22 June 2020

Modernisation of Dutch Patent Act?

The current Dutch Patent Act dates back to 1995 and it was last revised in 2008, so it stands to reason that a new revision is in the works. Recently the Dutch Intellectual Property Office (Octrooicentrum Nederland – OCNL) organised a series of webinars in which three options were discussed: a new kind of provisional application, an (optional) examination procedure, and the possibility of filing an opposition.

In this article we will briefly look at these three possibilities. Over the next weeks we will take a closer look at the three options in question and also compare them to similar procedures and possibilities in other countries.

Provisional application
Sometimes it is advantageous to file an application sooner rather than later, so that the applicant secures a priority date. In practice this option already exists in the Netherlands, and similarly for a European application, namely by filing an application without paying the necessary fees. If the fees are not paid within a set time limit, the application will lapse and never result in a granted patent. A later application, however, can still claim priority on the basis of this earlier application.

Now a new flavour of application is being considered: a provisional application. Such an application cannot result in a patent, and it may even not have to meet all the formal requirements, but it could present the applicant with the option of paying a more modest fee for a limited search report that looks at the novelty and inventive step of the claimed invention. This search report will help the applicant decide whether filing a ‘real’ application is worthwhile, and it will also be useful when it comes to writing the application.

Examination procedure
One of the most significant changes of the 2008 revision was the fact that the Netherlands switched to what is called a registration system. This means that once a Dutch patent is published, it is automatically granted without any examination. The publication does come with a search report (at the request of the applicant either by the OCNL or by the European Patent Office). But even when the search report states that the invention does not meet the requirements, the patent is still granted in accordance with this registration system.

This has various advantages, but it also means that it is sometimes difficult to establish the actual merit of a Dutch patent. For that reason some people prefer to have a European patent that is then validated in the Netherlands, because this patent was examined by an official agency to see whether it meets (or at least appears to meet) the requirements.

The Netherlands will not abolish its registration system entirely, but there are voices that argue that applicants should have some kind of option to choose a more thorough examination, or even a full grant procedure.

As mentioned above one of the implications of the Dutch registration system for patents is that there are Dutch patents that do not meet the requirements. Although it is already possible to have patents revoked, this is a complex and time-consuming affair. First one has to ask the OCNL for a statement on the validity of the patent and then the civil court will have to rule on the validity, which means legal counsel will need to be involved as well.

For European patent applications there already is an opposition procedure: for nine months after a patent has been granted, others who feel the patent has been unjustly granted can file for opposition. The same possibility is also being considered for the Netherlands. It would be a more accessible way of having a patent examined, for example in a procedure involving patent attorneys.

But would this apply only to Dutch applications, or also to European patents that were validated in the Netherlands? And what term should be observed? Should the grounds for opposition be the same as in Europe, or will other options be required? And how should such a procedure be realised from a legal point of view (including the possibility of appeal)?

Early stage
As the above shows there are certainly some good ideas to improve and modernise Dutch patent law. But many questions remain about the practical ramifications of these changes. Each option has advantages as well as risks, also depending on the implementation chosen. In the coming weeks we will explore each of these options further and take a look at how other countries handle these matters.