Patent Litigation and Patent Disputes in Norway: Infringement, Validity and Enforcement

Patent disputes in Norway usually turn on two connected questions: does the product, process or other commercial activity fall within the scope of the patent, and is the patent valid and enforceable? These questions should normally be assessed together, because an enforcement claim commonly prompts a challenge to the patent’s validity.

This guide explains the principal routes for resolving patent disputes in Norway: infringement and invalidity actions before Oslo District Court; opposition, administrative review and administrative limitation before the Norwegian Industrial Property Office; preliminary injunctions; and the remedies available for patent infringement.

A patent holder considering enforcement in Norway must normally consider both whether the competing product or process falls within the scope of the patent and how the patent is likely to withstand a validity challenge. Conversely, a party accused of infringement will typically need to assess both infringement and the validity of the patent relied upon.

Norwegian law provides administrative procedures before the Norwegian Industrial Property Office (NIPO, Norwegian: Patentstyret) for opposing, reviewing or limiting patents, as well as court proceedings for determining infringement and validity and granting judicial remedies. The appropriate route depends on the status of the patent, the timing of the dispute, whether infringement must be stopped and whether a binding determination or monetary remedy is required.

Norway is not part of the Unified Patent Court or the unitary patent system. A European patent must be validated in Norway to take effect here, and infringement and invalidity actions concerning Norwegian patents and European patents validated in Norway are decided by the Norwegian courts and the NIPO, not by the Unified Patent Court.

Opposition, administrative review and court proceedings compared

In brief: opposition is the time-limited administrative route for challenging a recently granted national patent; administrative review is the principal administrative route after the opposition period; and court proceedings are required where infringement, judicial remedies or a binding determination of both infringement and validity is needed.

Patent infringement proceedings

Civil actions concerning infringement or invalidity of a Norwegian patent are brought before Oslo District Court (Oslo tingrett), the designated first-instance venue for patent litigation. The same applies to a European patent that has taken effect in Norway. The court commonly sits with expert lay judges who have a technical background relevant to the case.

The central question in an infringement action is whether the allegedly infringing product, process or activity falls within the scope of protection conferred by the patent. The patent claims determine the scope of protection, while the description and drawings are used to interpret the claims. Norwegian courts interpret the claims in line with Article 69 of the European Patent Convention and its Protocol, and protection may extend to equivalents, as the Supreme Court confirmed in Rt-2009-1055 (donepezil).

Patent infringement cases can therefore involve technically and legally complex questions concerning the interpretation of the patent claims and the relationship between the claimed invention and the allegedly infringing activity.

An infringement assessment must also consider any applicable limitation or defence. Depending on the facts, relevant issues may include private non-commercial use, experimental use, regulatory-testing exemptions, exhaustion of patent rights, prior-use rights and the existence of a licence or other consent from the patent holder.

Evidence of infringement is not always accessible to the patent holder, particularly where a patented process is used in the defendant’s own facilities. Evidence preservation (bevissikring) can be sought before proceedings are brought, in urgent cases without notice to the other party. Where a patent covers a process for making a new product, an identical product made by someone else may in some cases be presumed to have been made by the patented process unless the contrary is shown.

Where infringement is established, Norwegian law provides a range of remedies. Depending on the circumstances, these can include a prohibition against continued infringement, compensation or damages, and measures directed at infringing products and materials.

Validity is often part of the dispute

An allegation of patent infringement frequently leads to scrutiny of the validity of the patent itself.

A defendant may argue that the patent should not have been granted, for example because the invention lacked novelty or inventive step. Invalidity is not determined merely as an incidental defence to infringement under Norwegian law. A defendant seeking to avoid liability on that basis must bring an invalidity claim, typically as a counterclaim in the infringement proceedings.

This means that enforcement strategy cannot sensibly be considered solely by asking whether the competing product appears to fall within the patent claims.

For the patent holder, the strength of the patent against the prior art and other potential validity objections may be just as important as the infringement analysis.

For the alleged infringer, challenging validity may be an important part of the overall response. An alleged infringer may also bring proceedings for a declaration of non-infringement, which can be useful where an unresolved allegation is affecting its business.

