Administrative review - patent
The administrative review procedure is a quick, simple and cheap alternative to court proceedings.
Deadline for filing
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.
On receiving the request, the NIPO will send you an invoice which must be paid before the case is processed. Half the amount will repaid if the NIPO rejects the request.
If the request leads to the patent being upheld in amended form, the holder must pay a fee to pay for preparing a new patent specification.
See the price list for fees.
When can you request administrative review?
- 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.
Unlike in the case of an opposition you cannot, however, base the request on the patent having been granted to someone other than the person who is entitled to the invention.
If the request is based on something other than the patent having been granted in contravention of Sections 1-2 or Section 8 second paragraph third – fifth sentence of the Patents Act, the request will be rejected. The grounds for invalidation set forth in Section 52, first paragraph, points 3) to 5) of the Patents Act can therefore not be used in requests for administrative review. They must instead be brought before the courts.
How to write a request for administrative review
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.
- It must be in writing.
- It must be written in Norwegian, Danish or Swedish.
- The request for review must be signed by the person requesting review or a representative of this person.
The request for review must contain:
- Name and address of the person who has submitted the request, and name and address of the representative if one is being used.
- The number of the patent to which the request relates.
- Information on which patent claim the review relates.
- An explanation of why you believe the patent to be wholly or partially invalid.
- Necessary documentation in support of the request for review.
- If the patent is licensed, documentary evidence that whoever has filed the request has informed all registered licence-holders (by registered letter).
- Power of attorney if a representative is used, unless the representative is a solicitor or trainee solicitor and represents you personally.
If the conditions for delivery of the request are not met, the request will be rejected. Premature filing is a deficiency which can only be rectified by filing a new request.
If the request for review does not fulfil the formal conditions set out above, the NIPO will send you a letter with a one 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. If you can not use Altinn for various reasons, you can send an e-mail to firstname.lastname@example.org.
Processing the administrative review
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..
Possible outcomes in the processing of a request for review
- The request is refused, and the granted patent is upheld in unchanged form.
- The request is successful, the patent is revoked.
- The request is partially successful, the patent is upheld in amended form.
The decisions in the last two points take effect from the day on which the patent application was filed.
Appeal against the decision on a request for review
If the request for review is refused or if the appellant is only partially successful, the person who filed the request can appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). If the request for review leads to the patent being cancelled or amended, the holder of the patent can appeal the decision to KFIR. The deadline for an appeal is two (2) months from the date when the decision is sent to the parties. To have the appeal considered, you must pay an appeal fee.
The Norwegian Industrial Property Office has been given power to award costs to a party in a request for administrative review from the other party.
Read more about legal costs
- Patents Act Sections 52b-52e
- Patent Regulations Sections 41 and 42
- Regulation on Fees Section 28
- Industrial Property Office Act Sections 7 and 9
- Patent Guidelines - Part D, Chapter VI (in Norwegian)