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?
A plea from Norway
Reviewed by David Pearce
on
Wednesday, February 18, 2009
Rating:
Reviewed by David Pearce
on
Wednesday, February 18, 2009
Rating:
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The WIPO website as at early/mid 2008 (more recent lists on the WIPO website now have footnotes alerting one to the problem) informed one that Norway was an EPO member state, without alerting one to the fact that it could not be designated in a European regional phase application filed at the time.
ReplyDeleteThe EPO application forms have a note warning applicants that only states that were EPO members at the PCT international filing date can be designated. However, those forms are typically only seen by a non-European attorney/applicant when filing is reported by its European attorney.
Accordingly, there was nothing alerting a non-European applicant/attorney to the problem when selecting countries/regions for PCT national phase filings.
I am afraid that the applicants as well as their local advisors can only blame themselves if they do not get a Norwegian patent while they wanted to get one: the PCT request form, the PCT publication, and letters sent by WIPO to PCT applicants clearly indicate which countries are designated for a national patent, and which countries are designated for a regional patent. If the PCT publication and the WIPO letter do not mention Norway as a country designated for an EP patent, and only mention Norway as designated for a national patent, it is the applicant's and his local advisor's fault if they want a Norwegian patent but do not timely seek the assistance of a Norwegian patent attorney for entering the national phase in Norway.
ReplyDeleteI would tend to agree with the previous commenter. It cannot be the fault of the European patent attorney, acting on instructions to file a European patent application for all available designated states, to fail to point out to the instructing party that Norway (or any other recently joined state) is not available. If this were to be done, it would have to be done every time, and would simply be repeating the information the PCT applicant had already received from both WIPO and the EPO (which sends an advance notification to all PCT applicants informing them about the steps needed to enter the European phase).
ReplyDeleteI keep wondering if I have missed something here, but new countries have been joining the EPC after already having been PCT members for many years, such as TR, BG, CZ EE, SK, HU, PL and IS. Applicants and their advisors had to pay attention to the date of joining the EPC to work out if they would be covered in an EP regional phase application. What's the difference with NO?
ReplyDeleteIt's bigger.
ReplyDeleteDavid's comment about Norway being bigger is probably not entirely true. I think Poland has a substantially larger population :-)
ReplyDeleteNonetheless the Norwegian economy is - at least in some technical fields - probably more important to overseas applicants.
A similar issue came up when Finland joined the EPC. A number of Finnish attorney sent around newsletters pointing out the need to file nationally in Finland because an Applicant could not benefit from the EP designation. However, not all Finnish attorneys were aware of this issue. I had one case in which the usual Finnish attorneys kindly informed me there was "no need" to file the case in Finland because we had already designated the EPO and Finland was now a member state.
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