LOCATIONS

Trademarks

• Filing the Application – Requirements
• Registration Procedure
• Opposition
• Duration
• Recording changes in the Register

Patents

• Filing a Conventional Application – Requirements
• Time limits for filing a National phase of PCT Application
• Registration Procedure
• Validation of the European Patent – Requirements
• Duration
• Recording changes in the Register

Industrial Designs

• Filing the Application – Requirements
• Registration Procedure
• Duration
• Recording changes in the Register

Conventions

• Paris Convention
• Madrid Agreement
• Madrid Protocol
• PCT Convention
• EPC
• Industrial Property Act valid as of 7 December 2001 (last amendment on 27 July 2023)
• Copyright and Related Rights Act valid as of 29 April 1995

Trademarks

• Filing the Application – Requirements;
• Name and address of the Applicant;
• Representation of the Mark;
• List of Goods and Services according to Nice Classification 12^thEdition (Classes 1-45);
• Priority date, country and number (if priority is claimed);
• Power of Attorney simply signed by the Applicant. PoA can be submitted subsequently within three months from the Application date. This term can be extended for an additional three months.

Registration Procedure

• The Application is filed with and examined by the Intellectual Property Office
• The Intellectual Property Office examines absolute grounds for refusal
• The registration procedure takes approximately six months from the application date (smooth procedure)

Opposition

• Trademark Applications are published in the Official Gazette. Opposition against a Trademark Application can be filed within three months from the publication date.

Duration

• Upon payment of the ten-year protection fee, the Trademark is valid for 10 years from the application date, except in the case of revalidation (see below);
• Upon payment of renewal fees, the Trademark will be extended for a further 10 years. The renewal fees can be paid during the last year of the previous ten year protection period or up to six months after the expiration date with a fine of 50% of the renewal fees;
• Revalidations of former Yugoslav Trademark Registrations keep the same renewal dates as the original former Yugoslav Trademarks.

Recording changes in the Register

Assignment of Rights Requirements

• A scanned copy of a Power of Attorney simply signed by the Assignee;
• A certified copy or original assignment document (can be also a simply signed assignment deed).

Change of Name Requirements

• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old name if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and official documentation that demonstrates the change of name of the holder (can be also a change of name affidavit or other official document issued by the relevant authorities that verifies the change of name).

Change of Address Requirements

• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old address if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and official documentation that demonstrates the change of address of the holder (can be also a change of address affidavit or other official document issued by the relevant authorities that verifies the change of address).

Patents

Filing a Conventional Application – Requirements

• Name and address of the Applicant;
• Name and address of the Inventor(s) or a declaration that the Inventor does not wish to be mentioned in the Application;
• Priority date, country and number;
• Description of Patent;
• Patent Claims;
• Drawings (if any);
• Abstract – summary of the invention;
• Power of Attorney simply signed (original or copy) by the Applicant can be submitted subsequently, within three months from the Application date. This term can be extended for an additional three months;
• Priority document – can be submitted subsequently, within three months from the Application date. This term can be extended for the additional three months;
• The Application is to be filed within one year from the priority date;
• Translation of the specification, claims and abstract into the local language, can be filed subsequently.

Time limits for filing a National phase of PCT Application

• The Application is to be filed with the Office within 30 months from the Priority Application date.

Registration Procedure

• The Office will publish the Patent Application within 18 months from the Application date or the priority date if the priority has been claimed. Upon publication of the patent Application, the decision to grant is issued and the publication date shall be considered as the granting date;
• No later than the expiry of the ninth year of protection, the owners of the Patent shall submit to the Office the written evidence showing that the patent for the same invention has been obtained:

Before the EPO;

• if no application for the same invention has been filed with the EPO, evidence should be submitted to show that the Patent for the same invention has been granted by the authority which according to PCT enjoys the status of Preliminary Examining Authority or by any other patent Office with which the relevant treaty has been concluded. The List of the Patents for the same invention which can serve as evidence should be submitted along with data on patent applications and the patents that have been refused;
• if no evidence can be submitted by the Owner, a request may be made for the Office to obtain the relevant data.

