Patent Litigation 2019 Comparisons

Last Updated October 14, 2019

Law and Practice

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Advokatfirmaet BAHR AS has an IP department consisting of 11 lawyers specialised in IP dispute resolution, IP transactions, and advising clients on all aspects of IP. All of BAHR’s lawyers are located in Oslo, Norway. BAHR is one of the best-known and most international firms in Norway, and has been successfully representing and advising leading global and Norwegian clients since 1966, with a strong emphasis on teamwork. The firm’s key practice areas in patent litigation are within life sciences, focusing on pharmaceutical patent disputes, the oil and gas sector, and offshore and maritime technology.

The Norwegian legal system provides two different types of intellectual property rights for the protection of inventions: patents and trade secrets. These types of intellectual property rights are based on statutory law, as further interpreted in case law.

Patent protection is available for inventions that are new and have inventive step compared to prior art, and are suited for industrial use. There are exceptions on what is not deemed to be a patentable invention, such as a discovery or an animal species.

At present, there is no definition of a trade secret in Norwegian statutory law. In case law and judicial theory, the term is believed to include information that is specific to a business, of significance for the business, and that the business has taken steps to keep secret.

The Norwegian legislature is incorporating EU Directive 2016/943 into Norwegian law, and a new Trade Secret Act that will replace the current provisions has been proposed.

A patent right arises when and if a patent application, filed by the inventor or otherwise rightful owner of the invention, is granted. The Norwegian Industrial Property Office (NIPO) is the receiver of Norwegian national patent applications. This also applies if an applicant in Norway (or a Norwegian citizen elsewhere) wishes to file an international patent application according to the Patent Co-operation Treaty (PCT) or obtain a European Patent, cf the European Patent Convention (EPC).

A national patent application must include a detailed description of the invention, patent claims, and the application form. After payment of the application fee, NIPO controls whether the formal requirements are met. If they are not, the applicant will receive a notification with a short deadline for rectifying any formal discrepancies.

Within five-seven months the applicant will receive NIPO’s first assessment of the patentability of the invention. This includes NIPO’s first assessment of the available prior art. The applicant will be given the opportunity to rectify any deficiencies identified by NIPO within a set deadline. Examples of deficiencies may be that certain or all patent claims are not novel or do not have inventive step, that certain patent claims may only be granted in an amended form, or that the applicant needs to make certain format changes to make the patent suited for publication. If the applicant does rectify the deficiencies, the patent may be granted. Often NIPO will continue to assess the application based on the applicant’s response. If the applicant does not respond within the deadline, the application may be denied. However, if the applicant does respond and complies with NIPO’s request within four months after the deadline, the application may be reopened by paying a fee.

Once all deficiencies are rectified and NIPO considers the requirements for patentability to be present, the application may be granted if the applicant still desires so and pays the fee for granting. After payment of this fee, it is published in the Norwegian Patent Gazette that the patent has been granted. The patent is also included in the patent registry.

If an application for a European patent is filed with NIPO, NIPO forwards it to the European Patent Office (EPO). Once a European patent is granted, it must be validated in Norway. The holder must apply for validation, which includes a translation of the patent into Norwegian, within three months of EPO publishing the European patent. For patents published by EPO in English, it is sufficient to translate the patent claims into Norwegian. For patents granted by EPO in French or German, the title and description must also be translated into either English or Norwegian. A validation fee must be paid.

For PCT applications, an application filed with NIPO will be forwarded to the applicable international examination authority as chosen by the applicant. The applicant may choose the Nordic Patent Institute (a co-operation between the patent authorities in Denmark, Norway and Iceland), the Swedish Patent and Registration Office or EPO as the international examination authority. If the applicant chooses the Nordic Patent Institute, it will typically be NIPO assessing the application. During the international processing of the PCT application, the applicant may apply for provisional protection in Norway. After the international processing is completed, the applicant must extend the application to Norway if the applicant wishes to obtain patent protection in Norway. Normally, an applicant will be allocated a different case processor at NIPO for the national phase than for the international phase, if the applicant had chosen the Nordic Patent Institute as the international examination authority. Once granted, the patent has the same status as an ordinary national, Norwegian patent.

