GLOBAL PRACTICE GUIDE NORWAY Definitive global law guides offering comparative analysis from top ranked lawyers 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. chambers.com NORWAY Law AND PracTICE Law and Practice Contributed by BAHR 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 2 Law AND PracTICE NORWAY 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 3 NORWAY Law AND PracTICE 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.