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.
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.
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.
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.
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.
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 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.
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 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.