Katzarov’´s Manual on Industrial Property

Patents of Invention

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 27, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 27, 1992.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms, since February 25, 1994.
– Patent Cooperation Treaty (PCT), since February 1, 1997.
– Strasbourg Agreement Concerning the International Patent Classification, since July 15, 2010.
– Patent Law Treaty, since August 20, 2010.
– Co-operation and Extension Agreement with the European Patent Office, since November 1, 2004 (terminated with the entry into force of the EPC on October 1, 2010, but still applicable to European patent applications filed between November 1, 2004 and September 30, 2010 and European patents resulting from such applications).
– European Patent Convention (EPC) since October 1, 2010 (possible to designate Serbia as of October 1, 2010).
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.

Back to top

Filing

Applicant: the inventor or his legal successor (individual, firm, company).

Foreigners and nationals not living in the country: must have a local attorney.

Protection of foreigners: they enjoy the same rights as nationals in accordance with International Treaties and Agreements.

Data on the inventor(s): the patent application must contain the name of the inventor(s), or the inventors’ declaration that he (they) does not want to be nominated in the application (can be filed subsequently). In case the application is filed by an individual/company who is not the inventor, the applicant must submit his declaration regarding the legal basis for filing the application in his name (can be filed subsequently).

Patentability: a patent is granted for an invention in any field of technology, which is new, which involves an inventive step and which is capable of industrial application.

Categories: patents covering a product (device, substance, composition, biological material (microorganism, culture of plant or animal cells, sequence of genes), a process, use of a product or use of a process. A product obtained directly by a method or a process is covered by the method or process claim (product by process protection).

Novelty: an invention is novel if before the filing of the patent application it was not encompassed in the prior art (absolute novelty). An invention will be considered encompassed in the prior art if it has been made public by means of a written or oral description, by use or in any other way, or if it has been included in a Serbian patent or petty patent application having an earlier filing date than the subject patent application, and published on the filing date of the subject patent application or after. A grace period of six months is provided for cases of prior demonstration at an official exhibition and for unauthorized publication by a third party.

Exceptions to protection: (1) an invention whose commercial exploitation would be contrary to public order or morality (in particular: processes for cloning human beings; processes for modifying the genetic identity of germ cells of human beings; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes); (2) plant or animal species or essentially biological processes for the production of plants or animals, as well as plants or animals produced exclusively by essentially biological processes, except microbiological processes and the products thereof; (3) invention of a surgical or diagnostical method or a treatment method applied directly on a human or animal body, except for products, substances or compositions for use in any of these methods.

Not considered inventions: discoveries, scientific theories, mathematical methods, aesthetic creations, plans, rules and methods for performing mental activities for playing games or for doing business as well as computer programs, disclosure of information, as well as the human body, at any stage of its formation and development, and the simple discovery of one of its elements, including sequences or partial sequences of genes (except for an element isolated from the human body or produced by means of a technical process, including the sequences or partial sequences of genes).

Unity of invention: provided for if the inventions are so mutually connected that they realize a single inventive concept.

Kinds of protection: basic patent and patent of addition.

Confirmation patent: not provided for.

Secret patents: only for applications filed by national physical persons and legal entities.

Priorities: from filing date of the patent application. Union priority must be claimed in the application. The data on the country, filing number(s) and filing date(s) of the priority application(s) must be filed within two months from the filing date. Certified copy of the priority application(s) must be filed within three months from the filing date of the new application, or sixteen months from the earliest priority date, whatever period expires earlier.

Territory covered: the Republic of Serbia.

Filing requirements for an application (to be sent to resident agent):
1. Specification (EPO type) and abstract;
2. Drawings (if any), in triplicate;
3. Certified copy of the priority application(s), if any (not required for the national phase of a PCT application);
4. The applicant’s declaration on the legal basis for filing the application in his name (can be filed subsequently);
5. Power of attorney, no legalization (can be filed subsequently);
6. Copy of the PCT documentation: PCT publication, International Search Report, Written Opinion (if any), response to the Written Opinion (if any), Preliminary Examination Report and the amended sheets (if any).

