A powerful tool for invalidation of patent rights in Norway
The EPC entered into force for Norway on 1 January 2008. Hence, Norway is included among the designated states in European patent applications filed on or after that date. The legal framework has continuously been revised to harmonise with the EPC, thus only minor revisions to the legal framework were necessary upon entry. However, one addition to the Patent Acts that was effective by the date of accession is worth a discussion; namely third parties right to request an administrative review before the Norwegian Industrial Property Office - NIPO.
Anyone may file a request for an administrative review of a Norwegian patent, requesting the patent to be declared invalid in full or in part by a decision made by the NIPO. In fact, this means that the patentee or any third party may request such a review in the whole lifespan of a patent. A request for review may even be filed after the patent has terminated, provided that the requesting party has a legal interest in having this matter reviewed.
A request for an administrative review cannot be filed before the time limit for opposition has expired or while an opposition procedure is pending. The request for an administrative review may neither be filed as long as legal proceedings regarding the patent are pending before the courts.
Contrary to the grounds for opposition, a request for an administrative review may only be filed based on lack of novelty and inventive step, for not being a patentable invention as such and for being an invention excluded from grant. The exceptions from patentability are laid out in the Norwegian Patents Act Section 1 and 2, these sections being very similar to Article 52 and 53 EPC.
The administrative review may result in invalidation of the patent in full or in part. If the patent is invalidated in part, the patent may only be maintained in amended form if the patent holder agrees with the amendments proposed by the NIPO. If the patentee does not agree with the amendments, the patent shall be declared invalid. If there is not a basis for meeting the request, the NIPO shall reject the request for administrative review.
It shall be noted that a decision to declare a patent fully or partly invalid will take effect from the filing date.
Our experience is that the administrative review process is simple and less costly than filing a request for invalidation of a patent before the courts of law. When considering filing oppositions or initiating invalidation procedures against Norwegian patents, it should therefore be carefully considered if a request for administrative review should be filed instead.
By Harald Tafjord, M.Sc. Physics, Bryn Aarflot AS
Published in Managing Intellectual Property, July/August Edition 2009
