Patents

When you have developed an invention, it is important to keep this confidential. Indeed, any disclosure of the invention prior to filing a patent application may compromise the ability to get patent protection on the invention.

A patent is a right granted for a certain territory which forbids a third party from exploiting the invention. In return for this right, the description of the invention is revealed in the patent. This exclusive right, however, is territorial and limited in time.

An invention doesn’t have to be mind-blowing to be patentable. Many inventions in fact represent small but useful improvements. There are however a few requirements which an invention has to comply with in order to be patentable.

Not all new knowledge is patentable. The discovery of America by Columbus is not an invention. Physical phenomena such as atoms, gravity and steam are also not considered patentable.

One important requirement for an invention to be patentable is that it is novel. “Novel” means that the invention has not been made public before the filing date.

In order to be patentable, a finding should not only be novel but also involve an inventive step. Generally speaking this means that 'with respect to the prior art, the finding would not be obvious for the person skilled in the art'.

A further requirement of patentability is that the invention has industrial applicability. An invention is usually industrially applicable when it can find an application or manufacture in trade or industry including agriculture at the time of filing.

A European patent application commonly contains the following parts:

• Background, describing the prior art
• Description of the invention
• Claims
• Abstract or summary
• Examples and figures (optional)

A patent application should contain an appropriate description of the invention. While the claims of an application may be amended during examination, the rest of the application can not, and (most particularly in Europe), any amendments to the claims must be based on the application as filed. Thus, it is important to ensure that the application complies with the different requirements and anticipates any problems which Examiners may raise.

It is recommended to ask the advice of a qualified patent attorney to assist in the drafting of a patent application. An attorney not only is familiar with the specific formal requirements an application has to comply with, but also has the experience to anticipate potential issues that will be raised during examination.

De Clercq & Partners can provide you with assistance in the drafting of a patent application on your invention. Where available it can be of interest to start from a description of the background, the invention and the experiments provided by the inventors. Alternatively, De Clercq & Partners can draft the complete applications based on experimental data only.

The claims form the most important part of the patent application as they stipulate the scope of protection. In other words, the claims define what is protected. Claims should generally contain only and all the essential characteristics of the invention.

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.

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.

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.

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

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.

In some cases, the patent owner will allow third parties to use his patented invention for a remuneration or other compensation. This will usually formalized in the form of a licence agreement. In a licence agreement, a number of conditions can be specified

The duration of a granted patent is 20 years counted as from the filing date, i.e. the date on which the patent application was filed.

Some products not only take a long time to develop but are moreover subject to regulatory approval before they can be marketed. By the time the product is marketed, most of the patent term has often expired.

Studying patent literature is important for different reasons. Not only does it contain a lot of technical information (which may not be published in scientific literature) but it provides information about the important players in a specific field and what they are doing and allows you to find out about potentially relevant third party rights.

Patent literature can be downloaded in part for free from publicly accessible patent databases. A few examples are:

• European patent office database
• US patent office database
• WIPO patent database
• Belgian patent literature
• The Belgian Office for Intellectual Property
• The Dutch Office for Intellectual Property
• Dutch patent literature

A useful tool in searching the prior art is the IPC classification codes which enable you to retrieve relevant patent documents in a particular subject field. The codes are available here.

The drawback of these public databases is that they do not have very detailed or comprehensive searching tools and are not capable of handling complex search terms.

De Clercq & Partners can provide you with patent information by performing searches and analyzing the results.

Patenting an invention can be important because:

• It provides a competitive advantage. Indeed, third parties wanting to do the same need to
  • obtain a license from you, which costs money; or
  • have to design around the patented technology, which can be difficult, time-consuming and often commercially uninteresting.
• A patent or a portfolio of patents provides a better negotiating position with regard to the competition. For example, when a competitor has been very active in your area of research and also has a patent portfolio, you may agree to exchange patent rights (e.g. take out a cross-licence agreement).
• If a patent is not filed on the invention, but your competitor does file on the same invention, you may be restricted in your use of the invention.
• A proactive patenting policy can build a reputation for your company, such that competitors take you more seriously
• In some situations the filing of a patent application may be of interest to attract investment or to obtain funding (many IWT grants require a patenting strategy)

The Belgian tax law now allows tax reductions for income on patented products (see below).

A patent is a territorial right, which implies that the right only applies in the country where the patent is granted. It is advisable to file for patent protection in countries with large economies, or countries expected to show growth in your particular field.

