At present, court cases about infringement and validity are heard by the national courts of the country concerned. The introduction of the Unified Patent Court (UPC) will centralise the judicial process for all participating countries at one European court. This goes for all new and existing European patents that are in force in one or more of the participating countries, except for European patents that have been opted out by the patent proprietor.
The unitary patent is an alternative to the existing validation process of a European patent in individual countries. It is therefore not a ‘new’ patent, but an option to extend the validity of a European patent granted across all participating EU countries in a single stroke.
The unitary patent will therefore be a single right extending to all participating countries. This means that the unitary patent can only be enforced in a new centralised court (the UPC). After expiry of the opposition period (9 months from the grant of the European patent), the UPC will also be the only court at which nullity proceedings can be started against a unitary patent. The decision by the UPC will have effect for all participating countries.
Under the UPC, it will be easier to enforce a European patent, because this can be achieved in all participating countries through one court case. A judgment will have direct consequences for the patent in all participating countries. Depending on your situation, this may be advantageous or detrimental in comparison with the current system of national courts deciding on patent matters.
You can opt for (continued) applicability of the current system to your European patent(s). In that case, you must submit a so-called an opt-out request for your European patent(s), so that nothing will change and court cases will be handled by the national courts only.
The process of applying for and granting European patents will remain as it is.
Thus, you should apply for a European patent via the European Patent Office (EPO). Once the European patent is granted, you should then register (validate) the European patent as a unitary patent. Registering as a unitary patent will be possible starting from the date of entry into force of the UPC agreement. Registration is possibly by filing a request for unitary effect.
It should be noted though that the patentee will only have one month from date of publication of the mention of the grant in the European Patent Bulletin to file the request for unitary effect with the EPO. A translation of the entire patent will have to be fled as well within that term.
The following states are expected to 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.
Thus, some EU countries (e.g. Spain, Poland) are not participating.
Non-EU countries cannot participate, regardless whether they are participating in the European Patent Convention (e.g. United Kingdom, Norway, Switzerland, Turkey) or not.
No, this is not possible. However, the UPC will be available for existing European patents if no opt-out is selected.
Patents that already have been granted prior to the start of the Unitary Patent system cannot be changed into Unitary Patents. However, the UPC will be available for existing European patents.
For European patents that are granted after the Unitary Patent system has started, 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 participating countries. It should be noted that the Unitary Patent does not extend to the whole EU, since some EU countries do not participate at present. Further, separate validation will remain needed for EPC contracting states that are not part of the EU.
Opting-out means to opt for (continued) applicability of the current system to your European patent(s). In that case, you must submit what is known as an opt-out request for your current European patent(s), so that nothing will change and court cases will be handled by the national courts only.
You will be able to opt for (continued) applicability of the current system to your European patent(s). In that case, you must submit what is known as an opt-out request for your current European patent(s), so that nothing will change and court cases will be handled by the national courts only. The possibility of filing an opt out will be available already a few months before the start of the UPC.
The requests for opting out will 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 opted-in.
For pending European patent applications: once the patent is granted, you can validate the patent the individual countries in which you want to patent to enter into farce and without registering as a Unitary Patent. In addition an opt-out has to be filed.
For new patent applications (applications still in their priority year or applications that have yet to be filed) you could consider to file national applications in the European countries of interest, instead of filing a European patent application. Whether this is interesting from a cost-perspective or from a legal perspective, will depend on the situation.
This is not possible yet.
The opt-out request can be filed during a period still to be specified prior to the entry into force of the UPC agreement.
Yes, withdrawing the opt-out is possible. However, once opted-in, it is not possible to opt out anymore, according to the draft Rules of Procedure.
The UPC could go into force in 2022 or early 2023.
It is not absolutely certain yet that the Unitary Patent system will start, let alone when exactly, although this is likely to happen by the end of 2022 or early 2023. The European Patent Office will make two transitional measures available ahead of the entry into force of the Unitary Patent system, as of the date of deposit of Germany’s instrument of ratification of the UPCA .
The first transitional measure will allow applicants to file early requests for unitary effect before the date of entry into force of the UPC. For such requests filed in advance, “the EPO to register unitary effect immediately at the start of the system, provided all corresponding requirements are met”
Through the second transitional measure, an applicant may request a postponement of the decision to grant. The postponement can be requested after the intention to grant has been announced, but not after the applicant has approved the text intended for granting.
The postponement of the decision to grant can ensure that the European patent can still qualify for UP protection.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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’.
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.
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.
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.
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.
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.
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.