Attack and defense

Infringement

A patent limits the competition on the market, and the patentee may require other parties to stay away from the market with regard to exploitation of the patented invention. In this regard, conflicts may arise when someone utilizes the patented invention. A conflict of this type is a question about infringement. If the patentee asserts that a competitor or others unlawfully utilize a method or produces or sells a patented product, there is a basis for an action.

Please contact us if a conflict is about to arise. From the patentee’s point of view, it is usually desirable to stop the infringer who uses the patented invention illegally, whereas the infringer (by ignorance or deliberately) usually wants to proceed. Thus, the first step in a possible infringement is to assess whether the activity actually represents an infringement or not. Third party’s testing of the patent invention is not a patent infringement as long as it does not proceed in a manner which can be characterized as a commercial activity. There have been discussions whether use in institutions having research as their major activity represents infringement or not.

In addition to a direct infringement, we now and then also talk about indirect infringement. This is a special case where an isolated activity itself is not comprised by the patent protection, but puts the receiver in a position to utilize the invention. The clause hits the activity of “offer or deliver” means that enable practicing of the invention.

Protest

If one suspects that someone applies for a patent on an invention which is known from the prior art or otherwise not patentable, or one is accused of infringement in a patent concerning an invention which is considered to represent prior art, there may be a foundation for a protest. A protest is a protest against allowing the issuance of a patent on a known invention. What to do depend on which part of the system the patent application is for the moment, how it is drafted etc. Please contact us, and we can assist you in clarifying how to attack the problem.

Who owns the invention?

Who owns an invention and who has the right to apply for a patent? This may be restricted in many different ways, dependent on who the inventors are, any limiting agreements and possible employments involved. The rights and obligations an employee has vis-a-vis the employer when she/he has made an invention within the employment (or outside employment), is regulated in the Employee Inventions Code (Loven om Arbeidstakeroppfinnelser). Note that the major part of this code can be put aside with a mutual agreement between employer and employee, except the clauses in Rule 7, 1st section, and Rule 9 and 10.

For other circumstances, we invite you to contact us in order to clarify the instances in question.

License agreements / compulsory license / prioritized utilization

Such agreements enable a broad specter of conflict areas: economy, turnover requirement, documentation requirements, right to developments, and responsibility in external conflicts, just to mention a few.

A party who utilized the invention before the patent application was filed, or who have made substantial efforts to utilize the invention, may obtain a compulsory license to continued utilization, when particular reasons are present.