|PROTECTION OF IP IN NORWAY
Moscow, 22 April 2013
Advokat Gunnar Sørlie
Advokatfirmaet BA-HR DA, Oslo
1. FORMS OF PROTECTION
The Kingdom of Norway introduced modern intellectual property legislation in the late 19th century. The present Norwegian Industrial Property Rights Office (NIPRO, in Norwegian: Patentstyret) was established in 1911.
Norway is a party to the Agreement establishing the European Economic Area (EEA Agreement), and is thus bound by substantive provisions mirroring the Treaty of the functioning of the European Union and secondary EU legislation in the area of intellectual property rights. For practical purposes, Norwegian law in the area of intellectual property rights is identical to the law in European Union to the extent the law is harmonised through EU legislation or case law from the ECJ.
Norway is furthermore party to most important international conventions in the area of intellectual property rights, including the TRIPS Agreement, the Paris Convention, the Berne Convention, the Patent Cooperation Treaty and the European Patent Convention (EPC).
The Norwegian Patent Act was adopted on 15 December 1967. The act has been amended several times, and is now harmonised with the provisions of the Directive 98/44/EEC on the legal protection of biotechnological inventions. It further incorporates Regulations 1768/92 and 1610/96 introducing supplementary protection certificates (SPCs) for medicinal and plant pharmaceutical products. Provisions on European patents were introduced in 2007 as a consequence of Norway ratifying the EPC with effect from 1 January 2008.
A new Trademark Act was adopted on 26 March 2010. The substantive provisions remained mostly unchanged, but the wording was brought closer to the text of the Trademark Directive (2008/95/EC). Trademark protection may be granted for any signs capable of being represented graphically, provided they are sufficiently distinctive. Most common are word marks and figurative marks. Colour marks and three-dimensional marks are normally accepted for registration only on the basis of acquired distinctiveness, i.e. that the signs have become known to the public.
The Copyright Act of 12 May 1961 provides protection for literary and artistic works and for certain related creations, including databases and computer programs.
Norwegian law furthermore provides protection for geographical indications, trade names, designs and layout-designs, but not for utility models. Of great importance is also the Marketing Control Act of 9 January 2009, which contains in Section 25 a general prohibition of acts which conflicts with good business practises as well as provisions for the protection of trade secrets and technical information (Sections 28 and 29). The act also prohibits the copying of distinguishing marks, products, catalogues, advertising materials etc., in such a manner and under such circumstances that the copying must be considered to be unreasonable and create a risk of confusion (Section 30).
The most significant development in recent years, is the ratification of the EPC, taking effect as of 1 January 2008. As a result of European patents becoming available for Norway, the number of national filings has dropped significantly. The number of PCT applications being prosecuted in Norway has fallen to nearly 500, from almost 5000 in 2007.
In 2010 provisions on international design registration came into effect, as a consequence of Norway’s ratification of the Geneva Agreement of 1999. The Geneva Agreement is a part of the Hague system for international design registration, which aims at making it easier and cheaper to obtain design protection internationally. By one application and by paying a single set of fees it becomes possible to obtain design protection in more than 65 countries.
A revised act on the organisation of the Norwegian Industrial Property Office was adopted in 2012 and entered into force on 1 April 2013. The most notable novelty is that the Board of Appeal is detached from the Office, and will be re-constituted as an independent administrative board.
Looking forward, several legal reforms of varying importance are presently in process. Most important is perhaps the general review of the enforcement provisions in the area of industrial property rights. This review aims at enhancing the protection of the right holders and to harmonise Norwegian legislation with the enforcement directive (2004/48), even if this directive is not included in the EEA Agreement. The amendments proposed by the Ministry of Justice in March 2013 include increased criminal penalties, a provision entitling right holder to compensation equivalent to a double license fee in case of infringement that is intentional or due to gross negligence, provisions providing for removal and destruction of infringing goods and a right to publish information about judgements at the infringer’s cost. Important to note is that most infringement cases will be subject to the jurisdiction of Oslo District Court, as invalidity cases has been for many years. The bill is expected to pass the Parliament later this year.
In the area of copyright law a legislative proposal was presented by the Ministry of Culture in February 2013 concerning, in particular, copyright infringement on the internet. The proposal aims at strengthening the right holders’ possibility of enforcing their rights in case of, for instance, unlawful file sharing. The proposal contains provisions concerning access to the identity behind IP-addresses and provisions obliging internet providers to prevent access to files that infringe copyrights. The bill is expected to pass the Parliament later this year. Simultaneously, the Ministry of Culture is working on a general reform of copyright law, which is expected to result in a new copyright act. The timing of this proposal is uncertain.
