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Applying for a patent
Patentability What are the criteria for patentability in your jurisdiction? A patent can be obtained for inventions that are new, involve an inventive step and are susceptible of industrial application. In addition, a number of formal requirements must be met (eg, no subject matter can be added or extended after grant).
What are the limits on patentability? Non-patentable subject matter includes:
- scientific theories;
- mathematical methods;
- aesthetic creations;
- rules and methods for performing mental acts, playing games or doing business;
- computer programs; and
- presentations of information as such.
To what extent can inventions covering software be patented? Computer programs (software) as such are excluded from patentability. This exclusion is assessed in line with European Patent Office practice. A computer program is not excluded from patentability if it is capable of bringing about – when running or loaded onto a computer – a further technical effect that goes beyond the ‘normal’ physical interactions between the program (software) and the computer (hardware) on which it is run.
To what extent can inventions covering business methods be patented? Business methods as such are excluded from patentability. The manner in which this exclusion is assessed in the Netherlands is consistent with European Patent Office practice. A patent can be obtained if the claimed invention specifies an apparatus or technical process for carrying out at least some part of the business method.
To what extent can inventions relating to stem cells be patented? The patentability of inventions relating to stem cells is assessed in line with European Patent Office practice and European Court of Justice case law. Patent claims directed to a product which at the time of filing could be exclusively obtained by a method which necessarily involves the destruction of human embryos are excluded from patentability. This exclusion does not affect inventions for therapeutic or diagnostic purposes which are applied and useful to human embryos. The human body at the various stages of its formation and development and the simple discovery of one of its elements are not patentable.
Are there restrictions on any other kinds of invention? The following are not patentable:
- inventions whose commercial exploitation would be contrary to the public order or public morality;
- the human body in its various stages of formation and development, as well as the sole discovery of one of its parts, including a sequence or partial sequence of a gene;
- plant or animal varieties;
- essentially biological processes consisting entirely of natural phenomena (eg, hybridisations or selections) in order to produce plants or animals and the products obtained thereby;
- inventions that lead to an infringement of Article 3, 8(j), 15(5) or 16(5) of the Convention on Biological Diversity; or
- surgical, medical or diagnostic methods of treatment for humans or animals, with the exception of products (eg, substances or compositions) for the application of these methods.
Grace period Does your jurisdiction have a grace period? If so, how does it work? Pursuant to Article 5 of the Patent Act, the disclosure of an invention will be disregarded if it occurred no earlier than six months before the date on which the patent application was filed as a direct or indirect consequence of:
- an evident abuse in relation to the applicant or its legal predecessor; or
- the applicant or its legal predecessor displaying the invention at a government-sponsored or officially recognised exhibition within the meaning of the Convention on International Exhibitions, on the condition that the applicant declares on filing its application that the invention has been displayed and submits proof thereof.
Oppositions What types of patent opposition procedure are available in your jurisdiction? No opposition proceedings can be filed against the grant of Dutch national patents. In relation to European patents, opposition proceedings can be filed with the Opposition Division of the European Patent Office.
Apart from oppositions, are there any other ways to challenge a patent outside the courts? In relation to a Dutch national patent, a party can request the Patent Office to render nullity advice. In nullity advice proceedings, both parties are heard. However, the advice is not binding and does not lead to actual revocation of the Dutch national patent. If a party wishes to claim revocation of a Dutch national patent, it must first request nullity advice from the Patent Office. This nullity advice must be submitted to the District Court of The Hague in revocation proceedings, but is not binding on the court.
How can patent office decisions be appealed in your jurisdiction? Nullity advice from the Patent Office cannot be appealed. Decisions from the Opposition Division of the European Patent Office can be appealed before the Technical Board of Appeal of the European Patent Office.
Timescale and costs How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for? A Dutch patent application is granted 18 months after filing. There is no substantive examination (although a novelty report is prepared). The costs of preparing and filing a Dutch patent application are generally around €8,000. After the third year, the patentee must pay annuities.
The duration of examination proceedings for a European patent application is more difficult to predict, as a substantive examination takes place. If the novelty report is positive and the application is accepted immediately, a European patent may be granted about three years after filing. However, if there is significant discussion with the examiner, the examination proceedings may take longer (even years). The costs will also depend on the course of the examination proceedings and will generally range between €13,500 and €23,500. When a European patent is granted, it must be validated in the patentee's countries of choice and translations of the claims (and in some countries also the description) must be made. The annuities are determined on a country-by-country basis. The total costs will thus depend on the countries where the patentee chooses to validate the European patent.
