Patents of Invention
– Industrial Property Act, consolidated text valid as of November 18, 2006 and November 27, 2013. (Zakon o industrijski lastnini (Uradni list RS, št. 51/2006 – uradno precišceno besedilo in 100/2013.)
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since June 18, 1992.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 25, 1991.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 25, 1991.
– Patent Cooperation Treaty (PCT), since March 1, 1994.
– WTO’s TRIPS Agreement, since July 30, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since March 12, 1998.
– European Patent Convention (EPC) – as an extension state since March 1, 1994, full membership since December 1, 2002. Also member of the London Agreement on the Application of Article 65 EPC, since May 1, 2008.
– Strasbourg Agreement Concerning the International Patent Classification, since May 10, 2002.
– Patent Law Treaty, since April 28, 2005.
Applicant: inventor, his heir or other successor in title, any legal or natural person. Foreigners: must appoint a professional representative in Slovenia (though they may perform some acts without a representative). Protection of foreigners: they enjoy the same rights as Slovenian nationals. Naming of inventor(s): an inventor must be named in the application. Kinds of protection: patents, short-term patents. Patentability: a patent is granted on an invention, which is new, involves an inventive step and is industrially applicable. Exceptions to protection: discoveries, scientific theories, mathematical methods, rules, schemes, methods and processes for performing mental acts; inventions, the exploitation of which would be contrary to law or morality; inventions of surgical or diagnostic methods or methods of treatment practiced on the living human or animal body, with the exception of inventions relating to substances for use in any of these methods. Protection of pharmaceuticals: possible. Novelty: the subject matter of the patent application should not have been made available to the public by means of an oral or written description, by use or in any other way. Unity of the invention: a patent application may cover several inventions, provided that they are closely related in such a way as to form a single inventive concept. Priorities: twelve months according to Paris convention; single and multiple; exhibition priority of an officially recognized international exhibition or fair may be claimed within three months following the closing date of the exhibition or fair. Divisional applications: can be filed up to the issuance of the decision on the publication of the parent application. Short-term patents: with the exception of processes, plant and animal breeds, a short-term patent may be granted for inventions which are new, susceptible of industrial application and are the result of a creative effort. The term of a short-term patent: is ten years from the date of filing the application. A short-term patent may be requested when filing the application or within a period of twelve months after the filing date, at the latest. After expiry of this time limit, the request is irrevocable. Patents of addition: not provided for. Confirmation patents: not provided for. Secret patents: responsibility of the Ministry of Defense.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization required);
2. Specification to be translated;
3. Abstract of maximum 150 words;
4. Drawings (A4 format), clear black lines on white paper, minimum top margin 2.5 cm, left 2.5 cm, right 1.5 cm, bottom 1 cm.
Filing without one or more requirements: possible; the application must contain the applicants’ name, the specification and informal drawings (if any). In case of a Convention application, the filing date of the basic application is required. The number and the country of the priority application may be submitted within three months. Other missing documents must be submitted when requested by the Patent Office. Filing in a foreign language: possible, a Slovenian translation must be filed within three months (the term may be extended for up to three months for justified reasons). Electronic filing: not available. An application shall be filed in writing, either directly or by post, or by facsimile machine.
PCT application: for PCT applications filed after December 1, 2002, the national route has been closed and Slovenia can only be entered via the European patent. Time limit for entering the EP-regional phase under both Chapters I and II: 31 months.
Examination: only with regard to the form and obvious non-patentability. However, before the end of the ninth year, the Document of Evidence (DOE)/patentability should be filed to maintain the twenty-year validity. Transformation of patent for invention into a design (and vice versa): not provided for. Independent claims: if unity of invention is observed, the application can contain several independent claims referring to e.g. product, process, device, use. Amendments of application: no essential changes or broadening of protection are allowed. The documents can be amended upon request of the Patent Office. Publication: eighteen months after filing or priority date, the abstract with the drawing (if any) is published in the Official Gazette. From that date on, the application is available to the public. The applicant may request an earlier publication but not earlier than three months after filing. Disputes about authorship and ownership: settled by the courts.
