Administrative Patent Disputes

Authors: Vilhelm Schröder and Jasmin Metwally

Introduction

In Finland, the Finnish Patent and Registration Office (“FPRO”) is the authority that grants patents. The decisions of FPRO may be appealed to the Market Court. There are certain features related to the proceedings which are worth keeping in mind when appealing the FPRO’s decisions. We discuss these features in this post.

Applying for a Patent

If the patent application meets the basic requirements for a patent and there are no other obstacles with respect to the patent application, the patent examiner of the FPRO will provide a communication of approval. However, if there are obstacles to the acceptance of the application based on the patent legislation, the patent examiner will issue an office action. After the applicant has responded to the office action, the patent examiner will review the submitted documents and continue the processing.

After a patent has been granted by the FPRO, a nine-month opposition period begins within which anyone may file an opposition against the patent and attempt to revoke the patent. The opposition is filed in writing with the FPRO. The opposition may be filed, for instance, if the patent relates to an invention that does not meet the basic conditions for a patent. To be patentable, an innovation must be new, involve an inventive step, and be industrially applicable. As a result of the opposition proceedings, the patent may be revoked. The opposition may also be rejected or the patent can may be maintained as applied for or in an amended form. These decisions may be appealed to the Market Court.

Appeal

An applicant may appeal a final decision taken by the FPRO on a patent application if the decision is not in his their favour. A company who lodged an opposition may also appeal against a final decision taken by the patent authority. An appeal shall be lodged with the Market Court within 60 days of service of the FPRO decision.

An appeal against a decision of the FPRO is handled by the Market Court. Preparation of an appeal begins in the Market Court when the Market Court receives the appeal. The extent of the appeal against the FPRO’s decision as well as the claims and their supporting grounds presented in the Market Court shall be determined in the preparation. In addition to these, the disputed and undisputed issues should be identified, and the evidence presented shall be determined.

The Market Court on shall reserve the opposite party an opportunity to submit a written response within the time period set by the Market Court. The Market Court may, in its request for response, specify which issue the response is to address in particular. As a main rule, tThe Market Court shall also as a main rule request the register authority to submit its opinion within a time period set by the Market Court. An oral hearing may also be held in certain circumstances, even if the proceedings are generally held in writing written as a main rule.

The decision of Market Court can be appealed to the Supreme Administrative Court. It should, however, be noted that the decision of the Market Court is considered only if the Supreme Administrative Court grants a leave of to appeal. The application for leave to appeal and the appeal shall be made within 30 days of service of the decision of the Market Court.

A leave to appeal can may be granted if it is considered important for the application of the law in other similar cases or for the sake of consistency of case law to refer the matter to the Supreme Administrative Court. In addition, the leave of to appeal may be granted if there are special grounds for referring the matter to the Supreme Administrative Court due to a manifest error in the case, or if there are other serious grounds for granting a leave to appeal.

Key Differences to Civil Patent Litigation

It should beno noted that the administrative process has some characteristics that differ from civil patent litigation. In administrative proceedings, the court applies the principle of officiality, which means that the court has a broad duty to investigate the facts of a case of its own motion. The court may, for example, presentput questions to the parties or conduct a review if this is necessary forto clarifying the case. In administrative proceedings, the public authority does not have a similar status of party or opponent as in civil proceedings, since it has taken an administrative decision in the exercise of a statutory function, which it should perform objectively. In addition, preclusion is not applied in the same way in administrative disputes, i. e., usually new arguments and evidence may usually be submitted during the process, as long as the matter is not completely transformed as a result ofdue to the new arguments.

Companies may have no other options but to appeal, as reaching a settlement with the authorities can be challenging or impossible in situations where there is no civil legal relationship. A party cannot agree with the FPRO whether or not a patent is granted. Furthermore, cases before administrative courts are usually non-discretionary, meaning that settlement is not permitted.

The authority that issued the administrative decision may be liable to pay the other party's legal costs if it loses the case. However, it is rare in practice for a court to order an authority to pay the costs of an appellant.

In administrative proceedings, the cases are usually resolved on the basis of written documentation. However, an oral hearing can be held if the court deems it necessary or if a private party requires it and the Administrative Court has no legal basis not to hold an oral hearing. An oral hearing may be necessary, for example, if it is necessary to hear a party or witnesses, but in practice the procedure is mostly based on written documentation.

In the administrative cases, the court should also take into account by the legal principles of administrative law, including the principles of equality, purpose limitation, impartiality, proportionality, and legitimate expectations. In light of these principles, it is possible to examine whether the authority acted lawfully and exercised its discretion correctly when issuing the administrative decision.

Conclusions

The substance in administrative patent disputes can often be quite technical, as they relate to the validity of a patent. However, these disputes also have certain procedural features which should be duly considered and taken into account in the appeal process as well. Consequently, it can be a good idea to include both a patent attorney as well as an attorney-at-law in the team for these aspects to be adequately taken into account.