NATIONAL JUDGES' PRESENTATIONS
NO Norway
NO Norway - Are STENVIK - Vice Chairman Norwegian Industrial Property Office Appeal Board, University of Oslo - Recent developments in Norwegian case law
1. The doctrine of equivalents – Supreme Court, 2 September 2009 (Rt. 2009 p. 1055)
In this case – concerning an analogy process for manufacturing the pharmaceutical substance donepezil (an Alzheimer medicine) – the Norwegian Supreme Court confirmed the doctrine of equivalents, and stated for the first time the requirements to be met by an equivalent process. The court said that Sec. 39 of the Norwegian Patent Act was to be construed in light of Art. 69 EPC and the Protocol on the interpretation of Art. 69, as amended by EPC 2000. The court continued:
"Section 2 [of the Protocol] concerning protection for equivalents must be seen as expressing a more or less uniform European case law, which also Norway has taken part in. I understand the so-called doctrine of equivalents as an attempt at theoretically describing when there is so great similarity – equivalence – between the alleged infringement and the patented subject-matter that one is within the scope of protection. I am therefore of the opinion that in the interpretation of Sec. 39 [of the Patent Act] one has to open up for what the Appeal Court has called an estimation of identity, or an evaluation of equivalence."
The Supreme Court furthermore agreed with the Appeal Court that the following three conditions must be met by an equivalent embodiment:
- The alleged infringement must solve the same problem as the patented invention.
- The modifications made by the defendant must have been obvious to a person skilled in the art.
- The alleged infringement must not be a part of the prior art that must be kept free for everyone to use.
In regard to the second condition, the court elaborated:
"The doctrine of equivalents, as I have described it, is a tool for extending protection to processes that are reasonably identical, and that may therefore be described as modifications of the patent. The scope of protection would otherwise prevent further research as well as legitimate competition in the marketplace. … Decisions must be based on a concrete assessment of whether the process is sufficiently close to the process in the patent claim, so that it may be characterised as reasonably identical. Otherwise one would depart too far from the starting point that the patent claims decide the scope of protection."
2. Indirect infringement – Supreme Court, 22 December 2009 (Rt. 2009 p. 1665)
According to Sec. 3, second paragraph, of the Patent Act, the exclusive right of the patentee extends to acts of supplying means relating to an essential element of the invention, if the supplier knew or must have known that the means were suited and intended for putting the invention into effect. In this decision the Supreme Court held that a computer program could be considered to constitute "means" for putting the invention into effect. The invention in question was an apparatus for counting fish in the fish-farming business. The Supreme Court furthermore held that the supplier of the computer program – SINTEF, a large Norwegian research institute – could not invoke the research (experiment) exemption in Sec. 3, third paragraph, of the Patent Act. The research exemption covered only activities aimed at developing new knowledge, not the delivery to others of "means" based on that knowledge.