Getting the Deal Through – Patents 2008

01 January 2009

Armand Killan

Patent enforcement proceedings

1 What legal or administrative proceedings are available for enforcing patent
rights against an infringer? Are there specialised courts in which a patent
infringement lawsuit can or must be brought?

Patent rights are enforced in civil proceedings. The District Court in The Hague is exclusively competent in the vast majority of patent matters (including infringement and nullity actions) according to the limitative listing in article 80 of the Dutch Patent Act of the Kingdom 1995 (Dutch Patent Act). There are exceptions to this rule of competence, for instance when infringement of a patent is at stake that is not a Dutch patent nor the Dutch part of a European patent.

The District Court in The Hague has an IP chamber with specialised judges.

2 What is the format of a patent infringement trial? To what extent are documents, affidavits and live testimony relied on? Is cross-examination of witnesses permitted? Are experts used? Are disputed issues decided by a judge or a jury? How long does a trial typically last?

The Netherlands has a sophisticated system of patent proceedings, due to being one of the three key countries (along with the UK and Germany) for patent litigation in Europe.

There are three formats for patent infringement proceedings:

  • preliminary injunction proceedings;

  • accelerated proceedings on the merits; and

  • (normal) proceedings on the merits.

In case of an ‘urgent’ need (a requirement loosely applied), preliminary injunction proceedings can be a modus operandi. These proceedings start with a writ after obtaining oral leave from the President of the District Court setting the date for service of the writ on the defendant and the date of the oral hearing. Sometimes,
this leave also contains the date on which the evidence has to be submitted to the President of the District Court and the adverse party. There is usually no exchange of written statements, although the defendant may choose to do so as a counterbalance to what is alleged in the writ. Any evidence that a party wishes to rely on must be submitted prior to the oral hearing. Unless the case is of a highly complicated (or technical) nature the President will hear each urgent patent case. It is advised to invoke only one or two patents in preliminary injunction proceedings. Preliminary injunction proceedings do have a provisional nature. To keep the
decision in effect, the decision needs to be followed by proceedings on the merits (usually within six months) according to article 1019i of the Dutch Code of Civil Proceedings (cf article 50-6 of the Agreement on Trade-Related Aspects of International Intellectual Property Rights, TRIPs).

Since the implementation of the EU IP Enforcement Directive in May 2007, a preliminary injunction may be issued by the judge ex parte, without hearing the other side. Generally, one needs to prove irreparable harm and the court may require security from the claimant.

Accelerated proceedings on the merits are the most favoured patent proceedings in the Netherlands. The plaintiff submits a draft writ to the court and applies ex parte for a written permission from the court. In this written leave the dates are fixed for, inter alia, the (ultimate) date of the service of the writ on the defendant, the submission of evidence by the parties, the statement of defence in principal (including possible counterclaim for nullity) by the defendant, the statement of defence in counterclaim by the plaintiff and the oral hearing. When the plaintiff does not follow this scheme, the proceedings will switch to (slower) normal proceedings on the merits.

Normal proceedings on the merits do not need any permission from the court. One serves a writ on the defendant. In contrast to the accelerated regime, the parties have an additional round of submitting written statements to the court in order to
respond to each others’ arguments, upon completion of which the case will be heard.

Patent proceedings are usually decided by a panel of three judges unless the proceedings are preliminary injunction proceedings, in which case the matter is decided by a single judge. There is no jury.

Parties to the patent proceedings may offer any evidence they deem suitable. Consequently, documents, products and affidavits, like (international) expert statements, are regular evidential instruments. The position of the plaintiff when it comes to the discovery of evidence has been improved owing to the implementation of the EU IP Enforcement Directive in May 2007 (see
later questions).

Witnesses often provide their testimony in a witness statement, to be filed with the court during the proceedings.

Parties may use their own expert and usually this expert provides an expert opinion in an expert statement, to be filed with the court as an exhibit during the proceedings. Court-appointed experts are rarely used but this may be possible when the issue is of a highly complicated or technical nature.

