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ContributingLAW AND PRACTICE: Editor p.2 DaleContributed Cendali by BAHRKingZhong & Lun Spalding Law Firm KirklandThe ‘Law & Practice’Ellis LLP sections provide easily accessible information on navigating the legal system when conducting business in the jurisdic- tion. Leading lawyers explain local law and practice at key transactional Patent stagesLitigation and for crucial aspects of doing business. TRENDS AND DEVELOPMENTS: p. Contributed by Hogan Lovells (CIS) The ‘Trends & Developments’ sections give an overview of current trends and developments in local legal markets. Leading lawyers ana- Norway lyse particular trends or provide a broader discussion of key develop- BAHR ments in the jurisdiction.

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Contents 1. Types of Intellectual Property Rights & Grant 4. Revocation/Cancellation p.9 Procedure p.3 4.1 Reasons and Remedies for Revocation/ 1.1 Types of Intellectual Property Rights p.3 Cancellation p.9 1.2 Grant Procedure p.3 4.2 Partial Revocation/Cancellation p.9 1.3 Timeline for Grant Procedure p.4 4.3 Amendments in Revocation/Cancellation 1.4 Term of Each Intellectual Property Right p.4 Proceedings p.9 1.5 Rights and Obligations of Owner of 4.4 Revocation/Cancellation and Infringement p.9 Intellectual Property Right p.4 5. Trial & Settlement p.10 1.6 Further Protection After Lapse of Maximum 5.1 Special Procedural Provisions for Intellectual Term p.5 Property Rights p.10 1.7 Third-Party Rights to Participate in Grant 5.2 Decision Makers p.10 Proceedings p.5 5.3 Settling the Case p.10 1.8 Remedies Against Refusal to Grant Intellectual Property Right p.5 5.4 Other Court Proceedings p.10 1.9 Consequences of Failure to Pay Annual Fees p.5 6. Remedies p.10 2. Initiating a Lawsuit p.5 6.1 Remedies for the Patentee p.10 2.1 Actions Available Against Infringement p.5 6.2 Rights of Prevailing Defendants p.10 2.2 Third-Party Remedies to Remove Effects of 6.3 Types of Remedies p.10 Intellectual Property Rights p.6 6.4 Injunctions Pending Appeal p.11 2.3 Courts with Jurisdiction p.6 7. Appeal p.11 2.4 Specialised Bodies/Organisations for the 7.1 Special Provisions for Intellectual Property Resolution of Disputes p.6 Proceedings p.11 2.5 Prerequisites to Filing a Lawsuit p.6 7.2 Type of Review p.11 2.6 Legal Representation p.7 8. Costs p.11 2.7 Interim Injunctions p.7 8.1 Costs Before Filing a Lawsuit p.11 2.8 Protection for Potential Opponents p.7 8.2 Calculation of Court Fees p.11 2.9 Special Limitation Provisions p.7 8.3 Responsibility for Paying Costs of Litigation p.11 2.10 Mechanisms to Obtain Evidence and Information p.7 9. Alternative Dispute Resolution p.11 2.11 Initial Pleading Standards p.7 9.1 Type of Actions for Intellectual Property p.11 2.12 Representative or Collective Action p.8 10. Assignment and Licensing p.11 2.13 Restrictions on Assertion of Intellectual 10.1 Requirements or Restrictions for Assignment Property Right p.8 of Intellectual Property Rights p.11 3. Infringement p.8 10.2 Procedure for Assigning an Intellectual 3.1 Necessary Parties to an Action for Infringement p.8 Property Right p.11 3.2 Direct and Indirect Infringement p.8 10.3 Requirements or Restrictions to License an 3.3 Scope of Protection for an Intellectual Intellectual Property Right p.11 Property Right p.8 10.4 Procedure for Licensing an Intellectual 3.4 Defences Against Infringement p.8 Property Right p.12 3.5 Role of Experts p.8 3.6 Procedure for Construing the Terms of the Patent’s Claim p.9

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

Author Knut Sverre Skurdal Andresen is deputy head of BAHR’s IP department and specialises in IP dispute resolution within life sciences, particularly in pharmaceutical patent and trade mark disputes and patent litigation in the oil and gas sector, as well as IP disputes involving offshore and maritime technology and the transportation sector. He also assists international and Norwegian clients with IP transactions, and is a preferred strategic counsel in Norwegian IP law. He is a member of the European Patent Lawyers Association (EPLAW) and a co-author of the online annotated Norwegian Civil Procedure Act.

