This text first appeared in the IAM magazine supplement Patents in Europe 2008 April 2008
Norway By Amund Brede Svendsen and Svein Ruud Johansen, Advokatfirmaet Grette, Oslo 1. What options are open to a European patent holder, whose rights cover your jurisdiction, when seeking to enforce its rights in your jurisdiction? To enforce its rights, a European patent holder can choose between applying for a final injunctive order or an interlocutory order. The same court will normally be competent to decide both cases since, as a rule, the court where the defendant has its place of business is the legal venue for either action. Under the new Civil Disputes Act, in ordinary actions the district court will hear the case within six months of the date on which the action was commenced and will return a judgment within two to four weeks of the hearing. Interlocutory injunction actions may be expected to move faster, but in most patent cases a ruling will not be obtained earlier than four to eight weeks after the petition is filed with the court. 2. Does your jurisdiction have specialist patent courts? If not, what level of expertise can a patent owner expect from the courts? Norway does not have specialist patent courts, but the Oslo District Court has exclusive jurisdiction in cases concerning: Cancellation of patents; Annulment of decisions of the Second Division of the Patent Office to reject applications for patent registration; Transfer of patents to an alleged rightful owner; and Judicial review of the Second Division s decisions in administrative limitation and re-examination cases. Patent infringement cases can be heard by all courts. If the defendant in an infringement action files a cancellation action in the Oslo District Court, the infringement action will normally be transferred to the Oslo court to be heard together with the invalidity case. A certain level of expertise in patent cases may be expected from the Oslo District Court, because patent cases are normally assigned to one of five or six judges who have taken an interest in such cases and have experience in them. At the request of either party or if the judge finds it advisable, the court will be comprised of two judges with technical expertise in the particular field of technology. This also applies to pure infringement cases heard by other district courts. In interlocutory injunction actions, the judge may appoint experts to advise him, but they will not take part in the decisions. The courts of appeal may also be comprised of two expert judges, in addition to the three legally trained judges, at either party s request or if the court finds it necessary. 3. Is it possible to cross-examine witnesses at trial? How far are proceedings based on written evidence? Are there restrictions on the use of evidence from experts? Proceedings are based on the principle of orality. In its decision, the court must rely on what has been said in the hearing. Written evidence must be referred to and quoted in the hearing, and the court should not rely on any documents or materials submitted prior to trial but not referred to in the hearing. Evidence from experts (opinions and witness testimony) is almost invariably used in patent litigation. Crossexamination of witnesses and experts at trial plays an important role in all litigation. 4. Are infringement and invalidity dealt with simultaneously? What level of proof is necessary to demonstrate one or the other? Infringement and invalidity actions may be joined and heard and decided simultaneously (see question 2 above). It is a general Patents in Europe 2008 93
principle that the assessment of evidence is free, in the sense that if a factual circumstance is in dispute, the judge will rely on the fact or set of facts which he finds has the highest probability of being true and correct. Applying this principle in patent cases sometimes poses the difficulty of ensuring that both the technical experts and the technical judges do not approach the issue from a scientific point of view, where the level of proof is much higher. 5. To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? There is no pre-trial discovery. Prior to trial, a party may request that the other party produce documents in its possession. There is a duty to comply, provided that the documents requested are relevant, but the catch is that the request must specify which documents are required. Thus, it is not possible for one party to request the other to produce all documents containing information relevant to the case, or to a particular fact or issue in the case. On the other hand, to request a document it is not necessary to know its date or the identity of the person who prepared or sent it. If a party fails to comply, the court may order production of the document. Even if a court does not order that the document be produced, the non-complying party should not take comfort from this: a Norwegian court will easily find against the non-complying party on the relevant issue. In extreme cases, where an order is not complied with, the court may impose a fine. Under the new Civil Disputes Act, the parties have an obligation to disclose and submit on their own initiative any important evidence of which they are or become aware, even if it is damaging to their own position, except if it can be reasonably assumed that the other party is also aware of it. 6. To what extent does any doctrine of equivalents apply in an infringement action? The doctrine of equivalents applies under Norwegian law. The existence of such a doctrine has been relied upon by Norwegian courts. Authors on patent law have tried to describe the doctrine. The issues are debated and the law is dynamic in this area. Many rely on a test of equivalence comprising the criteria of: The allegedly infringing item solving the same problem as the patented invention; The modifications introduced by the alleged infringer being obvious to the average person skilled in the art; and The disputed item or method not being in the art at the filing date of the patent. 