1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, federal or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
The principal source of law relating to patents is the Act of 15 December 1967 No 9 on Patents (‘the Patents Act’) with supplementary Regulations of 20 December 1996 No 1162 and of 23 December 1996 No 1263. Norway has ratified the Paris Convention, the TRIPS Agreement and the Patent Cooperation Treaty, but not (yet) the Patent Law Treaty or the European Patent Convention (‘the EPC’). The Patents Act is nevertheless largely harmonised with the substantive provisions of the EP rating under the EEA Agreement between the EU and the EFTA Member States, Norway is obliged to implement all relevant EU directives relating to patent law. Hence, Norway has implemented Directive 98/44/EC (the Biotech Directive) and Regulation 1768/92/EEC (Supplementary Protection Certificate for Medicinal Products).
Although there are a few procedural provisions in the Patents Act particular to patent invalidity proceedings, patent litigation by and large follows the rules set forth in the Act of 13 August 1915 No 6 (‘the Civil Procedure Act’). This Act will be replaced by the Act of 17 June 2005 No 90 (‘the New Civil Procedure Act’), most likely as of 1 July 2007. Relevant for cross-border litigation is the Lugano Convention, the EEA counterpart to the Brussels Convention implemented in Norwegian law by the Act of 8 January 1993 No 21.
When interpreting statutory provisions, Norwegian courts will look into the travaux preparatoires in order to establish the correct interpretation.
There is no large body of Norwegian patent-related jurisprudence, and hence a number of legal issues remain unresolved. It is not clear whether Norwegian courts would consider case law from the Boards of Appeal of European Patent Office as a significant source of law. However, the Norwegian Patent Office has largely followed EPO case law in its administrative practice over recent years.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
There is no general rule in Norwegian law on which sources take precedence in the event of conflict; it depends on an overall evaluation of the sources of law in each case. However, the starting point is always the wording of the relevant statutory provision, which will be construed and, if necessary, supplemented by the courts. Although not binding in a strict sense, the case law of the Supreme Court is considered as authoritative and largely binding for the lower courts.
Acts and Regulations which serve to implement Norway’s obligations under the EEA Agreement take precedence over other Acts and Regulations (see s 2 of the EEA Act of 27 December 1992 No 109).
2.1 In which courts are patents enforced? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
Norway does not have a specialised court system. Patent infringement cases are adjudicated by the ordinary courts and a patent holder can therefore not expect a high level of patent law expertise from the judges. The proceedings must be instituted at the district court in the first instance (‘the District Court’), normally in the district in which the defendant resides although an infringement action may also be brought in the district in which the infringement takes place.
However, by virtue of the Patents Act s 63 Oslo District Court is vested with exclusive jurisdiction in the first instance over certain patent matters, including actions related to invalidity or limitation of patent claims, transfer of a patent, the right to an invention which is subject to a patent application, as well as applications for a compulsory licence. In Oslo District Court, these cases are dealt with by designated judges, who in practice also hear other patent (infringement) matters. Consequently, at this court litigants can expect judges with a certain experience of patent cases. The judges of the Court of Appeals will generally not be as experienced in patent matters. At both instances, a party may add technical expertise to the court by requesting that technical experts are appointed as co-judges in addition to the professional judges (see ss 323–325 of the Civil Procedure Act, s 88 of the Courts of Justice Act).
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
The Norwegian court system is hierarchical, but first instance courts are not strictly speaking bound to follow decisions handed down by second instance courts. Decisions from the Supreme Court are authoritative and are generally followed by first and second instance courts unless the cases are distinguishable on the facts or other significant sources of law provide strong implications in favour of a diverging result. Decisions of foreign courts are not binding on Norwegian courts, but may be taken into account at the court’s discretion, particularly on issues which have not been addressed by the courts in Norway. Decisions from the other Scandinavian countries (Sweden and Denmark) will normally be considered to provide some guidance since historically the Patent Acts of these countries were harmonised. There is a new trend indicating that decisions from other countries might also be expected to be taken into account.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
Invalidity actions fall under the exclusive jurisdiction of Oslo District Court (see s 63 (1) No 4 of the Patents Act (question 3 above)). Any court may adjudicate an infringement action, but cannot acquit the defendant on the basis that the allegedly infringed patent is invalid unless and until a decision to this effect has been handed down by Oslo District Court (or Borgarting Court of Appeal or the Supreme Court on Appeal) (see s 61 of the Patents Act). Thus, as a point of departure, courts do not deal with infringement and invalidity simultaneously. A defendant in an infringement action who wants to attack validity must bring a separate law suit before Oslo District Court, and cannot bring invalidity into the infringement proceedings unless Oslo District Court is the court seized with the infringement action. In such cases, the defendant may initiate a cross-action for invalidity and have the claims for infringement and invalidity simultaneously adjudicated.
