Patent law

Patent law is a crucial part of intellectual property law. A patent grants a temporary exclusive right to exploit an invention (a product or process). A patent allows inventors to protect their innovations from unauthorized use and enables companies to gain a competitive advantage by obtaining exclusivity over their technical innovations.

Below we explain more about the legal basis of patent law, the requirements for patentability, the procedure for obtaining a patent and the rights of the patent holder.

1. Patent law legislation.

1.1. Belgian legislation: the economic law code (WER).

In Belgium, patent law is regulated primarily in Book XI of the Economic Law Code (WER), specifically in Article XI.1 et seq.. These provisions define the conditions for obtaining a Belgian patent, the protection granted by a Belgian patent, and the procedure for applying for a Belgian patent.

2.1. European Legislation (EU).

2.1 European directive on the legal protection of biotechnological inventions

The Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions regulates in a uniform manner within the European Union the possibility of patenting biotechnological inventions, such as genetically modified organisms This directive was transposed into Belgian law in the articles XI.1 et seq. WER.

2.2 The unitary patent and the unified patent court

For decades, the aim was to introduce a unified European patent, in the sense of a patent valid throughout the European Union. Although the (ordinary) European patent already provided for a single application and grant procedure, it only leads to a bundle of national patents in the countries party to the European Patent Convention. As no unanimous agreement could be reached within the EU, a number of EU member states agreed in 2012 on a "patent package," consisting of two regulations and the UPC agreement. to create a unitary patent that would have effect only in their territories.

There was long disagreement over the language regime and the creation of a unified court. An agreement was finally reached in 2012 on the "patent package," which entered into force on March 1, 2023, albeit only in 18 EU member states (Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Lithuania, Luxembourg, Malta, the Netherlands, Austria, Portugal, Romania, Slovenia and Sweden).

So since March 1, 2023, it will be possible to obtain a European patent with unitary effect within these 18 EU member states. It remains a patent that, like traditional European patents, must be applied for at the European Patent Office, but with the possibility of requesting "unitary effect" for this patent.

2.2.1 The regulations

Regulation (EU) No 1257/2012 of the European Parliament and of the Council of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection, sets the conditions under which unitary effect can be granted to European patents.

Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements, sets German, English and French as languages for the patent with unitary effect.

2.2.2 The UPC Agreement.
The Unified Patent Court Agreement (UPC). creates a new unified patent court with jurisdiction - for the participating EU member states - to rule on validity and infringement questions relating to unitary patents. This will avoid conflicting decisions by national courts of these member states.

3. International texts

3.1 The Paris Union Convention for the Protection of Industrial Property

The Union Treaty of Paris (1883) forms the basis of the international patent system. This treaty provides that inventors from member countries are entitled to the same protection in other treaty countries as that granted to nationals. It also allows for the filing of a priority application, which allows an inventor to seek patent protection in other treaty countries within 12 months.

3.2 The Strasbourg Agreement on the International Classification of Patents

The Strasbourg Agreement (1971) aims to harmonize the classification of inventions by introducing the "international patent classification" (IPC). This system makes it easier to examine and compare existing patents worldwide. The IPC classification was further refined into the 'cooperative patent classification' (CPC) used by the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO). A comparison on that front can be made with trademark law where the Nice classification is used.

3.3 The Washington Patent Cooperation Treaty

The Washington Treaty (1970), better known as the Patent Cooperation Treaty (PCT), provides a streamlined procedure for an international patent application. This system allows a single application to seek protection in multiple PCT member states, after which the application is converted at the national stages into individual patent applications in the chosen countries, which are then granted nationally. By 2024 there will be 158 member states and the procedure will be organized by WIPO.

3.4 The Munich Convention on the grant of European patents (without unitary effect)

The Munich Convention (1973), or the European Patent Convention (EPC), governs the procedure for applying for and granting a European patent without unitary effect. This is not an EU treaty; non-EU member states have also acceded to this treaty. This treaty forms the legal basis for the European Patent Office (EPO), which is responsible for evaluating and granting European patents. When applying, a choice can be made as to which member states of the EPC the patent is to be applied for, after which it will be given effect as a national patent (the European patent remains a bundle of national patents) once granted.