1. Types of Intellectual Property Rights granted. The Norwegian Industrial Property Office (NIPO) & Grant Procedure is the receiver of Norwegian national patent applications. This also applies if an applicant in Norway (or a Norwe- 1.1 Types of Intellectual Property Rights gian citizen elsewhere) wishes to file an international pat- The Norwegian legal system provides two different types of ent application according to the Patent Co-operation Treaty intellectual property rights for the protection of inventions: (PCT) or obtain a European Patent, cf the European Patent patents and trade secrets. These types of intellectual property Convention (EPC). rights are based on statutory law, as further interpreted in case law. A national patent application must include a detailed description of the invention, patent claims, and the appli- Patent protection is available for inventions that are new and cation form. After payment of the application fee, NIPO have inventive step compared to prior art, and are suited for controls whether the formal requirements are met. If they industrial use. There are exceptions on what is not deemed are not, the applicant will receive a notification with a short to be a patentable invention, such as a discovery or an animal deadline for rectifying any formal discrepancies. species. Within five-seven months the applicant will receive NIPO’s At present, there is no definition of a trade secret in Norwe- first assessment of the patentability of the invention. This gian statutory law. In case law and judicial theory, the term is includes NIPO’s first assessment of the available prior art. believed to include information that is specific to a business, The applicant will be given the opportunity to rectify any of significance for the business, and that the business has deficiencies identified by NIPO within a set deadline. Exam- taken steps to keep secret. ples of deficiencies may be that certain or all patent claims are not novel or do not have inventive step, that certain pat- The Norwegian legislature is incorporating EU Directive ent claims may only be granted in an amended form, or that 2016/943 into Norwegian law, and a new Trade Secret Act the applicant needs to make certain format changes to make that will replace the current provisions has been proposed. the patent suited for publication. If the applicant does rectify the deficiencies, the patent may be granted. Often NIPO will 1.2 Grant Procedure continue to assess the application based on the applicant’s A patent right arises when and if a patent application, filed by response. If the applicant does not respond within the dead- the inventor or otherwise rightful owner of the invention, is line, the application may be denied. However, if the applicant

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does respond and complies with NIPO’s request within four protection, and there is no application for or registration months after the deadline, the application may be reopened of the right. by paying a fee. 1.3 Timeline for Grant Procedure Once all deficiencies are rectified and NIPO considers the Statistics from NIPO state that the average duration of the requirements for patentability to be present, the application grant procedure for a national patent is 3.6 years. may be granted if the applicant still desires so and pays the fee for granting. After payment of this fee, it is published The application is published 18 months after the filing date. in the Norwegian Patent Gazette that the patent has been All public documents related to the grant procedure, includ- granted. The patent is also included in the patent registry. ing correspondence with NIPO, are subsequently published online. If the applicant withdraws the application before 18 If an application for a European patent is filed with NIPO, months have passed, it does not become public. NIPO forwards it to the European Patent Office (EPO). Once a European patent is granted, it must be validated in Nor- The inventor does not need representation to initiate grant way. The holder must apply for validation, which includes proceedings. Nevertheless, representation is often sought, a translation of the patent into Norwegian, within three especially by professionals and for complex patent appli- months of EPO publishing the European patent. For patents cations. The average costs to grant differ for small- and published by EPO in English, it is sufficient to translate the medium-sized enterprises, which receive a reduced rate, patent claims into Norwegian. For patents granted by EPO and other enterprises. For other enterprises, the application in French or German, the title and description must also be and grant costs total NOK5,850 for patents with up to ten translated into either English or Norwegian. A validation patent claims and up to 14 pages. This does not include the fee must be paid. assistance of a patent attorney, costs of translation and other costs. The total costs for a single Norwegian patent applica- For PCT applications, an application filed with NIPO will tion filed with the assistance of representation will vary, but be forwarded to the applicable international examination may be estimated to start at approximately NOK60,000. authority as chosen by the applicant. The applicant may choose the Nordic Patent Institute (a co-operation between 1.4 Term of Each Intellectual Property Right the patent authorities in Denmark, Norway and Iceland), A granted patent is valid for 20 years after the filing date of the Swedish Patent and Registration Office or EPO as the the first application. Trade secrets are valid for as long as the international examination authority. If the applicant chooses information meets the requirements for being a trade secret. the Nordic Patent Institute, it will typically be NIPO assess- ing the application. During the international processing of 1.5 Rights and Obligations of Owner of Intellectual the PCT application, the applicant may apply for provisional Property Right protection in Norway. After the international processing is The rights conferred by a patent are negative, meaning that completed, the applicant must extend the application to Nor- the patent-holder does not necessarily have the right to way if the applicant wishes to obtain patent protection in exploit the invention covered by the patent commercially, Norway. Normally, an applicant will be allocated a different but may stop others from doing so. Therefore, a patent- case processor at NIPO for the national phase than for the holder has the right to control who may lawfully exploit the international phase, if the applicant had chosen the Nordic invention commercially, through licences, if any. Patent Institute as the international examination authority. Once granted, the patent has the same status as an ordinary There are certain exceptions to the patent-holder’s exclusive national, Norwegian patent. right to exploit the invention commercially. These natural- ly follow from the limitation of commercial use. Notably, To maintain a Norwegian priority date on a patent applica- scientific experiments and (non-commercial) research are tion in other jurisdictions, the applicant must apply in other exempted. The patent rights may be exhausted in a specific jurisdictions within 12 months from filing its Norwegian case, if the patent-holder has already sold a product on the application. market or with the holder’s consent. If a third party were using the patented invention prior to the priority date for If a patent application is denied, the applicant has a right the application, but such use was not publicly known, that to appeal the decision to the Norwegian Board of Appeal specific third party may continue its use of the invention on for Industrial Property Rights (KFIR). KFIR’s decision may the same terms as previously, as long as such use does not further be appealed to the Oslo District Court if the decision constitute abuse in regards to the patent-holder/applicant. from KFIR goes against the applicant. A patent-holder may obtain an injunction to stop others There is no grant procedure for trade secrets. Trade secret from exploiting the invention covered by the patent com- protection arises from meeting the requirements for such mercially, ie, infringe the patent-holder’s rights. Addition-