Infringement proceedings may be stayed pending the outcome of invalidity proceedings (see s 107 of the Civil Procedure Act). However, the court may refuse to grant such a stay. Alternatively, a party may request the infringement action be joined with the invalidity action before Oslo District Court (see s 38 of the Act of 13 August 1915 No 5 (‘The Courts of Justice Act’) and s 98 of the Civil Procedure Act).
If acting within nine months of the patent grant, a party who wishes to contest the validity of a patent may, instead of starting an invalidity action, file an opposition to the patent with the Norwegian Patent Off ice (see s 24(1) of the Patents Act), and stay of infringement proceedings may also be requested on such basis. For oppositions based on the commercial exploitation of the invention being contrary to ordre public or morality, the time limit for filing an opposition is three years (see s 24(2) of the Patents Act).
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
As a rule, parties use attorneys at law to represent them in court, even if s 44(2) of the Civil Procedure Act provides that certain other persons can represent a litigant. Foreign attorneys may be used, but must normally appear along a Norwegian attorney if he or she is not fluent in Norwegian (see Chapter 10 of Regulation of 20 December 1996 No 1161). With a few exceptions, only attorneys who are specifically admitted to the Supreme Court can appear at hearings before the Supreme Court (see s 221 of the Courts of Justice Act).
In opposition proceedings before the Patent Office, parties are usually represented by patent agents with technical background employed at specialised patent agencies engaged in the filing and maintenance of patent applications, although anyone may in principle represent a party in such proceedings. According to ss 12 and 67 of the Patents Act, a patent holder who is not domiciled in Norway must have a Norwegian-domiciled representative registered in the Norwegian Patent Register. However, as this requirement, if applied to persons domiciled within the EEA, will be contrary to Norway’s obligations under the EEA Agreement, an amendment is underway.
2.5 What is the language of the proceedings? Is there a choice of language?
The language of court proceedings is Norwegian (see ss 135 and 136 of the Courts of Justice Act). As a rule, all written material (pleadings and documentary evidence) must be in Norwegian or be translated. Oral proceedings are held in Norwegian with the assistance of interpreters if required. The court may, however, accept documentary evidence or testimonies in a foreign language if it is comprehensible for everyone involved – in practice Swedish, Danish or English.
Generally, an opposition must be filed in Norwegian, Danish or Swedish (see s 4 of Regulations of 20 December 1996 No 1162; s 10–3 of Regulations of 23 December 1996 No 1263). However, if particular circumstances are present and the adverse party does not object, the Patent Office might also accept oppositions filed in English, French or German (see s 10–3 of Regulations of 23 December 1996 No 1263). The Patent Office may conduct oral proceedings on oppositions (see s 7 of Act of 2 July 1910 No 7). Such proceedings are held in Norwegian.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
The recent continental legal theory discussions and court practice on cross-border and extraterritorial injunctions have mostly been related to European patents. Since a European patent is not valid in Norway, many of the ‘continental’ issues are not relevant.
Consequently, a cross-border injunction issued by a Norwegian court against defendants in other states would primarily be relevant only in relation to violations of a Norwegian patent. In such cases, a Norwegian court would accept defendants domiciled abroad to be joined in injunction proceedings in Norway on the basis of Art 6(1) of the Lugano Convention (which corresponds to Art 6(1) of the Brussels Convention), ie provided the law suit is based upon similar legal and factual circumstances.
As a rule, an injunction issued by a Norwegian court relating to a Norwegian patent will cover Norwegian territories only, possibly also covering preparatory steps abroad aimed at subsequent violations covering Norwegian territory.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
Again, the recent continental legal theory discussions and court practice on ‘torpedo’ actions have mostly been related to European patents. Since a European patent is not valid in Norway, many of the ‘continental’ issues are not relevant.
