Appeal dismissed in patent limitation case

Merck Sharp & Dohme LLC, a U.S. pharmaceutical company, held a Norwegian patent for the active ingredient sitagliptin. The patent included several claims, with Claim 1 defining the overall scope of protection – an independent claim. The remaining claims were narrower variations of Claim 1 – dependent claims.

Under section 39 a subsection 1 of the Patents Act, a patent holder may request that the Norwegian Industrial Property Office (NIPO) amend the claims “so as to limit the scope of protection". The company submitted a request to NIPO to limit Claims 3 and 15 to cover only the combination of sitagliptin and metformin. NIPO rejected the request, because the amendment did not constitute a genuine limitation of the patent, as Claim 1 remained unchanged. The company appealed to the Board of Appeal for Industrial Property Rights (KFIR), which – after several rounds of litigation – upheld the decision. The decision was subsequently upheld by both the District Court and the Court of Appeal.

The question before the Supreme Court was whether dependent claims may be limited in isolation, or only together with an independent claim. The wording of section 39 a and domestic legal sources suggest that a limitation must affect the overall scope of protection, not merely a dependent claim. Although the corresponding provision in the European Patent Convention (EPC) has been interpreted differently by the European Patent Office (EPO), there is no authoritative clarification of the Convention’s interpretation, and national approaches vary. The Supreme Court therefore concluded that domestic legal sources must prevail in the interpretation, and that dependent claims cannot be limited in isolation.

The appeal by the U.S. pharmaceutical company was dismissed.

This judgment clarifies the conditions under which administrative limitation of a patent may be requested.

Read the order from the Supreme Court (Norwegian only) (PDF)

Area of law: Patent law. Section 39 a of the Patents Act.

Key paragraphs: 62-66.

Justices: Webster, Bergh, Thyness, Sæther, Hellerslia