Your software and app source code may be protected under copyright law. However, this only provides a limited scope of protection, because only an identical or close copy will infringe. To apply for a patent, software inventions need to be regarded as a ‘technical’ invention. There may be aspects of the software applications that are critical for your inventive concept and can be identified as truly technical and can therefore be patented.
There are various forms of IP rights available to protect your software apps. Some rights are automatically obtained upon creation, other rights are obtained by simple registration or are filed and subjected to examination before a right is obtained. The most relevant types of protection and the important points of interest are: patent, copyright, database law, trademark, design right.
Yes, patents provide the broadest protection on software because they protect a principle of operation or concept, for a maximum period of 20 years. A patent gives you the exclusive rights to exclude others from copying, using, importing, and selling a patented innovation. It is a powerful right that can only be obtained when an innovation can be regarded as contributing to technical progress. See ‘Obtaining a patent on software‘.
There are various types of patent searches. The most commonly used search types are: novelty search, infringement search, validity search, patent monitoring, landscaping, and bibliographic searches.
You can read more about these on the ‘Various types of patent searches’ page.
A patent application or patent includes information about the applicant and inventor, the date of filing, status of the application, and the countries or regions in which the patent application has been filed and granted. Of course, the invention itself is also in the patent. Besides information about the subject matter and the invention, you can also read what falls under the scope of protection of the patent. The last aspect is determined by the claims in the patent.
On the ‘A detailed look at a patent’ page, you will find an example of a patent with an explanation.
An initial patentability search costs around €750, a comprehensive search costs around €1500. The exact costs depend on the technological domain and the research subject matter.
There are various classification systems worldwide, but the most commonly used are the International Classification Codes (IPC) and the Cooperative Patent Classification (CPC). These are systems that classify patent documents based on their content. All bodies that publish and grant patent documents are required to use IPC classes. This means that every patent document published has one or several IPC classes. The IPC is a vast system that comprises over 100,000 different classes.
The CPC is a combined classification system used by the European and American Patent Offices. It is even more extensive than the IPC, comprising over 250,000 classes. This system is increasingly used by national patent-granting authorities (alongside the European and American Patent Offices), such as the China National Intellectual Property Administration and the Korean Intellectual Property Office.
No, that is not possible. In principle, all patent applications are published after 18 months. The only way to prevent this is to withdraw your application prior to publication. It can therefore no longer result in a granted patent.
The Unified Patent Court is a new European patent court. The UPC is the specialized court handling litigation on European patents and unitary patents (for a transition period until 2030 still together with national courts). With the advent of the UPC, litigation for all countries that have ratified the UPC Agreement (the UPC countries) is centralized in a single European court.
A decision of the UPC is binding on all UPC countries. The UPC has jurisdiction over all existing and future European patents in force in one or more UPC countries, except for European patents where the patent holder has filed a so-called opt out. Such excluded European patents remain under the jurisdiction of national courts alone.
Before filing an application, you need to draft a written application for a patent, or have this drafted for you, and file this with a patent-granting authority. To do this, you need a description of the invention. This description should enable a skilled person to replicate the invention, which may involve using practical examples and/or drawings, for instance. The application also needs to include one or more patent claims which define the scope of protection required for the invention. A further requirement is an abstract of the application. Finally, you need to clearly show in the application that you are applying for a patent. This can be done, for example, by using a form made available by the patent granting authority in which one indicates that one wishes to have a patent based on the attached documents (the aforementioned specification, claims, etc.). You will also need to pay all of the required fees. These depend on the country or region in which the application is filed.
There may be additional requirements, depending on why you are applying for a patent. For instance, if the application include sequences of nucleotides or amino acids, then the description should also contain a list of these sequences. Applications that do not meet the requirements will be rejected.
Furthermore, it is also important that you have the formal right to file the application. In principle, you have this right if you are the inventor. Whether this is also the case in practice depends on the specific situation and national laws. For instance, under the laws of the Netherlands and Germany, the right of employees whose work activities encompass inventions passes in principle to their employer. In Germany, this is regulated by the Law on Employee Inventions, which incidentally also includes guidelines on remuneration. It is important to properly document how you are the holder. You do not need to demonstrate this when you file the application, but inadequate or missing documentation can later lead to disputes about who is the holder, or even to the patent becoming invalid.
It is advisable to seek advice from a patent attorney who is a specialist in all of the substantive and procedural aspects involved with applying for a patent.
The European patent with unitary effect or, shortly, the unitary patent is an alternative to the existing process of validating a European patent in individual countries. It is therefore not a ‘new’ patent, but an option to extend the validity of a granted European patent across all UPC countries in a single stroke.
