Patent prosecution in Norway

What is the relevant legal framework for patent prosecution in Norway?

The Act of 15 December 1967 no. 9 relating to Patents (“the Patent Act» or “patentloven” in Norwegian) constitutes the basic legislative framework regarding patents and their extent under Norwegian law.[1] The sections of the Patent Act and its accompanying rules (“Patentforskriftene”) regulate the filing, formalities and substantive examination of patent applications and the registration, opposition, administrative review, cancellation and invalidation of granted patents in Norway.

Norway is internationally obligated to harmonize its patent legislation with the EPC (the European Patent Convention), by way of protocol 28 of the EEA agreement. Although the Norwegian delegation signed the first version of the EPC in 1973, parliament did not ratify until 2007, with Norway becoming an EPC member state in 2008. Norway acceded to the London Agreement in 2015, meaning that a European patent specification in English (or English translation thereof) no longer needs to be translated to Norwegian. Norway is also a party to the Paris convention (since 1885), the PCT (since 1979) and TRIPS (since 1994).

How to obtain a patent in Norway?

The Norwegian Industrial Property Office (“NIPO”, or “Patentstyret” in Norwegian) handles all administrative (formal and substantive) aspects of the grant procedure in Norway. Patents are granted by the NIPO from a Norwegian national application or by validation of a European Patent, granted by the EPO. Some aspects of the validation of European patents in Norway are described below.

As a general rule, the NIPO treats a first Norwegian national application relatively swiftly, issuing, a search report and written opinion (“realitetsuttalelse” in Norwegian) within five to seven months from filing. In the written opinion, the NIPO provides an overview of relevant prior art, raises any formal and/or substantive objections and possibly provides suggestions for amendments.

Further details of the grant procedure in Norway are laid out in the following three paragraphs.

What are the substantive requirements for a patent application in Norway?

Patentability of an invention requires novelty, the presence of an inventive step and industrial applicability. Additionally, the invention should not reside in the realm of non-inventions nor be explicitly excepted from patentability, for instance by being contrary to public order or to morality.

In addition, the claims should be clear and concise, and the invention must be sufficiently disclosed in order for a skilled person to be able to carry out its teaching.

In some cases, disclosure of an invention at an international exhibition will not be prejudicial to novelty. Note that the exception is, as a general rule, of little practical meaning as the exhibition must comply with stringent requirements in the Paris Convention of 1928 to qualify.

What are the formal requirements for a patent application in Norway?

An application must be filed in writing and must provide basic information, including name and address of the inventor and applicant. Important to note, is that an application can be filed either in Norwegian or in English. When using an agent or attorney, the application must also include a valid PoA. Although there is no legal requirement for having a professional representative before the NIPO, the complexity of the grant and possible post-grant procedures is not to be underestimated. Therefore, relying on the assistance of a patent attorney is highly recommended (contact us at info@baa.no for assistance with your patent project in Norway).

The NIPO will only consider an application upon payment of the filing fee, which amounts to 4650 NOK in 2021. In addition to the filing fee, a claim fee is due for each claim in excess of claim number 10, in contrast to the EPO, which only charges claim fees for each claim exceeding number 15. On the other hand, the claim fee is relatively low in Norway, amounting to 250 NOK per additional claim exceeding the tenth claim.

A discounted filing fee of 850 NOK is offered to small enterprises (as of 2020 fewer than 20 employees). Note that the definition of a discount-eligible small enterprise in Norway differs significantly from the definition used by the EPO, which follows 2003/361/EC (fewer than 250 employees and less than 50M EUR turnover).

Prior to grant, the applicant may amend the application, given that the amendments do not add subject-matter compared to the application as filed. The allowability of amendments is, for instance, touched upon in court of appeal decision LB-2011-34330 Odfjell. Note that Norwegian patent legislation follows that of the EPO. However, Norwegian patent practice at the NIPO and Norwegian courts tends to be somewhat less strict than that of the EPO as regards allowability of amendments.

The examination procedure is carried out in writing, although an occasional telephone conversation or personal interview with an examiner may sometimes help to move an application forward. There is no tradition for oral proceedings during examination at the NIPO and consequently, a fair number of office actions may be issued before an application is finally granted or rejected by appealable decision.

Should a deadline for replying to an office action inadvertently be missed, further processing (“gjenopprettelse” in Norwegian) can be requested. An administrative fee of 550 NOK applies for a first such request, which is increased to 1950 NOK for a second such request. In case the deadline for further processing is also missed, one can apply for a re-establishment of rights (“fortsatt behandling” in Norwegian). A legal change in 2019 has reduced the burden for re-establishment from “all due care” to “unintentional”, thereby deviating from practice at the EPO.

A grant fee is due when the application is accepted, together with a page fee for any page of the specification which exceeds page number 14.

