Author: annateresia

Malin Ahlgren – new partner at Ström & Gulliksson

15 December, 2020

Malin Ahlgren, who earlier this year joined Ström & Gulliksson’s management team, will now also become a partner.
–  Through her partnership Malin will also commit to a long term engagement and take even more responsibility in strategic issues at partner level, says Erik Bolmsjö.

A much wanted opportunity and truly inspiring – that´s how  European Patent Attorney Malin Ahlgren sums up her choice to join as a partner in Ström & Gulliksson.

– In the same way that I am curious, want to understand and in every way contribute to my clients’ success through my professional role as a European Patent Attorney, the driving force is the same regarding Ström & Gulliksson. Right now we are entering an exciting phase as a firm, and I see many opportunities to further strengthen our position.

– Malin Ahlgren has since the day she was hired been enthusiastic about our ambition to always deliver the highest quality in all our assignments. She has a very good reputation in the industry, both in Sweden and internationally. In her new role as a partner we hope that she will contribute to further strengthen our reputation as one of Europe’s leading patent firms, says Björn Andersson.

In connection with Malin Ahlgren joining the management team, she also took over the responsibility for leading the agency’s Paralegal team.

– Malin Ahlgren has always shown a great commitment to the development of Ström & Gulliksson and recently also taken on more and more responsibility at an overall level at the firm. Besides that, Malin has always had a strong commitment to our clients and now also assumes personnel responsibilities by leading our paralegal team, says Rikard Roos.

Client case study Magle Chemoswed: “Patents mean we can reap considerable strategic and competitive advantages”

3 December, 2020

The recently listed company Magle Chemoswed AB is one of Ström & Gulliksson’s medtech clients. S&G European patent attorney Magnus Berglund and Magle Chemoswed’s CEO Justin Pierce describe their collaboration as one of trust, and a shared belief in the strategic importance of implementing a patent perspective early in development.

Magle Chemoswed is a unique international contract manufacturing company with GMP facilities. It also has its own product development. It is dedicated to making ideas into products for its customers. It also has its own product pipeline with a proprietary and patented technology base, especially in starch-based technologies.

– Strong patents are essential for us! Patents mean we can reap considerable strategic and competitive advantages. In terms of our own projects, I’m well aware of all the factors we need to consider. Building a solid product strategy and filing patent applications involves a great deal of work, including freedom to operate and to consider our own patents, says Justin Pierce, who has been CEO of the company since October 2012.

– I started when the company brought me to provide legal advice. My position as CEO was originally going to be a temporary thing, but here I am, CEO since the autumn of 2012. I think my law background means I understand the legal pitfalls, and in fact all the legal aspects of patent protection we can encounter. I’m also extremely interested in litigation!

Thinking in terms of patents is a strategic choice

Justin Pierce says that Magle Chemoswed thinks in terms of patents from the start, and that is where Ström & Gulliksson comes in.

– If we wanted to of course we could start development, and invest time and resources, without considering or even exploring the possibility of a patent. But for us that’s not the right way to go about things. We involve Magnus Berglund at an early stage, and we’re transparent about our projects’ strengths and weaknesses: over and over again it’s proved decisive. It’s how we know we’re tackling things the right way from the start, says Justin Pierce. He explains that Magnus complements the company’s own team of lead scientist, project manager, in-house lawyer, and experts with the necessary chemical expertise.

– Without Magnus’s input, we might miss certain steps in development, and not have the data needed for a full patent application and ultimately for a strong patent. If he sees potential, he makes sure we’ve done all the required steps in the development process. Quite simply, he helps us cover every angle from the start. Magnus is an ideal discussion partner because he brings the patent perspective, while his science background means he completely understands our work. We see him as one of us. His expertise is a significant asset to our company and our strategic business choices.

A consistent patent strategy—hand in hand with business goals

It is a collaboration is based on trust, and Magle Chemoswed wants to hear questions, not just agreement.

– Magnus listens to us, but he doesn’t automatically do what we say or what we thought we needed. He’s not afraid to question our ideas, and he does so in an ethical, honest way, and always with a view to our long-term profitability.

– We have our own unique technology; it takes time to get across our thinking, our ambitions, our goals. We set store by our long-term collaboration. Ours is a consistent patent strategy, and strategically speaking it keeps pace with our business goals. Plus it’s so important to have a patent consultant who keeps track of all your patents, as you don’t want them to conflict and you do want them to complement and even reinforce one another.

