28 August 2020

A modern Dutch Patent Act? - An (optional) grant procedure?

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

One of the most significant changes of 2008 was the fact that the Netherlands switched to what is called a registration system. While such a system has a number of advantages, there are also disadvantages. During a recent consultation on the modernisation process of the 1995 Dutch Patent Act, the registration patent was one of the issues under discussion.

In the Netherlands, the history of the (modern) patent began in 1912, when the 1910 Dutch Patent Act came into force. At the same time the Patent Office was created, where filed patent applications were examined with respect to the three legal requirements; novelty, inventive step, and industrial application. In the subsequent decades the Dutch Patent Office grew into an institution of great international renown. The success of the European patent application after the introduction of the European Patent Convention, however, came at the expense of the number of filed Dutch patent applications during the 80s and 90s. Consequently it was no longer viable for the Patent Office to employ competent examiners for a wide range of technical areas. These development led, in 2008, to a modernisation of the Patent Act, which also included the introduction of the so-called registration patent. Contrary to the previous situation, filed patent applications were no longer subject to examination before being granted.

Since then every Dutch patent application automatically results in a granted patent after 18 months, irrespective of whether the patent meets the previously mentioned legal requirements. A published patent does come with a search report and a written opinion, in which an examiner of the Dutch Patent Office, or of the European Patent Office (EPO), provides a preliminary opinion on whether the claims of the filed application meet the legal requirements.

Advantages of a registration patent
The Dutch registration patent offers the applicant a couple of advantages. Firstly, because there is no examination, the costs for obtaining a Dutch patent are relatively low and predictable. In addition, the patent is granted after 18 months at the most – and the applicant even has a choice to speed this up. This means that in case of infringement, it is possible to take speedy action against the alleged infringers.

Disadvantages of a registration patent
The registration patent also comes with a number of disadvantages, however. Because the validity of a patent is only to be determined in court, it is often unclear to third parties what the temporary monopoly of the patent owner exactly entails. Any third parties crossing paths with the patent will have to find out on their own what the scope of protection of the patent would reasonably be. Lastly, there is quite some uncertainty about the actual value of the granted patent. A Dutch patent may have been granted, but if it is clearly unenforceable, its value will be quite low.

Room for improvement
A point of discussion is related to the costs of an (unexamined) Dutch patent versus an examined European patent, and the relative added value of the latter with regard to the former. An examined European patent is not the proverbial holy grail either; corrections are very common when a European patent is enforced through infringement lawsuits.

Recently two ideas have been proposed for increasing the legal certainty and value of the Dutch patent. The first idea concerns examination on request, in which the Dutch patent can be examined if the applicant so desires. The examination procedure, in which the application could thus also be refused, would therefore also require an appeals procedure, such that a decision to refuse the application can be appealed. This would require the introduction of a kind of national mini-EPO, which would in turn also substantially raise the costs of obtaining a Dutch patent.

Another option is a second (non-binding) opinion, for which the patent owner could file a modified application or arguments on which the second opinion would be based. A non-binding extra opinion would, however, not overcome all of the existing problems, as it would not change the fact that the patent would still be automatically granted, irrespective of the examiner’s opinion.

The future will show which of these steps towards improving the legal certainty and value of a Dutch patent will be incorporated into the proposal for the modernisation of the Dutch Patent Act.