Application Process

Filing Requirements

In order for us to file a design application on your behalf, we need:

• The full name and address of the Applicant(s)
• The full name and address of the Designer(s) (or designer groups/firm)
• Clear photographs or drawings of the design
• Priority data if priority is claimed (country, filing date and application number)

In addition, we need information on whether the design is to be registered in colours or black/white (or both), and if the Applicant wishes to have a voluntary supplementary search done.

The Norwegian Industrial Property Office (NIPO) and EUIPO accepts both photographs and drawings, but not technical drawings. You can not submit both pictures and drawings of the same design, it has to be the one or the other.

If you intend to file a multiple application with a foreign priority claim, please note that the total number of designs in Norway may differ from that of the priority application as the NIPO calculates the number of designs differently than many other patent offices, and especially EUIPO.

A copy of the priority document need not be filed, but the NIPO may request it at a later stage.

A Power of Attorney is only required when making changes to the application in Norway.

The NIPO uses the Locarno Classification system to classify the application and the EUIPO uses the Euro-Locarno to classify applications.

Searches (Norway)

When you file a design application with the Norwegian Intellectual Property Office (NIPO), the NIPO will only perform a formalities examination. Therefore, it is recommended to either perform a search prior to filing, or request voluntary examination when filing, as part of a due diligence investigation. This way, you can avoid infringing the rights of others.

We can help you perform a search in order to find out whether similar designs already are registered in Norway.

Searches may be performed among registered designs or as name searches. The type of search to be performed and cost will be discussed and agreed upon in advance.

You will normally receive the results of the search with our search opinion within ten working days.

It is also possible to conduct searches in the database of the EUIPO.

Filing the Application with the Norwegian Industrial Property Office (NIPO)

Applications to register designs are handled by the Norwegian Industrial Property Office (NIPO), a government authority organized under the Ministry of Trade, Industry and Fisheries.

EU applications are filed with the European Union Intellectual Property Office.

The due date for filing a design application that claims priority from another application is 6 months from the filing of the first application. This term is not extendable.

For most of our correspondence to and from the NIPO we use a secure web portal. In cases where this is not possible, we rely on couriers.

Applications filed to the EUIPO are also sent via a secure web portal.

Supplementary Search (Norway)

The Norwegian Industrial Property Office does not examine design applications as to registrability. Only a formal examination of the application is performed.

You may also ask for a voluntary supplementary search when filing a new application. You will receive a search report from the Norwegian Industrial Property Office, and a remark will be added to the Registration Certificate indicating that a supplementary search has been performed.

We recommend performing such a search, either at filing or before, as proof of due diligence.

The Norwegian Industrial Property Office Checks Formalities

When a design application is filed with the Norwegian Industrial Property Office, the application will be registered in their system and an examiner will be appointed.

If all formalities have been complied with, the application will proceed to registration.

If there are any deficiencies, the examiner will issue an Office Action.

The EUIPO also checks formalities in new applications. If there are any deficiencies, the examiner will issue an Office Action.

Office Actions

Upon receiving an Office Action, we will translate it if necessary and forward it to you with our comments. Some clients request a full and thorough analysis, while others prefer a mere translation of the Office Action. We welcome you to let us know your preference.

Failure to file a timely response will result in the application being shelved, but reinstatement can be granted under certain conditions. Extensions of reply terms may also be obtained. See Responding to Office Actions.

Responding to Office Actions

We generally await your comments and instructions before preparing a response to an Office Action. If we do not hear from you, we will routinely send you a reminder one month before the deadline. Upon receiving your instructions, we will prepare and duly file the response with the Norwegian Industrial Property Office or the European Union Intellectual Property Office. If necessary, we will contact you before finalizing the response.

An extension of a reply term can be obtained once during the prosecution of the application in Norway. Obtaining this two-month extension is a mere formality. No argument need be filed with the petition.

Reinstatement (Norway):

If a reply term is not met, the application will be shelved. However, it can be reinstated if the response is filed and the reinstatement fee paid within four months. Note that this method can also be used in order to obtain further extension of the term if the two-month extension has already been used. As with normal extensions of the term, reinstatement can only be obtained once during the prosecution of the application.

Registration of Design

Upon registration, a registration certificate will be issued, and the design will be published in the Norwegian Design Gazette. In EU the registration will be published in the Community Designs Bulletin. The registration certificate will be checked for errors before we forward it to our client.

After publication in the Norwegian Design Gazette, any third-party can request a re-examination (administrative review) of the design. A re-examination can be filed during the entire lifetime of the design and can result in full or partial revocation of the design.

A Norwegian, and EU,  design registration is valid for 25 years as of the filing date if renewal fees are duly paid. We will keep track of the payment deadlines for you and notify you in due time (Duration & renewal).

The Certificate of Registration is only issued electronically.

Changes & Assignments (Norway)

We will assist you in the recording of all types of changes, such as transfer of rights, name changes and address changes, at the NIPO for pending applications and registered designs. Recordal of changes is not legally required in Norway, but is advisable in order to avoid ownership disputes. In such cases, a Power of Attorney is required.

Duration & Renewals

A Norwegian, and EU, design registration is valid for 25 years as of the filing date if renewal fees are duly paid. The renewal fees for the five first years are paid at filing of the application, and all other renewals are paid at the latest upon the initiation of each of the four remaining five-year periods.

Our computer system keeps a watch on all renewals. Our standard routines include sending you a first warning four months before the renewal fee is due and a second warning two months later (one month before the deadline), requesting your confirmation that the renewal fee should be paid. For clients who so wish, we automatically pay all renewal fees unless we are specifically instructed not to pay.

If we receive no payment instructions before the deadline, the renewal fee will not be paid. However, the design registration remains active if the fee and a penalty fee is paid within six months of the ordinary deadline. Immediately after the expiration of the ordinary deadline, we will send you a penalty warning and follow up with a reminder one month before the six-month term expires.

Infringements, Reviews & Invalidity Suits (Norway)

If a third party infringes your Norwegian design registration, we can ask this party to cease his/her activities or alternatively negotiate a license agreement or even sell the design registration, should you so desire. If no agreement is made, we can file an infringement case.

A party infringing a Norwegian design is liable to pay compensation as of the day the registration was made public in the Norwegian Design Gazette or the day the infringer was aware of the registration, whichever is first. Generally, compensations are fairly low. A petition for an interlocutory injunction may be filed as soon as the proprietor becomes aware of the infringement, but it is normally required that he posts a financial guarantee to compensate the alleged infringer should the court conclude that no infringement had taken place.

An administrative review may be filed during the entire life time of the design and may result in the full or partial revocation of the design registration.

An invalidity suit may be filed with the Norwegian Industrial Property Office or be brought before the court at any time during the entire life time of the design. In addition, an invalidity case may be brought before the court after the registration has lapsed or has been renounced.

We can assist you in all the above-mentioned matters, and our in-house attorneys-at-law are fully qualified to litigate such cases.

Surveillance

Knowing what your competitors are doing is a crucial part of working strategically with intellectual property. Our surveillance services will assist you in mapping their activities.

We can assist you in keeping all new design registrations under surveillance. This means that we will inform you about those that are close to or infringe with design rights you have already established. This type of surveillance is normally linked to a certain type of product or one or more specific competitor(s).

We advise you on whether an administrative review should be requested or an invalidity suit should be brought before the court. If so, we can assist you in both cases, and our in-house attorneys-at-law are fully qualified to litigate a court case on your behalf.