NIPO joins the Patent Prosecution Highway

On 1st November 2011 the Patent Prosecution Highway (PPH) pilot programme between the Norwegian Industrial Property Office (NIPO) and the US Patent and Trademark Office (USPTO) commenced. This also marked the introduction of the NIPO to the global network of PPH initiatives already connecting several of the major patent offices of the world, including the so-called “Big Five” (the US, Chinese, Japanese, Korean and European patent offices). (On 1st December 2011 a similar PPH programme between the NIPO and the Japan Patent Office entered into force.)

Under the PPH programme, an applicant receiving a decision from either office that at least one claim in the application is patentable may request the other office to fast-track the examination of the corresponding claim(s) in a corresponding application based on the work of, and information gathered by, the first office. However, the cooperation between the offices is limited to the exchange of information, and the corresponding claim will be assessed according to national patentability requirements, and will not be affected by the patentability assessments made by the first office.

The pilot programme is scheduled to end on 31st October 2012 and is designed to provide for accelerated examination procedures allowing applicants to obtain corresponding patents faster and more efficiently in both the NIPO and the USPTO, thus reducing the workload of each office and improving the quality of granted patents.

Acting NIPO Director General Toril Foss said:

“We are proud of the NIPO's first cooperation agreement on Patent Prosecution Highway Pilot Programme with the USPTO. It will be very valuable for our office to cooperate with the USPTO with a view to improving timeliness and quality for the benefit of the society and our common users.” (See press release 11-59 from the USPTO at www.uspto.gov/news/pr/2011/11-59.jsp.)

Depending on several factors (eg, the volume of activity), the programme may be extended for up to one year or terminated earlier. From a workload perspective, the achievable gains through the introduction of the NIPO to the PPH network may seem rather marginal at first glance as the patent-related workload of the NIPO has decreased by approximately 70% since 2008, when Norway joined the European Patent Convention. Patent applications (including national and Patent Cooperation Treaty applications) decreased from 6,654 in 2007 to 1,813 in 2010. However, with regard to efficiency, there is potential for significant gains as the current application processing time for subsequent filings at the NIPO is well above its goal of three years. (The annual reports from the NIPO can be found at www.patentstyret.no/no/Arsrapporter/.)