7. Are there certain types of patent right that may be granted by the EPO biotech or computer software-related, for example that are more difficult to enforce than others? To make possible the implementation of the patent directive a controversial issue in Norway a political compromise was reached to the effect that Norway would take the strictest approach when granting biotechnological patents. From 1st January 2008, the EPO will also issue patents that are effective in Norway. Since the EPO is not bound by the strictest approach compromise, two mechanisms to have patents that are contrary to public order or morality revoked at the national level were introduced. First, the time limit for filing oppositions on these grounds is three years instead of the nine-month timeframe that applies in other cases. Second, as a possibly lower-cost alternative, a third party can now challenge the validity of a patent throughout its life (but based only on lack of novelty or inventive step) in an administrative re-examination procedure before the Patent Office. It is difficult to say what the long-term effects on biotech inventions will be, and especially whether their enforcement as opposed to their patentability will become more difficult. 8. To what extent are courts willing to consider, or bound by, the opinions and decisions of other courts that have dealt with similar cases? Only the decisions of the Supreme Court of Norway are binding (ie, district or appeal courts cannot deviate from the Supreme Court s current position on the law). Since there are relatively few Supreme Court decisions on patent law, the decisions of the lower courts have more persuasive impact than in other areas of the law and will be considered, especially where special issues are concerned (eg, the doctrine of equivalents, analogy method patent claims) and often also when establishing what constitutes inventive step. Parties usually invoke Norwegian precedents from all courts in patent litigation. 9. To what extent are courts willing to consider the reasoning given by foreign courts that have handed down decisions in similar cases? Decisions returned by foreign courts in similar cases are often referred to by the parties to litigation. The courts may be willing to consider 94 Patents in Europe 2008
the reasoning given in such decisions, although rarely if the Norwegian courts have issued decisions dealing with similar issues. Decisions from jurisdictions that have a legal tradition that is similar to Norway s own will be considered with greater interest than others. 10. What options are open to a defendant seeking to delay a case? How can a plaintiff counter delaying tactics? Procedure both in ordinary cases and in interlocutory injunction actions is governed by the new Civil Disputes Act, which came into force on 1st January 2008. The reform aimed to ensure that cases are processed and decided within reasonable time and without using more resources than necessary. Justice delayed is justice denied has been the catchphrase for this reform. In ordinary litigation, excluding preliminary injunction actions, when serving the writ on the defendant the court will normally give the party 21 days to file a notice of intention to defend. A defendant that is in no hurry can wait until the very last day before filing its response. An extension may be available if the case is complicated or if there is an exceptionally large number of documents. When applying, one should give reasons why the extension is needed. Once the reply has been filed, the court will call a meeting or telephone conference with counsel and a plan for the progress of the case, including the dates of the hearing, will be decided. The scope for delaying tactics will then be virtually nonexistent. In interlocutory injunction actions, the procedure is faster, the time limits for response are often very short and extensions are normally not available. A plaintiff can counter delaying tactics by emphasising in its submissions the urgency of the matter at hand, being proactive in dealing with issues that can be expected to arise and cutting down the time used to respond to submissions from the defendant (eg, a cross-action). 11. How available are preliminary injunctions and how do you get them? Preliminary injunctions are very often sought in patent cases and often granted. The application is filed either with the court with jurisdiction at the place of business of the defendant or the court with jurisdiction where an infringing item has arrived or is expected to arrive in the near future. If an ordinary infringement action has already been brought when the preliminary injunction is sought, the application is filed with the court seized with the main case. Upon receipt of an application for a preliminary injunction, the court will normally contact the defendant immediately by telephone or fax and transmit the application. The court will contact both parties to decide a date for a hearing, normally within a week or two; but in patent cases, especially if the court needs to appoint experts, it will normally take three to eight weeks sometimes even longer before the hearing is held. The court will then rule on the case within one to four weeks. The hearing is in fact a trial, based on the principle of orality. Fact and expert witnesses are heard and cross-examined. 