An action abroad aimed at securing a declaratory non-infringement judgment in respect of a Norwegian patent against a Norwegian defendant not being domiciled or doing business in that country would most likely not prevent a Norwegian court from adjudicating a corresponding law suit in Norway. However, the action abroad could result in the Norwegian court informally staying the Norwegian proceedings, pending clarification of the involved issues.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
The scope of protection for a patent is determined by interpretation of the patent claims (see s 39 of the Patents Act). Literal infringement will be found if all elements of a claim are present in the infringing process or embodiment (see Rt 1997.1759). Although there is no affirmative Supreme Court jurisprudence, it is generally accepted in legal theory and court practice that a doctrine of equivalents exists in Norwegian law. However, in the absence of authoritative jurisprudence the scope of the doctrine is not clear. Legal theory has argued a general doctrine of equivalents similar to that which has been formulated elsewhere in Europe (see Stenvik Patenters beskyttelsesomfang (2001) p 670). This view has been confirmed in some recent lower court rulings in preliminary injunction proceedings, in which patent protection has been recognised for modifications that are interchangeable with the claim elements they substitute and which constitute obvious alternatives for a skilled person starting from the technical content of the patent claim. However, the rulings are not authoritative and one must await a possible clarification by the Supreme Court of the exact scope and limits of the doctrine of equivalents.
The most important defences are:
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
The enforcement of a patent in itself will not expose the right holder to liability for an antitrust violation. However, in theory it is possible – although highly unlikely – that a patent holder may incur such liability if the particular circumstances under which a patent was being enforced were found to amount to an abuse of a dominant position. Furthermore, and slightly more practical, s 47 No 2 of the Patents Act provides that the courts and the Norwegian Competition Authority may upon application issue compulsory licences if they consider that the refusal of a patent holder to grant a commercial license may substantially limit competition. Again, this is a provision for the exceptional circumstances and so far no such licence has been issued.
The grounds for invalidation are exhaustively listed in s 52(1) of the Patents Act, corresponding to Art 138 EPC. A patent can be invalidated on the following grounds:
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
A court can partially invalidate a patent in invalidity proceedings, for instance by deleting invalid claims. Utility model protection is not available under Norwegian law.
Due to the division of powers between the Patent Office and the courts, a court may not rewrite invalid claims into valid ones, nor can the patent claims otherwise be amended by the courts during a law suit (see Stenvik Patentrett (1999) p 250). After the patent grant, the only option for amending the claims is to file a motion for administrative patent scope limitation with the Patent Office (see s 39 a of the Patents Act). Such limitation may only lead to a narrowing and not to an extension of the scope of protection. A motion for scope limitation may be filed during a law suit, upon which a stay of invalidity proceedings may be requested.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
Generally, an otherwise valid patent cannot be deemed unenforceable as such (see however question 12). There are no general time limits for filing of patent infringement law suits, but a claim for monetary damages will, as a rule, be statute barred if court action is not initiated within three years of the date the aggrieved party should have become aware of the loss and the identity of the infringer (see s 9(1) of Act of 18 May 1979 No 18 on Limitation). However, a right holder who is aware of infringing activities but fails to object to the infringing activity may risk enforcement being barred under general principles of acquiescence or laches. Hence, patent holders faced with infringement should initiate proceedings within a reasonable time of having become aware of the infringing activity. In particular, preliminary injunction proceedings must be initiated rapidly after becoming aware of infringing activities, as it will otherwise be difficult to establish the required necessity of such measure.
3.8 Can a patent holder bring a law suit claiming both for patent infringement and unfair competition for the same set of facts?
A patent holder can bring a law suit on the basis of both patent infringement and unfair competition for the same set of facts, and the protection offered by these different set of rules might overlap. Relevant provisions on unfair competition are set out in the Act of 16 June 1972 No 47 (‘the Marketing Practices Act’) s 8 a (product imitation) and s 1 (general clause). Section 8 a of the Marketing Practices Act is applicable if the defendant has copied a product in a manner which unfairly exploits the claimant’s efforts or results and entails a risk of confusion as to the origin of the goods. Section 1 generally prohibits actions which amount to unfair competition and violate honest commercial practices, and may be applied to cases where there is no risk of confusion or the defendant’s behaviour is disloyal in another manner not reflected by the scope of s 8 a.
