At a glance: patent enforcement proceedings in Norway

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

Civil proceedings may be brought before the courts, and are by far the most practically important, providing several different remedies against an infringer, including injunctive relief (both temporary and permanent; the latter requiring an ordinary court case with a final judgment), monetary remedies, a court order to withdraw or destroy the infringing products, or even transferring the infringing products to the patent owner, and finally a public declaration of the court decision to the industry at the infringer’s cost.

In addition, criminal proceedings may be initiated (though this is highly unusual) and the infringer will, in such a case, risk fines or imprisonment for up to three years.

There are no specialised (or administrative) courts  that handle patent infringement. However, claims of patent invalidity may be submitted to the Norwegian IP Office (NIPO), which, in addition to granting patents, also handles invalidity cases as an administrative process. NIPO’s administrative procedure will not prevent a court case regarding the same subject matter, that is, the case may be brought before the courts whilst the administrative process is ongoing, and in such cases the court case will be in lieu of the administrative process, which will be put on hold.

Patent enforcement against an infringer must be carried out by bringing legal proceedings before the Oslo District Court, this being the mandatory legal venue for (nearly) all patent-related cases. It should be noted that the Norwegian Supreme Court in a recent ruling clarified that Oslo District Court is not the mandatory legal venue for proceedings regarding patent ownership where the reason for the objection to the patent ownership is not that NIPO has granted the patent to the wrong person. Thus, as long as the patent is granted to right person under the Patent Act (the inventor or the inventor’s successor), ownership disputes to a granted patent follow ordinary rules about the legal venue.

What is the format of a patent infringement trial?

The trial format is generally the same as any other court case that raises issues of a technically complex nature. Thus, the proceedings start with a writ of summons from the plaintiff, which is then followed by a statement of defence from the alleged infringer, and usually several follow-up written pleadings containing arguments and document evidence, as well as notifications about witnesses (all evidence to be used must be submitted or notified before a preclusive deadline set by the court). Oral preparatory hearings may occur, and the case will sometimes be split, so that the question of whether an infringement exists (and liability for said infringement) is dealt with first in a separate case, leaving the consequences (damages) of the alleged infringement for a later case.

The case will, however, be decided not upon the above preparatory phase with written arguments. Instead, the case will be decided by an ordinary judge and two expert judges in the first instance, and by three ordinary judges and two or four expert judges at the Court of Appeal, all based on the direct, oral presentation of the case (this means that affidavits are only allowed provided that the author, often an expert witness, is available for questioning).

Trial length will depend on the extent and complexity of the case, as more complex cases will need court sessions lasting one to two weeks. Owing to the time needed to process the case in the courts, there will often be between 10 to 18 months between the first writ of summons and the court decision. The same time frame may also apply in the Court of Appeals.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

There are no special rules in this regard for patent cases. Norwegian courts must decide the matter on the basis of the facts found to be most likely (balance of probabilities). Naturally, the party making a positive claim (that there is an infringement) must show the grounds on which the positive claim is based are more likely than not, and may in this regard be said to have ‘the burden of proof’. However, in the presence of grounds in favour of the claim having been shown, the burden of proof may be said to shift, in the sense that the other party must disprove said grounds, and in this regard carries a burden of proof.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

Access to the courts as a claimant is granted based on a legal standard according to which any physical or legal person may sue who has an actual substantive claim or legal position, which under the prevailing circumstances establishes a real need for the court’s judgment against another physical or legal person.

This includes both the owner of the patent and any licensees (even if there is not an exclusive licence), as all such persons will have a substantial legal position in relation to a patent. However, distributors, resellers, etc (ie, persons who merely sell products bought from the patent owner or a licensee), do not exercise any right based on the patent, as the patent rights are exhausted with regard to the physical products that are bought for resale.

For example, if no written confirmation to that effect may be obtained from the patent owner, an accused infringer may sue to establish non-infringement, as there will be, based on the legal standard above, a real need to have the court confirm that commercial activities are legal in view of the negative effects of the patent owner claiming the opposite.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

Contributory patent infringement may occur both under special rules concerning intermediate or indirect patent infringement and under ordinary rules governing contributory actions to an illegal act.

Intermediate or indirect infringement is a separate category of infringement, whereas contributory infringement requires both a primary infringer and a contributory infringer.

Intermediate or indirect patent infringement may consist in selling parts specifically made for a patented process. Thus, ordinary sales of more generic goods fall outside the scope of intermediate patent infringement provisions.

A practical category of contributory infringers are the infringer’s contractual parties. Both the infringer’s customer, and the infringer’s suppliers, cooperation partners, etc, may be deemed to have contributed to the infringement. Contribution to an intermediate infringement is also possible, as an intermediate infringement is a separate category of infringement.

With respect to injunctions (both interim and permanent), multiple parties may be held liable in the sense that the multiple parties may be sued with a claim for an injunction. This applies regardless of the subjective fault or intent of each contributor. The requirement is that the contribution objectively leads to a result that infringes the patent.