The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred in part. This also means that the unitary patent can only be enforced in a centralized court (the UPC). The UPC is also the only court where a holder of a unitary patent can start an infringement case. Within the opposition period (9 months from the grant of the European patent), third parties can request revocation of the unitary patent before the EPO. After the expiry of the opposition period, the UPC will also be the only court where revocation proceedings can be started against a unitary patent. A decision of the UPC will have effect for all UPC countries.
Patent-granting procedures can involve a considerable investment. As a patent is essentially a national right, both the granting phase and the maintenance procedure need to be separately completed in each country.
Firstly, there are costs involved with drawing up and filing the application. These often range from 6,000 to 10,000 euros, including official fees. In certain countries, including the Netherlands and Belgium, you do not usually need to incur any additional costs until the patent is granted. Once the patent has been granted, you will have to pay maintenance fees each year.
However, in many countries, including Germany, a granting procedure involves additional costs.
Anyone who would like patent protection in multiple European countries usually chooses a so-called European patent. This is a cost-effective and uniform granting procedure that is centrally administered via the European Patent Office. This procedure applies to all countries that are signatories of the European Patent Convention. The costs of preparing and filing the application and the procedure up until the granting of the patent can vary considerably, depending on the complexity and length of the procedure. For a European patent-granting procedure, these costs are usually in the region of 20,000 euros. Once a European patent has been granted, you have to choose the participating countries in which the patent should be valid, where you will have to deal with the necessary formalities (this is known as validation). For instance, many countries require the patent, or at least the patent claims, to be translated. You will also have to pay maintenance fees each year. The validation fees in Europe can quickly rise to over 1,000 euros per country. That is why many companies choose to limit the number of countries where a granted European patent is valid, for instance, countries with the largest potential markets or countries where their main competitors have a manufacturing facility.
Similar considerations are involved in granting and maintaining patents in large countries outside of Europe, such as China, Japan or the US.
The European Commission considers patents a vital element of the Internal Market to achieve growth through innovation and increase the international competitiveness of European business. It considered that the efficiency, affordability and legal certainty of the patent system should be enhanced. Thereto, a pan-European patent protection and dispute settlement was to be created, based on two pillars: a European Union patent (the unitary patent) and a unified jurisdiction for patent disputes (the UPC).
Yes, it is. However, it is important to be aware that a patent application is a legal document that provides a very accurate description of technical knowledge with the aim of converting this knowledge into the broadest possible right. Patent applications, as all legal documents, need to meet various requirements. The patent-granting procedure often lasts for years and it is not possible to add new aspects to the application at a later date. This means that the invention must be described accurately when the application is filed. A number of basic rules apply to the formulation and wording, which is part of the expertise of a patent attorney. If you do not have experience with correctly describing the technical knowledge for which you are filing the patent, there is a high chance that the text will fall short after going through a granting procedure that lasts many years. For instance, this may be because the application no longer protects the required product or process, or that a patent cannot be obtained because the invention has not been sufficiently disclosed, even if the invention meets all of the substantive requirements.
The speed depends greatly on where one would like to obtain a patent, which procedure one follows, and the strength of the invention that one would like to protect.
The patent-granting procedure is extremely predictable for Dutch and Belgian patents. The patent is granted around eighteen months after the application has been filed. This patent is not formally tested for validity, but it is provided with a novelty report, including a written opinion issued by the European Patent Office (EPO). The patent can even be granted after a shorter period of time if requested by the applicant. Legally speaking, the patent can be granted from the moment that the patent application meets all of the formalities for granting the patent.
The patent-granting procedure for German patents does include a formal substantive assessment. The granting procedure takes an average of three years, provided that a request to extend the term has not been submitted.
The granting procedure for European patent applications (which can also be granted for the Netherlands, Belgium, and Germany) takes an average of two years, although in exceptional cases it can take as long as 10 years. The applicant has a significant influence on the speed of the procedure. For instance, if a patent is required quickly, it is possible to apply for an accelerated assessment.
However, there are advantages to slow granting procedures, as they allow many of the costs to be delayed. A slow granting procedure also makes it more feasible to estimate the commercial value of the invention and to coordinate the granting procedures accordingly. This also keeps the competition in the dark for longer about the precise scope of the protection of the final patent.
Slowing the granting procedure and delaying the costs are also important reasons for why organizations that operate internationally opt to first file an international application (PCT application), and then file national/regional applications based on this. In this way, it is possible to gain a delay of up to 30 months.
The UPC and unitary patent system were established as of 1 June 2023.