Note: agents can proceed on the basis of filing orders only if they are accompanied with the specification and drawings (if any). 

Electronic filing: possible (reduced filing fee).

Electronic signatures: accepted provided that they are certified by a Certification Service Provider listed on the eIDAS Trusted List (https://eidas.ec.europa.eu/efda/tl-browser/#/screen/home).

PCT applications: time limit for entering the national phase: 30 months from the priority date (31 months with the payment of an additional fee).

European patents applications: validation possible for European patent applications filed on or after October 1, 2010 and designating Serbia as contracting State (EP applications filed between November 1, 2004 and September 30, 2010 could have been extended to Serbia). Time limit for entering EP regional phase: 31 months under both Chapters I and II. Validation requirements: (a) appointment of a national professional representative; (b) submission of translation of the full specification within a non-extendible term of three months from the date of mention of the grant of the European patent in the EPO Bulletin. Annuities are payable for the years following the year in which the mention of the grant has been published. The minimum time period for paying annuities due at validation its two months.

For a change of name or address: only a power of attorney in the new name/address is required (no legalization). A proof of name/address change is not required, unless the IP Office has reasonable doubt regarding the request for the name/address change recordal and makes an explicit request to submit the proof.

Back to top

Examination Procedure

Formal examination: examination as to whether the application is complete and fulfills formal requirements.

Search of the prior art: after the formal examination, at the applicant’s request, the IP Office searches the prior art and provides the applicant with the search results.

Publication: the basic information regarding the application, including an abstract of the disclosure and the results of the search of the prior art is published in the Official Bulletin.

Substantial examination: the applicant may file a request for substantial examination within a term of six months from the date of publication of the search results in the Official Bulletin. If no request is made, the application is considered withdrawn. The IP Office examines whether the subject matter disclosed in the application is an invention; whether the invention is new, results from an inventive step, is capable of industrial application; whether it is not excluded from patent protection; whether it is sufficiently disclosed; and whether unity of invention requirements are fulfilled.

Patent of addition: can be applied for in the case of an improvement of a pending patent application or a granted patent.

Provisional registration: not provided for.

Registration: after having established in the substantial examination that the invention fulfills the conditions for patent protection, the IP Office sends the final wording of the patent claims to the applicant for his approval. Upon the payment of the issue fee and the publication and printing costs, the IP Office renders a granting decision, registers the patent, publishes the first claim and the drawing of the invention (if any) in the IP Office’s Bulletin and issues Letters Patent (in electronic and paper format). The printed text of the patent contains the whole specification and claims.

Amendments: the applicant may voluntarily amend specification, claims and drawings upon receipt of the search report as well as in reply to the first official action in the substantial examination. Further amendments are permitted only with the consent of the IP Office.

Transformation: during the whole examination procedure the applicant may file a request for transformation of his application into a design application or into an application for a petty patent. Such request may be filed only once (any further transformation request will be refused).

Restoration: possible by filing a request for restoration of rights; the request has to be filed within three months from the day on which the grounds for the omission ceased to exist, but not later than twelve months from the omission, or in case of omission of the term for payment of maintenance fees, not later than twelve months from the expiration of the grace period for the payment.

Appeals: the decision of the IP Office can be appealed within fifteen days from the receipt of the decision. Against the decision on appeal it is possible to initiate an administrative lawsuit with the Administrative Court (within thirty days from the receipt of the decision).

Back to top

Granting

Beginning of protection: the decision to grant a patent shall have effect from the date of publication of the grant in the Official Bulletin.

Duration: the validity of a patent is twenty years from the filing date of the patent application (for PCT applications: from the international filing date).

Duration of a patent of addition: not longer than the duration of the basic patent to which it relates. On the lapse of the validity of the basic patent, the patent of addition lapses as well, unless the applicant explicitly requests, within a term of three months, that it be converted into the basic one.

Supplementary Protection Certificate (SPC): provided for; the implementation of the relevant provisions commenced on July 1, 2013. SPC provides supplement protection to patents granted for a medicinal product for human or animal use and a plant protection product, for which an authorization for putting on the market has been granted in the special procedure. The SPC manufacturing and stockpiling waiver is provided for SPCs starting having effect as of July 2, 2022. The duration of SPC equals the time period which elapsed between the date of filing the application for basic patent and the date of the first authorization for putting the product onto the market reduced for five years, but not longer than five years from the date on which the SPC starts having effect. 