3.9 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
To have standing to sue, a party must prove a sufficient legal interest in the law suit (see ss 53 and 54 of the Civil Procedure Act). Aside from the patent holder and the exclusive or sole licensees, non-exclusive licensees are also regarded as having such interest and thereby standing to sue. A licensee does not need to be registered to sue. Based on the circumstances, it may be that a court would accept a law suit also from a distributor who alleges to have a claim for patent infringement, at least if the law suit is also based on other grounds such as unfair competition.
3.10 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
An alleged infringer may bring an action for declaratory judgment of non-infringement if he can prove that he has a sufficient legal interest in such action. The alleged infringer must demonstrate an actual need for court clarification of whether the activities can continue without liability for infringement, ie it must be demonstrated that he may reasonably fear negative sanctions and/or reactions from the right holder if the activity continues. Such need for court clarification may be demonstrated by reference to a warning letter from the right holder demanding that infringing activities are ceased.
4.1 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
Patent infringement proceedings might be directed against any defendant allegedly taking part in the infringing activities. Thus, the defendant(s) might be the infringing company as such, its contributory employees and/or CEO and the directors of the board. If claims are brought against natural persons, the claims must be related to their alleged acts or, as the case may be, omissions; omissions being especially relevant in relation to board directors.
Action might also be brought against certain acts of contributory infringement (see s 3(2) of the Patents Act). Firstly, it will be an act of infringement to offer or supply means to exploit the invention in Norway to someone who is not entitled to do so, if the means relate to an essential element of the invention and the supplier knows or it is obvious from the circumstances that the means are suitable and intended for working the invention. If the means provided are staple commodities, the supplier will only be liable for infringement if he has induced the recipient to infringe the patent.
A defendant may not add or subtract parties to litigation without the consent of the claimant. The claimant might also add additional defendants to the law suit after the originating writ has been served upon the original defendant(s) (see s 61 of the Civil Procedure Act). All such changes must be made as early as possible. Furthermore, defendants may only be added to the action if the claims against all defendants relate to the same set of law and facts and have the same court venue (see s 68 No 2 of the Civil Procedure Act).
A claimant may subtract defendants. However, if the originating writ has already been served on the defendant such subtraction means concurrently renouncing the infringement claim (see s 67(1)) of the Civil Procedure Act).
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
A patent holder seeking to enforce its rights in Norway must file an ordinary law suit before a competent court, normally in the district where the infringer resides (see ss 17 and 18 of the Civil Procedure Act) or at the place of the infringement (see s 29(1) of the Civil Procedure Act). There are no administrative infringement proceedings available.
Criminal proceedings are available for wilful infringement or contribution to infringement (see s 57 of the Patents Act). The sanctions are fines and/or imprisonment for a maximum of three months). Public prosecution is conditional upon a request from the aggrieved party, but such request will normally not trigger a public prosecution. In addition to the patent holder, an exclusive or sole licensee will have status as an aggrieved party.
Border measures are provided by s 15–13 of the Act on Enforcement of Claims, Act of 26 June 1992 No 86 (‘the Claims Enforcement Act) and s 39 of Act of 10 June 1996 No 5 on Customs. The provisions state that a patent holder who has grounds for suspecting importation of infringing goods may apply to the district court for a preliminary injunction ordering the customs authorities to suspend the release of such goods. The court normally requires the right holder to post a security for the potential loss suffered by a wrongful seizure (see s 15–6 (1), second sentence of the Claims Enforcement Act). Norwegian law does not provide for either ex officio action from the customs authorities or a simplified procedure for destruction of infringing goods without law suit.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
ADR methods are available for patent disputes on the same basis as for other civil disputes, but are rarely used in practice as they are generally deemed unsuitable for this type of dispute. An arbitration tribunal has no competence to pronounce a patent invalid, and must therefore treat it as valid for the purposes of deciding an infringement claim (see s 9(1) of Act of 14 May 2004 No 25 on Arbitration and the Supreme Court decisions in Rt 1958.1326 and Rt 1979.1117). As part of ordinary court proceedings, judges will normally try to mediate between the parties and encourage them to reach a settlement. In addition, a specific scheme of court mediation has been applied in certain courts of first instance over the past few years and will become permanent under the New Civil Procedure Act (see Chapter 8–II).