That all depends on the situation. Generally speaking, the sooner you apply, the better, because an invention needs to be novel and inventive in order to be patented. The sooner you file an application, the smaller the chance that knowledge about it will have been made public or that a competitor who has independently invented more or less the same thing will have already filed a patent application. However, it is beneficial to file an application, particularly in the fields of chemistry and life sciences, when there is a good substantiation of the advantages of the invention and its uses at the time of application. It is not possible to change the substance of a patent application at a later date. That is why you should be aware of how the various features are connected and which areas of application are useful when you file an application for a patent. Patent applications that are speculative and unsubstantiated may be rejected on the grounds of a lack of disclosure or inventiveness.
The following UPC countries will participate in the new system when it starts:
Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, The Netherlands, Portugal, Slovenia and Sweden.
Patents are exclusive rights – a patent allows you to prevent others from using the invention (in a commercial capacity). However, a patent does not automatically give you the right to use that invention yourself. This right applies for a maximum of 20 years for the chosen countries specified by the patent holder. An alternative way to protect your invention against use by third parties includes keeping the invention secret. This is usually cheaper and there is no time limit, but the result is more uncertain. It does not offer protection against reverse engineering by competitors or against third parties who independently develop a similar invention. Furthermore, a former employee can take the confidential knowledge with them to a competitor. The legislation based on European directive 2016/943/EU offers some solace for the latter. If you would like to take action against stolen or retrieved trade secrets under this legislation, you will need a good system for recording those trade secrets.
Various countries, including Germany and China, recognize an alternative to a patent, in addition to nondisclosure, in the form of the so-called utility model. This is known as a “Gebrauchsmuster” in Germany. The utility model offers the same scope of protection as a patent, but it is not suitable for all inventions. In particular, it may be a suitable way to protect products, but not processes. The maximum duration of the right also tends to be shorter. In Germany, the maximum duration of protection is 10 years. However, in contrast to a patent, a substantive examination is not carried out in Germany for a utility model. That is why the costs associated with a utility model are considerably lower than those for a patent.
A good rule of thumb is that you should only patent something when you anticipate that you will be able to generate profit from the patent rights that at least cover the costs of the patent. It is also very important to assess the commercial value of the invention. If the value of the invention is high enough, patenting is self-evident.
Naturally, there may also be other considerations involved, such as a need for financing – patent rights often help attract investors and can serve as security when obtaining a bank loan.
Questions as to how long protection is required, and whether nondisclosure is possible over a longer period also play a role here. A patent right gives up to twenty years of protection, while in principle, nondisclosure can be maintained indefinitely. Furthermore, there is the question as to whether nondisclosure will also provide sufficient protection in practice and the risks inherent to nondisclosure if the invention is patented by a third party.
Countries that can participate in the UPC Agreement must be EU member states. The UPC and unitary patent system start with the 17 UPC countries listed above.
Several signatory states have not (yet) ratified the Agreement. These include Czechia, Ireland, Greece, Cyprus, Hungary, and Slovakia. These may still become UPC countries at a later stage.
Some EU member states (e.g. Spain, Poland) have not signed the UPC Agreement and are not participating.
Non-EU countries cannot participate, regardless of whether they are participating in the European Patent Convention (EPC) or not. These include the United Kingdom, Norway, Switzerland, and Turkey. Following Brexit, the UK is no longer an EU member state.
A patent provides a right to the patented invention that can be enforced against third parties. This protection is often most desirable in the countries where the applicant operates.
If the invention is a product, it is desirable that third parties are unable to sell this product in the applicant’s current or future market. These are also the countries in which a patent may be desirable. For instance, one should also think about countries with ports where many products are transshipped in which it is often possible to create extra protection in an entire hinterland.
Another frequently used strategy is to acquire patent protection in a country where a competitor has its production facility.
If the invention is a procedure then it is desirable to protect that procedure where it could be performed by a competitor. If the competitor manufactures in country X and the applicant manufactures in the Netherlands, Belgium, or Germany, then it is often desirable to obtain protection in both country X and in the Netherlands, Belgium, or Germany. Sometimes competitors are closely linked to a certain location, and in this case, protection at that location may be sufficient. However, if one’s competitor can easily change location, then this applies to a lesser extent.
Therefore, there is no straightforward answer to this question. Where a patent is most useful will depend entirely on the situation. In general, one needs to find a balance between the costs and the places where protection would be most useful.
For patent proprietors it will be easier to enforce a European patent, because this can be achieved in all UPC countries through a single court case. A UPC judgment will directly affect the patent in all UPC countries. Depending on your situation, this may be advantageous or detrimental compared to the former system wherein national courts decided on patent matters.
