Pages 700-706

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

FI Finland

Impact of the European Patent Convention on national law

Finland became the 18th contracting state to the EPC on 1 March 1996. The Finnish Patents Act No. 550/67 of 15 December 1967 was amended by Act No. 1695/95 of 22 December 1995 to include provisions implementing the EPC in Finland. Substantive patent law had already been harmonised with the EPC before the latter entered into force in Finland.

A. National legal bases

1. Patents Act No. 550/67 of 15 December 1967, as amended by Acts Nos. 407/80, 387/85, 801/91, 577/92, 1034/92, 1409/92, 593/94, 717/95 and 1695/95.

2. Patents Decree No. 669/80 of 26 September 1980, as amended by Decrees Nos. 505/85, 583/92, 71/94, 595/94 and 104/96.

3. Act on Inventions of Importance to the Defence of the Country No. 551/67 of 15 December 1967, as amended by Acts Nos. 795/89, 599/95 and 1697/95.

4. Patent Office Regulations, as last amended on 16 February 1996.

5. Decision No. 1782 of 28 December 1995 of the Ministry of Trade and Industry on fees chargeable by the National Board of Patents and Registration, as amended by Decision No. 123/96.

B. Application of the EPC in Finland

The main provisions relating to the application of the EPC in Finland are summarised below:

The information is structured in the same way as in the EPO brochure "National Law relating to the EPC". This summary may therefore be used as a supplement to the brochure until a revised edition is published around the beginning of 1997.

I. Filing of European patent applications (Article 75 EPC - Section 70(f) Patents Act)

European patent applications may be filed either with the EPO or with the Finnish Patent Authority (FPA)1:

The National Board of Patents and Registration

PO Box 1140

FIN-00101 Helsinki

Finland

Applications with defence implications must be filed with the Finnish Patent Authority. European patent applications filed with the FPA may be drawn up in any of the languages mentioned in Article 14(1) and (2) EPC.

II.A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC - Section 70(n) Patents Act)

Under Section 70(n) Patents Act, a published European patent application designating Finland enjoys protection from such time as a notice is published by the FPA to the effect that a Finnish translation of the claims has been made available to the public. If the applicant's own language is Swedish the translation may be filed in Swedish. Anyone who then commercially uses the subject-matter of the application without permission is liable to pay such compensation and damages as may be found reasonable (Section 58 Patents Act), provided that the application results in a European patent for Finland.

II.B. Filing a translation of the claims (Article 67(3) EPC - Section 70(n) Patents Act; Section 52(u)-(y) Patents Decree)

The translation of the claims certified by the applicant or his representative must be filed at the FPA and be accompanied by the European patent application number and the name and address of the applicant, failing which the translation is deemed not to have been filed. The appointment of a domestic representative is not mandatory.

The FPA accepts documents meeting the formal requirements of Rule 35(3)-(14) EPC. The translation may be corrected without incurring any special fee, but the European patent application number and the applicant's name and address must be supplied, failing which the corrected translation may be considered not to have been filed.

The fact that a translation or a corrected translation has been filed is announced by the FPA in Finnish and Swedish. The translation is available for consultation at the FPA and copies of the printed document are available.

III. Filing a translation of the patent specification (Article 65 EPC -  Section 70(h) and (q) Patents Act, Section 52(u), (v) and (y) Patents Decree)

A European patent designating Finland has effect only if a Finnish translation, certified by the applicant or his representative, of the text in which the EPO intends to grant the patent or decides to maintain it as amended is filed with the FPA. If the applicant or patent holder's own language is Swedish then the translation may be in Swedish.

The appointment of a domestic representative is not required.

The translation must be filed within three months of the date on which the mention of grant or the decision to maintain the patent as amended is published in the European Patent Bulletin. Within the same time limit a printing fee (currently FIM 500 plus FIM 60 for each page in excess of four) has to be paid. Failing compliance with either requirement, the European patent will have no effect in Finland. The provisions on restitutio in integrum apply (Section 71(a) Patents Act).

The FPA accepts translations meeting the formal requirements of Rules 32 and 35(3)-(14) EPC. The number of the European patent application and the name and address of the patent holder must accompany the translation. If the EPO maintains the patent in an amended form, the number of the European patent and the name and address of the patent holder must accompany the translation of the amended text. The translation must be accompanied by a copy of the drawings in the European patent specification, even where there is no text (Section 52(u) and (v) Patents Decree).

