Patent appeal options

You can submit a protest against an application during its processing right up until the processing of the application has been completed. 

We will forward the protest to the applicant. If the protest concerns the right to the invention, the applicant will be given a time limit to comment. 

If you file your protest after a patent has been granted, we will send you a letter with information about the possibility of filing an opposition or administrative review. 

It is possible to file a protest during the assessment of an opposition, administrative review or administrative limitation. 

The protest will be sent to the parties to the case in question. 

If the objection concerns a case that is pending for administrative review or administrative limitation, the holder of the patent will have an opportunity to express an opinion. 

If a protest is submitted after a case has been processed, it will not be considered. However, the protest is usually sent to the parties for information. 

You can submit a protest against an application under assessment right up until the processing of the application has been completed. 

The protest must be submitted in writing and holding an argument. It can be delivered in Norwegian, Danish, Swedish or English. NIPO will consider what is described in the protest during further assessment of the application. 

Use the form in Altinn to submit a protest. 

• If the patent application is refused, the person who objected to the patent application will not be notified. 
• If the application is granted, NIPO will notify the person who objected, with information about the possibility of submitting an opposition. 
• If the protest has been filed in a case that is pending for administrative review or administrative limitation, the holder of the patent is given an opportunity to express an opinion. 
• If a protest is filed after a case has been processed, it will not be considered. However, the protest is usually sent to the parties for information. 

• NIPO consider what is described in the protest in further processing of the patent application. 
• If the protest was delivered too late, it will not be assessed. 

To file a protest is free of charge. 

If you believe that any of these are the case, you can file an opposition: 

• The patent is not valid because the invention was not new or differed significantly from what was known before the application was filed. Or because some of the conditions in sections 1 to 2 of the Patents Act are not met. 

• The invention is not described so clearly that a skilled person can exercise it. See Patents Act § 8, second paragraph, third to fifth sentence. 

• The patent includes something that did not fremgikk appear in the application when it was filed. See Section 13 of the Patents Act. 

• The patent has been granted to the wrong person. See Section 1 of the Patents Act. 

• The patent is contrary to public order or morality. See Section 1 b of the Patents Act. There is an extended time limit of 3 years for filing an opposition on the bases of these factors. 

The due date for submitting an opposition is nine (9) months from the day the patent was granted. 

The opposition must hold an argument and should as a minimum be supported by, for example, publications. 

There are some formal requirements that must be met for NIPO to consider the opposition. 

Formal requirements for oppositions 

1. It must be in writing. 
2. It must be in Norwegian, Danish or Swedish. 
3. It must be received at NIPO within nine (9) months after the patent to which the opposition relates was granted. 
4. Anyone who believes that he/she should have had the right to the patent must submit the opposition himself (personally or by its representative). 
5. The opposition must be signed by the opposer or its representative. 

The opposition must hold:

1. the number of the patent to which the opposition relates 
2. an explanation of why you believe the patent is invalid or given to the wrong person 
3. necessary documentation to support the opposition 
4. name and address of the opposer, and name and address of the representative if such is appointed by you 
5. a power of attorney from the person representing the opposer, if any; 

If the opposition does not meet the formal requirements mentioned above, NIPO sends a letter with a time limit of one (1) month to correct the deficiencies that are possible to correct. 

If you do not correct the deficiencies within the due date, we will reject the opposition. If the opposition is filed too late, is not submitted in writing, or does not hold an argument, it will also be refused. 

If no power of attorney is provided, all further communications will be sent directly to the opposer. 

When NIPO has received an opposition, we will forward this to the representative or the holder of the patent directly. The due date will be three months and two weeks after the expiry of the opposition period for the holder to reply to the opposition.  

The main rule is that both parties may state their opinion once before a decision is made by NIPO. The filed opposition is considered the statement of the opposer. Once the patent holder has responded, we will consider whether further statements from the parties are necessary. This occurs exceptionally. 

NIPO may also take account of matters that are not addressed in the opposition (for example new documents), but we will then give the parties the opportunity to comment on this before we decide. 

When NIPO decides that the case has been sufficiently informed, we send a letter to the parties stating that opposition is up for decision. A committee consisting of three persons will then decide. 

The assessment in an opposition is independent of the assessment made when the patent was granted. This means that the persons who will consider the opposition have not taken part in previous processing of the patent application. 

The possible outcomes of processing an opposition are:

• The opposition is refused, so that the granted patent is upheld unchanged. 
• The opposition is accepted, and the patent is revoked. 
• The opposition is partially accepted, and the patent is upheld in an amended form. 
• The opposition is accepted, and the patent is transferred to the opposer in its entirety, or in the form of an ideal share if the opposer is partially entitled to do so. 

Submitting an opposition is free of charge.

If the opposition or parts of it are not accepted, the opposer may appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). If the opposition is fully or partly accepted, the patent holder may appeal the decision to KFIR. The due date to appeal is two (2) months from the day the decision is sent to the parties. In order to have your complaint processed, you must pay a complaint fee. 

If the opposition is based on the patent having been granted to someone other than the person entitled to it under Section 1 of the Patents Act, a possible lawsuit must be filed in the courts within two (2) months after the final decision from NIPO or KFIR was sent to the parties.

