25 April 1930/150).

Section 67

Repealed on 31 December 1985

Examination of patent applications

Section 68

All independent patent claims must be examined in respect of novelty and patentability. A dependent claim is usually examined in this respect only if there is something to comment on the patentability of the invention or inventions contained in the independent patent claims which the dependent claim relates to.

Report on the examination of the patentability of an invention made outside the country

Section 69

If the Patent Office invites the applicant to submit a report or a copy of the report on what the Patent Authority concerned has communicated to the applicant concerning the novelty and patentability of the invention, a time limit must be given for the applicant for this purpose (section 29 of the Patents Decree).

If the applicant fails to submit the report on the novelty or patentability of the invention or the declaration under section 29(1) of the Patents Decree, the application is to be dismissed under section 15 of the Patents Act. If the applicant refuses to submit this kind of report or declaration, the application is to be rejected under section 16 of the Patents Act.

Section 70

Repealed on 1 April 1997

Novelty search

Section 71

Novelty searches are conducted on the basis of the novelty search material specified in section 26(2) of the Patents Decree.

The novelty search must from the outset be conducted so thoroughly that the novelty of the invention becomes satisfactorily clearly stated. It is not always necessary to go through the whole material: the search can be interrupted as soon as it can be considered to be sufficient for taking a decision on the patentability of the invention.

Section 72

The novelty search must be extended to the date of filing of the application. This is the procedure to be followed even when priority has been claimed.

Section 73

Search results obtained from abroad must be utilised with corresponding limitation of one’s own search. In general, a search result obtained from another Nordic country only needs to be complemented by a search of Finnish material. A search result obtained from EPO and the results obtained from searches conducted in the Federal Republic of Germany, the Netherlands, or Austria usually only need to be complemented by a search of material from the Nordic countries. When the search result is obtained from Great Britain or the USA, it is usually necessary to search only the remaining compulsory material (section 71).

The barring effect on novelty of a previous application that will become available to the public at a later date

Section 74 Field of application:

For the purposes of section 2(2) of the Patents Act, an invention that is the subject of a patent application must be novel compared to what is presented in the following, previously filed applications covering Finland, even though they have not become available to the public before the date of priority or of filing of the subsequent application:
1) Finnish patents or utility model applications which have become available to the public under section 22 of the Patents Act or section 18 of the Utility Model Act;
(2) European patent applications converted into Finnish patent or utility model applications which have become available to the public under section 22 of the Patents Act or section 18 of the Utility Model Act;
(3) international applications which have been pursued in Finland in compliance with section 31 of the Patents Act or section 45 d of the Utility Model Act, or which have been taken up for processing in compliance with section 38 of the Patents Act, and which have become available to the public under section 22 of the Patents Act or section 18 of the Utility Model Act;
4) applications for a European patent, published in compliance with the European Patent Convention; and
5) international applications when they have been pursued in the European Patent Office and have been published in compliance with Article 153 of the European Patent Convention.

If an application referred to in paragraphs 4 and 5 above has been filed before 13.12.2007, Finland must be designated in the application for a European patent or in an international application through an application for a European patent, and the designation of Finland must then have been confirmed or it will have to be confirmed.

Anticipatory effect:

The contents of an application according to subsection 1 are considered to have become known in the following cases:
(1) For the purposes of section 2(2), second sentence, of the Patents Act, the basic document (section 21 of the Patents Decree) of a patent application according to paragraphs 1 to 3 are deemed to form a novelty bar as from the date of priority (section 6 of the Patents Act) to the extent they correspond with the priority document. Otherwise they form a novelty bar as from the filing date of the application.
(2) When the novelty bar is formed by an earlier utility model application in compliance with paragraphs 1 to 3, the contents of the utility model application have, for the purposes of applying these Regulations, the same effect as the contents of a patent application.
(3) The description with drawings and the patent claims as filed of a European patent application according to paragraphs 4 and 5, or those of an international application as pursued in the European Patent Office, are juxtaposed with the basic document of a patent application when assessing the extent to which the contents of the application are considered to have become known as from the date of priority or of filing.
(4) The abstract and other documents, such as additions made in the description, written replies, and the priority document, constitute a novelty bar from the date on which the documents become available to the public.