The translation may be corrected by filing a new document clearly indicating the correction and this must be accompanied by the number of the European patent application/patent and the name and address of the applicant/patent holder, together with the appropriate fee (Section 70(q) Patents Act, Section 52(y) Patents Decree).

Mention of the fact that a translation or a corrected translation has been filed is announced in the Finnish Patents Bulletin and copies are available for consultation (Section 70(h) and (q) Patents Act).

IV. Authentic text of a European patent application or European patent (Article 70 EPC - Section 70(p) Patents Act)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings. This does not apply, however, in revocation proceedings. Regarding the rights of a prior user where a translation is corrected, Section 70(q) Patents Act provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC - Sections 40, 41, 51, 70(l) and 71(a) Patents Act)

Renewal fees are payable to the FPA for the years following that in which the European Patent Bulletin mentions grant of the European patent. Failure to pay the renewal fee will result in the lapse of the patent as from the start of the fee year for which the fee has not been paid.

Renewal fees fall due on the last day of the month in which the date of filing occurred. The first such fee shall not fall due until two months after the date on which the patent is granted. There is a grace period for payment of renewal fees of up to six months after the due date, subject to a 20% surcharge. Renewal fees may not be paid more than six months in advance of the due date.

A domestic representative need not be appointed for payment of renewal fees.

Restitutio in integrum is possible, provided the request is submitted within two months after removal of the obstacle, and in any event not later than six months of expiry of the grace period. Appointment of a domestic representative is mandatory for this purpose.

The lapse of a patent due to non-payment of renewal fees is published in the Finnish Patent Bulletin and entered in the Register of Patents.

A reminder in case of non-payment will normally be sent one month before expiry of the grace period, though the FPA is under no obligation to do so. Reminders will not be sent abroad.

Renewal fees are currently as follows:

VI. Conversion of European patent applications into national patent applications (Articles 135 - 137 EPC - Section 70(s) Patents Act, Section 52(s) Patents Decree)

Finnish Law makes provision for conversion in the case of deemed withdrawal under Article 77(5) EPC or under Article 90(3) EPC (where the translation in the language of proceedings was not filed in time).

The request for conversion must be filed within three months of the EPO's notifying the applicant that the application is deemed withdrawn (Article 135(2) EPC, Section 70(s) Patents Act). The applicant must pay the application fee (currently FIM 1200 + FIM 120 for the 11th and each subsequent claim) and file a Finnish translation of the application in triplicate within three months of the notification by the FPA that it has received the request for conversion.

The above steps may be taken by the applicant himself or his representative before the EPO. If the applicant is not domiciled in Finland, all subsequent procedural steps must be taken by a domestic representative.

VII. Payment of fees

Payment may be made to the FPA either in cash, by postal money order or by cheque drawn on a Finnish bank and made payable to the Finnish Patent Authority in Finnish currency, or by (cabled) transfer to a Finnish bank in favour of the giro account:

Patentti- ja rekisterihallitus

POSTIPANKKI BANK LTD

Finland 800015-47908

VIII. Miscellaneous

1. Address for service (Section 71 Patents Act)

The owner of a patent who is not domiciled in Finland must authorise a domestic representative to accept service of any proceedings concerning the patent except proceedings concerning penal matters or summonses to appear in person before a court. The name of the representative is recorded in the Register of Patents. If no representative is appointed, then any document may be deemed to have been served by being sent to the patent holder by pre-paid registered mail to the address recorded in the Register, or, where no such address has been recorded, by announcement in the official Gazette.

2. Simultaneous protection (Article 139(3) EPC)

Simultaneous protection by a European patent application or patent and a Finnish national patent application or patent is not excluded.

3. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of Finland.

C. Amendment of Finnish patent law

1. Patentability

The patentability criteria (concept of invention, novelty, inventive step, industrial application) are fully consistent with those of the EPC (Articles 52-27 EPC).

2. Term of the patent

A patent is granted for a term of 20 years, as from the date of filing the application.

3. Rights conferred by the patent

The rights conferred by the patent reflect the provisions of the Community Patent Convention (see Article 25 et ff. CPC 1989).

4. Extent of protection

The extent of protection conferred by the patent is determined by the claims. The description may serve as a guide to interpreting the claims.

D. Other international treaties

The Patent Cooperation Treaty took effect in Finland on 1 October 1980. Since the EPC entered into force in Finland it has also been possible to obtain a European patent for Finland by filing a Euro-PCT application.

Finland became a party to the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms on 1 September 1985. The provisions of Finnish Law on patent applications relating to micro-organisms are in line with those of the EPC.