Restitutions: Norway is about to adopt the “unintentional” criterion

On March 8, 2019, the Norwegian Department of Justice sent a proposal to the Parliament regarding some changes to the patent, design and trademark legislation. The proposal concerns various changes aimed at further harmonizing Norwegian legislation with European legislation and several existing international treaties such as the Patent Law Treaty and Trademark Law Treaty, and in addition, simplifying some processes before the NIPO and the courts. In the present article we will be looking at the proposed changes regarding the restitution, or reestablishment, of rights after a missed deadline.

If the new legislation is adopted, the NIPO will in future apply the “unintentional” criterion instead of “all due care”. This will apply to patents, trademarks and designs. We are very happy to note this change of stance.

We feel that the “all due care” criterion has been practiced very varyingly in Norway over the years, and even from case to case. Sometimes the standard was so high that one wondered why restitution was allowed at all in the legislation, since it was never allowed in practice. Sometimes the standard was so low that even the most sympathetic reader could not understand why restitution was allowed under the “all due care” criterion.

Instead of criticizing the practice of the unfortunate people who have to decide on these matters, we believe that it is indeed better to adopt legislation and embrace the “unintentional” criterion. It is better to set the standard straight, than to try to correct the practice of a criterion that in its very nature is very subjective.

This will ease the workload of the NIPO, so that they can concentrate on other things. It will also remove the enormous pressure on IP owners and applicants and their agents in connection with inadvertently missed deadlines. It will not have any implications for third parties, since their rights are still protected in other parts of the legislation.

The proposed change is, by the way, in line with FICPIs resolution after its meeting 13-17 March 2011, calling upon all patent offices to use the “unintentional” criterion instead of “all due care”.

Quoting input from Oslo Patentkontor, the Department states that the NIPO should not assess the “unintentional” declaration. We welcome this statement of the proposal especially warmly. If the standard is changed, practice should also be changed. If the proposed changes are adopted, the NIPO will need an explanation of how one came into the situation that one intended to keep the deadline, but did not make it. A short declaration such as “I declare that the missed deadline was unintentional”, like in the USA, will not be accepted. The situation should be explained, but the proposal explicitly states that the explanation should then not be further questioned or examined by the NIPO. So it will not be like the UK “unintentional”, which we believe might be almost harder to prove than a normal “all due care”. Please comment on this!

Also if the proposal is adopted, it will be possible to get restoration of priority rights if the priority period is not observed. This means that Norway can remove itself from the shrinking list of PCT member states that do not allow this. Unfortunately, this will only apply to patents, and not to trademarks or designs.

We warmly welcome these proposed changes.

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