Enforcement through the courts
Strategy What are the most effective ways for a patent owner to enforce its rights in your jurisdiction? Patentees can initiate preliminary relief proceedings before the provisions judge of the District Court of The Hague. In such proceedings, injunctions and ancillary orders (eg, recalls, rectifications and accounts of profits) can be obtained in approximately four to six weeks (in urgent cases sometimes even quicker). It is possible to obtain cross-border injunctions against Dutch defendants (European Court of Justice, July 12 2012, C-616/10, Solvay v Honeywell) and, under certain circumstances (for instance, if it concerns infringement of the same European patent with the same product in the same jurisdictions), against foreign co-defendants (Court of Appeal of The Hague, November 24 2015, ECLI:NL:GHDHA:2015:3923, Rhodia v Jiaxing). There is an urgency requirement in preliminary relief proceedings, but this is relatively easy to meet as patent infringements are usually considered to be urgent by nature. There is no rule that the patentee must bring preliminary relief proceedings within a specific timeframe, although the patentee should act in a sufficiently expedient manner.
In extremely urgent cases, the patentee may request an ex parte injunction against the infringer. The provisions judge will decide on the ex parte injunction request without hearing the alleged infringer. Ex parte injunctions can be obtained in one to three days. However, ex parte injunctions in patent cases are rare in the Netherlands. The infringer can protect itself against a possible ex parte injunction by submitting so-called 'protective letters' with the District Court in the relevant districts. This is not a guarantee that no ex parte injunction will be issued. The provisions judge will consider and assess the arguments in the request and the arguments in the protective letter when deciding on the ex parte injunction request.
Patentees can also initiate proceedings on the merits in order to obtain injunctions, damages orders and ancillary orders (eg, recalls, rectifications, destruction of infringing goods and account of profits). There is a specific procedure available (ie, ‘accelerated proceedings on the merits’) in which a judgment can be obtained in about 11 or 12 months.
Further, patentees can request leave to levy a seizure for the surrender of infringing goods or an evidentiary seizure in relation to the infringement. An evidentiary seizure may be (solely) based on foreign patents and the evidence may be used in foreign proceedings (Amsterdam Court of Appeal, April 24 2012, IEF 11241, Rhodia v VAT). Under the EU Anti-piracy Regulation, a patentee can also request Customs to suspend the release of or detain goods that are suspected to infringe the patent.
What scope is there for forum selection? The District Court of the Hague is the sole first-instance court in patent cases in the Netherlands. Therefore, there is little room for forum selection on a national level.
As the district court is a respected, specialised patent court and will accept cross-border jurisdiction under certain circumstances, it may be an interesting option for forum selection on an international level. Any appeal, which exists as of right, must be filed with the Court of Appeal. Appeal decisions can be appealed to the Supreme Court on limited grounds.
Pre-trial What are the stages in the litigation process leading up to a full trial? Most patent proceedings on the merits are conducted in accordance with the so-called ‘accelerated regime’. Under this accelerated regime, the District Court of The Hague sets a schedule for the proceedings and a first-instance decision may be obtained within 11 or 12 months.
Before initiating proceedings, the plaintiff must submit a draft writ of summons with the district court and request the court to create a schedule for the proceedings. Within days, the district court will provide the plaintiff with a schedule in which all deadlines of the proceedings are set. In order to initiate the proceedings, the plaintiff must serve the writ of summons and schedule on the defendant. The writ of summons contains the plaintiff’s claims and detailed argumentation in support of these claims. The plaintiff must then enrol the proceedings with the district court and submit exhibits in support of its claims. The patentee may submit auxiliary requests in order to defend the validity of the patent.
The defendant must submit its statement of defence within 10 weeks of the case being enrolled with the district court. The statement of defence must contain all of the defendant's defences against the plaintiff's claims. On the same date, the defendant may file a counterclaim. If the defendant decides to do so, the plaintiff in the main action will have eight weeks to respond to the counterclaim. If the defendant does not put forward a counterclaim, but merely raises patent invalidity arguments by way of defence, the plaintiff in the main action can respond to those invalidity defences within eight weeks.
Parties can submit additional exhibits up to six weeks after filing of the statement of defence in the counterclaim. Parties can file exhibits in response to another party's additional exhibits four weeks before the hearing.
The hearing will be scheduled to take place between 32 and 40 weeks after the case is enrolled with the district court (about eight to 10 months after the start of the proceedings). At the hearing, each party has 90 minutes to present its case orally to the district court. Each party then has 15 minutes for rebuttal. The district court usually asks questions throughout the hearing. At the end of the hearing, the court indicates when it will render its decision. This is usually six weeks after the hearing, although it is possible for the district court to postpone its decision.
In regular proceedings on the merits, no schedule for the proceedings is set and, unlike in accelerated proceedings, the parties usually submit a statement of reply or rejoinder. It will usually take more than 12 months for a decision to be reached.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so? It is difficult for defendants to delay accelerated proceedings on the merits, as these proceedings are conducted in accordance with a schedule set by the District Court of The Hague. In regular proceedings on the merits, filing certain motions (eg, a motion for decline of jurisdiction) may result in some delay.
