Patent Litigation Comparative Guide -

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

The Patents Act (9/1967) constitutes the basic legislative framework in relation to patents and patent litigation under Norwegian law, in addition to the Act on Mediation and Procedure in Civil Disputes (90/2005) ('Disputes Act').

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

Although Norway is not an EU member state, it is obliged to follow the rules of the European Patent Convention (EPC) by way of Protocol 28 of the European Economic Area Agreement. In other words, the Patents Act must, as a general rule, be considered as in conformity with the EPC.

Norway is also a party to the Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

The Norwegian Industrial Property Office;
The Norwegian Board of Appeals;
The Oslo District Court;
The Court of Appeal; and
The Supreme Court.

The Patent Act and its related regulations constitute the basic legislative framework in relation to patents and patent litigation under Norwegian law, in addition to the Disputes Act.

Norway is also a party to the Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

The Oslo District Court is the court of first instance for all cases relating to patents. Decisions can be appealed to the Court of Appeal and to the Supreme Court. At first instance, one legal and two technical judges are normally appointed. The selection of technical judges is often a contentious issue and involves input from the parties involved. An application for an interim injunction can also be filed initially; this is an exception to the exclusive jurisdiction of the Oslo District Courts. The rules of civil procedure determine which courts have jurisdiction to hear a case relating to a request for an interim injunction.

There is no bifurcation in Norway. Hence, a patent infringement suit will most likely trigger a countersuit on validity and both suits will be decided in the same action. An administrative validity action may also be filed with the Norwegian Industrial Property Office (NIPO) and appealed to the Norwegian Board of Appeals. A further appeal to the regular courts is available. If a countersuit on validity is filed in combination with an infringement action, the administrative validity action must be withdrawn.

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

Patent cases are heard by legal judges – one legal judge at first instance and three in the court of appeal. Norwegian judges have a general legal background and may have limited technical understanding. For this reason, the legal judge may be assisted by two technical judges at request of the parties. The parties will suggest appropriate candidates to the court and the presiding judge will contact them directly. In patent cases, the technical judges may be patent agents, professors or other persons with experience in the technical field.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

There are no forum-shopping opportunities, except in the case of validity actions, which can be filed either with the Oslo District Court or with NIPO.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

To bring a court action for infringement, revocation or declaratory proceedings (including a declaration of non-infringement), the plaintiff must have a legal interest in the case – that is, it must demonstrate a real need to have the claim settled in relation to the defendant. This is decided based on an overall assessment of the relevance of the claim and the parties' connection to it.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

The Norwegian courts can only assess infringement if the alleged infringer can be sued in Norway – that is, it is domiciled here. Foreign companies cannot be sued in Norway for their actions outside of Norway.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes. This can be done by way of either:

a class action against a group of infringers; or
procedural rules allowing for several independent defendants (instead of a group).

The requirements for joining multiple independent defendants are as follows:

All claims are governed by Norwegian law;
The court is the correct legal venue for at least one of the claims;
The same procedural rules apply (including rules on how the court is constituted);
All parties agree or there is a sufficiently close connection between the claims to make joint action beneficial; and
The joint treatment of claims will not impede due process.

The requirement for 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 defendants, as this is a requirement for a common legal position in relation to 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.

The requirements for a class action are as follows:

The factual and legal grounds for the claims against all group members are similar;
The same procedural rules apply;
One party is representing the group; and
A court considers a class action to be beneficial.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

Declarations of non-infringement are available, which can relate to intended (ie, hypothetical) activity by a third party which has a legitimate interest in determining whether it can proceed with planned operations.

It is normal practice for the defendant to file:

counterarguments asserting non-infringement; and
a counterclaim for revocation of the patent.

Validity and infringement are heard in the same proceedings; there is no bifurcation.

The plaintiff must have a legal interest in the case – that is, it must demonstrate a real need to have the claim settled in relation to the defendant. This is decided on the basis of an overall assessment of the relevance of the claim and the parties' connection to it.

