Scandinavia: Patent pledges now registrable
On February 8 2012, the Norwegian Department of Justice proposed new legislation regarding the establishment of pledges in IP rights. The bill was introduced by the government in the form of a proposition a year later (Prop 101 L (2013–2014), and sanctioned on January 1 2015, the sanction process taking a lot longer than most IP practitioners had expected.
The new legislation came into force on July 1 2015, and it is now possible to establish a pledge in patents, patent applications and patent licences in Norway, (see the Norwegian Mortgage Act section 4-11). New rules also require that anyone who has rights under a patent must record these to be ensured protection. The priority of the pledge established is the time of pledge registration in the official patent register.
The main purpose of the new freedom to pledge is to make it easier for start-up businesses with no possibility of financing their business in other ways, and other companies that need funds to develop new ideas, to acquire capital by collateral in their patents, patent applications and licences.
It is, however, still not possible to establish a pledge in registered trade marks, registered designs or copyrights. These rights can only be pledged through the establishment of non-possessory pledges on operating accessories (Norwegian Mortgage Act section 3-4).
How to register a pledge?
For collateralisation to be registered in the patent register, a written notice must be submitted, either in paper format or electronically via email or Altinn (the Norwegian public reporting portal). The Patent Office requires documentation in order to register the pledge. A copy of the pledge agreement will, however, normally be sufficient documentation.
The fee for registration of a mortgage is kr500 ($60) for the registration of a mortgage in a patent, a patent application or a patent licence. If several patents, patent applications or patent licences will serve as security for the same claim, the fee is kr100 for each record beyond the first.
Kristin Kjærheim Astrup