Challenging validity before the courts

The validity of a Norwegian patent may be challenged before Oslo District Court. Any party may bring an invalidity action. The exception is that a claim that the patent was granted to someone not entitled to it can only be brought by the person claiming to be entitled.

Validity and infringement issues may therefore form part of the same broader dispute. This allows the court to determine both whether the patent is valid and, where appropriate, whether it has been infringed.

Court proceedings are required where the parties need a binding determination of infringement or the judicial remedies available under the Patents Act. If validity is also disputed, the court can determine validity and infringement within the same broader dispute. The principal disadvantages are the cost, complexity and litigation risk associated with full court proceedings.

Opposition before the NIPO (innsigelse)

Court proceedings are not the only means of challenging a granted patent.

For nine months following grant, an opposition may be filed with the NIPO. Opposition provides an administrative procedure for challenging whether the patent should have been granted. This applies to Norwegian national patents. A European patent validated in Norway must instead be opposed at the European Patent Office within nine months of the mention of grant. Once the EPO opposition period has expired and any opposition there has been decided, a validated European patent can be challenged before the NIPO through administrative review.

Depending on the grounds raised and the outcome of the proceedings, the patent may be maintained as granted, maintained in amended form or revoked. The party against whom the decision was made may appeal the opposition decision to the KFIR.

Opposition can therefore provide an important early opportunity to challenge a competitor’s patent without commencing validity proceedings before the courts.

Its principal limitation is timing: the ordinary opposition period expires nine months after grant.

Administrative review after the opposition period (administrativ overprøving)

After the opposition period has expired, the validity of a patent can still be challenged through administrative review before the NIPO. Any person may request administrative review, and the request applies equally to Norwegian national patents and European patents validated in Norway.

Administrative review is intended to provide a comparatively straightforward and less expensive alternative to court proceedings where the objective is to have a patent declared wholly or partly invalid. An official filing fee applies.

The available grounds include failure to satisfy the substantive requirements for patentability, insufficient disclosure, the addition of subject matter extending beyond the application as filed, and an impermissible extension of the patent’s scope after grant.

A request for administrative review is not subject to the nine-month opposition period, but it can only be filed once the opposition period has expired and any opposition or administrative-limitation proceedings have been finally decided. Its interaction with court proceedings is discussed below.

Administrative review does not, however, determine whether another party has infringed the patent or provide the remedies available in infringement litigation. It addresses the validity of the patent.

Administrative proceedings and litigation interact

NIPO decisions in opposition, administrative-review and administrative-limitation proceedings may generally be appealed to the Norwegian Board of Appeal for Industrial Property Rights (KFIR, Norwegian: Klagenemnda for industrielle rettigheter) by the party against whom the decision was made. Access to subsequent court review is narrower: only the applicant or patent holder may bring the specified adverse KFIR decisions before the courts. The action is brought against the State, represented by the KFIR, and must be filed within two months from the date on which the decision was sent. An unsuccessful opponent or administrative-review claimant cannot bring the decision before the courts.

The administrative and judicial routes should not be viewed as entirely independent alternatives.

Norwegian law contains rules governing the interaction between administrative review and court proceedings concerning the same patent. Administrative review cannot be requested while court proceedings concerning the validity of the patent are pending, and a party that has already brought a validity action against the patent cannot normally request administrative review afterwards.

The procedural position should therefore be considered before choosing how and where to challenge a patent.

In a commercial dispute, the cheapest procedure for determining validity is not necessarily the procedure that best resolves the dispute as a whole.

Limiting a patent (administrativ patentbegrensning)

A patent holder may in appropriate circumstances seek administrative limitation of its own patent before the NIPO.

Limitation can be relevant where the patent holder wishes to narrow the patent’s overall scope of protection, including where validity has been questioned. An amendment to a dependent claim alone is not sufficient if the patent’s total scope of protection remains unchanged.

The availability and timing of administrative limitation are subject to procedural rules, particularly where opposition, administrative review or court proceedings are pending.

For a patent holder contemplating enforcement, the possibility of defending the patent in amended form can therefore form part of the wider validity analysis.

