INFORMATION FROM THE EPO
Extension of European patents to Slovenia1
I. Basic principles
The agreement between the European Patent Organisation and Slovenia on cooperation in the field of patents entered into force on 1 September 1993. The supplementary agreement on extending the protection conferred by European patents (Extension Agreement) and the Slovenian governmental ordinance on implementing the extension system (Extension Ordinance) will enter into force on 1 March 1994. On the same date, the PCT will also enter into force for Slovenia2.
The extension system will provide European patent applicants with a simple and cost-effective way of obtaining protection in Slovenia. At the applicant's request, and on payment of the prescribed fee, European applications (direct or Euro-PCT) and patents can be extended to Slovenia, where they will have the same effects as national applications and patents. The extension system largely corresponds to the EPC system operating in the EPC Contracting States, except that it is based not on direct application of the EPC but on national law modelled on the EPC.
The rules governing the new system are set out in the Extension Ordinance; this is based on Article 4 of the Slovenian Law on Industrial Property (IPL)3 and is reproduced in Section VI below after the explanatory notes. The two flowcharts at the end are intended as a further handy guide to the new procedure.
II. Extension system
Extension of European patent applications
1. Extension occurs at the applicant's request. It is deemed requested for any European patent application filed on or after 1 March 1994 (Article 2(1) Extension Ordinance). Extension is not available for applications filed prior to that date, or for any European patents resulting from such applications.
2. The extension fee is DEM 2004. It must be paid to the EPO (not the Slovenian Patent Office) within the time limits prescribed in the EPC for paying the designation fees (Articles 79(2) and 78(2) EPC). After expiry of the basic time limit, the extension fee can still be validly paid under Rule 85a(2) EPC within a period of grace of two months, provided that within that period a surcharge of 50% is also paid (Article 3(1) and (2) Extension Ordinance).
No notification of non-observance of the basic time limit or expiry of the period of grace is issued. Nor is re-establishment of rights possible in respect of payment of the extension fee.
3. Payment of the extension fee is governed mutatis mutandis by the provisions of the EPO Rules relating to Fees (Article 3(3) Extension Ordinance). The fee and its equivalents in the currencies of the Contracting States will be added to the schedule of EPO fees, costs and prices and published in the EPO Official Journal.
4. If the extension fee is not paid in due time, the request for extension is deemed withdrawn (Article 2(2) Extension Ordinance). By paying the extension fee the applicant is deciding to extend his European patent application to Slovenia. The declaration in Section 345 of the Request for grant of a European patent (EPA/EPO/OEB Form 1001 03.94), which is reproduced in this issue of the Official Journal, is merely for information purposes and is intended to assist in recording fee payments.
5. The applicant can withdraw the request for extension at any time by informing the EPO of his wish to do so. The request for extension is also deemed withdrawn if by final decision the European patent application is refused, withdrawn or deemed withdrawn (Article 2(2) of the Extension Ordinance). Validly paid extension fees are not refunded (Article 3(3) Extension Ordinance).
6. If a European patent application extends to Slovenia, any European divisional application arising from it can also be extended. The extension fee in that case must be paid within the time limits prescribed in Rule 25(2) EPC.
Extension of Euro-PCT applications
7. The Extension Ordinance also applies to international applications under the PCT filed on or after 1 March 1994 provided that both the EPO and Slovenia are designated. If the national phase before the Slovenian Patent Office is opened is immaterial.
8. The extension procedure is the same for Euro-PCT applications as for European ones, except that the extension fee upon entry into the regional phase must be paid to the EPO within the time limit of 21 or 31 months from the date of filing or priority date as prescribed in Rule 104b(1) EPC (Article 3(1) Extension Ordinance).
III. Effects of extension
9. Under Article 4 of the Extension Ordinance, a European patent application for which extension has been requested is equivalent to a duly filed national application, and after publication confers provisional protection under Articles 93 and 94 IPL6 provided the applicant communicates to the user of the invention the prescribed translation of the claims in Slovenian.
10. Once the EPO publishes the mention of grant, a European patent extending to Slovenia has the same effects as a national patent (Article 5(1) Extension Ordinance), provided however that within three months of that publication a translation of the claims in Slovenian is filed with the Slovenian Patent Office and the prescribed publication fee paid (Article 5(2) and (5) Extension Ordinance). This applies mutatis mutandis where the claims are amended in opposition proceedings before the EPO.
11. The provisions of Article 6 Extension Ordinance concerning the authentic text of the European application or patent correspond to those of Article 70 EPC.