During a transition period until 1 May 2030, you may choose the (continued) applicability of the current national court system for your European patent(s). In that case, you must submit a so-called opt-out request with the UPC for those patents that are to be excluded from the court’s jurisdiction. In that case nothing will change and court cases will be handled only by the national courts.
In most contracting member states there is a branch office of the UPC in the form of at least one Local Division. There are local divisions in Vienna, Brussels, Copenhagen, Helsinki, Paris, Düsseldorf, Hamburg, Mannheim, Munich, Milan, Lisbon, Ljubljana and The Hague.
In Stockholm, there is a Regional Scandinavian-Baltic Division. This Division will handle cases from Sweden, Estonia, Latvia and Lithuania. In addition, each of those countries designates institutions for hearings in their own country.
Paris, Munich and Milan are the three locations of the Central Division. A Court of Appeal is located in Luxembourg.
No, that is not possible. However, you can obtain patent protection in almost all countries around the world. In the vast majority of these countries, it is possible to initially file an international application (PCT application). This can then be used to start a national/regional patent-granting procedure after a maximum of 30 months in order to obtain protection in individual countries or regions (e.g. Europe). It is important to determine in advance the precise countries where you would like a patent. Some countries (such as Argentina, Bolivia, Suriname, Congo and Ethiopia) cannot be accessed via PCT. In other countries (e.g. Belgium and the Netherlands), it is only possible to obtain protection based on the international application via the centralized European route.
However, it is uncommon for someone to apply for a patent in all countries. Obtaining and maintaining a patent is a costly process, and you will need to be able to recoup these costs. If you have protection in the most important territories where your invention (or a product derived from your invention) is used, then this is often sufficient.
Depending on the legal question, the Courts of First Instance and the Court of Appeal of the UPC will apply
– European Union law (the “Unitary Patent Regulation” Regulation (EU) No. 1257/2012, and the “Translation Regulation” Regulation (EU) No. 1260/2012);
– the Agreement on the Unified Patent Court (UPCA);
– the European Patent Convention (EPC);
– other international agreements applicable to patents and binding on all the Contracting Member States (e.g. TRIPs).
National law only plays a minor role in UPC proceedings.
A patent is an exclusive right. This means that a patent allows you to prevent others from using your invention, but a patent does not automatically give you the right to use that patented invention. For instance, the patented product may infringe the patents of third parties, and in this case it will not be possible to freely commercialize the product. It is advisable to examine third-party rights, or have these examined, in order to determine whether your product infringes other people’s rights.
In Germany, companies are required to monitor the market, which also means that these companies have to identify and analyze third-party IP rights that may be relevant for their own products and procedures.
In infringement cases relating to European or unitary patents, the UPC will apply the articles regarding direct infringement (article 25), indirect infringement (article 26), limitations of the effect of a patent (article 27), and exhaustion of rights (article 29) of the UPCA. It is expected that role of the Court of Appeal will be important to clearly define infringement tests for equivalence or indirect infringement to ensure harmonization between UPC member states.
A patent application needs to meet a number of requirements, including novelty, inventiveness and applicability or industrial applicability. Being able to show that the invention works plays a role in a number of requirements for patenting, in particular replicability and inventiveness. Replicability means that the invention must be described in the application so that a skilled person is able to reproduce it. This may involve using drawings and examples, among other things. If the inventiveness is based on a particular effect, then it may also be necessary to demonstrate that this effect can indeed be achieved with the invention. Examples may also be useful here. These examples are often included in patent applications in the fields of chemistry and life sciences.
In order to meet the requirements for patenting, an invention needs to be new and inventive compared to everything that is publicly known. In other words, if an inventor gives a presentation about the invention without a nondisclosure agreement in place, in principle, the inventor is making the invention public, which may hamper patenting.
A nondisclosure agreement can sometimes be implicit, for instance when giving an internal presentation in a company.
Furthermore, certain countries, such as the US, make a limited exception to disclosures by the inventor that are prejudicial to novelty. In those countries, an inventor who has published his work can still file an application for a patent during a limited period (usually up to six months or one year) after making it public. This is also known as the grace period. With regard to European applications, there are two exceptional situations in which a grace period applies: (i) if a disclosure is the result of clearly taking advantage of the applicant and (ii) a disclosure at an exhibition recognized for this purpose.
The exact meaning of a public presentation and the situations under which an implicit nondisclosure agreement or the grace period may be relied upon depend on the jurisdiction where the application for a patent has been filed.
The validity of a patent is resolved by applying the provisions of the EPC. Patentable inventions, novelty, inventive step and industrial applicability are interpreted in accordance with the EPC. In this respect, not much will change with current practice.
