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Frequently asked questions
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.
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.
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 The register will also let you see whether an application has been granted, or whether it was rejected or withdrawn.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.
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 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.
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.
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 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.
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.
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.