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ally, a patent-holder has a right to receive damages incurred As regards infringement or invalidity proceedings, third par- as a result of infringement. An injunction against on-going ties are deemed to have standing to sue even after the expiry and future infringement and a request for damages may be of the basic patent if the holder has been granted a SPC and/ sought in the same court proceedings. Also, if the require- or paediatric extension. ments for seeking an interim injunction are met, a patent- holder may opt to seek an interim injunction to stop on- 1.7 Third-Party Rights to Participate in Grant going infringement. Proceedings Anyone may file a protest to a patent application before the Patent infringement is a criminally punishable offence, patent application has been granted, claiming that the inven- although it is uncommon that patent infringement is crimi- tion is not patentable or that they are the rightful owner nally pursued by prosecutors. of the invention. The person submitting a protest does not become party to the proceedings, but NIPO shall take into A patent is viewed as a property asset of the holder, so that account the protest when processing the application. 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 1.8 Remedies Against Refusal to Grant Intellectual assets to it, choose to let the patent registration lapse, etc. Property Right If there are any licensing agreements, the patent-holder’s If a patent application is rejected, the applicant has several rights to dispose of the patent as an asset may be limited by recourses. First, prior to the actual decision to deny, the agreement. applicant will receive a letter from NIPO stating that the application will be denied, and given the opportunity to As for the patent-holder’s obligations, annual fees must be argue why it should not be. The applicant may provide new paid to uphold the registration. The annual fee increases documents in support of its application, or make changes incrementally as the term of the patent goes by, so that main- to the application. One change may be to limit the patent taining the patent is at the most expensive right before the claims. The applicant may then ask NIPO to review the term of the patent expires. application in light of the new information and/or amended application. A holder of a trade secret has the right to an injunction and/ or damages if a trade secret has been misappropriated. Mis- If the application is finally rejected, the applicant may appeal appropriation of trade secrets is also a criminally punishable the decision to KFIR. If the rejection is upheld by KFIR, the offence. applicant may further appeal to Oslo District Court, and in second instance to Borgarting Court of Appeal if Oslo The holder of a trade secret has a right not to make it avail- District Court upholds the rejection. able as evidence in court, although the court may never- theless decide, after reviewing the issue, that it is necessary 1.9 Consequences of Failure to Pay Annual Fees to submit the trade secret. Often it will then be submitted If the annual fee is not paid at the application stage, the pursuant to a confidentiality regime. application will be rejected. For a granted patent, the legal consequence of failure to pay is that the patent is deleted. 1.6 Further Protection After Lapse of Maximum Term A yearly notification letter is sent out to registered holder of Certain patents may enjoy a supplemental period of protec- the application or granted patent. Therefore, it is important tion in the form of a supplementary protection certificate to make sure the entity registered as the holder is correct and (SPC). This applies to patents for medicinal products and updated. Failure to pay may be rectified within a deadline of patents protecting plant protection products. The EU SPC six months, whereby both the annual fee and an additional Regulations for medicinal and plant protection products are late payment fee must be paid. implemented in Norwegian law.

