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Draft amendment to the Industrial Property Act for faster and cheaper procedures

Today the Government adopted a draft amendment to the Industrial Property Act and will send it to the National Assembly for consideration under the ordinary procedure. The amendment aims to simplify and cheapen some existing procedures and further align Slovenian regulation with European and international rules.

The Industrial Property Act regulates the types of industrial property rights (patent, supplementary protection certificate, design, trade mark, geographical indication), the procedures for granting and registering these rights, and the judicial protection of the rights.

Making the application process cheaper and information faster

The Slovenian Intellectual Property Office will be able to contract with other offices and organisations to provide the Office's new information services. For example, the Office could contract the European Patent Organisation. This would enable applicants for national patent applications to obtain, within a few months of filing their application, good quality information on whether their invention meets all the conditions for the grant of a patent.

If the Office were to conclude an agreement, some applicants could also benefit from the substantial financial incentives offered by the European Patent Organisation. In fact, the European Patent Office grants applicants a financial advantage of as much as 80% of the cost of the service for prior art search with a written opinion, when filed through an office with which it has an agreement. "This means that applicants will pay only 467 euros instead of the current 2,336 euros - an arrangement that applies to up to 400 national patent applications a year," says Minister Matjaž Han. The following applicants would be eligible for this financial relief under the European Patent Organisation rules: natural persons (each natural person for up to five national patent applications per year), universities and non-profit research institutions (each for up to ten national patent applications per year), and small and medium-sized enterprises.

An additional discount could also be granted to applicants of a national patent application (for which a prior art search would already have been carried out by the European Patent Office), where they also file a European patent application under the European Patent Convention or an international patent application for the same invention.

Faster and cheaper administrative revocation and invalidity proceedings

Two new administrative procedures for revocation and invalidity are foreseen as a result of the transposition of the provisions of the European Directive. These proceedings are currently pending before the District Court in Ljubljana, but will now also take place before the Intellectual Property Office.

"This will allow parties to obtain a cancellation or a declaration of invalidity of a trade mark more quickly and at a lower cost. Cancellation of a trade mark is possible where, for example, the trade mark has not been used in the course of trade for the last five years or has become a generic term for certain goods or services. However, a trade mark is declared invalid if it should not have been registered in the first place," explains Matjaž Han, Minister for the Economy, Tourism and Sport. More complex cases involving infringement of trade mark rights will continue to be handled by the District Court in Ljubljana.

Harmonisation with the Unified Patent Court Agreement and the European Patent Convention

Draft proposal is also newly aligned with the Agreement on the Unified Patent Court, which Slovenia has already ratified. The Unified Patent Court will settle disputes relating to the European patent with unitary effect and the traditional European patent, with the judgment having effect in all countries participating in the enhanced cooperation. This will be faster and, presumably, cheaper than filing actions in each country separately. The Unified Patent Court will become operational on 1 June 2023.

The Slovenian court (the District Court in Ljubljana) will continue to have jurisdiction over national patent disputes and, during a transitional period, also over traditional European patents, if their proprietors decide to exclude the jurisdiction of the Unified Patent Court. It is therefore important that we define the rights conferred by a patent and the limits to those rights in the same way as they are defined in the UPC Agreement.

"For the same reasons, we have proposed to align the law with certain provisions of the European Patent Convention, in particular as regards the conditions for the grant of a patent. This will ensure a uniform interpretation of these conditions and increase legal certainty," added Minister Han.

Other amendments

The draft proposal also provides that the Slovenian Intellectual Property Office will declare a European patent entered in the national register to be invalid ex officio when the European patent is revoked at the European Patent Office. This ensures greater legal certainty.

The amendment also allows the proprietor of a European patent for which the European Patent Office has not registered unitary effect for formal reasons to nevertheless enter the European patent in the Register of Patents with the Intellectual Property Office, with effect as a national patent.

The amendment provides for additional ways to make it easier for the holder of a national patent to maintain the validity of the patent beyond its tenth year. The amendment introduces several other changes, including shortening the objective time limit for requesting a continuation after default and introducing a uniform agent's tariff.

The amendment was drafted by the Ministry of Economy, Tourism and Sport in cooperation with the Slovenian Intellectual Property Office. This amendment transposes the provisions of Directive (EU) 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks, which have not yet been transposed by the last amendment to the 2020 Act. The deadline for transposition of these provisions of the Directive expired on 14 January 2023.