‘The patent’ in patent proceedings is not static. During the proceedings before the (Dutch) court the patent holder can adjust its patent in order to thus strengthen its position. This means that the patent that the proceedings started with often differs from the patent that the court ultimately rules on.
How this works is outlined below.
In proceedings the patent holder can always limit its Dutch patent or Dutch part of a European patent further if the validity is disputed. This can be done in invalidity proceedings instituted by a third party or during infringement proceedings initiated by the patent holder in the course of which the other party puts forward an invalidity defence. In both instances the patent holder can file (conditional) auxiliary requests. A conditional auxiliary request implies that if the court would rule the patent to be invalid, the patent holder limits the claims of the patent. The patent holder then rewrites and limits the claims of the patent and indicates how the changed claims overcome the raised invalidity arguments.
The adjusted claims obviously serve to comply with the requirements of patentability, including novelty and inventive step. Otherwise it cannot be a valid patent. The objective of the patent holder is to limit the claims of the patent such that the invalidity claim filed is not sustained and that the patent can be upheld in changed form. The patent holder can submit multiple auxiliary requests. It is generally assumed that five requests are permitted, although case law does not refer to a hard limit.
Besides, the limitation of claims in auxiliary requests in infringement proceedings also affects the matter of infringement. After all, the patent holder cannot limit its patent in order to uphold it and then also claim infringement based on the old, broader, version of the patent. This would mean a double standard.
Neither the law nor the case law contains many handles for the submission of auxiliary requests. There is, for instance, no fixed time limit within which the auxiliary request must be submitted. The case law shows that the patent holder cannot ambush another party with it, as the latter would then be prejudiced in its defence. Moreover, the submission of auxiliary requests on appeal may also be in violation of the law of procedure: if this is the case then auxiliary requests are not permitted.
Another, far-reaching measure that the patent holder can take, is to waive the patent. This can be done if it is estimated that the costs of defending the patent do not outweigh the expected gains of upholding the patent. If the patent holder does this then there is no longer a patent in the Netherlands and this patent cannot be invoked anymore.
Strategy for patent holder
If a patent holder gets involved in proceedings about the validity of the patent then it is important to anticipate the expected success of invalidity arguments. To this end the patent holder, at least its lawyer and patent agent, will always need to examine whether the claims should be limited. In this respect the consequences of potential limitations for the infringement question should be taken into account.