If you believe that a patent is contrary to public order or morality, cf. Section 1 b of the Patents Act, you can file an opposition with this as argumentation. 

Oppositions based on these factors have an extended time limit for delivery and must be filed within three (3) years of granting the patent. If the opposition is filed after nine (9) months have passed since the patent was granted, you must pay a fixed fee.

• If you believe the patent is not valid, because the conditions set out in Section 1-2 of the Patents Act are not met.
• If you believe that the invention has not been described sufficiently clearly as to enable a skilled person to carry it out, cf. Section 8, second paragraph, third to fifth sentence of the Patents Act. 
• If you believe that the patent is contrary to public order or morality, cf. Section 1b of the Patents Act.

The argument you submit must contain at least one of the points above. If none of these are included, the claim will be refused.

There is no deadline for submitting a request for administrative review. You can submit a request for administrative review when the deadline for opposition has passed and any opposition cases or cases concerning administrative patent limitation have been finally settled. The same applies as long as a case concerning the patent in the courts has not been finally decided. A party that has previously brought a court action concerning the validity of a patent cannot normally request review of the patent at a later date.

You may request an administrative review throughout the life of the patent. If you have a legal interest in having the question tried, you can also request administrative review even after the patent has expired.

A request for administrative review must be filed at the NIPO. There are some formal conditions regarding what a request for review should contain and how it is to be worded.

Formal requirements for administrative review

1. It must be in writing.
2. It must be written in Norwegian, Danish or Swedish.
3. The request for review must be signed by the person requesting review or a representative of this person.

The request for review must contain:

1. Name and address of the person who has submitted the request, and name and address of the representative if one is being used.
2. The number of the patent to which the request relates.
3. Information on which patent claim the review relates.
4. An explanation of why you believe the patent to be wholly or partially invalid.
5. Necessary documentation in support of the request for review.
6. If the patent is licensed, documentary evidence that whoever has filed the request has informed all registered licence-holders (by registered letter).
7. Power of attorney if a representative is used, unless the representative is a solicitor or trainee solicitor and represents you personally.

If the request for review does not fulfil the formal conditions set out above, the NIPO will send you a letter with a one (1) month deadline to rectify the deficiencies. If you do not rectify the deficiencies within this deadline, we will reject the request.

If you do not file a power of attorney, all further communication will be sent directly to you.

To submit a request for administrative review to the Norwegian Industrial Property Office, we recommend using our form for correspondence in Altinn.

When NIPO has received a request for administrative review, we will forward this to the holder of the patent, who will have a deadline of three (3) months to respond.

The general rule is that the appellant and the patent holder may each express an opinion once before we make a decision. The actual request for administrative review is counted as an expression of opinion. Once the patent holder has responded, we will consider whether further statements from the parties are necessary. This only happens in exceptional cases.

NIPO may also take into account matters that have not been addressed in the request for review (for example new cited references). If this is the case, the parties will have an opportunity to express an opinion on this.

When we consider the case to be sufficiently informed, we send a letter to the parties stating that the case is taken up for decision, and we then decide the case in a committee consisting of three people.

The assessment in an administrative review is independent of the assessment made when the patent was granted. This means that the committee that is to process the request for administrative review has not taken part in previous processing of the application or patent.

A request for administrative review costs NOK 8,800. When we receive your claim, we will send you an invoice that must be paid for the case to be processed. Half the amount will be refunded if NIPO reject the claim. 

If NIPO’s conclusion is that the patent is upheld in an amended form, the patent holder must pay a fee for preparing a new patent writing. 

The possible outcomes of an administrative review review are: 

1. The claim is refused, so that the granted patent is upheld unchanged. 
2. The claim is accepted, the patent is revoked. 
3. The claim is partially accepted, and the patent is upheld in an amended form. 

The decisions in the last two points have effect from the day the patent application was filed. 

If the request for review is rejected or if the complainant is only partially accepted, the person who submitted the claim may appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR).

If the request for review leads to the patent being revoked or amended, the holder of the patent may appeal the decision to KFIR.

The time limit for appeal is two (2) months from the day the decision is sent to the parties.

In order to have your complaint processed, you must pay a complaint fee.

In some cases, the holder of a patent has a need to limit too broad a patent protection. This need may, for example, arise in connection with an invalidity case, it is then possible for the patentholder to demand administrative limitation. 

There is no condition to the limitation that the patent in its conferred form is invalid. 

There is no time limit for claiming administrative limitation. You must wait before submitting the request for administrative limitation until the opposition time limit has expired and any oppositions have been finally decided. 

If there is an unsettled lawsuit against the patent, you cannot request a limitation until this is settled, but you can request administrative limitation after the invalidity case has been brought before the courts. If you wish to limit the patent before the opposition period has expired, you can file an opposition to your own patent. 

A request for administrative limitation must be submitted to NIPO. There are some formal requirements for what an administrative limitation should hold and how it should be formulated.

Formal requirements

1. It must be in writing.
2. It must be written in Norwegian, Danish or Swedish.
3. The request for review must be signed by the person requesting review or a representative of this person.