To maintain a Norwegian priority date on a patent application in other jurisdictions, the applicant must apply in other jurisdictions within 12 months from filing its Norwegian application.

If a patent application is denied, the applicant has a right to appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). KFIR’s decision may further be appealed to the Oslo District Court if the decision from KFIR goes against the applicant.

There is no grant procedure for trade secrets. Trade secret protection arises from meeting the requirements for such protection, and there is no application for or registration of the right.

Statistics from NIPO state that the average duration of the grant procedure for a national patent is 3.6 years.

The application is published 18 months after the filing date. All public documents related to the grant procedure, including correspondence with NIPO, are subsequently published online. If the applicant withdraws the application before 18 months have passed, it does not become public.

The inventor does not need representation to initiate grant proceedings. Nevertheless, representation is often sought, especially by professionals and for complex patent applications. The average costs to grant differ for small- and medium-sized enterprises, which receive a reduced rate, and other enterprises. For other enterprises, the application and grant costs total NOK5,850 for patents with up to ten patent claims and up to 14 pages. This does not include the assistance of a patent attorney, costs of translation and other costs. The total costs for a single Norwegian patent application filed with the assistance of representation will vary, but may be estimated to start at approximately NOK60,000.

A granted patent is valid for 20 years after the filing date of the first application. Trade secrets are valid for as long as the information meets the requirements for being a trade secret.

The rights conferred by a patent are negative, meaning that the patent-holder does not necessarily have the right to exploit the invention covered by the patent commercially, but may stop others from doing so. Therefore, a patent-holder has the right to control who may lawfully exploit the invention commercially, through licences, if any.

There are certain exceptions to the patent-holder’s exclusive right to exploit the invention commercially. These naturally follow from the limitation of commercial use. Notably, scientific experiments and (non-commercial) research are exempted. The patent rights may be exhausted in a specific case, if the patent-holder has already sold a product on the market or with the holder’s consent. If a third party were using the patented invention prior to the priority date for the application, but such use was not publicly known, that specific third party may continue its use of the invention on the same terms as previously, as long as such use does not constitute abuse in regards to the patent-holder/applicant.

A patent-holder may obtain an injunction to stop others from exploiting the invention covered by the patent commercially, ie, infringe the patent-holder’s rights. Additionally, a patent-holder has a right to receive damages incurred as a result of infringement. An injunction against on-going and future infringement and a request for damages may be sought in the same court proceedings. Also, if the requirements for seeking an interim injunction are met, a patent-holder may opt to seek an interim injunction to stop on-going infringement.

Patent infringement is a criminally punishable offence, although it is uncommon that patent infringement is criminally pursued by prosecutors.

A patent is viewed as a property asset of the holder, so that the holder has the right to do with it what one may normally do with assets, such as sell or assign it, pawn it, secure other assets to it, choose to let the patent registration lapse, etc. If there are any licensing agreements, the patent-holder’s rights to dispose of the patent as an asset may be limited by agreement.

As for the patent-holder’s obligations, annual fees must be paid to uphold the registration. The annual fee increases incrementally as the term of the patent goes by, so that maintaining the patent is at the most expensive right before the term of the patent expires.

A holder of a trade secret has the right to an injunction and/or damages if a trade secret has been misappropriated. Misappropriation of trade secrets is also a criminally punishable offence.

The holder of a trade secret has a right not to make it available as evidence in court, although the court may nevertheless decide, after reviewing the issue, that it is necessary to submit the trade secret. Often it will then be submitted pursuant to a confidentiality regime.

Certain patents may enjoy a supplemental period of protection in the form of a supplementary protection certificate (SPC). This applies to patents for medicinal products and patents protecting plant protection products. The EU SPC Regulations for medicinal and plant protection products are implemented in Norwegian law.