Postponement of processing:

If the invention for which patent is applied for is not new in relation to what is presented in a previous, not yet public patent or utility model application under subsection 1(1 and 2), and if there are no other reasons for refusing the application, the final decision must generally be postponed until the previous application becomes available to the public or is decided on finally. This is the procedure to be followed also when the previous application is an international application under subsection 1(3) where Finland is designated and the contents of which are familiar to the Office. The final decision to be taken on the subsequent application is postponed until the international application pursued in Finland has become available to the public or is deemed withdrawn as far as Finland is concerned.

If the previous application is a European patent application in compliance with subsection 1(4 or 5), filed before 13.12.2007, the contents of which are known to the Office, the final decision to be taken on the subsequent application must generally be postponed until the European Patent Office has confirmed the designation of Finland or deemed the designation to be withdrawn as regards Finland because of failure to pay the designation fee.

Notification of coincidences:

Any coincidences must be notified to the applicant.

Complaints against patent applications

Section 75

If a communication (objection) according to section 26 a of the Patents Decree is filed with the Patent Office, the examiner must immediately check whether an office action should be issued to the applicant.

The Patent Office notifies the objecting party of the final decisions in respect of the application. If the application is approved and a patent is granted, the objecting party will be notified of this and also of their right to lodge an opposition.

Priority

Section 76

If it appears from the priority document that the applicant is not the same person as is stated in the application serving as the basis for priority, the applicant must prove that the applicant stated in the application serving as the basis for priority has transferred the priority to them as regards Finland.

If the applicant stated in the application serving as the basis for priority applies for a patent in Finland together with another, the latter is not required to prove their priority. If the person who applies for a patent in Finland has been indicated as an applicant together with another person in an application serving as the basis for priority, the latter one is required to present a deed of transfer.

Section 77

Additions to the contents of the priority document (partial priority) are admitted without loss of priority. Priority concerns all details appearing in the priority document irrespective of whether or not they have been presented in the patent claims. For that reason, a later application which is filed by the same applicant and the patent claims of which have contained such things as only have been presented in the description or drawing of the earlier application may therefore not be considered to be a first application filed in a country of the Paris Union, unless the conditions laid down in section 12(2) of the Patents Decree have been met.

Similarly, in those applications in which priority is claimed, the scope of the application is determined on the basis of the basic document. The priority document may not be invoked for the purpose of including new contents into a Finnish patent application beyond the contents appearing from the basic document. Obvious mistakes or spelling errors may, however, be corrected with the support of the priority document.

Section 78

Repealed on 1 April 1997

Classification

Section 79

Patent applications must be classified. Classification must be performed in compliance with the rules of the valid version of The International Patent Classification and with the instructions given in The Guide to the IPC. The valid version is indicated by six digits in parenthesis, for example (2006.01), placed after the classification symbol, which show the year and month when the classification symbol has entered into force.

Section 80

The invention or inventions presented in the patent claims must be classified as invention information (mandatory classification). If the patent application contains new technical information which is not part of the invention but which is considered to be useful for information retrieval, even this additional information can be classified (non-mandatory classification).

Subsection 2 repealed 1 November 2011.

Section 81

The following rules must be taken into account in mandatory classification:
An invention must, where possible, be classified as an entity, not through a separate classification of the individual elements of the invention.

Section 82

Indication of documents

Office action

Section 83

In office actions, the publications forming a novelty bar are presented according to the WIPO Standard ST.14.

List of documents cited

Section 84

Before giving a notice according to section 19(1) of the Patents Act, a list must be compiled of the documents that have been presented during the processing of the application (list of documents cited). This list is to be included in the patent publication under the heading “Documents cited”. In the list, the documents are cited according to the WIPO Standard ST.14.

By way of exception, when special reasons allow it, a certain publication can be omitted from the list, or a publication which has not been cited during the processing of the application can be included in the list. In the list may be included, for instance, a publication which the applicant has referred to in their reply or which has been cited when processing an application from which the application concerned has been divided or separated.

Section 85

If a typing error has occurred when presenting a document, such as, for example, an incorrect indication of the country or number of a patent publication, or of the volume or page of a journal , the publication must be presented in a corrected form in the list of documents cited, provided that the applicant has been informed of the correction in the course of the processing of the application.