3.5 The TRIPS Agreement.

The TRIPS Agreement (1994), concluded within the World Trade Organization (WTO), is an international treaty that establishes minimum standards for the protection of intellectual property rights, including patents. TRIPS requires all WTO member states to adapt their domestic laws to provide patent protection for both products and processes, and to ensure effective enforcement of patent rights.

2. Who is the inventor?

2.1 The inventive principle

The inventor principle is established in most national patent regulations, such as Article XI.9 WER. This basic rule in patent law states that a patent belongs to the inventor or his assigns. Most inventions today are the result of research by several people, so there can obviously be several inventors. However, in the context of patent proceedings, the applicant is deemed to be the person entitled.

2.2 The designation of the true inventor: inventive activity

To be recognized as an inventor, a person must have made a substantial contribution to the creation of the invention. This concept is known as the inventive step. To assess this, the contributions of all involved must be identified and compared to the technical elements of the invention as defined in the patent application.

An inventor must have done more than merely make suggestions or contribute to the implementation of an idea. The inventor must have actually contributed to the conceptual development of the solution to a technical problem. This means that the inventive activity refers to the creative contribution to technological innovation, and not to the mere performance of experiments or technical acts.

Importantly, the person designated as an inventor need not necessarily be the one who put the invention into practice or provided the technical implementation. For example, a lab technician who builds a device according to instructions, without himself making a creative contribution to the technical solution, will not be considered an inventor. The inventor is only the one who makes an actual creative and intellectual contribution to solve the technical problem.

2.3 Co-inventors

In the case of several inventors - unless proven otherwise - each share in the invention is deemed to be equally rooted. This means that all co-inventors must act jointly when applying for or exploiting a patent, unless they have made contractual agreements among themselves in this regard.

It is important that the rights of the co-inventors are defined in an agreement, which defines how the patent will be managed, who is responsible for applying for and maintaining the patent, and how the proceeds of the patent will be distributed. This is especially important when the inventors work for different companies or institutions, or when there are different legal entities. This avoids the need to repeatedly seek permission from the other inventors and avoids discussions and obstacles to exploitation.

If no such agreement exists, the co-owners must comply with the principles set forth in Article XI.49 IPR. Specifically, then each co-inventor has the right to personally exploit the patent, but a transfer, license or action against infringement requires the agreement of all co-inventors.

3. Material patentability requirements.

Obtaining a patent for an invention is subject to strict legal conditions, also called the substantive patentability requirements. An invention must be new, inventive and industrially applicable for it to be protected by a patent (Art. XI.3 WER and 52 EPC).

3.1 What is an "invention"?

An invention is a technical solution to a problem that is new, inventive and industrially applicable. Thus, a patent can only be granted for inventions that produce a technical effect, early technical considerations or solve a technical problem. Thus, the invention must make a technical contribution to the state of the art.

3.1.1 What are not inventions?

Although the term "invention" is broad, according to the law there are certain categories of ideas or concepts that cannot be considered inventions and are therefore not patentable. Article XI.4 WER and Article 52.2 EPC explicitly exclude certain items that can never be patented.

The following categories are not considered inventions:

• Discoveries: Scientific discoveries, such as a new natural phenomenon or a scientific truth, are not patentable inventions. They do not provide a technical solution, but merely describe what is already present in nature.
• Natural science theories and mathematical methods: Theoretical knowledge, such as the theory of relativity, or mathematical methods such as formulas, are not patentable. They have no technical application in themselves.
• Aesthetic designs: Objects judged purely on the basis of their aesthetic or artistic value, such as works of art or fashion designs, cannot be protected as inventions. For these, there are other protection systems such as design right.
• Systems and methods for performing mental labor, games or business management: Think of rules for a game of chess, new management techniques or teaching methods. These concepts do not lead to a technical effect and are therefore not patentable.
• Computer programs: Stand-alone software or programs that merely perform mathematical or logical processes, without any technical contribution, are not considered patentable. However, if a computer program has a technical effect, such as improving the operation of a computer, it may be patentable.
• Mere presentation of data: Simply presenting or displaying information, such as graphs, tables or display screens, is not an invention within the meaning of patent law.

