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PCT Newsletter 10/2008: Practical Advice

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 Norway will have been included;  the EP designation does not, however, include Norway as it was not a member State of the European Patent Organisation at that time.  Although Norway became a member of the European Patent Organisation on 1 January 2008, before the date on which you will enter the national phase under PCT Article 22(1) (or 39(1)), it is the international filing date which determines which States are designated, which type(s) of protection is/are being sought, and which national or regional patents are being sought (PCT Rule 4.9(a)).  An EP designation is, in effect, the designation of those States that are, at the date of filing of the PCT application, members of both the European Patent Organisation and the PCT – it is not possible to add a State to a regional designation after the international filing date of the application concerned (in the same way that it is not possible to add a designation for the purposes of obtaining a national patent).

If you wish to obtain patent protection in Norway on the basis of your PCT application, it will be necessary to pursue a national patent by entering the national phase directly before the Norwegian Industrial Property Office[1]. 

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.

[1].    Note that the situation regarding the EP designation is the same for Croatia, which also became a member State of the European Patent Organisation on 1 January 2008.  However, for international applications filed prior to that date, it is still possible, in the national phase, to extend European patent applications to Croatia, provided that the international application includes the designation of Croatia for a national patent, as well as an EP designation (that is, that the automatic designations of Croatia and EP have not been withdrawn).  For further information on the extension of European patents to Croatia, see PCT Newsletter Nos. 05/2004, page 3, and 12/2004, page 7, at: https://www.wipo.int/edocs/pctndocs/en/2004/pct_news_2004_5.pdf and https://www.wipo.int/edocs/pctndocs/en/2004/pct_news_2004_12.pdf