Contributed By Linklaters
In Belgium, the inventor (or any other physical or legal person to whom patent rights have been transferred) may obtain a patent for an invention consisting of a product or process that is new, inventive and industrially applicable, provided that such protection is not excluded by law (as further set out below).
Article XI.4 of the Code of Economic Law (CEL) contains certain limitations on the inventions that are eligible for patent protection, particularly excluding the following from patent protection:
Article XI.5 CEL excludes animal breeds, plant varieties and biological methods for the creation of plants or animals from patent protection (without prejudice to the possibility of obtaining a patent for an invention relating to animals or plants if this invention is not limited to a specific breed or variety, or an invention relating to a microbiological or other technical process or product resulting from such process). Pursuant to the same article, certain inventions whose exploitation would go against public order or morality are also not eligible for patent protection (eg, human cloning). In addition, the human body and the discovery of a part of the body (including a sequence of a gene) are not eligible for patent protection, except parts of the body that have been isolated or otherwise obtained through a technical process (including a sequence of a gene). Finally, processes of surgical or medical treatment of human or animal bodies and diagnosis on said bodies are not eligible for patent protection either (except for products used in those processes).
Depending on the preferred territorial scope of protection, it may be appropriate to file a Belgian patent application, a European patent application or an international (PCT) application. In the latter two cases, the applicant will benefit from a (partially) streamlined application procedure in order to obtain a bundle of national patent rights in the relevant participating countries selected by the applicant (covering Belgium if designated). The EU intends to create a unitary patent with effect in up to 26 EU Member States (which may still change in the future). At the time of this report, Belgium has already made significant progress in implementing the unitary patent and harmonising the rules regarding the scope of patent rights, and exceptions and limitations to such patent rights. Most of these rules will come into force once the Agreement on a Unified Patent Court enters into force vis-à-vis Belgium.
Alternatively, a company can also opt to keep inventions secret in case the relevant product or process is not easily capable of being reverse-engineered. The disadvantage of this is that such trade secrets are not protected by a separate intellectual property right. If the invention is acquired legitimately, used by a third party or disclosed to such third party without compromising any contractual or other rights, the trade secret can be freely used, since there is no exclusive proprietary right prohibiting the same. It is therefore necessary to protect the inventions or other confidential information by putting appropriate confidentiality safeguards in place (limited disclosure, confidentiality agreements, operational and technical security measures, etc).
At the level of the European Union, Directive 2016/943 protects trade secrets, in the sense of information that is secret, that has commercial value because it is secret and that has been subject to reasonable steps to keep it secret against its unlawful acquisition, use and disclosure. At the time of this report, the Act of 30 July 2018 modified several provisions of Belgian law in order to implement this Directive. Even though trade secrets cannot be considered to be a new intellectual property right, the legislator aligned various procedural measures and remedies with existing intellectual property legislation.
The grant procedure varies depending on the type of patent applied for (ie, Belgian, European or international (PCT)).
A Belgian patent application can be filed at the Belgian Office for Intellectual Property (OPRI) in Dutch, French or German, in accordance with the applicable legislation on the use of languages in administrative affairs. The filing date (or, if a right of priority has been claimed, priority date) of the patent application will determine the relevant prior art, since Belgium has a first-to-file system. The European Patent Office (EPO) will perform a novelty search and issue a written search report and opinion with respect to the fulfilment of the patentability requirements (essentially, inventive step and novelty), the outcome of which shall have no binding effect on OPRI's decision to grant the patent. This allows the applicant to withdraw the patent application if the invention is not eligible for patent protection, or modify it (with the proviso that the scope of the patent application can never be extended) or, alternatively, comment on why it does not agree with the opinion.
The grant of a Belgian patent is based on the verification of formal requirements only, and all substantive warranties are therefore excluded. The validity of a Belgian patent is eventually assessed, in case court proceedings are launched. A patent application will normally be published 18 months after the filing or priority date, unless the applicant requested prior publication or withdrew its application.
