Administrative patent limitation
In administrative limitation, unlike in court proceedings, changes can be made to the description together with the patent claims. It is possible to submit a request for limitation after the patent has ceased, because a limitation becomes effective from the day of filing of the application. EP patents validated in Norway can also be limited.
Time limit for filing
There is no time limit for submitting a request for administrative review. You must wait before filing the request until the time limit for opposition has passed (nine months after the date on which the patent was granted) and any opposition cases have been decided. You cannot request limitation until any legal actions have been settled, but you can request limitation after an invalidity case has been brought in court. If you wish to limit the patent before the time limit for opposition has expired, you can file an opposition against your own patent.
The Norwegian Industrial Property Office will send an invoice which must be paid for the request for limitation to be processed.
See the price list.
When can you file a request for administrative limitation?
The holder of a patent may need to be able to limit the scope of a patent in cases where protection is too broad. This need may, for example, arise in connection with an invalidity case, where it is possible for the holder of a patent to submit a request for administrative limitation.
It is not a condition for the limitation that the patent in its granted form is invalid.
How to write a request for administrative limitation
A request for administrative limitation must be submitted to the Norwegian Industrial Property Office There are some formal conditions regarding what a request for limitation has to contain and how it is to be worded.
- It must be in writing.
- It must be in Norwegian, Danish or Swedish; where applicable, it may be in English if the patent to which the limitation applies is in English.
- The request for limitation must be signed by the person requesting limitation or this person's representative.
The request for limitation must contain:
- Name and address of the holder of the patent, and name and address of the representative if one is used.
- The number of the patent to which the request relates.
- Indication of the limitation which is requested.
- If changes to the description are requested, a clean version of the new description.
- If changes to the patent claims are requested, the new set of claims.
- If the patent has been granted in English, a translation of the set of claims into Norwegian.
- 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 patient may ask for patent limitation; requests submitted by anyone other than the holder will be rejected.
Processing of a request for limitation
If you submit a request for limitation that does not fulfil the formal conditions, the Norwegian Industrial Property Office will send you a letter specifying a time limit by which to rectify the deficiencies. If you do not rectify the deficiencies within this time, we will reject the request. If power of attorney is not supplied, all further communication will be sent directly to you.
When the formal conditions in the limitation are met, we will send a letter in which we confirm that we have received the request for limitation.
The Norwegian Industrial Property Office aims for the shortest possible processing time for requests for limitation. This means that a request is processed without unnecessary delay after the checking of formalities has been completed.
Communication during the processing of an administrative limitation will as a general rule, be in Norwegian. However, if the patent is granted in English and the request for limitation is written in English, communication will also be in English. If the request for limitation is written in Norwegian, the case officer can choose to write in English if the applicant so requests. If the patent is granted in Norwegian, but the request for limitation is written in English, the Norwegian Industrial Property Office can request that the request for limitation be translated into Norwegian.
From 1st of July 2019 NIPO will no longer assess whether the patent as amended fulfills the novelty/inventive step requirements, or whether the description is sufficiently clear as to enable a person skilled in the art to carry out the invention. No longer possible to alter the description alone (only together with a limitation of the claims).
Possible outcomes in the processing of a request for limitation
- 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.
If the request for limitation is rejected, the holder of the patent can appeal to the Norwegian Board of Appeal for Industrial Property Rights. The appeal must be lodged within one (1) month from the day on which the decision was sent. To have the appeal considered, you must pay an appeal fee.
- More information about Norwegian Board of Appeal for Industrial Property Rights (KFIR)
- Link to Norwegian Board of Appeal for Industrial Property Rights (KFIR)
- Patents Act Sections 39a-39e
- Patent Regulations Sections 40 and 42
- Regulation on Fees Section 31
- Patent Guidelines - Part D, Chapter IV (in Norwegian)