How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it? A party can initiate patent revocation proceedings before the District Court of The Hague. These may be accelerated or regular proceedings on the merits. The patent owner can put forward a counterclaim for injunctions, damages and ancillary orders in the same proceedings. The district court will normally decide on the revocation claim and injunction claim (as well as any damage and ancillary claims) simultaneously.
At trial What level of expertise can a patent owner expect from the courts? The District Court of The Hague is the sole first-instance court in patent cases in the Netherlands. It is a specialised and respected patent court. All judges are experienced in handling patent cases and some judges have a technical background. The judges of the Court of Appeal in The Hague are also specialised in patent cases. Patentees can thus expect a high level of expertise from the courts.
Are cases decided by one judge, a panel of judges or a jury? One judge decides preliminary relief proceedings. A panel of three judges decides proceedings on the merits. A panel of three judges decides appeals.
If jury trials do exist, what is the process for deciding whether a case should be put to a jury? No jury trials exist in the Netherlands.
What role can and do expert witnesses play in proceedings? Parties will often submit expert statements, particularly in complex cases. There is no cross-examination of experts, but parties often bring their experts to the hearing. Experts will sometimes explain certain technical points during the hearing, usually on the request of one of the parties or the court; however, this does not have the nature of a cross-examination.
Does your jurisdiction apply a doctrine of equivalents and, if so, how? The Dutch Supreme Court has held that claim construction must be carried out on the basis of Article 69 of the European Patent Convention and the Protocol on Interpretation. The extent of protection conferred by a patent will thus be determined by the claims and the description and drawings shall be used to interpret the claims. Due account will be taken of any element which is equivalent to an element specified in the claims (Article 2 of the Protocol on Interpretation). The interpretation is conducted from the perspective of the skilled person and his or her knowledge of the art on the application or priority date (Supreme Court, April 4 2014, ECLI:NL:HR:2014:816, Medinol/Abbott). The protocol is considered a guideline for finding the answer to the question of the scope of protection of the patent. The protocol teaches that the claims should not be taken literally, nor merely as a guideline, but that there should be a balance resulting in a fair protection for the patentee and a reasonable degree of legal certainty for third parties.
Equivalents known on the application or priority date are thus already taken into account when constructing the claims. The District Court of The Hague has decided that there may then only be room for infringement by equivalence if it concerns equivalent measures that were not foreseeable on the application or priority date of the patent. These can then be taken into account in the context of the infringement question and, if appropriate, be included in the scope of protection of the patent (District Court of The Hague, June 18 2014, BIE 2014/41, MBI/Shimano). Equivalence is usually determined by applying the function-way-result test. This test is most common in patent proceedings regarding mechanical (engineering) patents. Courts sometimes apply the insubstantial differences test in pharmaceutical cases.
Is it possible to obtain preliminary injunctions? If so, under what circumstances? Patent owners can initiate preliminary relief proceedings. Preliminary injunctions (sometimes even cross-border) and ancillary orders (eg, recalls, rectifications and account of profits, but not damages) can be obtained within four to six weeks. To succeed, a patent owner must show that its patent has been infringed or that there is a serious threat thereto and that there is an urgent interest in the claimed relief. The urgency requirement is generally easy to meet, as under Dutch case law, patent infringements are usually considered to be urgent by nature. However, the patent owner does need to act in a sufficiently expedient manner. The claimed relief will be denied if the provisions judge finds that the patent has not been infringed or if there is a reasonable chance that the patent will be found invalid in opposition proceedings or proceedings on the merits.
In extremely urgent cases, the patentee may request an ex parte injunction against the infringer. The provisions judge will decide on the ex parte injunction request without hearing the alleged infringer. Ex parte injunctions can be obtained in one to three days. However, ex parte injunctions in patent cases are rare in the Netherlands. The infringer can protect itself against a possible ex parte injunction by submitting so-called 'protective letters' with the district court in the relevant districts. This is not a guarantee that no ex parte injunction will be issued. The provisions judge will consider and assess the arguments in the request and the arguments in the protective letter when deciding on the ex parte injunction request.
How are issues around infringement and validity treated in your jurisdiction? In preliminary relief proceedings, the patent owner must show that its patent has been infringed. The claimed relief will be denied if the provisions judge is of the opinion that there is a serious chance that the patent will be found invalid in opposition proceedings or proceedings on the merits.
In proceedings on the merits, the patent owner must show that its patent has been infringed. If the defendant claims revocation of the patent, the defendant has the onus of proving that the patent is invalid (Dutch Supreme Court, March 6 2009, LJN: BG7411, Schneider v Cordis, legal ground 5.2.3).
Will courts consider decisions in cases involving similar issues from other jurisdictions? Dutch courts are interested in decisions from courts in other jurisdictions, particularly courts from European jurisdictions with good reputations in patent law (eg, the United Kingdom and Germany). However, Dutch courts may deviate from decisions in other jurisdictions.