Medicinal products that are indicated for treatment of chil- 2. Initiating a Lawsuit dren may be granted an additional paediatric extension of six months after the expiry of the SPC. 2.1 Actions Available Against Infringement The owner of a technical intellectual property right may take To be granted a SPC or a paediatric extension, the patent- several actions against infringement of the right. The owner holder must hold a valid marketing authorisation for a may request an interim injunction from the applicable court medicinal or plant protection product. The application must of first instance. If the requirements for obtaining an interim be filed within six months of receiving the first marketing injunction are not present, the owner may file a civil lawsuit authorisation for the product. The applicant must pay an to obtain an injunction and/or damages for harm caused by additional fee. the infringement. The injunction, if granted, will normally

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order the infringer (and if relevant other defendant, such as a 2.3 Courts with Jurisdiction party participating in the infringement) to seize the infringe- In first instance, only Oslo District Court has jurisdiction to ment and not to infringe in the future. hear patent cases regarding the right to an invention, judicial review of a decision to reject or cancel a patent, patent limita- The owner of a patent or trade secret may seek to have tions, invalidity, the transfer of intellectual property rights infringement stopped through criminal proceedings initiat- prior to filing of a patent application or grant of a patent, ed by public prosecutors. To date such cases are uncommon. compulsory licence, requests for administrative review or infringement. Further, for patent-holders or applicants that 2.2 Third-Party Remedies to Remove Effects of are not based in Norway, Oslo District Court is the appro- Intellectual Property Rights priate venue. Several remedies are available to third parties who wish to remove the effects of a patent after it has been granted. One notable exception to the exclusive jurisdiction of Oslo District Court is the jurisdiction to hear requests for interim Any third party may file an opposition to NIPO, arguing that injunctions. For such injunctions, any court that is the cor- the patent was granted on an incorrect basis. This must be rect venue according to the rules of civil procedure has juris- filed within nine months of the grant date. An opposition diction to hear the case. may be based on believing that the conditions for patent- ability are not met, that the patent has been granted to the In second instance it is the Borgarting Court of Appeals that wrong person or that the patent is contrary to public order has exclusive jurisdiction to hear cases appealed from Oslo or morality. The possible outcomes of an opposition are that District Court. If the first instance case did not fall within the patent is modified, cancelled or transferred to the right- the exclusive jurisdiction of Oslo District Court, the appeal ful owner. There is no particular admissibility or standing will be heard by the applicable second instance court. There requirement for filing an opposition. is no need for a leave of appeal for appeals to the Courts of Appeals. After the time period for filing an opposition has passed, a third party wishing to remove the effects of a patent may file In the third instance, the Norwegian Supreme Court is a claim for an administrative review from NIPO. There is no the correct venue. A leave of appeal is required from the time limit for filing a request for administrative review, but Supreme Court. Patent cases are not often heard by the it can only be filed once any opposition cases are processed, Supreme Court, but the Supreme Court has handed down and as long as there are no on-going court cases regarding decisions in patents cases that are significant. For instance, infringement or invalidity or a case of administrative patent the Supreme Court concluded that there is a doctrine of limitation. The patent-owner will have the opportunity to equivalence in patent infringement cases in the case Rt. 2009 respond to a request for administrative review. The outcome page 1055. 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 2.4 Specialised Bodies/Organisations for the valid in its current form. The losing side of an administrative Resolution of Disputes review may appeal the decision to KFIR. KFIR is a specialised body for the resolution of intellectual property disputes. It only hears appeals of decisions made Additionally, a third party may file an invalidity lawsuit. An by NIPO. The chairs and board members of KFIR consist invalidity lawsuit may even be filed after the expiry of the of a combination of people who are legally trained and have patent if the claimant has standing. Prior to the expiry of the technical expertise. An applicant, patent-holder or opponent patent, any third party is deemed to have standing to sue. whose case was lost at KFIR may appeal the decision to Oslo District Court. A request for a compulsory licence may be submitted either as a lawsuit or as a counter-claim before Oslo District Court, 2.5 Prerequisites to Filing a Lawsuit being the exclusive first instance venue, or to the Norwegian It is customary that the claimant issues a warning letter prior Competition Authority. One requirement for a compulsory to initiating a lawsuit, unless specific reasons deem other- licence is that the third party seeking it has already attempted wise. Also, the Norwegian Civil Procedure Act provides that to obtain a voluntary licence from the patent-holder on “rea- the claimant shall send a notice of litigation prior to taking sonable terms.” legal steps. Sending a warning letter or a notice of litigation is not a formal pre-requisite, as the court will not have rejected A third party may ask the court for a declaration of non- the case if it has not been sent. However, not sending a warn- infringement if the third party has standing, which will be ing letter or a notice of litigation may have implications for the case if the third party has a need for declaring whether the damages awarded including remuneration of legal costs. its planned operation or business will infringe a patent or misappropriate a trade secret.

