On July 12, 2023, an amendment to the Industrial Property Act (ZIL-1F) was published in the Official Gazette of the Republic of Slovenia, which will enter into force on July 27, 2023 (hereinafter referred to as “ZIL-1“).
The key changes introduced by the amendment focus on simplifying and reducing the procedures related to patent registration, expediting the acquisition of information in the patent application process, streamlining the administrative procedure for revocation and invalidation of trademarks, prohibiting simultaneous protection of a European patent as a national patent, and other changes in the field of patent protection, which will be listed below. These significant changes will contribute to improving the system of industrial property in Slovenia and align national legislation with Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks, Regulation (EU) 2017/1001 on the European Union trademark, and the European Patent Convention.
a.) Faster information retrieval process
The amendment grants the Intellectual Property Office of the Republic of Slovenia (hereinafter referred to as the “Office“) a new competence to, with the consent of the applicant, transmit the applicant’s patent application to other offices for conducting searches on the state of the art and providing written opinions on the fulfillment of conditions for the claimed invention. The Office’s collaboration with other patent offices will now enable applicants to obtain more specific information about whether their invention actually meets the requirements for patent granting in a faster manner.
Additionally, certain applicants will benefit from financial advantages as some international organizations, upon concluding relevant agreements with national authorities, provide financial relief in paying fees for searches. For example, the European Patent Office (hereinafter referred to as the “EPO”) offers a 80% fee reduction for searches to natural persons, small and medium-sized enterprises, and universities. Similar reductions are also available for filing European or PCT applications for the same invention. Consequently, this change will result in a reduction of the financial burden for applicants.
b.) Administrative procedure for revocation and invalidity of trademarks
Until now, the procedures for revocation and invalidation of trademarks were conducted solely before the District Court in Ljubljana. However, in line with Directive (EU) 2015/2436, these procedures will be now carried out directly before the Office after the amendment comes into effect. In the new Chapter 8a of the ZIL-1, the amendment will regulate the content of claims and grounds for revocation or invalidation of trademarks. Requests for revocation or invalidation of trademarks will now be submitted to the Office, which will decide on these requests in administrative proceedings, thus alleviating the burden on the courts.
c.) Other patent-related novelties
Based on the European Patent Convention, the amendment also aligns exceptions to patent protection, thereby eliminating possibilities for diverse interpretations of relevant provisions. In accordance with the existing interpretation practice of Article 11 of ZIL-1, the amendment explicitly enacts exceptions to patent protection, such as aesthetic creations, games or business methods, computer programs, and presentations of information. On the other hand, the amendment introduces the possibility of patent protection for the first use of a substance or mixture in processes for the treatment of the human or animal body.
The amendment also grants the patent holder the right to prevent indirect use of the invention protected by the patent. The patent holder may now prevent a third party, who does not obtain holder’s consent, from supplying or offering supply means related to a part of the invention which is essential for its use to individuals who are not entitled to exploit the invention or patent, provided that the third party knows or should know that those means are suitable and intended for the use of the invention.
Furthermore, the amendment provides greater legal certainty in case of the declaration of nullity of a European patent at the EPO level. In such cases, the Office will, ex officio, declare the patent registered in the national register as null. Additionally, the amendment introduces a prohibition on simultaneous protection or unitary effect of a European patent and a national patent in Slovenia. Namely, if a European patent and a national patent are granted to the same person for the same invention, with the same filing date and the same claimed priority date, the national patent will be deemed without legal effect from the date when the EPO published the mention of the grant of the European patent in the European Patent Bulletin.