Section 86

Patent applications cited against the application in compliance with section 2(2), 2nd and 4th sentences in the Patents Act are indicated by adding the expression “(Section 2(2) of the Patents Act, 4th sentence)” after the serial number of the application.

Granting of applications

Communication of approval

Section 87

Once the claims, the description and possible drawings are acceptable as such or with changes so simple that it is obviously unnecessary to inform the applicant of them in advance, the Patent Office issues an office action, enclosing the documents (the abstract page, the description with drawings and the patent claims) that show the form in which the Patent Office intends to grant the patent (section 29a of the Patents Decree). If the application still contains deficiencies regarding the formal requirements, the applicant is at the same time invited to correct them.

The applicant must within the time limit given in the office action submit their statement as to whether they accept the form in which the Patent Office intends to grant the patent, and remove the deficiencies indicated in the office action. The applicant must make all necessary amendments (those required in the office action and/or new amendments suggested by the applicant) to the description and the claims, and to possible drawings or lists of sequences. If any of the documents is amended, all documents (the description and the claims, and possible drawings or lists of sequences) must be submitted to the Patent Office in their entirety, including the documents where no changes have been made. The documents sent by the Office need not be returned (section 4).

The documents must be suitable for printing (section 26 of the Patent Regulations).

Notice and grant of patent

Section 88

The communication under section 19(1) of the Patents Act that the application is acceptable is not given before the applicant has approved the form in which the patent is to be granted and the application conforms to the relevant provisions.

The communication under section 19(1) of the Patents Act is deemed given on the date the examiner in charge has signed it. The applicant must then within two months of the notification pay the prescribed printing fee.

The communication under section 19(1) of the Patents Act is not binding upon the Patent Authority. If an obstacle within the meaning of section 25(1) of the Patents Act appears, the processing of the application will be continued. If the application is acceptable in the amended form and also the applicant accepts the form in which the Patent Office intends to grant the patent, a new communication under section 19(1) of the Patents Act is given to replace the earlier one.

For a request for postponing the grant of the patent (section 30 of the Patents Decree) to be accepted, the applicant must request it and pay the printing fee to the Patent Office within the time limit laid down in section 19 of the Patents Act.

The request must be made in a separate communication.

The patent is granted on the date when public notice is given of the approval of the application.

4. OPPOSITION ISSUES

Opposition

General

Section 89

Anyone, including the patent holder, may lodge an opposition against a granted patent. The opposition must be lodged in writing within nine months from the grant of the patent and the grounds for it must be stated.

The opposition and the annexes to it as well as the patent proprietor’s and the opponent’s later communications with annexes must be submitted in two copies. If there is more than one opponent, one copy must also be filed of later communications for each of the other opponents.

Notice of receipt

Section 90

The Office may, at its discretion, send the opponent and the patent holder a notice of the receipt of the opposition.

One copy of the opposition documents received is attached to the notice of receipt that is sent to the patent holder.

The formal examination of the opposition and the opposition procedure is not begun until after the expiry of the opposition period.

Examination of opposition as to formalities

General

Section 91

The opposition is not admitted and no opposition procedure is begun on the basis of it, unless the opponent has paid the prescribed fee, or the documents submitted to the Patent Office within the time limit reserved for lodging an opposition contain information on
a) against which patent the opposition was filed;
b) who filed the opposition, and;
c) what the grounds for the opposition are under section 25(1) of the Patents Act and a presentation of the facts, the evidence and other justifications in support of it (such as publications and the points in them relevant to the matter).

Neither is the opposition admitted, if other provisions concerning oppositions are not complied with and the opponent has not removed the deficiencies within the time limit given by the Patent Office.

The decision that the opposition has not been admitted is notified to the patent holder.

Accompanying letter on account of an opposition

Section 92

When one or more oppositions complying with the provisions have been lodged against a patent, the patent holder is sent an accompanying letter on account of the opposition, and a time limit is set for their response. The documents relating to the opposition that have not previously been delivered to the patent holder are enclosed with the accompanying letter.

