Patents in foreign countries

As long as there is no such thing as a "world patent", it will remain necessary to apply for patents separately in various countries or regions in order to obtain protection outside the Netherlands as well. As far as the Netherlands and most other countries are concerned, it applies that nearly any commercial activity by a third party in which a patented invention is involved can be prevented on the basis of such a patent by the judicial authorities in that country. The term commercial activity is understood to include such activities as the production, the export, the import, the sale and the use for business purposes, etc. of the invention. Depending on the nature of the invention, the applicant may for example opt for the protection of the invention in countries where production facilities are present and/or in countries where there is a market for the invention.

 

Priority year

Most countries in the world have signed a treaty, the so-called Paris Convention for Protection of Industrial Property, under which an applicant is inter alia entitled, on the basis of his earlier patent application in any particular country, to file corresponding patent applications for the same invention in other countries or regions within 12 months from the first filing, which applications shall be given the same date (priority date) as the first patent application. The main advantage of this is that this so-called priority year can be used for evaluating whether it is advisable to incur the higher expenses involved in the filing of patent applications in other countries. This evaluation includes an investigation into the technical and commercial feasibility of the invention as well as an investigation into the feasibility of the patent application, in particular by having a novelty search carried out. As regards the commercial feasibility, a market study may be carried out with a view to setting up independent exploitation, or it may be attempted to find licensees or financiers who are willing to bear the costs of production and/or further patent protection. This commercial feasibility study may be extended to foreign countries. After all, his first application gives the applicant a priority right to the filing of an application in practically all countries for a period of one year. In order to be able to exploit the possibilities offered by the priority year to their full extent, an application should not be filed too early, in view of the risk that there will be insufficient insight into the chances of the invention at the end of the priority year. In that case it will be difficult to decide whether the filing of patent applications abroad is advisable. However, a patent application is preferably filed before the invention is discussed with third parties (see information at Secrecy). The patent attorneys of De Vries & Metman can advise you how to deal with these conflicting requirements.

 

The costs

Although a Dutch patent attorney can arrange for patent protection for Dutch inventors or entrepreneurs in all the countries of the world, he will have to collaborate with local patent attorneys who are qualified to act for the national office responsible for granting patents in the countries in question and who are most familiar with the local rules and regulations. This implies that in addition to expenses in respect of the fees imposed by the official bodies and the services of the Dutch patent attorney, also expenses in respect of the services of foreign patent attorneys will have to be charged. The acquiring of patent protection in foreign countries is thus a relatively costly affair. However, the (immeasurable) cost of not protecting your invention may be much higher. It may be advisable to work out, possibly in consultation with your attorney, in what countries it is advisable to make an investment in patent protection. De Vries & Metman have built up an extensive network of associate foreign patent attorneys, which enables them to offer guidance to you during the entire process of acquiring patent protection nearly worldwide.