3. OBTAINING PROTECTION
According to the Patent Act, patents shall be granted for any inventions in all fields of technology, provided they are new, involve an inventive step and are susceptible of industrial application. Mere abstract creations, including discoveries, business methods and computer programs, are not patentable. Neither may patents be granted for plant or animal varieties, essentially biological processes, nor for surgical, therapeutical or diagnostic methods.
As in most other countries, patent protection in Norway may be upheld for 20 years as from the filing date of the application. For medicinal and plant pharmaceutical products patent protection may be extended by the grant of a supplementary protection certificate for a maximum of five additional years. The so-called paediatric extension providing for an additional six months protection for medicines that have been made subject to a paediatric research program, has not yet been implemented in Norway, but is expected to be so in 2013 or later.
4. ENFORCEMENT OF RIGHTS
4.1 Possible venues for enforcement
Norway has a unified and independent civil court system, consisting of the courts of first instance (District courts), Appeal courts and the Supreme Court. With the exception of infringement cases, patent cases have venue in Oslo, where some of the district court judges specialise in intellectual property law. Infringement cases may be filed with the district court where the defendant is domiciled or where the infringement took place. Recently, however, the Ministry of Justice has proposed to transfer jurisdiction in infringement cases to the District Court of Oslo as well.
Request for interlocutory injunctions and other interim measures are handled by the ordinary court system, with one exception: If the venue is Oslo and an infringement case is not yet pending, the patentee may file the request with the Court of Execution. The Court of Execution is known for speedy and competent handling of patent matters, and is preferred by most patentees.
Administrative procedures are available for specific purposes:
The patentee may request post-grant amendment for the purpose of limiting the patent claims.
A third party may file a request for post-grant opposition within nine months from the date of grant of the patent. A request for opposition may be based on the invention not being eligible for patent protection (for instance that it was not new or that it was obvious to a skilled person), that the invention has not been disclosed in a manner sufficiently clear and precise, or that the subject matter of the patent extends beyond the content of the application as filed.
A third party may at any time request that the patent shall be declared invalid (administrative review). A request for administrative review may be based on the grounds that the invention is not patentable, but not on the grounds that the patent has been granted to the wrong person, nor that the invention has not been described in a manner sufficiently clear and precise or that the patent contains subject matter extending beyond the scope of the application as filed.
Decisions in administrative proceedings are taken by the NIPRO and may be appealed to the administrative board of appeal. If the board of appeal rejects an application or revokes a patent, the applicant/patentee may request judicial review by the ordinary civil courts, with Oslo District Court as venue.
4.2 Requirements for jurisdiction and venue
Norway is a party to the Lugano Convention of 30 October 2007, which is parallel to the Brussels Regulation (44/2001). According to Article 2 of the Lugano Convention, the general rule is that proceedings are to be initiated at the defendant’s residence. Alternatively, proceedings may be initiated at the place where damage occurred, cf. Article 5 (3). In Infringement cases, the damage occurred where the goods were put into circulation, marketed, imported etc. In case of multiple defendants, if one defendant may be sued before a Norwegian court, one or more further defendants may be included in the same proceedings according to Article 6 (1), provided that the actions brought against the various defendants are related. Proceedings concerning the validity of a patent may, however, only be initiated in the country were the patent was granted, cf. Article 22 (4). In proceedings concerning preliminary measures Norwegian courts have jurisdiction according to general rules in national law even if the main claim is subject to the jurisdiction of foreign courts, cf. Article 31. In general, Norwegian courts have jurisdiction in preliminary injunction proceedings if the defendant is domiciled in Norway, if the infringing goods are present in Norway or if the goods are expected to arrive at a destination within Norway in the immediate future.
There are three main types of patent proceedings:
Declaratory non-infringement proceedings.
c) Invalidity proceedings.
An infringement action may be started if infringement has occurred or if a threat of infringement exists. A threat of infringement exists if the patentee has reasonable grounds for suspecting that an act of infringement may occur in the immediate future.
A declaratory non-infringement suit may be initiated if a third party has a reasonable need for a clarification of the infringement issue.
An invalidity action may be initiated by anyone without the need for providing any concrete reasons for the action.
4.3 Obtaining relevant evidence of infringement and discovery
Patent proceedings normally starts by the patentee obtaining informal indications that the patent may be infringed, for instance information to the effect that an application for a marketing authorisation has been filed, that an offer to sell potentially infringing products has been made etc. Having obtained such information, the patentee normally sends a warning letter to the possible infringer. In the warning letter the patentee will normally request relevant information, for instance process documentation, product samples etc.
It is possible to request court ordered pre-trial discovery for the purpose of securing evidence, provided it is reasonable to assume that the evidence to be secured will be important in a subsequent court case and that there is a clear risk that the evidence will be lost or impaired unless so secured. In practice, however, such requests are rare.