Patent infringement proceedings are initiated by a writ from the claimant followed by a defence from the defendant, which usually have to be filed within 21 days of the service of the writ. The court then fixes a date for the main hearing, which is usually held within 9–12 months. There is normally a further exchange of written pleadings during this period (with deadlines for each filing set by the court) which includes the submission of documentary evidence before the main hearing. As a general principle such pleadings serve as preparations for the case. Norwegian procedural law builds on the principle that the court may only rely on what is being presented orally to the court at the main hearing, therefore the case will be argued in full directly before the court at the main hearing, and any written evidence upon which a party wishes to rely must be read out at the main hearing. Consequently, the main hearing is often extensive and may typically last from a few days to several weeks in complex cases.
Juries are not used in civil cases in Norway. Thus, all disputed issues are decided by professional judges – one judge in the District Court, three judges in the Court of Appeal and five judges in the Supreme Court. In addition to the professional judge(s), at the level of the District Court and Court of Appeal two or four lay judges with special technical expertise may be appointed at the request of a party (see ss 323 to 325 of the Civil Procedure Act; see s 88 of the Courts of Justice Act). This is often practised in patent cases that require a particular technical expertise.
6.3 To what extent are documents, affidavits, witnesses and/or (court appointed or private) experts used? Is it possible to cross-examine witnesses?
The parties are free to submit documentary evidence during the exchange of pleadings that precedes a trial, including documents originating from the prosecution before the Patent Office. As a rule, witness testimonies must be presented in oral form and directly before the court in the main hearing. Affidavits or other statements may only be used within the limitations of s 197 of the Civil Procedure Act, by which out-of-court statements prepared in connection with the litigation, except for statements given by court-appointed experts, may only be submitted with the consent of the other party, or if it is impossible to examine the person that has given the statement in court. Hence, use of written statements from privately-appointed experts is as a rule dependent upon the consent of the other party. In patent disputes, the parties will regularly have retained private experts and be interested in presenting expert statements, and will often mutually consent to such evidence being submitted.
With s 21–12 of the New Civil Procedure Act the rule laid down in s 197 will be reversed, and the use of written statements will generally be allowed as long as the other party may cross-examine the person that has given the statement in court.
Both factual and expert witnesses may be used as the parties see fit. The examination of witnesses is less formal than in many foreign courts. Generally, the witness will first be examined by counsel for the party whose witness it is, and then cross-examination by counsel for the other party (see s 218(1) of the Civil Procedure Act). There are no particular rules governing examination in-chief and cross-examination. However, the court has a fairly wide discretion to administer the witness examination and some judges take an active role in examining the witness, and may also cut off a line of questioning by a party’s counsel.
Expert witnesses are particularly important in patent disputes. The court may appoint expert witness(es). Regardless of whether there is a court-appointed expert, the parties may – and generally will – use private expert witnesses.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
There is no general disclosure obligation in Norwegian law. As a rule, evidence from an adverse party and third parties should be obtained by oral testimony. If a person is staying on Norwegian territory, he is obliged to give such testimony after being legally summoned (see s 111 (parties) and 199 (non-parties) of the Civil Procedure Act). In order to review physical evidence, the court may decide to conduct an inspection in accordance with Chapter 17 of the Civil Procedure Act, for instance of the defendant’s production facilities.
For written evidence a form of ‘specific discovery’ is available in the course of the proceedings. Specific documentary evidence may be obtained by request to the other party or third parties to submit documents in accordance with ss 250 and 251 of the Civil Procedure Act. Documents must be individualised (see s 253). Therefore, a general request for all correspondence regarding a matter is not permissible. Statements containing confidential subject matter may be withheld. Although the court may order a party to disclose the documents requested, there are no means to enforce such an order against a party.
Although pre-trial discovery in a general form is not available, Chapter 20 of the Civil Procedures Act provides for the securing of evidence prior to the filing of legal proceedings if there is reason to fear that evidence might otherwise be lost or its availability seriously hampered (see s 267). If possible, the applicant is required to name the opposing party, and that party will be heard prior to the court’s ruling. However, such an application may also be filed for the purpose of securing evidence as to the identity of an unknown infringer.
Section 271 a of the Civil Procedures Act provides that an application for the securing of evidence may be dealt with on an ex parte basis, if there is reason to fear that the opposing party may hinder the collection of evidence. This provision was introduced in 2004 and serves to implement Art 50 TRIPS with respect to disputes over intellectual property rights.