Medicinal products that are indicated for treatment of children may be granted an additional paediatric extension of six months after the expiry of the SPC.

To be granted a SPC or a paediatric extension, the patent-holder must hold a valid marketing authorisation for a medicinal or plant protection product. The application must be filed within six months of receiving the first marketing authorisation for the product. The applicant must pay an additional fee.

As regards infringement or invalidity proceedings, third parties are deemed to have standing to sue even after the expiry of the basic patent if the holder has been granted a SPC and/or paediatric extension.

Anyone may file a protest to a patent application before the patent application has been granted, claiming that the invention is not patentable or that they are the rightful owner of the invention. The person submitting a protest does not become party to the proceedings, but NIPO shall take into account the protest when processing the application.

If a patent application is rejected, the applicant has several recourses. First, prior to the actual decision to deny, the applicant will receive a letter from NIPO stating that the application will be denied, and given the opportunity to argue why it should not be. The applicant may provide new documents in support of its application, or make changes to the application. One change may be to limit the patent claims. The applicant may then ask NIPO to review the application in light of the new information and/or amended application.

If the application is finally rejected, the applicant may appeal the decision to KFIR.  If the rejection is upheld by KFIR, the applicant may further appeal to Oslo District Court, and in second instance to Borgarting Court of Appeal if Oslo District Court upholds the rejection.

If the annual fee is not paid at the application stage, the application will be rejected. For a granted patent, the legal consequence of failure to pay is that the patent is deleted.

A yearly notification letter is sent out to registered holder of the application or granted patent. Therefore, it is important to make sure the entity registered as the holder is correct and updated. Failure to pay may be rectified within a deadline of six months, whereby both the annual fee and an additional late payment fee must be paid.

The owner of a technical intellectual property right may take several actions against infringement of the right. The owner may request an interim injunction from the applicable court of first instance. If the requirements for obtaining an interim injunction are not present, the owner may file a civil lawsuit to obtain an injunction and/or damages for harm caused by the infringement. The injunction, if granted, will normally order the infringer (and if relevant other defendant, such as a party participating in the infringement) to seize the infringement and not to infringe in the future.

The owner of a patent or trade secret may seek to have infringement stopped through criminal proceedings initiated by public prosecutors. To date such cases are uncommon.

Several remedies are available to third parties who wish to remove the effects of a patent after it has been granted.

Any third party may file an opposition to NIPO, arguing that the patent was granted on an incorrect basis. This must be filed within nine months of the grant date. An opposition may be based on believing that the conditions for patentability are not met, that the patent has been granted to the wrong person or that the patent is contrary to public order or morality. The possible outcomes of an opposition are that the patent is modified, cancelled or transferred to the rightful owner. There is no particular admissibility or standing requirement for filing an opposition.

After the time period for filing an opposition has passed, a third party wishing to remove the effects of a patent may file a claim for an administrative review from NIPO. There is no time limit for filing a request for administrative review, but it can only be filed once any opposition cases are processed, and as long as there are no on-going court cases regarding infringement or invalidity or a case of administrative patent limitation. The patent-owner will have the opportunity to respond to a request for administrative review. The outcome of an administrative review may be that the patent is found to be wholly or in part invalid or that the patent is held to be valid in its current form. The losing side of an administrative review may appeal the decision to KFIR.

Additionally, a third party may file an invalidity lawsuit. An invalidity lawsuit may even be filed after the expiry of the patent if the claimant has standing. Prior to the expiry of the patent, any third party is deemed to have standing to sue.

A request for a compulsory licence may be submitted either as a lawsuit or as a counter-claim before Oslo District Court, being the exclusive first instance venue, or to the Norwegian Competition Authority. One requirement for a compulsory licence is that the third party seeking it has already attempted to obtain a voluntary licence from the patent-holder on “reasonable terms.”

A third party may ask the court for a declaration of non-infringement if the third party has standing, which will be the case if the third party has a need for declaring whether its planned operation or business will infringe a patent or misappropriate a trade secret.

