The period of opposition against a granted patent in Norway is nine months. However, after expiration of the opposition period, a lifelong opportunity for third parties to request an administrative review of a granted patent before the Norwegian Industrial Property Office (NIPO) exists. A request for an administrative review may be made for any Norwegian patent, whether granted by the NIPO or a European patent validated in Norway.
Anyone may file a request for administrative review of a Norwegian patent. The decision is made by the NIPO. This means that the patentee or any third party may request such a review at any time during the life of a patent. A request for review may even be filed after the patent has terminated, provided that the requesting party has a legal interest in having this matter reviewed.
A request for administrative review maybe filed only if:
- there is a lack of novelty and inventive step;
- the invention is not a patentable invention as such; or
- the invention is an invention that is excluded from grant.
These exceptions are laid out in Sections 1 and 2 of the Patents Act, and are similar to Articles 52 and 53 of the European Patent Convention. Thus, the grounds for administrative review are more limited than for an opposition.
The administrative review may result in invalidation of the patent in full or in part. If the patent is invalidated in part, the patent may be maintained in amended form only if the patent holder agrees with the amendments proposed by the NIPO. If the patentee does not agree with the amendments, the patent shall be declared invalid. The decision to declare a patent fully or partly invalid will take effect from the filing date.
Both the requesting third party and the patentee are parties to the review proceedings. However, the NIPO is not bound by the grounds presented by the requesting third party, and may also consider any other prior art documents that have come to its attention since grant (eg, a third-party observation filed during the review proceedings).
The administrative review process is simple, efficient and less costly than filing a request for invalidation of a patent before the courts. When considering filing oppositions or initiating invalidation procedures against Norwegian patents, careful consideration should be given to whether a request for administrative review may be filed instead.
For further information on this topic please contact Kristine Rekdal at Bryn Aarflot AS by telephone (+47 46 90 30 00) or by fax (+47 22 00 31 31) or by email ([email protected]).