A European patent entails a common application process resulting in a bundle of national patent rights in one or more member countries of the European Patent Convention (EPC). The application can be filed at the EPO or at a national patent office, if allowed by applicable national law. A translation in an official language of the EPO (English, German or French) will need to be provided within two months of filing the application. The EPO will first examine whether all relevant formalities are met, and will then perform a novelty search and draw up a search report. It will also issue a non-binding written opinion on the invention’s patentability, allowing the applicant to amend or withdraw the application.
The patent application will be published 18 months after the filing or priority date, unless the applicant requested prior publication. The EPO will thereafter submit the patent application to substantive examination to determine whether the invention is eligible for patent protection and meets the requirements of the EPC. Depending on the outcome of such examination, the EPO decides whether or not to grant the patent. Finally, the European patent will need to be validated in the designated countries. The European patent in which Belgium has been designated grants the holder the same rights as it would enjoy under a Belgian patent as from the date of publication of the mention of the grant in the European Patent Bulletin or the decision to maintain the patent in an amended or limited form.
The international (PCT) patent application is rather similar to the European patent, but encompasses only a procedural integration of the application process in (at the time of this report) 152 contracting states without any substantive harmonisation. The PCT application results in a bundle of national patent rights, which are each governed by applicable national legislation. The application may be filed at a national or regional patent office, or at World Intellectual Property Organization (WIPO). The receiving office first verifies whether the PCT formality requirements have been fulfilled. If so, the International Searching Authority (ISA) will draw up an international search report with respect to the relevant prior art and issue a non-binding written opinion on the invention’s patentability, allowing the applicant to amend or withdraw the application.
The patent application will be published as soon as possible once 18 months have passed since the filing or priority date. The applicant may request a supplementary international search to be executed if it believes certain prior art documents have not yet been identified. The applicant may also request an international preliminary examination (ie, an additional non-binding opinion reviewing whether an invention meets the patentability requirements). The national phase will usually start 30 months after the filing or priority date, unless an earlier entry into the national phase has been requested, during which there will be an assessment as to whether a national (or regional) patent may be granted in all designated countries (or regions), individually from each other.
The grant procedure for a Belgian patent lasts approximately 18-20 months. The applicant can file a Belgian patent application and is not obliged to appoint a qualified patent attorney for the filing thereof, unless the applicant does not have its residence or place of business in an EU Member State. At the time of writing, OPRI office fees for the filing a Belgian patent application are EUR350-400 (made up of a filing fee of EUR50, a search report fee of EUR300 and a possible fee for invoking priority of EUR50). Maintenance fees are due as of the beginning of the third year after the patent application date and increase over the duration of the patent, starting from EUR40 and going up to EUR600. The above-mentioned fees do not include any representation or translation costs.
The grant procedure for a European patent typically takes between three and five years. The applicant can file a European patent application and is not obliged to appoint a qualified patent attorney for the filing thereof, unless the applicant does not have its residence or place of business in an EPC contracting state. At the time of writing, the office fees relating to the filing of a European patent application amount, on average, to EUR5,710 for a paper filing or EUR5,620 for an online filing if the patent application is pursued until it matures into registration (a filing fee of EUR120 if online and EUR210 if on paper, a search fee of EUR1,300, a designation fee of EUR585, a claims fee if more than 15 claims are filed, an examination fee of EUR1,635, a grant fee of EUR925, etc). Renewal fees for a European patent application are payable to the EPO as from the third year after the date of filing the application and each subsequent year until the grant of the European patent, and increase every year (from EUR470-1,575). In some designated countries, fees may also be charged for the validation of a patent. Maintenance fees will be payable in the designated contracting states once the patent has been granted (the amounts of which vary per country). The above-mentioned fees do not include any representation costs. The unitary patent, if introduced, is expected to result in a significant decrease in costs.
