What options are open to a patent owner seeking to enforce its rights in your jurisdiction?
An interlocutory or preliminary injunction will help to prevent or cause the swift cessation of any infringing activity. If circumstances warrant an ex parte ruling, it can take just days to obtain an injunction. Otherwise, it usually takes between three and eight weeks, although this may be longer in exceptional circumstances. Another route is an infringement action, which normally takes between five and eight months from filing until trial, plus another two to eight weeks before a judgment is issued.
Are parties obliged to undertake mediation/arbitration prior to bringing a case before the courts? Is this a realistic alternative to litigation?
Parties have no obligation to arbitrate. The claimant is obliged to state its claim and set out the grounds on which it is relying before commencing the action. If it fails to do so, the action is not delayed or prevented, but the claimant may be denied an award of costs to which it would otherwise have been entitled. The courts also offer so-called judicial mediation to all litigants. Parties rarely try this in patent cases, but the success rate is high when they do.
Are there specialist patent or IP courts in your jurisdiction? If not, what level of expertise can litigants expect from the courts?
There are no specialist IP or patent courts in Norway. However, the Oslo District Court has exclusive jurisdiction in cases concerning registrable IP rights (ie, patents, registered trademarks and designs). Patent cases are normally assigned to one of the six or seven judges who have taken an interest in IP law and patent law in particular. Hence, a level of expertise can be expected from the presiding judge. In patent cases the court will almost always include two lay judges with technical expertise in the relevant field. In interlocutory injunction actions the judge may appoint experts to advise him or her, but they will not take part in the decision.
The appeal courts will also have two expert lay judges, in addition to the three legally trained judges.
Are validity and infringement dealt with together, or does your country have a bifurcated system?
Validity and infringement are heard together. However, the defendant in an infringement action must bring a cross-action or cross-claim in order to rely on invalidity as a defence.
Who may represent parties engaged in a dispute?
Attorneys at law, ‘legal helpers’ (ie, qualified lawyers who are not attorneys) and individuals who undertake to plead a case in court but not regularly or as a profession may all act as representatives. A party may be represented by an employee on condition that the case concerns matters falling under that employee’s responsibility in his or her work, and subject to approval by the court.
To what extent is pre-trial discovery permitted in cases?
There is no pre-trial discovery. Under the Civil Disputes Act, the parties have an obligation to disclose and submit any important evidence of which they are or become aware on their own initiative, even if this is damaging to their own position – except if it can be reasonably assumed that the other party is also aware of it.
Before trial, a party may request that the other party (or a third party) produce documents in its possession. There is a duty to comply with such requests, provided that the documents requested are relevant. The catch is that the request must specify (to a degree) the document or documents which are required.
If a party fails to comply, the court may order production of the documents.
Is cross-examination of witnesses allowed during proceedings? If so, what form does it take?
Cross-examination of witnesses – including expert witnesses at trial – plays an important role in all litigation. Witnesses are first examined by counsel for the party that requested their witness evidence and then by counsel for the other party. The judges may ask questions of the witness at any time during the examinations. The Civil Disputes Act requires that the examination and cross-examination of witnesses be recorded. However, this rarely happens, as the courts do not have the necessary equipment. Parties are normally permitted to arrange for their own recordings to be made.
What use of expert witnesses is permitted?
Evidence (ie, written opinions and witness testimony) from expert witnesses retained by the parties is almost invariably used in patent litigation. Their written opinions are normally submitted during the pre-trial phase. An opinion or affidavit by a fact or expert witness may not be submitted and will be disallowed as evidence if, at the time it is submitted, the party submitting it does not offer to have the author appear at trial to be cross-examined.
Is the doctrine of equivalents applied by the courts in your jurisdiction? If so, what form does it take?
The doctrine of equivalents does apply. The equivalence test includes the following criteria:
- The allegedly infringing object must solve the same problem as the patented invention;
- The modifications introduced by the alleged infringer must be obvious to the average person skilled in the art; and
- The disputed object or method must not have been in the art at the patent’s filing date.
