An extract from The Patent Litigation Law Review, 6th Edition

Types of patent

There are several ways to obtain patent protection in the Netherlands, of which filing a patent application with the Dutch Patent Office is the first. Second, the protection of patents in the Netherlands can ensue from a European application before the European Patent Office (EPO). In addition, the Netherlands is a member of the Patent Cooperation Treaty (PCT). Whether it be via a national application or an international treaty (the European Patent Convention (EPC) or the PCT), a patent that is issued for the Dutch region will be governed by the Dutch Patents Act (DPA).

i National Dutch patent application

National Dutch patents are granted through a patent application procedure before the Dutch Patent Office. Several requirements must be met before patent protection is granted: the invention must be novel, involve an inventive step and be capable of industrial application.

The term 'unexamined' is often used when referring to Dutch national patents. Even though patent application procedures always involve a search into the prior art (national or international, depending on the choice of the applicant), the actual grant of the Dutch national patent will not be affected by the results of the search; hence, the results of the search into documents that destroy novelty or are prejudicial to inventive step never prevent applications for Dutch national patents from being granted. The underlying idea is that this would allow smaller companies to obtain patent protection as it limits prosecution costs. Subsequent enforcement proceedings will then address the issue of the patent's validity.

ii European patents

A European patent will be valid in the Netherlands once the corresponding patent application that designates the Netherlands is granted. The rules of the DPA will govern the Dutch part of the European patent. The DPA distinguishes, in some respects, between Dutch patents granted via a European application and those granted following a Dutch national application. The distinction in their respective treatments relates primarily to the unexamined nature of Dutch national patents. However, the remedies are the same for both types of patents.

Most of the patents valid in the Netherlands are issued following application procedures with either the EPC or the PCT.

iii Obtaining protection

The DPA provides that patent protection can be obtained for inventions that meet three conditions: they must be new, involve an inventive step and be capable of industrial application. In addition, the invention must be sufficiently disclosed in the patent and must be described clearly therein. These requirements reflect those stated in the EPC.

As is the case with the EPC, certain subjects are not considered to be inventions under the DPA. Those subjects include scientific theories and mathematical methods, aesthetic shapes, computer programs and business methods. The DPA also describes inventions that cannot be patented, such as the human body in the various stages of development, and the discovery of parts of it that include sequences or partial sequences of the genome, plant and animal types, methods that are predominantly biological in nature and methods for the treatment of the human or animal body.

To be more specific, the DPA provides that certain methods would be contrary to public policy and, therefore, cannot be patented. Those methods include human cloning, methods whereby the genetic identity of humans is changed, using human embryos, methods changing the genetic identity of animals that would cause suffering without any medical use and methods that could damage the health of humans, animals or plants or lead to significant damage to the environment.

In the Netherlands, patent protection can be obtained by filing a patent application with the DPA. After 18 months have passed since the date on which the application was filed, the application will be recorded in the patent register at the earliest opportunity. The patent application is made public at that time. The patentee will then have to apply for a novelty search within a period of 13 months after the filing or the priority date.

While the search may bring to light documents that could destroy the novelty of the invention or be prejudicial to its inventive step, the results of the search have no impact on the actual grant of the patent. The patent will be registered at least two months after the publication of the search and is thereby granted, affording it a protection period of 20 years. After learning the results of the novelty search, the patentee can amend the patent application if need be.

While Dutch national patents are not examined per se, the validity of the patent will become the issue at the heart of any enforcement action initiated by the patentee.

Most of the patents enforced in the Netherlands are Dutch parts of European patents that have been issued by the EPO after a thorough examination of the European patent application.

The wording of the patent claims determines the scope of protection of a Dutch patent. The patent claims must be interpreted in light of the descriptions and the drawings accompanying the patent. In Dutch case law, reference is often made to Article 69 of the EPC and the protocol belonging thereto.3 In some cases, the prosecution file may be relevant for the scope of protection of patents in the Netherlands.

Substantive law

This section provides an analysis of the main substantive law aspects relating to patent infringement and validity in the Netherlands, referring wherever possible to recent noteworthy developments in the legislation, case law or court practice.

i Infringement

In the Netherlands, there are two types of infringement. Article 53 of the DPA deals with direct infringement (which can be literal infringement or infringement by way of equivalence). The patentee has the exclusive right to:

  1. make, use, put on the market, resell, hire out or deliver the patented product or otherwise utilise it as part of his or her business, or to offer, import or stock it for any of those purposes; or
  2. use the patented process in or for his or her business or use, put on the market, resell, hire out or deliver the product obtained directly as a result of the use of the patented process or otherwise utilise it as part of his or her business, or to offer, import or stock it for any of those purposes.

Article 73 of the DPA also forbids indirect or contributory infringement. The patentee may institute the claims at his or her disposal in enforcing his or her patent against any person who, in the Netherlands or the Netherlands Antilles offers or delivers, in or for his or her business, means relating to an essential element of the invention for the application of the patented invention in the Netherlands or the Netherlands Antilles, to persons other than those who are entitled to apply the patented invention (e.g., by way of a licence), provided the person knows or it is evident considering the circumstances that those means are suitable and intended for that application. If the means delivered or offered are products that are generally available in commerce, there will not be contributory infringement.

It is possible under certain conditions to also hold liable other persons (e.g., directors of infringing companies, foreign suppliers and accessories) involved with the infringement, but this is dealt with under the general law of tort. This is, however, not common practice in Dutch patent cases.

ii Invalidity and other defences

In patent infringement proceedings, the most important defences are those directed at the invalidity of the patent. The district court can deal with those defences in the same proceedings that involve the actual infringement.

In preliminary relief proceedings, the preliminary relief court will make a provisional assessment of the validity of the patent in question. Although the right cannot be invalidated for the Netherlands in those proceedings, infringement claims will be denied if the court considers it likely that the patent will be found invalid in proceedings on the merits. Claims on the grounds of inequitable conduct or similar defences are not recognised within the Dutch system.

In patent cases, the validity of patents can be challenged on account of non-patentable subject matter (inter alia, lack of novelty or inventive step), insufficiency of disclosure (lack of enablement), and extension of subject matter beyond the content of the application as originally filed (added matter). This can be done in much the same way that challenges would be lodged with the EPO.

The Dutch court also recognises the Gillette defence, which is a hybrid defence between an inventive step defence and an infringement defence. If an alleged infringer applies a product or a process that was already known in the prior art, or an obvious variant thereof, it cannot be infringement; otherwise, the patent would be invalid as not novel or not inventive.4

The court accepts the problem solution approach as a test to substantiate an inventive step defence; however, it also recognises that the problem solution approach is only a test and that is not mandatory to apply it.

In the end, the only real test is whether a defendant is able to substantiate the obviousness of an invention. He or she can do so with all evidence available as long as he or she shows that the evidence is not tainted with hindsight.5

Other defences against infringement can be that there is a licence in place, exhaustion of patent rights, other competition law defences (e.g., a FRAND defence) or experimental use exceptions. Lack of knowledge is never a defence against infringement; however, it may be a relevant defence against a damages claim.