3.1.2 Inventions excluded from protection

In addition to what is not considered an invention, there are also inventions that do have a technical effect, yet are excluded from patent protection because the legislature does not deem it desirable. These categories include:

• Biological materials and practices: In principle, plants and animals cannot be patented if they arise purely from natural processes. Genetic modification may be patentable in some cases, but this remains a sensitive issue in law.
• Inventions contrary to public order or morality: Inventions whose commercial exploitation would be contrary to public order or morality are excluded. This may be the case, for example, with weapons technology or inventions dangerous to the environment or public health.
• Surgical or medical treatment methodsMethods of medical or surgical treatment of humans or animals are excluded from patentability in order to avoid making the performance of medical procedures subject to patent rights. However, products such as medical instruments or pharmaceutical compositions are patentable.

3.2 Requirement of Novelty (Article XI.6 WER - 54 EPC)

The requirement of novelty is one of the fundamental requirements for obtaining a patent. An invention is considered new if it has not been made publicly available before the patent application was filed. This means that the invention must not have been described, patented or used in practice anywhere in the world.

2.1 The state of the art

The term "prior art" refers to any knowledge available prior to the filing of the patent application, such as publications, existing patents, presentations or products already on the market. Article XI.6 WER and article 54 EOV define this concept and state that an invention must be novel with respect to the full prior art.

2.2 Disclosure

A disclosure can occur in a variety of ways, such as through a scientific publication, a patent application, or even a demonstration at a trade show. Importantly, any disclosure can affect the novelty of the invention, unless a "priority right" applies, whereby the applicant can still seek patent protection in other countries within a certain period of time without previous disclosures affecting novelty.

3.3 Requirement of inventive step or inventive step (Article XI.7 WER - 56 EPC)

The second condition is that the invention must be inventive. This means that the invention must not be obvious to a person skilled in the relevant technical field. This skilled person has average knowledge of the relevant technologies and is able to find routine solutions to technical problems based on existing knowledge. The question is whether this skilled person could have conceived the invention without special effort based on the information in the "prior art" already known at the time of the patent application.

This means that a patent application must show that the proposed invention is not simply a logical continuation of the existing prior art, but provides a solution that is surprising or innovative. This requirement ensures that only inventions that represent an actual technological advance and are not obvious are eligible for patent protection.

The most common method for assessing inventive step in Belgian and European case law is the problem solution approach (PSA) test., which consists of three steps:

• Step 1: Identification of the state of the art.
  First, the relevant prior art is determined, that is, what was already known at the time of the patent application. The prior art serves as the basis for assessing the inventive step of the invention.
• Step 2: Formulation of the technical problem
  It then formulates the technical problem that the invention attempts to solve. This problem must be objectively defined and based on the differences between the invention and the prior art.
• Step 3: Assessment of the solution
  Finally, it is assessed whether the proposed solution to the problem differs from the existing prior art in an inventive manner. If the solution is obvious to the person skilled in the art, the invention is considered non-inventive.

3.4 Requirement of industrial applicability (Article XI.8 WER - 57 EPC)

The third and final substantive condition for patentability is that the invention must be industrially applicable must be. This means that the invention must be usable in a branch of industry, such as agriculture, medicine, construction, electronics or mechanics.

4. The Patent Grant Procedure.

4.1 Who can apply for a patent

Article XI.9 WER provides that the right to a patent belongs to the inventor or his assignee. This means that not only the inventor himself, but also someone who has acquired the rights of the inventor (for example, an employer by assignment) can apply for a patent. In the latter case, the inventor does have the right to be named as inventor in the patent (Art. XI.13 WER).

At the time of application, there is no verification that the applicant is indeed the inventor or assignee. The applicant is presumed to be entitled to file the patent application (but this presumption can always be rebutted). If a patent would have been filed by someone who is not entitled to do so, the aggrieved person can demand to the court that this patent be transferred to him. This demand must be exercised within 2 years of the grant of the patent (Art. XI.10 WER).

any company assimilated to a legal entity may submit an application.

4.2 The procedure for obtaining a Belgian patent

Obtaining a Belgian patent is fairly simple and inexpensive. Indeed, the Belgian patent system has no mandatory examination on the merits.

a. The filing of a patent application.

The process begins with filing a patent application with the Intellectual Property Office (DIE). A complete patent application must include the following documents:

1. A request for grant of a patent, addressed to the minister
2. A description of the invention, which must be sufficiently clear and complete for a person skilled in the art to apply the invention
3. One or more conclusions that clearly and concisely describe the subject of protection
4. Drawings to which the description or conclusions refer (if necessary)
5. An extract that serves only as technical information
6. An indication of the geographical origin of biological material (if applicable)
7. The designation of the inventor or a request not to state it

The application must be accompanied by the payment of the filing fee.

b. Acceptance of application.