12. Article 7 Extension Ordinance covers cases of collision between European and national applications or patents. It corresponds to Article 139(1) and (2) EPC, and makes clear that for subsequent Slovenian applications an earlier European application extending to Slovenia has the same prior-art effect as a national application. However, it only has such effect if the extension fee has been paid, thereby ensuring that not every European application counts as a prior right.
This also applies mutatis mutandis if an earlier national application is prejudicial to a later European application extending to Slovenia.
13. Article 8 Extension Ordinance stipulates that where a European and national patent has the same priority the former takes precedence, to the extent that it protects the same invention. This is in line with the double-protection provisions of most EPC Contracting States.
14. The effects of extended European patents and applications can lapse retroactively. For example, the provisional protection conferred by a published European patent application is lost ab initio if the request for extension subsequently lapses. Similarly, to the extent that the patent granted for the application is revoked in EPO opposition proceedings, the provisional protection and other effects of the patent are again lost ab initio (Article 4(3), 5(6) Extension Ordinance).
However, in such cases the European application continues to have the effect of a duly filed national application.
15. Renewal fees for extended European patents are payable to the Slovenian Patent Office, under the provisions governing national patents, for the years following that in which mention of grant of the European patent was published (Article 9 Extension Ordinance).
16. The Slovenian provisions concerning revocation of national patents (Articles 87-89 IPL) apply to extended European patents. The grounds for revocation under Slovenian law largely correspond to those in Article 139 EPC.
IV. Informing the public
17. The EPO's EPIDOS information register7 will in future give details about extension of European patent applications and patents, indicating the states for which extension has been requested and the relevant fee paid, and the lapse of any extension request already published in EPIDOS.
The Register of European Patents, European Patent Bulletin and the patent documents published by the EPO, on the other hand, will not contain any information about the extension of European patents.
18. On expiry of the time limits for paying the extension fees, the EPO will inform the Slovenian Patent Office of the European applications for which extension has been validly requested. The Slovenian Patent Office will publish this information as soon as possible, but not earlier than 18 months from the relevant priority date (Article 2(1) Extension Ordinance). Lapses of extension requests will be published if details of the extension have already been published.
19. The Slovenian Patent Office will also publish the translations of the claims of extended European patents filed by applicants under Article 5(2) and (3) of the Extension Ordinance (Article 5(4) Extension Ordinance), and make known their subsequent fate in accordance with the provisions governing national patents.
V. Applicability of the EPC
20. In the extension procedure, the EPO will be acting purely on the basis of its obligations under its Cooperation and Extension Agreements concluded with Slovenia. The procedure itself and the legal effects of extension will be governed solely by Slovenian law. Only those provisions of the Convention, Implementing Regulations and the EPO Rules relating to Fees will apply which are referred to in the Slovenian provisions (Article 10 Extension Ordinance) - which is only the case for the time limits and arrangements for paying the extension fee (Article 3 Extension Ordinance).
21. Thus the EPC provisions concerning applicants' legal remedies and appeals do not apply in respect of action taken by the EPO under the extension procedure. This is because here the Office will not be acting under the terms of the EPC.
VI. Extension Ordinance
REGULATION ON THE EXTENSION OF EUROPEAN PATENTS TO SLOVENIA UNDER THE AGREEMENT IMPLEMENTING ARTICLE 3(3) OF THE COOPERATION AGREEMENT BETWEEN THE GOVERNMENT OF THE REPUBLIC OF SLOVENIA AND THE EUROPEAN PATENT ORGANISATION
Extension of the effects of European patents
A European patent application and a European patent extending to Slovenia shall, subject to the provisions of this Regulation, have the effect of and be subject to the same conditions as a national patent application and a national patent under the IPL.
For the purposes of this Regulation,
(a) "European patent application" means an application for a European patent filed under the European Patent Convention (EPC), as well as an international application filed under the Patent Cooperation Treaty for which the European Patent Office (EPO) acts as designated or elected Office and in which Slovenia is designated;
(b) "extended European patent" means a European patent granted by the EPO on a European patent application in respect of which extension to Slovenia has been requested;
(c) "national patent application" means a patent application filed under the IPL with the Office for the Protection of Industrial Property ("the Office");
(d) "national patent" means a patent granted on a national patent application.
Request for extension
A European patent application and a European patent granted on such application shall be extended to Slovenia at the request of the applicant. The request for extension shall be deemed to be filed with any European patent application filed on or after 1 March 1994.
Any request for extension shall be published by the Office as soon as possible after it has been transmitted by the EPO but not before the expiry of 18 months from the filing date or, if priority has been claimed, the earliest priority date.
The request for extension may be withdrawn at any time. It shall be deemed withdrawn where the prescribed extension fee has not been paid in time or where the European patent application has been finally refused, withdrawn or deemed withdrawn. The Office shall publish this as soon as possible if the request for extension has already been published.
