The Netherlands Pays Bas Niederlande. Report Q189. in the name of the Dutch Group

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1 The Netherlands Pays Bas Niederlande Report Q189 in the name of the Dutch Group Amendment of patent claims after grant (in court and administrative proceedings, including re examination proceedings requested by third parties) Questions 1) Does your national law permit post grant amendment of patent claims? Are utility models if available treated the same way as patents or differently? If so, what are the differences? The Dutch patent system is a registration only system, which is described in the Patent Act 1995 (hereafter: ROW 1995). The claims of a patent application are not examined by the patent office and a patent based on the patent application is granted eighteen months after the date of filing or after the first date of priority, whichever date comes first. The Dutch patent system encompasses two kinds of patents: patents for the duration of 6 years and patents for the duration of 20 years. A patent for the duration of 20 years is obtained when a request for a search of the state of the art with respect to the subject matter of the patent application is filed at the patent office prior to the grant of the patent. When no such request is filed, the patent will be granted for the duration of 6 years. In addition to the two kinds of patents granted under ROW 1995, European patents may have their effect in The Netherlands. European patents are governed by the same legal provisions and have the same legal consequences as patents granted under ROW The only form of post grant amendment of patent claims that is permitted by ROW 1995 is the right of the patentee to surrender his patent (article 63 of ROW 1995). ROW 1995 also permits a patentee to surrender his patent in part. Surrender occurs by the registration of a deed to this effect in the patent register. In practice not so many deeds of that kind are registered in the patent register: in the period from between 8 and 22 of such deeds have been registered per year. 2) Who is entitled to request post grant amendment of patent claims under your national law? The patentee is the one who is entitled to request surrender of his patent. As explained above, surrender occurs by the registration of a deed to this effect in the patent register. However, the patent office shall not register the deed as long as there are persons who, by virtue of documents entered in the patent register, have registered rights in the patent or have received licenses or have commenced legal proceedings concerning the patent, and these persons have not consented to the surrender. In addition, third parties can request the court pursuant to article 75 of ROW 1995 to invalidate a patent wholly or in part. As soon as a decision in an invalidation proceeding has become res judicata, the most diligent party can request to make an entry to this effect in the patent register. Such requests are not often made: in the period three of them have been registered. 1

2 3) What is the procedural framework for requesting post grant amendment of patent claims under your national law, in particular: What procedures (judicial, administrative or other) are available for dealing with requests for post grant amendment of patent claims under your national law? The request of a patentee to surrender his patent wholly or in part is an administrative procedure. The request to the court of a third party to invalidate a patent wholly or in part is a judicial procedure. Are all of these procedures freely available under your national law to those wishing to request post grant amendment of patent claims, or does the law give priority to certain procedural measures in certain situations? The administrative procedure relating to a request to surrender a patent wholly or in part is only available to the patentee. The judicial procedure relating to a request to the court to invalidate a patent wholly or in part is available to everyone. Article 63 section 2 of ROW 1995 provides that the patent office shall not execute the administrative procedure relating to a request to surrender a patent as long as there are persons who, by virtue of documents entered in the patent register, have commenced legal proceedings concerning the patent, and these persons have not consented to the surrender. At the moment there are discussions in the Netherlands whether the legal proceedings referred to in article 63 section 2 comprise the invalidation proceedings pursuant article 75. When the outcome of the discussion is yes, then the judicial procedure is given priority over the administrative procedure in the conditions mentioned above. Otherwise, it should be possible for the judicial and the administrative procedure to be followed concurrently. At the time of drafting this report, there is no clarity about the outcome of that discussion yet. Is it possible under your national law for patentees to make multiple subsequent amendments of patent claims directed towards individual alleged infringers? Under the Dutch patent system it is possible for a patentee to file subsequent requests for registration of a deed of surrender. Each request can be aimed at proceeding against different alleged infringers. After registration of such a deed in the patent register, a third party like the alleged infringer can object to the amended patent claims and request invalidation pursuant to article 75 of ROW 1995 of the amendments. The conditions for allowing such post grant amendments will be discussed under 4). Who is entitled to amend claims? Is this limited to courts or do also the patent offices have the competence to amend claims? Please limit the answer to a general description of the proceedings avoiding discussion of procedural details and peculiarities. The patentee is entitled to amend claims. The amended claims are not examined automatically. After the amended claims have been registered as a deed of surrender in the patent register, a third party can request the court pursuant to article 75 of ROW 1995, to invalidate the amended patent. The court can invalidate the amended patent wholly or in part, but the verdict will not automatically be registered in the patent register. 2