6.5 What level of proof is required for establishing infringement or invalidity?
The level of proof required for establishing infringement or invalidity follows the general principle of preponderance of the evidence. Hence, the court will base its decision on the facts proven on a balance of probabilities. However, the threshold may in practice be somewhat higher for proving invalidity than infringement, as the courts will place emphasis on the fact that the patentability criteria have been assessed by skilled staff at the Patent Office who have found the application eligible for patent (see the Supreme Court decision in Rt 1975.603).
Norwegian law does not contain statutory rules regarding burden of proof and hence does not provide a rule on reversal of the burden of proof in cases on infringement of process patents. However, it follows from the principle of free evaluation of evidence that a defendant will generally be liable for patent infringement if he has manufactured a product protected by a patented process without being able to substantiate that a different process has been used (see Stenvik Patentrett p 376).
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
The duration of first instance proceedings in patent matters will typically be 12–18 months from the date of the originating writ, depending on the complexity of the case and the workload of the court. It is difficult unilaterally to expedite the proceedings. However, if the claimant and the defendant cooperate, a somewhat faster adjudication might be possible.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of defendant?
A defendant in infringement proceedings may seek to delay the proceedings by filing an invalidity action or an opposition and request stay of the infringement proceedings on this basis. The claimant may try and counter such tactics by requesting the court not to stay the infringement proceedings or to join the two proceedings. Other tactics of the defendant may be to delay his availability for hearing so that the case is scheduled for the latest date possible, or to ask for repeated extensions of time limits to file written pleadings.
7.1 What remedies are available against a patent infringer (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
The right holder may obtain a permanent injunction (ie for the remaining patent period), which may order the defendant not only to cease and desist from the infringing activities, but also to recall infringing products from the channels of trade. Damages are available (see below question 7.3). Section 59 of the Patents Act provides an exhaustive list of other measures that may be imposed upon the claimant’s request; namely alteration of infringing products to make them non-infringing, destruction or confiscation of infringing goods and delivery up of infringing products to the right holder against remuneration. Under Norwegian law, the defendant may not be ordered to publish the judgment. However, the claimant might normally publish the judgment on his own initiative, ie in as far as it relates to issues that have been argued in open court and the court has not prohibited publication of the whole or parts of it. Decisions from the Supreme Court and the Courts of Appeal are published regularly in the subscription database ‘Lovdata’. Fresh decisions are available online for free at www.lovdata.no. Decisions are published in Norwegian.
Under s 148 of the Civil Procedure Act, the court may grant anticipatory enforcement of an injunction, making it enforceable before it becomes final and binding (rechtskraftig). In such case, the injunction may be enforced even if the defendant appeals. Although the provision generally is rarely used in practice, it is of practical interest especially in relation to patent cases in which a preliminary injunction was not requested or obtained. Anticipated enforcement is conditional upon the claimant providing security for the potential loss to the defendant.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
A court decision is legally binding only upon the parties to an action. Thus, an injunction is not effective against the infringer’s suppliers or customers as long as these have not been parties to the action. However, the injunction against the infringer may order the recall of products from the channels of trade, thereby also giving it practical effect for suppliers and customers of the infringer.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost profits, account of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
Monetary remedies are provided for in s 58 of the Patents Act. According to s 58, ‘anyone who intentionally or by negligence has committed a patent infringement shall be liable to pay compensation for the exploitation of the invention, as well as compensation for the further damage caused by the infringement’. According to the travaux preparatoires, payment of ‘compensation for the exploitation’ must be based upon a reasonable licence fee, in accordance with normal business practice. Additional loss not covered by the ‘compensation for the exploitation’ (ie increase of costs, loss of past or future profit) is recoverable according to the alternative ‘compensation for the further damage’. However, in court practice, there is a tendency to underestimate the total economic loss caused by an infringement.
Compensation may be reduced where the infringer is guilty of minor blame only. If the infringer has acted with care and in good faith, the court may measure out damages on a mere discretionary basis, ie ‘to the extent found reasonable, order the infringer to pay compensation for the damage caused by the exploitation’. Punitive damages are not available.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
Preliminary relief in the form of a preliminary injunction is available by motion to the District Court. At present, the conditions are set out in s 15–2 (see s 15–1 of the Claims Enforcement Act), but in the future, the provisions on preliminary injunctions will be incorporated in Chapter 34 of the New Civil Procedure Act.
