20 September 2018
Article

The priority year of your Dutch application is about to expire. What next?

In many cases, we advise clients to start a patent family by filing a Dutch patent application. This has all kinds of advantages. For instance, a Dutch patent application is relatively cheap. Due to the registration system, a granted patent can already be obtained 1½ year after filing. In addition, you can opt for an international search for which the European Patent Office (EPO) will draft the search report instead of the Dutch Patent Office. The result is that you get a proper estimate of the chances of a potential European follow-up application.

By now, a year has almost passed since you filed your Dutch patent application including a request for an international search. You have received the search report from the EPO. Now, it is time for a decision: which follow-up steps do you take? Generally speaking, there are three options:

Option 1: You do not want to continue

Maybe the search report was very negative. Maybe the product did not function as well as was expected or maybe the commercial possibilities have turned out to be too limited. Maybe you ran out of money.

There can be a multitude of reasons for discontinuing your application. If you do not take action, the priority right will expire but you can still obtain a Dutch patent. Subsequently, this patent will remain in effect as long as you pay the annually required and gradually increasing renewal fee (for a maximum of twenty years).

You might also consider withdrawing your application in advance of the publication and grant of the patent. This could be the best course in particular if you have not yet published anything about your invention in the meantime. By withdrawing your application, it will remain secret and you retain the option of re-filing it at a later date. Obviously, this does have risks: novelty-damaging publications could be published in the meantime.

Option 2: You file follow-up applications in Europe and/or other countries

Do you already know precisely in which places you want to get protection? Then this option is most likely the best one. You select a number of countries or regions for filing follow-up applications for which you invoke the priority of your Dutch application.

If necessary, you can supplement or change the application(s) in advance of filing, for example to address issues in the search report. This can increase the chances of the patent being granted. However, exercise due care: you are not entitled to the priority date for elements not disclosed in the priority application.

For these follow-up applications, you must again pay fees for a search to be performed by the relevant patent office(s). This is also the case for European applications. However, later you may get reimbursed for a significant part of the costs of the European search if it is found that the international search report drafted for the Dutch application is completely re-useable (and this is often the case).

Option 3: You file a Patent Cooperation Treaty (PCT) application

Many people find it difficult to narrow down the selection of countries and regions after just a year. It is also possible that it is not yet possible to free up a sufficient sum of money for all the desired countries. Fortunately, there is a third option with which you can ‘buy’ some additional time: the PCT application.

Contrary to what some people think, a PCT application does not result in worldwide protection. It is more accurately described as a way to centralise a part of the grant procedure for a large number of countries (with some exceptions, including Argentina and Taiwan). You do not have to definitely select the countries until 2½ years after the priority date. That means that this deadline will usually fall approximately 1½ years after making the decision that this article deals with. If the centralised procedure results in a positive final report, the prosecution of the patent is likely to run smoothly in many of the selected countries.

Recently, an additional advantage arose. As a Dutch applicant, the European Patent Office (EPO) will most likely process your PCT application. A number of years ago, the EPO introduced a very interesting new possibility: the PCT-Direct route. This possibility can significantly increase the chances of a positive final report for PCT applications that invoke the priority of an application for which the EPO itself has drafted the search report. In other words: precisely the type of application that you would file if you choose this option.

More to the point, the PCT-Direct route entails that the filing of the PCT application can be used as an opportunity to respond directly to the international search report that is already in your possession. Specifically, you can not only amend the claims in response to the stated objections, but you can also indicate in an annex what you have changed and why, and put forward specific arguments to defend your application. The EPO Examiner must then take your amendments and submissions into account, thereby significantly increasing the chances of a positive search report.

Conclusion

Choices, choices, choices… It will never be easy, and many factors will influence what is the best option for you. If you are mainly looking for European protection, the aforementioned second option is the most logical option. However, we advise you also to consider the third option seriously, specifically because of the new possibilities provided by the PCT-Direct route.

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