Administrative review - patent
This can be done when the time limit for opposition has expired (nine months after the date on which the patent was granted). You can request administrative review even though the patent has ceased if you have a legal interest in having the question examined. Questions concerning infringement may, for example, give rise to such legal interest. Review may also be requested for EP patents that are validated in Norway.
The administrative review procedure is a quick, simple and cheap alternative to court proceedings.
Time limit for filing
There is no time limit for submitting a request for administrative review. You must wait before filing the request for administrative review 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 finally settled. If a case concerning administrative patent limitation is in progress, you must also wait until it has been finally settled. Nor can you request review until such time as a court case concerning the patent has been finally settled. This applies to both invalidity cases and infringement cases. A party that has previously brought a court action concerning the validity of a patent cannot normally later request review of the patent.
On receiving the request, the NIPO will send out an invoice which must be paid for the case to be processed. Half the amount will repaid if the NIPO rejects the request.
If the request is upheld in amended form, the holder must pay a fee to prepare a new patent specification.
See the price list.
When can you request administrative review?
You can submit a request for review if you believe that a patent has been granted in contravention of Sections 1 and 2 of the Patents Act. From 1 July 2019 a request for administrative review may also be filed on the ground that the description is not sufficiently clear as to enable a person skilled in the art to carry out the invention, cf. Section 8 second paragraph third – fifth sentence.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, and 2 and 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 32) to 5) of the Patents Act cannot therefore be used in requests for administrative review.
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 has to 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 letter with recorded delivery).
- 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 time of filing 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.
Processing of administrative review
If the request for review does not fulfil the formal conditions, the NIPO will set a time limit by which the deficiencies must be rectified. If you do not rectify the deficiencies within this time, we will reject the request. If you do not supply power of attorney, all further communication will be sent directly to you.
When the formal conditions are met, we will forward the request for review to the holder of the patent, who will have a time limit of three (3) months to respond.
Communication with the parties during the processing of an administrative review will be in Norwegian. If the patent is granted in English, the NIPO can require the holder of the patent to submit a translation of the patent specification into Norwegian. The person who has filed a request for review (appellant) can ask for the patent specification to be translated into Norwegian.
All communication with one of the parties must be sent to the other party within a reasonable time.
The general rule is that the appellant and the patent holder are to express an opinion once each before a decision is made. The actual request for administrative review is counted as an expression of opinion. The NIPO may, however, take account of aspects not 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 sufficient information to have been obtained on the case, we will make a new assessment that is independent of the assessment made when the patent was granted. This means that the case officer and committee who are to process the request for administrative review have not taken part in previous processing of the application or patent.
How long the processing takes depends on the communication between the parties, and may be up to one year.
Possible outcomes in the processing of a request for review
- The request is refused, so that the granted patent is upheld in unchanged form.
- The request is successful, the patent is cancelled.
- 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, whoever 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 time limit for appeals 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.
- More information about the Norwegian Board of Appeal for Industrial Property Rights (KFIR)
- Link to Norwegian Board of Appeal for Industrial Property Rights
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)