In order to obtain a preliminary injunction, the claimant must demonstrate the probability of his claim and of the necessity of a preliminary measure, ie he must substantiate a prima facie claim for infringement and that an injunction is necessary either because enforcement would otherwise be substantially hampered, or because the claimant would incur substantial loss or harm if an injunction is not granted. The threshold for proving the latter has not been set high by the courts, making preliminary relief an available option to claimants with a good prima facie case of infringement. Section 15–2(2) sets forth an additional condition, namely that the court may only grant a preliminary injunction if it considers, on the balance of interests, that the loss or inconvenience of an injunction to the defendant is not obviously disproportionate to the right holder’s interest in such injunction. If it grants an injunction, the court will normally order the claimant to post a security for possible loss of the defendant (see s 15–6(1), second sentence of the Claims Enforcement Act). Preliminary injunctions may be enforced to stop the infringing activity as soon as the court order is served upon the defendant (see s 4–13 of the Claims Enforcement Act), regardless of whether the defendant appeals.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
As a rule the court grants a preliminary injunction after an inter partes hearing. However, an ex parte injunction may be granted if there is a risk related to the delay. Upon notice of such injunction, the defendant may demand subsequent oral proceedings (see ss 15–7(2), 15–10 and 15–8 of the Claims Enforcement Act). It is unlikely that a Norwegian court would grant an ex parte injunction unless the patent holder can establish a strong prima facie case of infringement and a clear and urgent need for the injunction.
8.3 Is claimant entitled to ask for an order that defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
No order similar to the saisie-contrefaçon is available under Norwegian law. However, if a piece of evidence would otherwise be difficult to obtain, it is possible to take oral testimony or inspect physical evidence before trial by court interrogation or inspection in accordance with Chapter 20 of the Civil Procedure Act (see above question 6.5).
Further, at least in theory, there is a possibility of obtaining evidence by having the Public Prosecution Authority conduct a seizure in accordance with the Criminal Procedure Act of 22 May 1981 No 25 s 203.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
It follows from the Supreme Court’s ruling in Rt 2004.763 that a defendant may put validity at issue in preliminary injunction proceedings. Following this ruling, the preliminary injunction court may prejudicially consider the likelihood of the patent being invalid as part of the overall assessment of whether the claimant has established a probable claim for an injunction.
Preliminary injunction proceedings in the first instance will normally follow the same pattern as main proceedings, see above question 6.1. However, the preliminary injunction proceedings will normally be more summary and simplified than main proceedings. An appeal against a preliminary injunction decision is normally handled in writing only, without oral hearings. Thus, this kind of appeal proceeding is adjudicated more simply and faster (normally within six months) than appeal in main proceedings. The same goes for a possible third instance appeal.
8.6 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
The rules on documents and witnesses set out in the Civil Procedure Act apply mutatis mutandis to preliminary injunction proceedings (see s 15–14 of the Claims Enforcement Act). However, the prohibition (set out in s 197 of the Civil Procedure Act) against production of statements drafted in connection with the proceedings does not apply, meaning that such statements may be presented to the court if on a discretionary basis the court accepts such evidence. Even if preliminary injunction proceedings are of a more summary character than main proceedings, the complicated technical facts to be considered in a patent case may result in the production of evidence being as extensive as in main proceedings, with both court-appointed experts and private experts being used.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
The claimant must render his claim and the necessity of a preliminary injunction probable (see s 15-6(1), first sentence of the Claims Enforcement Act). Thus, infringement or invalidity must be proven on a preponderance of the evidence.
Generally speaking, preliminary injunction proceedings take some 1–3 months from the application being filed. However, preliminary injunction proceedings related to complicated patent issues might last for up to 6–12 months.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
It is necessary to start main proceedings in order to have a preliminary injunction confirmed as final and binding (rechtskraftig). This does not imply a mandatory duty upon the claimant to initiate such confirmation main proceedings. However, the court may in rulings granting a preliminary injunction set a time limit for the claimant to initiate main proceedings (see s 158 (3) of the Claims Enforcement Act). If such time limit is set, the preliminary injunction will lapse if the claimant does not initiate main proceedings before its expiration (see s 15–12(1) b)).