On several occasions, S&G has been engaged to help challenge competitors’ existing patents and for patent infringement analyses.

– We know our main competitors are large companies with more resources and more staff. At the same time, what matters in the medical devices business is getting your products to market quickly. That’s where I hope we have the advantage because of our fast decision-making—we’re quick on our feet. We fully intend to grow based on our technology, and to increase the number of our patents and products.

– Magle Chemoswed has extensive capabilities across the whole value chain. It relies on patented protected technology, supported by trade secrets and indispensable know-how. A challenging and inspiring client, which works proactively with innovation and patent processes, and has complete certainty about which markets to prioritise, says Magnus Berglund.

About Magle Chemoswed
Magle Chemoswed’s first advanced wound care product for chronic and diabetic wounds is currently in registration. Its team of experts in microsphere technology are working on medical device applications in advanced wound care, surgery and diagnostics, and drug delivery.

Chemoswed was originally founded in 1944 by the Swedish pharmaceutical company Ferrosan, and after various owners became a contract manufacturer in its own right after being divested from Chemours in 2015. Magle Life Sciences was founded by Hans Henrik Lidgard in 1997 as a development company to work on starch microspheres and their possible application in manufacturing drugs.

Hans Henrik Lidgard Founder and Chairman of the Board:

– I know Gulliksson from doing the law foundation course at Lund University, when Jonas and I sat next to each other in the legendary Micha Markendag’s lectures. Our professional collaboration began in around 2000, and has covered pharmaceutical innovations and medical inventions and of course questions of procedure. We’ve had excellent support from Ström & Gulliksson when it comes to strategic thinking, protecting new ideas, and defending existing patents. We may have taken a step back from running things personally, but I know we’re both pleased our trusting collaboration lives on.

Magle Chemoswed was formed in 2017 when Magle Life Sciences acquired Chemoswed. It is a CDMO with its own technology platform and product portfolio. It owns its manufacturing and development facilities, and has all the resources to manage drug substances and biopharmaceuticals, and to develop and manufacture its own medical technology products. Magle Chemoswed is the proud employer of some 70 people of many nationalities, with diverse backgrounds and experiences.

European Patent Attorneys Malin Ahlgren and Albin Persson — Joining the Ström & Gulliksson management team

12 November, 2020

In October, Ström & Gulliksson welcomed Malin Ahlgren and Albin Persson to the management team, Malin to head up the paralegal team and Albin the mechanics team.

Malin Ahlgren, recently named a Rising Star 2020 by Managing Intellectual Property, is looking forward to working with the management team to consolidate and foster the company’s team spirit.

— In addition to our individual experiences and competences, I see our strong sense of purpose and our ability to collaborate as important ingredients in Ström & Gulliksson’s recipe for success. We are entering an exciting phase as an agency, and it is an inspiring opportunity to take the lead in building on our dynamic growth and increasingly strong position in the market. 

On joining the management team, Malin is taking over from Erik Bolmsjö as head of the paralegal team, and is looking forward to the challenge of leading Ström & Gulliksson’s largest team.

— Our paralegals are in many ways the hub of the company, making sure everything runs smoothly, maintaining the highest standards of coordination and administration in all we do. Our team is the crucial link with our external contacts, and wonderful bunch of people with diverse backgrounds and experiences who collaborate and complement one another in an impressive way.

Albin Persson, who has 18 years of consulting experience, was recruited by Ström & Gulliksson in January 2019, having been on the management team at his former patent agency. Albin is looking forward to his new role helping carry the management team forward.

— From experience, I would hope my contribution at the management team level will be an outside perspective on everything from our internal routines to our general approach. One of my main reasons for joining was I found S&G a well-organised agency with cutting-edge expertise at all levels, at the same time open to change and progress.

Albin says his picture of S&G as the agency with the highest level of competence across the board was right, and he is looking forward to contributing to its further development. On joining the management team, he has taken charge of the agency’s mechanics team.

— It is a real inspiration to take up where Leif Jörgensson is leaving off, though his are big shoes to fill. We are a strong, ambitious team with a good mix of experience and knowledge, and ready to grow.

Client case study Crunchfish – Proactive patent strategy with the world as market

11 November, 2020

Joachim Samuelsson, CEO and principal owner of the Nasdaq First North listed Crunchfish, talks enthusiastically about the company’s latest investment in offline payment and what lays the foundation for global success: a proactive patent strategy.

