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Results from an earlier search can give refunds

Nordic Patent Institute takes into account results from earlier search and refunds part of the search fee.

In certain cases Nordic Patent Institute as an International Search Authority (ISA) will refund part of the search fee paid by the applicant in connection with the international application.

The applicant may request, in Box No. VII in the request form PCT/RO/101, that Nordic Patent Institute take into account the results of an earlier search. The search report must be enclosed and concern the same invention. If the said search report can be used to reduce the extent of the ISA search under PCT Chapter I, then Nordic Patent Institute shall refund 25% or 50% of the search fee (Rule 16.3 and Rule 41) dependent on the type of report and under certain conditions. Normally, the applicant has claimed priority based on the earlier application.

Relevant earlier search reports are:

1. Search report issued by a national authority for an earlier application, for which priority is claimed:

  1. If the report for the earlier application is issued by the national authority of DK, NO, IS, SE, or by the EPO, the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding.If the Danish Patent and Trademark Office in DK or the Norwegian Industrial Property Office in NO has performed the search for the earlier application, it is not necessary for the applicant to submit the search report to the Institute.

    If the conditions are met, the refund is 25% of the search fee.
     
  2. If the report for the earlier search is issued by a national authority other than DK, NO, IS, SE or the EPO, the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding. In addition the search report must contain information regarding the field of search and an indication of relevance for the cited documents in relation to the separate claims (in the earlier application).In each individual case it is left to the examiner conducting the search of the international application to decide whether the earlier search report can be used to an extent which justifies a fee refund.

    The refund for making use of earlier search is 25% of the search fee.

2. International Search Report (ISR) or International Type Search (ITS) report issued by Nordic Patent Institute or another ISA:

    The conditions for refund are that the international application and the earlier application must concern the same invention and the claims of the international application and the earlier application must be essentially the same or corresponding.

    If the ISR or the ITS is issued by Nordic Patent Institute, it is not necessary for the applicant to submit the search report to the Institute, and it is sufficient that the applicant refers to the ISR or the ITS. If the conditions are met, the refund is 50% of the search fee.

 

  


Last update 10 December 2010
  • Did you know that when carrying out their PCT searches, our examiners always search Nordic (Norwegian, Danish, Swedish and Finnish) material?
  • Did you know that in validity searches performed by Nordic Patent Institute, references of particular relevance or obviousness-type references were found in about 70 % of the tasks given to us?
  • Did you know that we have started PCT-PPH pilot projects with USPTO and JPO allowing applicants who have chosen Nordic Patent Institute to request a fast-track examination at the USPTO and JPO?
  • Did you know that in certain cases Nordic Patent Institute will refund up to 50 % of the PCT search fee paid by the applicant, if the results from an earlier search can be used to reduce the extent of the ISA search?
  • Did you know that all our examiners are educated at an MSc level or higher, that they have extensive patent examiner training and can search in minimum English, French, German, and the Scandinavian languages?
  • Did you know that when carrying out the prior art searches our examiners have access to more than 850 databases?
  • Did you know that the combined languages skills of our examiners bring our searching fluency to over 30 languages?
  • Did you know that all the prior art searches done by Nordic Patent Institute are performed by the highly qualified and experienced PCT examiners at the Danish and Norwegian Patent Offices?
  • Did you know that our examiners spend about 60 % of their time examining patent applications and 40 % of their time providing prior art searches and assessments to businesses and IP law firms?
  • Did you know that when it comes to the timeliness of ISAs in transmitting ISRs, Nordic Patent Institute has from the beginning been among the best ISAs?
  • Did you know that Swedish nationals and residents can use Nordic Patent Institute as an ISA and/or IPEA when filing a PCT application?