Preliminary injunctions

Some patent disputes cannot wait for an ordinary trial.

Where allegedly infringing activity is imminent or ongoing and delay could cause significant harm, a patent holder may consider seeking a preliminary injunction (midlertidig forføyning).

A preliminary injunction can prevent the relevant activity while the underlying dispute is resolved. The patent holder must establish the asserted claim and a legally sufficient need for interim protection, and the court must consider the consequences of granting relief. The court may require security for loss suffered by the opposing party if the injunction later proves unjustified. Even if no security was required, a party that obtained an unjustified injunction is liable for the resulting loss regardless of fault.

Preliminary-injunction proceedings can themselves involve substantial examination of infringement and validity issues. They should therefore not be regarded as merely a faster version of an ordinary infringement action.

Urgency, the strength of the infringement case, potential validity challenges and the commercial consequences of interim relief all need to be considered at an early stage.

What remedies are available?

Where patent infringement is established, Norwegian law provides several potential remedies.

Depending on the circumstances, these may include:

• an injunction prohibiting continued or threatened infringement;
• compensation or damages;
• recall, removal or destruction of infringing products;
• measures concerning materials or implements principally used to manufacture infringing products; and
• in appropriate circumstances, publication of information concerning the judgment.

The financial remedy must be assessed under the statutory rules governing compensation and damages. The available basis and amount can depend on matters including the infringer’s degree of fault, the patent holder’s loss, the infringer’s gain and the reasonable remuneration that would have been payable for authorised use.

Choosing the appropriate route

Potential claims should be assessed promptly. Delay can affect the availability of interim relief, the preservation of evidence and the recovery of monetary remedies, and statutory limitation rules may restrict older claims.

Before bringing ordinary court proceedings, the claimant must normally notify the other party in writing of the claim and its basis, and give it an opportunity to respond. Failure to do so may count against the claimant when costs are decided.

A party considering its position should normally identify first what needs to be achieved.

If the principal objective is to challenge a recently granted patent, opposition before the NIPO may be appropriate.

If the opposition period has expired and the principal issue is validity, administrative review may provide an alternative to court proceedings.

If infringement is ongoing or imminent and the client requires the conduct to stop, administrative validity proceedings alone cannot provide that remedy. A preliminary injunction may be considered where interim relief is required.

Where infringement, validity and remedies need to be determined together, court proceedings may be required.

The timing of the dispute, the technical and evidential issues, the commercial importance of the market, the urgency of enforcement and the costs associated with the different procedures may all affect that assessment.

Patent disputes often require both legal and technical expertise

Patent litigation differs from many other intellectual property disputes because the legal analysis is closely connected to the underlying technology. Effective case preparation therefore requires the patent claims, the accused product or process, the relevant prior art and the available technical evidence to be analysed as parts of the same dispute.

Questions concerning claim interpretation, infringement, novelty and inventive step frequently require detailed consideration of technical evidence and the relevant prior art.

Aurex handles patent matters in cooperation with technical specialists where appropriate, allowing the legal and technical aspects of a dispute to be addressed together.

Frequently asked questions

Does the Unified Patent Court cover Norway?

No. Norway is not part of the Unified Patent Court or the unitary patent system. A European patent must be validated in Norway to take effect here, and disputes are decided by the Norwegian courts and the NIPO.

Which court hears patent cases in Norway?

Oslo District Court is the exclusive first-instance venue for actions concerning the infringement and validity of Norwegian patents and European patents validated in Norway. Opposition and administrative review are handled by the NIPO, with appeals to the KFIR.

How long do I have to oppose a Norwegian patent?

Nine months from grant. This applies to Norwegian national patents; a European patent must be opposed at the European Patent Office. After the opposition period, a patent can be challenged by administrative review or before the courts.

Can invalidity be raised as a defence to an infringement claim?

Not on its own. A defendant who wishes to avoid liability on the ground that the patent is invalid must bring an action for invalidity, typically as a counterclaim in the infringement proceedings.

Can a European patent be challenged before the NIPO?

Yes, through administrative review, once the EPO opposition period has expired and any opposition at the EPO has been decided. Any person may request administrative review.