The UPC will apply national law to questions of property, such as security rights, contractual licensing, insolvency proceedings, etc., and questions of prior use and compulsory licenses.
In principle, the content of an application is fixed at the moment it is filed, and it is not possible to add anything to the content of the application. The purpose of this is to protect third parties against the existence of rights “with retroactive effect” that were not foreseen at the time of filing. However, it is possible to amend patent claims after filing, provided that this change is based on the content of the application as it was filed.
It is possible to file a continuation application up to one year after a patent application has been filed. This may include new information (subject matter). You can then rely on the filing date of the priority application (the priority date) for everything that was described in the original application (priority application), while the actual date on which the continuation application is filed will count as the assessment date for patenting purposes of the new information.
Therefore, this continuation application is a separate application. In practice, priority and a continuation applications are combined to increase the likelihood of a patent being granted. You can file the priority application and have it examined by the patent-granting authority to get an idea of any possible objections to granting the patent. You can take this into account when you draw up the (final) continuation application, for instance, by adding examples or changing the text. When you do this, it important to pay as much attention as possible to what has been published since the priority application was filed.
This may be appropriate in some situations, provided that the application has not been published and the invention has not been made public in any other way. In this case, the knowledge contained in the application will not have found its way into the public domain.
Naturally, there may have been other publications between when you filed the earlier patent and when you re-filed the patent. This means the patent application that you file later may not be novel or inventive, whereas this would have been the case for the earlier application. Filing later simply increases the chance of detrimental earlier publications.
The UPC will work with short deadlines, and all evidence must be submitted at the earliest possible opportunity (front-loaded system). Therefore, business strategies require thorough freedom-to-operate analyses in view of the UPC.
Clearly, the UPC and national courts have markedly different procedural rules particularly relevant to the speed of the proceedings, and their decisions have different territorial scopes.
The courts will apply national law. However, national laws can be amended in view of harmonization with the UPC Agreement. In Germany and France, new rules on double patenting have come into force, allowing double patent protection for a national patent for the same invention alongside a unitary patent or a traditional European patent as long as the latter is not opted-out. This does not appear to open important new avenues, but goes to show that systems will exist side by side, with strong emphasis on harmonization. In Belgium, the limitations on the rights of patentees such as the research exemption and breeders’ exemption are brought in line with the UPC, so as to avoid different judicial regimes between patents that are opted-out or opted-in.
Although it is clear that the UPC and national courts have markedly different procedural rules particularly relevant to the speed of the proceedings, and that their decisions have different territorial scopes, there is less certainty about the applicable law when opting out. Moreover, there are various views among experts on whether an opt-out from the UPC’s competence also means an opt-out from the entire UPCA law.
If you suspect infringement, it is very important that you can prove this. If the patent is for a physical product, then the product, for instance, would need to be examined and then compared to the claims in the patent. It is advisable to seek advice from a patent attorney. If there has been an infringement of a patent for a procedure, it is often more difficult to obtain proof of the infringement. However, depending on the jurisdiction in which the infringement is suspected, there are legal instruments which make it easier to discover evidence.
Dutch law, for instance, allows for evidence to be seized if you can plausibly demonstrate that there has probably been an infringement, but you require more proof for infringement proceedings. This could also include hearing evidence from witnesses.
In Germany, the patent holder can require the suspected infringer to submit documents, materials or procedures that are the subject matter of the patent (Section 140cm Germany Patent Act) for examination. However, to do this, the suspected infringement must be deemed to be sufficiently plausible. Firstly, you can send a request for consent or a warning to the suspected infringer. In some cases, this brings any potentially infringing actions to an end. Secondly, you can start infringement proceedings at a German regional court with a patent division.
Belgium is an example of a country where there is the possibility of a ‘distraint description’. This is a descriptive attachment in which a neutral expert can examine a production facility belonging to a suspected infringer.
The patent proprietor, the exclusive licensee (unless the licensing agreement provides otherwise and after giving prior notice to the patent proprietor), and the non-exclusive licensee (in so far as expressly permitted by the license agreement and after prior notice to the patent proprietor) are entitled to bring actions before the UPC.
Patents can be freely consulted on websites such as nl.espacenet.com, be.espacenet.com, worldwide.espacenet.com or www.google.com/patents. You can use these websites when you develop a new product to carry out a detailed search of the existing third-party rights in the territory where you wish to commercialize the new product. You can also use these sites to keep up to date on the types of applications that are filed and to assess whether these are relevant for your products. These will give you a good idea, but you can also have a professional third-party rights search carried out by a search-specialist who knows where to look.
