Pages 298-304

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

SI Slovenia

Impact of the European Patent Convention on national law

On 1 December 2002, Slovenia became the 25^th contracting state to the EPC. Provisions implementing the EPC and bringing Slovenian patent law into line with the EPC are contained in the Industrial Property Act which entered into force on 7 December 2001.

A. National legal bases

1. Industrial Property Act (published in the Slovenian Official Gazette No 45/2001, entry into force: 7 December 2001; amendments No 96/2002, entry into force: 29.11.2002) - hereinafter: IPA;

2. Decree on the fees for the acquisition and maintenance of industrial property rights (see Slovenian Official Gazette No 110/2001, entry into force: 6 January 2002, amendments No 91/2002, entry into force: 2 November 2002) – hereinafter: Fees Decr.;

3. Rules on the content of a patent application and the procedure for divided patents (see Slovenian Official Gazette No 102/2001, entry into force: 29 December 2001);

4. Rules on the registration of applications and industrial property rights and priority certificates (see Slovenian Official Gazette No 102/2001, entry into force: 29 December 2001).

B. Application of the EPC in Slovenia

The main provisions relating to the application of the EPC in Slovenia are summarised below:

The information is structured in the same way as in the EPO brochure "National Law relating to the EPC".

I. Filing of European patent applications (Article 75 EPC, Article 25(1) IPA)

A European patent application may be filed either with the EPO or with the SIPO1:

Slovenian Intellectual Property Office (SIPO)

Kotnikova 6

p.p.206

SI-1000 Ljubljana

SLOVENIA

A European patent may be filed with the SIPO in any of the languages under Article 14(1) and (2) EPC. Filing of applications by facsimile is permitted (Article 80(2) IPA).

Inventions which are important for the defence or security of the Republic of Slovenia shall be deemed secret and shall be registered at the Ministry competent for defence (Articles 17(1), 25(2) IPA).

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC, Articles 26(2), 122(4) IPA)

Under Article 26(2) IPA, a published European patent application designating the Republic of Slovenia enjoys provisional protection under Article 122(4) IPA - compensation reasonable in the circumstances - as from the date on which a translation of the claims as published is submitted by the applicant to the person using the invention in the Republic of Slovenia. If in such case an action was started before the court, the court will suspend the proceedings until the date of entry of the European patent in the register of Slovenian patents at SIPO.

II. B. Filing a translation of the claims (Article 67(3) EPC, Article 26(2) IPA)

The translation of the claims must be drawn up in Slovenian. The translation may be corrected with effect as of the date on which the corrected translation of the claims published is submitted by the applicant to the person using the invention in the Republic of Slovenia (Article 28(2) IPA)

Documents meeting the formal requirements of Rule 35(3) to (14) EPC are accepted.

III. Filing translations under Article 65 EPC

III. A. Filing a translation of the claims of the patent specification (Article 65 EPC, Article 27(2) to (7) IPA)

The European patent has effect in the Republic of Slovenia only if the proprietor of the patent supplies the SIPO with the Slovenian translation of the claims with which the EPO intends to grant the patent, or maintain it as amended, within three months of the date on which the mention of the grant, or the decision to maintain it as amended, is published in the European Patent Bulletin. Upon filing the translation, the patentee must also pay the fee for the publication of the translation. In the event of failure to observe these requirements, the European patent will be deemed to be void ab initio in the Republic of Slovenia.

Documents meeting the formal requirements of Rule 35(3) to (14) EPC are accepted.

III. B. Representation by a patent agent (Article 129 IPA)

Filing of translations of the claims and payment of fees may be done directly by the proprietor of the European patent, provided that an address for correspondence on Slovenian territory is given.

For other requests, or acts before SIPO, an authorised professional representative, residing in Slovenia, is mandatory.

IV. Authentic text of a European patent application or European patent (Article 70 EPC, Article 28 IPA)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings. This does not apply, however, in revocation proceedings. Regarding the rights of a prior user where a translation is corrected, Article 28(3) IPA provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC, Articles 29, 109, 110 IPA, Fees Decr.)

