On June 28, 2023, the National Assembly of Slovenia adopted an amendment to the Industrial Property Act – ZIL-1F, which enters into force on July 27, 2023.
In the area of trademarks, parties will achieve the cancellation or a declaration of invalidity of the trademark quicker and cheaper in the administrative procedure before the Slovenian Intellectual Property Office (hereinafter: SIPO) and not in a court procedure as before.
In the field of patents, there are new provisions regarding the patent with unitary effect (hereinafter: EPU), in accordance with the ratified Agreement on a Unified Patent Court, which Slovenia has ratified and which entered into force on June 1, 2023.
Below please find a brief overview of the most important changes:
Trademarks area
- Cancellation and invalidity procedures under jurisdiction of SIPO
Procedures for cancellation and declaration of invalidity of trademarks are now under the jurisdiction of the SIPO and not the courts. Both procedures thus become administrative procedures.
The court procedure remains its jurisdiction in cases of counterclaims in disputes due to the violation of rights, which will contribute to the efficiency of the proceedings.
- Relative grounds of refusal: Reputation assessment in case of a prior EU trademark
According to the previously valid provision, the reputation of the previous mark (as the basis for an opposition) was assessed only on the territory of Slovenia, which caused a lot of problems in cases where the previous mark was an European union trademark (hereinafter: EUTM). Due to this ambiguity, it has been added to the text that in the case of a prior EUTM, the reputation of this trademark is assessed on the territory of European union.
Patents area
- Prohibition of the simultaneous effect of an EP (with or without unitary effect) and national patent
If an EP with which protection is requested in Slovenia, regardless of whether the unitary effect is registered, and a national patent is granted to the same person for the same invention, have the same filing date and the same date of priority right claimed, it is considered , that the national patent has no legal effect from the date when the European patent office (hereinafter: EPO) published the mention of the grant of the EP in the European Patent Bulletin. Before the cessation of the legal effect has been bound to the opposition deadline or final decision in the opposition procedure.
- Better defined obligation to submit translations of the EP patent claims
The 3-months deadline for submission of the translation of the patent claims of the EP runs from the date when the EPO published the mention of the grant of the EP in the European Patent Bulletin.
Translations of the amended or limited patent claims of the EP must be submitted within 3 months from the date when the EPO published the mention of a modified form or of a limitation of the EP, or from the date of issuance of the decision by which the ECJ partially revoked the EP.
- Subsequent possibility of entering an EP in the register at the SIPO, if the EPO did not register a EPU for formal reasons
The new Article 30a allows the holder of an EP, in which the EPO has not registered the unitary effect for formal reasons (for example, because the request was filed too late), despite the expiration of the regular period for the registration of the EP, still be able to enter the national phase in Slovenia (in 3-months from the final refusal decision) and register the EP in the patent register at the SIPO, which will be effective as a national patent.
- Extended possibility of using written evidence
The holder of a patent is enabled to obtain written evidence, which he submits to the SIPO as a basis for issuing a declaratory decision, in several different ways compared to the regulation in force until now, and to maintain the validity of his patent even after the 10th year of its duration, namely by:
- submitting a Slovenian translation of the patent for the same invention, which was granted after a full examination by any other institution (having the status of an international institution for preliminary examination) or another patent office with which a relevant agreement has been concluded;
- obtaining a report on the state of the art inquiry with a written opinion for his patent as a basis for SIPO to issue one of the declaratory decision, from any institution that has the status of an international institution for preliminary examination or from another patent office with which the relevant agreement was concluded.
Miscellaneous
- Shortening the objective deadline for filing a continuation request after a delay to 4 months (from September 27, 2023)
Article 67 regulates the possibility that, despite the fact that the party did not fulfill the obligations required in the procedure for obtaining the right, to submit a request for the continuation of the procedure after the delay and continue the procedure for obtaining the rights, without having to state justified reasons for delay. Until now, the 6 months objective deadline for filing a request to continue the procedure after a delay is shortened to 4 months from the date of occurrence of the delay. This increases legal security, as the period of legal uncertainty will be shorter.
- Power of Attorney: No more just in writing
The new law abolishes the requirement to present the PoA in writing, which will make it easier for the representatives to obtain the client’s PoA – for example scanned copy (in electronic form).
If the client has authorized several representatives and has not indicated to which representative the SIPO should serve letters, the SIPO will serve all letters to the representative listed last, and no longer to the representative listed first.
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.
