The first patent application that is filed for an invention is also referred to as “premier depot”. On the filing date of the premier depot, the so-called priority year starts running. Within this year, the applicant can file further patent applications for the same invention in other countries or regions. Importantly, these further patent applications are then deemed to have been filed on the same date as the premier depot. An applicant can thus begin with a single patent application in a single country or region and then wait one year before filing further patent applications.
This mechanism gives the applicant one year to decide in which countries to prosecute a patent. Hence, the applicant can wait and see whether the invention will be a commercial success. Also, typically within the priority year, the applicant receives a search report for the premier depot. This report contains a preliminary, non-binding opinion on the patentability (novelty and inventiveness) of the invention. Based on the report, the applicant can estimate the chances of obtaining granted patents in other countries / regions.
A Dutch patent application is filed with the Dutch Patent Office (OCNL). An examiner of OCNL, or – if requested by the applicant – an examiner of the European Patent Office (EPO), will perform a novelty search. The examiner will search for relevant publications, typically written documents, that were published before the filing date of the patent application. If the examiner finds publications that already described the invention, then the invention is not novel. It may also be that the examiner finds publications that do not exactly describe the invention, but that do describe technology that comes close to the invention. In such case, the examiner will assess whether an inventive step was taken with the invention relative to the already described technology. An invention namely needs to be both novel and inventive in order to be patentable.
The results of the novelty search are presented in a so-called search report. In this report, the examiner cites the documents that he or she found and explains – where appropriate – why the invention is not novel and/or not inventive with respect to these documents. The applicant will receive the search report approximately 9 months after filing the patent application.
Irrespective of the outcomes of the novelty search, in The Netherlands, a patent is granted eighteen months after the filing date, even if the search report is negative. With the grant of the patent, it will be published. If the patent is enforced before the Dutch courts, then the judge will retroactively nullify the patent if he or she deems the invention not novel and/or not inventive.
The patent will remain in force until twenty years after the filing date of the patent application. In order to keep the patent alive, a renewal fee will have to be paid each year.
A European patent application is filed with the European Patent Office (EPO). Just as in the Dutch procedure, an examiner, of the EPO in this case, will perform a novelty search. After approximately nine months the applicant will receive the search report containing the preliminary opinion regarding the patentability of the invention.
Eighteen months after the filing date, the patent application will be published. In contrast to the Dutch procedure, not every European patent application will lead to a granted European patent.
If the applicant wishes to continue the procedure, he or she will have to request the EPO within six months from the publication to further examine the patent application. Within the same period, the applicant will have to respond to the earlier received search report. This response is the starting point for a discussion between the applicant and the EPO. The applicant can for example try to convince the examiner that the documents cited in the search report are not relevant for the invention and argue that the invention is novel and inventive. The applicant can also amend the patent application, for example by amending the definition of the invention. Typically, with these amendments, the applicant more precisely defines the invention. Herewith, the scope of protection of the patent (if granted) becomes narrower. These amendments may be required to further distinguish the invention from technology described in the cited documents, i.e. technology that already existed before the patent application was filed.
If the examining division of the European Patent Office is convinced that the invention is novel and inventive, they will grant a European patent. It may take quite some time before the patent is granted, typically several years. After grant, the applicant has to choose in which countries the patent should be in force, in other words, in which countries the patent should be validated. Some countries require a translation for validation.
Each year renewal fees will have to be paid for each country in which the patent is to be kept alive.
It is also possible to file an international patent application. This type of patent application is also referred to as a “PCT-application”. PCT stands for Patent Cooperation Treaty, which is a treaty between more than 150 countries.
The European Patent Office will perform the novelty search and the application will be published after eighteen months.
What is special about the international application is that the applicant only has to choose after 2,5 years in which countries and/or regions patent grant procedures are to be initiated. For example, it is possible after 2.5 years to start a European as well as a US patent grant procedure. In each selected country or region, the international patent application will be treated as a regular national or regional patent application having as filing date the filing date of the international patent application.
The PCT procedure thus gives an applicant 2.5 years to decide in which countries/regions to prosecute a patent.