An interesting proposal for low-cost validity analysis during the priority year
On 3 July 2007, the Dutch parliament (House of Representatives) approved changes to the Netherlands Patent Act (“Rijksoctrooiwet 1995”). The new patent act is expexted to enter into force at the beginning of 2008.
The Netherlands Patent Act came into force on 1 April 1995 and provides the legal basis for obtaining a patent in the Netherlands.
Foreign applicants usually obtain a Dutch patent through national registration via the European Patent Convention. Alternatively or additionally, however, they can apply directly in the Netherlands to acquire a Dutch registered patent.
It can be concluded from the issuing procedure for a registered patent that the Dutch Patent Office does not play an active, judging and testing role, in contrast to the proceedings of the old Act before 1995. Eighteen months after the filing date or the priority date, the application is registered in the patent register and in effect a Dutch patent is granted. At that moment, the application is laid open for public inspection. Although no substantive examination takes place during the granting procedure and no opposition exists, advice on the validity of a patent can be obtained from the Dutch Patent Office. However, ultimately, the only way to test the validity of the patent is in court proceedings.
We will now explain how the recent amendments offer interesting opportunities for foreign applicants to obtain an early test on the validity of their application.
The changes have to be approved by the Dutch Senate, which is expected to take place within the next few months. The new patent act will probably enter into force by the beginning of next year.
According to the explanatory memorandum accompanying the amendment act, the amendments to the Dutch Patent Act were primarily prompted by a desire of the Ministry of Economic Affairs to improve the legal certainty regarding registered patents and to increase the accessibility of the Dutch patent system for individual inventors and for small and medium enterprises (SMEs) by reducing costs. It is generally assumed that this will promote the innovative climate in the Netherlands.
Accordingly, several changes will be made in the new patent act, the most relevant of which are:
1. Under the new patent act, it will be possible to file Dutch patent applications in the English language. Only the claims must be translated into Dutch. This change in the patent act is independent of the London protocol for European patents, which takes away the necessity to provide a translation for issued European patents.
2. The Dutch Patent Office wants to provide low-cost search reports. It is rumoured that the patent office is going to provide high-quality searches for one hundred Euro. These searches will include a “written opinion”, similar to current European Patent Office practice.
3. The “annuities clock” for Dutch patents will start ticking one year earlier than it does now. At present, the first annuity is due five years after the filing date. This will be decreased to four years from the filing date, resulting in a three year tax-free period after filing.
4. Abolishment of the “small patent”. The small patent, with a duration of only six years, is currently granted without a novelty search to keep costs low. The original goal of the small patent was to stimulate SMEs to file patent applications.
The latter two changes will now be briefly commented on, before aspects of the first two changes are discussed.
According to the memorandum, the shortening of the tax-free period (item 3) was meant to bring the legislation on annuities more in line with other European states only Switzerland, Italy and Great Britain have longer tax-free periods.
The abolishment of the six-year patent (item 4) is generally seen as an improvement of the legal certainty. Indeed, a registration has a presumption of validity, which also applies to the unsearched, six-year patent. The general consensus is that such a patent has not been favourable for fair marketplace conditions. It is now believed that the legal uncertainty arising from this unsearched patent does not balance with the possible positive effect for SMEs. The abolishment of the six-year patent will at least result in Dutch registration patents (with a maximum duration of 20 years) that have a search report providing better initial indications on the validity and value of the patent.
With respect to the first two changes indicated here above, item 2 addresses the matter of a written opinion by the Patent Office as to the patentability of an application, which, together with the search report, will further improve the validity estimation of the registration patents for the general public. This search report can be requested up to thirteen months after the priority date. One opportunity to amend the application is given after the receipt of the search report.
This written opinion will be strongly subsidised by the Dutch government in its desire to promote innovative spirit among SMEs. It appears that a “national search type” will be available for only €100, whereas the current rate is €340. A “national search type” is principally intended for applicants desiring only a Dutch national patent, in contrast to the “international search” which is intended for applicants wishing to present this search before the EPO or the WIPO, which will accept the search and accordingly reimburse its fees. The international search type fees are in line with the international search fees and amount to €794 at present.
It will be interesting to see how this facility for Dutch search opinions will be received. The memorandum gives some figures on the application numbers for 2005. It appears that of the 2,373 issued Dutch patents in 2005, only 20% were foreign applicants. The facility is therefore meant for Dutch SMEs, 30% of which are estimated, according to the Memorandum, to provide an English text intended for international use. It may well be that the current legislation changes will demonstrate that this is a severe underestimation and that the Dutch patent marketplace will experience a surge of foreign applicants.