Most countries have an online register that lists all published applications and granted patents. The register will also let you see whether an application has been granted, or whether it was rejected or withdrawn. The register for Europe can be found at https://register.epo.org/regviewer. Furthermore, Espacenet (www.worldwide.espacenet.com/) provides a broad overview of applications and patents for most countries in the world. You can also find information about the status of specific patent rights for many countries here.
No. The validity of a patent cannot be contested in a suit for infringement brought by the holder of a license at the UPC if the patent proprietor does not take part in the proceedings. The defendant in such proceedings for infringement wanting to contest the validity of a patent shall have to bring actions against the actual patent proprietor before the UPC.
The term ‘patent pending’ means that the manufacturer of the product concerned has applied to patent an invention that is connected in one way or another to the product. Since the average patent-granting procedure can easily take several years and manufacturers do not have to wait until the patent has been granted to commercialize their invention, a product can be labelled with the term ‘patent pending’. By doing this, the manufacturer wants to show that the patent is innovative, while at the same time showing that the manufacturer has not yet actually been granted a patent, because the patent application is still being processed, in other words, the patent is ‘pending’.
No. Only the holder of an exclusive license is entitled to bring actions before the UPC, provided that the patent proprietor is given prior notice and unless the licensing agreement provides otherwise.
The holder of a non-exclusive license is not entitled to bring actions before the UPC unless expressly permitted by the license agreement and the patent proprietor is given prior notice.
This all depends on the arrangements that were made with the other company. In principle, both parties have rights to the inventions that emerge from the research conducted with another company. This means that it is possible to jointly apply for a patent. It is important to think beforehand about how both parties deal with the granting phase in which the claims are formulated. Who has the final say about the claims if there is a difference of opinion? How are the costs shared? It is also possible to jointly go through a research process where agreements are made on which of the parties will acquire which parts of the IP rights. In this situation too, it is very important to document in advance who has a right to what.
Opting-out is removing a European patent from the jurisdiction of the UPC. It means that the current system whereby only national courts have jurisdiction is maintained and that the UPC has no competence to hear cases on the opted-out European patent. If you decide that legal disputes on infringement and validity of your European patent(s) should be heard by national courts instead of the UPC, you must submit an opt-out request for your current European patent(s). Opting-out a unitary patent is not possible.
Here too, the rules about what is and what is not permitted vary slightly in different countries.
In the Netherlands, research purposes are exempted from the scope of patent protection for something that has been patented in Section 53(3) of the Patents Act 1995 (ROW 1995). This is known as the research exemption. It is for the courts to determine when something is considered as research and is covered by this exemption. For instance, research is not restricted to academic purposes, and may also be carried out by commercial organizations. In general, much research, such as research into an as yet unknown application or an improved variant, falls under the research exemption. Research into whether commercial application is possible is generally covered by the research exemption. However, research for obtaining a required marketing authorization usually does not fall within the scope of the research exemption. You are advised to consult a specialist before embarking on any research if you think you may need the research exemption.
In Belgium, Section XI.34 of the Code of Economic Law provides clarity about the protection that is not granted by a patent. Subsection b reads as follows: actions that are performed on and/or with the object of the patent application, for research purposes. It means that it is possible to conduct research with a patented chemical, as long as the research is purely academic and not for commercial purposes. This is a specific example of the essential purpose of a patent. A patent allows a patent holder to benefit from a commercial monopoly in exchange for the disclosure of his or her invention. Thanks to this disclosure, non-patent holders are able to use the knowledge about the invention for research purposes.
In Germany, if the patented chemical can be purchased, it is possible to carry out research on the chemical, and the patent right is then exhausted. Furthermore, Section 11(2) of the Patent Act permits experimental activities related to the subject matter of patented inventions. There are no limits to the purpose of the experiment or research, and it may be for academic and industrial purposes. In any event, it is advisable to consult an expert before starting the research.
In order to opt-out your European patent from the jurisdiction of the UPC, you must file an opt-out request with the UPC. The opt-out request can only be made on behalf of all proprietors. Your UPC representative may file such a request for you. In that case, only national courts have jurisdiction.
The requests for opting out have to be made for each European patent individually. So you can choose to have some of your European patent rights opted-out from the UPC and others falling under UPC jurisdiction.
The possibility for filing an opt-out also exists for pending European patent applications, from the time of publication of the application by the European Patent Office.
For new patent applications (applications still in their priority year or applications that have yet to be filed) you could consider filing national applications in the European countries of interest instead of filing a European patent application. Whether this is interesting from a cost perspective or a legal perspective, will depend on the situation.