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2.6 Legal Representation holder, the lawsuit must be filed within three years after the Parties in intellectual property matters do not need to be grant or assignment. represented by a lawyer. There are no specific rules regard- ing representation in intellectual property matters, and the For a claim for damages the general limitation period of general rule in Norwegian proceedings is that parties may three years will apply. represent themselves. Nevertheless, it is uncommon for a party in an intellectual property matter not to be represented 2.10 Mechanisms to Obtain Evidence and by a lawyer. Information There are mechanisms by which a party to an intellectual 2.7 Interim Injunctions property matter may obtain relevant information and evi- Interim injunctions are available in intellectual property dence from the other party or a third party. After the initia- cases. For an interim injunction to be granted, it must first tion of a lawsuit, a party may request disclosure of relevant be proven by a preponderance of the evidence that there is information from the other party. The other party may reject infringement of the patent in question. Second, an interim such requests under certain circumstances, eg if the infor- injunction must be necessary because pursuing the claim mation is covered by attorney-client privilege or contains otherwise will be considerably impended, to avert consid- a trade secret. In the latter, the court may decide that the erable loss or inconvenience, or to avoid violence that the information shall be disclosed, but this is normally with con- conduct of the defendant gives reason to fear. fidentiality measures.

In any case, the interim injunction will not be granted if the There are rules regarding obtaining and securing evidence loss or inconvenience to the defendant is clearly dispropor- outside of a court case and the right to information regard- tionate to the interests of the claimant in having the interim ing infringement of intellectual property rights. The right to injunction granted. There is a notion in patent case law information also applies to third parties who have contrib- supporting the view that intellectual property rights (IPRs) uted to the infringement, been in possession of a product hold a value beyond their economic value and that effective that infringes, have used a service that infringes, have offered protection of IPRs includes the ability to stop infringements a service that infringes, or otherwise have been designated quickly through interim injunctions when the requirements by a person involved as being involved in the infringement. for interim injunctions are present. This was concluded in a These persons may be compelled by a court of law, upon the case at the Supreme Court (Rt. 2003, page 1165), regarding right holder’s request, to provide information of the origin copyright protection to a translated version of a published and distribution network for goods and services that the book, and other case law supports that the same applies for infringement concerns. A requirement is that there are rea- patent rights. If an interim injunction is granted, it is nor- sonable grounds to believe that there has been an infringe- mally in place until a decision regarding a permanent injunc- ment of an intellectual property right. tion is handed down or if the right in question expires. 2.11 Initial Pleading Standards There is a specific provision allowing for interim injunctions An initial pleading must include the claim that is sets forth, to stop the import or export of products that will infringe an including a statement of claim, the factual and legal basis intellectual property right, when the goods are in the con- for the claim and the evidence to support the claim. In addi- trol of the customs authorities, even if the receiver of the tion, certain formalities such as the names of the parties, the products is unknown. Such an interim injunction obliges name of the court and names of counsels, if known, shall be the customs authorities to retain the goods in question for included. The initial pleading shall be provided in a form and the duration of the interim injunction. degree that allows the defendant to take a stand regarding the claim and prepare the case. 2.8 Protection for Potential Opponents To protect itself a potential opponent may require a secu- There are no special provisions for lawsuits in intellectual rity bond to be posted by the intellectual property owner, to property proceedings that differ from non-intellectual prop- ensure payment of the opponent’s potential loss. A potential erty proceedings. opponent may not file protective briefs with courts prior to being named a defendant in a specific case. It is possible to submit supplementary pleadings with addi- tional arguments and evidence as long as the deadline for 2.9 Special Limitation Provisions submission of evidence has not passed. This deadline is nor- A person who believes it has the right to a patented inven- mally two weeks before the start of the oral hearing for the tion must file a lawsuit within one year of becoming aware case, unless the court decides otherwise. It is quite common of the granting of the patent and the other circumstances in intellectual property cases to set an earlier cut-off date, for relevant for the lawsuit. If the patent-holder acted in good example three or four weeks prior to the oral hearing. After faith when the patent was granted or assigned to the current the deadline for the submission of evidence, the parties will

