You want to bring a product onto the market or want to use a particular process. You have done your preparations and have come across a patent (application), which you suspect could form an obstacle for you. The last thing you want to do is infringe it. So what you can you do?
My first piece of advice is: do not just give up. The patents you have found do not necessarily have to stand in your way. You would be wise to have a closer look at the patents in questions or have someone else do this for you as it might not be necessary for you to change your business plan in the following cases:
1. The patent was never granted
All patent applications are entered into a patent database. This does not automatically mean they were actually granted. One way to check if the patent found by you was actually granted is by examining the granting file.
2. The patent has expired
In order to keep a patent 'alive' it is necessary to pay renewal fees. If you fail to do so, the patent will expire. In that case the patent will no longer be valid and therefore does not form an obstacle for you. You can find this information in the granting file as well.
3. The patent has reached its maximum term
In principle, a patent is only valid for a maximum period of 20 years, counting from the day it was submitted. This means that you can work out yourself if a patent is still legally valid as far as the term is concerned. You should note, however, that there are exceptions, with some patents being valid for longer!
4. The patent covers a defined geographical area
Because a worldwide patent tends to be unaffordable (and also unnecessary), the exclusive right on the invention is usually restricted to a number of countries. If you have found a patent that is valid in America, Germany and France, there is nothing to stop you from making your product in the Netherlands. However, it should be noted that, if you make a product in the Netherlands, you cannot simply go ahead and sell it in America, Germany or France.
5. The patent does not meet the requirements
A patent has to meet a number of legal requirements. These are:
- Novelty
- Inventive step
- Industrial applicability
If these have not been met, you can contest the validity of the patent, in an opposition or a national court case. However, these are often relatively costly proceedings that can take years.
If it is not worth it you could, of course, consider respecting your competitor's IP rights by ceasing your activities. However there are a number of other options available, which Marcel will explain in the next BL&G.