There is no cross-examination of witnesses or experts during trial. Pre-trail witness and expert hearings are possible though.

The court rarely appoints experts, except if, for instance, additional investigations need to be made to examine sufficient disclosure of prior art.

The trial hearing will typically take two to three hours in preliminary injunction proceedings and four to five hours in full proceedings.

3 What are the respective burdens of proof for establishing infringement, invalidity, and unenforceability of a patent?

A plaintiff needs to substantiate its argument that the patent is infringed, invalid or unenforceable. If disputed, the plaintiff needs to prove this by documents, products, expert and witness statements. The court will assess the proof submitted to the court and find whether the patent is infringed, invalid or unenforceable. The court has its own discretion as to weighing the strengths of the proof submitted.

4 Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patentee can start infringement proceedings. A licensee, pledge holder or distributor cannot do so unless it has obtained power of attorney from the patentee to start infringement proceedings in the name of the patentee.

An accused infringer can start declaratory non-infringement proceedings if it has an interest to do so. This interest may, for instance, arise when the patentee warns of patent infringement or refuses to confirm that it will not sue for infringement.

5 To what extent can someone be liable for inducing or contributing to patent infringement?

A party knowingly inducing infringement may under circumstances be liable for this on the basis of tort (article 6:162 of the Dutch Civil Code), but the more elaborate version of this is indirect patent infringement as laid down in article 73 of the Dutch Patent Act. This article is based on the applicable provisions in the draft Community Patent Convention.

Article 73 of the Dutch Patent Act prohibits the commercial supply of means relating to an essential element of the invention for putting the invention into effect, under the condition that such supplier knows or it is otherwise clear that such means are suitable and destined for putting the invention into effect and the means are supplied to others than those persons who are authorised to put the invention into effect on the basis of articles 55-60 of the Dutch Patent Act (for instance, a licensee). This prohibition is limited to the supply and the putting into effect of the invention in territory of the Netherlands (in case of a Dutch patent, this also includes the Netherlands Antilles).

6 To what extent can activities that take place outside of the country support a charge of patent infringement?

Foreign activities may be relevant in a Dutch patent infringement case, for instance importing infringing goods from abroad into the Netherlands or offering goods from abroad (such as via the internet) in the Netherlands for applying the invention in the Netherlands.

At the same time, the simple offering of infringing goods to foreign countries whilst no infringing acts are committed in the Netherlands will not be infringing. Also, the production of parts in the Netherlands for final assembly and further offering or sale outside the Netherlands will normally not be considered as an infringing act.

The Dutch Patent Act is restricted to the Netherlands (and Netherlands Antilles when it concerns a Dutch patent). However, traditionally Dutch courts have – under certain conditions – accepted extraterritorially jurisdiction as well when it comes to
rulings on foreign patents. This has been rather heavily restricted as far as foreign parts of a European patent are concerned by judgments of the ECJ in the cases GAT/Luk and Roche/Primus.

As things stand at the beginning of 2008, cross-border injunctions are no longer possible against defendants from other European Union member states.

However, cross-border injunctions remain possible against Dutch defendants and non-European Union defendants. They can be granted in preliminary injunction proceedings, as the validity of the patent is not decided in that type of proceedings. They can also be granted in full proceedings, but the cross-border part of such proceedings needs to be suspended as soon as a validity defence is brought until the validity has been decided by the courts of the countries for which the injunction is sought.

7 To what extent are ‘equivalents’ of the claimed subject matter liable for

Dutch patent law does not only provide protection against literal infringements. Under particular circumstances, protection is available against equivalents. In general, an equivalent falls within the scope of protection when it is obvious that the nonliteral variant is a mere replacement of what is described in the patent, thereby taking due account of the balance between a fair protection for the patentee and the legal certainty for third parties (see the Protocol on article 69 EPC). Dutch courts apply the function-way-result test as well as the test of insignificant differences.

