Nele D’Halleweyn

What drew to you a career in intellectual property?

The role of patent attorney is a very versatile one. 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 have to keep abreast of new technology. Also, developing winning arguments in complex oppositions or litigation remains a challenging task throughout your career. Further, as a patent attorney you play an important role in determining a company’s IP and related business strategies. Contributing to a business’ success by using a good IP strategy is another aspect of the job where you can use your creativity. Being a patent attorney allows you to continuously develop and increase your technical knowledge and to use your analytical, strategic and creative skills.

Which of your cases has been the most memorable and why?

My most memorable cases are those that look hard to defend and challenging to win at first. Searching for the winning argument and determining an optimal strategy to tackle a difficult case will always makes it unforgettable.

What are the biggest challenges facing your clients at present?

The biggest challenge for my medium-sized clients is making sure that their patent portfolios are stronger than those of their competitors so that they maintain a comfortable IP position. Further, this ensures that clients that traditionally file few patent applications can face patent troll-like companies confident that they have large patent portfolios, as such battles can be extremely time consuming and expensive.

What are the most common mistakes that parties make before the EPO – and how can they avoid them?

During prosecution, patent attorneys from other jurisdictions often propose amended claims that do not fulfil the very strict requirements of the EPO with respect to Article 123(2) of the European Patent Convention relating to the extension of subject matter. If a European patent is granted with subject matter that is not well supported in the application as originally filed, it may be lost in opposition based on this ground.

To avoid such issues, it is advisable to stay as close as possible to the text of the application as originally filed and to ask a European patent attorney to review the claim amendments.

Name two changes that you would you like to see to the Netherlands patent space – and how likely do you think they are to happen?

First, in the Netherlands it is already possible to file the description of a national patent application in English. However, the claims still have to be translated into Dutch and the search report is also issued in Dutch. Typically, the search is performed by an EPO examiner, who is not necessarily fluent in Dutch. I believe that it would be an improvement if claims could also be filed in English and if the search report was in English.

Second, the Unified Patent Court (UPC) Agreement provided that the Central Division of the UPC would be split between Paris, London and Munich. As the United Kingdom is no longer participating in this venture, I believe that The Hague or Amsterdam should be considered as possible new locations. The Netherlands is known for having good patent judges and is located centrally within Europe, making it easy to travel to. The presence of many high-quality patent prosecution and litigation firms in and around The Hague and Amsterdam, as well as the proximity of the EPO, would make the Netherlands a perfect location for part of the UPC’s Central Division.