Responding to Examiner's objections to secure patent protection

Optonor AS is a small but long-established Norwegian company which designs high-tech laser systems which can analyse products and materials to identify potential faults and/or weaknesses in their structure. The systems are based on modern interferometric technology and can be used in a large range of applications within the aircraft and space industry, the automotive industry, and the audio and electronics industries.

Optonor was referred to Dehns in 2015 by an investor group in Oslo which had previously worked with Dehns. Dehns Partner Tim Wilson has worked closely with Optonor founder and CEO Eiolf Vikhagen since then, and in 2019 Optonor had Dehns-drafted patents granted in the US and the UK.

In 2018 Dehns drafted and filed a new UK patent application which was met with several objections from the UK Intellectual Property Office (UKIPO); Dehns Partner Tim Wilson successfully dealt with these objections in 2019. On the related international (PCT) application, the international Examiner raised further objections as they had seen that Optonor had disclosed information about the technology in brochures on their website; this could have meant that the technology would not be patentable as it was already in the public domain.

The client was understandably concerned about this turn of events, but Tim was able to re-assure the client that all was still ok as the new features for which they were seeking a patent were not actually mentioned in the brochures on their website and were still inventive over these disclosures.

Tim responded to the Examiner’s objections in the UK in a detailed six page letter, explaining why the claims were still novel and inventive over anything existing in the public domain, including that which was on Optonor’s website; Tim’s explanations were accepted by the Examiner.

Tim was also able, through his patent experience and knowledge of the technology, to secure protection for two different, but related, ideas within the claims of the one UK patent, without the need for a Divisional application which would have meant further time and cost for the client.

In August 2020, Dehns received, on behalf of the client, an “Intention to Grant” letter for this particular patent application, which was excellent news for the client.

Having patents granted for small companies such as Optonor is really important as it helps protect their technology from competitors of any size hoping to enter their market. Patents are a big commitment in terms of time and cost for small companies, but they can make a significant difference to the ongoing and long term success of that business.

Dehns has now helped Optonor develop two patent families through to grant, and is very much looking forward to continuing working with them and being part of their journey.

The client certainly seems happy with the work we have undertaken on their behalf so far:

“Dear Tim,

Thank you for the good news, this is an important patent to us, so very well done, Tim.”

Optonor AS Founder and CEO, Eiolf Vikhagen, on hearing of the Intention to Grant.