Supreme Court reasserts principle of restraint in Norwegian Patent Office judicial review cases

Few patent cases make it all the way to the Supreme Court. However, in November 2008 the Supreme Court heard and decided an appeal in a case concerning judicial review of the Norwegian Patent Office’s (NPO) refusal to grant a patent. The patent application related to an invention consisting of fish feed that reduces the occurrence of cataracts in farmed fish, typically salmon. Cataracts have been a significant problem in the fish farming industry: they cause fish to go blind and, unable to find the feed, the salmon fail to grow as they should. In addition to the undesired financial losses caused by this condition, the fish suffer.

The Second Division (Board of Appeal) of the NPO rejected Biomar’s patent application, finding that the invention did not have the required inventive step. Biomar instituted proceedings before the Oslo District Court, which reached the same conclusion as the Patent Office. However, on appeal the Borgarting Court of Appeal concluded that a patent should have been granted, finding the Second Division decision to be invalid. The Norwegian state lodged a further appeal to the Supreme Court and a hearing was granted. In a judgment of 17th November 2008 the Supreme Court found that the invention lacked inventive step and accordingly ruled that the decision of the NPO was valid.

In a 1975 judgment (the Swingball Case) the Supreme Court stated that the courts should show restraint in deviating from the decisions of the NPO. However, in recent years the lower courts of Norway have, on several occasions, departed from the views expressed by the NPO, quashing a number of decisions. Leading academics and authors had also expressed some doubts about the Swingball principle. Somewhat surprisingly, in its Biomar decision the Supreme Court has now reassessed that principle. It is to be expected that the district and appeal courts may now be slightly more careful when reviewing NPO decisions - some have even nicknamed the Biomar judgment “Swingball II”.

In the Biomar judgment the Supreme Court also stated that developments in Europe are characterised by uniform rules and practice where patents are concerned. The practice of the European Patent Office (EPO), and particularly the practice of the Board of Appeal, is relevant to patent practice in Norway. However, the Supreme Court made it clear that there is no equality requirement in the outcome of individual parallel cases in the EPO and in Norway. This means that it will likely still be possible in Norwegian patent cases - whether during prosecution, in oppositions or in judicial review or nullity actions before the courts - to try to distinguish the case and argue that a different conclusion should be reached from that of the EPO, even in the case of applications or patents for the same invention.

Svein Ruud Johansen

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