Advice, Preparation and prosecution
of patent applications
Patents are often the backbone of the overall company IP strategy forming the platform upon which innovative companies base their research and development in the quest for novel technologies.
From the outset, all new research should be considered from a commercial and strategic IP perspective. A number of parameters need to be taken into consideration. Markets. Geography. Competitor activity. Patent protection is about finding the exact right balance. Obtaining the right and having the freedom to exploit an invention in the context of competitor rights are equally important.
We guide our clients through the complex regulations governing patent prosecution worldwide. We have direct representation before the Danish, the Swedish, the Icelandic, the European and the international patent authorities. This means that the in-house competence that we build in relation to the technologies of our clients becomes invaluable and ensures that the prosecution of applications in different jurisdictions is consistent.
Budde Schou holds expert knowledge within the patent area, including utility models and Supplementary Protection Certificates (SPCs), and therefore knows how to provide first rate custom-tailored advice to the highly diversified group of clients that we represent.
We have many years’ experience in the establishment and enforcement of patent rights and in furthering the business interests of our clients through a well-defined patent strategy or an overall IP strategy.
We act as technical co-counsel in close cooperation with leading law firms in Denmark as well as abroad in connection with patent litigation based on either preliminary injunction, infringement or invalidity issues.
In some cases, it may prove advantageous to seek protection in the form of a utility model rather than a patent and it is therefore worth considering as an alternative – or as a supplement – especially if you wish to establish a right quickly. Only a limited number of countries offer the possibility of filing an application for a utility model and Denmark is one of them.
Utility models are often referred to as “petty patents” because, by nature, they resemble patents but are easier to obtain on several counts.
First of all, the requirements for obtaining a utility model are lower than for patents. Naturally, the requirement for novelty is the same but, in relation to inventive step the standard is lower. The creation has to be clearlydistinct from the prior art and not necessarily differ essentially as is the case for inventions leading to patent.
Utility model protection may be obtained for a period of up to 10 years. The prosecution time is shorter and associated with lower costs than is the case for patents. As a unique feature, it is up to the applicant to decide if the application is to be examined. Prosecution on the merits is thus optional which entails that a utility model may be registrered without obtaining a search or an opnion from the authority. As a general rule, however, a utility model granted following examination is stronger and easier to enforce in situations where infringement arises.
The relatively short period of protection is often sufficient for the holder, for instance if the product is subject to only a short commercial lifetime.
SPC – Supplementary Protection Certificate
For patents on pharmaceuticals and plant protection agents, extension of the protection period may be obtained for an additional period of up to 5 years through application for a supplementary protection certificate.
This possibility is by nature a compensation for the vast amounts of resources that are invested in research, development and clinical trials which, in effect, means that any remaining period of patent protection following launch of the final product would not allow the manufacturer to recover the costs involved.
SPCs are not as such extensions of the granted patent as a whole but are associated with a particular product covered by the patent. In order to obtain SPC protection, you need not only a valid patent right but also a valid market authorization.
Certain jurisdictions – including Denmark – have provided a further possibility for paediatric extension of SPCs for pharmaceuticals. This additional extension is for a further 6 months.
You are welcome to contact us for a discussion of whether SPC protection may be of relevance to you.
Jesper Mark Wenzel
CCO / Patent Attorney
Louise Floor Frellsen
CEO / Patent Attorney
Ida Holst Bekker-Jensen