Paediatric extension: the amendments to the Serbian Patent Law, which came into force in December 2018, introduced “paediatric extension” of SPCs (Article 123a of the amended Patent Law), however, the implementation of these provisions has been postponed until the accession of Serbia to the European Union (Article 36 of the Law on Amendments and Additions to the Patent Law). Therefore, at this time it is not possible to obtain “paediatric extension” of a SPC in Serbia. 

Annuities: are due for the third and each following year for patent applications and patents counting from the filing date (for PCT applications: counting from the international filing date). The annuities can be paid with 50% fine within six months from the due date.

Marking of patented goods: not compulsory.

Text of marking: not provided for.

Amendment of issued patent: not feasible.

Corrections: possible to correct typographical errors.

Back to top

Modification of Protection after Granting

Disputes about ownership: a lawsuit can be filed with the court to establish the right to the patent/application during the whole validity of the patent.

Disputes about novelty: during the period of patent protection, it can be requested that the decision on granting the patent be annulled because of the lack of novelty. The decision is taken by the IP Office. The decision can be appealed and against the decision on appeal it is possible to initiate an administrative lawsuit with the Administrative Court.

Dispute about inventorship: the inventor can request, by filing a lawsuit with the competent court, to be declared an inventor and recorded as such in relevant documents and registers.

Rights of prior user: a prior user acting in good faith can continue to use the invention in production in his own enterprise or in someone else’s enterprise for his own purposes.

Opposition to granted patent: not provided for.

Assignment: provided for patents and patent applications; contract must be in a written form and registered to take effect vis-à-vis third parties.

License: provided for patents and patent applications; can be exclusive or not exclusive; contract must be in a written form and registered to take effect vis-à-vis third parties.

Compulsory license: can be imposed if the patentee, either by himself or through a third party, does not work or insufficiently works the patented invention, or when another invention protected by a patent cannot be worked, either in its entirety or partially, without the use thereof, and the patentee refuses to grant a license to the interested person or imposes unjustified conditions on him. It cannot be imposed if the patentee proves that the non-working or insufficient working of the invention is justified. The request for a compulsory license cannot be made before the expiry of a period of four years from the filing date of the patent application, or before the expiry of a period of three years from the patent granting date, whatever period expires later, except in cases where the emergency situations endanger the survival of the State or its citizens or in cases of public non-commercial use.

Expropriation: not provided for.

Cancellation: not provided for.

Nullification: a granting decision can be annulled if it is established that the conditions stipulated by the law were not fulfilled at the time protection was granted. The request can be filed with the IP Office during the whole duration of the patent.

Validation of invalidated patents: not provided for.

Infringement and penalties: the court can be requested to issue a declaration of infringement or serious threat of infringement, to prohibit the activities which constitute or would constitute infringement, to grant indemnification, to order the publication of the judgment at the expense of the infringer, to order seizure and/or destruction or alteration of products made or obtained by means of patent infringement or the material or articles (equipment, tools) predominantly used in the creation of infringing products, and to order the infringer to provide information about third parties which participated in infringing activities. Instead of indemnification, where applicable, the Court may grant a lump sum compensation in the amount not lower than the one that would be received for the specific use of the subject of protection, if such use was in accordance with the law. The lawsuit has to be filed within a period of three years from the date the plaintiff learned about the infringement and the identity of the infringer, but not later than five years from the date of infringement, or, in case of continuous infringement, from the date of the last infringement. Preliminary injunctions and securing of evidence are provided for (can be requested in a lawsuit, exceptionally even earlier, but the lawsuit must be filed thirty days from the date of the decision granting the injunction/securing of evidence). The burden of proof is placed on the plaintiff. An exception is made for patents relating to the process for a new product, where the burden of proof is on the defendant. Fines may be imposed both on a company and company official. Imprisonment provided for in the Criminal Code.

Back to top