Licensing, Contracts & Due Diligence

A patent grants a negative right, namely the right to prohibit the use of the invention by a third party. The patent owner can stop a third party from operating under the scope of the claims by taking legal action against this party.

Note that a patent does not confer to the owner the right to apply the invention. The owner of the patent may himself be subject to intellectual property rights of others. This is illustrated here by an example.

Alfred Nobel filed an application on his invention of dynamite (submitted May 7, 1867 and published as US 78317). This granted patent ensured him the right to exclude others from using this invention. However, the patent did not necessarily allow him to exploit the invention. First, there would be civil laws to take into account which could restrict the use of dynamite. Moreover, it is possible that the use of the invention was also restricted by third party rights.  For instance, a third party patent on the nitroglycerin which he used for the production of dynamite, may have prevent him from freely producing the dynamite.

The scope of protection of a patent document is defined by the claims. Thus, only when the patent is granted, can the definite scope of a patent be assessed. While one can try to envisage what is encompassed by the claims of a patent, the final decision on this is with the court deciding on infringement. In Europe, the description and drawings are taken into account to determine the scope of the claims.

When carrying out a commercial activity, it is important to determine whether or not third parties have exclusive rights which may be infringed by your activities.

Indeed, for instance if you are selling a patented product or process without authorization of the patent owner, you are committing an act of infringement.

All patent documents are published 18 months after their filing date. It is possible to look up whether there are patent documents covering your activities in public patent databases. Not being aware of third party patent rights is not a valid defense against an infringement action.

Determining whether or not you infringe a third party patent requires that you interpret the claims and determine whether the patent is still in force. Moreover, it may be that the patent is in fact not valid. Such an analysis is quite complex and it is advisable to obtain advice from a qualified European patent attorney. De Clercq & Partners can help you with any questions you may have relating to third party patent rights.

If your product is used by others to make a patented product, or if you are performing only part of a patented process to deliver to someone else who will perform the remaining steps of a patented process, you may still be committing infringement, even if your product or process does not have all of the features of the claims in the patent. Indeed, a person who offers or provides means to persons to offer an essential element of the patented invention, and who knows that these means are intended or at least suitable for exploitation of the invention, is considered to commit what is called “contributory infringement”. As this is subject to specific conditions and may vary from country to country, it is advisable to obtain information on this issue from a qualified European patent attorney.

The “descriptive seizure”, "saisie descriptive" also referred to as “saisie” in Belgium is a procedure which allows the holder of a patent right to obtain evidence from the premises of an alleged infringer without any prior warning. After the judge issues a seizure order, an independent expert appointed by the judge, assisted by a bailiff, will present himself to the place where the alleged infringement is committed to collect all possible evidence. A report is drawn up by the expert, which is then provided to the patent owner. The patent owner must then initiate court proceedings against the alleged infringer, in order to be able to use this evidence in court.

If you are working in a field in which third parties are filing for patent applications, it may be important to know about this procedure and what you can do to minimize the impact of a “saisie descriptive” on your company. Alternatively, you may be in a situation where you believe your patent rights are being infringed, but you would like some substantial evidence on the size of the infringement.

Several of the patent attorneys at De Clercq & Partners have served as independent experts in saisie proceedings or have assisted clients who  have undergone or used saisie proceedings. De Clercq & Partners can thus inform you on all you need to know about these proceedings. 

It is possible as a third party to oppose the fact that a European patent has been granted. Such an opposition must however be filed within 9 months of the grant date. The grounds for opposition are limited by the European patent convention. The strongest argument against a granted patent is when prior art is identified which was not taken into consideration during the examination of the claims. In an opposition procedure, both the opposing party and the patent holder get several opportunities to submit arguments. Often this involves oral proceedings, wherein both parties defend their arguments orally before the Opposition Division. The opposition division will then take the decision either to

• maintain the patent as granted,
• reject the patent.
• maintain the patent, but with a narrower scope of protection, or

An appeal can be filed against the decision by either of the two parties adversely affected by the decision.

This opposition procedure is specific for Europe; other countries have other procedures for contesting third party patent rights.

The European patent office also provides the opportunity for third parties to comment on the patentability of pending claims during the examination procedure. In this case however, the third party does not become party to the proceedings but can only bring certain documents and/or arguments to the Examiner’s attention. Whether or not these are considered relevant  is at the discretion of the Examiner.