Mikkel Lassen Ellingsen May 3 2021 Patent prosecution: FAQs Bryn Aarflot AS | Intellectual Property - Norway Mikkel Lassen Ellingsen Intellectual Property What is the legal framework for patent prosecution in Norway?How can a party obtain a patent in Norway?What substantive requirements exist for patent applications in Norway?What formal requirements exist for patent applications in Norway?Can the grant process be expedited in Norway?How are European patents validated in Norway?Does a post-grant opposition procedure exist in Norway?If the time limit for opposition has passed, what options remain to challenge a patent?Can NIPO decisions be appealed?This article is part of a series on patents in Norway.(1)What is the legal framework for patent prosecution in Norway?The Patent Act(2) constitutes the basic legislative framework regarding patents and their extent under Norwegian law. The Patent Act and its accompanying rules (known as 'patentforskriftene' in Norwegian) regulate:the filing, formalities and substantive examination of patent applications; andthe registration, administrative opposition, cancellation and invalidation of granted patents.Norway is internationally obliged to harmonise its patent legislation with the European Patent Convention (EPC) by way of Protocol 28 of the European Economic Area agreement. Although the Norwegian delegation signed the first version of the EPC in 1973, Parliament did not ratify it until 2007 and Norway became an EPC member state in 2008. In 2015 Norway acceded to the London Agreement, meaning that a European patent specification in English (or an English translation thereof) no longer must be translated to Norwegian. Norway is also a party to:the Paris Convention for the Protection of Industrial Property (since 1885);the Patent Cooperation Treaty (since 1979); andthe Agreement on Trade-Related Aspects of Intellectual Property Rights (since 1994).How can a party obtain a patent in Norway?The Norwegian Industrial Property Office (NIPO) (known as 'patentstyret' in Norwegian) handles all administrative (formal and substantive) aspects of the grant procedure in Norway. The NIPO grants patents from Norwegian national applications and validates European patents granted by the European Patent Office (EPO) (for further details please see "How are European patents validated in Norway?" below).The NIPO generally processes Norwegian national applications relatively swiftly, issuing a search report and written opinion (known as 'realitetsuttalelse' in Norwegian) within five to seven months from the filing date. In the written opinion, the NIPO:provides an overview of relevant prior art;raises any formal or substantive objections; andmay provide suggestions for amendments.What substantive requirements exist for patent applications in Norway?An invention's patentability requires:novelty;the presence of an inventive step; andindustrial applicability.Further, the invention should not reside in the realm of non-inventions nor be explicitly excepted from patentability (eg, by being contrary to public order or to morality).The claims should be clear and concise, and the invention must be sufficiently disclosed for a skilled person to be able to carry out its teaching.In some cases, the disclosure of an invention at an international exhibition will not be prejudicial to novelty. This exception is generally of little practical meaning, as the exhibition must comply with the stringent requirements of the Paris Convention to qualify.What formal requirements exist for patent applications in Norway?Applications must be filed in writing and provide basic information, including the name and address of the inventor and the applicant. Applications can be filed in either Norwegian or English. When using an agent or attorney, the application must also include a valid power of attorney. Although there is no legal requirement to have a professional representative before the NIPO, applicants should not underestimate the complexity of the grant and possible post-grant procedures. Therefore, relying on the assistance of a patent attorney is highly recommended.The NIPO will only consider an application on receipt of the filing fee, which was Nkr4650 in 2020. As well as the filing fee, a claim fee is due for each claim that exceeds the 10th claim. In contrast, the EPO only charges claim fees for each claim that exceeds the 16th claim. However, the claim fee is relatively low in Norway, amounting to Nkr250 per additional claim exceeding the 10th claim.A discounted filing fee of Nkr850 is offered to 'small enterprises' (which, as of 2020, were defined as those with fewer than 20 employees).(3) The definition of a 'discount-eligible small enterprise' in Norway differs significantly from that used by the EPO, which follows EC Recommendation 2003/361/EC (ie, an enterprise with fewer than 250 employees and less than €50 million turnover).Prior to grant, applicants may amend their applications, given that the amendments do not add subject matter to the application as filed. The allowability of amendments is addressed in the court of appeal decision Odfjell (LB-2011-34330). Norwegian practice is strict and follows that of the EPO in this respect.