When a lawsuit has been initiated, either party may request the other party to present evidence which is in his possession, and which may be significant for the case and is reasonably required. A party may refuse to provide evidence in its possession if they contain business secrets. The court may, however, order the evidence to be presented to the court and may impose on all parties in the proceedings an obligation of confidentiality. If a party refuses to present relevant evidence, the court may take the refusal into account when assessing the evidence and the court may on that basis decide against that party.
4.4 Trial decision-maker
Norway has a unitary, i.e. non-specialised, court system. There is, however, an element of specialisation at first instance in that a limited number of the judges at the District Court of Oslo are assigned for intellectual property matters. There is no specialisation at appeal levels.
At first level the court sits with one professional judge and, in most cases, two court appointed technical expert judges. The technical expert judges are normally selected on a case by case basis, depending on the expertise required. The parties normally propose candidates (either a common proposal of two expert judges or one proposal from each side) to be appointed. Expert judges are required to be impartial and unconnected to the parties. They have the same competence as the professional (legally qualified) judge, each judge having one vote. In case of dissenting opinions the decision is taken by the majority.
In preliminary injunction proceedings the decision is taken by one professional judge alone, but there will normally be appointed two experts who will assist the judge. The procedure for the appointment of court appointed experts is similar to the procedure for appointing technical expert judges. Court appointed experts do not take part in the decision. They will normally provide a written opinion during the proceedings, and the parties are allowed to cross examine the court appointed experts and have the opportunity to comment upon the written opinion during their closing statements.
In the Court of Appeal, cases are heard by three professional judges and, in most cases, two technical expert judges. The procedure for appointing technical expert judges is the same as at first instance.
In the Supreme Court, cases are normally heard by five Supreme Court justices, but the court may also in particularly important cases sit in Grand Chamber with 11 justices or in Plenary Session with all 20 justices. There are no technical expert judges in the Supreme Court, but the Supreme Court may appoint technical experts and may also allow expert witness testimonies.
4.5 Structure of the trial
Patent cases are normally decided upon the basis of a consolidated main hearing. Documentary evidence is supposed to be filed in advance, within a deadline that is normally set two weeks prior to the main hearing. Pre-hearing decisions are rarely rendered, and only in respect of procedural issues, for instance concerning the duty to present evidence or concerning the jurisdiction of the court. Only evidence and arguments that are presented to the court during the main hearing are to be taken into account when deciding the case on its merit.
The main hearing, which often lasts about one week, starts with the plaintiff’s opening arguments, where the counsel presents all the documentary evidence that the plaintiff will rely upon and sets out the arguments. Thereafter, defendant’s counsel presents supplementary evidence and sets out defendant’s arguments.
After the opening arguments, each party’s representatives and witnesses give their testimonies. Representatives and witnesses are first examined by the counsel that has requested the representative or witness to give testimony, and is thereafter cross examined by the other party’s counsel. As a general rule, fact witnesses are not allowed to be present in the court room prior to giving testimony. Representatives and expert witnesses are, on the other hand, allowed to be present at any time during the hearing.
In general, the burden of proof relies upon the party who invokes a right, i.e. on the patentee in case of infringement claims and on the third party in case of invalidity claims. The burden of proof implies that the party must present evidence which makes it more likely than not that the claim exists. In specific circumstances the burden of proof my shift to the other party. For example, a party will normally be required to present evidence which is in his possession. In case of process patents, for instance, the potential infringer is normally required to prove which process is being used.
The exclusive right of the patentee comprises, firstly, direct infringement of the patent, i.e. sale, offering for sale, manufacturing, use, importation and possession of patented products and using, offering etc. patented processes. Secondly, the exclusive right comprises products directly obtained by a patented process (indirect patent infringement). Thirdly, the patentee is entitled to prevent others from supplying essential means for the exploitation of the invention.
The scope of protection of a patent is governed by Section 39 of the Patent Act, which corresponds to Article 69 EPC: The extent of protection shall be determined by the claims. The description and drawings shall be used to interpret the claims. The scope of protection is, however, not limited to the literal wording of the claims. In Rt. 2009 p. 1055 the Supreme Court expressly recognised the doctrine of equivalence.
The scope of protection is determined according to a two-step test: First, the patent claim is construed in order to determine its actual meaning. Claim language is normally assigned the meaning it has to a skilled person. Claims must be read in light of the specification. Furthermore, the prosecution history and other extrinsic evidence may be taken into account. Second, the meaning of the claim is compared to the alleged infringing product or process. If the claims read on the attacked embodiment, there will be literal infringement. It the attacked embodiment differs from the meaning of the claims in one or more features, an assessment must be made under the doctrine of equivalence. A modified embodiment is considered to be equivalent if: a) It produces the same effect as the patented invention. b) The modification was obvious to a person skilled in the art. c) The attacked embodiment did not belong to the prior art or was an obvious modification of the prior art.
