Scope and ownership of patents

Types of protectable inventions

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Certain types of inventions are excluded from patentability according to the Norwegian Patents Act. Inventions excluded from patentability include anything that merely consists of a business method, a medical procedure, a program for a computer, and inventions that the commercial exploitation of which would be contrary to public order and morality. When it comes to substantive patent law, including the assessment of patent eligibility and patentability, the Norwegian patent law strives to harmonise with the European Patent Office (EPO)’s implementation of the European Patent Convention, and Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions has been implemented in Norway.

Patent ownership

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

The initial position is that the inventor owns the invention and the right to apply for a patent. An inventor remains always a natural person, and is never a legal person (eg, a company). The right to apply for the patent (and any subsequent right to a patent application or granted patent) can be transferred from the inventor to another person, for example, the employer (a company). Patent ownership is recorded in the official patent register administered by the Norwegian IP Office.

Patent office proceedings

Patenting timetable and costs

How long does it typically take, and how much does it typically cost, to obtain a patent?

The average time from filing to grant for patents granted in 2017 was 4.6 years, but this excludes international Patent Cooperation Treaty (PCT) applications entering into Norway in the national phase, where prosecution time has been shown to be longer. The costs vary widely. The average cost is approximately €10,000, including costs for drafting, filing, prosecution, and grant. Annuities are additional, and must be paid in advance both on applications and patents from the third year from filing. The annuities are progressive and start at approximately €75 for each of the first three years, and increase gradually up to approximately €700 for the 20th year of the patent term.

Expedited patent prosecution

Are there any procedures to expedite patent prosecution?

A request for accelerated processing of an application may be submitted to the Norwegian IP office at any time during the application process. Arguments in support of the need for accelerated processing should also be provided, since the request is granted at the discretion of the Norwegian IP Office.

Norway is a part of the global Patent Prosecution Highway (PPH) agreement, meaning that a positive or partly positive search or examination report from one of the other 21 members (per January 2017) of the global PPH agreement, gives the applicant the right to accelerate prosecution of the application before the Norwegian IP Office. It should be emphasised that upon invoking the global PPH agreement, the Norwegian IP Office is not obliged to accept the conclusions of the other global PPH member, but rather to exploit the work of the other member.

Patent application contents

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The basic requirement is that the invention should be disclosed in a manner that is sufficiently clear and complete to enable it to be carried out by a person skilled in the art.

The skilled person should be able to perform the claimed invention, over the full breadth of the claim, and to be able to do so ‘without undue burden’. The patent application does not need to describe the invention in all of its embodiments or all of its features to every last detail. It may be expected that the notional reader, in order to work out how to perform the invention, be capable of carrying out some routine experiments or other basic enquiry of their own.

Prior art disclosure obligations

Must an inventor disclose prior art to the patent office examiner?

There are no formal requirements for disclosing prior art to the Norwegian IP office.

Pursuit of additional claims

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

One or more divisional applications may be filed from an earlier pending patent application. Such a divisional application must be filed before the patent office has reached a final decision on the earlier application. The divisional application cannot be identical to the original application, but may relate to claims that were abandoned during prosecution of the parent application. This may allow patent protection for subject matter that was disclosed in the earlier application but was not claimed.

In addition, a Norwegian patent should normally only relate to one invention or one unified group of inventions. Claims directed towards different inventions or different groups of inventions should, therefore, be the subject of separate applications. A divisional application may be filed to pursue non-unified inventions disclosed in the earlier application.

Patent office appeals

Is it possible to appeal an adverse decision by the patent office in a court of law?

Adverse decisions of the Norwegian IP Office may be appealed to the Norwegian Board of Appeal for Industrial Property Rights (KFIR), which is an independent tribunal under the Norwegian Ministry of Trade, Industry and Fisheries. The KFIR will hear appeals from decisions of the Norwegian IP office, including decisions relating to patent cases.