In first instance, only Oslo District Court has jurisdiction to hear patent cases regarding the right to an invention, judicial review of a decision to reject or cancel a patent, patent limitations, invalidity, the transfer of intellectual property rights prior to filing of a patent application or grant of a patent, compulsory licence, requests for administrative review or infringement. Further, for patent-holders or applicants that are not based in Norway, Oslo District Court is the appropriate venue.

One notable exception to the exclusive jurisdiction of Oslo District Court is the jurisdiction to hear requests for interim injunctions. For such injunctions, any court that is the correct venue according to the rules of civil procedure has jurisdiction to hear the case.

In second instance it is the Borgarting Court of Appeals that has exclusive jurisdiction to hear cases appealed from Oslo District Court. If the first instance case did not fall within the exclusive jurisdiction of Oslo District Court, the appeal will be heard by the applicable second instance court. There is no need for a leave of appeal for appeals to the Courts of Appeals.

In the third instance, the Norwegian Supreme Court is the correct venue. A leave of appeal is required from the Supreme Court. Patent cases are not often heard by the Supreme Court, but the Supreme Court has handed down decisions in patents cases that are significant. For instance, the Supreme Court concluded that there is a doctrine of equivalence in patent infringement cases in the case Rt. 2009 page 1055.

KFIR is a specialised body for the resolution of intellectual property disputes. It only hears appeals of decisions made by NIPO. The chairs and board members of KFIR consist of a combination of people who are legally trained and have technical expertise. An applicant, patent-holder or opponent whose case was lost at KFIR may appeal the decision to Oslo District Court.

It is customary that the claimant issues a warning letter prior to initiating a lawsuit, unless specific reasons deem otherwise. Also, the Norwegian Civil Procedure Act provides that the claimant shall send a notice of litigation prior to taking legal steps. Sending a warning letter or a notice of litigation is not a formal pre-requisite, as the court will not have rejected the case if it has not been sent. However, not sending a warning letter or a notice of litigation may have implications for the damages awarded including remuneration of legal costs.

Parties in intellectual property matters do not need to be represented by a lawyer. There are no specific rules regarding representation in intellectual property matters, and the general rule in Norwegian proceedings is that parties may represent themselves. Nevertheless, it is uncommon for a party in an intellectual property matter not to be represented by a lawyer.

Interim injunctions are available in intellectual property cases. For an interim injunction to be granted, it must first be proven by a preponderance of the evidence that there is infringement of the patent in question. Second, an interim injunction must be necessary because pursuing the claim otherwise will be considerably impended, to avert considerable loss or inconvenience, or to avoid violence that the conduct of the defendant gives reason to fear.

In any case, the interim injunction will not be granted if the loss or inconvenience to the defendant is clearly disproportionate to the interests of the claimant in having the interim injunction granted. There is a notion in patent case law supporting the view that intellectual property rights (IPRs) hold a value beyond their economic value and that effective protection of IPRs includes the ability to stop infringements quickly through interim injunctions when the requirements for interim injunctions are present. This was concluded in a case at the Supreme Court (Rt. 2003, page 1165), regarding copyright protection to a translated version of a published book , and other case law supports that the same applies for patent rights. If an interim injunction is granted, it is normally in place until a decision regarding a permanent injunction is handed down or if the right in question expires.

There is a specific provision allowing for interim injunctions to stop the import or export of products that will infringe an intellectual property right, when the goods are in the control of the customs authorities, even if the receiver of the products is unknown. Such an interim injunction obliges the customs authorities to retain the goods in question for the duration of the interim injunction.

To protect itself a potential opponent may require a security bond to be posted by the intellectual property owner, to ensure payment of the opponent’s potential loss. A potential opponent may not file protective briefs with courts prior to being named a defendant in a specific case.

A person who believes it has the right to a patented invention must file a lawsuit within one year of becoming aware of the granting of the patent and the other circumstances relevant for the lawsuit. If the patent-holder acted in good faith when the patent was granted or assigned to the current holder, the lawsuit must be filed within three years after the grant or assignment.

