Opposition - patent

Anyone who considers a patent to have been granted on an incorrect basis can submit a written opposition to the Norwegian Industrial Property Office (NIPO).

An opposition contests the validity of the patent or the right of a patent holder to the invention. The opposition may lead to the patent being modified, cancelled or transferred to another person. The person submitting an opposition is referred to as the opponent.

Time limit for filing

The closing date for submitting an opposition is nine (9) months from the day when the patent was granted. There is an exception for oppositions that assert that the patent is contrary to public order or morality; these have an extended closing date and must be filed within three (3) years from the time when the patent was granted.

Price

Oppositions can be filed free of charge, unless you file an opposition on the basis of Section 1b of the Patents Act (contravention of public order or morality) after nine (9) months have passed. You will then have to pay a set fee. See the price list.

You can file an opposition in the following cases

  • If you believe that the patent is not valid, because the conditions specified in Sections 1 and 2 of the Patents Act are not met, the invention is not described sufficiently clearly for a person skilled in the art to execute it, or the patent covers something that was not apparent from the application when it was filed.
  • If you believe that the patent has been granted to the wrong person.
  • If you believe that the patent is contrary to public order or morality.

The opposition must be justified, and the justification should be supported for example by publications. The opposition will be processed by the relevant department of the Norwegian Industrial Property Office.

How to write an opposition

An opposition must be filed at the Norwegian Industrial Property Office. There are formal requirements regarding the contents of an opposition and how it is to be worded.

  1. It must be in writing.
  2. It must be in Norwegian, Danish or Swedish.
  3. It must be received at the Norwegian Industrial Property Office within nine (9) months after the patent to which the opposition relates was granted.
  4. The person who believes that he or she should have the right to the patent must himself or herself (personally or by using a representative) file the opposition.
  5. The opposition must be signed by the person submitting the opposition or the latter's representative.

The opposition must contain:

  1. Name and address of the person submitting the opposition, and name and address of the representative if you are using one.
  2. The number of the patent to which the opposition relates.
  3. An explanation as to why you believe the patent to be invalid or to have been granted to the wrong person.
  4. Necessary documentation to substantiate the opposition.
  5. Power of attorney if a representative is used, unless the representative is a solicitor or trainee solicitor and represents the person submitting the opposition personally.

If the opposition does not fulfil the requirements that it must be filed in writing, received within the time limit of nine (9) months and be justified on filing, the opposition will be rejected. It will then not be processed.

Processing of opposition

If the opposition does not fulfil the formal requirements, the Norwegian Industrial Property Office will send a letter specifying a time limit of one (1) month to rectify the deficiencies. If you do not rectify the deficiencies within the time limit we will reject the opposition. If power of attorney is not supplied, all further communication will take place directly with the opponent.

When the formal requirements for the opposition have been fulfilled, we will inform the opponent that the opposition has been formally accepted, and we will send the opposition to the holder of the patient with a time limit of three (3) months to respond.

Communication with the parties during the processing of an opposition will be in Norwegian. If the patent is granted in English, the Norwegian Industrial Property Office may require the holder of the patent to submit a translation of the patent specification into Norwegian. The opponent can request that the patent specification be translated into Norwegian.

All communication with each party must be sent to the other party within a reasonable time.

The general rule is that the opponent and the patent holder are to express an opinion once each before a decision is made. On occasions, and only when there is a need to have the case elucidated further, the opponent will be asked to express an opinion on the patent holder's response to the opposition.

It is always the holder who is to be given the last opportunity to express an opinion on the opposition before the decision is written. A copy of the holder's last statement of opinion is sent to the opponent for information without a time limit within which to respond. The Norwegian Industrial Property Office declares that it considers the case to have been sufficiently elucidated and that a decision will be made.

The Norwegian Industrial Property Office carries out a new assessment during processing of the opposition. The decision on the opposition is made by a committee of three persons.

Possible outcomes in the processing of an opposition

  • The opposition is rejected, so that the granted patent is upheld in unchanged form.
  • The opposition is successful, the patent is cancelled.
  • The opposition is partially successful, the patent is upheld is amended form.
  • The opposition is successful, the patent is transferred to the opponent.

Appeal against the decision on an opposition

If the opposition or parts of it is or are not successful, the opponent can appeal the decision to the Norwegian Board of Appeal for Industrial Property Rights (KFIR). If the opposition is wholly or partially successful, the holder 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.

Actions brought before the courts based on a patent having been granted to a party other than the party entitled to the patent under Section 1 of the Patents Act must be brought within one year after you have learnt that the patent has been granted.

Relevant legislation

Other appeal options

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