What led you to a career in intellectual property and do you have any advice for anyone considering a similar career path?
After my studies in finance and engineering physics, I worked as a software developer. Although I really enjoyed building software as a technology expert, I wanted a broader perspective. As a patent attorney, I found a magic crossover between cutting-edge technology and entrepreneurship. I get to be a part of each client’s journey, building value at the forefront of technical developments. This whole experience is very meaningful to me, both when dealing with start-ups and established businesses. I have never looked back!
For anybody wanting to pursue a successful career as a patent attorney, I think it is imperative to be genuinely interested – both in the technology and in the business aspects for each client. You need to really enjoy digging into, and understanding, the details of both of these in order to be able to deliver really valuable advice.
What are your key recommendations for conveying highly technical concepts so as to get buy in from non-experts?
Often it is necessary to focus on the benefits of something, however, it can then become easy to oversimplify the solution. If basing important business decisions on complicated technical considerations, I think that it is crucial to have a reasonable intuitive understanding of the underlying mechanisms. A very cursory understanding will most likely not be sufficient. Instead, if at all possible I like to try to explain how things really work under the hood, but then to use relatable images and analogies rather than lingo and abbreviations. Only rarely is a technical concept too complicated to be broken down to something meaningful that can still be understood by a layperson.
How can innovators use patents to define the results of R&D and then pursue various commercial goals?
Patent claims are a very efficient way to define the boundaries of technical concepts – this is, after all, how they are used in patents. Often, a patent application can therefore be used as a means to define an individual development effort, for instance by basing a licence or cooperation agreement on it. Developed technology represents value in and of itself. Patents can be used as an efficient business tool to distribute this value across multiple parties, in extreme cases as an alternative to going to court. With this mindset, it becomes easier to view patents as strategic, offensive, forward-looking tools, rather than as purely defensive measures.
What are the most common mistakes that non-European companies tend to make when filing before the EPO?
The requirements for support in the application as filed are very strict at the EPO. Therefore, it is often not a viable strategy to file something quick and dirty, and then to try to expand or deepen the description by way of amendments at a later point.
In particular, it is important to add information on multiple abstraction levels, so as to be able to pick and choose when amending the claims depending on the prior art situation.
One example is so-called ‘intermediate generalisations’ – when a feature is lifted out of its context in the description and put into a claim. Another example is abstraction from disclosed individual examples in the description. When possible it is better to provide explicit information on multiple levels of abstraction at the outset.
If you could make one change to the software patenting regime in Sweden what would it be – and do you think it is likely to happen?
Sweden closely follows the European Patent Convention (EPC) when it comes to patent prosecution, and EPC case law is applicable also to national proceedings before the Swedish Patent Office (PRV). However, sometimes there is a certain time lag. One such example is the recent developments at the EPO for deciding what subject matter is technical, introducing a notional skilled business person whose job it is to instruct the technically skilled person with regard to non-technical aspects. As the question of technical character is often at the core of inventive step analyses for software-related patent applications, I would welcome (and not be surprised by) a more active adaptation of procedures within the PRV in these fields.
Managing partner [email protected]
Johan Örtenblad is the managing partner of Noréns. A graduate of the Royal Institute of Technology and the Stockholm School of Economics, he started his career as a software developer, later transitioning into law as a patent attorney. He specialises in software patenting and computer-related inventions, however, as an engineering physicist he also takes on clients with cases in mechanics, thermodynamics and electronics. Mr Örtenblad works across the entire pipeline, from patent inventory to prosecution to litigation.