As discussed in 1.2 Grant Procedure, the international phase of a PCT patent application usually lasts for approximately 30 months. Since the national phase of a PCT patent application involves the verification of national (or regional) requirements, the time required for the grant of the patent varies across the relevant patent offices (reference is made to what is set out above in relation to the time required for the grant of a Belgian or European patent). Representation by a qualified patent attorney is again not required for the filing of a PCT application, although it is highly recommended. At the time of this report, an international filing fee of CHF1,330 is due, with a search fee determined by the chosen ISA (which may range from CHF134 to CHF2,046) and a small transmittal fee, as well as a fee per sheet over 30, the amounts of which depend on the referring patent office. It should be noted that the (filing and other) fees due to the national (and regional) patent offices during the national phase represent – in most cases – the greater part of the office fees in relation to a PCT application. Fee reductions are available in the case of e-filing and for certain categories of applicants (during both the international and the national phase). Maintenance fees will be due in each designated country (or region). The above-mentioned fees do not include any representation or translation costs.
The maximum term of patent protection in Belgium is 20 years from the application date, which can, in some cases, be extended by a supplementary protection certificate (SPC) (as set out in 1.6 Further Protection After Lapse of Maximum Term).
In the past, Belgium also offered the possibility to obtain a patent with a limited term of protection of six years without a novelty search, but the possibility to file such a (small) patent application was abolished in January 2009.
The term of patent protection may terminate earlier than the maximum term if there is a lapse due to non-payment of (maintenance) fees or an annulment, revocation or withdrawal of the patent.
See 6.1 Remedies for the Patentee regarding the various remedies that a patent holder may invoke in the framework of the enforcement of its patent rights.
A patent entitles its holder to prohibit third parties from making use of an invention without the holder's prior consent. See 2.1 Actions Available Against Infringement for the various acts of direct and indirect infringement that a patent holder may prohibit and 6.1 Remedies for the Patentee for the various remedies against infringement (injunctive relief and damages). The patent-holder may only exercise its patent rights within their respective limitations, as further described in 2.2 Third-party Remedies to Remove Effects of Intellectual Property Right.
The patent-holder may also assign (sell) or license (grant a right of use to) its patent rights, as further described in 10 Assignment and Licensing.
The patent-holder has certain obligations, namely the payment of the respective office fees and the sufficient provisioning of the Belgian market with the patented products or processes (at the risk of being forced, in exceptional circumstances, to accept a compulsory licence).
It is possible to extend the term of a Belgian or European patent for medical and plant protection products through an SPC, if a marketing authorisation has been granted under certain conditions described below. This has been introduced to (at least partially) remedy the loss of effective protection during the time needed to obtain market authorisation for such products.
The SPC legislative framework is harmonised at the EU level. An SPC is a national title granted by the local IP office of the EU Member State that granted the basic patent as well as a market authorisation. The requirements for granting an SPC are as follows: at the date of application of an SPC, the product must be covered by a basic patent, a valid market authorisation (ie, the first authorisation to put the product on the market as a medicinal or plant protection product) must have been granted, and it must be the first time that the product is subject to an SPC.
An SPC has a term of protection starting at the date of expiry of the patent and equal to the time that elapsed between the filing of the basic patent application and the date of the first market authorisation (ie, according to currently prevailing Court of Justice of the European Union (CJEU) case law, the date that the decision has been communicated to the applicant) reduced by five years and with a maximum of five years. In certain cases, another six-month extension is available for medicinal products for paediatric use.
There is no possibility of submitting third-party observations during the grant procedure for a Belgian patent, but a third party may file revocation/cancellation proceedings against the Belgian patent in court (see 4.1 Reasons and Remedies for Revocation/Cancellation).
Following the publication of a European patent application, any person may submit third-party observations free of charge to the EPO in English, French or German, setting out the grounds on which it believes that the invention is or is not eligible for patent protection (while not becoming a party to the proceedings, as opposed to opposition proceedings).
A person other than the applicant or holder may also file a written notice of opposition with the EPO against a European patent (application) up to nine months after the publication of its grant in the European Patent Bulletin, based on a number of opposition grounds (ie, the invention not being eligible for patent protection, the European patent not disclosing the invention in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art, or the subject matter of the European patent extending beyond the content of the application as filed). In such a case, an opposition fee of EUR785 (at the date of this report) would be due.
