The minimum requirements for filing a Norwegian patent application/entering the national phase are as follows:
National applications without priority:
- A specification, drawings if appropriate, claims and abstract. We can draft these documents based on a detailed description of the invention. For a provisional application, only a description of the invention is required.
- The name and address of the applicant(s)
National applications with priority (convention applications):
Same as for applications without priority. In addition, the priority number, date and country must be specified. The priority document need only be furnished in exceptional cases.
National phase entry of a PCT application:
International application number.
For all applications, the following must be provided in due time:
- The name and address of the inventor(s)
- Specification, drawings if appropriate, claim set and abstract in English or Norwegian. If the application is not drafted by us, we prefer to receive this information in English or alternatively German, French, Danish or Swedish. Additional translation costs will be charged for all other languages. Confer translating/drafting the application for the various translation deadlines.
- A Power of Attorney and a Declaration as to how the applicant derives his right to the invention. If these documents are missing upon filing the application/entering the national phase, the PTO will issue a formal deficiency action (normally few days), allowing the applicant three months to provide these documents. The documents need not be notarized, nor do we need originals. For the declaration, we only need a brief message from you as to how the rights are derived.
Translating/Drafting the Application
A Norwegian patent application may be filed in several languages, but must be translated into Norwegian or English. At the latest at the time of grant, the claims will need to be translated into Norwegian.
National applications without priority may be filed in any language, but must be translated into Norwegian or English within 16 months. The application may be examined in Norwegian, English, Danish or Swedish, but must nevertheless be translated within 16 months. If amendments have been made in the application, both the original and the current application must be translated. If the application was filed on or after January 1, 2015, the patent can be granted in Norwegian or English. If the patent is granted in English, it will be necessary to file a Norwegian translation of the claims.
National applications with convention priority may be filed in any language, but will only be examined in Norwegian or English. The due date for filing a translation is 16 months from the earliest priority date. If the application was filed on or after January 1, 2015, the patent can be granted in Norwegian or English. If the patent is granted in English, it will be necessary to file a Norwegian translation of the claims.
National phase entries of PCT applications can be filed in any PCT publication language, but will only be examined in Norwegian or English. The due date for filing a translation is 31 months from the earliest priority date. Filing of the translation can be postponed by two months, until the 33-month date, but the PTO will charge a penalty fee if this is done. If the application was filed on or after January 1, 2015, the patent can be granted in Norwegian or English. If the patent is granted in English, it will be necessary to file a Norwegian translation of the claims.
As a general rule, the patent attorney handling the case will also translate it. In peak times, we rely on a network of external translators, most of whom have previously worked as patent attorneys. In such cases, the translation is proofread by the patent attorney handling the case.
Our patent attorneys also have broad expertise in drafting applications and claims. A detailed description is required, as well as drawings illustrating the invention, if appropriate.
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. This is much faster than the first Office Action for a first filing in Norway, which normally issues approximately 7 months after filing.
Filing the Application with the Norwegian Industrial Property Office
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 in the NIPO & Norwegian Patentability Requirements
All Norwegian 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 Norwegian 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 Norwegian patent application made public after the filing, will not be considered in the test for inventive step. Generally, the problem-solution approach used in the European Patent Office, 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 in Norway 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.
The first Office Action is issued after 6-8 months for first filings, and as a rule after 4-8 years for other filings. Expedited examination is available in some cases. Please contact us for details.
The first Office Action issued by the NIPO presents the result of their novelty search, their comments regarding inventive step and industrial applicability, as well as formal deficiencies and requirements for maintaining the application. The term for replying to the first Office Action will be six months. Later Office Actions will normally have a reply term of three months.
In Norway, there is no limit on the number of Office Actions. The number of Office Actions in a case will depend on its complexity, and it is normally 2-4.
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 NIPO 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. In the course of the application prosecution, up to two 2-month extensions of reply terms will also be granted. It is not necessary to name any reason for these requests for extension. See Responding to Office Action(s).
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 with the NIPO. If necessary, we will contact you before finalizing the response.
Extensions of reply terms can be obtained twice during the prosecution of the application. Obtaining these two-month extensions is a mere formality. No argument need be filed with the petition, no public fee need be paid, and the NIPO will not issue a confirmation of the new deadline. 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.
Reinstatement: 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. Note that this method can also be used in order to obtain an extension of the reply term if the two automatic extensions have already been used. There is no limit to the number of reinstatements you can obtain during the prosecution of an application, but the reinstatement fee almost quadruples as of the second occurrence.
Filing a Divisional Application
If the Norwegian Industrial Property 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 starts within a few months after filing.
Grant of Patent
After granting the patent, the NIPO issues the patent document and sends it to us. We forward it to the client after having checked it.
Patents granted in Norway are announced in the NIPO’s patent gazette, Norsk Patenttidende. Norway has a post-grant opposition system, and the opposition period is in most cases nine months from the date of grant (Infringements).
A Norwegian 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 (Duration & Annuities).
We can assist you in budgeting for your IP cases handled by us.
Rejection & Appeals
Should the application be rejected, the NIPO’s decision can be appealed to the Board of Appeal for Industrial Property Rights.
If the rejection 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 for pending applications and patents. A recordal of such changes is not legally required in Norway, 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 can not be a party to court litigations concerning the patent, such as infringement or invalidity actions.
Duration & Annuities
A Norwegian patent is 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.
Our computer system keeps a watch on all annuities payments. 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 pthers.
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).
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 qualfied 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, and there are examples of a one-man enterprise sending a much larger company into bankruptcy.
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
If you become aware of a patent after the expiration of the opposition period, an invalidity suit must 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.
A transferral case can be filed should you feel that another party has unjustly patented an invention to which you hold ownership.
Administrative Patent Restriction
If the validity of your own patent is contested in court, we will help you defend the patent. In some situations the best defence against invalidation is to request an administrative patent restriction in order to limit the scope of your patent.
Confer also infringements and oppositions & observations.
Licensing and Sales of Rights
Should you wish to license or sell your patent in Norway, 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 in the Patent Registry of the NIPO, 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. If you do not want us to, we will not state your name in the observation. A copy of the observation will be forwarded to the applicant, and the observation will be recorded as a separate action in the NIPO’s database. 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)
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.
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.