Renewal fees in respect of European patents requesting protection in the Republic of Slovenia are due for each patent year (a patent year starting on the anniversary of the date of filing) following that in which the mention of the grant of the European patent is published in the European Patent Bulletin. Renewal fees are due on the last day of the preceding patent year; payments may be made within the patent year preceding the patent year for which the renewal fee is due. The first renewal fee in respect of a European patent falls due within two months of publication of the mention of the grant of the European patent.

Renewal fees may also be paid, with a surcharge of 50%, within a period of grace of six months from the due date. Reminders in cases of non-payment are sent to the representative or address for correspondence which should be on Slovenian territory, approximately one month after the due date.

Restitutio in integrum is possible within three months of the removal of the cause of non-compliance with the time limit or of the date the party becomes aware of the non-compliance with the time limit, if this date is later; the request is only admissible within one year of the expiry of the time limit (Article 68 IPA). At the time of filing the request for restitutio in integrum, the omitted act must be completed, and the prescribed fee paid, otherwise the request is deemed to be withdrawn.

The appointment of a national professional representative is not necessary for the payment of renewal fees and for reminders in cases of non-payment, provided that an address for correspondence is given on Slovenian territory. A national representative must be appointed for reminders in cases of non-payment if no address for correspondence is given on Slovenian territory, and for proceedings in respect of restitutio in integrum.

Renewal fees are currently as follows (Art. 1(1.2.1.) Fees Decr.):

VI. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC, Article 30 IPA, Article 1.4.2. Fees Decr.)

The Slovenian law provides for the conversion in the case of deemed withdrawal pursuant to Article 77(5) or Article 90(3) EPC at the request of the applicant and on condition that the prescribed fee is paid within three months of the transmission of the request for conversion to the SIPO. If the European patent application has been drawn up in a foreign language, the Slovenian translation of the application must be filed with the SIPO within the same period.

VII. Payment of fees (Articles 9, 109, 110 IPA, Fees Decr.)

All fees may be paid by transfer or payment to account No. 01100-1000307004 of the Administration of the Republic of Slovenia for public payments. Payments may also be made by postal money order or in cash at the SIPO; the effective date of payment is the date on which the required amount is actually entered in the account indicated above or the date of payment in cash at the SIPO (Article 2 Fees Decr.). Although transfer to the account from abroad is possible it is recommended to make payments in Slovenia.

VIII. Miscellaneous

1. Simultaneous protection (Article 139(3) EPC)

The Slovenian patent law excludes simultaneous protection according to Article 139(3) EPC (Article 31 IPA).

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of Slovenia.

C. Amendment of Slovenian patent law

1. Patentability (Articles 10 to 15 IPA)

The patentability criteria (concept of invention, novelty, inventive step, industrial application) are fully consistent with those of the EPC (Articles 52 to 57 EPC).

2. Term of the patent (Article 22 IPA)

A patent is granted for a term of 20 years, as from the date of filing the application.

3. Rights conferred by the patent

The rights conferred by the patent reflect the provisions of the Community Patent Convention (see Article 25 ff CPC 1989).

4. Extent of protection (Article 18(2) IPA)

The extent of protection is determined by the claims. The description and drawings serve as a guide to interpreting the claims.

D. Other international treaties

The Patent Cooperation Treaty took effect in Slovenia on 1 March 1994. Since 1 December 2002 it is possible to obtain a European patent for Slovenia by filing a Euro-PCT application.

Other relevant international treaties to which Slovenia is party:

• Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, with effect from 1 January 1995),
• Paris Convention for the Protection of Industrial Property (with effect from 25 June 1991),
• Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure (with effect from 12 March 1998),
• Strasbourg Agreement Concerning the International Patent Classification (with effect from 10 May 2002),
• International Convention for the Protection of New Varieties of Plants (UPOV, with effect from 29 July 1999).

In 2002 Slovenia ratified the Patent Law Treaty (PLT), which not yet entered in force.