NETHERLANDS Law and Practice Contributed by: Rutger Kleemans, Jelle Drok, Ruben Laddé and Allard van Duijn, Freshfields
10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights The assignment of patent rights, in full or joint ownership, requires the transfer to be docu- mented in a written agreement. This transfer can be done through a notarial deed, but it is also possible through a private written agree- ment between the parties. While there is no strict obligation to register the transfer in the Dutch patent register, the registration of the deed must be registered in the patent register to be effec- tive against third parties. 10.2 Procedure for Assigning an Intellectual Property Right Under Dutch law, the transfer of a patent right requires either a notarial or private deed in which the transfer and acceptance of the transfer are explicitly stated. The deed of transfer of the patent right is reg- istered, at the request of one of the parties, in the register maintained by the Netherlands Pat- ent Office. While a transfer that is not registered in the Netherlands Patent Office register is still valid, it in principle has no effect with regard to third parties if it is not registered. 10.3 Requirements or Restrictions to License an Intellectual Property Right A licence to a patent right may be granted informally, eg, orally or tacitly, without a writ- ten agreement. However, if the licence is to be enforceable against third parties, it must in principle be formalised in writing and registered with the Patent Office. Registration in the patent register is essential to ensure that the licence is enforceable against third parties.
costs incurred by the successful party including lawyers’ and European patent attorneys’ fees, capped as follows (depending on the complexity of the case): • simple: maximum EUR30,000; • standard: maximum EUR75,000; • complex: maximum EUR150,000; and • very complex: maximum EUR250,000. Full costs can also be rewarded in nullity pro- ceedings, provided there was a threat of infringe- ment. For the calculation of the lawyer’s costs, the court demands an overview of the billed hours and rates. Instead, the parties may agree on a specific amount of costs to be awarded to the prevailing party. 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Alternative dispute resolution (ADR), such as mediation and arbitration, is available in the Netherlands, but is rarely used in patent cases. ADR is voluntary and requires the consent of the parties involved. There are no mandatory ADR procedures for patent disputes. A mediator may be appointed to confer with the parties and their lawyers on a confidential basis and to help them find an amicable solution. The process may be suspended during this period at the request of the parties and may be resumed if the parties are unable to reach agreement. While ADR may be a method to help resolve (certain aspects of) a dispute, it cannot invali- date a patent.
370 CHAMBERS.COM
Powered by FlippingBook