Dutch courts generally follow the case law of the Technical Boards of Appeal of the European Patent Office. However, Dutch courts may still decide to revoke the Dutch part of a European patent that was upheld by the Opposition Division or Technical Board of Appeal of the European Patent Office.
Damages and remedies Can the successful party obtain costs from the losing party? The losing party is usually ordered to pay the court fees and legal costs of the winning party. Article 1019(h) of the Code of Civil provides that the party held in the wrong will be ordered, if claimed, to pay the reasonable and proportionate legal costs and other costs that the party in the right has made, unless this would be unreasonable. These normally include the costs of lawyers, patent attorneys and experts. However, the reasonable and proportionate legal costs can not be recovered if the proceedings pertain solely to the validity of the patent and were not initiated in response to a threat of enforcement of the patent. In such a situation, only the court fees are recoverable, which are usually very low.
What are the typical remedies granted to a successful plaintiff? The most important remedy available in the Netherlands is an injunction (which can be cross-border in certain circumstances). Injunctions are normally phrased as an order not to (directly or indirectly) infringe a patent, under forfeiture of penalty payments. Thus, injunctions are normally not limited to specific products of the infringer (Court of Appeal of The Hague, December 31 2013, IEF 13399, Apple v Samsung). However, the granted orders should be interpreted in light of the considerations in the decision (Supreme Court, November 24 1989, ECLI:NL:HR:1989:AD0964,Interlas/Lincoln). In exceptional circumstances, the courts may grant a moratorium (ie, an order refraining the infringer from dealing in the infringing product for a certain period after expiry of the patent) in order to prevent the infringer from benefiting from the infringement (Supreme Court, December 18 1992, BIE 1993/81, ICI v Medicopharma; European Court of Justice, July 9 1997, C-316/95, Generics v Smith Kline).
Other remedies available include recalls, rectifications, destruction of infringing goods and account of profits. These can be ordered in preliminary relief proceedings. Measures that are available in proceedings on the merits but not in preliminary relief proceedings include declaratory judgments and damages. For instance, a patentee may claim a declaration that its patent has been infringed and the alleged infringer may claim a declaration that the patent is invalid or not infringed. In addition, patentees usually claim damages, the extent of which is determined in follow-up proceedings. Only actual damages are recoverable. Alternatively, patentees may claim surrender of the infringer's profits (Article 70(5) of the Patent Act).
How are damages awards calculated? Are punitive damages available? Damages are usually assessed in follow-up proceedings. Three alternative methods for calculating damages are available:
- lost profits;
- reasonable royalties; or
- surrender of the infringer's profits.
Under the lost profits calculation method, a patentee can recover the sum that it would have earned had its patent not been infringed. Under the reasonable royalty calculation method, a patentee can recover an amount equal to the licence fee that the infringer would have had to pay if it had negotiated a fair and reasonable licence with the patentee. Under the surrender of the infringer's profits method, the patentee can claim the profits that the infringer made based on the infringement. Punitive damages are not available.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this? If the courts consider a patent to be valid and infringed, they will award a permanent injunction. Permanent injunctions are normally provisionally enforceable notwithstanding appeal. An injunction will be refused only in exceptional circumstances (eg, in the case of an abuse of rights).
Timescale and costs How long does it take to obtain a decision at first instance and is it possible to expedite this process? In regular proceedings on the merits, it usually takes over one year for a first-instance decision to be rendered. However, most patent proceedings on the merits are conducted in accordance with the so-called ‘accelerated regime’. Under the accelerated regime, first-instance decisions may be rendered within 11 or 12 months.
How much should a litigant plan to pay to take a case through to a first-instance decision? Court fees are very low in the Netherlands (usually less than €1,000). The most substantial costs are for attorneys, patent attorneys and possibly experts. In case of an unfavourable decision, the litigant may be ordered to pay the costs of proceedings of the other party.
Legal costs in first-instance proceedings on the merits are approximately between €100,000 and €200,000, although this could be more in complex cases. Costs in preliminary relief proceedings are usually a bit lower. Appeal costs are usually a bit lower than those in first-instance proceedings. Costs in relation to Supreme Court proceedings are generally lower than appeal costs.
Appeal Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take? In the Netherlands, no leave for appeal is required. Every first-instance decision in a patent case can be appealed before the Court of Appeal of The Hague (both proceedings on the merits and preliminary relief proceedings). This is a de novoappeal, in which parties can raise new arguments and submit new evidence. Appeal decisions can be appealed to the Supreme Court on limited grounds.
Options away from court Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts? In the Netherlands, first-instance patent infringement or validity proceedings must be brought before the District Court of The Hague. However, parties can agree to alternative dispute resolutions (eg, arbitration or mediation).