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submit a closing brief that is normally quite short, and serves 3.2 Direct and Indirect Infringement to sum up each side’s main submissions, evidence relied on, There is a difference between direct and indirect infringe- and statement of claim. ment. Direct infringement is found when an infringer directly exploits a patented invention commercially. Indirect 2.12 Representative or Collective Action infringement is when a third party offers or delivers means There is a possibility of filing a collective action, such as to exploit the invention to someone who is not entitled to a class action, which, at least theoretically, also applies for exploit the invention commercially. intellectual property rights proceedings. Collective actions are permitted when several legal subjects have claims or obli- The available remedies are the same for both types of gations on the same or substantially the same factual and infringement, although the damages for indirect infringe- legal basis, and the claims may be processed by a court of the ment may be lower than in a comparable situation with same composition and substantially pursuant to the same direct infringement. procedural rules. Here a class action is deemed to be the best way of processing the claims and a group representative may 3.3 Scope of Protection for an Intellectual Property be designated. Collective actions are uncommon in Norway, Right and there have not been any collection action cases within The scope of protection of a patent is determined by the pat- the field of intellectual property to date. ent claims, in light of the patent description and drawings. The Norwegian courts will typically award significant weight 2.13 Restrictions on Assertion of Intellectual to Article 69 of the EPC and its Protocol. Property Right An owner of a patent may not assert his or her patent rights 3.4 Defences Against Infringement in violation of the competition laws. Licence agreements A defendant may set forth several defences against infringe- may not include provisions in violation of competition law ment. It is common that a defendant argues that a patent is and patent-owners may not abuse a dominant position. invalid in response to alleged infringement. An invalidity Sometimes marketing law such as claims of conduct in vio- claim must be submitted in a counter-claim to the case, not lation of good business practices are combined with cases simply as a defence. regarding intellectual property rights. A defendant may also argue that the defendant has prior-use rights, or that the patent rights have been exhausted in the 3. Infringement relevant case.

3.1 Necessary Parties to an Action for That the requirements for a compulsory licence are present Infringement is not a valid defence against alleged infringement because a The parties to an action for infringement are normally the compulsory licence either needs to be given through a judg- owner of the intellectual property right and the accused ment from a court of law or from the Norwegian Competi- infringer. It is possible for a third party who is a licensee, tion Authority. It must therefore be asserted in a separate but not an owner of the intellectual property right, to file an lawsuit for compulsory licence, or through a counter-claim action for infringement. This applies both for exclusive and to an infringement action. non-exclusive licensees that have standing in the case, and depends on the provisions of the licence agreement. Own patent rights might be a factor in an infringement case, but is not a defence against infringement, as own patent Third parties have the opportunity to participate in lawsuits rights do not hinder infringement. Equitable estoppel is not by applying for a third-party intervention on behalf of one of a doctrine in Norwegian law. Laches are often argued as a the parties. The requirements are briefly that the third party defence, and may carry a significance in relation to damages must have an actual interest in the outcome of the case, or it awarded, but do not exclude the possibility of infringing in must fall within the natural scope of business for an organi- patent cases. sation. If the intervention is granted, the third party may file pleadings and take steps in the proceedings to support the 3.5 Role of Experts party on whose behalf it is intervening. Experts are often, if not always, used in patent litigation. They may either be appointed by one of the parties as an There is also a rarely used opportunity for organisations and expert witness, appointed by the court as a court-appointed public organs to submit written pleadings of observations of expert, or serve as expert judges alongside the legal judge or public interest, without being a third-party interventionist. 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.