If the patent holder replies on account of the opposition, the opponent who lodged the opposition complying with the provisions is notified of the patent holder's response. A time limit is set for the opponent to respond. If the opponent responds, the patent holder is notified of it, and a time limit is set for the patent holder to respond. If the patent holder responds, the opponent is notified of it.

Before a decision is made in an opposition case, both of the parties may submit a written request for an oral hearing. The Office decides on the necessity of an oral hearing and summons all parties to it. An oral hearing can be held although one of the parties does not take part in it.

The parties may engage own experts for the oral hearing. The Office draws up a memorandum about the hearing. The main points revealed at the hearing are recorded in the memorandum.

The memorandum is made known to all parties. The Office decides on any correspondence after the oral hearing.

Taking decisions on oppositions

General

Section 93

After any correspondence and a possible oral hearing under section 92, the opposition case is taken up for a decision immediately.

Once the opposition procedure has begun, all the material that the Patent Office has gained knowledge of must be considered before taking a decision on the case.

However, right to appeal from a decision taken in an opposition case only lies with the party whose opposition has been admitted as an opposition complying with the applicable provisions.

No final decision is, however, made in an opposition case before the decision that the opposition is not admitted has become final.

If an action for better right to a patent against which an opposition has been lodged has been brought before the District Court of Helsinki, the opposition procedure is not begun or it is interrupted until a final decision on the claim for better right has been taken.

Rejection of opposition (maintenance of a patent)

Section 94

If the grounds presented by the opponent do not form an obstacle to maintaining the patent unchanged, the opposition is rejected. The opponent has the right to appeal from this decision.

Maintaining a patent in amended form

Section 95

If, during the opposition procedure, the patent holder has changed their patent in such a way that there is no obstacle to the maintenance of the patent in its amended form, the patent is maintained in the amended form. Both the patent holder and the opponent have the right to appeal from this decision.

Once the decision has become final, the patent is reprinted. In connection with the printing of the amended patent publication, its classification is checked and the list of documents cited is complemented with the new publications cited against the patent during the opposition procedure.

Revocation of a patent on account of an opposition

Section 96

If the opponent has presented sufficient grounds for not maintaining the patent, the patent is revoked. The patent holder has the right to appeal from this decision.

5. LIMITATION AND TERMINATION OF A PATENT

Section 97

When a request for limitation is made in compliance with section 53 a of the Patents Act, the patent claims, description and drawings accompanying the request must be filed in one copy.

The patent holder must also give an assurance indicating that the description complies with the description of the patent granted, or, if the description has been amended, to what extent it is not literally consistent with the latest filed description, and in what respect the amendment means that something that is new and relevant to the matter has been included in the new description.

If the request under section 53a of the Patents Act is deficient, the patent holder is invited to remedy the deficiencies within the time limit laid down in section 105.

Section 97a

If the patent holder has failed to submit the patent claims, description and drawings for publication under section 36(2) of the Patents Decree, they are invited to submit the documents within the time limit laid down in section 105.

The patent holder must also give an assurance indicating that the description complies with the description of the patent granted, or, if the description has been amended, to what extent it is not literally consistent with the latest filed description, and in what respect the amendment means that something that is new and relevant to the matter has been included in the new description.

Section 97b

On filing a translation under section 70 t of the Patents Act, the patent holder, their representative, or the translator in question must give an assurance that the translation corresponds to the documents in the language of proceedings of the European Patent Office. If the Patent Office considers that the translation has not been submitted in compliance with the applicable provisions, this must be notified to the patent holder.

Section 97c

If the request for termination under section 53a of the Patents Act is deficient, the patent holder is invited to remedy the deficiencies within the time limit laid down in section 105.

6. SPECIAL ORDERS CONCERNING PATENT APPLICATIONS RELATING TO BIOLOGICAL MATERIAL, ITS PRODUCTION OR USE

Description

Section 98

Biological material which has previously been described in a generally available publication can be identified in compliance with the established practice in the field, for example by means of its taxonomic designation, complemented, where necessary, with a reference to the literature in the field where a systematic description of the biological material is presented.

Biological material that has not been described previously must be identified in such a detail that it cannot be confused with other biological material. Biological material must normally be described in the same manner as it is described in the latest editions of the standard works and reports in the field concerned or in professional journals.

