NORWAY LAW AND PRACTICE Contributed by: Lars Erik Steinkjer, Nora Bratheim and Guro S K Nybø, Wikborg Rein Advokatfirma AS
wegian Supreme Court decision in the “ Done- pezil ” matter (Rt-2009-1055). The three questions to be answered in the DoE are: • Does the variant achieve the same solution/ solve the same technical problem as the pat - ented invention? • Would a person skilled in the art find the modifications from the patented invention obvious? • Does the variant belong to the available prior art? If these three questions are answered affirma - tively, infringement of the original patent can be established. The Norwegian DoE is, how - ever, rather narrow in scope. According to the Supreme Court in the above-mentioned deci - sion, protection by equivalence is a matter of claim construction and can only encompass modifications that are “fairly identical” to the features set out in the patent claim. 1.11 Clearing the Way Filing a claim for revocation and/or a non- infringement declaration is often used as a strat - egy to “clear the way” before the launch of a new product. However, there is no legal obligation for a potential competitor to clear the way ahead of product launches. 1.12 Experts In matters where complex scientific issues are involved in terms of validity and/or infringement, the party-appointed experts will normally submit reports and provide testimony during the pro - ceedings. In a PI action, the court will normally appoint independent expert witnesses with particular
expertise in the relevant field. Typically, two court-appointed experts will attend the hearing including the evidence; at the end of evidence, they will deliver a report and also expand their view by oral testimony to the judge. Thereafter, it will be for the counsel to put further questions to the court-appointed experts – following which, the experts will leave the courtroom and not take further part in the proceedings. In an action on the merits, with infringement and/or validity issues at hand, there will be no court-appointed experts as per PI proceedings; instead, expert lay judges will be appointed by the court. They will typically have technical expertise in the relevant field. In some pharma patent litigation cases, the expert lay judges have comprised one technical expert (eg, a pro - fessor in biochemistry) and a patent attorney working within life sciences. The expert lay judges participate during the hear - ing as members of a panel of three, including the patent judge. In the court of appeal, this will be a panel of five (including three legal judges). 1.13 Use of Experiments Results from experiments may be filed as evi - dence in order to prove/disprove infringement/ validity of patents and Norwegian courts allow experiments in patent cases. There are no spe - cific procedures that must be followed in order for the experimental results to be admissible; however, the courts will assess the relevance of the experiments based on the protocols of the experiment(s). 1.14 Discovery/Disclosure In response to an infringement claim, the defendant will normally provide evidence in the form of a product or process description. Confi -
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