What is an administrative review?

An 'administrative review' is a procedure offered by the Norwegian Industrial Property Office (NIPO) as a cheaper, simpler and quicker alternative to court procedures when challenging the validity of a patent. The procedure is available for patents granted by NIPO and for granted European patents validated in Norway.

Sections 52b to 52e of the Patents Act and Section 41 of the Patent Regulations provide the legal basis for administrative reviews.(1) Section D(VI) of the Patent Guidelines outlines the practicalities concerning administrative reviews.

On which grounds can a party file an administrative review?

An administrative review can be filed on any of the following grounds:

  • The patented subject matter is not regarded as an invention (Paragraphs 2 and 3 of Section 1 of the Patents Act).
  • The patented subject matter is excluded from patentability (Paragraphs 4 to 6 of Section 1 and Sections 1a and b of the Patents Act).
  • The patented subject matter lacks novelty (Paragraph 1 of Section 2 of the Patents Act).
  • The patented subject matter lacks an inventive step (Paragraph 1 of Section 2 of the Patents Act).
  • The description is not sufficiently clear to enable a skilled person to carry out the invention (Paragraph 2 of Section 8 of the Patents Act).
  • The patent concerns biological material that requires deposition of such material, but no such deposition has been made (Paragraph 2 of Section 8 of the Patents Act, with reference to Section 8a).
  • The patent concerns biological material that already exists in nature and the patent does not state how such material may be used for industrial purposes (Paragraph 2 of Section 8 of the Patents Act).

Administrative reviews cannot be used to challenge a patent on the ground of containing amendments which extend beyond the scope of the application as filed (Section 13 of the Patents Act). The validity of the patent can be challenged on this ground only in court (Section 52 of the Patents Act). Infringement proceedings and entitlement proceedings are also reserved for the courts and are not valid grounds for filing an administrative review.

When can a party file for an administrative review?

An administrative review can be requested after the expiry of the nine-month opposition period, given that there are no pending opposition proceedings (Section 52c of the Patents Act and Section D(VI)(2)(2) of the Patent Guidelines). Further, there must not be any pending validity or infringement court proceedings for the patent in question (Section D(VI)(2)(2) of the Patent Guidelines), as these take prevalence over administrative reviews. The possibility to request an administrative review becomes available again after a final court decision has been issued.

Who can file for an administrative review?

Generally, anyone can request an administrative review, although some restrictions apply. NIPO itself is excluded from requesting a review, as well as anyone who has been party to validity proceedings concerning the patent in question for which there is a court decision (Section D(VI)(2)(2) of the Patent Guidelines).

'Anyone' is limited to anyone having a legal interest in the matter after the expiry of the patent. A legal interest could be the party being involved in a situation of potential infringement (Section D(VI)(2)(2) of the Patent Guidelines). The threshold for having a legal interest is relatively low.

What does the administrative review procedure entail?

Filing and formalities

An administrative review request must state the extent of the review and the grounds on which it is based, and provide the documentation necessary for supporting the grounds. If there are any licensees registered in the patent database, the party that requests an administrative review must also document that they have informed all registered licensees of the request. The name and address of the party and any representatives are required in addition to the patent number. A power of attorney is required if the representative is not an attorney-at-law.

If any of the above requirements are not fulfilled, the party will be provided with a time limit in which to rectify the deficiencies. If the party does not rectify the deficiencies in due course, the request will be rejected. If the deficiency concerns the lack of a power of attorney, the request will not be rejected, but NIPO will stop communicating with the representative and instead start communicating directly with the party.

A fee for administrative review is also payable to NIPO. If this fee not paid in due course, the request is deemed to not be filed.

Substantial proceedings

The NIPO committee which decides on administrative reviews comprises three members, none of whom may have taken part in any of the earlier proceedings for the patent in question (Section D(VI)(1) of the Patent Guidelines). The members are normally examiners or managers from the NIPO patent division, either from the technical field of the patent or from a different technical field. One of the members may, in some instances, be a legal member from the patent legal division at NIPO (Section D(VI)(1) of the Patent Guidelines).

The patent owner is given a deadline by which to file one round of arguments against the issues raised in the request for administrative review. NIPO may allow further responses from the parties – for example, if the NIPO committee finds additional grounds that must be discussed during the proceedings (Section D(VI)(3)(1) of the Patent Guidelines).

The parties may file a further response if third-party observations are filed during the proceedings (Section D(VI)(3)(6) of the Patent Guidelines). The third party will not become a party to the proceedings.

Oral proceedings may be held on request where a valid reason is given for such a request (Section D(VI)(3)(5) of the Patent Guidelines). NIPO has the power to initiate oral proceedings even if no requests have been put forward by any of the parties. No decisions will be made during oral proceedings but the parties have the opportunity to shed light on issues that have not been adequately addressed during the written proceedings.

NIPO may seek assistance from the legal division or an ethical committee. The legal division must be consulted if a public use of the invention prior to the filing date is alleged (Section D(VI)(3)(4) of the Patent Guidelines). The ethical committee must be consulted if NIPO is uncertain whether the patent has been granted contrary to public order or morality (Section D(VI)(3)(3) of the Patent Guidelines).

Amendments

The patent owner may file amendments to address the grounds for administrative review. NIPO has the power to suggest amendments, especially if it is clear how such amendments can overcome the grounds. Any claim amendments must be sufficiently clear and should not extend beyond the content of the application as filed.

Decision

The procedure is closed with a written decision. The patent can be maintained as granted, maintained in amended form or revoked. Where a patent is maintained in an amended form or revoked, these outcomes have an ex tunc effect (Section D(VI)(6) of the Patent Guidelines).

The losing party may be ordered to pay the winning party's costs associated with the case. The parties must submit cost summaries prior to the issuance of the decision if they want such a ruling. The patent legal division will decide the final amount, bearing in mind that an administrative review is a cost-effective option compared with court proceedings (Section D(VI)(3)(8) of the Patent Guidelines).

The party who filed the administrative review notice can withdraw from the procedure prior to NIPO making a decision. In such cases, the procedure is closed without any further evaluation of the validity of the patent. NIPO will issue a brief decision, stating that the case is closed (Section D(VI)(3)(7) of the Patent Guidelines). NIPO is not entitled to continue the proceedings ex officio if the claim is withdrawn by the requesting party.

Appeal

Any adversely affected party can submit an appeal to the Norwegian Board of Appeal for Industrial Property Rights within two months of the NIPO decision (Section D(VI)(5)(1) of the Patent Guidelines). The decision on costs can be appealed even if the outcome of the decision is not appealed.

Board of Appeal decisions can be appealed to the courts under certain circumstances. The patent owner may appeal the decision to the courts if it is adversely affected. The party that requested the administrative review is barred from appealing the decision to the courts, regardless of the outcome of the decision, and must file a separate lawsuit through the regular courts to continue the fight for invalidation.

Why choose an administrative review over court proceedings?

NIPO administrative reviews provide the public with a simpler, quicker and more cost-effective option than court proceedings. They may therefore be suitable for parties that do not wish to engage with more costly court proceedings, especially if they had originally intended to file an opposition but failed to do so within the applicable time limit.

Comment

An administrative review is a procedure that is unique to Norwegian patent practice. It provides a cost-effective and fast option for assessing the validity of a patent after the expiry of the opposition period without going to court. The proceedings are structurally similar to opposition proceedings but provide for the winning party's costs to be covered, similar to court proceedings. However, fewer grounds can be invoked in a request for administrative review compared with an opposition.

Endnotes

(1) Unofficial English translations of the Patents Act and the Patent Regulations can be found here and here, respectively.