The Norwegian legal system has a framework that makes it a favourable choice of jurisdiction for the litigation of patents. A specialized venue accompanied by expert lay judges forms the basis for high quality judgements. The patents may be enforced by preliminary injunctions and the courts are also relatively efficient processing main cases, which may include both infringement of a patent and invalidity. In addition, the Norwegian courts do not necessarily await proceedings in the EPO to conclude on a matter.

This article will provide a general overview of procedures, laws and regulations that are relevant for patent litigation in Norway.

1 INTRODUCTION

Norway has an effective and well-functioning court system. All patent cases, both infringement and revocation actions, begin in the Oslo District Court, which is the largest and most professional of the District Courts, and the cases are heard by specialized legal and expert lay judges. The expert lay judges are appointed upon proposals from the parties, and will normally have a background within the technical field of the patent in question. One (or both) of the expert lay judges may be a patent attorney. As far as we know, this system is unique within Europe, and it ensures the necessary legal and technical competence within the panel. The composition of the panel arrange for thorough considerations of the matter and create a sound basis for well-reasoned judgements of high quality from the Court. Appeals are referred to Borgarting Court of Appeal which is also highly respected. Two expert lay judges are appointed in the appeal cases as well.

The Oslo District Court is an efficient court, considered in a European context, and hearings are normally scheduled within six to twelve months. A judgment can be expected within one to two months thereafter, but may take longer in more complex cases. The Norwegian Court's efficiency may be beneficial where a matter is being litigated simultaneously in several countries. The appeal process is somewhat slower as cases are rarely scheduled less than twelve months from the time of the appeal.

Norway has been a member of the European Patent Convention (EPC) since 2008. However, Norway has been obliged to comply with the substantive provisions of the EPC even prior to becoming a member, according to the EEA-agreement, protocol 28 art. 3 no. 4. The Norwegian patent law is, therefore, in compliance with the EPC and in line with the rest of the EU member states. Case law from the European Patent Office (EPO), especially the Boards of Appeal, is considered a highly relevant source of law by the Norwegian courts. Case law from higher courts in other jurisdictions in Europe, such as the Nordics, Germany, the Netherlands and the UK, and from US courts, is also considered relevant.

2 VENUE

The Oslo District Court is the compulsory venue for patent cases in Norway, in both revocation and infringement matters.

Certain judges at the Oslo District Court have particular experience in these matters and when a patent case has been filed, the case will be allocated to one of these judges. Normally, two expert lay judges will also be appointed, together forming a three judge panel, see Section 5 below.

However, for preliminary injunctions cases (see Section 8 below) the ordinary procedural rules apply, and the venue will be either the court where the defendant has its headquarters or the court at the place where the infringement took place. However, if an infringement or revocation action is already pending before the Oslo District Court, the request for a preliminary injunction must be filed before this court, and the request will then be handled by the same judge.

As stated above, an appeal of a judgment from the Oslo District Court will be heard by the Borgarting Court of Appeal as the second instance. In the Court of Appeal the case will be heard by three legally qualified judges and normally two expert lay judges. The legally qualified judges will not necessarily be specialized in patent matters, but the Borgarting Court of Appeal is also highly respected and the judges are generally very experienced. It is not required to be granted a leave to appeal in order to have the case heard by the appeal court. The appeal case will be a full new re-hearing of the case and new evidence and arguments are allowed in the appeal.

An appeal of a preliminary injunction will be heard by the applicable appeal court depending on where the injunction case was heard, and the decision will normally be based on a written procedure only, without an oral hearing.

A judgment from the court of appeal may be appealed to the Supreme Court as the third instance. A leave to appeal will be required in order to have the case heard by the Supreme Court, which is not often granted in patent cases. Patent cases are therefore seldom heard more than twice.

3 INITIATING THE LAWSUIT

It follows from the Norwegian Civil Procedure Act that a notice of a possible legal action should be sent in writing to the opposing party prior to filing a lawsuit, which is often done by sending a warning letter. The notice should include information about the claim and the grounds for the claim, and invite the opposite party to respond within reasonable time. The court cannot reject the case if a notice has not been sent, but this may have an impact on the court's decision on reimbursement of legal costs.

The case is initiated by filing a writ with details of the claim and legal grounds, together with the evidence. Further arguments and evidence may be presented later. All evidence must be submitted at the latest within two or three weeks prior to the oral hearing.

In infringement proceedings the claimant must demonstrate a genuine factual and legal need for a judgment from the court, normally by being the owner, co-owner or exclusive licensee of the patent. Further, it must be likely that the alleged infringer has or is planning to conduct infringing acts, such as e.g. placing an infringing product on the market in Norway.

