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.

 

Acapo AS