4 Patent infringement

4.1 What constitutes patent infringement in your jurisdiction?

The Patent Law contains similar provisions to the European Patent Convention relating to contributory or indirect infringement. The supply of means that are essential to work an invention which is protected by a valid patent can thus be prevented. Knowledge that the action will infringe is required for prosecution.

A party can also be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction.

4.2 How is infringement determined?

The scope of a patent is determined by the patent claims, in light of the description and the drawings. Infringement will thus be determined by an assessment of the scope of the patent. Infringement may be direct or indirect. Direct infringement is found when an infringer directly exploits the patented invention commercially. Indirect infringement is found when a third party offers or delivers the means to exploit the invention to another party which is not entitled to exploit the invention commercially.

4.3 Does your jurisdiction apply the doctrine of equivalents?

Yes. In practice, the position in Norway is halfway between the historic approach in the United Kingdom (pre-Actavis) and the approach followed in Germany in terms of the interpretation of equivalents. The Formstein defence is not an established concept in case law but is likely to be considered by the court. Since infringement and validity are heard together in most cases, a decision that the claim language covers an equivalent, and that the prior art discloses that equivalent will result in the patent being found invalid.

The following criteria must be met to find infringement by equivalence, according to the Supreme Court's 2009 decision in Donepezil:

The alleged infringing device or method solves the same problem as the patented invention;
The modification must be obvious to the person skilled in the art; and
The alleged infringing device or method cannot be part of the available prior art.

4.4 Is wilful infringement recognised? If so, what is the applicable standard?

Wilful infringement is not considered any different from regular infringement but is likely to have an effect on the damages awarded by the court.

5 Bringing a claim

5.1 What measures can a patent holder take to enforce its rights in your jurisdiction? Are interim measures available before receiving a ruling on the merits?

Preliminary injunctions are available. The requirements for grant of an interim injunction are that, based on the evidence available:

there has been an infringement of the patent; and
an injunction is necessary to avert considerable loss or inconvenience.

An injunction will not be granted if the loss or inconvenience to the defendant would be clearly disproportionate to the interests of the claimant. It is possible to file for an interim injunction to prevent goods from entering the country at the border, even if the recipient of the goods is unknown.

If the losing party does not obey the court order, legal enforcement of the court order will be necessary.

5.2 What is the limitation period for patent infringement in your jurisdiction?

The question of a limitation period is as yet undecided by the Supreme Court.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

The party that initiates proceedings must notify the other party of its intention.

5.4 What are the procedural and substantive requirements for bringing a claim for patent infringement? How much detail must be presented in the complaint?

Proceedings are initiated by filing a writ, including evidence and details of the claim. Further evidence and arguments can be filed later.

5.5 Are interim remedies available in patent litigation in your jurisdiction? If so, how are they obtained and what form do they take?

Preliminary injunctions are available. The requirements for grant of an interim injunction are that, based on the evidence available:

there has been an infringement of the patent; and
an injunction is necessary to avert considerable loss or inconvenience.

Final injunctions are available, and an interim injunction will generally remain in place until a decision on the final injunction has been issued.

There is no regulation on the public interest defence in such cases, but this does not mean that the defendant may not use public interest as an argument.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

Security for costs is likely to be provided, especially where the claimant is a foreign entity, due to the risk of not obtaining costs in case the claimant loses the case. Security may also be provided if the claimant's economic situation is such that there is a risk that the defendant may be unable to obtain costs in case of success.

Damages or an account of profits will be assessed once a decision on infringement/validity has been pronounced. The decision will be made in consideration of whether the infringing party (if applicable) acted wilfully or in good faith. The losing party will usually also be required to pay the costs of the winning party, insofar as these are considered to be reasonable. Punitive damages are not available.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Parties can be compelled to disclose documents. Parties can request the disclosure of certain information by the other party once proceedings have started and the court will consider whether the request should be upheld. Confidentiality, trade secrets and attorney-client privilege are considered in determining whether to compel parties to disclose information and to what extent. An essential element in the court's assessment is that it must be proportionate to impose the disclosure of specified material, meaning that the costs involved in the disclosure must be reasonable in relation to the cost of the dispute.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Third parties may be summoned to give their testimony before the court.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

Confidentiality, trade secrets and attorney-client privilege are considered in determining whether to compel parties to disclose information and to what extent. An essential element in the court's assessment is that it must be proportionate to impose the disclosure of specified material, meaning that the costs involved in the disclosure must be reasonable in relation to the cost of the dispute.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in patent infringement litigation?