The request for limitation must contain:

1. Name and address of the person who has submitted the request, and name and address of the representative if one is being used.
2. The number of the patent to which the request relates.
3. Stating the limitation of the patent claims required, along with a new complete set of claims. 
4. Additionally, if you want to change the description, a rewritten version of the description. 
5. If the patent is granted in English; a translation of the new set of requirements into Norwegian. 
6. Power of attorney if a representative is used, unless the representative is a solicitor or trainee solicitor and represents you personally.

Only the holder of the patent can request a patent limitation, claims made by parties other than the holder will be rejected.

If you do not file a power of attorney, all further communication will be sent directly to you.

To submit a request for administrative limitation to the Norwegian Industrial Property Office, we recommend using our form for correspondence in Altinn.

The NIPO examines whether the amended patent claims are clear, clear and supported by the description, and whether the patent in the amended form includes something that was not stated in the application when it was filed, and that the limitation entails a limitation on the scope of the patent protection. 

The description can only be changed if there is also a simultane

If you submit a claim for limitation that does not meet the formal conditions, NIPO will send a letter with a deadline for correcting the deficiencies. If you do not correct the deficiencies within the deadline, we will refuse the claim. 

Once the formal conditions of the claim for limitation are met, we will send a letter confirming that we have received the request for limitation. 

NIPO strives for as short a processing time as possible for claims for limitation. This means that the processing of a claim is done without undue delay after completion of the checking of formalities has been completed. 

Communication during the processing of an administrative limitation will generally be in Norwegian. However, if the patent has been granted in English and the claim for limitation is written in English, the communication must be in English. If the request for limitation is written in Norwegian, the examiner may choose to write in English if requested by the patent holder. If the patent has been granted in Norwegian, but the request for limitation is written in English, the Norwegian Industrial Property Office may require that the claim for the limitation be translated into Norwegian. 

• The request for limitation is rejected, and the granted patent is upheld in unchanged form.
• The request for limitation is accepted, and the patent is limited in accordance with what the holder asked for.

The request for limitation costs NOK 7,000.

We send an invoice that must be paid for the claim to be processed.

If the request for limitation is refused, the holder of the patent may appeal to the Norwegian Board of Appeal for Industrial Property Rights. The complaint must be filed within one (1) month from the day the decision was sent. In order to have your complaint processed, you must pay a complaint fee. 

Appeals to KFIR can be lodged by the person or persons a decision at the NIPO has wholly or partially gone against. An appeal can be lodged through a third party (professional representative or legal representative).

You can appeal against decisions made in objections, requests for administrative review and requests for patent limitation. You can also appeal against the following:

• Refusal of a patent application
• Final shelving of an application on the grounds of non-payment of the annual fee
• Decision that the applicant application covers two or more independent inventions (non-uniformity).
• Refusal of request for resumption
• Refusal of request to consider a case despite passing of time limit
• Refusal to validate an EP patent.
• Decision to transfer a patent to another person.
• Refusal of request for a supplementary protection certificate (SPC).
• Refusal of request for a change to the validity period of a supplementary protection certificate (SPC).
• Refusal of request for documents to be kept secret.
• Refusal of request to provide a sample of biological material.
• International application regarded as having been withdrawn due to non-delivery of translation.
• Award of costs in a request for administrative review.

The time limit for submitting an appeal to KFIR is counted from the day when the decision was sent from the NIPO, and is normally two (2) months. The time limit for filing is in principle absolute, and the appeal must be received at the NIPO not later than the time limit for appeals. An appeal filed too late will not be considered.

There are some formal conditions regarding what an appeal has to contain and how it is to be worded.

If the appeal is received by the time limit for appeals, you will receive an invoice for an appeal fee from the NIPO. If you do not pay the invoice, the appeal will be deemed not to have been received, and the appeal will not then be considered.

KIFR checks that the formal conditions have been met and then sends the appeal to the other party.

KFIR carries out an assessment of the case as it is submitted to KFIR. Previous case correspondence will not automatically be obtained from the NIPO. The committee making the decision in the case may, however, on its own initiative ask to see previous case correspondence at the NIPO without informing the appellant that it is doing so. They can also take account of new aspects that were not the subject of examination when the NIPO made its decision.

Avgjørelser tatt av Klagenemnda for industrielle rettigheter (KFIR) kan bare bringes inn for domstolene av en søker, en innehaver av et patent eller en innsiger som har fått en avgjørelse imot seg. 

Hovedregelen er at søksmål må være reist innen to (2) måneder, regnet fra den dagen avgjørelsen ble sendt fra KFIR. Hvis avgjørelsen ikke ankes vil Patentstyrets database bli oppdatert etter tre (3) måneder, og avgjørelsen kunngjøres i Norsk patenttidende. 

En avgjørelse fra Patentstyret hvor kravet om administrativ overprøving avvises eller avslås kan ikke bringes inn for domstolene. 

Søksmål til domstolene grunngitt i at patent er meddelt til en annen enn den som etter patentloven § 1 er berettiget til patentet, må reises innen ett (1) år fra du får kjennskap til at patentet er meddelt.