1 October 2011Jurisdiction reportsLill Anita Grimstad

Better late than never

However, the solutions available to the applicant if the deadline is missed are quite different, as Norwegian legislation differs from the rest of Europe.

Late entry is possible at the European Patent Office (EPO) and the UK Intellectual Property Office, for example. The further processing procedure in Article 121 of the European Patent Convention (EPC) can be used at the EPO if the 31-month deadline is missed. This requires completion of the omitted act and payment of an additional further processing fee.

The further processing fee can be substantial—it amounts to 50 percent of the fees that should have been paid by the 31-month deadline. It may also be necessary to pay further fees if the examination request and designation fees should have been filed by the 31-month deadline and/or if a translation of the application should similarly have been filed.

The EPO must notify the applicant if all the acts necessary for regional phase entry are not completed by the 31-month deadline. This notification sets the deadline for requesting further processing at two months from the date of notification of the further processing notice.

In practice, further processing notices are generally issued about four to six weeks after lapse of a given deadline. Therefore, the deadline for further processing in respect of late regional phase entry will often be three to four months after the statutory 31-month deadline.

"IN ACCORDANCE WITH THE EPO SYSTEM, THE APPLICANT HAS TO SUBMIT A STATEMENT OF CASE SETTING OUT THE FACTS OF THE MATTER AND EXPLAINING WHY THE 'ALL DUE CARE' TEST HAS BEEN MET."

In Norway, there is no option of a late entry. Section 31 of the Patent Act states that if the applicant wants an international patent application to enter the national phase in Norway, the applicant must, within 31 months of the international filing date or, if priority is claimed, of the date from which priority is claimed, file a translation of the international application with the Norwegian Industrial Property Office (NIPO), or if the application is in Norwegian, a copy thereof.

The applicant shall pay the prescribed fee to NIPO. The translation or transcription may be submitted within a further two-month limit for a prescribed fee. If the applicant fails to comply with the provisions of this section, the application shall be considered withdrawn as far as Norway is concerned.

Before the EPO, if the further processing deadline is missed then it might still be possible to enter the application into the European regional phase by filing a request for re-establishment (Article 122 EPC).

This is possible in the UK under Section 20(a) of the UK Patents Act, and similar to a request for re-establishment under the EPC, the success of a request for reinstatement of the application relies on the applicant being able to show that the failure to meet the deadline complies with a specific legal text. In UK, the test is 'unintentional' and, in some circumstances, this may be less onerous than 'all due care'.

In Norway, the provisions for the reinstatement or re-establishment of an application are set out in Section 72 of the Patent Act. It holds that an applicant, upon request, can have its rights re-established if it can prove that it or its representative has taken all due care that may reasonably be required.

In accordance with the EPO system, the applicant has to submit a statement of case setting out the facts of the matter and explaining why the 'all due care' test has been met. Such a request must be submitted in writing to NIPO within two months of the removal of the cause of non-compliance with the time limit, and not later than one year from the expiration of the time limit. Within the same time limit, the omitted act must be completed. The prescribed fee shall be paid.

There is no universal rule as to what evidence must be provided to satisfy NIPO with respect to the burden of “all due care”. As such, it will always depend on the facts of the case, and we would strongly recommend seeking the advice of a local practitioner skilled in such cases if re-establishment/reinstatement may be required.

Lill Anita Grimstad is head of legal & litigation and partner at Bryn Aarflot. She can be contacted at: lag@baa.no

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