Application process

Filing Requirements

The minimum requirements vary according to the type of application and whether it should be filed with the NIPO or the EPO. Please contact us regarding your proposed application so that we can advise you on what applies for your case.

Translating/Drafting the Application

Generally, we file and prosecute European applications in English, and Norwegian applications in Norwegian or English. If your application is in another language, we ask that you supply us with an English translation thereof.

Searches

Prior to filing a patent application, you may wish to have a search made in order to investigate the state of the art within the field of the invention to be patented. This is only relevant if the application is a first filing. We perform such searches in-house by staff that has work experience as examiner at the Norwegian Industrial Property Office. The cited documents will be included as prior art when drafting the patent application.

The time-frame for a search varies from several hours to several weeks, depending on the complexity of the search as well as the urgency.

Filing the Application

For correspondence to and from the NIPO, the EPO and other offices, we prefer to use the available secure internet portals. Where this is not possible, we use the accepted ways of correspondence.

Every filing is quality checked by another employee.

Examination & Patentability Requirements

All Norwegian and European patent applications are examined, and the patentability requirements are as follows:

Novelty:

The invention must be new in relation to what was public knowledge before the effective filing date of the application. The novelty requirement is absolute, including prior use anywhere in the world. An earlier patent application made public after the filing, constitutes a novelty bar. In order to avoid double patenting, a “reasonable technical difference” is however required to fulfil the novelty requirement.

Inventive step:

The invention must differ substantially from what was public knowledge before the filing date of the application. An earlier patent application made public after the filing, will not be considered in the test for inventive step. Generally, the problem-solution approach is applied.

Industrial applicability:

The invention must be industrially applicable, but the interpretation thereof is broad and includes agriculture, forestry, gardening and mining. Methods for surgical or therapeutic treatment or diagnostic methods, practiced on humans or animals, are not regarded as industrially applicable and are not patentable. In most cases, such inventions can be covered by Swiss-type claims.

Other exemptions from patentability include plant or animal varieties, discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules or methods for performing mental acts, playing games or doing business, computer programs (not entirely exempt), presentations of information, and inventions for which the use will be contrary to public moral and order.

Office Actions

The first Office Action is issued after 6-8 months for first filings. In other cases, the time frame is more variable. Please contact us for details.

The first Office Action usually presents the result of the novelty search, comments regarding inventive step and industrial applicability, as well as formal deficiencies and requirements for maintaining the application.

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

We will enclose the documents cited by the office, unless the documents are already known to the applicant from the International Search Report (ISR) or a parallel application.

Failure to file a timely response will result in the application being shelved, but reinstatement will be granted under certain conditions. Extensions of term may also be available. When we report the Office Action to you, we will inform you of the term for responding as well as of any possibilities for extension of term that may be available for your application.

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 prepare and duly file the response. If necessary, we will contact you before finalizing the response.

Extensions of reply terms may be available. We will, however, charge a fee for requesting, docketing and reporting about the new deadline. Therefore, please let us know if you would prefer to abandon the application by not responding to the Office Action.

If a deadline is not met, the application will be shelved. However, it can be reinstated if the response is filed and a reinstatement fee paid within four months.

Filing a Divisional Application

If the patent office considers that your application concerns several independent inventions, you will be asked to limit your application to one of the inventions and to cancel claims relating to the other invention(s) described in your application. In such a case, it is possible to file one or more divisional applications claiming protection for the other invention(s) contained in the original application.

A divisional application must be filed while the original application is still pending, i.e. it must be filed before a patent is issued on the original application. The description of a divisional application is normally identical to the description of the original application as filed, while the claims concern an invention that was not covered by the claims approved in the main application.

Filing a divisional application is often very costly, since it is necessary to pay accumulated annuities counting from the effective filing date of the original application.

Examination of divisional applications normally commences in a relatively timely fashion.

Grant of Patent

If the patent office finds that your invention is patentable, it will issue a Notice of Acceptance. It will then be necessary to pay an issue fee. In the case of European patent applications, it is also necessary to furnish a translation of the claims into the two other EPO languages. In the case of Norwegian patent applications filed in the English language, it will be necessary to furnish a translation of the claims into Norwegian.

Upon completion of these formalities, the patent office issues the patent document and sends it to us. We forward it to the client after having checked it.

Both Norway and the EPO have a post-grant opposition system, and the opposition period is nine months from the date of grant.

A Norwegian or European patent is valid for 20 years as of the effective filing date if annuities are duly paid. We keep track of the payment deadlines for you and notify you in due time.

We can assist you in budgeting for your IP cases handled by us.

Rejection & Appeals

Should your patent application be rejected, the decision can be appealed to the Board of Appeal. We will advise you in this connection, should the situation arise.

If the rejection of a Norwegian application is maintained, it can be brought before the court. The Norwegian court system consists of the District Court, the Appeals Court and the Supreme Court, but patent cases rarely reach the Supreme Court.

Our in-house attorneys-at-law have a broad experience in all matters concerning intellectual property, and are fully qualified to litigate your case in court. Many of our patent attorneys have solid experience as expert witnesses or judges in litigation.

Assignments, Changes of Name

We can assist you in recording all types of changes, such as transferral of rights, name and address changes or licences, at the NIPO or EPO for pending applications and patents.

In Norway, a recordal of such changes is not legally required, but it is advisable in order to avoid ownership disputes. More importantly, if a patent has been transferred to you but you have not recorded the transfer, you cannot be a party to court litigations concerning the patent, such as infringement or invalidity actions.