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 be forfeited if one were to serve the request on the defendant or wait for a hearing. 12. How long does it take to get a decision at first instance? Under the new Civil Disputes Act, a decision at first instance should be rendered no later than six months from the date on which the action was started. Before the reform, most district courts processed ordinary civil cases in five to 10 months. The Oslo District Court, which has exclusive jurisdiction over all invalidity cases and also hears many infringement cases, processed these cases in eight to 12 months. In the short term, it is hard to imagine that the time required to get a decision in a patent case at first instance will be less than six months. 13. What avenues for appeal are open to the defeated party in a first instance case? What criteria are there for granting an appeal? How long does the appeal process take? All decisions in first instance cases are subject to appeal. The grounds for appeal can be either procedural errors, errors in the interpretation and application of the law, or errors in the assessment of the evidence, or a combination thereof. On appeal, grounds relied upon will be assessed and, at least in principle, the appeal is not a full re-trial. The appeal process should take about the same time as the process before the district court. 14. To take a case through to a first instance decision, what level of cost should a party to litigation expect to incur? To give an estimate, some assumptions must be made. In a case with a three-day hearing, a litigation team comprised of a senior litigator, an assistant and a patent attorney, where an expert retained by a party writes an opinion, Patents in Europe 2008 95
gives oral evidence and is cross-examined, the range of fees and costs would be from Euros 80,000 to Euros 220,000, inclusive of litigator fees, patent attorney fees, expert fees and sundry expenses (court bundles, photocopying, transport etc, but excluding travel and accommodation). Fees and costs incurred by the defendant are normally somewhat less than those incurred by the plaintiff. 15. Who can represent parties in court? Is specialist representation required? An advokat can represent parties in court. To represent a party before the Supreme Court of Norway, an advokat must be admitted to the Bar of the Supreme Court (ie, he must have pleaded two test cases to the satisfaction of the Supreme Court). No specialist representation is required. 16. What remedies are available for infringement and how are these typically applied? Are punitive damages available and in what circumstances? The following remedies are available for infringement: Preliminary remedies preliminary restraining order (injunctive order); seizure of infringing goods (if deemed necessary and adequate to prevent that the infringement is continued). Final remedies final restraining order; compensation; final order to modify infringing items so that they no longer infringe or, if that is not possible, at the discretion of the court, destruction of the infringing items. Compensation is normally awarded as a reasonable licence fee, but the patent owner is also entitled to be compensated for any further damage caused by the infringement typically, loss of profits exceeding the reasonable licence fee. Loss of profits is normally determined to equal the gross margin. In legal doctrine, the award of damages equal to the profits reaped by the infringer has been advocated, and in one recent court of appeal judgment the patentee was awarded compensation on that basis. Punitive damages are not available under Norwegian law. 17. Are there any realistic alternatives to litigation in cases relating to patent disputes? There are some alternative dispute resolution systems operating, and the district courts and the courts of appeal offer mediation as a matter of routine during the first stages of preparation of the case. 18. Has your jurisdiction signed up to the London Agreement on Translations? If not, how likely is it that it will do so? Norway is in the process of signing up to the London Agreement on Translations and is expected to do so in 2008. Amund Brede Svendsen is a partner at Grette. After obtaining a master of science in business degree, he studied law, graduating in 1981. He joined the predecessor firm of Grette (Smith Grette Eide Midelfart & Vik) as an associate in 1981 and became a partner in 1986. His practice includes all areas of intellectual property law, especially patents and trademarks, both transactions and litigation. He also advises clients on competition law issues and assists in corporate transactions, especially those involving IP and IT. He is chairman of the board of the Norwegian Association for Industrial Property Rights, president of the Norwegian national group of AIPPI and a member of the Norwegian Bar Association s permanent legislative committee for Intellectual Property and Market Law. Svein Ruud Johansen is a partner at Grette. He graduated in 1984. After two years as an executive officer in the Tax Directorate, he served as a deputy judge and then as an acting County Court judge until 1991, when he joined an Oslo commercial law firm as a senior associate. In 1993 he joined Grette as a senior associate, being promoted to partner in 1995. Mr Johansen is head of the firm s IP law department. His work includes contentious and non-contentious patent and IT law work, and corporate and commercial transactions. He also advises clients in the pharmaceuticals industry and in the offshore services industry. Amund Brede Svendsen Partner amund.svendsen@grette.no Tel: +47 22 34 00 00 Oslo www.grette.no Svein Ruud Johansen Partner svein.johansen@grette.no Tel: +47 22 34 00 00 Oslo www.grette.no 96 Patents in Europe 2008