FAQ - Patents
If you want to protect your invention in Belgium, you have the choice between a Belgian patent, a European patent and a patent obtained via the international procedure called PCT (Patent Cooperation Treaty). The time necessary to get a patent protection varies depending upon the selected route.
To obtain a Belgian patent, it generally takes about 20 months, be it a “petit” 6-years patent, or a regular 20-years patent.
To obtain protection in Belgium via a European patent, it normally takes between 3 and 5 years from the filing date of the patent application.
If you want to obtain a patent protection in Belgium via the international procedure PCT, you shall add about 30 months on top of the time required to get a European patent, which amounts to a total comprised between 5 and 8 years.
The duration of the grant procedure (and thus the possibility to spread the payment of fees in time), the costs of protection, as well as the geographical coverage are all different. Regarding the latter, it shall be reminded that intellectual property rights are geographically limited: a Belgian patent does not confer any rights e.g. in France, and conversely no rights in Belgium may be derived from a US patent.
Accordingly, if you have an international development strategy, the best option will generally be to use the PCT route. There is no international patent in the sense of a patent protecting an invention in every country of the world under the same conditions. However, the PCT ratified by a very large number of countries among which Belgium, the USA, Japan, and China, has established a centralized procedure for the filing of a single patent application which greatly facilitates the procedure for obtaining patent protection in many countries. Indeed, the filing of a PCT application has the legal effect of filing a regular national (or regional in case of e.g. European patent) patent application in all PCT contracting states.
In case your development strategy is pan-European, applying for a European patent will generally be the right option, whereas if your strategy is purely Belgian, the route for obtaining a Belgian patent will need to be taken. It should however be noted that a Belgian patent is granted without any substantial examination, and therefore at the applicant’s own risk without any guaranty as to the merit of the invention.
However, other considerations (tax, public grants, expected disclosure, etc.) may render imperative the first filing of a patent application in Belgium, even though your development strategy is international in scope. Kirkpatrick will be able to advise you on the patent application filing strategy which best fits your needs and your budget.
Two types of costs are incurred at the time of filing a patent application:
1. the payment of official fees (fixed) (please see below); 2. the payment of fees for the services of a Patent Attorney, which includes in particular drafting the patent application. It is highly advisable to consult a Patent Attorney, as the filing of a patent application requires both technical and legal expertise. If you choose to use Kirkpatrick’s services, the drafting of a patent application may be estimated at between 3500 and 5000 EUR, depending upon the complexity and the length of the case.
Other costs of protection will need to be added on top of these initial costs; those include translation costs, renewal fees, etc. the payment of which will occur later in the proceedings and will spread across the entire lifespan of the patent. It is estimated that the overall cost for a granted European patent maintained during 10 years in 10 countries is roughly comprised between 30.000 and 40.000 EUR.
Official fees to be paid are related to the type of patent application. In June 2008, fees at the time of filing were as follows:
- For a Belgian patent application: a filing fee (50 EUR); possibly a fee for claiming one or more priority right(s) (12 EUR per priority claimed); possibly a search fee (300 EUR) when a 20-years patent is sought;
- For a European patent application: fees are charged for filing, search, designation of states, examination, grant and printing. Renewal fees are also payable for the third year and each subsequent year after the date of filing. The filing, search and designation of states fees due at the beginning of the procedure amount to about EUR 1180;
- For a PCT application: three types of fees are generally due with the filing of an international patent application: an international filing fee (approximately 850 EUR); a search fee which can vary from 200 to 1700 EUR depending on the International Searching Authority chosen, and a transmittal fee which is comprised between 20 and 130 EUR depending on the receiving Office.
The application for a Belgian or European patent or the PCT application shall contain the following elements:
1. a request for the grant of a patent (depending on the application, it may be a Belgian Request addressed to the Belgian Ministry of Economy, or form 1001 duly completed and addressed to the European Patent Office, or form PCT/RO/1001 addressed to the selected receiving Office);
2. a description of the invention;
3. one or more claim(s);
4. any drawings referred to in the description or claims;
5. an abstract; and
6. if needed, a power of attorney (Patent Attorney, lawyer, employee…)
Exclusive rights conferred by a Belgian patent to its proprietor are limited to the Belgian territory (similarly the rights conferred by a US or a Japanese patent are respectively limited to the US and to Japan). That is the so-called principle of territoriality of intellectual rights. Accordingly, the rights conferred by the Belgian patent do not allow you to prevent third parties living abroad from manufacturing “infringing” products in their country. However, you may forbid importation of infringing products manufactured abroad into the Belgian territory (albeit subject to the exhaustion of IP rights theory). If you want to benefit from similar patent rights in other countries than Belgium, you shall also obtain patents in such countries, via the national, the European or the international route (PCT). However, please keep in mind that such rights may not be extended to other countries at anytime. This is only possible within the priority year of the corresponding patent.
As the protection conferred by a patent is territorially limited, we generally recommend that you file a patent application is such countries which are (or will be) of economic importance to you in your area of practice, and/or in such countries where your main competitors are based, that is to say in such countries where you and/or your main competitors intend to manufacture, sell or use the subject-matter of your invention. Kirkpatrick will be able to advise you on the protection strategy which best fits your goals, your needs and your budget.
In order to assess patentability of an invention, examiners proceed with the search of all documents (mostly patent literature) relating to the subject-matter of the invention (forming the so-called “state-of-the-art”). A report listing all documents relevant to the assessment of patentability is established typically a few months after filing of the patent application and transmitted to the applicant. These documents are classified according to their degree of relevance as to the assessment of patentability of the invention. The search report has a very strategic importance as it gives clear indications as to the chances of the application to result in a granted patent.
Before the filing of a patent application, any acts likely to disclose the invention to the public (even partially) shall imperatively be avoided, even if they were made by the inventor himself. As a result, any disclosure (at a fair, a conference or a seminar), any written or oral communication of the invention to the public, in any language, in any part of the world shall be strictly avoided, unless a proper confidentiality agreement had been previously signed with the receiving party.
The term of a patent shall generally be 20 years from the date of filing (and not from the priority date), as long as the renewal fees have been paid in due time. In Belgium, if no search report is requested, the corresponding patent shall have a term of 6 years and is typically called “petty patent”. The protection conferred by a patent may be extended up to 25 years when the latter protects a pharmaceutical or phytopharmaceutical product.
Modern analyzing means and investigation methods render the protection by a patent safer than protection by trade secret in most instances. Indeed, very often the secret will be quickly disclosed either by analyzing it, or by using it.
The only exception seems to be the know-how attached to a process. However, if the secrecy option is chosen, it may well happen that a third party discovers the same process and patents it to his advantage. In that particular case, the first innovator may at most keep the right to continue exploiting his process under certain conditions, mainly territorial. Being said that, if the price of the new product is low or if the product is likely to become out of fashion very quickly, it will be inappropriate to file a patent application since the costs of the latter will not be compensated.
It should however be kept in mind that the main drawback of a protection by secret is its fragility and its relative character. If the secret is disclosed, the advantage comes to an end because the invention enters into the “public domain”. Of course, some penalties do exist in case of prejudicial disclosure of a secret; however those are limited to such persons bound by the secret (either by a written agreement, or because of their labor contract or criminal laws) or to those who would be accomplice to the violation of such an obligation.