Frequently asked questions

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 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. The rights to the invention, once granted, can be maintained for 20 years from the filing date, provided that fees are paid. Pharmaceutical compounds and crop protection compounds can be protected for a maximum of an additional 5 years under certain conditions. (also see "What is a supplementary protection certificate ("SPC")?)

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. More particularly, the main requirements are that the invention as claimed in a patent application is novel, inventive and industrially applicable.

In view of the costs involved in filing a patent application it may be desirable before filing to obtain an indication of whether these criteria can be met. De Clercq & Partners can help you to assess whether your invention is likely to meet these criteria.

It is noted however that some national patents are granted without substantive examination. Thus, it may be possible to obtain a granted patent without complying with the requirements of patentability. This may be of interest for attracting investors or tax reductions (please see other FAQ on this topic). However, the validity of such a patent can be questioned when it is used in court to stop a third party from carrying out the invention.

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. Scientific theories, mathematical formulae, methods for doing business and game rules are not considered inventions in Europe and, therefore are also not patentable. However, the technical application of  information that is not patentable as such can sometimes lead to a patentable invention.

It should be noted that the criteria for what is patentable subject matter is different in Europe and e.g. in the United States. Thus, for some subject matter patents can be obtained in the US, while this will not be possible in Europe (and vice versa).

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. For the European patent office this essentially means that it has not been made available through either a written or an oral disclosure, or in any other way to a third party which was not bound by a confidentiality agreement. 

Novelty is thus assessed based on the “prior art”. The prior art includes all publicly accessible knowledge and publications that were available before the day of the filing. This encompasses both scientific and patent literature and any types of disclosures from a publication in a local paper to a blog on the internet. The language of the prior art is not relevant. For example, if the invention was described in a Korean or Japanese article in a local newspaper published before the filing date of the patent application, this is considered valid prior art. If such prior art is identified by the patent offices, it can compromise the patentability of the invention. The number of copies of a publication also does not affect the prior art value of a document – there may be a single copy available for public inspection, or limitless copies published on the Internet. In both situations, if the invention is described therein, it will be considered novelty-destroying.

In some countries a grace period is available. 

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'.

While the test of novelty is often fairly straightforward, the assessment of inventive step may be more difficult. The European patent office has developed the “problem-solution approach” to determine inventive step. Basically this involves determining which problem is addressed by the invention and whether a person in the technical field at the time of filing would be directly pointed to the solution offered by the invention, based on the information available to him from the prior 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.

As in most cases the interest of the applicant in the invention implies a potential commercial application, this requirement is often met. However, in the field of biotechnology, this requirement is also used by the European Patent Office to assess whether in fact the invention is at a stage that its industrial application can be immediately recognized. For instance, DNA sequences which are only described as such and for which no function is plausibly demonstrated, are not considered patentable based on lack of industrial applicability.

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.

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. 

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

• exclusivity (only the licensee is entitled to exploitation, possibly even to the exclusion of the licensor),
•  scope of use (rights may be granted only for some applications)duration,
• territorial scope, and
• licence remuneration

Licences are preferably drawn up by a lawyer specializing in intellectual property matters, in negotiations with the patent holder and his patent attorney. De Clercq & partners can provide you with professional advice in the drafting and/or negotiation of license agreements.

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. Where priority from an earlier application is claimed, it is still the filing date and not the priority date which is relevant for the calculation of the 20 year term. Where the application is a divisional or a continuation application, it is the filing date of the parent application which is relevant for determining the start of the 20 year term. The maintenance of a granted patent requires the payment of maintenance fees in each country where the patent is in force.

In some circumstances it may be possible to get an extension of protection for a specific product covered by  a granted patent, which will extend the term of protection above 20 years. This is referred to as a “supplementary protection certificate” (see What is an “SPC” below).

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. In order to address this problem, a system has been developed such that the maximum lifespan of a granted patent for pharmaceutical compounds and plant varieties can be extended under certain conditions. The supplementary protection certificate (SPC) is an extension of term of the patent for a patented product which is the subject of a market authorization. The term of an SPC is calculated based on the time required for obtaining regulatory authorization and is maximally five years.

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 the Industrial Property
• The Dutch Office for the Industrial 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. 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.

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.).

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.

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.

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.

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.

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.

A trademark is a distinctive sign or indication used by an individual or a legal entity to identify that the products or services with which the trademark appears originate from a unique source. It serves to distinguish its products or services from those of other entities.

As owner of an earlier registered trademark, you may oppose to the registration of a trademark that was filed on a later (priority) date if, amongst others:

• it is identical or similar with your earlier trademark and the goods or services for which registration is applied for are identical with the products or services for which your earlier trademark is registered;
• it is identical with or similar to your earlier trademark and the goods or services for which registration is applied for are identical with or similar to the goods or services for which your earlier trademark is registered, if there exists a likelihood of confusion on the part of the public on the territory in which your earlier trademark is registered; or
• it is identical with or similar to your earlier trademark with a reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of your earlier trademark.