The most common defences are that the attached embodiment does not infringe the patent and/or that the patent is invalid. An invalidity claim must be filed with the competent court, i.e. the District Court of Oslo. If the infringement case is pending before the District Court of Oslo, the defendant may file a counterclaim for invalidity. If the infringement case is pending before another court, the infringement case may be stayed or transferred to the District Court of Oslo. If the infringement case is pending before the Court of Appeal, the appeal case may be stayed pending the outcome of the invalidity case, but that is up to the courts discretion. It is normally advisable for the defendant to initiate invalidity proceedings as soon as possible if it intends to rely on an invalidity defence. The defendant may request administrative review, or file a request of opposition if the time limit for oppositions has not expired, but the defendant normally prefers to raise the invalidity claim before the court.
Other possible defences include that the defendant has obtained a contractual license, that importation and marketing is allowed under the principle of exhaustion of rights (i.e. that the goods has been marketed by the patentee or with his consent in a member state of the EEA), that the defendant has a right of prior use, meaning that he is entitled to continue the exploitation, whilst retaining its general character, and that the defendant is entitled to claim a compulsory license from the patentee.
4.8 Time to first level decision
Immediately after the defendant has filed its reply in defence, the court will prepare a plan for the preparatory proceedings and set the date for the main hearing, which date shall, as a general rule, be no more than six months after the date of submission of the writ of summons. Patent proceedings are, however, usually complex and the six months’ time limit is therefore almost always exceeded. In most cases the main hearing is held about one year after the submission of the writ of summons.
At the end of the oral hearing the court declares that the case is closed for judgement. The court’s ruling shall be pronounced within four weeks after the main hearing is closed. If the case is so demanding that it is not possible to meet this deadline, the ruling may be pronounced later. If so, the court shall state the reason for the delay.
Anyone who intentionally infringes a patent, or who is an accessory thereto, may be penalized by fines or by imprisonment for a term not exceeding three months. Criminal charges are, however, extremely rare in Norway.
In civil proceedings, the infringer is liable to pay compensation for the unlawful exploitation of the invention. The patentee is entitled to a reasonable royalty as a minimum, but may also claim compensation for further damages that have been caused by the infringement. If the infringer acted with care and in good faith (i.e. without being negligent), the court may, to the extent found reasonable, order the infringer to pay compensation for the damage caused by the infringement.
Furthermore, the court may, in order to prevent further infringement, decide that infringing products shall be altered, destroyed, confiscated or be surrendered to the patentee against compensation.
Preliminary measures are available if infringement has occurred or is likely to occur in the immediate future. A request for preliminary measures, most often a preliminary injunction, will normally be handled within two to three months. In most cases there will be an oral hearing with presentation of evidence and statements from expert witnesses. In exceptional cases, where the threat of infringement is imminent, an injunction may be granted ex parte.
The requirements for granting preliminary injunctions are, firstly, that infringement will occur on the balance of probabilities, and, secondly, that the patentee will suffer serious and/or irreparable harm unless an injunction is granted. If infringement is found, an injunction will normally be granted unless the defendant provides substantial and persuasive evidence of invalidity or demonstrate that the loss or inconvenience to the defendant is clearly disproportionate to the interest of the petitioner in the interim measure being granted. If delay may pose a significant risk, the court may grant an interim injunction even if the petitioner’s claim is not proven. If the court in the main hearing decides that the petitioner’s claim was unjustified, the petitioner shall compensate any loss that the defendant has sustained as a result of the interim injunction.
4.10 Appellate review
Judgements from the district courts may be appealed to the Court of Appeal. With the exception of cases concerning values of less than NOK 125 000, leave for appeal is not required.
The Court of Appeal reviews the case in full, both factual and legal issues. The parties may, furthermore, introduce new evidence at the appeal stage. The appeal hearing is conducted in substantially the same way as the first instance hearing. Since most cases are handled by the District Court of Oslo at first instance, most appeals are heard by the Borgarting Court of Appeal, which sits in Oslo. Due to a substantial case load, the expected time from the date of the appeal until the appeal hearing is expectedly some 18 to 20 months.
Further appeal to the Supreme Court is subject to the Supreme Court’s appellate board granting a leave to appeal. The application for a leave to appeal will normally be decided within three to four months. A leave to appeal is granted in very few cases. If leave to appeal is granted, the case will normally be heard within a year after the case was admitted to the Supreme Court.
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