3 4) What are the substantive conditions for allowing post grant amendment of patent claims under your national law, in particular: Is there a distinction in your national law between the remedies available to patentees/ third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? In what ways may patent claims be amended post grant under your national law? Is it a requirement (or a possibility) under your national law that the description/ specification be amended to correspond with amendments of the claims? Is it possible to make amendments for the purposes of clarification and/or correction of errors? The Dutch Patent Act does not contain specific provisions on the amendment of a patent after grant. In jurisprudence, however, certain amendments of the patent claims after grant have been allowed. One could make a distinction between amending the claims, for example by inserting language taken from the specification, and combining a main claim with one or more dependant claims, to arrive at a new main claim. Article 138 paragraph 2 EPC seems to hint to this distinction where it provides that if the grounds for revocation of Article 138 par. 1 EPC only affect the patent in part, revocation shall be pronounced in the form of a corresponding limitation of the patent. This distinction is, however, not made in Dutch jurisprudence. It has been suggested that Dutch law makes make a distinction between amendments with retroactive effect, such as the amendments proposed in the context of nullity proceedings, and those made in the context of a partial renunciation of the patent, an option that exists for patents granted under the Dutch Patent Act only (see District Court of The Hague, Ambaflex International v. Wals Systems et al., 10 April 2002, BIE 2002/38). The justification for this distinction is, however, not very convincing, as legal certainty is not only important in case of retroactive effect, but also in case of changes with effect ex nunc. The Dutch Patent Act does not provide for a possibility to amend the patent for the purpose of clarification and/or correction of errors. Such amendments would, however, seem possible if they are triggered by invalidity arguments and comply with the requirements set out below. Whether these amendments will also be allowed if they are not provoked by invalidity arguments is questionable. For amendments proposed in the context of nullity proceedings each change of the patent claims as granted should meet certain conditions to be allowable. In fact, a departure from the claims as granted is only a possible if for the man of average skill in the art who has examined the patent as well as the prior art at the priority date, it is sufficiently clear where the boundaries for protection as provided by the patent, in as far as valid, lie (see Supreme Court, Spiro Research B.V. v. Flamco B.V., 9 February 1996, BIE 1996/94). For that purpose it is not only required that one may formulate an addition to the patent which draws these boundaries sufficiently clear, in retrospect. The addition should also be sufficiently obvious to the man skilled in the art in advance, in order for him to, based on the patent in combination with the state of the art at the priority date, independently arrive at the conclusion that the patent should only have been granted with the limitation as provided by the addition and is valid within the narrower boundaries drawn thereby. Moreover, it needs to be sufficiently clear for the man of average skill in the art that the addition merely limits the existing patent and does not result in patent different from the one for which revocation was requested. 3

4 The first requirement (possibility to formulate an addition in retrospect) and the third requirement (it is sufficiently clear that the addition merely limits and does not result in different patents) are arguably in line with the requirements set out in Articles 123 and 138 of the EPC (see Opinion of the A G in Supreme Court, Van Egmond Mechanisch Transport B.v. v. Wiva Verpakkingen B.V., 16 February 2001, BIE 2002/26). The second requirement (addition is sufficiently obvious), however, is arguably an additional requirement not reflected in the EPC. It is this additional second requirement that has caused the courts to decide that in cases where the patentee has suggested several possibilities to amend the patent the patent should be revoked in its entirety (see Supreme Court, Bogaard Beheer B.V. v. Installerende Partners Bouw B.V., 21 February 2003, BIE 2004/29 and Court of Appeal, Parteurosa S.A. et al. v. Fokker Special Products B.V. et al., 24 maart 2005, BIE 2006/8). According to the courts, the suggestion of several possibilities already shows that it is not obvious or predictable for the man skilled in the art in which form the patent