1. What is the best time to file applications outside the Netherlands?
A decision about the countries in which protection will be sought outside the country of first filing is preferably taken shortly before expiry of the priority year of a first patent application. The cost of a possible foreign filing will as a result only be incurred a year after the first filing date. A not insignificant additional advantage of delaying the decision about foreign filing by almost a year is that at the moment the decision is taken extra information may be available, such as deeper technical insight, market information and the search report.
2. What are the possible options for filing patent applications outside the Netherlands?
A first option is to file one or more national patent applications, usually through a local representative. This means that applications are filed with one or more national patent-granting authorities under the local patent law.
A second option is to file one or more regional patent applications. This means that a patent application is made for a number of countries simultaneously to one or more (supranational) organizations. The European patent application is an example of this.
A third option is a specific patent application for a number of countries (up to a maximum of more than 140 countries) simultaneously: the PCT application, also referred to as International Patent Application. This International Patent Application makes it possible to delay the decision to continue with the International Patent Application in desired countries for up to 30 months after the priority date. Combinations of the three options are also very common. In order to decide on the best strategy in a specific situation it is advisable to consult with a patent attorney.
3. What is a national patent application?
A national patent application is a patent application filed directly with the patent-granting authority of a determined state. Examples are an American patent application (which can result in a patent right in the US), a Japanese patent application or a German patent application. A national patent application must be filed in accordance with local legislation. Although in most countries the patent applicant can file the patent application him/herself, a regulation which applies in almost all countries is that a locally qualified patent attorney is required for further procedural actions. The national patent application will follow a grant procedure in accordance with the legislation in force in these countries and, in the case of a favourable assessment, result in a national patent.
4. How long does a national patent grant procedure take?
The time taken for grant procedures varies considerably in the different countries. The time to grant can vary from several months to more than 10 years. In the USA the grant procedure will require several years in a normal case. In Japan the application can be left on hold for a maximum of three years before the actual grant procedure begins.
5. What is a regional patent application?
A regional patent application is a patent application filed simultaneously for a number of countries at a central organization. By way of a central grant procedure the regional application will result, in the case of a favourable assessment, in a number of national patents. Much use is made particularly in Europe of the central grant procedure for a number of countries. Regional patent applications are also possible in Africa, South East Asia and a part of the former Soviet Union.
6. In which countries is a European patent application valid?
It is possible by means of a European patent application to apply for patent in a selection of European countries. A current overview of the participating countries can be found at the European Patent Office website.
7. How does a European patent grant procedure work?
Following filing of a European patent application a grant procedure is followed with substantive examination. This means that not only is a search report drawn up for the application but an examination of the grant criteria (novelty, inventive step and industrial applicability) is also carried out. During this grant procedure the applicant (or his/her patent attorney) has discussions with the European Patent Office in order to bring about the grant of a patent. In-depth knowledge of the current patent legislation and case law is essential here. The discussions take place in the first instance in writing and can result in a hearing at which oral discussions take place.
8. How long does a European patent grant procedure take?
In the case of a normal patent grant procedure there will be several exchanges of arguments (and amended documents). Depending on the wishes of the applicant, the grant procedure will normally take between two and five years. In case of urgent interest a grant procedure can be accelerated, and the applicant will also have to be prepared for a rapid exchange of arguments and documents.
9. What happens after grant of a European patent?
At the present time the centrally granted European patent breaks apart into national rights. In most countries certified translations in one of the national languages will have to be filed for this purpose by a local patent attorney. In a number of European countries however, including the Netherlands, it is sufficient to submit a translation of only the claims instead of the full text; this will often mean a significant saving in translation costs. In respect of the further maintenance and enforcement of the patent, the patent granted by way of the European route can be compared to a national patent. This means that the possible maintenance fees must be paid to the national patent offices and that use must be made for enforcement purposes of national legal procedures.
10. What are the advantages of a European patent application?
A substantively examined patent can be obtained for a large number of countries by way of a single (centralized) patent grant procedure. The choice of where the national patents are established can be delayed until the moment at which the patent is granted. Only at that moment is it possible to decide on the countries for which the patent is actually relevant.
11. For a long time now there has been talk of a European community patent. What is the current situation?
The negotiations on the introduction of European community patent, or a European patent with unitary effect, are at a far-advanced stage. A group of eighteen EU member states, including the Netherlands, will become subject to uniform patent regulations. As soon as the community patent comes into effect, there is a period of one month after grant of the patent to choose between a “classical” European patent, which as noted above breaks apart into national rights, and a European patent with unitary effect. Various considerations will be taken account in making this choice, such as the level of annual fees and the possibility of an opposition or revocation action (see other FAQs) being instituted by third parties. When the time comes to make this choice, it is advisable to make the best choice for the patent in question in consultation with a patent attorney.
12. What is a PCT application?
A PCT application is a patent application for a maximum of more than 140 countries simultaneously. PCT stands for Patent Cooperation Treaty. In contrast to a national or European patent application, a patent cannot be granted via this route. An international organization (World Intellectual Property Organization, or WIPO) carries out a novelty search and, if desired, a preliminary substantive assessment. The applicant - and usually his/her patent attorney - can file corrected documents during the international procedure. After 30 months (or even later in some countries/regions) the international patent application can be continued as national or regional patent application.
13. What is an international patent application?
An international patent application is another name for a PCT application.
14. Where is a PCT application filed?
A Dutch applicant can file a PCT application (in the Dutch language) at the Netherlands Patent Office, at the European Patent Office (in English, French or German) or at the International Office of the WIPO (in English, French or German or in Dutch, although in the latter case the PCT application will have to be translated into one of the first three languages). These organizations are bodies which implement the Cooperation Treaty.
15. How does a PCT procedure work?
During the international phase of the PCT procedure a novelty search is carried out. When a search of the international type is carried out in the case of a priority application, the results can be included in the PCT procedure with a resulting reduction in costs. The final assessment of the PCT application can optionally be influenced through presentation of arguments and possible amendment of the claims during the PCT procedure. For most countries the international phase lasts for up to 30 months after the first filing date. For each of the PCT contracting states the application can be continued in the national or regional phase during the international phase. Only in the national or regional phase can the application actually become a granted patent.
16. How long does a PCT procedure take?
The duration of a PCT application is in principle 30 months. The PCT application expires after this period. This PCT application must by then have been converted to national or regional patent applications.
17. What are the most important advantages of a PCT application?
The filing of a PCT application can be of particular advantage if application for patent is being considered in a large number of countries and/or if it is wished to delay the grant procedure, and the associated costs, as long as possible. By way of a PCT application the time for filing of national and/or regional patent applications can be extended from 12 months to 30 months after the first filing date. Furthermore, the preliminary substantive opinion as to the viability of the patent application can in the meantime be obtained and it is clearer, at the moment when the decision must be taken on filing of possible regional and/or national patent applications, whether enforceable patents can be granted. The PCT application also gives the inventor extra time for commercial development of the invention before the often high costs of the national grant procedures have to be incurred.
18. What are the most significant drawbacks of a PCT application?
Depending on the number of countries for which protection is ultimately sought, following the PCT procedure can possibly entail additional cost when compared to the situation where a patent application is filed within the priority year directly in the countries in which protection is wanted. Another drawback may be that the possible actual grant of patent can take longer.
19. What is a world patent?
A worldwide patent does not exist. Even with the use of national patents it is not possible to obtain patent worldwide. Apart from the very considerable cost entailed in establishing and maintaining a patent in more than a hundred countries (estimated at more than €500,000), not all countries have patent legislation.