Are there problems in enforcing certain types of patents relating to, for example, biotechnology, business methods and software?
There are no particular problems enforcing these types of patent, to the extent that inventions in these fields of technology are patent eligible. Business methods are not patentable in Norway.
Under Norwegian law, computer programs are not patentable. However, software that has a technical character (ie, a solution to a technical problem that has technical character and technical effect) is probably patent eligible.
An attempt to enforce a business method or software patent in Norway (even if one has been granted) is likely to be countered by a challenge to the patent on the ground that it is not patent eligible.
To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?
Norwegian courts are bound only by Supreme Court decisions covering similar issues. Appeal court decisions are often referred to by the parties to litigation, and district and appeal courts also rely on them in support for their decisions. However, they are not binding.
To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?
Decisions returned by foreign courts in similar cases are often referred to by the parties to litigation. The courts may be willing to consider the reasoning given in such decisions, but not if there are Norwegian court decisions dealing with similar issues. Decisions of the supreme courts in jurisdictions with a legal tradition not dissimilar to Norway’s own will be considered with greater interest than others. Decisions of the supreme – and occasionally also the lower – courts of Denmark, Sweden, Germany and the United Kingdom are sometimes mentioned in decisions rendered by Norwegian courts.
What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?
Once the defendant has filed its reply to a writ of summons, the court will organise a case management conference – usually a conference call – in which, among other things, the dates of the hearing will normally be decided. There will then be little latitude for delaying tactics. A cross-action to have the patent invalidated may be an example of this.
Extensions are normally not available in interlocutory injunction actions.
A plaintiff can counter delaying tactics by emphasising the urgency of the matter at hand in its submissions, being proactive in dealing with issues that can be expected to arise and cutting down the time taken to respond to submissions from the defendant (eg, a cross-action).
Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?
A preliminary injunction can be requested either before or after a patent infringement action has been started. In either case the plaintiff must show that it has the right or claim for which relief is sought and that its claim needs to be secured.
Further conditions include the following:
- The defendant’s conduct makes interim relief necessary because enforcement of the claim would otherwise be made significantly more difficult; or
- A temporary arrangement is necessary in a disputed matter to prevent a substantial damage or disadvantage, or to avoid harm which the conduct of the defendant gives reason to fear.
An interim measure cannot be obtained if the damage or disadvantage to the defendant is obviously disproportionate to the plaintiff’s interest in obtaining it.
A preliminary injunction may also be granted without a hearing, ex parte, if the plaintiff can substantiate that the purpose of the preliminary injunction would otherwise be defeated.
In the case of patent infringement, if the rights holder can substantiate that it owns a patent that is being (or is about to be) infringed, the court will rarely refuse the request because the claim does not need to be secured. However, preliminary injunction actions appear to have become less popular in recent years, possibly because the savings they offer in terms of time and money are now less than those of ordinary actions. A preliminary injunction may take between three and four months and a full action between five and eight months. In most cases, opting for a preliminary injunction will not save the rights holder from having to go through a full action later.
How much should a litigant budget for in order to take a case through to a decision at first instance?
For a case involving a five-day trial and a litigation team comprising a senior litigator, an assistant and a patent attorney – and assuming that an expert retained by the party writes an opinion, gives oral evidence and is cross-examined – costs and fees will range from €90,000 to €250,000, inclusive of legal fees, patent attorneys’ fees, expert fees and sundry expenses (eg, court bundles, photocopying and transport, but excluding travel and accommodation).
How long should parties expect to wait for a decision to be handed down at first instance?
Under the Civil Disputes Act, the trial should commence no more than six months from the date on which the action was started and judgment should be rendered no later than two weeks after trial. However, complex patent cases often require more time – expect that it will take between six and eight months from the date on which the action commences before a decision is issued.
To what extent are the winning party’s costs recoverable from the losing party?
