Arnold & Siedsma
Why did you decide to become a patent attorney?
The versatility of the job appealed to me from the beginning. The combination of keeping up with technical innovations together with the legal and commercial implications of inventions ensures that the job remains fascinating and that you are kept abreast of new technology. Also, developing winning arguments in complex oppositions or litigation is a challenging task, of which I never get bored. Further, as a patent attorney you play an important role in determining a company’s IP and related business strategies. Playing a part in making a business successful using a good IP strategy is another aspect of the job where I feel that I can use my creativity. Being a patent attorney allows me to continuously develop and increase my technical knowledge and use my analytical, strategic and creative skills.
What is the key skill set that top-class patent attorneys should possess?
The key skills that top-class patent attorneys should possess are good analytical skills, a strategic and creative mind, good language skills and a winning mentality. It is important to be able to think two steps ahead in order to act in clients’ best interests.
Which technology areas are driving your practice currently and why?
The main technology areas which drive my practice are electronics, telecoms, information computer technology, semiconductors, medical technology and mechanics. I like to work in a variety of technical fields as long as I have a good understanding of the technology. When I start to work for a new client, I enjoy doing some background reading in order to get an in-depth understanding of the technology.
When would it be advisable for an international client to file for a patent directly in the Netherlands, as opposed to the EPO?
For international clients, the idea of filing an application in the Netherlands before filing one at the EPO is interesting. Applications in the Netherlands can be filed at the same time as priority applications or shortly afterwards and in English, whereas search reports established by the EPO are received within the priority year. On top of that, applications in the Netherlands are automatically granted, providing a fast patent right that can be used immediately (eg, against infringing articles entering the European Union through the Rotterdam harbour).
Arnold & Siedsma’s strategy is successful and extremely cost-effective. Our strategy provides the following advantages over the usual manner of filing and prosecuting US, China or Japan-originating patent applications at the EPO:
- It provides an EPO novelty search and patentability opinion in the priority year on as many claims as desired, without requiring any claims fees to be paid.
- It affords patentees knowledge of what subject matter will be patentable at the EPO during the priority year.
- It allows patentees to obtain granted European patents quickly – a notice to grant (Rule 71(3) of the European Patent Convention (EPC) communication) can be the first communication from the EPO.
- It significantly reduces costs in both EPO and global prosecution. For example, search fees in the Netherlands are lower than for European applications, and a search fee can be refunded for European applications.
- It can avoid rejections during EPO prosecution based on added subject matter, intermediate generalisation, lack of clarity, insufficient disclosure and lack of unity.
- It can significantly improve a patentee’s situation in EPO opposition proceedings, since the patent is no longer susceptible to the trap of Articles 123(2) and (3) of the EPC.
- It allows patentees to obtain corresponding US and other foreign patents using the Patent Prosecution Highway without file wrapper estoppel.
How would you characterise the current patent environment in Europe?
Over the past decade, many countries in Europe have taken initiatives to stimulate IP awareness and promote the filing of patent applications. Also, fiscal advantages can be obtained based on patents, further stimulating companies to protect their innovations. On the other hand, the EPO has been working on accelerating the grant procedures and reducing its backlog, the result being that European patents are granted more quickly and in greater numbers. It seems that this will lead to more oppositions and litigation. Moreover, European companies, especially in the telecoms field, are facing more NPEs with an increasing number of European patents (ie, trolls).
Partner [email protected]
Nele D’Halleweyn is a partner at Arnold & Siedsma. With 11 branches in Belgium, the Netherlands and Germany, the firm is an all-round IP service provider. Dr D’Halleweyn obtained a PhD in micro-electronics from the University of Southampton and specialises in European patent work in the electronics, telecoms and medical technology fields. Thanks to her extensive experience in opposition and litigation procedures, she advises clients quickly and clearly so that appropriate action is taken promptly.