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, office actions may be issued before an application is finally granted or rejected by appealable decision.Should an applicant inadvertently miss a deadline for replying to an office action, it may request further processing (known as 'gjenopprettelse' in Norwegian). An administrative fee of Nkr550 applies for a first such request, which is increased to Nkr1950 for a second. If an applicant also misses the deadline for further processing, it can apply for a re-establishment of rights (known as 'fortsatt behandling' in Norwegian). A 2019 legal change reduced the burden for re-establishment from all due care to unintentional, thereby deviating from EPO practice.A grant fee is due when the application is accepted, together with a page fee for any page of the specification which exceeds the 14th page.Finally, parties must pay annual renewal fees. Following the first three years, the nominal amount to be paid as annual renewal fees increases. Payment of renewal fees starts only in the third year after filing the application, at which time the renewal fees for the first three years are due simultaneously.Can the grant process be expedited in Norway?As a party to the Patent Prosecution Highway agreement, the NIPO must consider positive examination reports issued by patent offices of other participating states or international organisations (eg, the EPO), thereby simplifying and speeding up the examination process before the NIPO.However, the NIPO is not legally bound by the conclusion of such an examination report from another jurisdiction and may therefore come to a different conclusion regarding patentability. Further, the NIPO facilitates an expedited examination process (known as 'komprimert saksbehandling' (KOS) in Norwegian), which is initiated on a written request from the applicant. A KOS request can be filed in either English or Norwegian.Finally, applicants can request accelerated processing of their applications by filing a reasoned request in writing to the NIPO. The NIPO will grant such a request if its current workload allows and the request is based on sufficiently good reason, which is entirely up to the examiner's discretion.How are European patents validated in Norway?Following the entry into force of the EPC in Norway on 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 grant of the European patent by the EPO. Subject to the London Agreement, no member state may demand a translation of the European patent into the local language. Consequently, a translation of the specification to English is sufficient. However, the granted claims must be translated into Norwegian.The NIPO also requires that a separate validation fee of Nkr5,500 is paid when filing a validation request.Does a post-grant opposition procedure exist in Norway?When a patent is granted, third parties may file an opposition thereto. Oppositions must be supported by 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 no later than nine months from the date of grant. The opposition may be filed in either Norwegian, Swedish or Danish. An extension of the closing date will be granted for additional documentation only in extraordinary cases, subject to the NIPO's discretion. No extension is granted for the opposition itself.As well as the grounds for opposition that are valid before the EPO (ie, failure to meet patentability requirements, lack of disclosure or added subject matter), oppositions in Norway may also be filed if the patent has been granted to the wrong applicant.During the opposition, the patentee and the opponent may each 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 therefore almost all opposition proceedings are entirely written procedures. The parties to opposition proceedings may request the NIPO (or the IP Appeal Board (KFIR)) to hold an oral hearing but this option is rarely used and may in any case be denied by the NIPO or KFIR if it is considered unnecessary or disproportionate regarding the costs and time spent. Following an opposition, a patent may be:maintained as granted;maintained in amended form;revoked; ortransferred to the opponent, where the ground for opposition was a grant to the wrong applicant.Amendments which extend the scope of the patent's protection are prohibited. However, patentees can 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 Nkr7000.As the opposition is considered in conjunction with the application procedure, a rejected opposition will not render the opponent liable for the applicant's legal costs.If the time limit for opposition has passed, what options remain to challenge a 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 following the nine-month opposition period may now also take place through an administrative review process. The amendment was implemented to offer a more efficient and accessible alternative to court proceedings.Administrative reviews are written procedures for dispute resolution, meaning that the final decision may (in and most cases will) entail the losing party covering the legal costs of their counterpart.Can NIPO decisions be appealed?A rejection of patent handed down by NIPO may be appealed to the KFIR, which is the administrative body responsible for processing appeals from the NIPO in all IP matters under Norwegian law.An adverse decision by the KFIR 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.For further information on this topic please contact Mikkel Lassen Ellingsen at Bryn Aarflot by telephone (+47 46 90 30 00) or email ([email protected]). The Bryn Aarflot website can be accessed at baa.no.Hallvard Sund, intern, assisted in the preparation of this article.Endnotes(1) For the second article in this series, please see "Patent litigation: FAQs".(2) The Act relating to Patents (patentloven) (15 December 1967/9).(3) For further information please see the NIPO website.