1. What are the requirements an invention must satisfy to be eligible for grant of an enforceable patent?
The invention must be:
- inventive, and
- capable of industrial application.
The invention may not, at least in the Netherlands, relate to discoveries, aesthetic creations and rules for performing mental acts. Nor may the invention relate to plant or animal varieties or methods of essentially biological nature. Methods for treating the human or animal body are also precluded from grant of patent. Since this list is not a complete one, you are advised if in doubt about these requirements to make contact with a patent attorney.
2. What is meant by the invention having to be new in order to be patentable?
The invention may not form part of the prior art at the moment the (first) patent application is filed. The prior art is defined as all information which has been made available to the public anywhere in the world. An invention which is known for instance on internet or in another country is therefore no longer new. Very important is that the novelty of your invention can also be nullified by your own actions. A patent application, in which the invention is described, must be filed before you go public with your invention, for instance in order to approach outsiders. It is worth noting here that the product to be protected and/or the method to be protected does not have to be wholly new: the invention to be protected can be an improvement to an existing product.
3. What is meant by the invention having to be inventive in order to be patentable?
The invention may not follow from the prior art in a manner which is obvious to a someone working in the field (“skilled person”). This assessment is not always that simple and requires expertise and knowledge of existing case law and other factors.
4. What is meant by the invention having to be capable of industrial application in order to be patentable?
The invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture. An exclusive right does not cover the private use of the invention.
5. Who is entitled to apply for patent?
The inventor is entitled to apply for patent. In the case where an invention is made in the course of employment, it is the employer who is in principle entitled to apply for patent, at least when the nature of the employment is related to the knowledge required to make the invention. This is also the case for an inventor employed in an educational institution.
6. Is software patentable?
Under Dutch law software as such is precluded from patent. This is the case in most countries in Europe, and also to increasing extent in the United States. A device provided with software with which a technical effect is brought about can for instance be patentable however. It would therefore be too simple to state generally that there is no point in applying for patent on software. If in doubt, consult a specialist.
7. What does a patent application look like?
A patent application consists of a request to grant a patent, accompanied by a broad description of the invention which may or may not be provided with a number of drawings which further elucidate the invention. The patent application concludes with a number of claims in which the scope of protection being sought is concisely stated.
8. What happens after a patent application has been filed?
A few days after filing the applicant will receive proof of filing if a number of minimum requirements have been met. This notification also includes the number of the patent application. If not all formal requirements have been met, the applicant will also receive a list of the formal errors to be corrected. If a request for a novelty search is submitted simultaneously with the filing, this search will be started. The search report will be published after an average of 8-9 months. If an application for a novelty search is not requested within 13 months of the filing of the patent application, the application will not be considered.
9. What is a novelty search?
A novelty search is a search of the prior art carried out by the patent-granting authority relating to an invention described in a patent application. The prior art is formed by what has been made public before the filing date (or the invoked priority date) of the patent application. The novelty search is a search of the literature, and particularly, though not exclusively, the patent literature. In the Netherlands there are two types of novelty search; a novelty search of the national type and a novelty search of the international type. Both types of novelty search are carried out in the patent literature available worldwide; the difference is that the results of a novelty search of the international type are recognized in the case of later European or international patent applications.
10. What does a search report look like?
A search report is an overview of publications deemed relevant to the invention. The search report also includes an opinion of the examiner which states (often quite summarily) why a found publication is important for the patent application. Copies of the listed publications are also sent together with the search report. On the basis of the publications found an assessment can be made, for instance by a patent attorney, of the patentability of the invention.
11. When must a novelty search be applied for?
A novelty search must be applied for within 13 months of the date of first filing in order to obtain a patent. It is usual in practice to apply for a novelty search immediately upon first filing (or at the latest three months after this first filing). Provided application is made in good time, the search report will become available within the priority year (normally 8-9 months after being applied for) so that it can be taken into account in the decision of whether or not to continue with the application process in other countries.
12. What value does the novelty search have?
The search report gives an insight into the novelty and inventive step of the invention claimed in the patent application. The opinion of the examiner as to the patentability of the invention is added to the search report. In the Netherlands this is not binding in obtaining a patent, but does give an indication about its enforceability against other parties and is an indication of the chances of grant if patent is also applied for in other countries.
