WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.
Seeking patent protection via the PCT in respect of States which have recently joined a regional patent organization
Q: On 5 December 2007, I filed an international application claiming the priority of an earlier application filed on 15 December 2006. I will be entering the national phase in the various States that interest me before 15 June 2009. In view of the fact that Norway, which was designated in my application for a national patent, became a member State of the European Patent Organisation on 1 January 2008, is it possible to obtain a European patent for Norway, instead of entering the Norwegian national phase separately before the Norwegian Industrial Property Office?
A: Under PCT Rule 4.9(a), the filing of the request constitutes the designation of all Contracting States that are bound by the PCT on the international filing date, for the grant of each kind of protection available, and for the grant of both regional and national patents. Since your international application was filed on 5 December 2007, a regional designation for a European patent (“EP designation”) and a national designation for
If you wish to obtain patent protection in
Any PCT application filed on or after 1 January 2008, the date on which Norway became a member of the European Patent Organisation, will automatically include the designation of Norway for the purposes of obtaining a European patent as well as a national patent, and applicants of those applications have the choice of whether to enter the national phase in Norway or whether to seek protection in that State via a European patent.
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.
. Note that the situation regarding the EP designation is the same for