Under Norwegian patent law, trials necessary for the completion of an invention have been exempted from inclusion in the prior art even if they were performed in a manner that did not enable the inventor to restrict access to a limited group of people. Consequently, inventions that could have been observed by third parties during a trial prior to the filing of a patent application have been patented. However, a recent Oslo District Court decision may be the beginning of the end for the Nordic trial exemption.
In 2017 the Ministry of Justice issued a consultation memorandum regarding various changes to the IP laws. Among the proposed changes was the new rule regarding reversal of the burden of proof if an allegedly infringed patent is for a process used to obtain a product. Although the ultimate fate of this proposal remains to be seen, it is likely that when enforcing such a patent in future, defendants will bear the burden of proof to show that the patented process is not being used.
Appeals of Norwegian Patent Office (NIPO) decisions used to be handled by a separate NIPO appeals division. However, in 2013 the Board of Appeal for Industrial Property Rights (KFIR) replaced this division. The motivation for this change was to increase legal certainty through independent review and efficient, trustworthy and user-friendly prosecution of appeals. Now that the KFIR has been active for four years, it is timely to take a closer look at the extent to which these purposes are being fulfilled.
One risk of doing business, particularly for innovative technology companies, is the possible existence of conflicting third-party rights. At the very least, a patent infringement lawsuit can create uncertainty with respect to a company's ability to perform, while the worst case scenario includes injunctions, damages and possible bankruptcy. While numerous options for handling a threat of this kind exist in Norway, going directly to the courts may be particularly advantageous.
Patents and information security have always been connected and, as such, a company cannot have a well-implemented IP rights strategy if it does not consider information security. By approaching information security as a tool to protect intellectual property, companies are better placed to implement the correct measures and contingency plans and secure and extract value from their intellectual property more efficiently.
While fast-track prosecution is available only at the initiative and discretion of the Norwegian Industrial Property Office, a patent applicant can opt to avail of the Patent Prosecution Highway (PPH). The available statistics suggest that filing a PPH request in Norway will likely result in a significantly higher chance of faster prosecution, a favourable first office action and a reduced number of office actions.
Under the Patents Act, the state of the art is held to comprise everything made available to the public by means of written or oral description, by use or in any other way. However, until recently, the extent to which an oral presentation can be considered prior art was unclear. A decision of the Norwegian Industrial Property Office has provided welcome guidance on this issue.
The protection of industrial designs is an often overlooked opportunity. When seeking design protection in Norway, an applicant can file directly with the Norwegian Industrial Property Office (NIPO) under the Paris Convention for the Protection of Industrial Property or the Hague Agreement. A design filed directly with NIPO is registered after a formal examination.
Changes were made to the Patents Act in 2013 regarding damages for wilful or negligent infringement. The changes include the possibility of seeking damages based on the profits that the infringer made or amounting to double a fair licensing fee for the infringing use. It is clear from the few decisions to have used the new rules that the courts are willing to award damages based on an estimate of profits made from patent infringements.
It is now possible to establish pledges on patents, patent applications and patent licences in Norway, in accordance with the Mortgage Act. The purpose of the new freedom to pledge is to make it easier for start-ups with no possibility of financing their business in other ways, and other companies seeking funds to develop new ideas, to acquire capital through collateral in their patents, patent applications and licences.
For many years the legal status of the doctrine of equivalents in Norway has been uncertain and based on relatively old case law and legal theory. A recent case involving patented ski equipment provided an opportunity for the court to clarify the issue. Unfortunately, the decision instead served to illustrate that this concept is still developing in Norway.
Norway has acceded to the London Agreement, which reduces the requirements for translation of patents granted by the European Patent Office upon validation. It is now necessary to translate only the patent claims into Norwegian; the description can remain in English. If the patent has been granted in French or German, however, the description must be translated into Norwegian or English.