13. Can the novelty search report also be carried out before patent is applied for?
An officially approved novelty search is carried out by the patent-granting authority on the basis of a patent application. So this is only possible once the patent application has been drawn up and filed. It is however possible to carry out a search beforehand in the public patent registers. Such a search has no legal validity but does give an indication of the likely chance of success when applying for a patent. Patentwerk can assist you with this.
14. Is accelerated grant of patent possible?
Yes, although a limiting factor is that the search report must first be available for eight weeks before a patent can be granted. In practice it will therefore be a minimum of 11 months before grant of patent can take place.
15. Can an outsider inspect a filed patent application?
In a normal application procedure the patent application is not accessible to third parties for the first eighteen months after filing. Eighteen months after filing of the first patent application the application is entered into the publicly accessible patent database by the Netherlands Patent Office.
16. What is a priority right?
Filing a patent application creates a priority right. The priority right provides the option, within a year of the first filing, to also file patent applications in other countries for examination for novelty and inventive step while retaining the original filing date. Almost all countries relevant for obtaining a patent right recognize the priority right of a Dutch patent application.
17. How can a priority right be used?
When a new patent application is filed, priority of an earlier application can be invoked within the priority year for corresponding parts so that the filing date of the earlier application is also stated on the later application. In addition to invoking the priority right, a proof of filing with a copy (certified by the Netherlands Patent Office) of the originally filed documents must in most cases also be submitted.
18. What advantage is there to making use of the priority right?
Making use of the priority right of a first filing, for instance in the Netherlands, makes it possible to delay this filing option for almost all countries for almost a year. Within the priority year more clarity can then be obtained from the search report about patentability, in particular novelty and inventive step, of the invention. It is recommended here to ask a patent attorney for advice concerning the possibilities based on the application in question.
19. Can a filed patent application be amended later?
No new subject matter can be added to an application once it has been filed. All that is allowed is to delimit the application from the prior art found, this on the basis of the initially filed text. Possible obvious mistakes, such as an incorrect reference numeral, can be corrected.
20. How can improvements to a filed patent application be protected?
This can only be done by filing a new patent application. The improvement can itself form the subject of the new patent application, although it is also possible (within the priority year) to include the improvement in the original application and to file the amended patent application again while invoking the priority of the earlier patent application. This second option applies for a new patent application in the country of first filing as well as for a filing outside the country of first filing.
21. What does examination of a Dutch patent application involve?
A patent application is only examined as to formal requirements. The applicant is informed of any formal errors found, as well as a deadline for correcting any errors. If the errors are not corrected in good time or properly, the application will lapse. In the report on the novelty search carried out by the authorities (which is provided about nine months after first filing) a list is provided with possibly damaging literature. A first substantive opinion is also provided. Neither the search report nor the substantive opinion necessarily mean that the application must be amended. Even in the case of a negative search report and/or a negative first substantive opinion the Dutch patent can be granted without further amendment of the application.
The validity of a patent can be challenged after grant of the patent in possible legal proceedings. A court can then form an opinion as to whether a patent has been rightly granted or not. Depending on the evidence submitted against the patent, the court can in an extreme case (partially) revoke a patent.
22. When is a patent granted in the Netherlands?
In the normal procedure a patent application which satisfies the formal requirements is entered into the patent register eighteen months after the first filing date (the priority date) and provided with an entry date. The patent is then granted. It is possible to accelerate grant of patent.
23. What has to be done to maintain a patent?
As of the fourth year after first filing of a Dutch patent application a maintenance fee must be paid annually in order to maintain the resulting patent. The maintenance fees increase during the term of the patent. Non-payment of these fees will ultimately result in irretrievable lapse of the patent right. There is in fact no obligation whatever to maintain a patent for the whole possible term, and it is possible to consider year by year whether further continuation is desirable.
24. What are renewal fees?
Renewal fees are the same as annual maintenance fees. In addition to renewal fees for maintaining granted patents, there are also renewal fees for maintaining patent applications, this being the case for instance for European patent applications. The grant procedure for a European patent can last for some time. It is not the case in all countries that a maintenance fee has to be paid annually; there are also countries with other time intervals between successive maintenance fees.