NETHERLANDS Law and Practice Contributed by: Rutger Kleemans, Jelle Drok, Ruben Laddé and Allard van Duijn, Freshfields
obtain protection for non-new or non-inventive products or processes. The Supreme Court grants the lower courts con- siderable discretion in determining the scope of protection and equivalence. While the four cri- teria mentioned are useful for assessing equiv- alence, they are not mandatory. The approach may vary, and the outcome is often closely tied to the specific facts of the case. Prosecution History The prosecution history of a patent may be used in a defence against infringement to sup- port a narrow claim construction, eg, when the patentee has narrowed the claims to overcome patentability concerns. However, courts should exercise caution using the prosecution history to broaden the scope of protection beyond the interpretation of the claims in light of the descrip- tion and drawings, in order to maintain legal cer- tainty for third parties. 3.5 Defences Against Infringement The most common defences raised in infringe- ment proceedings are non-infringement and invalidity of the asserted patent (by way of coun- terclaim in the infringement proceedings). So- called Gilette defences, where it is argued by the alleged infringer that it is merely applying the prior art, have also been honoured. The defence of non-infringement can also be based on an exception in Dutch patent law, including acts done in the private sphere for non-commercial purposes, acts done for experi- mental purposes or acts falling under the “Bolar exception” – allowing the use of the patented invention for the sole purpose of obtaining regu- latory approval for generics.
Other examples of defences to infringement are set out below. • Procedural defences: the alleged infringer may raise procedural defences, such as contesting the plaintiff’s authority to institute proceedings, contesting the validity of the summons and the expiry of the limitation period. • Prior use rights: Prior user rights allow par- ties who have used an invention before the filing or priority date of a patent to continue using it, even if the patent is granted to a third party. To claim these rights, the party must have already made or used the invention in its business before the critical date, and the use must be in good faith and not based on the patentee’s disclosure. • Exhaustion: the patent owner’s exclusive rights are exhausted when products have been put on the market in the European Community or the European Economic Area by the patent owner or with the patent owner’s content. A party raising an exhaus- tion defence will thus need to prove that the patented product was put on this market by the patentee or that the putting on the market was done with the patentee’s consent. • FRAND obligations: in the case of enforce- ment of SEPs, the alleged infringer may rely on alleged abuse of a dominant position and/ or failure to comply with FRAND obligations. 3.6 Role of Experts In the Netherlands, experts may be appointed by the parties to patent proceedings. Although Dutch procedural law allows for court-appointed experts, either ex officio or at the request of the parties, this is rarely used in patent cases. Usually the parties submit expert opinions, especially in complex cases. Experts serve to
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