Nullity advice

If a granted patent appears to be a threat to your commercial activities, Nederlandsch Octrooibureau can be of assistance by verifying whether this patent may be (partially) invalid. If such is the case, the patent cannot be successfully invoked against you. In addition, it will be possible to request (partial) revocation  of the patent at the national court or, when appropriate, the patent granting authority.

Nullity

A granted patent may be partly or entirely invalid, for instance if it was granted in violation of the patentability requirements. The patent may also be invalid if the application or the patent itself was altered in an unacceptable manner. An invalid patent can be the consequence of the patent granting authority being unfamiliar with certain relevant information, but also of an incorrect conclusion drawn by that authority on the basis of the information that was available.

Granted patent          

For a nullity advice on a granted patent, first of all a patent attorney will, in close collaboration with you, decide on those parts of the patent that may present a threat to your (intended) commercial activities (see also ‘freedom to operate’). The nullity advice will then be focussed on those parts.

The patent attorney will study the patent granting history in order to verify whether or not the patent granting authority has rightfully granted the patent, given the available information. At the same time an extensive search of the state of the art will be executed, including both patent databases and scientific literature. The information that emerges during this search may lead to the conclusion that the patent granting authority would not have granted the patent had it been familiar with this information. Additional relevant knowledge (e.g. public prior use) shall be taken into consideration for the nullity advice. 

Follow-up strategy

After determining whether the patent was granted rightfully, an assessment of the risk of the patent owner successfully invoking his patent against you can be made. Even if this seems unlikely, you are not automatically secured against legal steps that may be taken by the patent owner, who may not even be familiar with the potential nullity.

The patent attorney will continue to advise you in order to map and minimise such risks. Potential actions to this purpose may vary from commencing opposition proceedings, starting a nullity procedure at the national court, approaching the patent owner (for example to negotiate a licence), or simply keeping the advice in mind should the patent owner confront you with his patent.

Current patent granting procedure

A nullity advice may also be desired should you run into a patent application that has not yet been granted yet may affect you should it be granted.  

An interesting aspect is that the patent attorney may interfere in a current patent granting procedure, for instance by pointing out new relevant information to the patent granting authority. This can be a highly efficient way of nipping potential threats to your company in the bud.