Today, when less than one in ten purchases in Sweden is made with cash, Sweden’s well-functioning IT infrastructure drives the marginalization of physical currency, which makes the Swedish payment market extremely sensitive to disruptions and downtime. Crunchfish has developed a patent-pending solution for offline payments and CEO Joachim Samuelsson explains why:

–Simplified, you can say that we have patented the technology for a robust and friction-free payment solution that works 24/7 and which also complements and can be integrated into all forms of digital payment solutions worldwide. In Sweden, we are spoiled with a good IT infrastructure and have become by far the best in the world to not pay with cash. This means a vulnerability in the event of disruptions and downtime, as fewer and fewer people carry cash with them, the only means of payment that is guaranteed to always work. In other parts of the world, such as India, cash payments still account for 80% of purchases, as digital payments cannot be trusted to always work there. Our offline solution works just like cash, but digitally. That insight drove us to invest in this invention.

Unique position through patented solutions

Today, Crunchfish’s portfolio contains both solutions that are very important commercially and others that are more peripheral.

–We have inventions from three generations of technology development, which has meant both a large and diverse patent portfolio. We have patents regarding gesture control, proximity-based interaction and most recently digital payment, which is our current focus. The fact that we have applied for a patent for the technical core behind offline payments means that we can confidently market the invention to the world’s payment services, says Joachim Samuelsson and his personal enthusiasm for patents is obvious.

– For us, it has been a conscious effort to always build a protected market position by patents. The patent process is often complex and can feel difficult to navigate. But I am triggered by what I believe in and want to protect what we develop and invest in. I am a technology pioneer myself and stand together with the company’s founder and CTO Paul Cronholm as inventor of more than half of our patents.

The interaction between inventor and patent attorney

Joachim Samuelsson joined Crunchfish in the autumn of 2012, as its first investor, and took initially on the role of working chairman of the board with responsibility for, among other things, the patent portfolio. With the company’s increased focus on mobile payments, Joachim instead became CEO at the beginning of 2020. The collaboration with Ström Gulliksson began even before Joachim’s investment in the company with a patentability study of the company’s technology and a so-called Freedom-to-Operate analysis, a relatively comprehensive evaluation to determine whether the scope of protection of other companies entailed any restrictions.

– I made it clear to the founders that I only wanted to invest in Crunchfish if they had patentable technology. I had prior good experience of Ström Gulliksson from a project where I invested in Biomain in 2008 and was its COO with, among other things, responsibility for the patent portfolio. It was an exciting journey with an exit 2012. The divestiture became a result of winning a case in the Stockholm Patent Court where we sued our competitors for patent infringement. We were represented by Rikard Roos together with Mikael Karlsson from Advokatbyrån Gulliksson During those legal proceedings, I realized that there can be a big difference between patent firms when it comes to competence. We won a clear victory and even got an immediate stop to the competition with an interim decision by the court.

– Crunchfish is a small company in terms of number of employees and financial muscle. Since we do not shy away from tackling major technical challenges that really need to be solved, I would feel much more threatened that the big tech companies would catch up with us once we have shown how to solve the problems if it were not for the fact that we have invested so heavily in patenting, says Joachim and proudly states:

– With over 25 unique inventions that have been granted patents, we have more patented inventions than employees! Our hit rate has been incredible.

An important part of the successful work with patents is the interaction between the company and the patent attorney, says Joachim:

To work with Björn Andersson is to work with someone who possesses technical knowledge in our areas and is good at capturing our ideas. It happens that we more or less throw ideas at him. He is a genuinely curious soul who loves technology. He comes up with counter-arguments and is just as good at narrowing down ideas as he is at scaling them up. He also masters the craftsmanship required to write a good patent application that has been shown to be important in getting them all the way to approval with a wide range of protections. Then he is also damn nice and we like to go together and see Malmö FF win exciting soccer games.

Growing patent portfolio and the whole world as a market

The patent portfolio is growing continuously and the strategy is clear and aggressive: to protect the company’s technology in all geographic markets that are considered important. Crunchfish owns all of its patents and patent applications without limitation. During the third quarter of 2020, Crunchfish had 28 unique innovations that were granted patents. In total, Crunchfish had just over 90 active patents and patent applications, including all country-specific applications.

Björn Andersson, European patent attorney, agrees with Crunchfish that it takes more than good technology to succeed as a company today. 