Both parties present written arguments and evidence before trial, and can do so up to two weeks before the hearing (or a deadline set by the court if different). A party cannot change its pleaded arguments during the trial/hearing. Changes in pleaded arguments later than two weeks prior to the hearing are not normally possible, unless the new arguments are occasioned by the counterparty's closing statement or are allowed by the court.

7.2 What types of evidence are permissible in your jurisdiction? Is expert evidence accepted?

All types of written and oral evidence are permissible, and the court will decide on how much weight to give the evidence in its judgment.

7.3 What are the applicable standards of proof?

The court will decide based on the facts found to be most likely, on the balance of probabilities.

7.4 On whom does the burden of proof rest?

The party making a claim must show that the grounds on which the claim is based are more likely than not and hence bears the burden of proof. The burden of proof will then shift to the other side if grounds in favour of the claim have been shown.

8 Claim construction

8.1 Is there a procedure for construing claims during a patent infringement action? If so, when and how is it performed?

The patent's claims are construed based on the normal, objective meaning of the words, unless evidence is provided that another interpretation is correct.

The Norwegian Industrial Property Office's (NIPO) conclusions when it comes to construing the terms are given a wide margin of appreciation, as it is an expert body in interpreting claims. This has been established in Supreme Court decisions from 1975 (Swingball) and from 2008 (Biomar).

8.2 What is the legal standard used to define disputed claim terms?

Section 39 of the Patents Act provides that the protection conferred by a patent is determined by the claims. The description, along with the embodiments, serves as the basis for understanding and interpreting the claims if these are disputed. The prosecution history is relevant and may be referred to by the parties both for interpreting the claims and for determining the scope of protection of the patent.

8.3 What evidence does the court consider in defining the claim terms?

The court will consider any evidence presented; but it will give a wide margin of appreciation to NIPO's interpretation.

8.4 Can the claims of a patent be amended in the course of the proceedings?

Yes, the claims can be amended at any stage of the proceedings. The case will likely be stayed pending the filing of an amendment with the patent to NIPO.

9 Defences and counterclaims

9.1 What defences are typically available in patent litigation?

A common defence is that the patent is invalid and a counterclaim for invalidation is usually filed. The defendant may also argue that:

it has prior use rights; or
the patent rights have been exhausted in the case at hand.

Laches may be argued as a defence and may be a factor when assessing damages.

9.2 Can the defendant counterclaim for revocation or invalidation of the patent? If so, on what grounds and what is the process for doing so?

Yes. A common defence is that the patent is invalid and a counterclaim for invalidation is usually filed. A defendant which is served with an infringement claim will file a counterclaim for invalidation or revocation and the cases are hence automatically joined in one procedure.

9.3 Are there any grounds on which an otherwise valid patent may be deemed unenforceable against a defendant?

The defendant may argue that:

it has prior use rights; or
the patent rights have been exhausted in the case at hand.

A defence can also be based on either an express or an implied licence.

10 Settlement

10.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

There is no requirement for mediation. Court-assisted mediation is available and is used to some extent. In court proceedings, the parties can agree to mediate with a judge as the mediator. If unsuccessful, another judge will be appointed for the proceedings. Discussions between the parties take place concurrently with the legal proceedings and in many cases the parties reach an out-of-court settlement.

10.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

Yes.

10.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

No.

11 Court proceedings for infringement and validity

11.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

These are public as a general rule. If confidential information is included, this may be redacted and the public may be asked to leave the courtroom when confidential information is presented.