may be maintained. This application of the second requirement has triggered much debate in the Netherlands. As noted, the above requirements were formulated in the context of partial invalidity of the patent. According to case law these requirements do not apply to partial renunciation of patents granted under the Dutch Patent Act, as such renunciation only has effect ex nunc (see District Court of The Hague, Ambaflex International v. Wals Systems et al., 10 April 2002, BIE 2002/38). In view of the limited effect in time, one may, however, still request the revocation of the patent in its original form, in which case the above requirements will become relevant. In some cases, the courts have considered that the lack of a proposal for an amended specification prevented a decision on the patentability of proposed amended claims (see considerations of the Court of Appeal in Supreme Court, Spiro Research B.V. v. Flamco B.V., 9 February 1996, BIE 1996/94, and President of the District Court of The Hague, A.J.J. Brock v. V.o.f. N.J. Veldman, 13 May 1998, BIE 1998/55). According to these cases, the lack of a proposal for an amended specification prevented the court from judging whether the requirements as set out above were satisfied. 5) What are the consequences for third parties of post grant amendments of patent clams under your national law, in particular: What are the consequences for third parties liability for patent infringement where patent claims are amended post grant? Are amendments effective only inter partes or, conversely, erga omnes, including in relation to previously decided cases? Are amendments effective only ex nunc or also ex tunc? Does that depend on the context in which the amendment is made? We distinguish post grant amendments as a result of: a) a decision of the Opposition Division or Board of Appeal to maintain a European patent in amended form on the basis of amendments made by the proprietor of the patent during opposition proceedings b) a decision of a Dutch court which partially invalidates the Dutch part of a European patent or Dutch patent, and c) a registration of a deed in the patent register stating that the patent proprietor surrenders its patent in part. 4

5 a) Post grant amendments during EPO procedures: ex tunc and erga omnes With respect to post grant amendments under a), Article 50(1) Patents Act of the Kingdom provides in harmony with Article 68 EPC that a European patent shall be deemed not to have had the legal consequences referred to in Articles 53 (exclusive acts), 72 (reasonable compensation for use of application) and 73 (contributory infringement) from the outset insofar as the patent is entirely or partly revoked during opposition proceedings. Thus the amendments are effective ex tunc. However, Article 50(2) provides that the retroactive effect of the revocation shall not affect: a) a decision, which is not a temporary order as a result of summary proceedings, relating to acts that conflict with the exclusive rights of the patent proprietor, referred to in Articles 53 and 53a, or acts as referred to in Articles 72 and 73 which had become res judicata and had been enforced before the revocation; and b) an agreement (including a patent license) concluded prior to the revocation, insofar as it was also performed prior to the revocation. However, a court may decide on equity grounds that repayment can be demanded in respect of payments made on the basis of this agreement to the extent justified by the circumstances. The amendments are effective erga omnes once the decision of the Opposition Division or Board of Appeal is a final non appealable decision 1. b) Post grant, court imposed amendments: ex tunc and erga omnes With respect to post grant amendments under b), Article 75, Sections (5) and (6) Patents Act of the Kingdom contain mutatis mutandis the same provisions as Article 50, Sections (1) and (2). Thus, in principle, post grant amendments by a court are effective ex tunc. The amendments are effective erga omnes once the court decision is a final non appealable decision. As long as the decision has not become final and decisive, the post grant amendments will only have an inter partes effect. Although post grant amendments are effective erga omnes once the court decision is a final non appealable decision, it may be hard for third parties to learn about the post grant amendments. This is because under Dutch law such final court decisions are not automatically registered in the patent register. Article 75(4) provides that the nullity writ must be recorded in the patent register within eight days of its date of issue. However, in practice this is not always done since the sanction is only that if the entry is not made, the plaintiff shall be obliged to pay compensation for damages suffered by third parties, which, after expiry of the time limit and prior to the making of the entry, acquired in good faith rights affected by the partial invalidation. Article 75(9) provides that once a decision in nullity proceedings is a final non appealable decision, an entry to this effect shall be made in the patent register at the request of the most diligent party. However, there is no sanction for non complying with this rule. In practice, nullity decisions are often not registered in the register. 1 If the European patent has been amended during opposition proceedings, a revised translation must be filed within three months with the Dutch Patent Office. If this is not done, the (amended) patent shall be deemed not to have had legal consequences from the outset (Article 52(6)). 5