Patents can be granted for inventions that meet the requirements of patentability, including novelty, inventiveness and applicability or industrial applicability. It is possible to apply for a patent for a medicine that meets these requirements, and even for new uses of existing medicines. However, if the discovery only involves the mechanism on which the known action of a medicine is based, then the discovery is not deemed to be novel for patenting purposes. On the other hand, if the working mechanism leads to an improved form or an improved usage, for instance, a special form of dosage or a procedure for making a medicine, then there may be an underlying patentable invention.
There will be no official fee to opt-out or opt-in.
An opt-out can be filed both before and after the grant of a European patent. This can be done until 1 May 2030. This period can be extended by member states.
An invention disclosure is sometimes used to subsequently prove that you possessed the knowledge shown in the invention disclosure on a certain date. If someone does not want to file a patent application, but also does not want to run the risk of a competitor patenting a similar product or process, the process or product can be described and filed with a civil-law notary. If you are then faced with a competitor’s patent in the future, you will be able to prove that you already possessed that knowledge. This may be helpful during infringement proceedings if you rely on a right of prior use. A notarized invention disclosure can also be helpful if you develop something with third parties and at a later date want to prove the knowledge you had prior to the collaboration. An invention disclosure is not a right, rather it is documentary evidence.
The UPC has exclusive jurisdictional authority in respect of all suits on infringement or validity of unitary patents as well as all nationally validated European patents and SPCs in states that have ratified the UPCA. However, during a transitional period of 7 years from 1 June 2023, an action for infringement or revocation/invalidity of a European patent or SPC may still be brought before a national court (Art. 83 UPCA). During the transitional period, both courts therefore share competence, meaning that parties have a choice of forum and may have their case heard and determined before either of these courts. It is also during this transitional period that proprietors of a European patent or SPC may opt out from the exclusive competence of the UPC; an opt-out can be filed until 1May 2030. In that case, the national courts have exclusive competence. Hence, during the transitional period, patent proprietors will have the choice of whether to sue an infringer in a national court or before the UPC. Conversely, a third party may initiate revocation proceedings for the patent before the UPC and a national court.
You need to pay attention to many things, particularly with licenses. When you sell a patent, you agree on the conditions and then you have to ensure that the patent rights are correctly assigned. A lot can go wrong here, but in principle this involves procedures.
The situation is more complicated with licenses. For instance, do you want to license the entire patent, or only part of it? Do you want to license it for the entire territory or the entire term, or do you want to license it with a geographical or time-based restriction? The conditions can also vary considerably. It is possible to agree on a fixed sum, but you can also work on the basis of a percentage of sales realized, the quantity of items produced and all manner of other conditions, or a combination of these. Furthermore, it is very important that the agreements are correctly recorded. You are strongly advised to engage a specialist for this.
The opt out may be filed at any time during the patent’s lifetime, but only during the transitional period until 1 May 2030. Should you consider an opt-out, it is important to note that an opt-out is no longer possible if an action has been filed by a third party in respect of your European patent before the UPC. Likewise, withdrawing an opt-out (to get back in with the UPC) is no longer possible if an action has been filed before a national court concerning an opted out EP patent. Therefore, should a competitor file an invalidity action with the UPC on the first day of operation of the new court, you will no longer be able to opt out.
Companies in the Netherlands that make profits with R&D projects can make use of the so-called innovation box. This innovation box is not actually a separate box, but rather an 80% exemption on the profit from the innovation. It applies to profits and losses from intangible assets which were produced under the Research and Development tax scheme (WBSO). This includes royalties, licenses, and profits from the sale of intellectual property. However, it also applies to part of the sale price of a product or service that incorporates the innovation. Aside from the WBSO, larger companies will also need to have a patent portfolio in order to use the innovation box.
In Belgium, there are several federal and regional support measures related to patents. It is possible to obtain a subsidy for the development of an invention, through the SME Portfolio in Flanders, company checks (cheques-entreprises) in Wallonia, or through the Innovation Voucher issued by Innoviris in Brussels. These subsidies may also be made available during the patent application stage.
On the other hand, companies that have a Belgian R&D entity are partly exempt from tax/profits tax on income derived from a patent where the patent can be attributed to this Belgian entity. This income includes royalties, licenses, profits from the sale of intellectual property, for instance, but also includes a part of the sale price of a product or service that incorporates the patented innovation. This tax exemption can amount to up to 85% per cent of the income. The exact calculation is fairly complicated and depends on many factors, so it is best to consult an expert.
Yes, withdrawing the opt-out is possible. This is also referred to as opting-in. However, once your patent is opted-in after an opt-out, it is impossible to opt out again.