The submission date is crucial to the priority of the application. This date is assigned when the DIE has received the following elements:

1. An explicit or implicit indication that the documents are intended as patent applications
2. Data establishing the identity of the applicant
3. A part that at first glance appears to be a description

If certain elements are missing, the DIE notifies the applicant and gives him the opportunity to complete them within a certain deadline. If this deadline is not met, the application is deemed not to have been submitted.

c. Conducting a novelty investigation.

Following the filing of a patent application, a novelty examination can be requested. This examination is conducted by the European Patent Office and concerns whether the invention is new with respect to the prior art.

The novelty examination results in a written report which, for the information of the applicant, is accompanied by a written opinion on the patentability of the invention. This opinion is later accessible to third parties in the file of the granted patent.

The DIE sends the report and opinion to the applicant, who may then submit a new text of the conclusions and extract. The applicant may also submit written comments on the written opinion.

d. Publication of the patent application.

The DIE shall make the patent application accessible to the public after the expiration of a period of eighteen months from the filing date or, if priority has been claimed, from the priority date.

At the request of the applicant, the application may be made accessible earlier. On the other hand, an applicant who does not wish his application to become public may withdraw it before the end of the seventeenth month after submission.

e. Grant and publication of the patent.

The grant of the patent is ratified by a ministerial decree, which constitutes the patent itself. This decree is granted after the expiration of the 18-month period, or earlier at the request of the applicant if all formalities have been fulfilled.

Importantly, Belgian patents are granted without prior examination of their patentability. This means that patents can be granted even when not all substantive requirements are met, such as novelty or inventive step. The patent holder thereby bears the risk that his patent may later be declared invalid.

After grant, the patent is published in full by the DIE, and the grant is reported in the Register of Invention Patents. The patent file is made available for public inspection.

4.3 The procedure for obtaining a European patent

a. Overview

The European patent is based on the European Patent Convention (EPC) of October 5, 1973. Through a single application, one can obtain patent protection in multiple European countries. Currently, 38 countries are members of the EPC, including all EU member states, as well as non-EU countries such as Switzerland, Turkey and Norway.

The European Patent Office (EPO) is responsible for processing applications and granting European patents. The EPO has its headquarters in Munich and a department in The Hague.

Once granted, the European patent is effectively split into a bundle of national patents, with the same legal effect in each designated state as a national patent, unless the EPC provides otherwise.

b. Submission of a European patent application.

A European patent application may be filed at the EPO or, in some cases, at the central industrial property office of a Contracting State. For Belgium, however, Article XI.82, § 1 WER provides that the application can only be filed at the EPO.

The application must include the following documents:

1. A request for the grant of a European patent
2. A description of the invention
3. One or more conclusions
4. Drawings to which the description or conclusions refer
5. An excerpt

The application must be submitted in one of the official languages of the EPO (English, French or German) or, if submitted in another language, translated into one of these languages.

c. Formal research

The EPO examines whether the application meets the formal requirements for granting a filing date. This date is crucial for prioritizing the application and determining the relevant prior art.

d. Novelty survey

The EPO prepares a European novelty search report on the patent application based on the claims, taking into account the description and drawings. This report identifies relevant documents from the prior art that are relevant to the assessment of novelty and inventive step.

e. Publication of the application and novelty report

The EPO publishes the European patent application as soon as possible after the expiration of a period of 18 months from the filing date or priority date. The novelty search report, if available, shall be published together with the application or separately at a later date.

f. Research on the merits

At the applicant's request, the EPO examines whether the application and the invention meet the requirements of the EPC, in particular whether it involves an invention that is new, involves inventive step and is industrially applicable.

If the EPO considers that the application does not meet these requirements, the applicant will be given the opportunity to comment and amend the application. However, the application may not be amended so as to extend its subject matter beyond the content of the application as submitted.

g. Patent grant and publication.

If the EPO considers that the application meets all the requirements, it decides to grant the European patent. This decision takes effect on the day the mention of the grant is published in the European Patent Bulletin.

The EPO then publishes the European patent document, which contains the final text of the patent. Once granted, the patent must be validated in the individual member states for which it was filed, which often requires translation as well.

h. Opposition and restriction proceedings.

