Introduction
Patent prosecution normally involves the replication of lots of work in multiple jurisdictions. A patent application is filed in several countries and most of them – to a greater or lesser extent – perform similar searches and examinations. The Patent Cooperation Treaty (PCT) allows for a preliminary examination prior to filing in multiple jurisdictions; but while PCT prosecution may weed out some of the weaker applications and alleviate some of the workload for national and regional patent offices, much prosecution work takes place during the national/regional phase and even a positive international preliminary report on patentability will not guarantee smooth sailing through different national patent offices.
Some patent offices, on their own initiative, may offer fast-track prosecution in certain circumstances. In Norway, this is possible if, prior to the first office action on the merits of the application, the Norwegian Industrial Property Office (NIPO) becomes aware of granted claims in a corresponding application in another jurisdiction with which Norwegian law is sufficiently harmonised. That primarily means the European Patent Office, Germany, Sweden, Denmark and Finland; but the fast-track process may also be available if the application has been filed in countries such as the United States, the United Kingdom and Canada. NIPO will issue an office action offering fast- track prosecution. If the applicant is willing to file claims corresponding to the granted claims, or to accept grant with the current claims if these already correspond, NIPO will grant the patent. However, the office action may still point out formal deficiencies that need correcting.
While fast-track prosecution is available only at NIPO's initiative and discretion, a patent applicant can opt to avail of the Patent Prosecution Highway (PPH). There are two types of scheme: global and bilateral. Thus far, bilateral PPH agreements have been entered into with Japan and the United States.
The Global PPH pilot was launched on January 6 2014 and involves 21 patent authorities. A participating patent authority (office of later examination (OLE)) will prioritise prosecution of a patent application at the applicant's request, provided that another participating authority (office of earlier examination (OEE)) has issued an office action identifying allowable patent claims. (Additional requirements also apply.) 'Prioritise' in this context means only that the application is prosecuted before other applications. The application will be fully and independently searched by NIPO and all usual requirements and obligations apply.
Prosecution is initiated when the applicant files a request for prioritised prosecution. The request is first subject to verification of the fulfilment of formal requirements – primarily the following:
- Prosecution by NIPO cannot have commenced prior to filing of the request;
- The claim(s) identified as allowable by the OEE cannot be directed towards subject matter that is not patentable in Norway; and
- The application must fall under the scope of the Global PPH agreement. A minimum requirement in this regard is that the two applications (ie, the patent application examined by the OEE and the Norwegian application subject to the request) have the same earliest priority date.
The request for prioritised prosecution must be filed in Norwegian or English, preferably on NIPO's standard form, and should be accompanied by the necessary documentation. This will depend on what NIPO already has access to, but may include:
- a copy of the office action from the OEE identifying the allowable claims;
- a copy of the claims themselves;
- copies of cited references (non-patent related publications);
- a claim correspondence table showing the relationship between the claims in the OEE application and the Norwegian application; and
- any necessary translation.
The claims in the Norwegian application must correspond sufficiently with the allowable claims in the OEE application – meaning that they must either have the same scope or be narrower in scope.
If all formal requirements are fulfilled, examination will commence as soon as possible. NIPO has stated that all applications prosecuted through the Global PPH should receive a first office action within three months of filing of the request for prioritised prosecution.
Unfortunately, limited statistics on the use of the Global PPH in Norway are available. Information on the PPH portal hosted by the Japanese Patent Office, and including both the Global PPH and bilateral PPH agreements, indicates that as of the end of December 2015, only 19 requests for PPH prosecution had been filed for applications where NIPO was the OEE, 17 of them in the United States. By contrast, the Swedish Patent Office had been OEE in 390 requests, the Danish Patent Office in 403 requests and the Finnish Patent Office in 291 requests. There are several possible reasons for this. If, for example, NIPO is considerably slower than its Nordic counterparts to issue favourable office actions, the number of cases in which a Norwegian office action can be used as basis for a Global PPH request will be much smaller. However, it seems reasonable to assume that when office actions issued by one of the Nordic patent offices serve as basis for a Global PPH request, they have been issued in priority applications (ie, applications originating in that country) simply because priority applications are filed one year earlier than their foreign equivalents. If this assumption holds, Norwegian patent applicants have been much slower than their Nordic counterparts in taking advantage of the opportunities offered by the PPH.
With regard to PPH requests filed with NIPO as OLE, however, the situation is different. While 18, 14 and 17 requests have been filed with the Danish, Finnish and Swedish patent offices respectively, some 55 such requests have been filed with NIPO – 49 with the US Patent and Trademark Office as OEE. It seems reasonable to assume that this is due to the fact that for oil industry technologies, many patent applications originating in the United States are filed in Norway only, and not in other Nordic countries. The rate of PPH requests filed in these applications is probably higher than that for other Norwegian applications with a foreign origin.
Ultimately, it is still unclear whether the Global PPH route works for applicants; NIPO cannot provide statistics, other than the fact that the average pendency from filing of the PPH request to the issuance of the first office action is three months. However, for all countries where figures are available for both PPH and non-PPH applications, PPH applications have a higher grant rate, a higher first action allowance rate, a shorter pendency before a first office action is issued and a shorter pendency before allowance. How much more favourable the figures are for PPH than for non-PPH applications may vary, but it seems safe to assume that filing a PPH request in Norway will likely result in a significantly higher chance of faster prosecution, a favourable first office action and a reduced number of office actions.
For further information on this topic please contact Tom Ekeberg at Zacco by telephone (+47 22 91 04 00) or email ([email protected]). The Zacco website can be accessed at www.zacco.com.
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