Future Patent Prosecution Highway agreements made possible for Norway
28. June 11
Amendments in the Norwegian patent legislation will allow for Patent Prosecution Highway agreements between the Norwegian Industrial Property Office and foreign patent offices. This will hopefully lead to better and faster examination of patent applications pursued among the parties to the agreements.
The amendments of the Norwegian Patent Regulations will enter into force on July
1, 2011. New paragraph 105 allows the Norwegian Industrial Property Office (NIPO)
to establish Patent Prosecution Highway (PPH) agreements with other patent offices.
Such formal PPH agreements were first established between the USA and Japan in
2006. Other countries have followed suit, and the Nordic countries Finland and
Denmark are reporting good results. The agreements are usually mutual, but may
be one-sided. The NPO have expressed that they intend to first pursue PPH agreements
with the USA and Japan.
PPH agreements allow patent applications examined by one patent office to be
given prioritized examination if the other patent office has declared that the
patent claims are patentable, and if said claims are the same in both applications.
The amended paragraph 30a of the Norwegian Patent Regulations ensure said prioritized
examination as long as the applicant apply for it. This may become important for
foreign applicants seeking patents in Norway, since the case backlog and thus
waiting time for examination of non-priority founding applications in Norway is
very long, often 5-8 years.
Although examination with PPH is supposed to both be initiated earlier and take
less time, Norwegian patent applications will still be examined based on Norwegian
law. Non-patentable inventions will therefore not be given prioritized examination
by the NPO. It is unclear what will be done with patent applications with claim
types that must be changed from one country to the other, for example medical
method claims in the USA that must be amended to medical use claims in Norway.
The effects on the examination of applications with priority from Norway by the
agreement partners is also unsure; if the examination in Norway is to be taken
into account it is reasonable to assume that the positive patentability report
from the NIPO must be translated into English.