For a claim for damages the general limitation period of three years will apply.

There are mechanisms by which a party to an intellectual property matter may obtain relevant information and evidence from the other party or a third party. After the initiation of a lawsuit, a party may request disclosure of relevant information from the other party. The other party may reject such requests under certain circumstances, eg if the information is covered by attorney-client privilege or contains a trade secret. In the latter, the court may decide that the information shall be disclosed, but this is normally with confidentiality measures.

There are rules regarding obtaining and securing evidence outside of a court case and the right to information regarding infringement of intellectual property rights. The right to information also applies to third parties who have contributed to the infringement, been in possession of a product that infringes, have used a service that infringes, have offered a service that infringes, or otherwise have been designated by a person involved as being involved in the infringement. These persons may be compelled by a court of law, upon the right holder’s request, to provide information of the origin and distribution network for goods and services that the infringement concerns. A requirement is that there are reasonable grounds to believe that there has been an infringement of an intellectual property right.

An initial pleading must include the claim that is sets forth, including a statement of claim, the factual and legal basis for the claim and the evidence to support the claim. In addition, certain formalities such as the names of the parties, the name of the court and names of counsels, if known, shall be included. The initial pleading shall be provided in a form and degree that allows the defendant to take a stand regarding the claim and prepare the case.

There are no special provisions for lawsuits in intellectual property proceedings that differ from non-intellectual property proceedings.

It is possible to submit supplementary pleadings with additional arguments and evidence as long as the deadline for submission of evidence has not passed. This deadline is normally two weeks before the start of the oral hearing for the case, unless the court decides otherwise. It is quite common in intellectual property cases to set an earlier cut-off date, for example three or four weeks prior to the oral hearing. After the deadline for the submission of evidence, the parties will submit a closing brief that is normally quite short, and serves to sum up each side’s main submissions, evidence relied on, and statement of claim.

There is a possibility of filing a collective action, such as a class action, which, at least theoretically, also applies for intellectual property rights proceedings. Collective actions are permitted when several legal subjects have claims or obligations on the same or substantially the same factual and legal basis, and the claims may be processed by a court of the same composition and substantially pursuant to the same procedural rules. Here a class action is deemed to be the best way of processing the claims and a group representative may be designated. Collective actions are uncommon in Norway, and there have not been any collection action cases within the field of intellectual property to date.

An owner of a patent may not assert his or her patent rights in violation of the competition laws. Licence agreements may not include provisions in violation of competition law and patent-owners may not abuse a dominant position. Sometimes marketing law such as claims of conduct in violation of good business practices are combined with cases regarding intellectual property rights.

The parties to an action for infringement are normally the owner of the intellectual property right and the accused infringer. It is possible for a third party who is a licensee, but not an owner of the intellectual property right, to file an action for infringement. This applies both for exclusive and non-exclusive licensees that have standing in the case, and depends on the provisions of the licence agreement.

Third parties have the opportunity to participate in lawsuits by applying for a third-party intervention on behalf of one of the parties. The requirements are briefly that the third party must have an actual interest in the outcome of the case, or it must fall within the natural scope of business for an organisation. If the intervention is granted, the third party may file pleadings and take steps in the proceedings to support the party on whose behalf it is intervening.

There is also a rarely used opportunity for organisations and public organs to submit written pleadings of observations of public interest, without being a third-party interventionist.

There is a difference between direct and indirect infringement. Direct infringement is found when an infringer directly exploits a patented invention commercially. Indirect infringement is when a third party offers or delivers means to exploit the invention to someone who is not entitled to exploit the invention commercially.

The available remedies are the same for both types of infringement, although the damages for indirect infringement may be lower than in a comparable situation with direct infringement.

The scope of protection of a patent is determined by the patent claims, in light of the patent description and drawings. The Norwegian courts will typically award significant weight to Article 69 of the EPC and its Protocol.