No. An opt-out can only be made in respect of all UPC countries for which the European patent has been granted or which have been designated in the application.
Yes. But when filing the request for opt-out, a declaration of proprietorship must be produced in such a case, indicating that the person filing the opt-out is the proprietor or applicant or is entitled to be registered as proprietor or applicant under the law of each Contracting Member State, and is therefore entitled to file the opt-out.
In that case, your earlier the opt-out is deemed withdrawn. The Registrar will enter a withdrawal of the opt-out in the register and you will have opted-in as of the date of registration of the unitary effect, without the possibility to file another opt-out for the patent.
No. If an action has been started before a national court in respect of a patent or application before the registration of a withdrawal of the opt-out, the withdrawal is ineffective in respect of that patent or application, irrespective of whether the action is pending or has been concluded. Hence, opting in is no longer possible.
The process of filing, examination and grant of European patents before the European Patent Office (EPO) will remain the same.
A European patent application is filed with the EPO, and an examination is performed by the EPO. Once the European patent is granted, the European patent may be registered as a unitary patent by filing a request for unitary effect. European patents granted after 1 June 2023 are eligible.
After the grant of the European patent (from 1 June 2023), the period for filing the request for unitary effect is only one month. The request must be filed with the EPO. No extension of this term is available. If the patent language is EN, a translation of the entire patent specification in an EU language must be filed in that same period. If the patent language is German or French, the translation must be in English. Failure to file the request for unitary effect within the one month time limit will prevent the European patent from becoming a unitary patent. Failure to file a translation is a correctable deficiency in the request.
For European patents granted after 1 June 2023, the patentee can opt for registration as a unitary patent instead of validation in the participating countries. In this way, the patent will be immediately valid in all UPC countries. It should be noted that the unitary patent does not extend to the whole EU, since some EU countries do not participate in the UPC. Separate national validations will thus remain necessary for EPC contracting states that are not UPC countries. These countries include Albania, Cyprus, Croatia, Czech Republic, Greece, Hungary, Iceland, Ireland, Monaco, North Macedonia, Norway, Poland, Romania, San Marino, Serbia, Slovakia, Spain, Switzerland/Liechtenstein, Turkey and the United Kingdom.
An important difference pertains to the renewal fees. For a European patent that is no unitary patent, renewal fees must be paid yearly to each national patent office separately if the patent is to be kept in force (both with and without opt-out). On the other hand, only a single renewal fee needs to be paid each year for a unitary patent.
It depends on the number of countries were you would otherwise have validated your patent. For example, patent holders with business interests in only a few European countries will benefit less from a unitary patent than patent holders with a business interest throughout the EU.
The initial costs of a unitary patent involve the fees of service providers, and the translation costs (in a transitional period until 1 June 2035). No official fees to the EPO are due for requesting the unitary effect. But an important cost factor of the unitary patent is the yearly renewal fee payable to the EPO. Focusing solely on the renewal fees, the EPO set these at a level corresponding to the combined renewal fees due in the four countries where European patents were most often validated in 2015 (Germany, France, the Netherlands and the UK). Now that the UK does not participate, national renewal fees are still payable to the UK if a patent is to be validated and kept in force in these top-4 countries. It follows that the unitary patent option is somewhat more expensive than the sum of national validations.
However, the upside is that the combination of a unitary patent allows central enforcement in an additional 14 EU member states against no additional costs. Considering that national validation fees are negligible, whereas renewal fee payments with associated transactional costs in a large number of countries can be substantial, the unitary patent will result in cost savings when a European patent would otherwise have been validated in at least 4 EPC member states participating in the UPC (e.g. France, Germany, Netherlands and Italy). Over the 20-year patent term of a unitary patent, the renewal fees will be in the region of €35,500. In comparison, the renewal fees for a national bundle patent in all 17 UPC states would exceed €100,000 over that same period.
No. The unitary patent is a single (indivisible) legal title extending to all UPC countries. This means that the unitary patent cannot be transferred for the individual countries. It can also not be limited, revoked or abandoned in respect of some UPC countries. However, you can license with respect to some or all UPC countries..
No. The territory of your unitary patent is set at the time the request for unitary effect of your newly granted European patent is registered with the EPO. Your unitary patent is enforceable in the countries that have ratified the UPCA at that moment. The territorial coverage of a unitary patent will stay the same for its entire lifetime, irrespective of any subsequent ratifications of the UPC Agreement after the date of registration of unitary effect by the EPO. Hence, there will be no extension of the territorial coverage to other Member States which ratify the UPC Agreement after that date.