11.2 Procedurally, what are the main steps in patent infringement proceedings in your jurisdiction? Is patent validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

The plaintiff must send written notice to the defendant prior to filing the writ with the court. This notice informs the defendant of the claim(s) and grants it a reasonable timeframe to comply. Once proceedings have been initiated by filing of the writ by the plaintiff, the court will set a deadline for the defendant to file a response to the writ. In an infringement action, the defendant's response is usually accompanied by an invalidity action against the patent at issue. Both actions are normally considered together by the court; and both parties will be asked to respond to arguments and evidence filed by the other party as many times as is considered appropriate by the court. The initially filed writ, as well as the response, will include technical evidence (eg, prior art documents, evidence of infringement). Further evidence and arguments can be filed later.

Both parties present written arguments and evidence before trial, and can do so up to two weeks before the hearing (or a deadline set by the court if different). A party cannot change its pleaded arguments during the trial/hearing. Changes to the pleaded arguments made later than two weeks prior to the hearing are not normally possible, unless the new arguments are occasioned by the counterparty's closing statement or are allowed by the court.

Normally, a trial lasts for between one and two weeks. By law, judgments are meant to be available within four weeks of conclusion of the trial, but often this takes longer.

11.3 What is the typical timeframe for patent infringement proceedings? If separate patent validity proceedings are available, with is the typical timeframe for those proceedings?

The typical timeframe, from writ of summons to the end of patent infringement proceedings, is one year.

11.4 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

The practice and decisions of the European Patent Office (EPO) are also relevant in Norway. However, although this has been implemented and confirmed by the Supreme Court, practice has shown that the interpretations of the Norwegian courts are not entirely aligned with those of the EPO. Decisions from other Nordic countries are also deemed relevant but are not decisive to the outcome.

12 Remedies

12.1 What remedies for infringement are available to a patent holder in your jurisdiction?

No answer submitted for this question.

12.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

No. Punitive or enhanced damages are not available.

12.3 What factors will the courts consider when deciding on the quantum of damages?

Section 58 of the Patents Act provides that in case of intentional or negligent infringement, the patent holder is entitled to the most favourable of the following:

compensation corresponding to a reasonable licence fee for exploitation of the patent, in addition to damages for any loss resulting from the infringement that would not have arisen in connection with licensing;
damages for any loss resulting from the infringement; or
compensation corresponding to the gain obtained through the infringement.

For infringements in good faith, the patent holder will be awarded damages corresponding to a reasonable licence fee.

13 Appeals

13.1 Can the decision of a first instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Yes. A first-instance judgment can be appealed to the Court of Appeal. All claims decided on in the judgment may be contested.

The decision of the Court of Appeal may also be appealed to the Supreme Court; but any matter appealed to this court will initially be considered by the Appeals Selection Committee, which functions as a filter for appeals. The Supreme Court's function is to resolve matters on which the law is unclear, which means that the right to appeal is generally granted only on matters relating to principles of law. In practice, patent cases are rarely dealt with by the Supreme Court.

13.2 What is the average time for each level of appeal in your jurisdiction?

The timescales can vary but the appeal process is generally comparatively slower than proceedings at the court of first instance. Currently, it takes up to a year from submission of the appeal until the court hearing takes place. This is because patent cases usually involve a large number of days in court.

14 Costs, fees and funding

14.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

The costs vary greatly from case to case, both at first instance and on appeal. The typical costs in a first-instance case will be in the range of NOK 300,000 to NOK 800,000. An appeal may involve similar or even higher costs. The general rule (in both instances) is that the losing party covers the winning party's full costs if the case is fully won. The court may reduce the amount, at its discretion, if it finds the costs to be unreasonably high.

Aside from damages, the following can be sought:

an account of profits;
an injunction;
a declaration of non-infringement or of infringement; and
an order for the amendment, seizure or destruction of the infringing goods.

14.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

No.

14.3 Is third-party litigation funding permitted in your jurisdiction?