Finally, annual renewal fees must be paid. Following the first three years, the nominal amount to be paid as annual renewal fees will increase. Payment of renewal fees starts only in the third year after filing of the application, at which time the renewal fees for the first three years are due simultaneously.

How can the grant process be expedited in Norway?

As part to the Patent Prosecution Highway agreement (PPH), the NIPO is obliged to consider a positive examination report issued by the patent office of another participating state or international organization, such as the EPO, thereby simplifying and speeding up the examination process before the NIPO.

The NIPO is not, however, legally bound by the conclusion of such an examination report from another jurisdiction and may therefore come to a different conclusion regarding patentability. Furthermore, the NIPO facilitates an expedited examination process (known as “KOS” or “komprimert saksbehandling” in Norwegian), which is initiated upon a written request from the applicant. A request for KOS can be filed in either English or Norwegian.

Finally, an applicant can request accelerated processing of the application, by filing a reasoned request in writing to the NIPO. The NIPO will grant such a request if current workload allows it and the request is based on sufficiently good reason, which entirely is up to the examiner’s discretion.

How are European patents validated in Norway?

Following the entry into force of the EPC in the kingdom of Norway as of 1 January 2008, European patents can take effect in Norway, given that the correct procedure for validation is followed.

The European patent must be filed with the NIPO for validation within three months of the granting of the European patent by the EPO. Subject to the London Agreement, no member state may demand a translation of the European patent to the local language. Consequently, a translation of the specification to English is sufficient. The granted claims must, however, be translated into Norwegian (Please feel free to contact us at mail@baa.no should you need help with validation of your European Patent in Norway).

The NIPO will also require that separate validation fee is paid upon filing a validation request, which currently amounts to NOK 5 500.

Is there a post-grant opposition procedure in Norway?

When a patent is granted, third parties may file an opposition to the granted patent. An opposition must be supported by a substantive reasoning, as manifestly unfounded oppositions will be discarded without further procedure by the NIPO.

An opposition must be filed with the NIPO in writing and no later than nine months following the date of grant. The language of the opposition may be either Norwegian, Swedish or Danish. An extension of the closing date will only be granted for additional documentation in extraordinary cases, subject to the discretion of the NIPO. No extension is granted for the opposition itself.

Apart from grounds for opposition as valid before the EPO (failure to meet the requirements of patentability, lack of disclosure, added subject-matter), an opposition in Norway may also be filed if the patent has been granted to the wrong applicant.

During the opposition, the patentee and the opponent shall each have the opportunity to state their case once, with the patentee having the last word. Only in exceptional cases will another round of arguments be allowed, before a decision is taken. Contrary to the procedure before the EPO, there are usually no oral proceedings to conclude the procedure and the almost all opposition proceedings are therefore entirely written procedures. The parties to opposition proceedings may request the NIPO (or the IP Appeal Board, “KFIR” in Norwegian) to hold an oral hearing, but this option is rarely used and may in any case be denied by the NIPO/KFIR if considered unnecessary or disproportionate with regards to costs and time spent. Following an opposition, a patent may either be maintained as granted, maintained in amended form, revoked or transferred to the opponent (in case the ground for opposition was a grant to the wrong applicant).

Note that amendments extending the scope of protection of the patent are prohibited. The patentee can, however, request a voluntary limitation of the patent’s scope. Such a limitation of the claims will be examined by the NIPO for clarity, support and added matter; rejection of a proposed limitation by the NIPO is by appealable decision. The fee for requesting a limitation is currently 7000 NOK.

As the opposition is considered in conjunction with the application procedure, a rejected opposition will not render the opponent liable for the legal costs of the applicant.

If the time limit for opposition has passed – what options remain to challenge the patent?

A granted patent may be reviewed and invalidated by a decision of the court system following regular court procedures.

Following a 2007 amendment to the Patent Act, invalidation subsequent to the nine-month opposition period may now also take place through a process of administrative review. The amendment was implemented to offer a more efficient and accessible alternative to court proceedings.

Administrative review is a written procedure for dispute resolution, meaning that the final decision may (in any most cases will) involve the losing party covering the legal costs of the counterpart.

Is there a possibility to appeal decisions from the NIPO?

A rejection of patent handed down by NIPO may be appealed to the independent IP Appeal Board (“KFIR” in Norwegian). KFIR is the administrative body responsible for processing appeals from the NIPO in all IP matters under Norwegian law.

An adverse decision by the IP Appeal Board may be appealed further and brought before the regular court system. The court of first instance will be the Oslo District court, as it has exclusive jurisdiction in IP matters.

Do you want to know more about patenting in Norway or are you searching for a Norwegian or a European patent attorney? Contact us at mail@baa.no

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