6 c) Voluntary post grant amendment by deed: ex nunc or ex tunc and erga omnes With respect to post grant amendments under c), the Hague District Court, in Ambaflex Intl. vs. Wals Systems (decision of April 10, 2002, BIE 2002, no. 38, p. 463) held that a partial surrender of a patent by a deed filed in the register by the patent proprietor (Article 63 Patents Acts), does not have retroactive effect. The (partial) surrender has an effect erga omnes once the deed is registered. Subsequently, a patentee is allowed to file in the register further deeds of surrender, which are effective erga omnes. Later deeds do not affect previously decided cases. In practice, it has happened that a patentee filed a deed mentioning that the patent was voluntarily partially surrendered as per the date of grant, so as per a date in the past. The question is whether such a deed indeed creates an ex tunc effect vis à vis third parties in the context of enforcement. We think it does; the patentee should no longer be free to enforce the patent in its old form for the period prior to registration of the deed of surrender. In our view, in such a case the restrictions of the retroactive effect of Articles 50(2) and 75(6) must be applied by analogy. However, there is no case law on this subject. II) Proposals for substantive harmonisation The Groups are invited to put forward their proposals for adoption of uniform rules, and in particular to consider the following questions: 6) Should post grant amendment of patent claims be permitted? The Dutch Group agrees with the starting point in the introduction to the questions according to which, on the one hand the patentee should be awarded for his invention in an appropriate manner while, on the other hand, for third parties a reasonable legal certainty with respect to the question in what limited from a partially invalid patent may remain valid. For the determination what is an appropriate degree of freedom of amendment of a patent after grant, the considerations would seem to be similar to the considerations for the determination what is a fair scope of protection. With respect to scope of protection, the Resolution Q142 states that There must be a fair balance between the disclosure and the breadth of the claims. Thus, it ultimately boils down to the consideration that the patentee should be awarded with a scope of protection that is fair in the light of the technical contribution represented by the invention disclosed in the patent. After grant of a patent, it is sometimes found that the scope of protection is too broad when considered in relation to the technical contribution represented by the invention disclosed in the patent. The cause of such a new finding may be an argument not previously considered and/or a new fact, typically new information with respect to prior art that was already available at the priority date of the patent. It was already held in resolution Q142, that a patentee should be allowed to restrict a claim to its valid content if it is found after grant that the scope of protection is too wide in relation to what has been disclosed. The Dutch Group is of the opinion that this resolution should of course apply irrespective of the question whether the scope of protection is found to be too broad because of a new argument or because of a new fact that sheds a different light on what is actually the technical contribution residing in the disclosure contained in the patent. Since, moreover, the most practical and clear way in which a reformulation of the scope of protection of a patent can be achieved is by way of amendment of patent claims that determine the scope of protection, the Dutch Group is of the opinion, that post grant amendment of patent claims should be permitted. 6

7 7) Who should be entitled to request post grant amendment of patent claims and who should have the competence to amend? A patent is in principle a property of the patentee. It should therefore be the responsibility of the patentee to request amendment of a patent where this seems necessary to restrict the patent to a valid content. A right of a third party to request post grant amendment would only seem to be of practical significance in the sense that third parties should have the opportunity to request partial revocation, for instance where there are clearly no arguments against maintenance of a patent in a more limited form or where the third party has no interest in full revocation of a patent. Therefore, the Dutch Group is of the opinion that third parties should be entitled to request partial revocation and that for dealing with such a request no additional procedures are required beyond the inter partes procedures that are available for requesting full revocation of a patent. With respect to available procedures, the Dutch group sees no feasible opportunities of harmonisation since the available procedures are strongly determined by and intertwined with national legal systems and patent granting procedures. For the question who should be authorized to amend claims, it seems useful to consider various situations that may occur in practice and for which the available amendment procedures should provide a solution. Firstly, it may be the patentee who wants to restrict the patent, for instance in view of newly discovered prior art. Secondly, the patentee and a third party may be in a discussion over the validity of the patent and have an interest in having the patent re examined. Thirdly, the