Local expertise a decisive factor

Frank Petersen, IPR Manager at ECCO and former IPR Director at Danfoss

"We have chosen to use Nordic Patent Institute as we consider it important to maintain and develop patent expertise in Denmark and the Nordic countries. Our industries need "local" people with knowledge of the patent system".

At ECCO, he and a colleague are responsible for the complete IP portfolio for the footwear concern, including patents, designs and trademarks in more than 100 countries. Since the New Year, ECCO has filed five PCT applications at Nordic Patent Institute.

ECCO has chosen to use Nordic Patent Institute primarily for reasons of industrial policy. According to Frank Petersen, local Danish patent expertise is important, and this can best be maintained by using the Nordic route for PCT applications.

"Nordic Patent Institute gives us an extra alternative amongst available PCT Authorities. We expect the same quality as if we had for example used EPO as Search and Examination Authority. And perhaps the search report will be delivered a little faster? We also take advantage of the fact that Nordic Patent Institute is a new Authority interested in demonstrating what it has to offer – so we are pleased to put it to the test", says Frank Petersen.

ECCO's experience of Nordic Patent Institute is very recent, it is therefore too early to give a comprehensive evaluation, explains Frank Petersen:

"But for the three applications, for which a search has been carried out and a written opinion given, the report was delivered within the stipulated time frame. Although the written opinion may not be delivered any faster than by other PCT Authorities, we expect delivery within the period of time required by regulations, which is usually about 15 months after the priority date."

It is important for ECCO's future planning, that they can be certain that deadlines are adhered to, and in Frank Petersen's experience, this is not always the case with other PCT Authorities.

"The same applies to the International Preliminary Examination Report in Chapter II. If the report is delivered immediately before the 30-month follow-up, there may not be time to change the patent application before the national phase. However if it is delivered promptly, the evaluation given by the Preliminary Examination Report may be taken into account," he reports.

Finally, Frank Petersen emphasizes the practical aspect of being able to carry out all their IP affairs in one place:

"We use the Danish Patent and Trademark Office to file our patent applications claiming priority, we use them as Receiving Office, and then we use Nordic Patent Institute as PCT Search and Examination Authority. Everything at the same physical address – making it all a little simpler. And of course they also speak Danish on the phone...."

  • Did you know that by using the Global PPH system, a positive PCT report from Nordic Patent Institute can give you the possibility of fast-tracking a corresponding application at 16 other patent offices?
  • Did you know that for a small additional fee, we can add a claim chart to your validity search report, conveniently mapping the relevant references against the claim features for clarity purposes?
  • Did you know that both the Norwegian and the Danish Patent Offices, which perform all searches for Nordic Patent Institute, have over 100 years' experience with patent searching?
  • 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?