Filing a National Phase of PCT Application – Requirements

• Name and address of the Applicant;
• Name and address of the Inventor(s) or a declaration that the Inventor does not wish to be mentioned by name in the Application;
• Description of Patent;
• Patent Claims;
• Drawings (if any);
• Abstract – summary of the invention;
• Priority date, country and number;
• International Search report;
• International Preliminary Examination Report;
• PCT Publication page;
• The document showing the assignment of rights by the Inventors in favor of the Applicant, simply signed by the Inventors – it can be submitted subsequently;
• Power of Attorney simply signed (original or copy) by the Applicant – can be submitted subsequently;
• Translation of description, claims and abstract into the local language, can be filed subsequently.

Validation of the European Patent – Requirements

• The validation of the European Patent can be claimed within three months from the date of publication of the granting of the European Patent;
• A Slovenian translation of Patent Claims and the title should be submitted to the Office along with the claim for the validation of the European Patent;
• Power of Attorney simply signed (original or copy) by the Applicant – can be submitted subsequently.

Duration

• 20 years from the application date for conventional Patents;
• 20 years from the International filing date for the National Phase of PCT patents;
• 20 years from the date of filing the European Patent Application for the EP;
• petty patent is valid for 10 years from the application date;
• for Patent Applications filed in Slovenia after 7 December 2001 the fees should be paid starting from the 4^thyear of protection and for each subsequent year. For Patent Applications filed in Slovenia prior to 7 December 2001 the annual fees should be paid starting from the 3rd year and for each subsequent year;
• protection fees are to be paid annually, prior to the expiration of the year for which the protection fees have been paid or six months after the expiration of the protection period at the latest with a 50% fine;
• the duration of a patent can be extended over 20 years in the following cases:

1. in the case of a war of similar emergency conditions, for the duration of this state or condition, but for no more than five years;
2. in case if the subject-matter of the patent is a product or a process for manufacturing a product or a use of a product which has to undergo an administrative procedure required by the law, for the duration of this procedure, but for no more than five years.

Recording changes in the Register

Assignment of Rights Requirements

• A scanned copy of a Power of Attorney simply signed by the Assignee;
• A certified copy or original assignment document (can be also a simply signed assignment deed).

Change of Name Requirements

• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old name if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and official documentation that demonstrates the change of name of the holder (can be also a change of name affidavit or other official document issued by the relevant authorities that verifies the change of name).

Change of Address Requirements

• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old address if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and official documentation that demonstrates the change of address of the holder (can be also a change of address affidavit or other official document issued by the relevant authorities that verifies the change of address).

Industrial Design

Filing the Application – Requirements

• Name and address of the Applicant;
• Name and address of the author or a declaration that the author chooses not to be mentioned in the application;
• Information regarding the number of external shapes or reproductions the protection is requested for,
• Full and short title of the industrial design;
• A two-dimensional presentation of the shape for which protection is sought (photograph or a graphic presentation of the product for which protection is requested);
• Power of Attorney simply signed by the Applicant’s representative. The PoA can be submitted subsequently.

Registration Procedure

• After receiving the application, the Intellectual Property Office will examine it to ensure it complies with the formal requirements. If the application passes the formal examination the Office will grant the Design and the granted Design will be published in the Official gazette;
• The registration procedure is quick, and it usually takes about 2 weeks from the application to registration date, if all necessary formalities are met when filing the application;
• The renewal fees are payable every five years. The renewal fees for the following five-year protection period should be paid during the last year for the previous protection period. The late fees can be paid with a 50% fine within six months from the expiry date.

Duration

• Maximum 25 years from the Application date.

Recording changes in the Register

Assignment of Rights Requirements

• A scanned copy of the Power of Attorney simply signed by the Assignee;
• A certified copy or original assignment document (can be also assignment deed).

Change of Name Requirements

• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old name if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new name, simply signed by a representative of the Company and official documentation that demonstrates the change of name of the holder (can be also a change of name affidavit or other official document issued by the relevant authorities that verifies the change of name).

Change of Address Requirements

• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and a scanned copy of the Power of Attorney with the old address if we were not the Agent for the file; Or
• A scanned copy of the Power of Attorney indicating the new address, simply signed by a representative of the Company and official documentation that demonstrates the change of address of the holder (can be also a change of address affidavit or other official document issued by the relevant authorities that verifies the change of address).

This text is for informational purposes only and should not be considered as legal advice. Should you require any additional information, feel free to contact us.