8 What mechanisms are available for obtaining evidence from an adverse party, from third parties or from outside the country, for proving infringement, damages or invalidity?

There are several mechanisms to obtain evidence for proving infringement, damages or invalidity.

Traditionally, one could, for instance, apply a conservatory seizure of infringing goods and have them stored with a third party for inspection and by that have the infringing character reconfirmed.

According to article 843a of the Dutch Code of Civil Proceedings (in conjunction with article 1019a of the Dutch Code of Civil Proceedings) one may request the other side to submit copies of certain, specific documents. In IP matters, this requirement is extended and the request may also apply to ‘other evidence’ that is in the possession or control of the other side. The condition for applying this instrument is that there is a ‘legal relationship’ between the claimant and the other side. A tort (and a patent infringement is considered as such) qualifies for this. The request can be rejected for particular reasons (such as confidentiality issues) or when the documents are not necessary for a proper application of justice.

The ‘discovery’ position in IP and therefore also in patent proceedings has been improved owing to the implementation of the EU IP Enforcement Directive in May 2007. This implementation (inter alia articles 1091a–1019i of the Dutch Code of Civil Proceedings) introduces instruments to secure proof of infringement. Apart from the conservatory evidential seizure, there is a possibility of (pre-trial) descriptive seizure and sample taking, via a bailiff. In case of irreparable harm or the possible loss of evidence, the court may apply those instruments ex parte.

Since such measures in patent matters (most probably with the exception of ex parte injunction) have regard to article 80 of the Dutch Patent Act, the District Court in The Hague is not granted exclusive competence, and other courts may be relevant.

The counterbalance against ex parte measures is the so-called protective letter. If a party fears ex parte measures by a patentee, it may inform the court beforehand in detail of its non-infringement and invalidity arguments in a protective letter and request the court to take account of its arguments, and may also request to be heard in order to prevent the ex parte measure. It is up to the discretion of the court as to what extent the court will take account of this protective letter.

As of May 2007, the court The Hague has introduced a system of filing protective letters against ex parte measures (including ex parte injunctions). With regard to the non-exclusivity of the court The Hague when it comes to the abovementioned
measures, it must be noted that not all other Dutch courts have a similarly sophisticated system in place for registering protective letters.

Finally, it should be mentioned that under some circumstances the court is willing to issue auxiliary orders, like the details of the supplier and purchasers and reports from an independent accountant stating, for instance, the number of infringing goods, purchase and sales prices and profits.

9 What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

Preliminary injunction proceedings are swift and usually take four to eight weeks. The oral hearing before the President of the District Court is two to six weeks after the service of the writ. A decision is rendered two weeks after the oral hearing.

Accelerated proceedings on the merits take eight to 10 months. A decision is normally rendered six weeks after the oral hearing.

Normal proceedings on the merits take 18 to 24 months; in these proceedings a decision is usually rendered six weeks after the oral hearing.

10 What is the typical range of costs of a patent infringement lawsuit before
trial, during trial and for an appeal?

The typical cost of a patent infringement case is around EUR60,000 to EUR200,000. Appeal proceedings are, on average, a bit less

11 What avenues of appeal are available following an adverse decision in a patent infringement lawsuit?

The Court of Appeal in The Hague has a full review and no permission for such appeal is required. Additional evidence can be brought. The appeal will be heard and ruled on by a panel of three judges of a specialised IP chamber, regardless of the format of the proceedings.

Before the Court of Appeal, preliminary injunction proceedings take longer since the proceedings do contain an exchange of written statements. However, in urgent matters, the Court of Appeal may grant leave for expedited preliminary injunction

As far as proceedings on the merits are concerned, the Court of Appeals does not provide the accelerated track, bringing the duration of proceedings to approximately 18 to 24 months.

Finally, the Supreme Court, also located in The Hague, is able to decide on the question as to whether the law has been applied correctly by a lower court and whether the lower court’s decision has been motivated correctly. The Supreme Court cannot decide on the facts of the case. The Supreme Court decides each case with the regular full chamber.

