A Norwegian patent application can be extended to other countries by so-called priority from the original application(s). In other words, the extended application may refer back to the first application and form basis for the same rights as the Norwegian application. In order to obtain this, the application must be extended by 12 months from the earliest Norwegian application. A publication of the application in the meantime does not affect the rights to obtain priority.
The process of evaluating extension of the patent application abroad should include several issues and which countries to apply. You should map the countries that represent interesting markets, where possible competitors are located (to block competing production) and where you are likely to realize a license agreement.
International application (PCT application)
In the 1970’s, an international agreement about international patent applications, hereinafter referred to as the PCT system, emerged. In short terms, the PCT system enables a centralized case treatment, whereas the national patent authorities still have the conclusion in the end.
A PCT application lasts from its filing (usually 12 months after the filing of the Norwegian application) until the Norwegian application is 30 months old. We have prepared a timeline (Norwegian) which illustrates the application progress in time. Cost estimates are also included in this simplified illustration.
More than 140 countries are members of the PCT system, and when the original Norwegian application has become 30 months old, the PCT application must be converted into national (or regional) applications in the countries you want to obtain patent protection. Alternatively, you may naturally abandon the PCT application and limit the patent to Norway. When you convert the PCT application into a national one, e.g. Brazilian application, the filing date in Brazil will be the same as the application date of the PCT application.
Certain states can be appointed collectively. The most relevant here is the European patent cooperation (EPC), which comprises the EU member states, and a few other countries. The treatment of a regional application is performed centrally up to allowance or refusal, and the allowed patent will then be converted into national patents in the selected states. The benefits of a regional application are lower price and simplified case treatment.
Direct national phase
If a patent application is to be extended to countries which are not a member of the PCT system, the filing must be done in the respective countries. The same applies if you chose not to utilize the PCT system. In that case, the national phase must be effected directly in the countries in question and within 12 months from the filing date of the Norwegian application.
When the 12 months limit is approaching, it is often uncertain both where to file and how to finance the process. In this case, you should chose the PCT alternative and postpone the relatively large investments connected with the national phases. However, if you in an early stage know that you are going to apply only in a couple of countries, the PCT alternative is less attractive.
By using a PCT application, the applicant will in practice postpone the time of national phase (in each country in question) with up to 30 months from the filing date of the Norwegian application. Then, the PCT system may be looked upon as a purchase of extra time.
Regrettably, the patent costs usually occur long before the project has produced any income or profit. The patent process should therefore be looked upon as an investment which may give a profit at a later stage. The investment is unsecure, since it both depends on the project as s whole and the result of the patent application. The original application is usually not allowed when you have to assess international filing.
Preliminary patent search: NOK 7.000 – 10.000* Norwegian patent application, including preparation of description, claims, illustrations, and filing: NOK 17.000 – 35.000* Handling costs vary from case to case and is difficult to estimate.
Allowance costs: ca. NOK 3.500*. Annuities constitute from NOK 2.000* to 6.000* a year (gradually increasing during the 20 year period).
International filing of a patent application is rather expensive. As a rule of thumb, a national filing abroad costs a little more than the Norwegian application, plus translation. In order to obtain a maximum exploitation of the PCT system (from the filing date to 30 months), the applicant should expect to spend about NOK 50.000*.
* All prices given without VAT