The extension fee under Article 2(2) shall be DEM 200. It is due to be paid to the EPO within the applicable time-limit provided under the EPC for the payment of the designation fee.
The extension fee may still be validly paid within the period of grace of two months, as it is specified in Rule 85a(2) EPC, provided that a surcharge of 50% is paid within this period.
For the payment of extension fees the EPO Rules relating to Fees shall apply mutatis mutandis. Extension fees validly paid shall not be refunded.
Effects of European patent applications
A European patent application which has been accorded a filing date shall be equivalent to a regular national application, where appropriate with the priority claimed for the European patent application, whatever its outcome may be.
A published European patent application shall provisionally confer the protection conferred by Articles 93 and 94 IPL as from the date on which a translation of the claims of the published European patent application into the Slovenian language has been communicated by the applicant to the person using the invention in Slovenia.
The European patent application shall be deemed not to have had ab initio the effects referred to in paragraph (2) where the request for extension has been withdrawn or is deemed withdrawn.
Effects of European patents
An extended European patent shall, subject to paragraphs (2) to (6), confer from the date of publication of the mention of its grant by the EPO the same rights as would be conferred by a national patent under Article 32 IPL.
Within three months from the date on which the mention of the grant of the European patent has been published, the owner of the patent shall furnish to the Office a translation of the claims of the European patent into the Slovenian language and shall pay the prescribed fee for publication.
If, as a result of an opposition filed with the EPO, the European patent is maintained with amended claims, the owner of the patent shall, within three months from the date on which the decision to maintain the European patent as amended was published, furnish to the Office a translation of the amended claims into the Slovenian language and pay the prescribed fee for publication.
The Office shall publish any translation duly filed under paragraph (2) or (3).
If the translation specified in paragraph (2) or (3) is not filed in due time or the prescribed fee is not paid in due time, the extended European patent shall be deemed to be void ab initio.
An extended European patent and the European patent application on which it is based shall be deemed not to have had ab initio the effects specified in paragraph (1) and Article 4(2) to the extent that the patent has been revoked in opposition proceedings before the EPO.
Authentic text of European patent applications or European patents
The text of a European patent application or a European patent in the language of the proceedings before the EPO shall be the authentic text in any proceedings in Slovenia.
However, the translation as provided for under Articles 4 and 5 shall be regarded as authentic, except in revocation proceedings, where the application or patent in the language of the translation confers protection which is narrower than that conferred by it in the language of the proceedings.
The applicant or owner of the patent may file a corrected translation of the claims of the European patent application or European patent. The corrected translation shall not have any legal effects until it has been published by the Office. Any person who, in good faith, uses or has made effective and serious preparations for using an invention, the use of which would not constitute infringement of the application or patent in the original translation may, after the corrected translation takes effect, continue such use in the course of his business or for the needs thereof without payment.
Rights of earlier date
A European patent application for which the extension fee has been paid and an extended European patent shall have with regard to a national patent application and a national patent the same prior art effect as a national patent application and a national patent under Article 9 No. 2 IPL.
A national patent application and a national patent shall have with regard to an extended European patent the same prior art effect as they have with regard to a national patent under Article 9 No. 2 IPL.
Where an extended European patent and a national patent having the same filing date or, where priority has been claimed, the same priority date have been granted to the same person or his successor in title, the national patent shall have no effect to the extent that it covers the same invention as the extended European patent as from the date on which the time limit for filing an opposition to the European patent has expired without an opposition having been filed or as from the date on which the opposition procedure has resulted in a final decision maintaining the European patent.
Renewal fees for extended European patents
Renewal fees for an extended European patent shall be paid to the Office for the years following the year in which the mention of the grant of the European patent was published by the EPO.
Applicability of the EPC
The provisions of the EPC and its Implementing Regulations shall not apply unless otherwise provided in this Regulation.
Entry into force
This Regulation shall enter into force on the day following its publication in the Official Gazette of the Republic of Slovenia.
(not part of the Regulation)
For the payment of the extension fee of DEM 200 made in currencies other than Deutsche Mark the following equivalents have been laid down:
(See pp. 87 and 88)
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3 Law of 20 March 1992, as last amended by the Law of 29 May 1993; Legal Bulletin of the Republic of Slovenia Nos. 13/92 and 27/93. An English translation of the Law of 20 March 1992 has been published in Industrial Property Laws and Treaties; a German translation appeared in Bl. f. PMZ 1993, 303.
4 See p. 86.
5 Here the applicant is asked to state whether he intends to pay the extension fee.
6 Claims are granted for reasonable damages.