To obtain a patent, a formal application needs to be filed with the national qualified authority. In Belgium , this is the “Office for Industrial Property” which is under the jurisdiction of the Ministry of Economic Affairs.

A patent application filed in one country only provides protection for that country, therefore, multiple foreign filings are necessary to have wide geographical coverage. The system of priority filing was set up by the Paris Convention which was signed by almost all countries.

In Europe, many countries have signed the “European Patent Convention” (EPC). With only one filing, a patent is applied for all member states of the EPC. It is examined centrally by the European Patent Office. Once granted, the European Patent however becomes a bundle of national patents.

De Clercq & Partners has a number of qualified European patent attorneys who can assist you with the filing and prosecution of a European patent application.

The Patent Cooperation Treaty or PCT is a treaty of more than 100 countries and regions, including the EPO. It allows for the filing of a single international application, which can then be converted into national applications in each country of interest.

In almost all countries, the full content of the patent application is published 18 months after the first filing. Thus, filing a patent application on the invention will make it available to third parties.

Depending on regional patent legislation, a more or less extensive examination for the patentability of the invention is performed by the patent office where the application is filed. Novelty, inventiveness and industrial applicability are assessed.

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 field of patents is quite complex requiring a combination of technical considerations and legal aspects.

Patent attorneys are people with a science degree who have gotten an additional qualification as a patent attorney. Only qualified European patent attorneys are authorized to represent clients before the European Patent Office,

At De Clercq & Partners there are European patent attorneys, as well as patent attorneys which are qualified to act before the Belgian or Dutch Patent Offices. Most qualified patent attorneys have experience in different aspects of patent protection including, patentability analysis, the drafting of applications, prosecution of patents before the patent offices, opposition proceedings and appeal proceedings. In addition patent attorneys have expertise in performing Freedom-to-operate analyses, providing expert opinions on validity and infringement and helping to develop a patent portfolio.

A summary of the Frequently Asked Questions about fiscal deduction benefits of patented inventions in Belgium can be found on this page (Innovation Income Deduction) and this page (Belgium: obtaining subsidies for patents) on our website.

When you have developed an invention, it is important to keep this confidential. Indeed, any disclosure of the invention prior to filing a patent application may compromise the ability to get patent protection on the invention.

Before evaluating the patentability of the invention, you may want to consider whether it has a commercial application. Applying for a patent is expensive and the envisaged commercial advantages should be greater than the costs of obtaining and maintaining your patent rights. De Clercq and Partners can help you with to determine whether the rights to the invention could be of potential interest to third parties.

Once the commercial value of the invention has been determined, an important consideration is whether the invention is indeed patentable. The main requirement for patentability is novelty, which requires that the invention has not been made public by yourself or another in any way.

Very often, the inventor is very much aware of the scientific literature in the field of his invention. A lot of information is however published only in patent documents, so it is important to consider also this type of publications. De Clercq and Partners can help you find your way on public databases or can provide a search on your invention.

In order to be patentable, the invention must also comply with the requirement of inventive step and it should be possible to describe the invention in such a way that it can be carried out by the skilled person. As the application of these criteria is quite specific, it is advisable to obtain advice from a patent attorney to consider these issues.

The information provided in the “frequently asked questions” can also guide you through the process of obtaining patent protection.

A patent application filed in one country only provides protection for that country, therefore, multiple foreign filings are necessary to have wide geographical coverage. The system of priority filing was set up by the Paris Convention which was signed by almost all countries. This convention determines that a first patent application filed in one country party to the convention will determine the “priority date” of the invention for any applications filed within 12 months on the same invention in any country. The priority date is considered the date on which the invention was deposited such that any documents which are made public after that date can not considered by the patent offices for determining the patentability of the invention. 

The use of the system of the priority filing allows applicants to postpone costs relating to filing in different countries of interest for 12 months. In the meantime information on the commercial relevance of the invention can be obtained.

A patent is a territorial right, which implies that the right only applies in the country where the patent is granted. It is advisable to file for patent protection in countries with large economies, or countries expected to show growth in your particular field. As patenting in many different countries is expensive, a selection of the most important countries must be made. This will often be sufficient, as development and marketing in the remaining countries will often not be of sufficient interest to the competitor.