Within nine months of the publication of the mention of the grant, anyone may file an opposition to the granted European patent with the EPO. The opposition can be based on:

• The object is not patentable
• The patent does not set forth the invention with sufficient clarity
• The object goes beyond the content of the application as submitted

The Opposition Division examines the opposition and may revoke the patent, reject the opposition, or uphold the patent in modified form.

In addition, the holder of a European patent may at any time request that his patent be limited by amending the claims or revoked.

i. Appeals

Decisions of the EPO can be appealed to the Boards of Appeal. This appeal has suspensive effect. The Boards of Appeal can either decide on the appeal themselves or refer the case back to the body that made the disputed decision.

For uniform interpretation of the law or questions of law of fundamental importance, a case may be referred to the Grand Chamber of Appeals.

4.4 The procedure for obtaining a European patent with unitary effect

The European patent with unitary effect (or "unitary patent") is a recent development in European patent law. This system builds on the existing European patent system, but adds a unitary character.

The procedure is as follows:

1. An application for a European patent is filed at the EPO, following the normal procedure
2. After grant of the European patent by the EPO, the holder may request unitary effect within one month from the publication of the grant
3. The patent will then have unitary effect in all participating EU member states (currently 24 member states except Spain, Croatia and Poland)

The unitary patent is characterized by:

• Unitary character: it applies to all participating member states
• Uniform protection: it has identical legal effects in all participating member states
• Unity of procedures: limitation, transfer, forfeiture, nullity and revocation always occur for all states together
• Simplified language regime: no translations required in each member state
• Centralized dispute resolution through the unified patent court

This system is intended to reduce the cost of patent protection in Europe and simplify the procedure.

4.5 The international procedure (PCT route)

a. The international phase

The international patent application process is based on the Patent Cooperation Treaty (PCT) of June 19, 1970. Through this route, one can seek protection in more than 150 countries worldwide with a single application.

The procedure begins with filing an international application with a receiving agency, such as the DIE in Belgium or the EPO. This application must include:

• A petition
• A description of the invention
• One or more conclusions
• Drawings (if necessary)
• An excerpt

The filing date of this international application is the effective filing date in all designated states.

After filing, an international novelty search is conducted by a competent Authority for International Novelty Research (often the EPO for European applicants). This results in a novelty search report, which is sent to the applicant.

The applicant may change the conclusions once as a result of this report. After 18 months from the priority date, the international application, together with the novelty examination report, is published.

Optionally, the applicant may request an international provisional assessment, which provides a preliminary and non-binding opinion on the patentability of the invention.

b. The national phase

After 30 or 31 months (depending on the country) from the priority date, the applicant must decide in which countries he actually wishes to obtain protection. The application then moves to the "national phase."

At this stage, the applicant must by country:

• Submit a request to continue the proceedings
• If necessary, provide a translation in the national language
• Paying national taxes

From this point on, the application is processed according to each country's national legislation or according to the procedure of regional patent organizations such as the EPO.

For Belgium, any designation of Belgium in an international application is considered a request to obtain a European patent. In other words, one cannot obtain a direct Belgian patent via the PCT route, but one can obtain a European patent with designation from Belgium.

The PCT route gives applicants more time (up to 30/31 months) to decide in which countries they actually want protection, while maintaining the priority date. This gives more room to evaluate the commercial potential of the invention before incurring large costs for global protection.

5. Patent owner's rights.

5.1 The right of exploitation

The patent grants the holder an exclusive right to exploit the invention for a limited period of time. This exclusive right allows the patent holder to prohibit certain acts to third parties who have not obtained his consent. If these acts are nevertheless performed without permission, this constitutes patent infringement.

The scope of protection of a patent is determined by the claims (claims), with the description and drawings serving only as explanatory notes. Here it is not the claims of the patent application but only those of the finally granted patent that matter.

5.2 Right to transfer or license

Transfer

A patent or patent application can be transferred to third parties. This transfer can be for a fee or free of charge.

A patent can also be partially transferred. This creates a situation of co-ownership of the patent after which Article XI.49 WER becomes applicable.