If the invention involves a sequence of at least ten nucleotides or an unbranched sequence containing at least four amino acids, the description part must contain a listing of these. The listing must be submitted also in machine-readable form. It must be drafted in compliance with the valid WIPO standard. The applicant or their representative must assure that the listing in machine-readable form conforms to the listing submitted in writing.

Section 99

As regards generally available biological material, an indication of how it can be accessed must be given.

Section 100

Where the deposition of biological material forms part of the description of the invention, the applicant or their representative must give an assurance or in some other way confirm that the deposition has been made in compliance with the provisions of the Budapest Treaty.

If such biological material has been deposited which does not replicate itself (for example viruses or free DNA or RNA) but which must be reproduced in a biological system, information about the deposition must be given of such a biological system as well.

Patent claims

Section 101

Patent claims can relate to biological material as such when it meets the criteria for patentability, among them the condition of reproducibility. This condition can be considered as fulfilled for instance when the biological material has been deposited in compliance with the provisions of section 8a of the Patents Act and a sample of it is available in compliance with section 22 of the Patents Act.

Section 102

Biological material which has not been described earlier may be identified by referring either directly or indirectly, where possible by using the taxonomic designation, to the characterisation of the biological material in the description.

Section 103

When the invention comprises depositions of biological material under section 8a of the Patents Act or deposited biological material is used in the invention, the deposit numbers must be given in the patent claims.

7. TIME LIMITS

Section 104

The time limits stated in section 105 are computed from the dates of taking the decisions.

Section 105

Time limits for replies
1. Filing date of a patent application
- Invitation under section 8b of the Patents Act: 2 months
- Invitation under section 8c of the Patents Act: 2 months
2. Formal examination of a patent application
- Office action on formal deficiencies (section 42): 2 months
- Other office action on formal deficiencies: 2-3 months
3. Processing of a patent application
- Technical office action on account of a novelty search or a new obstacle to novelty: 4 months
- Other technical office action: 2-3 months
- Communication of approval (section 87): 3 months
- Office action on formal deficiencies: 2-3 months
- Request to submit a correction (Section 8 d (3) of the Patents Act): 2 months
4. Opposition issues
- Accompanying letter on account of an opposition (section 92): 6 months
- Submission of a response (section 92): 2-3 months
- Submission of a translation (Section 24 (2) of the Patents Act): 2 months
5. Limitation and revocation of a patent
- Remedying of deficiencies (sections 53a(2) of the Patents Act): 2 months
- Giving a response (section 53 d(1) of the Patents Act): 2 months
6. Complying with time limits
- Submission of comments under section 71a(4) of the Patents Act: 2 months
7. Proper title to an invention
- Institution of proceedings before a court (section 17 of the Patents Act): 2 months

Section 106

The time limits stated in section 105 may be shortened or extended for special reasons.

Anyone requesting a change in a time limit must give their reasons for the change. However, reasons need not be given for requests for lengthening, by two months, the time limit for replies to technical office actions on account of a novelty search or a new obstacle to novelty referred to in Section 105, item (3).

Transitional provisions:

Section 107

Patent Regulations that were in force before 1 April 1997 are applicable to patent applications that were approved for being laid open for public inspection before 1 April 1997.

Patent Regulations that were in force before 1 April 1997 are applicable to patent applications whose filing date is earlier than 1 April 1997 in matters concerning postponements of the filing dates.

Transitional provisions:

Section 108

Sections 4 a, 4 b, and 42 of the Patent Regulations are applicable to applications deemed to have been filed on or after 6 March 2006.

Sections 33 and 36 of the Patent Regulations are applicable to applications filed before 6 March 2006 in respect of which the 15-month time limit from the priority date serving as the basis of priority has not yet expired.

Section 37(2) of the Patents Regulations is applicable as from 1 April 2005.

Section 109

Sections 92 and 93(1) are applicable to patents against which an opposition has been lodged on or after 1 November 2008.

Amendments 1 November 2011

1. The changes enter into force on 1 November 2011.
2. The provisions of Section 38 of the Patent Regulations are applicable on patent applications which are filed or deemed to have been filed on 1 November 2011 or later.
3. The provisions of Section 91(1) of the Patent Regulations are applicable on oppositions which are filed against patents granted on 1 November 2011 or later.

