11 September 2020

A modern Dutch Patent Act? – An opposition procedure?

Fourth  article in our series on the modernisation of the Dutch Patent Act

The 1995 Dutch Patent Act currently provides for a grant procedure that is not based on the results of a substantive examination of a Dutch patent application. Because of the fast path to grant, a Dutch patent allows for rapid enforcement. Recently, the Dutch Patent Act has been the subject of a review, with particular focus on how the system can be made more accessible, especially for small and medium-sized enterprises (SMEs) and startup companies. One of the proposals is the introduction of an opposition procedure.

Opposition proceedings provide third parties with a possibility to contest the grant of a patent. If the opposition division of a patent office concludes in such proceedings that a patent should not have been granted, the scope of protection of the patent will be reduced or the patent is revoked. Currently, opposition proceedings are available for European patents and also on a national level for a number of countries, but not in the Netherlands. When someone is faced with a patent in the Netherlands (harmful to his or her situation), they are forced to contest the patent’s validity in advisory proceedings, followed by legal proceedings in court.

One advantage of an opposition procedure is that such a procedure is generally more technical and consequently more substantive, and also shorter and often cheaper and more accessible than current Dutch invalidity proceedings. In addition, a patent that has survived an opposition procedure, may be argued to have a greater value than a patent of which the grant does not depend on the results of an examination. The introduction of a possible for opposition is a disadvantage, since it can have a negative effect on how soon a patent can be enforced.

Structure of a Dutch opposition procedure
In setting up such a possible opposition procedure, there are still some policy choices which have to be made. The first issue concerns the period for filing an opposition. In Europe it is possible to file an opposition during a nine-month period after the publication of the mention of the grant of the patent. On the one hand, it would seem sensible to maintain a similar timeframe in the Netherlands. On the other hand, a different arrangement is also considered for the Netherlands, because of the differences in the Dutch procedure. In the Netherlands, the grant of the patent typically coincides with the publication thereof, 18 months after the application was filed, up to which date the application has not become public. In Europe, an application is published 18 months after filing after which the application is examined substantively before its grant. Consequently, the time available for a third party to be aware of a European patent is, in effect, almost always longer. For that reason, there are calls toextend the possibility for filing opposition in the Netherlands, possibly even allowing for opposition during the total term of the patent. By contrast, each extension of the opposition period also means less legal security for the patent proprietor. Because of the differences in the rest of the procedure, a decision will probably also depend on whether a substantive examination procedure will be introduced in the Netherlands.

The second issue is the question whether the possible grounds of opposition should be the same as those that apply in Europe, or whether additional grounds should be introduced. Currently, the criteria of ‘clarity’ and ‘unity of invention’ are no grounds for opposition in European opposition proceedings. However, these are two aspects that could make opposition proceedings much more complicated and therefore more expensive. This also raises the question whether granted European patents could also be subject to such an opposition procedure in the Netherlands.

All in all, the general conclusion would be that an opposition procedure could raise the value of a Dutch patent, and could also make objecting to the grant of a patent more accessible. Plenty of questions however remain, such as the question what the actual implementation will look like, and how will this system relate to the existing European opposition procedure?