The Norwegian Ministry of Justice has proposed several changes to, inter alia, the Patents Act. The main purpose of the proposals is to simplify the legislation on patents to make it easier and less costly for businesses to safeguard their rights and to harmonize the Norwegian Patents Act with international obligations, in particular the European Patent Convention.
The proposal will most likely be adopted by the Norwegian Parliament during the spring 2019, and most of the amendments will probably enter into force on 1 July 2019.
We believe that the proposals will contribute to useful simplifications and clarifications of the Patents Act. The system of administrative patent limitation is an important instrument for the patent holder when the validity of a patent is attacked before the courts. In our view, it is therefore very positive that the Ministry has rejected the proposal that was put forward in the consultative paper to cut off the possibility of requesting administrative patent limitation after an action for invalidity has been brought before the Courts.
Below are some important points in the proposal:
Easier to obtain re-establishment of rights after exceeding a deadline
Today a patent applicant, trademark applicant or design applicant may only have its rights re-established after exceeding a deadline if the applicant proves that he or she has acted diligently. The Ministry proposes to replace this requirement of due diligence with a requirement setting out that the exceeding of the deadline must have been unintentional in order for applicant's rights to be re-established. This will lower the threshold for getting rights re-established after exceeding a time-limit and thus strengthening the applicants position in the prosecution of applications etc.
Amendments to the rules on administrative patent limitation
If the validity of a patent is attacked, the patentee may wish to limit one or more of the claims to mitigate any grounds for invalidity, e.g. by including features from the patent specification and/or drawings to distinguish the claimed invention from the prior art.
Today, limitation of the patent claims may be done by requesting administrative patent limitation at the Norwegian Industrial Property Office, or in invalidity proceedings before the courts, where the patentee may submit auxiliary claims.
Today, both the patent description and the patent claims may be amended through administrative patent limitation at the Norwegian Industrial Property Office. In such cases the Norwegian Industrial Property Office reviews whether the amendments requested by the patent holder constitute a real limitation, and whether the patent in its limited form meets the requirements for novelty and inventive step. The Norwegian Industrial Property Office shall also examine whether the limitation entails that the patent claims contains subject-matter which extends beyond the content of the application as filed (added matter), and whether the invention after the limitation is sufficiently clear to enable a person skilled in the art to carry out the invention on the basis of the description without undue burden. If the Norwegian Industrial Property Office finds that the requested amendment is a real limitation and that the mentioned requirements for patentability are fulfilled for the claims in the requested limited form, the limitation shall be accepted.
The Ministry now proposes several amendments to the system of administrative patent limitation:
- It shall no longer be possible to make amendments to the description only - amendments in the description may in the future only be made together with amendments of the patent claims.
- The Norwegian Industrial Property Office shall no longer review whether the limited patent claims meet the conditions of novelty and inventive step, and whether the limited claims relate to an invention which is sufficiently disclosed for a person skilled in the art to carry out the invention without undue burden.
- The Norwegian Industrial Property Office shall still review whether the requested limitation constitutes a real limitation, whether the limited patent claims are sufficiently clear and have sufficient support in the description, and whether the requested amendments imply that the patent claims contains subject-matter which extends beyond the content of the application as filed (added matter).
By these amendments, the Norwegian rules on administrative patent limitation will be in line with what applies when the holder of an European patent requests administrative patent limitation at the European Patent Office.
The Ministry has not followed up a proposal from the consultative paper to cut off the possibility to file a petition for administrative patent limitation after an invalidity action has been brought before the courts. Therefore, it will still be possible to file a petition for administrative patent limitation at any stage during an invalidity action before the Courts.
Possible to invoke insufficient description as a ground of invalidity in administrative review at the Norwegian Industrial Property Office
In invalidity proceedings before the Courts, it can be invoked as a ground of invalidity that the patent description is insufficient for a person skilled in the art to carry out the invention without undue burden. The validity of a patent can also be attacked through administrative review at the Norwegian Industrial Property Office. The idea is that this should be an easier and less costly process than court proceedings. Today, however, insufficient description cannot be invoked as a ground of invalidity in administrative review.
The Ministry now proposes to change this so that insufficient description may also be invoked as a ground of invalidity in administrative review.
Second medical use patents
Pharmaceutical development is not only about developing new substances, but also about finding new medical applications for already known substances. When it turns out that a substance or composition can be used for other medical purposes than originally known, e.g. to treat other kind of diseases, this is called second medical use. Although it already follows from the Norwegian Industrial Property Office's practice that second medical use is patentable in Norway, this possibility has not been clearly expressed in the Patents Act.
The Ministry now proposes that the Patents Act should explicitly state that patents may be granted for known pharmaceuticals for other or later medical applications. Such patents will, as today, be granted as purpose-related product patents. With this amendment, the Patents Act will correspond with the European Patent Convention also on this point.