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How to file in the Faroe Islands and Greenland




Mikael Mikkelsen, Troels Peter Rordam and Mette Bender of Awapatent offer advice for filing in the Faroe Islands and Greenland, where there is still some variation from Danish legislation

Patenting in the Faroe Islands, and in particular in Greenland, is increasing in importance as economic interest in the Arctic region grows. However, companies who want to pursue their business opportunities and protect their IP rights in the Faroe Islands and Greenland should know that patent protection in these two provinces can only be obtained by filing a national Danish patent application or, alternatively, by direct entry into Denmark in the national phase under the PCT provisions.

Contents

40 years of the EPC

Analysing 40 years of the EPC: What has it done for us?
Interview: Benoît Battistelli on 40 years of the EPC
The story of the EPC: a timeline
Interview: Francis Gurry on the EPC at 40
Interview: Jesper Kongstad on the EPO's European spirit
Seven organisations assess the impact of the EPC

Regional chapters

Social media in Europe: tread softly online
What the unitary patent will mean for business
How to file in the Faroe Islands and Greenland
The German Supreme Court on multiple representations
A successful beginning for Italy’s new opposition system
Mexican and European filing compared
Utility models vs industrial designs in Poland

Intellectual property rights are well protected and respected in Denmark and its two autonomous provinces, the Faroe Islands and Greenland. Denmark, the Faroe Islands and Greenland are members of WIPO and are party to most international treaties and agreements on IP rights, such as the Paris Convention, the Patent Prosecution Highway (PPH), and the Nordic Patent Institute. Denmark, unlike the Faroe Islands and Greenland, is also a member state of the European Union and a contracting state to the European Patent Convention (EPC). Therefore, most of the legislation governing IP rights in Denmark has been harmonised with the rest of Europe. However, the current legislation governing IP rights in the Faroe Islands and Greenland is not in full conformity with the current Danish legislation.

Patents

Denmark is a contracting state of the EPC. Thus, a Danish patent can be obtained by the direct filing of a Danish patent application or a European patent application or through the PCT system by a Danish or European entry. However, despite the fact that Denmark is a contracting state to the EPC, a granted European patent validated in Denmark does not confer any patent rights in the Faroe Islands or in Greenland.

Patent protection covering the Faroe Islands and Greenland is only through a national filing in Denmark or entry into Denmark via the PCT route – not through the filing of a European patent application.

Therefore, in order to obtain valid patent rights in the Faroe Islands and Greenland, it is essential to file a national Danish patent application. This may be achieved via, for example, the PCT system by means of a Danish entry (not a regional European entry) into the national phase. Furthermore, if patent protection in the Faroe Islands is needed, a special time limit of 20 months must be observed, calculated from the international filing date (or, if priority is claimed, from the priority date). This is because the Faroe Islands has not acceded to chapter II of the PCT system. The corresponding time limit for the rest of Denmark, including Greenland, is 31 months.

When filing a PCT application, applicants are automatically notified by the International Bureau about the existence of a 20-month time limit for national entry into Luxembourg, Tanzania and Uganda. However, this notification does not mention anything about a potential loss of rights regarding the Faroe Islands. Thus, applicants may be unaware that the 20-month time limit also applies to the Faroe Islands, and they may risk missing the time limit.

If the applicant fails to meet the time limit of 20/31 months for national entry into Denmark, and therefore loses the right to patent protection in the Faroe Islands/Greenland, re-establishment is available. A request must be filed within two months from the removal of the obstacle causing non-observance of the time limit, though no later than one year after the expiry of the time limit. Further, the omitted act must be completed and a fee prescribed for re-establishment of rights must be paid within the same time limits. The Danish Patent Office (DPO) applies the all due care criteria if the applicant's rights are to be re-established. Evidence of all due care must be provided in order to convince the Danish PTO to allow a request for re-establishment. This means that, in order for the Danish PTO to approve a request for re-establishment, it is not sufficient to argue that the applicant has not been informed (for example, by a failure to do so on the part of the authorities) about the special time limits of 20/31 months for national entry into Denmark that apply for the Faroe Islands and Greenland respectively.

Danish patent applications are filed at the Danish Patent and Trademark Office, which then performs a novelty search and a patentability examination. In the case of a PCT application, the substantive examination of a Danish patent applications relies, where possible, on the written opinion or the International Preliminary Report on Patentability issued during the international phase. The practice of the Danish PTO in relation to the assessment of patentability of an invention resembles that of the EPO. It has also been observed that, in most cases, the Danish PTO will await a communication from the EPO in a corresponding case before issuing its own office actions.

The costs associated with the filing of national Danish patent applications are relatively low. The only fees that have to be paid upon filing are an application fee (plus additional claim fees, if the patent application contains more than 10 claims) and renewal fees in respect of the first two fee years; these are not due, however, until the fee in respect of the third fee year is to be paid. This means that, beyond the renewal fees, there are no other fees that need to be paid until the Danish PTO issues a decision to grant a patent. In particular, there is no examination fee that must be paid to the Danish PTO, as the request for examination is an integral part of the filing of a Danish patent application. Moreover, it is possible for the applicant to request that the prosecution of a Danish patent application should be in the English language. Once the Danish PTO has decided that the patent application can lead to a patent, a translation of the claims is required. Also, if protection in the Faroe Islands is sought, the text of the patent application must be translated in its entirety, preferably upon filing, or within an additional two-month period.