Supreme Court litigation takes 18 to 24 months.

12 To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

As far as competition rules are concerned, a patentee might be liable for abuse of its dominant position. This should be tested in conformity with European and national competition rules. However, it is generally believed that the mere invoking of a patent will not be such an abuse.

The mere invoking of a patent as such will normally not result in any other liability of the patentee even when the patent is revoked or invalidated. The exception to the rule may be when the patentee knows or had good reasons to assume that it invoked an invalid patent, in which case a patentee could be liable on the basis of a tort (article 6:162 of the Dutch Civil Code). However, there is no obligation to ask for a legal opinion before asserting a patent.

13 To what extent are alternative dispute resolution techniques available to resolve patent disputes?

There is no rule excluding patent disputes from ADR. However, this is rarely sought.

Scope and ownership of patents

14 Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Not all types of invention can be covered by a patent.

According to article 2 section 2 of the Dutch Patent Act, the following are not considered inventions:

  • discoveries, including scientific theories and mathematical methods;

  • aesthetic creations;

  • schemes, rules and methods for performing mental acts, playing games or doing business, including computer programs;

  • business methods; and

  • presentations of information.

The above mentioned non-inventions should be limited to ‘as such’, which means that those exceptions may very well contribute to patentability. For instance, a scientific theory may be applied in a patentable product or method (resulting in that application being protected, not the theory itself) or when software is combined with a physical product or a technical method.

Finally, according to articles 3 and 7 of the Dutch Patent Act, inventions that are considered non-patentable are:

  • inventions where the commercial exploitation would be contrary to public order or morality (this includes methods of cloning humans, methods of changing the germinal genetic identity of humans and the use of human embryos, methods of changing the genetic identity of animals that will cause suffering without considerable medical benefit for humans
    or animals, and methods that jeopardise the life or heath of humans, animals or plants or cause considerable damage to the environment); 

  • the human body in its several stages of formation and development as well as the mere discovery of a part thereof, including full or partial gene sequences;

  • medical treatments and diagnostic methods as such. (Due to a change of the European Patent Convention that came into effect on 13 December 2007, patents can now be granted for the use of a known drug for a specific medical indication and also for further medical indications without using the
    Swiss-type format);

  • plant or animal varieties;

  • methods of a predominantly biological nature, completely consisting of natural phenomena, such as cross-fertilisation and selection, for the reproduction of plants or animals including products obtained therewith; and

  • inventions that contravene certain articles of the Biodiversity Treaty.

15 Who owns the patent on an invention made by a company employee, an independent contractor, or multiple inventors? How is patent ownership officially recorded and transferred?

In case of an employee, the company is entitled to apply for the patent if the nature of the employee’s work includes creating inventions as protected by the patent. However, the employee may under certain circumstances be entitled to a monetary compensation when his or her salary cannot be considered as coverage
for missing out on the patent. When the company is entitled to the invention, the company can apply for the patent and thus register itself as the owner.

In case of an independent contractor it is strongly advised to agree on the ownership, as it is unclear as to whether the principal is able to claim ownership.
In case of multiple inventors, a patent can be co-owned and recorded as such.
The ownership is transferred via an agreement and the execution of a deed of assignment by competent parties. This needs to be registered with the patent office.


16 How and on what grounds can a patent be invalidated?

According to article 75 of the Dutch Patent Act, a Dutch patent or the Dutch part of a European patent can be invalidated when:

  • the patented matter does not meet the requirements of novelty,
    inventive step or commercial applicability;

  • the patented matter is by statute considered a non-invention (see above);

  • the patented matter is by statute considered non-patentable (see above);

  • lack of disclosure or non-enablement (which is hardly ever awarded);

  • added matter;

  • extension of the scope of protection; and

  • non-entitlement.