Decisions of the KFIR may be appealed to the courts. The appeal lies to Oslo District Court and the time limit for filing the appeal is two months from the date on which the KFIR’s decision was handed down.

Oppositions or protests to patents

Does the patent office provide any mechanism for opposing the grant of a patent?

Observations may be filed by a third party before the grant of a patent, where reasons may be put forward as to why the patent application does not fulfil the requirements for grant. The patent office may then consider the observations in the pre-grant procedure. The observations can, in principle, be filed anonymously and the third party does not become a party in the proceedings.

Questions as to whether the applicant is entitled to be granted a patent may also be filed at the patent office before a patent is granted, but the patent office may refer such a question to the courts depending upon its nature and complexity.

After grant of a patent, an opposition may be filed requesting revocation of the patent. The opposition must be filed in writing at the Norwegian IP Office within nine months from the date of grant of the patent. The opposition can be based on one or more of the following grounds:

  • The patent has been granted despite the conditions laid down in sections 1 and 2 of the Patents Act not being fulfilled. These conditions include requirements as to what constitutes patent-eligible subject matter, requirements for an invention to be novel and have an inventive step, and requirements relating to the entitlement of the applicant to be granted a patent (whereby it is the inventor or their successor in title who has the right to be granted a patent).
  • The patent relates to an invention that is not disclosed in a manner sufficiently clear so as to enable a person skilled in the art to carry out the invention on the basis of the application.
  • The patent contains subject matter that extends beyond the content of the application as filed.

 

Any person may file an opposition to a granted patent, except in relation to the ground of the patent being granted to a person not entitled, where such a ground can only be raised by the person claiming to be entitled.

Priority of invention

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The Norwegian patent process provides a first-to-file system whereby the applicant who files the earlier patent application will have priority over applications filed later. Hence, the right to the invention is determined by the first-to-file system, and the risk of priority disputes is low. Patent applications filed on the same day enjoy the same priority, and, in the rare event that two applications claiming the same invention are filed on the same day, both applicants can be granted rights to the invention.

Modification and re-examination of patents

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

A nine-month opposition period runs from the date of grant of the patent during which an opposition may be filed at the Norwegian patent office. The opponent can request revocation of the patent based on the grounds of invalidity, including entitlement (provided the request is made by the person claiming to be entitled). The decision of the patent office can be appealed. The patent office may defer decisions to the courts on entitlement.

In addition, an administrative review procedure is available through the Norwegian IP Office by which revocation of the patent can be requested. The administrative review procedure has some resemblances to an opposition. Revocation by administrative review may be requested based on the grounds that the patent has been granted in contravention of the requirements in sections 1 and 2 of the Norwegian Patents Act, but cannot be based on insufficiency of disclosure, subject matter extending beyond that contained in the application as filed, extension of the scope of protection, or lack of entitlement. Generally speaking, this means that the administrative review procedure is available only for challenging the patent on matters of patent eligibility, novelty and inventiveness.

A request for administrative review may only be filed after the nine-month opposition period has expired, and after any oppositions filed in this period have been finally decided upon. Anyone may request the administrative review.

The patent holder may file a request for limitation of the patent at the Norwegian patent office. Any such request may only be filed after the nine-month opposition period has expired, and after any oppositions filed in this period have been decided upon.

In the opposition or administrative review procedures, requests can be based on the patent being partially invalid. The patentee is afforded an opportunity to amend the patent, and the patent office may potentially decide that a patent can be maintained in amended form if revocation in full does not succeed.

The courts may allow the patentee to amend the patent claims during a lawsuit. However, the Norwegian courts have been very reluctant to overrule decisions from the Norwegian IP Office, though there have been exceptions.

Patent duration

How is the duration of patent protection determined?

The patent term is 20 years from the date of filing. A supplementary protection certificate may be granted upon request, and enters into force after the patent on which it is based has expired, to give up to a five-year extension to the term for protection for human or veterinary medicaments and plant protection products.

Law stated date

Correct on

Give the date on which the information above is accurate.

27 April 2020.