A revocation action may be initiated by anyone as long as the patent is in force. There is no need to show a specific need in having the patent revoked.

In order to "clear the way", a party may also ask the court for a for a non-infringement declaration (also known as NID), either together with a revocation action or alone. In order to do so, the claimant must show a genuine need in having the claim decided. This is often done by referring to the claimant's plan to launch a product, and also that the patentee is likely to claim that this product infringes the patent. The likelihood that the patentee will claim infringement may be demonstrated by referring to a cease and desist letter from the patentee. It may also be demonstrated by a written request from the claimant to the patentee for a confirmation that the patent will not be enforced against the claimant, and the patentee not being willing to provide such confirmation.

A defendant may claim invalidity as a defence against an infringement claim in a main case. This may be an effective countermeasure, as case law shows that Norwegian courts carry out real and thorough reviews of the patentability, and do no shy away from declaring a patent invalid if they believe it should not have been granted. If a defendant wants to claim invalidity as a defence, the defendant must file a separate claim for revocation (for preliminary injunctions see section 8 below). The infringement and validity will then be assessed in the same case.

Damages are normally assessed as part of the infringement action, however, it is possible to ask the court to split the case, so that the claims regarding infringement and damages are heard separately. The proceedings regarding damages can then be postponed to after the court has decided on the question of infringement.

4 EVIDENCE

We have no disclosure or discovery process in Norway, but it is possible to secure evidence and obtain information from a potential defendant or a third party, both prior to initiating a court action and during the preparation of the case.

Evidence may be secured outside the legal proceedings by a judicial examination of the party's representative and witnesses and by providing access to and inspecting physical evidence. The evidence may be secured if it can be of significance in a dispute to which the applicant may become a party or intervener. There must, for obtaining such evidence, be a clear risk that the evidence will be lost or considerably weakened, or there must be other reasons why it is particularly important to obtain access to the evidence before legal proceedings are instigated. It can be noted that the burden of proof to show the need for obtaining such evidence is not set as high as the burden of proof for the main claim to be fulfilled in preliminary injunctions cases. If there is reason to fear that notice to the other party could obstruct the securing of evidence, a decision regarding access to evidence may be made ex parte. If so, a subsequent oral hearing can be requested by the other party.

After a lawsuit has been initiated, a party may also request disclosure of relevant information from the other party. As a starting point, all persons are obliged to make available as evidence objects that are in their possession or of which they can obtain possession. This also includes documents. A patent owner may, for example, request that the alleged infringer produces evidence regarding a production process, test results or provide product samples for analysis. The other party may reject the request under circumstances as, for example, where the information contains trade secrets. The court may then decide whether the information shall be disclosed and if so, establish certain confidentiality regimes under which for example only named individuals on the other side may be given access.

Where there are reasonable grounds to believe there has been an infringement of a patent, the court may, at the request of the patentee either prior to or during the case, rule that the alleged infringer shall disclose information about the origin and distribution networks of the goods. Such information may also be requested from those having contributed to the alleged infringement or who have been in possession of the infringing goods. It can also be requested from someone who has initiated significant preparatory measures with the intention of committing an act that will constitute an infringement or has otherwise acted in such a manner that there is particular reason to fear that the party in question will commit an infringement.

5 EXPERT WITNESSES AND EXPERT LAY JUDGES

In patent cases the parties will normally provide expert evidence. The expert witnesses will often produce written reports which are submitted to the court, but this is not required. In addition to a written report, if filed, the expert witnesses will give oral testimonies during the oral hearing. The expert witnesses have an obligation to present their professional opinions and viewpoints to the court. During the oral hearing, the expert witnesses are subject to both examination and cross-examination.

In main cases on validity and/or infringement, two expert lay judges will normally be appointed in both the first and the second instance. The expert lay judges will be a part of the panel together with the legal judges; in the first instance together with one legal judge, and in the second instance together with three legal judges. There are no expert lay judges in preliminary injunction proceedings, but there will often be court-appointed, independent experts who will assist the legal judge. The court-appointed experts will not be a part of the panel of judges, but they will hear the evidence and deliver an opinion on the matter in court, often in writing.

The expert lay judges will be appointed upon proposals (often joint) by the parties, and will have their background within the technical field to which the case relates. One (or both) of the expert lay judges may be a patent attorney. The parties should not contact the expert lay judges in advance of them being appointed, and the expert lay judges will normally not know which of the parties that has proposed them. If the parties cannot agree on a joint proposal, the parties must submit individual proposals, and the judge will have to decide.