17 Is there an ‘absolute novelty’ requirement for patentability, and if so, are there any exceptions?

Yes, there is an absolute novelty requirement. The exceptions are disclosure up to six months before the filing that is the direct or indirect consequence of an abusive behaviour (for instance breaching a confidentiality agreement) or display in a specific group of governmental or internationally acknowledged fairs. Lack of novelty has to be based on one prior art document, but this may be combined with the general knowledge of the person skilled in the art.

18 What is the legal standard for determining whether a patent is ‘obvious’ or ‘inventive’ in view of the prior art?

The legal standard is an objective one: whether in the light of the prior art the invention is not obvious to a person skilled in the art. The problem-solution approach is the most common one to apply and one may combine documents from prior art. Inventive step indicators may be the market need, existing prejudices and
unexpected technical effects.

19 Are there any grounds on which an otherwise valid patent can be deemed
unenforceable owing to misconduct by the inventors or the patent owner, or for some other reason?

Competition law may intervene with the enforceability, but that will rarely be the case. A specific issue on this might be patent pools and the setting of industry standards and the resulting obligation of first offer a licence on fair, reasonable and nondiscriminatory terms for essential patents.

Unenforceability may also result from acts of the patentee that may lead to an estoppel, waiver or result from statutory limitations.


20 What monetary remedies are available against a patent infringer? When do damages start to accrue? Do damage awards tend to be only nominal, provide fair compensation or be punitive in nature?

The patentee may claim damages or the surrender of profits made by the defendant (one has to choose between damages or surrender of profits). The patentee may claim damages on behalf of a licensee or pledge holder but it may also claim monetary compensation in its own name when joining the patent infringement proceedings. The licensee or pledge holder may also independently
claim such monetary compensation when agreed with the patentee. Damages can be calculated as reasonable royalty.

Under certain condition, the patentee may claim reasonable compensation for infringing acts in the timeframe after publication (or registration) of the application and prior to the grant of the patent.

Damages for infringing a granted patent as of the moment the infringer is aware of the infringement under article 45 of TRIPs.

The reasonable compensation prior to grant accrues as of thirty days after a detailed notice of infringement is served by the bailiff upon the defendant. There is no possibility of obtaining punitive compensation.

21 To what extent is it possible to obtain a temporary injunction or a final injunction against future infringement? Is an injunction effective against the infringer’s suppliers or customers?

Temporary or final injunction against future infringement can be obtained (and is usually the aim) in preliminary injunction proceedings or (accelerated) proceedings on the merits respectively. The injunction is in effect between the parties in litigation and thus does not work automatically against suppliers or customers unless they are parties to the litigation.

22 In what conditions can a successful litigant recover costs and attorneys’ fees?

Owing to the implementation of the EU IP Enforcement Directive, the winning party is entitled to full remuneration of its costs (lawyers’ and patent agents’ fees), but subject to a reasonableness test applied by the court. One has to claim such costs explicitly.

23 Are additional remedies available against a deliberate or wilful infringer? If so, what is the test or standard to determine whether the infringement is deliberate?

There are no additional remedies in particular and it is generally felt that the available legal instruments suffice in case of wilful infringers as well, although a court will more easily issue auxiliary orders such as the destruction of infringing goods, details of the supplier and purchasers and reports from an independent accountant stating, for instance, the number of infringing goods and profits in case of wilful infringement.

24 What is the time limit for seeking a remedy for patent infringement?

There are no specific time limits for seeking a remedy for patent infringement, nor for preliminary injunction proceedings since the Dutch Supreme Court decided that each and any new infringement may call for new urgency. However, it is advised
not to wait too long before starting such preliminary injunction proceedings, especially since it may affect auxiliary orders.

The single fact that the patentee did not act for quite some time while being aware of the infringement will not easily result in an estoppel or waiver of rights to stop the infringement.

No claims can be based on infringements that occurred more than five years ago. In case of ongoing infringements, this limitation term is applied on a day-by-day basis.

25 Must a patent holder mark its patented products? If so, how must the marking be made? What are the consequences of failure to mark?

