Norway: Proposal for changes in the Norwegian IPR laws (enforcement)
In April 2011, the Norwegian Ministry of Justice (MoJ) issued a proposal for the strengthening of the legislation concerning the enforcement of intellectual property rights (IPR). Interested authorities, stakeholders and NGOs were invited to submit comments to the proposal by 30 September 2011. The MoJ received 58 letters of response, of which 44 had remarks to the proposal, and an amended proposal is expected from the MoJ.
Substantive law – calculation of damages for patent infringement
Norway is not a member of the EU, and has no obligation to implement directive 2004/48/EEC. However, many of the same problems need to be dealt with in Norway as elsewhere. If the amendments proposed by the MoJ are enacted, IPR enforcement in Norway will become more similar to the solutions of the directive, but not identical.
The focus in Norway on dangerous counterfeit products, especially within the pharmaceutical industry, is an important reason why the Government has prepared this proposal. However, the enforcement reform will include all IPR laws, except the Copyright Act.
The main object of the proposed changes in the Norwegian IPR legislation concerns the principles applying to the calculation and award of damages for infringements of IPRs.
If the infringer was negligent, the patent owner will have the right to choose between the following bases for calculating and awarding damages:
- A reasonable license fee
- Patent owner's financial loss (typically lost profits)
- Infringer's profit (obtained by the infringement)
If there was gross negligence or wilfulness on the part of the infringer, the patent owner will have, as a further alternative option, a claim of “double licence fees”. This “double licence fee” approach is new and unprecedented in Norwegian law. The patent owner’s right to choose which method of calculation should be applied is also novel.
It is expected that the changes will make patent enforcement more efficient, especially in cases in which it is difficult to substantiate a loss.
Procedural law – exclusive jurisdiction
Under the current provisions of the Norwegian Patents Act, the Oslo District Court has exclusive jurisdiction in patent invalidity cases, and in cases concerning the judicial review of Patent Office board of appeal decisions to refuse the grant of a patent, decisions by same board in administrative re-examinations, cases on compulsory licenses. “Pure” infringement cases, however, are heard by the ordinary district courts, normally the court having jurisdiction where the defendant has its place of business.
Thus, infringement and invalidity actions about the same patent are sometimes heard in different courts, if they are not consolidated and heard jointly in Oslo. The MoJ proposes that the Oslo District Court should have exclusive jurisdiction in all cases concerning patents and other recordable rights. Preliminary injunction actions will not be affected.
The expected impact on patent enforcement and litigation especially applies to the situations where an alleged infringer has interests in stalling the case. Defendants will be prevented from interrupting the infringement case by filing an invalidity action in the final phase before the trial of the infringement case. Also, the timeline from writ to trial in combined infringement and invalidity cases will be expedited, as there will not be any need for transfer of infringement cases to Oslo and consolidation of cases before that court.
The changes also include an enhanced right for the patent owner to obtain access to evidence. Changes are proposed in the Norwegian Disputes Act giving the patent owner access to information about the infringer’s distribution network and about the origin of the infringing products.