NORWAY Law and Practice Contributed by: Vebjørn Krag Iversen, Nora Bratheim, Kristin Erstad Remvik and Guro S. K. Nybø, Wikborg Rein Advokatfirma AS
1.15 Defences and Exceptions to Patent Infringement The most relied-upon defence against an infringement claim is a counterclaim for invalidity. A separate claim for revocation must be filed, leading to the validity and infringement being assessed in the same case before the Oslo District Court. Another ground for defence is that the defendant is entitled to a compulsory licence. Other available defences include the defendant being entitled to a pri ‑ or use right on the basis that they were already using the invention before the priority date, experimental use and exhaustion. For life sciences cases, the Nor ‑ wegian “Bolar” exemption is particularly relevant (see 2.4 Publicly Available Drug and Patent Information ). 1.16 Stays and Relevance of Parallel Proceedings As the Oslo District Court is the mandatory venue both for infringement cases and revocation actions, infringement and revocation actions will be joined and heard together in most cases. Thus, the infringement proceeding will normally not be stayed. A court may decide to stay a trial until a final decision concerning the same patent is delivered by the Euro ‑ pean Patent Office (EPO), but the court will normally only stay the proceedings if a decision from the EPO can be expected within a few months. The fact that the validity of a corresponding patent is disputed in anoth ‑ er country is normally not considered directly relevant for proceedings in Norway. It remains undecided what position Norwegian courts will take regarding staying national proceedings pending a decision on parallel patents delivered by the Unified Patent Court (UPC). If invalidity or revocation proceedings are pending before both the NIPO and a court at the same time, one of the actions will be stayed. In most cases, this will be the proceedings before the NIPO. 1.17 Patent Amendment A patent can be amended in administrative proceed ‑ ings before the NIPO or in a trial before the court. After the opposition period, a patent may also be amended upon request by the patent owner. Amendments can be made to the claims or the description.
Furthermore, the patent holder may file auxiliary requests to the court in revocation/cancellation pro ‑ ceedings. The amendments made in the auxiliary requests must not extend the scope of the patent as granted. 1.18 Court Arbiter The Oslo District Court has a panel of judges with particular experience in patent matters, who will hear all cases brought before the court. However, requests for PIs must be initiated in accordance with the gen ‑ eral law on civil procedure – meaning that the venue will normally be either the district court where the alleged infringer has its headquarters or, alternatively, the court at the place of infringement. If an infringe ‑ ment action or revocation action is already pending, the venue for the request for a PI must be filed to the Oslo District Court. As mentioned, in proceedings on the merits there will be two appointed expert lay judges in both the first and second instances. These expert lay judges will be accompanied by one legal judge in the first instance and three legal judges in the second instance. The expert lay judges are normally appointed upon pro ‑ posal from the parties and have their background within the technical field to which the case relates. Expert lay judges cannot be appointed in PI proceed ‑ ings, but it is common to use court-appointed experts in such proceedings. These experts are not associ ‑ ated with any of the parties and will be appointed to assist the legal judge in their assessment of the case. They are not part of the panel of judges, but will hear the trial and deliver an opinion on the matter in open court. Often, they also deliver a written opinion.
2. Generic Market Entry 2.1 Infringing Acts
An application for a marketing authorisation (MA) is not an infringing act and will not in itself be considered sufficient for the grant of a PI. However, the court will consider if there are additional circumstances that – together with the grant of an MA – constitute sufficient evidence that infringement is either imminent or likely in the near future.
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