6 THE MAIN HEARING

Depending on the complexity of the case, the main hearing in the first instance will be held 6-12 months after the writ has been filed.

Norwegian civil procedure is based on the principle of oral proceedings, which means that all arguments and evidence have to be presented orally to the court during the main hearing. For example, an expert report will normally have to be presented orally in court e.g. during the main examination of the expert, in order for the court to be allowed to take it into account.

For an infringement or invalidity action, 5-6 days will typically be reserved for the main hearing, but for complex cases concerning both infringement and validity, the main hearing may take up to 12-15 days.

The main hearing starts with a short introductory speech by the legal judge. Then, the parties will give their opening statements, starting with the claimant. In the opening statements the parties will present the case and the documentary evidence, reading aloud the parts of the evidence that the party would wish the court to rely upon.

Witness examinations will then follow, with the claimant's witnesses and experts going first. The witnesses and experts will after the main examination be cross-examined by the other party's attorney before the judges get to ask questions. After the disclosing of the evidence, the parties will give their closing arguments, where the case is argued based on the relevant law and the evidence presented during the hearing.

During the litigation, a patentee is entitled to amend the patent claims as long as the amendments have support in the specification of the patent and do not extend the scope of protection.

The judgment will normally be available to the public. Where confidential information is referred to in the judgment, the information may be redacted upon request prior to publication.

7 STAY OF A CASE

In some cases, one (or both) of the parties requests that the case is stayed pending the outcome of parallel opposition proceedings in the EPO. A stay of the case is up to the judge's discretion, but a stay is often the result when the outcome of the case depends, wholly or partly, on the legally binding outcome of another case. If both parties want the case to be stayed, they may agree so with binding effect for the court.

However, this may be different where there are sufficiently weighty considerations against a stay. One such issue can be the timing. The EPO proceedings may take several years. The court has therefore, in some cases found efficiency considerations to be sufficiently weighty and decided that the case should continue in Norway even though a proceeding at the EPO is still pending. The possibility of getting a decision on the merits in Norway when a parallel case is pending at the EPO is a distinguishing feature of the system in Norway. In several other countries, a case is routinely stayed without further considerations when a parallel opposition proceeding is pending in the EPO.

8 PRELIMINARY INJUNCTIONS

Preliminary injunctions are available in Norway. The court may grant an injunction if the claimant has established as probable that an infringement is present or that significant preparatory acts have been made with the aim of carrying out an infringing act. Moreover, it must be established that it is necessary to provisionally secure the claim because the action would otherwise be considerably impeded or is necessary to avert considerable loss or inconvenience, or to avoid violence which the conduct of the defendant gives reason to fear. Also, an injunction will not be granted if the loss or inconvenience to the defendant is clearly disproportionate to the interests of the claimant in having the injunction granted. In patent cases, the fact that there will be a continuous infringement of the patent normally makes the matter sufficiently urgent.

If a delay would pose a risk, the court may grant a preliminary injunction ex parte, without an oral hearing. There is no official system for protective letters in Norway, but there are different strategies that could be considered in order to try to avoid an ex parte injunction, depending on the situation in each case. If a preliminary injunction is granted ex parte, the defendant may request a subsequent oral hearing.

In preliminary injunction proceedings there will be no expert lay judges, but the court will often appoint independent expert witnesses who will assist the legal judge and deliver an opinion on the matter (cf. Section 5 above).

As opposed to a main case on infringement, in preliminary injunction cases the defendant may claim invalidity as a defence, without having to file a counter-claim on invalidity. There is no presumption of validity in Norway as in some other European countries, and a decision not to grant a preliminary injunction may, therefore, be based on the court's finding that the patent is most likely invalid.

There is a specific provision for preliminary injunctions where the court may decide that customs authorities shall withhold goods under their control, when the import or export of the goods would constitute an infringement of an intellectual property right.

If it is later established that the preliminary injunction was unjustified, the claimant is obliged, under strict liability, to compensate any loss that the defendant has suffered as a result of the injunction. The court may decide that the claimant must provide a guarantee for this compensation within a fixed time limit as a condition for the injunction to become effective.

9 COSTS

The losing party is normally required to reimburse the winning party's costs in full, including attorney's fees, unless the court finds the costs to be unreasonably high and decides to reduce the amount.

The court may also decide that the winning party should bear its own costs partially or in full, for example if the court finds that the winning party is to blame for the matter coming before the courts or has rejected a reasonable offer for settlement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.