A defendant may set forth several defences against infringement. It is common that a defendant argues that a patent is invalid in response to alleged infringement. An invalidity claim must be submitted in a counter-claim to the case, not simply as a defence.

A defendant may also argue that the defendant has prior-use rights, or that the patent rights have been exhausted in the relevant case.

That the requirements for a compulsory licence are present is not a valid defence against alleged infringement because a compulsory licence either needs to be given through a judgment from a court of law or from the Norwegian Competition Authority. It must therefore be asserted in a separate lawsuit for compulsory licence, or through a counter-claim to an infringement action.

Own patent rights might be a factor in an infringement case, but is not a defence against infringement, as own patent rights do not hinder infringement. Equitable estoppel is not a doctrine in Norwegian law. Laches are often argued as a defence, and may carry a significance in relation to damages awarded, but do not exclude the possibility of infringing in patent cases.

Experts are often, if not always, used in patent litigation. They may either be appointed by one of the parties as an expert witness, appointed by the court as a court-appointed expert, or serve as expert judges alongside the legal judge or judges. The role of the experts is to help the court understand the technical sides of the case. Experts often write a written opinion of the case in advance of the oral hearing, which is submitted as evidence.

In a case regarding patent infringement and/or invalidity, the terms of the patent’s claims are construed based on the normal, objective meaning of the terms, in the absence of evidence of another interpretation. There is no separate procedure as the interpretation is part of the case processing. If claims of infringement and invalidity are heard in the same hearing, the same construction of the terms of the patent’s claims will be applied in regards to both infringement and invalidity.

The courts will grant a wide margin of appreciation to the conclusions of NIPO when construing the terms of the patent’s claims, especially in regards to invalidity. This follows from the two Supreme Court cases of Swingball (Rt. 1975, page 603) and Biomar (Rt. 2008, page 1555), where the Supreme Court found that because NIPO is an expert body, its decisions shall be awarded a wide margin of appreciation.

A patent may be revoked or cancelled through an opposition proceeding or administrative review before NIPO, or an invalidity proceeding by a court of law. The reasons for revocation or cancellation of a patent that may be set forth in these three different scenarios differ slightly.

Common for all three procedures is that the reasons for revocation or cancellation of a patent right are that the patent is invalid as granted on an incorrect basis. A patent will be granted on an invalid basis if the requirements of the Norwegian Patents Act 1967, as amended, Sections 1 and 2 are not met, which include that the invention must be patentable, must be new and have inventive step.

Further, in an opposition proceeding or an invalidity proceeding the third party may argue that the patent is granted on an invalid basis if the invention is not described in the patent to a degree that a person skilled in the art is able to perform it, the patent covers something that was not apparent from the application at the time of filing, the scope of protection has been expanded after the grant of the patent, through a patent limitation or otherwise, the patent was granted to the wrong person or where the third party believes that the patent is contrary to public order or morality.

As regards remedies, a third party will normally not have a right to remedies as a result of the revocation or cancellation of a patent. If the tort law requirements are present, a third party may be awarded remedies for being excluded from a market or other loss suffered as a result of the patent-holder holding a patent that was granted on an invalid basis. This is uncommon.

If an interim injunction is awarded on the request of a patent-holder and the patent is subsequently found to be invalid by a court of law, or that no infringement has taken place, the party subject to the interim injunction has an objective right to remuneration for the loss suffered as a result of the interim injunction.

Partial revocation or cancellation is possible, whereby one or more of the patent claims, but not all, are deemed invalid. This is possible in circumstances where the court finds that only parts of the patent claims are valid, ie, that none of the reasons for revocation or cancellation are present.

Amendment is possible in revocation or cancellation proceedings when the patent-holder requests to amend its patent claims. Such amendments must limit, or at least not expand, the scope of the patent protection.

Amendments may be requested administratively from NIPO through a patent limitation case or be submitted as a claim in court proceedings to defend against invalidity. Administrative patent limitations may be set forth after an invalidity court case has been initiated. In an administrative patent limitation case, both the description and patent claims may be amended, whereas a court of law may only amend the patent claims. For an administrative patent limitation, the opposition period (nine months after the grant date) must have passed.