An assignment among living persons must always be made in writing under penalty of nullity. The transfer must be notified to the Intellectual Property Office (DIE). The notification must be accompanied by a copy of the transfer deed, an extract thereof or an attestation of transfer. The transfer is entered in the register of invention patents. The transfer only takes effect against the DIE and is only opposable to third parties after its entry in the register.

License

In addition to full transfer, the patent holder can also grant licenses. This is a contractual right whereby the patent holder allows a third party to exploit the invention under certain conditions. Licenses must be in writing under penalty of nullity and communicated to the DIE.

Sometimes the application of a patent is possible only with the use of an already existing patented invention. We then speak of a dependent invention, whereby the holder of the younger patent will need a license from the holder of the older patent. This sometimes results in cross-licensing where the two patent holders license each other.

A special category of licensing concerns those for Standard Essential Patents (SEPs). These are patents that must inevitably be used when implementing a technical standard. Think of telecommunications standards such as 4G, 5G or WiFi, or standards for video compression such as MPEG. What is special about SEPs is that their holders usually undertake to license on FRAND (Fair, Reasonable And Non-Discriminatory) terms. This commitment is often made to standards organizations such as ETSI, IEEE or ITU when a technology is included in a standard.
In practice, FRAND licenses regularly lead to disputes over what exactly should be considered "reasonable" and "non-discriminatory." The Court of Justice of the EU has in the Huawei/ZTE case developed a framework for adjudicating FRAND disputes. According to this framework, before filing an infringement claim, an SEP holder must inform the alleged infringer of the infringement and make a concrete FRAND license offer. The alleged infringer must carefully consider this offer and possibly make a counteroffer. Refusal to grant FRAND licenses may in certain circumstances be considered an abuse of a dominant position under competition law, which may result in fines or even forced licensing.
Also, the European Commission's 2023 developed a framework for SEPs.

5.3 The right to take action against violations

a. Belgian patent or European patent without unitary effect with validity in Belgium

Acts of counterfeiting

A patentee can take action against anyone who infringes his patent. This is the case when someone takes the actions listed in Article XI.29 WER and uses a product or process in which the characteristics are the same as those in the claims of the granted patent. In that case, there is patent tampering.

Article XI.29 WER provides that the patentee has the right to prohibit any third party without his consent:

• to manufacture, offer, market, use, or import or stock a product covered by the patent for that purpose
• apply a process covered by the patent or, if the third party knows or should have known that application of the process without the consent of the patent holder is prohibited, offer it for application on Belgian territory
• offer, place on the market, use, or import or stock for that purpose a product directly manufactured according to the process covered by the patent
• on Belgian territory, to a person other than the one who is entitled to use the patented invention, to offer or supply means relating to an essential element of the invention for the use of that invention, if the third party knows or should have known that these means are suitable and intended for that use. This is the situation of a indirect infringement or counterfeit.

Patent infringement does not require that the invention be reproduced in its entirety. It is required but sufficient that the essential features of the invention covered by the patent be found in the third party's process or product. Accessory or superficial differences do not necessarily exclude copying (Cass. Feb. 3, 2012).

So-called infringements by equivalents can also be challenged (Art. XI.28(2) IPR). Patent protection is thus not limited to the exact technical implementation as described in the claims. There is infringement by equivalents when: (i) one or more essential elements of the patent claims have been replaced by technically equivalent elements, (ii) these replacement elements perform essentially the same function and (iii) they achieve a similar result. The so-called "Problem Solution Approach" is often used for this purpose.

Action against counterfeiting can be taken under both criminal and civil law. Here, a cease-and-desist order can be sought both against the infringer and against intermediaries (Art. XI.334, §1 WER). During infringement proceedings, however, a patentee may be faced with a counterclaim for invalidation of his patent.

Exceptions and limitations

Certain legally defined acts of use

Article XI.34 WER provides several exceptions to the exclusive rights of the patent owner. The following acts do not constitute infringement:

• Acts in the private sphere and without commercial purposes
• Acts for experimental purposes with or on the object of the invention
• The preparation of drugs in pharmacies on medical prescription

The exhaustion principle

The patent right is "exhausted" for products put into circulation in Belgium by the patent holder or with his consent. This means that the patent holder cannot act against further marketing of these products on Belgian territory (Art. XI.34, §2 WER).

The EU principle of free movement of goods (Art. 34-36 TFEU) means in practice an extension of this principle to an EU exhaustion.