The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, in some countries unregistered rights in a sign may also be enforced. These are often known as 'common law' rights. An unregistered sign is usually only protected within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.

Unauthorized use of a trademark is amongst others the use, without consent, of the same or a similar trademark for identical or similar products and/or services as those for which the trademark is protected and there exists a likelihood of confusion amongst the consumers as regards the origin of the products and/or services.

Apart from a few exceptions, trademark registration is acquired for an initial period of ten (10) years and trademark registrations may be renewed for subsequent periods of ten (10) years by filing a renewal application and paying the corresponding renewal fees.

Most European trademark offices examine a trademark application only on mere formal grounds (correct classification, name and address of the applicant,…) and on the trademark's inherent distinctive character. Upon completion of the examination and if no such (formal or absolute) grounds of refusal have been identified, the application is published for opposition purposes. If no opposition is filed within the prescribed opposition period, or if a possible opposition is rejected or withdrawn, the trademark application shall be allowed for registration and the registration certificate will be issued.

A search on Google or search engines alike may be a good indication of potential threats before adopting a new trademark. In most countries worldwide, however, trademark protection is acquired through a first-to-file system. It is therefore highly recommended to have an availability search performed prior to commencing the use of a new trademark or seeking trademark protection. Please do contact us should you wish to check the availability of your trademark. We will be happy to assist you with this process and provide you with our expert advice with regard to the availability of your trademark.

A trademark is available insofar as there are no earlier conflicting rights. This requirement constitutes a relative ground for refusal.

This means that a trademark shall not be registered upon opposition by the proprietor of an earlier right if, among others:

• it is identical or similar with an earlier trademark and the goods or services for which registration is applied for are identical with the products or services for which this earlier trademark is registered;
• it is identical with or similar to an earlier trademark and the goods or services for which registration is applied for are identical with or similar to the goods or services for which this earlier trademark is registered, if there exists a likelihood of confusion on the part of the public on the territory in which the earlier trademark is registered;
• it is identical with or similar to an earlier trademark with a reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark; or
• the use thereof can be prohibited based on a prior application for a designation of origin or a geographical indication; or
• the use of the trademark can be prohibited based on the existence of earlier rights on a non-registered trademark or of another sign used in the course of trade of more than mere local significance.

The protection of a trademark can be obtained only in relation to particular goods or services, which are divided into 45 classes according to the International Classification of Nice. This ‘principle of specialty’ is driven by the fact that  identical but clearly not conflicting signs could and should always be able to coexist on the market and in the registers, as is the case with, for example, the trademark Lotus, which has been registered in the name of different holders for cars, biscuits, watches and (formerly) tissues respectively.

Moreover, your trademark must also be put to genuine use. If your trademark hasn’t been used for five consecutive years for the goods or services it has been registered for, third parties can challenge your trademark for non-use and your trademark might be revoked in whole or in part. Therefore, while it might seem tempting to claim a wide range of goods and/or services, it should be taken into account that you might not be able to invoke the protection of your trademark or that you might even lose the registration for all or some of the goods or services covered when the trademark hasn’t been put to genuine use.

A trademark must be capable of distinguishing the products and/or services of one undertaking from those of other undertakings. This requirement constitutes an absolute ground for refusal.

This means that, upon examination by the competent authority, a trademark application will not proceed to registration in, among others, the following circumstances:

• if the trademark is devoid of distinctive character;
• if the trademark consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the products or service;
• if the trademark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade.

Trademark protection is acquired through application and registration in respect of goods and/or services of interest and within one or more territories. These territories may be single countries, but also greater regions such as the Benelux and the European Union. As regards the Benelux countries (Belgium, The Netherlands and Luxemburg), trademark protection can moreover only be granted to the whole territory of the Benelux and not to one of the countries separately.

Usually, the applicant seeks trademark protection in his country (or territory) of origin and then extends protection either through the Madrid System (International trademark registrations) and/or through national filings claiming priority from a first filing or not.

A trademark is typically a name, a word, a phrase, a logo, a symbol, a design, an image, or a combination of two or more of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, but can also be registered in some cases, such as those based on color, smell, sound, moving objects, etc...

As a matter of fact, any sign that meets the requirements of Availability and Distinctive Character can be registered, as long as they are capable of being represented, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

In order to qualify for registration, a trademark must meet the requirements of Availability and Distinctive Character.

A trademark may be designated by the following symbols:

• ™ for an unregistered trademark, that is, a trademark application or a trademark being used to promote or brand goods without seeking its registration
• ® for a registered trademark.

The use of these symbols is however not regulated and not mandatory in most European countries to invoke your trademark rights against third parties. You cannot of course use the ® symbol for a mark that is not registered, as this may constitute a criminal offence in some countries. In the United States, on the contrary, there are strict rules to abide by when using the ® symbol and the use thereof may grant additional rights to compensation to the holder when facing infringement of its rights.