The possible outcomes of a patent limitation are that the amended patent is approved or that the request for a patent limitation is denied. If it is denied, the decision may be appealed. If it is an administrative patent limitation case, the correct authority for the appeal is KFIR, and if it is part of a court case, it is the appropriate court of appeal.

If it is subsequently found that the amendment did expand the scope of the patent protection, this is an independent reason for the revocation or cancellation of the patent. However, this would usually result in a partial revocation or cancellation.

Revocation or cancellation and infringement claims may be heard together if the defendant in the infringement case files a counter-claim arguing that the patent is invalid and must be revoked or cancelled. In cases of such counter-claims the arguments are usually heard together, and the decisions handed down at the same time. If the court decides to bifurcate the case, for instance in order to schedule the first hearing as soon as possible, the court may hear the revocation or cancellation case first and subsequently the infringement case if it is still applicable. Since the same interpretation of the patent scope of protection shall be applied in both cases, such bifurcation is uncommon.

The only special procedural provisions for intellectual property rights proceedings are that:

  • the exclusive venue for certain types of patent cases is Oslo District Court in the first instance; and
  • that no standing to sue has to be established for third parties seeking to invalidate a patent prior to its expiry date.

Intellectual property cases are determined by legal judges; one legal judge in the first instance and three in the court of appeal. The legal judge may be assisted by two technical judges who are appointed for the specific case. Often the parties suggest candidates to the court, and in patent cases the technical judges may be both patent agents and persons with experience in the relevant technical field.

At any point prior to the decision being handed down, the defendant may initiate settlement negotiations with the claimant. These negotiations may take a formal or informal form. During the case management hearing, the court will ask the parties if they wish to go through court mediation to try to settle the case. This is not mandatory. If the parties settle the case, they will usually jointly submit a pleading requesting to withdraw the case.

Other court proceedings such as parallel revocation/infringement proceedings may warrant a stay of a case pending the outcome of the parallel proceedings. The circumstances under which a stay will be granted are if the outcome of the present case in part or wholly depends on the binding outcome of another case, or if other weighty reasons are in favour of a stay. Additionally, a case may be stayed if there is an on-going case regarding revocation or limitation of a European patent by EPO.

If the patentee is successful in claiming infringement, the patentee is entitled to receive remedies for the damages. Where the infringement was in good faith, and the court does not deem it unreasonable, the infringer shall pay damages equivalent to a reasonable licencing fee for the exploitation or gain received because of the infringement.

Where the infringement is negligent or wilful, the patentee has the right to receive damages calculated according to one of three alternate measures. The measure that is the most favourable for the patentee shall be used. The three alternative measures are:

  • damages equivalent to a reasonable licensing fee for the exploitation as well as damages for the consequences of the infringement that would not have happened but for the infringement,
  • damages for the harm caused by the infringement; or
  • damages equivalent to the gain received because of the infringement.

For grossly negligent or wilful infringement, the patentee may require the infringer to pay the double of a reasonable licensing fee.

In addition to these damages, the prevailing patentee is as a main rule entitled to reimbursement of his or her lawyers’ fees, legal costs and fees, to the extent that these are reasonable.

The court may also order injunctive relief on the request of the patentee, which may be combined with the other remedies mentioned. Instead of granting injunctive relief, the court has a narrow possibility to allow exploitation of the invention against a reasonable licensing fee pursuant to the Patents Act, Section 59 a.

The judge has some discretion in ordering remedies within the framework set by the patentee’s statement of claim. For instance, if the patentee does not ask for the infringer to pay the double of a reasonable licence fee in damages, the court may not order that. Nevertheless, the judge has a wide margin of discretion in deciding what sum is appropriate for the different types of remedies mentioned.

A prevailing defendant will normally be acquitted of infringement and awarded reimbursement of legal costs and fees, including lawyers’ fees, according to the same rules as a prevailing patentee. The same applies if the defendant has filed a counterclaim of invalidity, and the patent is found to be invalid.