The main rule is that the prevailing party is awarded compensation for necessary costs from the losing party. Exceptions apply (eg, if the court was in doubt about the decision).
What remedies are available to a successful plaintiff?
The following remedies are available for infringement:
- preliminary remedies – including preliminary restraining orders (injunctive orders) and the seizure of infringing goods (if this is deemed necessary and adequate to ensure that the infringement is discontinued); and
- final remedies – including a final restraining order (permanent injunction), an award of damages (reasonable licence fee or actual loss of profits or an account of profits) and a final order for modification of the infringing objects so that they no longer infringe or, if that is not possible, destruction of the infringing objects at the court’s discretion.
How are damages awards calculated? Is it possible to obtain punitive damages?
Under the Patents Act, damages are awarded as compensation for use as a ‘reasonable licence fee’. As an alternative, the rights holder is entitled to compensation for any damage caused by the infringement – typically, loss of profits (gross margin). A further alternative is an account of profits (ie, the infringer must pay the rights holder an amount equal to the profits it made from infringing).
If the patent infringement was wilful or grossly negligent, the rights holder has the further option of claiming twice the reasonable licence fee.
That is the only concession to the principle of punitive damages, which are generally unavailable under Norwegian law.
Under what circumstances might a court grant a permanent injunction? How often does this happen? Does the losing party have an automatic right of appeal? If not, under what circumstances might leave to appeal be granted?
It is very common for courts to grant permanent injunctions to successful plaintiffs. Subject to a request from the rights holder, the courts will do so if they find that patent rights have been infringed.
All decisions in first-instance cases are subject to appeal. The right to appeal is statutory.
How long does it typically take for an appellate decision to be handed down?
The appeal process takes between 12 and 15 months from filing the statement of appeal until the appellate decision is rendered.
Is it possible to take cases beyond the second instance?
A further appeal to the Supreme Court is possible. Such an appeal will be heard only if the Supreme Court Appeals Committee finds that the case raises important questions of law and the outcome will be important to other cases. Only about 13% of all appeals in civil cases progress to the Supreme Court.
To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?
Norwegian courts do not have a reputation for being particularly pro-patentee. Nor are they particularly anti-patentee, for that matter. However, Norwegian courts should be expected to take a critical look at granted patents without showing too much deference to the patent-granting authority’s decision to issue the patent.
Is your jurisdiction a signatory to the London Agreement on Translations?
Yes, effective January 1 2015.
Has your jurisdiction signed the Agreement on the Unified Patent Court? If so, when do you expect it to be ratified?
Norway has not signed the Agreement on the Unified Patent Court and will not do so.
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Felix Reimers is a partner at Grette. He graduated in 1997. After four years as an associate with two patent agent firms, Mr Reimers joined Grette in 2001 and became a partner in 2005.
Mr Reimers heads Grette’s IP law department. His work includes contentious and non-contentious intellectual property, unfair competition and competition law. He is a board member of the Licensing Executives Society Scandinavia. Mr Reimers is also an external lecturer at the Norwegian Business School and has written a number of articles within the field of intellectual property. He is the co-author of Immaterialrett (Intellectual Property Law), (Per Helset, ed, Oslo 2009).
Amund Brede Svendsen
Amund Brede Svendsen is a partner at Grette. He joined the predecessor firm of Grette as an associate in 1981 and became a partner in 1986. In addition to his legal background, Mr Svendsen has a business and administration degree and is admitted to the Supreme Court of Norway.
Mr Svendsen’s practice includes IP law, especially patents and trademarks, including both contentious and transactional work. He also advises clients on competition law. Mr Svendsen is chairman of the board of the Norwegian Association for Industrial Property Rights and president of the Norwegian national group of the International Association for the Protection of Intellectual Property. He is an external examiner at the University of Oslo and also tutors students. Mr Svendsen frequently writes articles and speaks on subjects of patent law, IP enforcement and international dispute resolution.