Norway became a member state of the European Patent Organisation on 1 January 2008. This allowed European applications filed on or after that date to be eventually granted with effect in Norway, thereby avoiding the need to file a separate national application. For PCT applications, the date of filing as far as the EPO is concerned is, however, the date of filing the international application, not the date a request is made to enter the European phase. A concerned Norwegian-based attorney has written to the IPKat to inform him that this fact does not appear to have been properly realised by many applicants.
The concerned attorney (who wishes to remain nameless) has noticed a substantial drop in national phase applications being filed in Norway in 2008, which cannot be adequately explained by the fact that Norway has now joined the EPO, because no PCT applications filed before 1 January 2008 and reaching the national phase deadline in 2008 will have been able to validly designate Norway in a request to enter the European phase.
The concerned attorney calculates that about 3-4000 applications may be lost as a result of this, and is beginning to wonder if applicants are even aware of this situation. An attempt was made to bring this to the attention of applicants via the PCT Newsletter in 2008 (issue 10: see page 11), in an answer to a hypothetical question posed about whether a state that had recently joined the EPO could be designated from a PCT application filed before 1 January 2008. The answer included the following:
"It is important that applicants and their agents be vigilant as to which Contracting States are covered by a regional patent when they enter the national phase, to ensure that they do not make the mistake of presuming that they will be able to obtain a regional patent in a particular State, when they should in fact be taking the necessary steps to enter the national phase in that State directly with the national Office concerned."The IPKat wonders too whether this is a situation that all those concerned are truly aware of. He cannot imagine that any qualified European patent attorney would not know about which countries a European application designates on filing, for the simple reason that states have been joining the EPO regularly since it was founded. He suspects that the problem may be more related to applicants and attorneys outside Europe, who simply assume that their request to enter the European regional phase will automatically extend to Norway. Their European patent attorney will, the IPKat suspects, usually have no reason to ask whether the applicant intends to include Norway. Is this perhaps a situation where thousands of potential Norwegian patents will simply be lost in the communication gap between Norwegian and European patent attorneys? Do any readers know how this could be fixed?