The Danish PTO participates in the bilateral co-operation regarding the so-called Patent Prosecution Highway (PPH), which allows the applicant to benefit from an expedited processing of the patent application if another participating patent office has already performed a search and examination for the same invention. At present, the Danish PTO has entered into agreements on PPH programmes with the patent offices of the United States, Canada, Japan, Korea, Israel, Russia and China.

For Danish patent applications, it is possible to file divisional applications until grant of the parent application. In other words, the Danish Patents Act does not contain provisions similar to those of the EPC, mandating that divisional applications have to be filed within special time limits. In addition, the Danish Patents Act contains provisions for filing derived applications based on new subject matter disclosed by the applicant during examination. The date when the new subject matter was disclosed for the first time becomes the filing date of the derived application, and it is possible to claim priority from these derived applications. The applications may be considered as being comparable to US continuation-in-part applications.

Lastly, Denmark is party to the Nordic Patent Institute (XN), which can act both as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA). The institute also performs Supplementary International Searches (SIS).

Utility models

Greenland has ratified the Danish Utility Models Act, whereas the Faroe Islands has not. Hence, a Danish utility model covers Greenland only, and not the Faroe Islands. A utility model covering Greenland can be derived from a national Danish patent application. With regard to Danish utility models, it is worth noting that the requirements for the creational step of utility models are less stringent than the inventive step requirements that apply to patents. The whole utility model specification must be translated into Danish, but examination of utility models is not required before registration. The term of a Danish utility model is 10 years calculated from the filing date.

It is strongly recommended that a utility model should be examined in order to provide a basis for a successful injunction; Danish case law has shown that granted and examined utility models can constitute a relatively strong means for defence against possible infringers. Utility models can be successfully enforced on a similar basis to patents, including the possibility for injunctions. Finally, it should be noted that third parties may also request examination of Danish utility models.

Denmark, including the autonomous provinces of Greenland and the Faroe Islands, allows double patenting. Thus, it is possible to simultaneously protect an invention in, for example, Greenland, by both a utility model and a granted Danish patent, or in the Faroe Islands by two patents that have the same scope of protection.

Trade marks

Both the Faroe Islands and Greenland have ratified the Danish Trademark Act. Therefore, a national Danish trade mark will automatically cover both the Faroe Islands and Greenland, and no further action is required to obtain protection in these territories.

Neither Greenland nor the Faroe Islands is a member of the European Union, and therefore a Community Trademark Registration does not extend to these territories. Neither territory was included when Denmark acceded to the Madrid Protocol in 1996, but this reservation was withdrawn with effect for Greenland on January 11 2011. Therefore, international registrations designating Denmark made after January 11 2011 will have effect in Greenland, although this is not yet the case for the Faroe Islands. The only way to obtain trade mark registration in the Faroe Islands at this point in time is through a national Danish trade mark registration.

The initial term of the registration is 10 years from the registration date, after which the registration must be renewed every 10 years. Five years after the registration date, the trade mark becomes subject to use requirements. After the initial five years, the trade mark thus becomes vulnerable to cancellation actions based on non-use. If use of the trade mark cannot be proven, the trade mark will be cancelled either in its entirety or for the specific goods or services for which use cannot be proven.

Note that it is also possible to obtain trade mark rights through use in Denmark.

Design

As is the case with trade marks, both the Faroe Islands and Greenland have ratified the Danish Design Act, and a national Danish design registration will therefore automatically extend to both territories without the need for any further action.

As neither Greenland nor the Faroe Islands is a member of the European Union, Registered Community Designs do not cover these territories. Greenland acceded to the Geneva Act of the Hague Agreement on January 11 2011, so designations of Denmark after this date will also enjoy protection in Greenland. The Faroe Islands have not yet acceded, so the only way to obtain a registered design here is through a national Danish registration.

The requirements for obtaining a design registration in Denmark are fairly simple. The design must be novel and it must have individual character.

For novelty, there is a 12-month grace period within which the proprietor of a design can test the market value of the design by publishing the design (for example, by putting it on the market). This will not damage the novelty of the design according to Danish law. Care should be taken, however, as the proprietor risks damaging the chances of registering the design abroad.

Once a design has been registered in Denmark, it has a maximum lifespan of 25 years. It must be renewed after every five-year period in order to remain in force.

Note that unregistered designs enjoy protection in Denmark in accordance with EU regulations. The maximum span of protection for unregistered EU designs is three years.

Mikael Mikkelsen
 

Mikael is a patent attorney at Awapatent's Copenhagen office. He drafts and prosecutes patent applications worldwide and has expertise in preparing freedom-to-operate, validity, and non-infringement opinions. He has also assisted many pharmaceutical companies in Nordic court cases. Mikael has built up expertise in the procedures for SPCs for plant protection products and pharmaceuticals in Denmark, and he works mainly within the fields of clean-tech, life-science and pharma.


Troels Peter Rordam
 

Troels Peter Rordam is a European patent attorney and certified Danish patent agent at Awapatent's Copenhagen office. He drafts and prosecutes patent applications worldwide and has been working with strategic patent issues. He has built up experience particularly within drafting and prosecuting Danish utility models and prosecuting patent applications under the Patent Prosecution Highway. Troels works mainly within the fields of mechanics, electronics, physics and optics.


Mette Bender
 

Mette Bender is a trade mark attorney and lawyer at Awapatent's Copenhagen office. Mette specialises in trade mark, design, domain name and marketing law, and advises on all issues related to these areas, from drafting of IP strategies and selection of trade marks and other IP rights to prosecution and litigation concerning IP rights and their exploitation.



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