– Crunchfish is an excellent example of a Malmö-based company with the world as a potential market. They understood early on the importance and value of investing in patents. Step by step, they have strategically built up their patent portfolio, which forms the basis on which they create profitable business, at the same time as they are involved and drive development. As a customer of Ström & Gulliksson, they are an extremely exciting company to follow and collaborate with! Crunchfish has a proactive and business-driven strategy that has positioned them well for the future.

And the driving force for Crunchfish as a company? According to Joachim, it is crystal clear: the technology first, to identify patentable inventions, and then create profitable businesses through scalable products with global market potential.– I would say that we are pioneers who are based primarily on technology. We are driven by being out early and coming up with radical innovations in difficult problems that really need to be solved. Crunchfish’s founder and CTO Paul Cronholm embodies the idea that in combination with understanding how we can make the technology commercially scalable is our recipe for success.

This is Crunchfish

Since the start in 2010, Crunchfish has focused on human-machine interaction. The company’s gesture control technology from 2012 makes it possible to control smart AR glasses with hand gestures. In 2014, Crunchfish began patenting its proximity-based mobile technology, which is a groundbreaking way to discover and communicate with anything and everyone nearby.

Today, Crunchfish mainly focuses on digital payments that started to be patented in 2017. The unique offline solution makes payment services robust and friction-free because all risks of disruptions and downtime are eliminated. The solution can be integrated either in a mobile wallet or with the rails of the payment infrastructure, which creates great scalability globally.

The Crunchfish headquarter is in Malmö with operations also in India. Since 2016 the company is listed on Nasdaq First North. Crunchfish AB (publ) has two wholly owned operating subsidiaries, Crunchfish Gesture Interaction AB and Crunchfish Proximity AB. Crunchfish Proximity in turn owns Blippit AB in equal shares with ClearOn AB.

Ström & Gulliksson answers an extensive Q&A about the patent process in Sweden published in Global Patent Litigation Guide

8 November, 2020

Rikard Roos and Björn Andersson explain how the patent process works in Sweden in a publication that provides vital insights for every IP owner interested in patent litigation around the world.

How can patent owners best enforce their rights in your jurisdiction? What level of expertise can litigants expect from courts? To what extent is forum selection possible in your jurisdiction? How much should a litigant budget for in order to take a case through to a decision at first instance?
These questions and many more has been answered by Senior Partner and European Patent Attorney Björn Andersson and Managing Partner and European Patent Attorney Rikard Roos in Global Patent Litigation Guide: Helping businesses navigate the new normal 2021, a supplement to IAM. 

Here is a short extract, for a full version please download this PDF

Q: How can patent owners best enforce their rights in your jurisdiction?
In Sweden, a patent right is best enforced by initiating court proceedings at the Patent and Market Court on the alleged infringement. The Patent and Market Court was established in 2016. 

Q: Are mediation and arbitration realistic alternatives to litigation?
Arbitration is available only if there is an agreement between all parties specifying an arbitration clause. Only disputes concerning matters in which the parties may reach a settlement are arbitrable, which means that while patent infringement may be subject to arbitration, patent validity is non-arbitrable. 

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?
The Patent and Market Court, as well as the Patent and Market Court of Appeal, is composed of both legally trained judges and technical experts competent in patent law. 

Q: What level of expertise can litigants expect from courts?
The level of expertise of the Swedish courts is very high. As the Patent and Market Court is a specialised court, the judgments are well reasoned and based on an understanding of the technical and legal issues. 

Q: Are validity and infringement dealt with together in proceedings?
Typically, yes. Even though issues of validity and infringement are litigated as two individual court proceedings, the court will normally join the cases. The main hearings of the two cases will then be held back-to-back, one directly after the other. 

Q: Who may represent parties engaged in a dispute?
Subject to certain general requirements regarding legal capacity and domicile, anyone can represent a party in a Swedish court case. There are no formal requirements in terms of qualification. However, given the complexity of a typical patent case, a party will normally be represented by a team of lawyers and patent attorneys. 

Q: To what extent is forum selection possible in your jurisdiction?
In Sweden, all patent cases are tried by the Patent and Market Court. The court is hosted by the Stockholm District Court. Appeals are tried by the Patent and Market Court of Appeal, hosted by Svea Court of Appeal. This means that there is no room for forum selection in patent matters. The advantage of having these specialised patent courts is that they are composed of both legally trained judges and technical experts skilled in patent law. As such, the parties can generally expect a well-reasoned judgment that addresses both the technical and the legal issues. 