The exception of pre-use and personal possession

A person who had used or possessed the invention in Belgium in good faith prior to the filing of the patent application retains the right to personally exploit the invention, notwithstanding the later granted patent.

The forced license due to insufficient exploitation

The Minister of Economic Affairs may grant a compulsory license when a patent is not or insufficiently exploited (Art. XI.37, §1, 1°).

This compulsory license can only be granted (i) four years after filing the patent application, or (ii) three years after granting the patent (whichever is longer).

Such a compulsory license is granted to an interested party only if:

• The patent holder has not exploited the patent by substantial and continuous manufacturing in Belgium without the patent holder being able to justify this by valid reasons
• the applicant unsuccessfully applied to the patentee to obtain a license amicably
• the applicant has the resources necessary for substantial and continuing manufacture in Belgium according to the patented invention.
• The license is primarily intended to supply the domestic market

The forced license due to dependency

When an invention protected by a patent cannot be exploited without infringing an older patent, a compulsory license may be granted ((art. 37, §1, 2° WER) if:

• The dependent patent represents an important technical advance of substantial economic significance
• The license is granted primarily to supply the domestic market

The forced license in the interest of public health

The Minister may, in the interest of public health, grant a compulsory license for a patent for a drug, medical device or product necessary for its production or use (Art. XI.38 WER).

The forced license for exports to countries with public health problems

In accordance with international agreements, compulsory licenses may be granted for the manufacture of pharmaceutical products intended for export to countries with public health problems.

Powers issues

The competent court for patent cases is the company court. Specifically for patent cases, the Brussels Enterprise Court has exclusive jurisdiction. Appeals can be made to the Brussels Court of Appeal.

The Brussels I Regulation (Articles 8.1 and 24.4) should be applied to disputes of a cross-border nature.

The arrangement for the period between application and grant of patent

For the period between publication of the patent application and grant of the patent, Article XI.35 WER provides a special regulation:

• The patent applicant may claim reasonable compensation from third parties who have applied the invention in a manner that would be prohibited after grant
• Compensation is determined by the court in the absence of agreement
• After patent issuance, the third party may recover the fee paid if the claims in the final editorial are more limited

b. European patents with unitary effect.

The European patent with unitary effect gives the patent proprietor the right to prohibit any third party from performing acts against which that patent provides protection. The scope of that right and its limitations are uniform in all participating Member States in which the patent has unitary effect. The law applicable to European patents with unitary effect is the law of the participating Member State in which, according to the European Patent Register, the applicant had his residence or principal place of business on the date of filing of the European patent application (Art. 5 and 7 Regulation 1257/2012).

The unitary court will thus apply the provisions of the UPC Agreement since it is part of the national law of the member state where the patent with unitary effect applies.

Acts of counterfeiting

Article 25 of the UPC Agreement gives the patent holder the right to take action against the direct application Of invention such as:
(a) to manufacture, offer, market, use, or import or stock a product covered by the patent for that purpose;
(b) to apply a process covered by the patent or, if the third party knows or should have known that application of the process without the consent of the patent holder is prohibited, to offer it for application in the territory of the contracting Member States in which that patent has effect;
(c) offer, place on the market, use, or import or stock for that purpose a product directly manufactured according to the process covered by the patent.

Article 26 of the UPC Agreement also gives the patent holder the right to take action against the indirect application van the invention. This is the right to prohibit any third party who has not obtained the consent of the proprietor for this purpose from offering or supplying, in the contracting States in which the patent has effect, to a person other than the one entitled to use the patented invention, means relating to an essential element of the invention, for the use of that invention, if the third party knows or should have known that those means are suitable and intended for that use.

Exceptions

Article 27 of the UPC Agreement contains the exceptions to the patentee's rights. These include:

• acts performed in the private sphere and without commercial purposes;
• experiments involving the subject matter of the patented invention;
• The use of biological material for cultivation, or discovery and development of other crop varieties;
• the preparation for direct use for individual cases on medical prescription of drugs by pharmacies, or operations concerning the drugs so prepared;

Article 28 has a limitation in the case of prior use of the invention. Article 29 confirms the exhaustion of rights attached to the European patent.