With respect to monetary remedies, there is a requirement of subjective fault (the contributor ought to have known that there is a contribution to an infringement). Thus, for example, if multiple parties act together in a commercial activity that is reserved for the patent owner, liability may arise under rules of intermediate infringement and under rules of contributory infringement, provided that the parties ought to have known or knew that they were contributing to an infringement. This will apply even if no single contribution is sufficient to infringe the patent, as long as the combined effect infringes the patent. If the parties acted in good faith, there will not be grounds for holding such parties liable. (Unlike the infringer, who may be held liable even when acting in good faith, as long as a claim for damages or licence fee under such circumstances is not unreasonable.)

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Yes, either by way of a class action against a group of infringers, or by way of procedural rules allowing for several independent defendants (instead of one group).

The requirements for class action lawsuits (which are less practical) are that there are similar factual and legal grounds for the claims against all group members, that the same procedural rules apply (including rules on how the court is constituted), that one party represents the group and that a class action is deemed beneficial by the court. The requirements for joining of multiple independent defendants are that all claims are governed by Norwegian law, that the court is the correct legal venue for at least one of the claims, that the same procedural rules apply (including rules on how the court is constituted), and that all parties agree or there is a sufficiently close connection between the claims to make joint process prudent. Finally, there is a requirement that the joint treatment of claims will not impede due process.

The requirement of a sufficient connection between the claims means that both legal and factual grounds must be connected. This will typically require some sort of commercial relationship between the joined defendants, as this will be a requirement for a common legal position in relation to either injunctions, liability, damages or compensation. This also means that all defendants must, as a main rule, be accused of infringing the same patents, but not necessarily all of the same patents.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Norwegian legislation on patent protection is limited to Norwegian jurisdiction, and likewise, no foreign patent is binding in Norway. However, importation of a product, or commercial activities in Norway in relation to a product made in a foreign jurisdiction but patent-protected in Norway, may constitute an infringement provided the connection to Norwegian territory is sufficient. It is unclear whether a very limited commercial activity is sufficient, for example, the mere offering for sale from Norway of a product that is never moved into Norwegian territory may fall outside the scope of Norwegian patent protection.

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Norwegian courts recognise the doctrine of equivalents. The courts consider infringement by equivalence as an alternative to literal infringement of a patent claim, which means that for the purpose of determining the extent of protection conferred by a Norwegian patent, due account shall be taken of any element that is equivalent to an element specified in the claims. The current practice for establishing infringement by equivalence requires all of the following criteria to be met:

• the alleged infringing device or method has to solve the same problem as the patented invention;
• the modification from the patented invention has to be obvious for a person skilled in the art; and
• the alleged infringing device or method cannot belong to the available prior art.

Note that ‘available’ here means prior art that is both publicly available and free to use.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

Norwegian civil procedure stipulates an obligation for any party in a pending case to disclose all information relevant to the matter, even if the information is to that party’s disadvantage. This may be enforced by a specific court decision granting access to the premises of said party. If a foreign party is the opponent, this will apply towards a foreign opponent (enforcement may, however, be an issue in some jurisdictions).

For third parties that are not opponents in a lawsuit, Norwegian procedural law allows for securing evidence if the patent owner is able to show reasonable grounds for a potential claim in a future lawsuit against the third party (which is a requirement of less than 50 per cent likelihood). As with opponents, there may be issues related to enforcement in some jurisdictions.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Depending heavily on the scope and complexity of the case, a typical duration between the writ of summons and a decision in the court of first instance will range from 10 to 18 months. For the appeal court, a typical duration from the appeal to a judgment will be similar.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The typical costs in the first instance, which depend heavily on the scope and complexity of the case, will typically be anywhere between €40,000 and €200,000, wherein approximately 40 per cent of the cost is pretrial. A full appeal will typically amount to the same. A more limited appeal will amount to between 60 per cent and 80 per cent of the costs of the first instance. Contingency fees are not allowed.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

Appeals follow the ordinary court hierarchy above the Oslo District Court: first the Borgarting Court of Appeals and then the Supreme Court. New evidence is allowed.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

The basic starting point recognised under Norwegian law is that the patent owner’s ‘monopoly’ is legitimate and prevails as a specific exception over more general competition law. Norwegian law implements EU competition law through the EEA, and specific exceptions may in principle apply, for example, with respect to abuse of a dominant position through certain licensing arrangements (which could be unfair competition, especially if the arrangement covers a substantial area, such as the entire Norwegian territory, and illegitimately limits competition), unreasonable price levels, arbitrary denial of granting a licence to certain companies when there is otherwise a willingness to grant licences, etc. However, this would only apply in extraordinary cases. In Norway, the Regulation of 4 December 1992 No. 964, implementing EU Regulation 772/2004, provides a framework for when a licensing arrangement is legal. With respect to business-related torts, the primary sanctions under Norwegian competition law are fees and fines, in addition to ordinary liability at law for damages.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Oslo District Court is the mandatory legal venue for nearly all patent-related disputes, both infringement and invalidity. Further, the principle of party control over the subject matter of the case has limited application in patent cases, so that the court to a large degree must decide the case based on the law, not on agreement between the parties. However, if the parties do not wish to involve the courts at all, they are free to solve the matter in strictly private negotiations. Furthermore, even if legal proceedings are brought, Oslo District Court offers court mediation, which may be used insofar as the parties have control over the subject matter (which will not be the case with respect to, for example, invalidity). A court settlement will have the same binding effect as a judgment.

Law stated date

Give the date on which the information above is accurate.

27 April 2020.