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3.6 Procedure for Construing the Terms of the holding a patent that was granted on an invalid basis. This Patent’s Claim is uncommon. In a case regarding patent infringement and/or invalidity, the terms of the patent’s claims are construed based on the If an interim injunction is awarded on the request of a pat- normal, objective meaning of the terms, in the absence of ent-holder and the patent is subsequently found to be invalid evidence of another interpretation. There is no separate pro- by a court of law, or that no infringement has taken place, cedure as the interpretation is part of the case processing. If the party subject to the interim injunction has an objective claims of infringement and invalidity are heard in the same right to remuneration for the loss suffered as a result of the hearing, the same construction of the terms of the patent’s interim injunction. claims will be applied in regards to both infringement and invalidity. 4.2 Partial Revocation/Cancellation Partial revocation or cancellation is possible, whereby one The courts will grant a wide margin of appreciation to the or more of the patent claims, but not all, are deemed invalid. conclusions of NIPO when construing the terms of the pat- This is possible in circumstances where the court finds that ent’s claims, especially in regards to invalidity. This follows only parts of the patent claims are valid, ie, that none of the from the two Supreme Court cases of Swingball (Rt. 1975, reasons for revocation or cancellation are present. page 603) and Biomar (Rt. 2008, page 1555), where the Supreme Court found that because NIPO is an expert body, 4.3 Amendments in Revocation/Cancellation its decisions shall be awarded a wide margin of appreciation. Proceedings Amendment is possible in revocation or cancellation pro- ceedings when the patent-holder requests to amend its 4. Revocation/Cancellation patent claims. Such amendments must limit, or at least not expand, the scope of the patent protection. 4.1 Reasons and Remedies for Revocation/ Cancellation Amendments may be requested administratively from NIPO A patent may be revoked or cancelled through an opposi- through a patent limitation case or be submitted as a claim tion proceeding or administrative review before NIPO, or in court proceedings to defend against invalidity. Adminis- an invalidity proceeding by a court of law. The reasons for trative patent limitations may be set forth after an invalidity revocation or cancellation of a patent that may be set forth court case has been initiated. In an administrative patent in these three different scenarios differ slightly. limitation case, both the description and patent claims may be amended, whereas a court of law may only amend the Common for all three procedures is that the reasons for rev- patent claims. For an administrative patent limitation, the ocation or cancellation of a patent right are that the patent opposition period (nine months after the grant date) must is invalid as granted on an incorrect basis. A patent will be have passed. granted on an invalid basis if the requirements of the Norwe- gian Patents Act 1967, as amended, Sections 1 and 2 are not The possible outcomes of a patent limitation are that the met, which include that the invention must be patentable, amended patent is approved or that the request for a pat- must be new and have inventive step. ent limitation is denied. If it is denied, the decision may be appealed. If it is an administrative patent limitation case, the Further, in an opposition proceeding or an invalidity pro- correct authority for the appeal is KFIR, and if it is part of a ceeding the third party may argue that the patent is granted court case, it is the appropriate court of appeal. 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 If it is subsequently found that the amendment did expand perform it, the patent covers something that was not appar- the scope of the patent protection, this is an independent ent from the application at the time of filing, the scope of reason for the revocation or cancellation of the patent. How- protection has been expanded after the grant of the pat- ever, this would usually result in a partial revocation or can- ent, through a patent limitation or otherwise, the patent cellation. was granted to the wrong person or where the third party believes that the patent is contrary to public order or moral- 4.4 Revocation/Cancellation and Infringement ity. Revocation or cancellation and infringement claims may be heard together if the defendant in the infringement case files As regards remedies, a third party will normally not have a a counter-claim arguing that the patent is invalid and must right to remedies as a result of the revocation or cancellation be revoked or cancelled. In cases of such counter-claims of a patent. If the tort law requirements are present, a third the arguments are usually heard together, and the decisions party may be awarded remedies for being excluded from a handed down at the same time. If the court decides to bifur- market or other loss suffered as a result of the patent-holder cate the case, for instance in order to schedule the first hear-

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ing as soon as possible, the court may hear the revocation Where the infringement was in good faith, and the court or cancellation case first and subsequently the infringement does not deem it unreasonable, the infringer shall pay dam- case if it is still applicable. Since the same interpretation of ages equivalent to a reasonable licencing fee for the exploita- the patent scope of protection shall be applied in both cases, tion or gain received because of the infringement. such bifurcation is uncommon. Where the infringement is negligent or wilful, the patentee has the right to receive damages calculated according to one 5. Trial & Settlement of three alternate measures. The measure that is the most favourable for the patentee shall be used. The three alterna- 5.1 Special Procedural Provisions for Intellectual tive measures are: Property Rights The only special procedural provisions for intellectual prop- • damages equivalent to a reasonable licensing fee for the erty rights proceedings are that: exploitation as well as damages for the consequences of the infringement that would not have happened but for • the exclusive venue for certain types of patent cases is the infringement, Oslo District Court in the first instance; and • damages for the harm caused by the infringement; or • that no standing to sue has to be established for third • damages equivalent to the gain received because of the parties seeking to invalidate a patent prior to its expiry infringement. date. For grossly negligent or wilful infringement, the patentee 5.2 Decision Makers may require the infringer to pay the double of a reasonable Intellectual property cases are determined by legal judges; licensing fee. one legal judge in the first instance and three in the court of appeal. The legal judge may be assisted by two technical In addition to these damages, the prevailing patentee is as a judges who are appointed for the specific case. Often the main rule entitled to reimbursement of his or her lawyers’ parties suggest candidates to the court, and in patent cases fees, legal costs and fees, to the extent that these are reason- the technical judges may be both patent agents and persons able. with experience in the relevant technical field. The court may also order injunctive relief on the request of 5.3 Settling the Case the patentee, which may be combined with the other rem- At any point prior to the decision being handed down, the edies mentioned. Instead of granting injunctive relief, the defendant may initiate settlement negotiations with the court has a narrow possibility to allow exploitation of the claimant. These negotiations may take a formal or informal invention against a reasonable licensing fee pursuant to the form. During the case management hearing, the court will Patents Act, Section 59 a. ask the parties if they wish to go through court mediation to try to settle the case. This is not mandatory. If the parties The judge has some discretion in ordering remedies within settle the case, they will usually jointly submit a pleading the framework set by the patentee’s statement of claim. For requesting to withdraw the case. instance, if the patentee does not ask for the infringer to pay the double of a reasonable licence fee in damages, the 5.4 Other Court Proceedings court may not order that. Nevertheless, the judge has a wide Other court proceedings such as parallel revocation/ margin of discretion in deciding what sum is appropriate for infringement proceedings may warrant a stay of a case pend- the different types of remedies mentioned. ing the outcome of the parallel proceedings. The circum- stances under which a stay will be granted are if the outcome 6.2 Rights of Prevailing Defendants of the present case in part or wholly depends on the binding A prevailing defendant will normally be acquitted of outcome of another case, or if other weighty reasons are in infringement and awarded reimbursement of legal costs and favour of a stay. Additionally, a case may be stayed if there fees, including lawyers’ fees, according to the same rules as is an on-going case regarding revocation or limitation of a a prevailing patentee. The same applies if the defendant has European patent by EPO. filed a counterclaim of invalidity, and the patent is found to be invalid.