This article first appeared in Global Patent Litigation Guide: Helping businesses navigate the new normal 2021a supplement to IAM, published by Law Business Research – IP Division. To view the guide in full, please go to www.IAM-media.com or download this PDF for the full Q&A answered by Ström & Gulliksson regarding Sweden.

European Patent Attorneys Malin Ahlgren and Edmund Lobb – selected as MIP Rising Stars

22 October, 2020

Ström & Gullikson is proud to announce that European Patent Attorneys Edmund Lobb and Malin Ahlgren have been selected as Rising Stars 2020 by Managing Intellectual Property.

Malin Ahlgren, who works mostly within computer science and mechanics, has recently joined Ström & Gullikssons’s management team. Parallel to joining the management team, she has also taken on the responsibility of being the leader of Ström & Gulliksson’s paralegals team.

– Malin truly belongs among the best up-and-coming IP practitioners who contribute to the success of their firms and clients. Our team of European patent attorneys have extensive experience and substantial knowledge of national and European patent law, and acknowledgements and individual recognitions like these are important for both the individual and firm as a whole, says Rikard Roos, Managing Partner. 

Edmund Lobb, who joined Ström & Gulliksson’s Stockholm office in May 2018, has experience working for a large range of companies, from start-ups to multinational corporations, with particular expertise in the fields of software and aerospace.

Ed has in a short time contributed a great deal to our firm and to our team in Stockholm. Not only does Ed bring his winning personality to our team, his expertise is a huge asset. With his experience from both continental Europe and the UK, he has an international perspective that benefits our clients greatly, says  Christian Arkelius, Partner and Head of Stockholm office. 

Ström & Gulliksson would also like to take the opportunity to congratulate Advokatbyrån Gulliksson, whose Senior Associates Erik Esaiasson and Emelie Rexelius were also included among Managing Intellectual Property’s MIP IP Rising Stars 2020. 

MIP IP STARS is a guide to IP firms and practitioners worldwide. Managing IP has been researching and ranking IP firms since 1996. The research has expanded over the years, with more than 80 jurisdictions now covered, making it one of the most comprehensive and authoritative analysis of the industry. MIP produces tables ranking firms in tiers and , for most jurisdictions, has prosecution, contentious and copyright ranking tables. MIP also recognizes individual IP Stars, who are private practice IP professionals who have been highly recommended by their peers and clients.

Sweden – innovation leader of the EU and a global hotbed of innovation 

2 July, 2020

The European innovation scoreboard has been released and Sweden continues to be the EU innovation leader. 
– Sweden has a long history of strong innovation power, a result of our ability to transform, develop and modernize our industry. Also, we see that there is a great understanding of using patents to reap strategic and competitive advantages as well as handling potential legal hurdles and disputes, says
Rikard Roos, Managing Partner and European Patent Attorney at Ström & Gulliksson. 

The European innovation scoreboard provides a comparative analysis of innovation performance in EU countries, other European countries, and regional neighbours. The 2020 edition of the innovation scoreboard further highlights that the EU’s innovation performance continues to increase at a steady pace, with growing convergence between EU countries. As the EU innovation leader Sweden is followed by Finland, Denmark and the Netherlands. At a global level, the EU has surpassed the United States for the second time and continues to have a performance lead over the United States, China, Brazil, Russia, South Africa, and India. 

Sweden has also gained recognition by the The World Intellectual Property Organisation which has identified Sweden as a global hotbed of innovation. A key driver is in digital technology with heavy investments in artificial intelligence (AI).

–  As a firm working with clients in all technology areas we have seen how businesses and inventors within all sectors have become increasingly aware of their IP rights. In order to protect and defend the value they hold they realize the importance to work closely with a patent firm with experience and substantial knowledge of Swedish, European and international patent law. Given the transformation and digitalisation there are many opportunities and new ways of creating commercial value. In Sweden you find a varied and exciting combination of a traditional manufacturing industry, brave start-ups and courageous entrepreneurs – and successful combinations and collaborations between these, says Rikard Roos.

As a result of the pandemic spread of SARS-CoV-2 Ström & Gulliksson earlier this year decided to take measures to help and protect the innovative society.

