Greenland has recently been on everyone’s lips — yet where the media and politicians see a geopolitical crisis, a patent attorney asks a different question: how does the local intellectual property protection system actually work? As it turns out, this system — although marginal in global practice — provides some very interesting solutions, illustrating the complex interaction between national systems and the European and EU frameworks.

 

 

 

How to obtain patent protection in Greenland

 

First, it should be emphasised that Greenland has been an integral part of Denmark since 1953. Since 1979, however, its autonomy has been gradually expanded. In particular, it must be noted that EU treaties do not apply to Greenland: in 1982, Greenlanders voted to leave the European Economic Community (the predecessor of today’s European Union). Greenland retains the status of an overseas territory associated with the EU.

A patent covering Greenland can be obtained only by filing an application with the Danish Patent and Trademark Office (DKPTO). When filing such an application, the applicant must expressly request that protection be extended to the territory of Greenland. There is no separate Greenlandic patent office.

Another option is to file an application under the Patent Cooperation Treaty (a PCT application). Under the PCT route, the applicant files a single international application and subsequently seeks protection in individual national jurisdictions. Greenland is not a party to the PCT and cannot be designated separately in the national phase. It is necessary to designate Denmark and expressly request that protection be extended to the territory of Greenland.

 

Greenland is not a party to the EPC

 

In Greenland, it is not possible to rely on protection conferred by a European patent validated in Denmark. This is because Greenland is not covered by the European Patent Convention (EPC). Pursuant to Article 168 EPC, any Contracting State may declare, in its instrument of ratification or accession, or at any later time by written notification to the Government of the Federal Republic of Germany, that the Convention shall apply to one or more territories for whose external relations it is responsible. Denmark has not made such a notification with respect to Greenland or the Faroe Islands.

Thus, if company X files an invention with the EPO and obtains a European patent, and subsequently validates it in Denmark, protection does not extend to Greenland. It is possible to bring infringement actions before Danish courts with respect to acts committed by company Y in Copenhagen, whereas such actions are excluded with respect to acts committed by company Z in Nuuk. This gives rise to the significant issue of the admissibility of double protection.

Article 139 EPC provides: “Any Contracting State may prescribe whether and under what conditions an invention disclosed in both a European patent application or European patent and in a national patent application or national patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications or patents.” Many states, such as Germany or France, have introduced a prohibition of double protection in their legislation. As stated in the EPO Guidelines for Examination, “it is a procedural rule generally accepted in most Contracting States that the same applicant cannot be granted two patents with claims directed to the same subject-matter.” Denmark, however, has made use of the possibility under the Convention to depart from this practice.

In line with the above Convention provision, it is possible in Denmark to hold both a European patent and a national patent in parallel. This is justified given that only a national patent provides protection in Greenland. Danish courts retain jurisdiction over actions concerning national patents.

 

Greenland is not part of the UPC system

 

A similar situation applies to the unitary patent. Denmark is one of the EU Member States participating in enhanced cooperation in the field of the unitary patent. In 2014, a referendum was held on joining the unitary patent system, with 62.5% of voters supporting ratification of the Agreement on a Unified Patent Court. Moreover, Copenhagen hosts a local division of the Court of First Instance.

Greenland — like the Faroe Islands — is not covered by the unitary patent system. Here again, attention should be drawn to the departure in Danish law from the prohibition of double protection. It is possible to be entitled simultaneously to a unitary patent (which does not extend to Greenland) and to a national patent (which extends to Greenland, provided that this was expressly requested in the application).

 

Greenland is not a party to the Paris Convention

 

Furthermore, it should be emphasised that Greenland itself is not a party to the Paris Convention for the Protection of Industrial Property of 1883. One might therefore conclude that claiming Paris Convention priority is not possible in the case of Greenland.

However, protection is based on Danish law, and Denmark is a party to the Paris Convention. Since, in practice, the application is filed with the Danish office, the priority principle will apply — provided that the conditions laid down in Danish law are met.