Competent courts

For litigation involving European patents with unitary effect is the unified patent court (Unified Patent Court) exclusive competent. This court consists of:

• A Court of First Instance with a central division (Paris, with divisions in Munich and Milan) and local/regional divisions (including in Belgium)
• A Court of Appeal (based in Luxembourg).
• A registry

The unified patent court has jurisdiction for all disputes concerning European patents and European patents with unitary effect Art. 1 UPC Agreement). Consequently, the Belgian courts only have jurisdiction over Belgian patents, except in the case of an opt-out (patentees can, according to Article 83.3 UPC Agreement, choose that their European patent falls outside the jurisdiction of the unified patent court). Moreover, Article 83.1 UPC Agreement provides for a transitional period of seven years (until June 1, 2020) during which national courts also retain jurisdiction for actions of infringement or invalidity of a European patent.

6. The end of patent law

6.1 Nullification of a patent

Under Article XI.57-138 EPC, a patent may be declared invalid by the court in the following cases:

1. Non-patentable matter: When the subject matter of the patent is not an invention, or falls under the excluded inventions or in the absence of novelty, inventive step or industrial applicability.
2. Insufficient description: If the patent does not contain a sufficiently clear and complete description of the invention for a person skilled in the art to apply it.
3. Difference from the patent application: When the subject matter of the patent is not covered by the content of the patent application as filed (or by the content of the original application if the patent was granted on a divisional application).
4. Unlawful attribution: If the patentee was not entitled to obtain this patent.
5. Expanding the scope of protection (in the case of European patents): When the scope of protection of the European patent is extended.

The annulment of a patent has retroactive effect to the date of filing of the patent application. The invalidation of a European patent by a Belgian court does, however, only have legal effect on Belgian territory.

However, the retroactive effect of invalidity does not affect final court decisions or (license) agreements on this patent that predate the invalidity decision.

If the grounds for invalidity affect the patent only partially, the patent is limited by an amendment to the claims (and, where appropriate, the description and drawings) and declared partially invalid.

6.2 Revocation or limitation of a patent

Pursuant to Article XI.56 WER-105a et seq. EPC, the holder of a patent may revoke it in whole or in part at any time by a written and signed request addressed to the Minister of Economy (addressed to the Intellectual Property Office) or to the EPO. This request shall be entered in the Register of Invention Patents, if necessary with the full text of the amended claim(s) that the patent holder wishes to retain and the amended description and drawings.

Total or partial revocation of a patent is retroactive to the date of filing of the patent application.

6.3 Expiration of patent right

Termination due to passage of time:

A patent terminates at the end of the twentieth year from the date of filing the application. This is the normal maximum term of a patent, after which the invention belongs to the public domain.

For certain products, such as medicines and plant protection products, a Supplementary Protection Certificate (SPC) can be obtained, which extends the term of protection. This certificate is valid from the expiration of the legal term of the basic patent, for a period of up to five years (or five years and six months for pediatrics). Importantly, the total effective period of protection (i.e. of patent and supplementary protection certificate) should never exceed 15 years from the first market authorization in the EU.

Forfeiture due to non-payment of conservation fees:

In order to maintain a patent, the patent holder must pay annual fees.

These fees are due from the beginning of the third year (at the earliest) or fifth year (at the latest) from the filing date of the patent application, and at the beginning of each of the following years.

If payment of the annual fee was not made by the due date, this fee may still be paid, plus a surcharge, within a grace period of six months.

If the annual fee and surcharge are not paid within the grace period, the holder of the patent is declared to have forfeited his rights by operation of law.

Decay through distance:

The holder of a patent may waive all or part of it at any time by a written and signed request addressed to the Minister (Art. XI.55 WER). This waiver may be limited to one or several claims. The request for waiver shall be entered in the Register of Invention Patents and shall take effect from the date of such entry .

7. Policy Relevant Considerations.

7.1 Patenting or Secrecy.

In innovation, it is important to weigh whether an invention should be patented or kept secret. Patenting provides exclusive rights but requires disclosure. Secrecy may be more attractive in some cases.

7.2 Patent Documentation as a Source of Information

Patent documents are a rich source of information about technological developments and can help companies in their research and innovation.

7.3 Tax Benefit Measures for Income from Patents

Belgium offers several tax advantages for patent income, such as the patent deduction, which helps companies reduce their tax burden.

With this comprehensive guide on patent law, we hope to have given you a clear picture of the various aspects of this legal field. Should you have any questions or need legal advice regarding your inventions and patents, please do not hesitate to contact our firm.