Annex 1

SPECIAL ORDERS FOR THE PROCESSING OF SUCH PATENT APPLICATIONS RELATING TO FOODSTUFFS OR MEDICINAL PRODUCTS AS HAVE BEEN OR ARE DEEMED TO HAVE BEEN FILED BEFORE 1 JANUARY 1995

Section 1

On the basis of the entry into force and transitional provisions of the Patents Act, by way of derogation from the provisions of section 1 of the Patents Act, patent is not granted for the product itself, but for the method of producing it, when the invention relates to foodstuffs or medicinal products and the patent application has been or is deemed to have been filed before 1 January 1995.

Section 2

A patent application may relate either to a novel method to produce foodstuffs or medicinal products or to one or more analogy methods referred to in section 3 for the manufacture of a new chemical component or group of chemical components. Before carrying out a novelty search, the applicant must make clear whether they are seeking protection for a new method or for an analogy method.

Section 3

A patent can be granted to a method for manufacturing a product, even though the method as such does not contain any new patentable matter (analogy method), if the novelty in the invention is purported to be contained in the product. It must appear from the claim that the product is a foodstuff or a medicinal product.

A patent is granted only if the product is new and it has unexpected and valuable characteristics, which fact must appear at least from the description.

Section 4

It is possible to include in the first independent claim analogy methods for the production of one and the same foodstuff or medicinal product that differ from each other. The product presented may be a chemical composition or a group of chemical compounds with closely resembling (similar) chemical structure, which have the same general chemical structural formula and the same unexpected and valuable characteristics.

Section 5

It is only possible to include in the claim such analogy methods as have been presented with examples in the description.

Section 6

Additional reactions, which may be polyphasic, may be connected with the main reaction. The additional reactions can be protected by means of the same patent as the main reaction, if the following conditions are met:
1) the structures of the end products obtained by means of the additional reaction and the main reaction are closely related and they can be expressed by the same general chemical structural formula;
2) the end products from both the additional reaction and the main reaction possess the same unexpected and valuable characteristics;
3) the additional reaction is customary as a method.

Section 7

Notwithstanding the provisions in sections 2 and 3 above, an earlier application which in compliance with the provisions of section 22 of the Patents Act becomes available to the public and from which the chemical compound and its characteristics have become known shall not form an obstacle to the granting of such later patent application whose date of filing or priority is earlier than the date on which the earlier application became available to the public and in which patent is applied for for such analogy method for the preparation of the compound in question as does not clearly appear from the previous application.

Annex 2

SPECIAL ORDERS CONCERNING ELECTRONIC FILING

Section 1

Electronic filing is governed by the currently applicable Act on Electronic Services and Communication in the Public Sector (24.1.2003/13 as amended).

Section 2

WIPO Standard Annex F (Electronic Filing and Processing of International Applications) of the Administrative Instructions under PCT is applicable in electronic filing.

Section 3

The technical details in connection with filing of patent applications are given on the Internet page of the National Board of Patents and Registration (PRH) concerning electronic filing.

Section 4

Application documents are submitted through a computer program which can be ordered free of charge from the PRH.

Section 5

Electronic Identity Cards (Identity Card Act 829/1999), other filing cards or certificates, or other identification techniques which ensure data security and verifiability, recognised by the PRH, are used in electronic communication.

A register of the communication certificates recognised by the PRH and of the bodies issuing them is found on the Internet page indicated in section 3 above.

Section 6

The application is filed in one copy and it is not submitted separately in paper form. If the application contains a sequence listing, the listing must be submitted in compliance with the WIPO Standard (section 98 of the Patents Regulations).

The description with the drawings and the patent claims may also be attached in their original data file form. Obvious mistakes or typing errors may be rectified at the applicant’s request in compliance with the original data file form.

Section 7

The applicant’s email address or, where the applicant has appointed a representative, their email address must be indicated in the application.

Section 8

The applicant delivers the documents on their own responsibility.

Section 9

Application documents can be submitted to the PRH electronically on any day of the week at 00.00-24.00. The application is accorded a filing date which is the day when the application has been delivered and when the Patent Office has access to the application documents.

Section 10

The Patent Office confirms the receipt of the documents.