Strict requirements for re-establishment of rights
Request for re-establishment of rights in Norway may be requested by the applicant when the applicant has failed to comply with a time limit set by the Patents Act and for which the applicant has suffered loss of rights. Section 72 of the Patents Act dealing with re-establishment of rights is inspired by Article 122 EPC.
Unlike many other countries, including the EPO, it is still not possible to restore the right of priority. However, a Norwegian national phase filing from a PCT application in which priority was restored by a national Receiving Office, will be accepted by The Norwegian Industrial Property Office (NIPO).
The request for re-establishment of rights must be filed within two months from the removal of the cause of non-compliance with the time limit and not later than one year (annual fee not later than six months) from the expiration of the time limit. At the same time the omitted act must be completed.
It must be proven that both the applicant and the representative has taken all due care that may reasonably be expected, and that it was the intention of the applicant to meet the time limit. A detailed explanation of what went wrong is required, and sometimes even also affidavits from the persons involved. Both sufficient routines and an adequate control system for dealing with time limits must be proven. Arguing only based on failure to comply with a time limit as being "unintentional" is not at all sufficient.
The request for re-establishment of rights might be a costly remedy due to the necessary details in argument and because you have no guarantee of success, as each case is considered individually. The costs might in particular become high when missing the 31 month time limit for national phase filing from a PCT application, as also the Norwegian translation of the PCT text and necessary filing fees need to be filed together with the request.
As a general rule a professional representative, whether national or foreign, can never make mistakes. Subordinate staff may make isolated mistakes, but are indeed also required to have a high level of skills, awareness and training. A redundant system for dealing with time limits is required. Whether allowance of the request for re-establishment of rights will have a minor influence on the legal situation for third parties, is not an issue. The all due care is strictly applied, and according to recent decisions, have become even stricter.
By Kristine Rekdal, M.Sc. Physics, Bryn Aarflot AS
Published in Managing Intellectual Property, September Edition 2009
