Patents
How can Dragsted Partners help you?
Dragsted Partners help clients identify the potential patentability of ideas, concepts and products, making sure that they obtain the strongest possible legal protection of their inventions. Drawing on our engineering background, thorough IP experience and clear and open communicate with our clients, we gain the understanding needed to help our clients succeed in obtaining strong, commercially valuable patents.
We help you reduce the complexity and burdens of the patenting process, making it manageable for you by taking on the responsibility of driving the process forward, right from the initial conceptual idea to the final patent application.
What is a patent?
A patent is a national or regional monopoly right giving the owner the exclusive right to prevent others from using, producing and marketing the patented product or method. Patents are granted by national and regional patent offices.
How is a patent obtained?
The first step is to file a patent application in the country or region in which the applicant/you want to obtain patent protection. The patent office examines the application and either grants a patent or rejects the application.
Examination of a patent application
When a patent application has been drafted and filed with the relevant patent office, it enters the examination phase. The examination phase is a dialogue between the applicant and the patent office ; the patent office issues office actions assessing the invention, and the application must respond.
During the examination phase, it is possible to amend the patent application on the basis of the application text as filed. We are in a continuous dialogue with both the patent office and our client to arrive at the final wording of the patent claims, which are critical to the scope of protection of the patent when granted. A highly professional and experienced approach during the examination process is crucial to obtaining the best possible legal protection for the patent. With our technical background and legal insight, Dragsted Partners confidently handles all stages of the prosecution of Danish, European and international patent applications as well as applications in the United States, Japan and the BRIC countries, benefitting from our network of international associates.
Novelty search: What is required for an invention to be patentable?
To obtain a patent, the invention, whether tangible or intangible, must be novel, meaning that it has not been publicly disclosed or used anywhere before. A novelty search made before filing helps you determine whether a patent application is likely to succeed and consequently reduces the risk of your potential investment.
The purpose of a novelty search is to assess whether an invention is new – or novel. The extent of the search will depend on the nature of the invention, the scope of the technological field and the level of uncertainty you are prepared to accept in the search results. The high speed of technology and the vast volume of information available mean that a novelty search can never be exhaustive but will always entail some risk that an invention is known to the public even if not identified as such in the search.
Dragsted Partners can help clarify the proper scope of your novelty search and interpret the search results from a business perspective, assisting you in deciding whether to proceed with a patent application, adjust your strategy or consider alternative paths.
The patent process
Timeline after filing for a patent application
Patenting is a lengthy process. We will support and guide you every step of the way. The three main phases are outlined below:
Phase 1: Filing and priority
We draft and file the first patent application, typically a European application or a PCT application. The filing date of the application is the priority date, the date from which rights are measured that forms the way for any future national, regional or international filings.
Phase 2: Further filing(s)
After filing the first (priority) application, there is a 12-month priority period within which foreign patent applications may be filed in the form of an international (PCT) application, a European application or national applications filed directly in specific countries. The purpose is to keep the options open by not having to choose all countries from the outset.
Phase 3: Publication
About 18 months after the priority date, the application will be published and designated “patent pending”, indicating to the public that the inventor is pursuing protection. The patent office will make a prior art search and then initiate the substantive examination when examination has been requested, and an examination fee has been paid.
Phase 4: National or regional phase
PCT (international) applications must enter the national or regional phase 30/31 months after the priority date of the application. All member countries of the Patent Cooperation Treaty (PCT) are designated at once when the initial PCT application is filed. No specific regional or national choices are locked in yet. The patent offices of the selected countries or regions will continue the examination of the application and issue a patent when the patent claims have been approved.
Patent opposition and appeals
Following the grant of a patent, any third party may give notice of opposition to the patent challenging its validity. Notice must be given in writing to the patent office, stating the grounds for invalidation with supporting evidence. The purpose of allowing granted patents to be challenged in an opposition is to ensure that only inventions fulfilling the requirements of novelty and inventive step are patented. A notice of opposition typically needs to be filed within a specified timeframe from the publication of the patent, e.g., nine months for European patents. An opposition may be based on published prior art, lack of inventive step or lack of detail in the description of the invention.
The patent owner is given the opportunity to respond to the opposition and amend the patent claims, where relevant. The patent office will then assess the matter and decide whether the patent is maintained as granted, maintained in amended form or revoked in whole or in part.
If either party disagrees with the decision made by the patent office, they may appeal. Appeals are typically heard by a special appeals body, such as the Boards of Appeal of the European
Patent Office (EPO).
The appeals body will reconsider both the facts and the legal assessments made to make sure that the decision is legally correct and fair to both parties.
Proper legal advice is essential when filing an opposition or appeal, or when faced with a patent opposition. Dragsted Partners advises on strategy, preparation of notices of opposition and oral appeal proceedings. Acting promptly is essential; opposition and appeal deadlines cannot be missed, and a successful opposition or appeal can prevent competitors from challenging the validity of the patent later on.
To maximize the chances of success in opposition and appeal proceedings, advice combining technical insight and legal expertise is crucial. That is where Dragsted Partners help clients.
Validation and renewal
Dragsted Partners provides both patent validation and renewal payment services.
When a European patent is granted by the European Patent Office (EPO), patent protection comes into force in all member states of the European Patent Convention, but it is not automatically in force in all European countries. The patent holder has to choose the other European countries in which the patent is to be effective, translations of the patent must be filed, where necessary, and country-specific fees must be paid.
A patent has full legal effect in the countries in which it has been validated. However, to remain valid the patent must be maintained by the payment of annual renewal fees to the national patent offices.
Dragsted Partners help validate European patents in Denmark, mainly in the mechanical and electronic fields. We have in-house certified translators translating foreign-language patent claims into Danish as required for validation purposes in Denmark. We perform formalities checks and file validation requests, including patent translations, with the Danish Patent and Trademarks Office and also the Norwegian Industrial Property Office.
Unitary Patent
Following the grant of a European patent, the owner may file a request for unitary effect with the European Patent Office (EPO). A Unitary Patent (UP) is a single patent right providing uniform patent protection across participating European Union member states. The novelty requirements for a
Unitary Patent are exactly the same as for a traditional European patent. Registering a Unitary Patent saves time and money by eliminating the need for national validation. A single renewal fee is payable to the EPO to maintain a UP. The UP provides more effective and uniform IP protection for businesses with cross-border activities.
Contact Dragsted Partners for advice on the UP and validation, including strategic choice of validation countries, application process and handling of potential disputes.
How can we help?
Ingólfur Pálsson
Partner