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The Netherlands: Lack of due care forms impediment for patent restoration

Restoration of the omission to pay an annuity fee for the Dutch part of a European patent is only allowable under Article 23 of the Dutch Patent Act if the patent proprietor (and his representative) exercised all due care. This was recently decided in a case between Flawa and the Dutch Patent Office (DPO) before the court in The Hague.

The chief executive of the patent proprietor, Swiss-based Flawa AG, had instructed its (Swiss) agents that the Dutch part of their European patent could lapse by not paying the annuity fee. The actual lapse of the Dutch patent was communicated to the patent proprietor by a decision of January 14 2015. In the appeal of that decision before the Dutch court, the patent proprietor now argued that the chief executive was not authorised to take this decision and that hence the legal consequence of the non-payment of the annuity fee should be undone and the patent should be restored.

However, the Court judged that the provision in the Dutch law should be interpreted similarly to Article 122 EPC in the sense that restoration would only be possible if the non-payment were due to unforeseeable circumstances outside the influence of the patent proprietor. Since in the present case the decision not to pay had been taken deliberately, the provision of Article 23 cannot be used to nullify this decision. The chief executive should be considered to represent the patent proprietor, certainly now that he acted as if he had such power.

This case shows that it is always of great importance to verify whether a decision to discontinue payment of annuity fees is in accordance with the desire of the patent proprietor.

Bart van Wezenbeek

Johan de Wittlaan 7
2517 JR The Hague
The Netherlands
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99

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