NORWAY LAW AND PRACTICE Contributed by: Lars Erik Steinkjer, Nora Bratheim and Guro S K Nybø, Wikborg Rein Advokatfirma AS
dential information in such descriptions may be redacted. 1.15 Defences and Exceptions to Patent Infringement The most relied-upon defence against an infringement claim is a counterclaim for invalid - ity. A separate claim for revocation must be filed, leading to the validity and infringement being assessed in the same case before the Oslo Dis - trict Court. Another ground for defence is that the defend - ant is entitled to a compulsory licence. Other available defences include the defendant being entitled to a prior 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 Norwegian “Bolar” exemption is particularly relevant (see 2.4 Pub- licly Available Drug and Patent Information ). 1.16 Stays and Relevance of Parallel Proceedings As the Oslo District Court is the mandatory ven - ue 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. When Norway acceded to the European Patent Convention (EPC) on 1 January 2008, the Pat - ents Act was amended with a provision stating that a court may decide to stay a trial until a final decision concerning the same patent is delivered by the European Patent Office (EPO). In practice, this also applies to Norwegian patents granted nationally, 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 another country is normally not considered directly relevant for proceedings in Norway. If invalidity or revocation proceedings are pend - ing 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 pro - ceedings 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 proceedings. The amendments made in the aux - iliary 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 general law on civil proce - dure – meaning that the venue will normally be either the district court where the alleged infring - er has its headquarters or, alternatively, the court at the place of infringement. If an infringement 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
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