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
In main proceedings on infringement or invalidity, the decision handed down will have the status of a judgment (dom). Such judgments can be appealed to a Court of Appeal and ultimately to the Supreme Court (see s 355(1); ss 3 No 1 and 6(1) of the Civil Procedure Act). The time limit for filing an appeal is one month (see s 360(1)). Generally, it is difficult to have a case tried in more than two instances, as only cases of principal significance are admitted to the Supreme Court. However, since the number of patent disputes adjudicated by the Supreme Court has been very limited, a rather high percentage of such appeals have been admitted.
In preliminary injunction proceedings, the decisions handed down will have the status of a ruling (kjennelse). Such rulings may be appealed from the first instance court to a Court of Appeal (see s 396 of the Civil Procedure Act (see s 15–14(1), first sentence of the Claims Enforcement Act). A further appeal to a three-judge panel of the Supreme Court (the Kjœremålsutvalg) is possible, but only on matters of law and not on the facts (see s 404 of the Civil Procedure Act). The Kjœremålsutvalg has a wide discretion in summary adjudication of appeals without extensive reasoning (see ss 403 a) and 404(2) of the Civil Procedure Act).
The time limit for filing an appeal against a ruling is the same as for a judgment (see s 398(1)). As opposed to appeal proceedings on judgments, appeals regarding preliminary injunctions will normally be decided on the basis of written material, without oral proceedings.
9.2 How long do appeal proceedings typically last?
The duration of second instance appeal proceedings in patent matters will typically be almost of the same duration as first instance proceedings, ie 12–18 months. If a Supreme Court appeal is admitted, the duration of such proceedings will typically be 8–12 months. Appeal proceedings relating to a preliminary injunction are faster as they normally do not require a court hearing, and will regularly be handled within 4–6 months.
10. LITIGATION COST
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
The level of costs will depend on the complexity of the case. Typically, one party’s costs for main proceedings (including pre-trial preparations) in patent disputes in one court instance might range from NOK 250–300,000 upwards to 10 times this amount.
10.2 Are costs recoverable from the losing party?
As a rule, costs including attorneys’ and experts’ fees are recoverable from the losing party (see s 172 of the Civil Procedure Act). Since s 176 provides that only ‘necessary’ costs may be recovered and this provision is interpreted in a rather strict manner, in complicated matters the victorious party will very often recover only part (30–60%) of the legal costs incurred.
If the outcome has been doubtful, new evidence has been revealed during the proceedings or the winning party is to blame for the case coming to court, the court may on a discretionary basis decide not to award costs to the victorious party. Further, if the alleged infringer approves the claim(s) immediately after an action is initiated, the claimant must cover the costs of the losing party as the law suit was unnecessary (see s 173 of the Civil Procedure Act).
By and large, the same rules apply for appeals and for preliminary injunction proceedings (see s 180 of the Civil Procedure Act and s 3–4 of the Claims Enforcement Act).
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
The most significant development is that the Norwegian Government has now put ratification of EPC on the agenda, with the aim of having Norway ratify EPC and join EPO by January 2008.
On the agenda is also the implementation of the experimental use exception (the so-called Bolar provision) as provided by Art 10(6) of Directive 2004/27/EC relating to medicinal products, whereby a manufacturer of generic pharmaceuticals is permitted to use the technology of a patented pharmaceutical to perform work required to obtain regulatory approval of the generic product, while the patent is in force, enabling him to market and manufacture the generic product as soon as the patent expires.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
There is no major legislation relating to patent enforcement in the pipeline. Important in the coming years will be the possible implementation of the Enforcement Directive 2004/48/EC. However, the position of the Norwegian Government so far has been that this directive falls outside the scope of the EEA Agreement on the grounds that it relates to procedural laws. Should the Government maintain this position and elect not to implement any part of the Enforcement Directive, a case may be brought before the EFTA-court to clarify the scope, if any, of Norway’s obligation to implement this directive.
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
There has for many years been a significant lack of updated academic reference works on patent law. This has recently been remedied by the publication of two works by Are Stenvik, professor of patent law at the University of Oslo:
Akademisk forlag, Oslo, 2001) (with summary in English). Another useful reference is the website of the Norwegian Patent Office, with information in English, at www.patentstyret.no.