Granting: on the date of publication the patent is granted and entered in the Register of Patents. Opposition: not provided for. Duration: twenty years as of filing. However, by the end of the ninth year, the patentee must submit to the Patent Office written evidence that the patented invention satisfies all prescribed requirements concerning novelty and inventive step. This evidence is: (1) a Slovenian translation of one or several European patents granted for the same invention by the EPO; (2) if no application for a European patent has been filed, the evidence may be the Slovenian translation of a patent granted on the same invention after a substantive examination by another authority enjoying the status of a PCT Preliminary Examining Authority or by another Patent Office under special arrangement; in this case there also have to be submitted a list and copies of all other patents which could be considered as evidence, including data on patent applications and patents which have been refused; (3) a relevant opinion issued by an institution enjoying the status of a PCT International Preliminary Examining Authority or by another Patent Office under special arrangement. After examining this evidence, the Patent Office issues a decision on the grant of entire rights or on the grant of a narrower scope of rights or a decision of revocation of the patent. Duration of a short-term patent: ten years from the date of filing the application. Extension of duration: (a) patent duration may be extended for up to five years in the case of a war or a similar state of emergency (for the duration of such circumstances); (b) immediately on expiry of the term of the patent, a Supplementary Protection Certificate may be granted once if the object of a patent is a product or a process for the preparation or use of a product, for which a legal authorization for the exploitation thereof has to be obtained (for the duration of the authorization procedure, but not for more than five years; such an extension is only possible for patents applied for after January 1, 1993. Annuities: are due for the fourth year and each subsequent year in advance on the anniversary of the filing date. Annuity grace period: six months, with 50% fine. Marking of patented goods: not compulsory. Licenses: exclusive or non-exclusive licenses can be granted. Assignments: the application, the patent and the rights arising from the patent pass to the heirs and can be transferred to others.
Modification of Protection after Granting
Right of prior user: the patent has no effect vis-à-vis a person who was using the invention in Slovenia in good faith before the date of filing or, if priority is claimed, the date of priority, or was making preparations for such use, and who continues such use. Opposition: not possible. Exhaustion of rights: regional. Infringement: legal action against infringement of patent rights can be brought before the court within three years after the infringement and the perpetrator has become known to the patentee/licensee, but monetary claim can only be enforced for infringing acts having taken place during the five years preceding the filing of the action. The court shall interrupt the procedure until the Patent Office has issued a decision on the basis of evidence of patentability (cf. above). If the patent right of a process of manufacture of a new product is in question, the burden of proof is on the alleged infringer. Nullification action: at any time any interested person can institute a nullification action before the competent court, submitting evidence that, at the date of filing the application, the conditions of protection were not fulfilled. Compulsory licenses: may be granted by the court if (a) the public interest concerning, in particular, national security, nutrition, health or the development of other vital sectors of the national economy so requires; or (b) the owner of the patent or his licensee abuses the patent rights, in particular where the manner of exploitation, contrary to the adopted regulations, restrains competition.
Extension/Designation of European Patents
Extension of European patents to Slovenia: an extension agreement has been concluded between the Government of Slovenia and the EPO. The EPO will accept and process requests by the applicants to extend a European patent application or a granted European patent to Slovenia for any European patent application filed on or after March 1, 1994, and prior to December 1, 2002, if the prescribed extension fee has been paid at the EP Office.
Designation of European patents to Slovenia: since December 1, 2002, Slovenia can be a designated country in a European patent.
Within three months from the publication of the mention of grant in the EPO Bulletin, the owner of the European patent must file with the Slovenian Office a translation of the claims and pay the prescribed publication fee. The appointment of a national professional representative is required. After the three-month period, it is possible to file a request for further processing after the non-observance of a time limit and simultaneously also a request for validation of an EP patent in Slovenia together with a Slovenian translation of the granted EP claims and pay the prescribed publication fee. The request shall be filed within two months counted from the date, on which the reason that caused the failure to comply with the time limit terminated, and if the applicant was informed of the failure to comply with the time limit at a later stage, counted from the date, on which the applicant was informed of the failure to comply with the time limit, yet not later than within six months from the date, on which the failure occurred.
Rights derived from a European Patent
Grant of a European patent in which Slovenia is designated confers the same rights as the grant of a national patent.
Rights resulting from a European patent application may be used in Slovenia against an alleged infringer by sending a Slovenian translation of claims as notification to the alleged infringer.
Where a European patent and a national patent having the same date of filing or, if priority is claimed, date of priority, have been granted to the same person, the national patent shall have no legal effect, to the extent that it covers the same invention as the European patent, as from the date on which the time limit for filing an opposition to the European patent has expired without an opposition having been filed, or as from the date on which the opposition procedure has resulted in a final decision maintaining the European patent.
Supplementary Protection Certificates for Pharmaceutical and Plant Protection Products
Granting of, applying for and duration of the supplementary protection: in accordance with Council Regulation (EEC) No. 1768/92 of June 18, 1992, concerning the creation of Supplementary Protection Certificates for medicinal products; and Regulation (EC) No. 1610/96 of the European Parliament and of the Council of July 23, 1996, concerning the creation of Supplementary Protection Certificates for plant protection products. Maintaining the supplementary protection: upon payment of the annuity for each year of validity. Extension of duration of the SPC for medicinal products for paediatric use: in accordance with Regulation (EC) No. 1901/2006 of the European Parliament and of the Council and Regulation (EC) No. 1902/2006 of the European Parliament and of the Council of December 20, 2006 amending (EC) No. 1901/2006.