patentee and a third party may be involved in court proceedings. In the first two cases, it would be most expedient if the authority that has granted the patent or that is responsible for its registration is also authorized to amend the claims. For the question whether that should be possible with or without examination of the amendments, the most logical and consistent solution would be to require examination for patents granted after examination and not to require examination of the amendments for registration patents. In the situation where amendment of the claims is an outcome of a court procedure, it would be most efficient not to require further substantive involvement of the authority that has granted the patent or that is responsible for its registration, but to authorize the court to decide on the allowability of the amendment. In case of parallel administrative and court procedures, priority should be given to the procedure that has been initiated first. 8) What should be the substantial conditions for allowing post grant amendment of patent claims? As has been observed in the context of question 6), the reason why amendments of the claims should be allowed after grant is that the patentee should be entitled to a protection that is fair when considered in relationship to the technical contribution represented by the invention disclosed in the patent and that this principle should be adhered to, also if prior art or other insights are identified after grant in the light of which it is found that the technical contribution is different from what was believed at the time of grant. A reasonable degree of certainty for the third parties is provided by the requirements that the amended patent may not be broather in any respect than it was before the amendment and that the amended patent may not contain subject matter that was not originally disclosed in both the application as filed and the patent as granted. Other requirements are superfluous and only increase the risk that a fair protection is withheld from the patentee without good reason. In particular, the requirement that the patent may not extend beyond the contents present in both the application as filed and the patent as granted already warrants that the patent may not be maintained with an amendment that is not based 7

8 on a technical contribution that is unabiguously derivable from the patent before the amendment. This requirements does for instance prevent the patent from being amended by inclusion of isolated features that were present in the patent as granted, but of which the relevance was only disclosed in combination with other features. Also, the consideration that there are several possibilities for restricting the patent to a valid scope is no reason for imposing additional requirements. It is generally accepted that, in absence of the possibility of filing divisional patents, lack of unity of invention is not a nullity ground. Accordingly, if a plurality of possibilities for maintenance of a patent exist, that does not cause legal uncertainty for third parties, because the patent may in principle be maintained with all of these possibilities, for instance in the form of a plurality of independent claims. Therefore, if it is found that, in view of newly identified prior art and/or insights, the patent does not contain a single technical contribution, but a plurality of more restricted technical contributions, it should be allowable to maintain the patent in a form defining scopes of protection related to the respective technical contributions. However, if claims are amended, the amendments should meet the requirements applicable during examination of patent applications, such as clarity and support in the description, so that, generally, also the description will need to be amended. In summary, the Dutch Group is of the opinion, that for the allowability of amendments of a patent after grant, the existing nullity grounds, if rigorously applied, provide sufficient certainty for the third parties and that, therefore, no additional substantive conditions should be imposed for allowing post grant amendment of patent claims. 9) Should there be a distinction between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? The Dutch Group sees no reason why a distinction should be made between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment, except that requests for amendments of patent claims by third parties (i.e. requests for partial revocation, see our response to question 7) should only be awarded either with consent of the patentee or if nullity grounds prevent maintenance of the patent in any form requested by the patentee. 10) What should be the consequences for third parties liability for patent infringement where patent claims are amended post grant? In our view, the system of Articles 50(1) and (2) and 75(5) and (6) does work satisfactorily. However, in our view the system by which third parties can learn about post grant amendments by Dutch courts, should be improved. Article 89 Patents Act only provides that the clerk of the court which has rendered a decision in patent matters shall send a separate copy free of charge to the Dutch Patent Office within one month. In our view, this article could be extended with an obligation of the court to explicitly ask the Office to register any decision in which a patent is (partially) invalidated, and an obligation of the Office to do so. 11) Does your Group have any other views or proposals for harmonisation in this area? N/A 8