6. Remedies 6.3 Types of Remedies For patents, trade marks, copyright and design, the same 6.1 Remedies for the Patentee type of remedies are available. The most common types of If the patentee is successful in claiming infringement, the remedies are damages and injunctive relief against on-going patentee is entitled to receive remedies for the damages. and future infringement.

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6.4 Injunctions Pending Appeal 8.2 Calculation of Court Fees If a patent is found valid and infringed at first instance, and The court fee for commencing proceedings is a fixed fee the infringer appeals the decision, the decision is not final depending on the number of days the oral hearing lasts (if and binding. Nevertheless, the infringer may choose to dis- there is one) and the court instance. For a one-day case in the continue the alleged infringement as, should the result be district court, the court fee is NOK5,750 in 2019. The fixed upheld by the court of appeals, the continued infringement fee is different from cases of interim injunctions. will subject the infringer to an increased claim for damages. 8.3 Responsibility for Paying Costs of Litigation The losing party is normally required to reimburse the 7. Appeal prevailing party’s costs and fees, including lawyers’ fees, as long as these are necessary and reasonable. The court may 7.1 Special Provisions for Intellectual Property determine exceptions if deemed reasonable. This may be the Proceedings case if the dispute has brought up a previously unclear legal There are no special provisions concerning the appellate pro- question, or if none of the parties are at fault for bringing the cedure for intellectual property rights proceedings. dispute to court. The court also has discretion to reduce the prevailing party’s claim for costs and fees. 7.2 Type of Review An appeal to the court of appeal entails a full review of the facts of the case. An appeal to the court of appeal normal- 9. Alternative Dispute Resolution ly includes a new hearing with presentation of evidence, including witnesses. If the decision that is appealed is a rul- 9.1 Type of Actions for Intellectual Property ing or order rather than a full judgment, the appeal is as a Alternative dispute resolution is not a common way of set- main rule heard through a written procedure. tling an intellectual property case. Nevertheless, it is possible to agree to arbitrate an intellectual property case. If the case An appeal to the Supreme Court, if admitted, is limited to a concerns a question of validity, the arbitral tribunal cannot legal review of the case where the Supreme Court bases its deem a registered intellectual property right to be invalid decision on the findings of facts by the lower courts. with respect to the registration, but may decide the intel- lectual property case inter partes. 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 pat- 10. Assignment and Licensing entee may choose to appeal only the invalidity case or only the infringement case. 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights There are no restrictions on assigning an intellectual prop- 8. Costs erty right pursuant to Norwegian law.

8.1 Costs Before Filing a Lawsuit 10.2 Procedure for Assigning an Intellectual Costs that arise before filing a lawsuit may include lawyers’ Property Right costs for assessing whether to pursue a claim and file one or The assignment should be registered with the patent office several warning letters. 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 Advokatfirmaet BAHR AS either the previous owner or, if applicable, its agent, but may be sent in by either of these or the new owner. If the par- Tjuvholmen allé 16, Norway ties intend to assign only parts of the right, NIPO requires PO Box 1524 Vika, NO-0117 Oslo, written documentation of this to accompany the form, but Norway otherwise documentation is not required.

Tel: +47 21 00 00 50 10.3 Requirements or Restrictions to License an Fax: Intellectual Property Right Email: [email protected] Web: www.bahr.no The only restrictions on the right to license an intellectual property right are found in other areas of law, such as con-

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tract law and competition law. A licence may not violate competition law and must not be invalid in regards to con- tract 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.

10.4 Procedure for Licensing an Intellectual Property Right There is no specific procedure for licensing an intellectual property right.

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