It is possible to have the right of priority restored in patent cases where the deadline has been missed after 1 July 2019.

The option of restoring priority applies to:

• national patent applications
• international patent applications (PCT applications) filed at the Norwegian Industrial Property Office (NIPO) as receiving Office and
• international patent applications (PCT applications) that are being extended in Norway.

Below is an overview of the rules and deadlines that apply.

National applications

The requirements for restoring the right of priority are:

• Missing the deadline must have been unintentional
• You must submit the application for which priority is requested, the claim for priority and a request for restoration to the NIPO within two months after the end of the 12-month deadline.
• You must pay a fee of NOK 3000 (NIPO will send you an invoice)

NB! However, the right of priority cannot be restored if the request for restoration is submitted after preparations for making the patent application publicly available have been completed.

International patent applications (PCT applications) filed at the NIPO as receiving Office (RO)

The requirements for restoring the right of priority are:

• Missing the deadline must have been unintentional
• International filing day can be no later than two months after the end of the 12-month deadline, and you must submit a claim for priority as well as a request for restoration to the NIPO within the same deadline
• You must pay a fee of NOK 3000 (NIPO will send you an invoice)

NB! However, the right of priority cannot be restored if the request for restoration is submitted after preparations for making the international patent application publicly available have been completed.

International patent applications (PCT applications) that are extended in Norway

If the receiving Office (RO) has refused  to restore the right of priority of an international patent application that is being extended in Norway, or has rejected such a request, you may ask the NIPO to restore the right of priority of the extended application.

The requirements for restoring the right of priority are:

• Missing the deadline must have been unintentional
• International application day cannot be later than two months after the end of the 12-month deadline. You must also have submitted a claim for priority and a request for restoration to the receiving Office within the same deadline.
• You must submit a claim for restoration to the NIPO within one month of the expiration of the 31-month deadline in section 31 of the Patents Act (but still within one month of requesting prior treatment pursuant to Article 23 (2) of the Patent Cooperation Convention).
• You must pay a fee of NOK 3000 (NIPO will send you an invoice)

If the receiving Office has restored  the right of priority, the NIPO will take this decision into account, unless we believe that the Norwegian requirements for restoration were not fulfilled. In these cases, the applicant will be given the opportunity to comment before the NIPO makes a decision.

What is meant by missing the deadline "unintentionally"?

Missing the deadline "unintentionally" means that the patent applicant, patent owner or patent agent did not knowingly miss the deadline.

The NIPO will accept your explanation without further verification. It is therefore not necessary for you to provide a long and comprehensive explanation. However, it is not enough that you merely state that you had a general intention to continue the case or to retain the right. You must therefore give a concrete explanation describing the reason for missing the deadline.

Read more about the requirements concerning "unintentionally" missing the deadline

Options for appeal

You can appeal against decisions made by the NIPO concerning the restoration of the right of priority to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).

Read more about how you can appeal.

Consequences of requesting restoration of the right of priority

If you request restoration of the right of priority, the patent application will be considered as having priority until the restoration request is finally settled. This means, among other things, that the application will be made publicly available 18 months after the priority date.

Restoring priority for European patent applications

The provisions of the Patent Act concerning the restoring of the right of priority do not apply to European patent applications, but there are rules for restoring priority in the European Patent Convention Article 122 and Rule 136 of the Convention.

Restoring priority for designs and trademarks?

Restoring the right of priority is still not possible for designs and trademarks.

Do you have any questions?

Do you have any questions concerning the restoration of the right of priority in patent cases? Contact our Customer Service Centre, tel +47 22 38 73 00.

Legislation

The restoration of priority in patent cases is governed by the provisions of:

Patents Act Sections 6, 28, 72

Patent Regulations Section 69a

Regulation on Fees Section 27