– We have specifically been focusing on getting companies particularly exposed to the effects of SARS-CoV-2 through this tunnel of problematic times. We believe that the rate of innovation must be maintained, even during a pandemic that paralyzes parts of society and the world. It has been gratifying to see how innovative companies in Sweden have gathered their powers and skills and undoubtedly continued to invest in development and innovation, says Erik Bolmsjö, Partner and European Patent Attorney.   

S&G – listed as one of Europe´s Leading Patent Law Firms by Financial Times

Besides retaining the position as one of the leading patent law firms in Sweden and selected as one of a small number of recommended firms at the European Patent Office by Intellectual Asset Management (IAM), Ström & Gulliksson has also recently been listed by Financial Times as one of Europe’s Leading Patent Law Firms 2020.

– Recognitions like this prove that our competence and work is noticed. We are increasing our presence on the international market and our offer is very attractive not only for European clients, but also for companies outside Europe. Our convenient location near European authorities, institutions and courts is a definite advantage besides our service in providing our clients with a comprehensive range of services for European patents including filing and prosecution, validation, and oppositions and appeals, says Erik Bolmsjö.

Ström & Gulliksson is ranked as one of the leading patent firms by various independent ranking institutes. Read about our awards

IAM Patent 1000: Ström & Gulliksson – individual mentions, highly recommended in Sweden and before the European Patent Office

17 June, 2020

This year’s edition of the IAM Patent 1000 has now been released by Intellectual Asset Management (IAM). Ström & Gulliksson retains its position as one of the leading patent law firms in Sweden and is one of a small number of recommended firms at the European Patent Office. 

We are proud to be recognized as a “highly recommended” patent firm in Sweden due to our vast experience and high quality service. In addition, to find several of our patent attorneys individually mentioned is particularly satisfying. Especially pleasing this year is that Ström & Gulliksson is included among the patent law firms recommended for our work before the European Patent Office (EPO). This is a key category where only 29 firms have been selected across the whole of Europe, of which merely six are from outside Germany and the UK. Part of our core business is handling intellectual property rights in Europe and we are pleased to find that Sweden as a country is also ranked among the top five European filers at the EPO. 

A combination of complex high profile cases and feedback from clients have contributed our ranking:

“Standing tall since 1975, Ström & Gulliksson runs a globally connected prosecution outfit that has become synonymous with quality. It collaborates extensively with the corporations it assists and manages an immense number of portfolios containing thousands of patent families. Its business model has caught the eye of a diverse clientele, including Ericsson, IKEA, Rolls-Royce and Spotify, to name a few. Leading lights Rikard RoosBjörn Andersson and Christian Arkelius garner warm plaudits from the market. “Service-minded and in tune with patrons’ needs, Roos is keen on providing support from ideation through to creation and his clever technical arguments are crucial to a successful outcome in litigation.” His shrewd counsel was sought out in invalidation proceedings on behalf of Sandoz. In the field of electronics, “Andersson is a fantastic and energetic attorney with a business mindset which culminates in superb, spot-on advice”. “Arkelius is remarkably resourceful and detail orientated in his approach to prosecution. In close alliance with each business, he establishes mutual venture goals and procures valuable IP assets that are enforceable on an international scale.” The firm recently welcomed the arrival of Peter Ekwall, a perceptive strategist who now heads up its Gothenburg operations.”

More about IAM Patent 1000 and Sweden as a global hotbed of innovation 

IAM is this year presenting the ninth edition of IAM Patent 1000: The World’s Leading Patent Professionals – a unique guide that identifies the top patent professionals in key jurisdictions around the globe. The IAM Patent 1000 shines a spotlight on the firms and individuals that are deemed outstanding in this pivotal area of practice. The guide has been compiled following an extensive research process. Over five months, IAM conducted in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and in-house counsel to gather market intelligence on the leading players in the field.

Thanks largely to an increase in filing volumes from China, the United States and South Korea, patent applications hit an all-time high at the European Patent Office (EPO) in 2019, with 181,000 filings made.

The World Intellectual Property Organisation has identified Sweden as a global hotbed of innovation. A key driver is digitalisation and practitioners report an ever-increasing amount of work crossing their desks in that space – especially with automotive giants such as Volvo and Scania investing heavily in artificial intelligence (AI). This trend is also evident in the telecommunications sector. Additionally, as businesses become increasingly aware of their IP rights and the value they hold, transactional work is starting to account for a far greater proportion of day-to-day work at both patent attorney firms and law firms. 