A European patent application commonly contains the following parts:

• Background, describing the prior art
• Description of the invention
• Claims
• Abstract or summary
• Examples and figures (optional)

A patent application should contain an appropriate description of the invention. While the claims of an application may be amended during examination, the rest of the application can not, and (most particularly in Europe), any amendments to the claims must be based on the application as filed. Thus, it is important to ensure that the application complies with the different requirements and anticipates any problems which Examiners may raise.

It is recommended to ask the advice of a qualified patent attorney to assist in the drafting of a patent application. An attorney not only is familiar with the specific formal requirements an application has to comply with, but also has the experience to anticipate potential issues that will be raised during examination.

De Clercq & Partners can provide you with assistance in the drafting of a patent application on your invention. Where available it can be of interest to start from a description of the background, the invention and the experiments provided by the inventors. Alternatively, De Clercq & Partners can draft the complete applications based on experimental data only.

The claims form the most important part of the patent application as they stipulate the scope of protection. In other words, the claims define what is protected. Claims should generally contain only and all the essential characteristics of the invention.

Patent applications commonly contain  different types of claims, with an aim to protect different aspects of the invention. The two basic categories of claims are:

• Product claims aimed at a product (e.g. chemical compound, biological material) or a device, and
• Method claims aimed at a procedure, process or method. A special type of method claim is the “use” claim (not allowable in all countries) protecting the (general) use of a product or process for a specific application.

The product claims provide the broadest coverage, because they cover the product and any use thereof. Method claims can be directed at a method of manufacture or at a use or a process.

By including several categories of claims in an application, potential infringers can be targeted at different levels including production, sale, and end use.

It is advisable to obtain expert advice in order to ensure that the application on your invention optimally covers the different aspects of your invention. De Clercq & Partners can help you to ensure that the claims are optimally drafted to ensure that different aspects of your invention are covered.

To obtain a patent, a formal application needs to be filed with the national qualified authority. In Belgium , this is the “Office for Industrial Property” which is under the jurisdiction of the Ministry of Economic Affairs. In The Netherlands, this is the committee for the Industrial Property in The Hague . For European applications it is the European Patent Office, either in The Hague or in Munich . For International applications (PCT), the patent application can be filed in all above-mentioned offices, also with the International Office in Geneva.

The application has to be accompanied by a full description of the invention in the appropriate language.

The filing of a patent application is subject to different fees (filing fee, search fee etc.).

Depending on regional patent legislation, a more or less extensive examination for the patentability of the invention is performed by the patent office where the application is filed. Novelty, inventiveness and industrial applicability are assessed. Also it is considered whether the invention is described sufficiently such that it can be repeated and whether  the breadth of the claims is justified.

Many patent offices also consider whether the  patent application comprises more than one claimed invention. As only one invention can be protected by a patent application, in case it is considered that more than one invention is claimed, a restriction to one of the inventions will be requested. In that case one or more additional “divisional” patent applications can be filed, to obtain protection for the other remaining inventions.

In Europe, many countries have signed the “European Patent Convention” (EPC). With only one filing, a patent is applied for all member states of the EPC. It is examined centrally by the European Patent Office. Once granted, the European Patent however becomes a bundle of national patents.

De Clercq & Partners has a number of qualified European patent attorneys who can assist you with the filing and prosecution of a European patent application.

The Patent Cooperation Treaty or PCT is a treaty of more than 100 countries and regions, including the EPO. It allows for the filing of a single international application, which can then be converted into national applications in each country of interest. Again, the purpose is to allow the applicant to postpone the decision on which countries to file in until a better indication is obtained of the patentability of the invention and the commercial value of the patented invention.  The international application will be searched to identify the most relevant prior art and there is the possibility for a preliminary examination.

International applications are published as “WO YYYY/XXXXXX AX” 18 months after the earliest priority or filing date.

De Clercq & Partners can help you decide whether or not the filing of an international application is of interest for your invention.

In almost all countries, the full content of the patent application is published 18 months after the first filing. Thus, filing a patent application on the invention will make it available to third parties. As the description of the application needs to be quite detailed for the invention to be patentable, it is not possible to leave out essential information relating to how the invention is performed. Thus it is important to establish that obtaining patent rights to the invention outweighs the fact that the invention is made public to your competitors.

Before the patent application is published, most patent offices will issue a search report, which provides an indication on the patentability of the invention. It is possible to withdraw the application before publication if the applicant no longer wants to continue with the application.

De Clercq & Partners can help you to determine whether or not the publication of the application outweighs the rights that could be conferred by a granted patent on the invention.