Spring direct naar de hoofdnavigatie of de inhoud

Frequently asked questions

Below you will find answers to the frequently asked questions. Is your question not listed? Feel free to contact one of our experts or submit your question via the contact form.

These are the frequently asked questions:

Firstly, you need the formal right to file the application. This is a right you have if you are the inventor. Under the laws in the Netherlands, the right of employees whose work activities encompass invention passes in principle to their employer. This also applies to students who are training with someone else, and to university employees. It is important that you have properly documented how you are the holder of the right. You do not have to demonstrate this when you file the application, but it may cause the patent to become invalid at a later date.

If you are the holder, then you need to prepare a patent application, or have it prepared for you, and file the application. To do this, you need a description of the invention and you will also often need a description of practical examples of how the invention can be applied.

Furthermore, you need to pay all of the required fees. These depend on the country in which you file the application and on the stage of the application.

It is advisable to seek advice from a patent attorney who is a specialist in all of the detailed and procedural aspects involved with applying for a patent.

The cost of patent-granting procedures can be substantial. After a patent has been granted, it is necessary to make payments to maintain the patent. Since a patent is essentially a national right, both the granting phase and the maintenance phase need to be completed separately in each country. This means that obtaining and maintaining a patent in multiple countries is much more expensive than doing this in a single country. On top of this, patents granted under the European Patent Convention need to be validated after they have been granted in the countries where you want the rights to apply.

The granting phase and maintenance involve figures in the region of several tens of thousands of euros in larger countries such as Europe (as a whole), Japan, or the United States. Additionally, there are the validation costs in Europe, which can easily amount to between 1,000 and 1,500 euros in each country. Naturally, the application only needs to be drawn up once, though a significant part of the costs in foreign procedures, including validation, is down to the fact that the application and all correspondence related to it often need to be translated into the local language.

Yes you can, but that is not advisable. 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 for any legal documents, need to meet various requirements. The patent-granting procedure often takes several years and it is not possible to change the text later. This means that the invention has to be described accuratel23y when the application is filed in such a way that the authority granting the patent can work with it. That is why patent attorneys have mastered a number of basic rules regarding formulation and wording. If you do not have practice in the correct way of describing the technical knowledge for which the patent is filed, there is a high chance that the text will fall short after going through years of the granting procedure. As a consequence it may not be possible to acquire a patent, even if the discovery met all the technical requirements.

That depends on the situation. Generally speaking, the quicker you apply, the better, because to patent an invention it needs to be novel. The sooner you file an application, the smaller the chance that knowledge about it will have accidentally leaked or that a competitor who has independently invented more or less the same thing has filed a patent application. However, it is beneficial, particularly in the field of chemistry, when there is sufficient substantiation of the advantages of the invention and its uses at the time of application. You cannot amend the text of a patent application at a later date so when you file the application you need to look carefully at how the various features are connected and which areas of application are anticipated. Patent applications that have a seemingly speculative text and are not substantiated may be rejected on the grounds of a lack of novelty or inventiveness.

A patent solely gives a right to use your invention. This means that a patent allows you to prevent others from using your invention. However, a patent does not automatically give you the right to use that invention. This right applies for a maximum of 20 years for the selected countries you have specified. Alternative ways of protecting your invention against use by third parties include keeping the invention secret. This is usually cheaper and there is no time limit, but the result is more uncertain. An employee may take the knowledge with him to a competitor, or a competitor may reverse engineer a product. If you would like to take action against stolen or retrieved trade secrets under the Trade Secrets Directive, then you will need to have a good registration system for those secrets in your company.

A good rule of thumb is that you should patent when you are able to generate profit from the patent rights that will at least cover the costs of the patent. It is also very important to assess the commercial value of the invention. If this is high enough, patenting is self-evident. However, other considerations may also come into play, such as a need to finance or sell your invention. This is because a patent gives greater certainty to investors.

Another issue is the length of time for which you require protection. A patent right leads to a maximum of twenty years of protection while nondisclosure can be maintained indefinitely, in principle. Furthermore, there is the issue of whether nondisclosure will give sufficient protection in practice.

You can obtain patent protection in almost all countries around the world. The great majority of these countries can be accessed through the international single patent-granting procedure, the Patent Cooperation Treaty (PCT). It is important to determine in advance the countries in which you would like a patent. Some countries (such as Argentina, Bolivia, Suriname, Congo and Ethiopia) cannot be accessed via the PCT. In these countries you have to file a separate application.

However, it is uncommon for someone to apply for a patent in all countries. This is because obtaining a patent and maintaining one is an expensive process and you 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 applied, then this is often sufficient.

A patent solely gives a right to use your invention. This means that a patent allows you to prevent others from using your invention. However, a patent does not automatically give you the right to use that invention. A product that uses your patented knowledge may also infringe the patents of third parties, in which case your product cannot be freely commercialized.

It is advisable to investigate third party rights, or have these investigated, in order to determine whether your product infringes the rights of a third party.

A patent application needs to meet a number of requirements, including novelty, inventiveness and applicability or industrial applicability. Generally speaking, if an application is drawn up without any experimental examples or other substantiation it may be deemed to be unverifiable which may lead it to be rejected. The authority issuing the patent may deem the patent to be unworkable or uninventive. To some extent, this also depends on practices in the respective technical field. For instance, practical examples are highly recommended in chemistry, while in mechanical engineering, drawings are more frequently employed without a practical example.