The Importance of Specifying Measurement Methods in Your Patent Application

28 May, 2020

When drafting a patent application, the meaning of each word, value and unit needs to be clear. One might think that a number is less likely to be misinterpreted than a word, but a recent decision from the Boards of Appeal of the European Patent Office (EPO) tells us otherwise. Our Patent Consultant Tiolina Östergren shares the key take aways.

Article 84 of the European Patent Convention (EPC) states that the claims of a patent application shall define the matter for which protection is sought and that they shall be clear, concise and supported by the description. This is to ensure that the scope of protection defined by the claims is clear to any third parties, such that they may determine whether they are working within the scope of the claims or not. In situations where different measurement methods may give different results for a given value of a claimed feature, e.g. size, pH or electrical potential, the claims may be unclear without a specification of the measurement method by which the value was obtained.

Decision from the EPO Board of Appeal

In T0005/17 (30 April 2020), claim 1 of the application in question concerned a mineral “having a mean particle size of between 100 nm and 20 µm”. At first instance, the examining division decided that this did not comply with the requirements of Article 84 EPC, because neither the claim nor the description specified any method for measuring the mean particle diameter. The applicant made several arguments as to why the claim should be considered clear. 

The applicant argued that, while differing results between measurement methods might be relevant in view of very small particle sizes, it was highly unlikely that the measurement methods would give a significant difference for the claimed range. They further argued that there are two commonly known methods for defining particle size for this kind of particle, according to a document cited in the description. As these are acknowledged to be effective in the claimed range, there was no indication that the results would be different. The examining division however found several different techniques in the cited document and no specific argument for why these would yield the same results.

The applicant also argued that the skilled person in this case would be someone using a readily available material. They would not measure the particle size themselves, as they would trust that the material supplier provided an accurate product. The examining division however stated that the skilled person must be familiar with techniques for measurement of the parameters of a claim and that the physical characterisation must be unambiguous and cannot be substituted with information provided by suppliers, which could be based on any available measuring technique.

Furthermore, the examining division stated that the expression “mean particle size” was ambiguous, as “mean” refers to an average, and it was not specified in the claim which type of average (volume, surface, number, etc.) was intended. Whilst this may be regarded as implied by the use of a unit of length (m), this was not deemed sufficient by the examining division as the prior art cited in the application used different units for particle size. 

In addition to T0005/17, a body of decisions from the Boards of Appeal exists regarding reliance on the description and cited documents for interpreting claims. These decisions state that the claims must be clear in themselves when being read by the person skilled in the art, without including any knowledge derived from the description of the patent application. Therefore, a reference in the description can generally not render an otherwise unclear claim clear. This is especially so if the feature in question is required for distinguishing the invention from the prior art.

What can we take away from this?

When drafting a patent application including claims that rely on measured values, it is important to ensure that it is clear what is measured and how. Failing to do so in the drafting stage could lead to a rejection of the whole application. If there is no generally accepted measurement method in the art, or even if there is, it may be suitable to refer to a standard such as an ISO/ASTM/DIN/ANSI/IEC standard or similar, to avoid any uncertainty. It may not be enough to merely refer to another document, especially if there are several measurement methods or units used in that document. No matter how clear the description may be in terms of measurement methods, the claims themselves must clearly specify the characteristics of the matter for which protection is sought.

We would recommend obtaining counsel from a patent attorney if there are any doubts regarding whether or not your application will meet the clarity requirements of the EPO or other relevant patent office.

Novelty of sub-ranges

15 May, 2020

Our European Patent Attorney William Helin shares a brief reflection on the EPO Guidelines on novelty of sub-ranges. 

“Did you see that the EPO Guidelines on novelty of sub-ranges were amended late last year? One of the test criteria for novelty of sub-ranges was dropped. Now, the twofold novelty criteria are that the sub-range must be:

1. Narrow compared to known range, and
2. Far removed from end-points and examples.

Thus, the sub-range needs no longer be a purposive selection.  Whether the sub-range is purposive or not is part of the inventive step assessment.

If you are interested, I recommend reading epi Information of December last year. This edition includes a letter from the President of the EPO, motivating the Guidelines change.

Any practical take-aways? Well, when drafting a patent application containing a range, it is advisable to provide even more examples within the range. Further, as before, it is recommended to also provide examples at the range end-points. In some decisions, end-points are given less weight than examples (quite reasonable, in my view).”