Following the publication of a PCT patent application and prior to the expiration of 28 months from the priority date (provided that the application is not (considered) withdrawn), a third party may submit observations to WIPO, free of charge, explicitly referring to prior art which he or she believes to be relevant for the assessment of inventive step or novelty (including at least one citation of any relevant prior art documents). The applicant will be notified of the comments and may comment thereon until the expiration of 30 months from the priority date. Third-party observations may be taken into account for the international search report and international preliminary examination, if they have been received in due time (to review them for the drawing up of said reports) and provided that they contain a copy of or an easily retrievable reference to relevant prior art. The observations will also be transmitted to the designated patent offices upon entry into the national phase, but those offices are not obliged to take the observations into account.
OPRI may only refuse to grant a Belgian patent if certain formal requirements are not fulfilled, in which case the applicant can – in some cases – re-establish his or her rights or regularise the procedural defect(s). As set out above, the grant of a Belgian patent does not depend on the outcome of any substantive patentability searches (see also 1.2 Grant Procedure). Therefore, only revocation/cancellation proceedings and the patent owner’s defence strategy in that respect have any practical relevance for a Belgian patent.
An applicant whose European patent application has been refused may file an appeal against that refusal decision at the Board of Appeal (BoA) of the EPO within two months of the notification of the refusal decision, which shall have suspensive effect. A fee for appeal of EUR1,880 (at the date of this report) will be due. A statement of grounds should be filed within four months of the notification of the decision. If the examining division that refused the European patent application considers the appeal to be admissible and well founded, it should rectify its decision within three months of receiving the statement of grounds.
If the examining division does not rectify its refusal decision and the BoA finds the appeal to be admissible and well-founded, it may decide either to reverse the refusal decision itself or to send the case back to the Examining Division for further prosecution (which shall be bound by the decision of the BoA). Any party adversely affected by the decision of the BoA may file a decision for review of said decision with the Enlarged Board of Appeal for fundamental procedural defects or, if a criminal act may have had an impact on the decision, within two months of the notification of the decision of the BoA (or the date on which said criminal act has been established and no later than five years from the notification of the BoA decision), which shall not have a suspensive effect. A fee for review of EUR2,910 (at the date of this report) should be paid. If the petition is found to be admissible and well founded, the initial decision of the BoA shall be set aside, and proceedings before the BoA shall be reopened.
A PCT applicant may file a request for review with a designated patent office in respect of certain decisions made during the international phase (ie, in the case of refusal to accord an international filing date due to defects in the application; if the application is considered to be withdrawn due to defects in the application or non-payment of the office fees; and if the application is considered to be withdrawn due to lack of receipt of the record copy within the prescribed time limit). Decisions are subject to review by each designated patent office specified by the applicant, which will essentially need to verify whether there was an error or omission in the international phase. The applicant should file the request for review at WIPO and separately with each of the specified designated offices within two months from the notification date of the respective decision (any required office fees should be paid and translations submitted within the same period of time). The designated office(s) will then decide whether the decision made during the international phase was justified, maintaining the effect of the PCT application as a national application if it concludes that an error or omission has occurred. A designated office may decide to pursue the national application even if there were no error or omission (eg, if it grants the applicant's request to excuse a delay to meet a time limit).
Failure to pay the maintenance fees of a Belgian patent by the due date (ie, the last day of the same month as the anniversary of the filing date) can be remedied by paying the outstanding maintenance fees (amounts set out in 1.3 Timeline for Grant Procedure) and a surcharge (EUR85 until the tenth year after the application date of the patent and EUR230 from the eleventh year) within a grace period of six months from the due date (Article XI.48, §1 CEL). If the maintenance fees and surcharge are not paid during the grace period, the patent will automatically lapse as of the date on which the unpaid maintenance fees became due (Article XI.48, §2 CEL).