For patents, trade marks, copyright and design, the same type of remedies are available. The most common types of remedies are damages and injunctive relief against on-going and future infringement.

If a patent is found valid and infringed at first instance, and the infringer appeals the decision, the decision is not final and binding. Nevertheless, the infringer may choose to discontinue the alleged infringement as, should the result be upheld by the court of appeals, the continued infringement will subject the infringer to an increased claim for damages.

There are no special provisions concerning the appellate procedure for intellectual property rights proceedings.

An appeal to the court of appeal entails a full review of the facts of the case. An appeal to the court of appeal normally includes a new hearing with presentation of evidence, including witnesses. If the decision that is appealed is a ruling or order rather than a full judgment, the appeal is as a main rule heard through a written procedure.

An appeal to the Supreme Court, if admitted, is limited to a legal review of the case where the Supreme Court bases its decision on the findings of facts by the lower courts.

A losing party may choose to limit its appeal to certain parts of the case. For instance, if the court found that a patent was partly invalid and that there was no infringement, the patentee may choose to appeal only the invalidity case or only the infringement case.

Costs that arise before filing a lawsuit may include lawyers’ costs for assessing whether to pursue a claim and file one or several warning letters.

The court fee for commencing proceedings is a fixed fee depending on the number of days the oral hearing lasts (if there is one) and the court instance. For a one-day case in the district court, the court fee is NOK5,750 in 2019. The fixed fee is different from cases of interim injunctions.

The losing party is normally required to reimburse the prevailing party’s costs and fees, including lawyers’ fees, as long as these are necessary and reasonable. The court may determine exceptions if deemed reasonable. This may be the case if the dispute has brought up a previously unclear legal question, or if none of the parties are at fault for bringing the dispute to court. The court also has discretion to reduce the prevailing party’s claim for costs and fees.

Alternative dispute resolution is not a common way of settling an intellectual property case. Nevertheless, it is possible to agree to arbitrate an intellectual property case. If the case concerns a question of validity, the arbitral tribunal cannot deem a registered intellectual property right to be invalid with respect to the registration, but may decide the intellectual property case inter partes.

There are no restrictions on assigning an intellectual property right pursuant to Norwegian law.

The assignment should be registered with the patent office in order to update the patent registry. Ensuring the correct owner is registered provides notoriety for third parties and enables NIPO to send the notification of annual fee to the right person. Assignments are most commonly done in writing, as NIPO requires the use of its own form for the registration of the assignment. The form must be signed by either the previous owner or, if applicable, its agent, but may be sent in by either of these or the new owner. If the parties intend to assign only parts of the right, NIPO requires written documentation of this to accompany the form, but otherwise documentation is not required.

The only restrictions on the right to license an intellectual property right are found in other areas of law, such as contract law and competition law. A licence may not violate competition law and must not be invalid in regards to contract law. Norwegian contract law or intellectual property law does not require a licence to be in writing. A licence may be registered with NIPO, which is recommended procedure. A notice of a licence must be signed by the licensee, licensor, or an agent for one of these. NIPO has a specific form for a notice of a licence.

There is no specific procedure for licensing an intellectual property right.   

Advokatfirmaet BAHR AS

Tjuvholmen allé 16, Norway
PO Box 1524 Vika,
NO-0117 Oslo,
Norway

+47 21 00 00 50

post@bahr.no www.bahr.no
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Law and Practice in Norway

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Advokatfirmaet BAHR AS has an IP department consisting of 11 lawyers specialised in IP dispute resolution, IP transactions, and advising clients on all aspects of IP. All of BAHR’s lawyers are located in Oslo, Norway. BAHR is one of the best-known and most international firms in Norway, and has been successfully representing and advising leading global and Norwegian clients since 1966, with a strong emphasis on teamwork. The firm’s key practice areas in patent litigation are within life sciences, focusing on pharmaceutical patent disputes, the oil and gas sector, and offshore and maritime technology.