In order for an invention to comply with the conditions for filing a patent it must be novel. A presentation to an audience often takes place without a nondisclosure agreement and this can impede a patent application (prejudicial to novelty). This may not be the case if the nondisclosure is implied, for instance if it was an internal presentation at a company. Furthermore, certain countries make an exception to the prejudice to novelty for disclosures by the inventor. In those countries, an inventor who has published his work, for instance by giving a presentation, can still file an application for a patent six months or one year after making it public.  This type of exception exists in Japan and the USA, but not in Europe.

In principle, the text of a patent application is fixed at the moment of filing, and it cannot be modified. The aim is to protect third parties against the existence of rights “with retroactive effect” that were not foreseen at the time of filing. In certain situations, corrections may be made, but the requirements are particularly stringent (in Europe), and are limited to situations where it was already clear from the text what ought to have been included. This means that there are hardly any changes to content of the text.

However, it is possible to modify the text of the patent application up to a year after filing and to file this again as a “continuing application” with a claim on the original date. It is then the original “priority application” that counts as the first text submitted, whereas the continuing application for all matters that can be traced back to the earlier application has the earlier date. However, newly added subject matter will get the filing date of the continuing application.

This continuing application is considered as a separate application and is treated as such. In practice, the combination of a priority and a continuing application is used to increase the likelihood of the 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. This can be taken into account when you draw up the final application, the continuing application, for instance, by adding examples or changing the text.

This is possible sometimes if the application has not been published. In this case, the knowledge contained in the application has not found its way into the public domain. If you file this same application again, the earlier application will not in any case alter the novelty.

Naturally, there may have been other publications by yourself or by others between when you filed the earlier patent and re-filed the patent. Then it may be the case that the patent application you filed later is no longer novel or inventive, whereas the application you filed earlier would have been. Filing later simply increases the chance of detrimental earlier publications. However, this is not related to the fact that you filed the same application again. So, as long as the earlier patent has not been published, you can re-file a patent at a later date.

If you suspect infringement, it is very important that you can prove the infringement. If it is a physical product, the composition of the product, for instance, would need to be investigated and then compared to the claims in your patent. You would be well advised to seek advice from a patent attorney about this. If a patent on a procedure was infringed, it is often more difficult to obtain proof of this infringement. In certain cases, Dutch law allows for evidence to be seized if you can plausibly demonstrate that there has probably been an infringement, but you will require more proof for infringement proceedings. It is essential to seek advice from a specialist.

All patents are freely accessible via websites such as nl.espacenet.com and www.google.com/patents. When developing a new product, you could use these websites to study in depth the third party rights that exist in the area where you wish to commercialize the new product. You can also use them to keep up to date on which types of applications are filed and to see whether these are relevant for your products. This will give you a good idea, but if you really want to properly assess whether your product breaches third party rights it is best to have a third party right investigation carried out by an investigation specialist who will know what to look for.

Most countries have an online register that arranges all applications in a searchable format. The register will also let you see whether the application has been granted, or whether it was rejected or withdrawn. Espacenet (www.worldwide.espacenet.com/) provides a broad overview of granted patents and applications or patents that have been filed or are no longer valid for most countries in the world. Amongst other things, it lets you discover whether a patent has been granted, and in what form, whether the patent is still valid and where the application or patent is still in force in the world.

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 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 the manufacturer has not yet been actually granted a patent, because the patent application is still pending.

This all depends on the arrangements that you made with the other company. In principle, you both have rights to the inventions that emerge from the research you conduct with another company. This means that you could jointly apply for a patent. It is important to think beforehand about how you will deal with the granting phase in which the claims are formulated. Who has the final say about claims if there is a difference of opinion? How do you divide the costs? You can also jointly go through a research process where agreements are made on which of the parties will acquire which parts of the IP rights. Here it is also very important to document beforehand who has a right to what.

Patents can be granted for inventions that meet the requirements of patentability, including novelty, inventiveness and applicability or industrial applicability. You can apply for a patent for a medicine that meets these requirements, and even for new applications of existing medicines. However, if your discovery involves the effect of a known medicine (i.e. not a new medicine), then patentability will likely stumble on the applicability requirement. Only practical applications can be patented, such as a chemical composition, a form of dosage or a procedure for making a medicine. A mechanism of action is not patentable per se. However, the mechanism of action will possibly lead to an improved form or an improved application. Then you may be able to patent that improved form or application.

An Invention Disclosure is sometimes used to prove at a later date that you possessed the knowledge shown in the invention disclosure on a certain date. If you do not want to file a patent application, but also do not want to run the risk of a competitor patenting a similar product or process, you can describe your process or product and file this with a civil-law notary. If you are faced with a competitor’s patent in the future, you will then be able to prove that you also already possessed that knowledge. This can 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 other people and want to prove at a later date which knowledge you had prior to the collaboration.

You need to pay attention to many things, particularly with licenses.

During the sale, you agree on the conditions and then you have to ensure that the patent rights are assigned correctly. A lot can go wrong here, but in principle it involves procedures.

The situation is more complicated for 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. You can 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.

Contact our experts

Annemie Jaeken

Annemie Jaeken

  • European, Dutch and Belgian Patent Attorney
  • Partner
Herman Witmans

Herman Witmans

  • European and Dutch Patent Attorney
  • Partner
More experts