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16 March 2015
Effective from January 1 2015, Norway has acceded to the London Agreement and made additional changes to the translation requirements for patent applications. The London Agreement reduces the requirements for translation of patents granted by the European Patent Office (EPO) upon validation. It is now necessary to translate only the patent claims to Norwegian; the description can remain in English. If the European patent has been granted in French or German, however, the description must be translated into Norwegian or English.
Previously, for Norwegian patent applications (ie, applications filed without claiming priority, Patent Cooperation Treaty (PCT) national phase applications and applications claiming convention priority) that were filed in a language other than Norwegian, a Norwegian translation had to be filed within 16 months of the earliest priority date. National phase PCT applications had to be translated into Norwegian upon filing with the Norwegian Patent Office. However, a two-month extension was available upon payment of a fee. Maintaining this regime would lead to a situation where patents granted on Norwegian applications would be entirely in Norwegian, while validated European patents would have claims in Norwegian and English, and descriptions mostly in English. It would also create an incentive for applicants to go the European patent route rather than the national route by reducing translation requirements for the former, but not for the latter.
Instead, it has been decided that since patents that are in English may be in force in Norway, there is no reason why this should not be the case irrespective of whether they are granted on applications filed in Norway or with the EPO. Consequently, additional legislative changes have been made to allow prosecution and grant of national applications filed in English. Under the new rules, applications filed in English can also be prosecuted in English at the request of the applicant. The patent will be granted in English, but the claims must be translated into Norwegian.
If a national application is filed in a language other than Norwegian, English, Swedish or Danish, a translation into Norwegian or English must be filed within three months (16 months if it is filed in Swedish or Danish). If a PCT application enters the national phase in Norway, a translation into Norwegian or English should be submitted within 31 months of the earliest priority date. If the Norwegian Patent Office is notified of the entry of a PCT application that was published in a language other than English and no translation is filed, the applicant will be invited to submit a translation within two months and to pay a fee.
The most obvious effect of the changes is the reduction in translation costs. For foreign applicants, applications that have already been drafted and filed in English elsewhere can enter into Norway without incurring any translation costs. However, these savings will also be available to Norwegian applicants. Norwegian patent applications are often drafted in English in preparation for international filing, and translation into Norwegian has been a necessity for many Norwegians just as it has been for foreign applicants. Conversely, Norwegian applications that were drafted and filed in Norwegian had to be translated into English upon international filing. Either way, these costs have usually been incurred between 12 and 16 months after first filing of the application. Under the new rules, a Norwegian applicant can choose to file a Norwegian application in English and need not make any translation into Norwegian until the patent is granted - and even then, only the claims need be translated.
If a granted patent becomes the subject of a dispute, such as an opposition, a Norwegian Patent Office decision is appealed or the patent is subject to litigation, the patent owner may be required to provide a translation of the entire patent.
The fact that even prosecution can be in English means that an applicant that does not understand Norwegian need not pay for translations of office actions issued in Norwegian. Instead, it can opt for prosecution in English and avoid all translation costs during prosecution altogether.
Of course, decisions will still have to be made. The most obvious one is that in order to obtain provisional protection during prosecution of the application, a translation of the claims must be "made available to the public in the manner prescribed by national law" (Article 67(3) of the European Patent Convention). This requires that a translation be filed with the Norwegian Patent Office and that the Norwegian Patent Office have announced that such translation has been filed.
Moreover, the language of the application cannot be changed after it has been filed. If the application is filed in English, the language of the granted patent will be English. The prosecution, however, may be in Norwegian or in English. If the language of the application is English, all communications from the Norwegian Patent Office will be in English, including decisions, if the applicant so requests. If the application is in Norwegian, office actions relating to search and examination will be in English at the request of the applicant. The applicant may also request decisions in English, but this will be at the examiner's discretion.
The fact that the language of the prosecution need not be the same as that of the application raises a few interesting questions. One is the question of costs. Receiving office actions issued in your preferred language (Norwegian or English) removes the need for translations. However, where the prosecution is in a different language from the application, what if there are inconsistencies in terminology? Can an argument be made against the scope or validity of the patent if the prosecution history reveals that the examiner seems to have granted the application based on a misunderstanding resulting from the inconsistent use of terminology between the two languages? And will prosecution in the language of the application remove - or at least reduce - the risk of misunderstandings?
These questions lead to a related issue: the interpretation of the claims. As mentioned, claims granted in English must be translated into Norwegian. So which version takes precedence? The answer is both. The scope of protection extends only insofar as there is consistency between the claims in the two languages. In other words, if an alleged infringement is outside the scope of the claims in one language, it is outside the scope of the patent. This means that the translation of claims granted in English into Norwegian is not merely a formal requirement; it is an essential part of obtaining patent protection in Norway. The Norwegian Patent Office will not examine the translations, but corrections in the translation can be made later if the applicant becomes aware of a mistake.
There is no requirement for local representation in Norway, and now that prosecution can also be entirely in English, most hurdles have been removed for foreign patent firms to represent their clients before the Norwegian Patent Office. This means that Norwegian firms will face heightened competition. It is difficult to predict the consequences for the patent industry. Some structural changes may result, but hopefully Norway will continue to have a strong local base of patent advisory firms that can advise both local and foreign clients based on their professional quality and intimate knowledge of Norwegian legal tradition and corporate culture.
For further information on this topic please contact Tom Ekeberg at Zacco by telephone (+47 22 91 04 00), fax (+47 22 91 05 00) or email (firstname.lastname@example.org). The Zacco website can be accessed at www.zacco.com.
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