There is no such obligation. Third parties are considered to be aware of patents through the public register.


26 Are there any restrictions on the contractual terms by which a patent owner may license a patent?

There are no particular restrictions. The licence applies to all exclusive acts and until the expiration of the patent, unless otherwise agreed. European law restrictions for technology transfers have to be taken into account.

27 Are any mechanisms available to obtain a compulsory licence to a patent? How are the terms of such a licence determined?

The Dutch Patent Act provides for mechanisms for compulsory licences. A compulsory licence in case of general, national interests (for instance, military ones), can be granted by the Minister of Economic Affairs if the patentee refuses to grant a licence voluntarily. This has not happened for decades.

Further, one can apply with the court for a compulsory licence if the patentee (or a licensee) has not applied the invention in one of the states of the EU or EER after three years from the grant or in case of a dependent patent that includes an important technical advance of considerable economic interest. The terms of such licence need to be worded in the writ but the court has the discretion to decide differently, also in respect of the royalty.

Patent office proceedings

28 How long does it typically take, and how much does it typically cost, to
obtain a patent?

National Dutch patent applications are granted without substantive examination, so there is no examiner who might refuse grant for lack of novelty or inventive step. After filing a nullity action, the court will decide on nullity.

The grant will take place no later than 18 months after the priority date of filing date in case no priority is claimed. In practice, a registration patent without search report can be obtained at very short notice, usually within a few weeks. If a search report
is requested but not yet available, the grant will be delayed until no later than two months after the search report became available.

As to the search report, it is noted that at present this is not mandatory. In case no search report is requested, the patent will be granted with a maximum duration of six years, and with a search report the maximum duration will be 20 years.

This will, however, change when amendments to the Dutch Patent Act enter into force (expected in mid-2008). The request for a search report will become mandatory (be it that a grant without substantive examination will still be possible) and all future patents will have a maximum duration of 20 years.

At present an application needs to be in Dutch. This will also change in 2008, meaning that the application may be filed in either Dutch or English, albeit that the claims must always also be in Dutch.

29 Must an inventor disclose prior art to the patent office examiner?

For national Dutch patent applications, this is not required.

30 May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

Yes, a national Dutch divisional application may be filed up to the day before grant of the national Dutch mother application. No subject matter may be added (for which the test is similar as applied by the European Patent Office).

31 Is it possible to appeal an adverse decision by the patent office in a court of law?

This is still undecided.

32 Does the patent office provide any mechanism for opposing the grant of a

No, but there is the possibility to request the Dutch Patent Office for advice on the novelty and inventive step of a national Dutch patent. This procedure takes several months. This advice is required by the plaintiff in case the nullity of a national Dutch patent is requested in court.

33 Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

No, in the Netherlands the principle of ‘first to file’ applies. Thus, the party who first filed an application (or who has the earliest convention priority date) is the party entitled to a patent.

34 Does the patent office provide procedures for modifying, re-examining and revoking a patent? May a court amend the patent claims during a lawsuit?

For national Dutch applications, there is the possibility to file (at the Dutch patent office) a deed limiting the claims. The Dutch patent office does not provide procedures for re-examining or revoking a patent, except the advice procedure discussed above. The court may nullify a patent in part under the condition that the remainder fulfils the requirements set by the Supreme Court.

35 How is the duration of patent protection determined?

The present situation is 20 years as of the application or priority date of the patent. In case of a national Dutch patent application for which no search report was requested, the maximum duration is six years (this short term patent will soon be abolished (see below).

Updates and Trends

The most significant development in case law is the application of new legal instruments coming from the implementation of the EU IP Enforcement Directive. This has not only resulted in better evidence discovery, pretrial ex parte (evidential) seizures, sample taking and recovery of attorneys’ costs, but also opens the way to ex parte injunctions and has resulted in the introduction of protective letters.

Armand Killan

Tel: +31 70 353 88 00
Fax: +31 70 353 88 82

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2597 AW The Hague
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Armand Killan


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