Other rules may apply in other jurisdictions. Please contact us for information on your particular case.

Duration & Annuities

Norwegian and European patents are valid for 20 years as of the effective filing date if annuities are duly paid. The annuities for the first three years must be paid in bulk within two years of the effective filing date of the application. Further annuities must be paid on an annual basis.

We keep a watch on all annuities due. Our standard routines include sending you a first annuity reminder three months before the annuity payment is due and a second reminder two months later (one month before the deadline), requesting your written confirmation that the annuities should be paid. For clients who so wish, we automatically pay all annuities unless we are specifically instructed not to pay.

If we receive no payment instructions from you before the deadline, the annuities will not be paid. However, the patent/patent application remains active if the fee and a penalty fee are paid within six months of the ordinary deadline. We will send you a penalty warning three months before the extended term expires. We also send such penalty warnings to the clients who have outsourced all annuities payments to companies such as CPA, Master Data, Patrafee or others.

For pharmaceuticals and plant protection products, it is possible to receive an extended protection of up to 5 years by applying for a Supplementary Protection Certificate (SPC).

Infringement

If a third party infringes your patent in Norway, we can ask this party to cease his/her activities or alternatively negotiate a license agreement or even sell the patent, should you so desire.

If no agreement is made, we can file an infringement case. Our in-house attorneys-at-law are fully qualified to litigate such cases, but when necessary due to the complexity or scope of the infringement, we draw on resources from other reputable Norwegian law firms qualified in IP law.

A party infringing a Norwegian patent is liable to pay compensation as of the day of the publication of the patent application or the day the party was aware of the application, whichever comes first. However, small companies are often “pardoned” for not keeping track of published applications, and in such cases, compensation is calculated as of grant.

Generally, compensations are fairly low. The compensation awarded for the period before grant will be comparable to a normal license fee. The compensation awarded for the period after grant may however be larger than the infringer’s profit.

A petition for an interlocutory injunction may be filed as soon as the patentee 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.

Invalidity Suits & Administrative Patent Restriction (Norway)

If you become aware of a patent after the expiration of the opposition period, it is possible to request administrative revocation.

Alternatively, an invalidity suit can be brought before Oslo District Court in order to contest it. The same must be done if the patent is maintained after you have exhausted all opposition opportunities within the NIPO. Our patent attorneys and attorneys-at-law can file and litigate such a claim on your behalf.

If the validity of your own patent is contested in court, we will help you defend the patent. In some situations the best defense against invalidation is to request an administrative patent restriction in order to limit the scope of your patent.

A transferral case can be filed should you feel that another party has unjustly patented an invention to which you hold ownership.

Licensing and Sales of Rights

Should you wish to license or sell your patent, we assist in drafting the necessary agreements, including licensing agreements and confidentially statements. We can also take care of the registration of a license agreement at the appropriate patent office, as well as other changes resulting from commercial IP transactions.

We also offer strategic advice in the process of buying, selling and licensing industrial rights.

Oppositions & Observations

Third-party observations may be filed at any time during the prosecution of an application. A copy of the observation will be forwarded to the applicant, and the observation will be recorded as a separate action. The examiner is obliged to consider the arguments and any cited documents in the observation.

The time-limit for filing an opposition against a granted patent is 9 months from issue of the patent, but may in some cases be extended to 3 years. The opposition proceedings will generally consist of two rounds of correspondence before the case is decided. It is possible to request oral proceedings. Decisions in opposition proceedings can be appealed to the Board of Appeal, and then to the courts.

If you are considering filing an observation or an opposition, please contact us for details.

Supplementary Protection Certificate (SPC) - Norway

A Supplementary Protection Certificate may be obtained for pharmaceuticals and plant protection products in Norway. The duration of the SPC is limited to the time between the filing of the patent application and the first marketing authorisation for the product given within the EEA, minus 5 years (a maximum of 5 years extension).

As of September 2017, it is possible to apply for a further 6 months extension for medicinal products suitable for children (“paediatric extension”).

An application for an SPC must be filed within 6 months from the date of the first marketing authorisation for the product in Norway, or alternatively from the day the Norwegian patent was granted, whichever is later.

We can file an SPC on your behalf. The following is required:

  • The Applicant’s name and address, which must be identical to the recorded patent owner’s
  • Number, title, expiration date and date of grant for the patent
  • Information regarding the first marketing authorisation in Norway, as well as a copy of the approval letter from the Norwegian Medicines Agency or the Norwegian Food Safety Authority
  • Country, number and date for the first marketing authorisation within the EEA (if other than the Norwegian), as well as a copy of the notification or a document proving that the authorisation has been given
  • All information required for the PTO to check that the product is protected by the patent
  • Payment of the application fee

If we did not handle the prosecution of the patent application, we will also require a Power of Attorney.

Surveillance

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

Firstly, we can place a watch on a specific patent application that you are aware of. As soon as the application is publicly available, at the latest 18 months from the priority or filing date, we will receive copies of all the correspondence in the case, and advise you on whether an observation should be filed.

Secondly, we can keep a watch on patents on a more general basis. This means that we will keep track of all patent applications and grants and inform you about those that are close to rights you have already established. This type of watch is normally linked to a certain technical field or one or more specific competitor(s). Again, we can assist you in filing an opposition or an observation.