The What, When, Who and Why of Administrative Review at the Norwegian Industrial Property Office

What is an administrative review?

An administrative review is a procedure offered by the Norwegian Industrial Property Office (NIPO) as a cheaper, simpler and quicker alternative to court procedures when challenging the validity of a patent. The procedure is available for patents granted by NIPO and for granted EP patents validated in Norway.

The Patents Act Sections 52b to 52e and the Patent Regulations Section 41 provide the legal basis for administrative reviews. Unofficial translations of the Patents Act and the Patent Regulations into English can be found here and here, respectively. Section D, Chapter VI of the Patent Guidelines outlines the practicalities concerning administrative reviews.

On which grounds can an administrative review be filed?

It is worth noting that an administrative review cannot be used to challenge a patent on the ground of containing amendments extending beyond the scope of the application as filed (Patents Act Section 13). The validity of the patent can only be challenged in court based on this ground (Patents Act Section 52). Infringement proceedings and entitlement proceedings are also reserved for the courts and are not valid grounds for filing an administrative review.

When can someone file for an administrative review?

An administrative review can be requested after the expiry of the 9-month opposition period, given that there are no pending opposition proceedings (Patents Act Section 52c, GL D-VI,2.2). Furthermore, there may not be any pending validity or infringement court proceedings for the patent in question (GL D-VI,2.2), as these take prevalence over an administrative review. The possibility to request an administrative review becomes available again after a final court decision has been issued.

Who can file for an administrative review?

Generally, anyone can request an administrative review, although some restrictions apply: NIPO itself is excluded from requesting a review, as well as anyone who has been party to validity proceedings concerning the patent in question for which there is a court decision (GL D-VI,2.2).

“Anyone” is limited to “anyone having a legal interest in the matter” after expiry of the patent. A legal interest could be such as the party being involved in a situation of potential infringement (GL D-VI,2.2). The threshold for having a legal interest is relatively low.

What is the procedure surrounding an administrative review?

Filing and formalities

The request for administrative review must state the extent of the review, the grounds on which it is based and provide documentation necessary for supporting the grounds. If there are any licensees registered in the patent database, the party requesting an administrative review must also document that they have informed all registered licensees of the request. The name and address of the party, and of any representative, are required in addition to the patent number. A power of attorney is required if the representative is not an attorney-at-law.

If any of the above requirements are not fulfilled, the party will be provided with a time limit for rectifying the deficiencies. If not rectified in due time, the request will be rejected. If the deficiency concerns the lack of a power of attorney, the request will not be rejected, but NIPO will stop communicating with the representative and instead start communicating directly with the party.

A fee for administrative review is also payable to NIPO. If not paid in due time, the request is deemed to not be filed.

Substantial proceedings

The NIPO committee deciding on the administrative review comprises three members, none of whom have taken part in any of the earlier proceedings for the patent in question (GL D-VI,1). The members are normally examiners, or managers from the NIPO patent division, either from the technical field of the patent or from a different technical field. One of the members may in some instances be a legal member from the patent legal division at NIPO (GL D-VI,1).

The proprietor is given a deadline to file one round of arguments against the issues raised in the request for administrative review. NIPO may allow further responses from the parties, for instance if the NIPO committee finds additional grounds that need to be discussed during the proceedings (GL D-VI,3.1).

The parties will have the opportunity to file a further response if third party observations are filed during the proceedings (GL D-VI,3.6). The third party will not become a party to the proceedings.

Oral proceedings may be held upon request, where any such request must be reasoned (GL D-VI,3.5). NIPO has the power to initiate oral proceedings even if no requests have been put forward by any of the parties. Important to note is that no decisions will be made during oral proceedings, but the parties have the opportunity to shed light on issues that have not been adequately addressed during the written proceedings.

NIPO may seek assistance from the legal division or from an ethical committee. The legal division must be consulted if a public use of the invention prior to the filing date is alleged (GL D-VI,3.4). The ethical committee must be consulted if NIPO is uncertain whether the patent has been granted contrary to ordre public or morality (GL D-VI,3.3).

Amendments

The proprietor may file amendments in order to address the grounds for the administrative review. NIPO has the power to suggest amendments, especially if it is clear how such amendments can overcome the grounds. Any claim amendments must be sufficiently clear and should not extend beyond the content of the application as filed.

The Decision

The procedure is closed with a written decision, where the patent can either be maintained as granted, maintained in amended form or revoked. Important to note, is that the latter two outcomes have an ex tunc effect (GL D-VI,6).

The decision can also contain a ruling on payment of the costs associated with the case, where the losing party may be ordered to pay for the costs of the winning party. The parties must submit cost summaries prior to issuance of the decision if they want such ruling. The patent legal division will decide the final amount based on the consideration that an administrative review shall be a cost-reasonable option to court proceedings (GL D-VI,3.8).

The party who filed the notice of administrative review can withdraw from the procedure prior to NIPO making a decision. Consequently, the procedure will be closed without any further evaluation of the validity of the patent. NIPO will issue a brief decision stating that the case is closed (GL D-VI,3.7). The NIPO is not entitled to continue the proceedings ex officio after the claim is withdrawn by the requesting party.

Appeal

Any adversely affected party can within 2 months of the decision by NIPO submit an appeal to the Norwegian Board of Appeal for Industrial Property Rights (GL D-VI,5.1). The decision on costs can be appealed even if the outcome of the decision is not appealed.

The decision issued by the Board of Appeal can be appealed to the courts under certain circumstances. The proprietor may appeal the decision to the courts if being adversely affected. The party that requested the administrative review is barred from appealing the decision to the courts regardless of the outcome of the decision, and will have to file a separate lawsuit for the regular courts in order to continue the fight for invalidation.

Why choose an administrative review over court proceedings?

The reasoning behind NIPO offering administrative review as a procedure is to provide the public with a simpler, quicker and more cost-reasonable option compared to court proceedings. It can therefore be suitable for a party wishing to not engage with more costly court proceedings, especially if the party had originally intended to file an opposition but failed to do so within the applicable time limit.

Summary

An administrative review is a procedure unique to Norwegian patent practice, providing a cost-reasonable and fast option for assessing the validity of a patent after the expiry of the opposition period, without going to court. The proceedings are structurally similar to opposition proceedings but contain the element of covering the cost of the case for the winning party, similarly to court proceedings. However, fewer grounds can be invoked in a request for administrative review compared to in an opposition. If you require assistance or advice concerning administrative review, please contact any of our patent attorneys or attorneys-at-law who may assist you in the matter.

Written by Live Marie Hansen