Pages 469-477

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

SK Slovakia

Impact of the European Patent Convention on national law

On 1 July 2002, the Slovak Republic became a contracting state to the EPC. Provisions implementing the EPC and bringing Slovak patent law into line with the EPC are contained in Articles 60 - 67 Law No. 435/2001 Coll. on patents, supplementary protection certificates and on amendments of other Acts, as amended by Law No. 402/2002 Coll.

A. National legal bases

1. Notification of the Ministry of Foreign Affairs of the Slovak Republic No. 376/2002 Coll. on the introduction of the Convention on the Grant of European Patents (European Patent Convention), Act revising the Convention on the Grant of European Patents of 29 November 2000, Annex

2. Law No. 435/2001 Coll. on patents, supplementary protection certificates and on amendment of other Acts, as amended by Law No. 402/2002 Coll. (hereinafter: Patent Act, PA)

3. Law No. 478/1992 Coll. on utility models, as amended

4. Law of the National Council of the Slovak Republic No. 145/1995 Coll. on administration fees, as amended

5. Regulation of the Industrial Property Office No. 223/2002 Coll. implementing the Patent Act (see No. 2)

B. Application of the EPC in Slovakia

The main provisions relating to the application of the EPC in Slovakia 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 66 PA)

A European patent application, except a European divisional application, may be filed either with the EPO or with the Industrial Property Office of the Slovak Republic (hereinafter: IPO):

Úrad priemyselného vlastníctva Slovenskej republiky

Industrial Property Office of the Slovak Republic

Jána Švermu 43

974 04 BANSKÁ BYSTRICA

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

Applications filed by persons of Slovak nationality or having a residence or their principal place of business in Slovakia and which are of importance for national security and defence must be filed with the IPO (Article 59 PA).

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC, Article 60 PA)

Under Article 60(2)(3) in conjunction with Articles 13(2) and 32 PA, a published European patent application designating the Slovak Republic provisionally enjoys the protection conferred by a patent as of the day of making a translation of the patent claims available to the public. The IPO will make the translation of the patent claims available to the public and publish this fact in the Slovak Official Journal as soon as the applicant submits the translation and pays the prescribed publication fee.

II.B. Filing a translation of the claims (Article 67(3) EPC, Article 60(2) PA)

The translation of the claims must be drawn up in Slovak language. Under Article 62(3) PA the applicant for a European patent may, at any time, supply a corrected translation, subject to the payment of the prescribed publication fee. The IPO will make available to the public the corrected translation and publish this fact in the Slovak Official Journal. The corrected translation shall have effect with respect to third parties as of the publication date of the mention of the availability of the corrected translation (Article 62(4) PA). Regarding the rights of a prior user where a translation is corrected, Article 62(5) PA provides for the safeguards mentioned in Article 70(4)(b) EPC.

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

Applicants without residence or seat in the Slovak Republic must be represented by an attorney-at-law or a patent attorney authorised to act before the IPO (Article 79(1) PA).

III. Filing translations of the patent specification (Article 65 EPC, Articles 63 and 65 PA)

The European patent has effect in the Slovak Republic only if the proprietor of the patent supplies the IPO with the Slovak translation of the text with which the EPO intends to grant the patent within three months of the date on which the mention of the grant is published in the European Patent Bulletin (Article 63(2) PA). Upon filing the translation the patentee shall also pay the fee for the publication of the translation. If the Slovak translation of the European patent specification is not submitted within this period, the proprietor of the European patent may still submit it within an additional period of three months, provided that the respective surcharge is paid (Article 63(3) PA). In the event of failure to observe these requirements, the European patent shall be deemed to be void ab initio in the Slovak Republic (Article 63(4) PA).

If a European patent is maintained in amended form in opposition proceedings, its proprietor must submit to the IPO the Slovak translation of the amended text of the patent specification and pay the publication fee within three months of the mention of this amendment in the European Patent Bulletin. In this case no additional period is available. In the event of failure to observe these requirements, the European patent shall be deemed to be void ab initio in the Slovak Republic (Article 63(4) PA).

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

Applicants without residence or seat in the Slovak Republic must be represented by an attorney-at-law or a patent attorney authorised to act before the IPO (Article 79(1) PA).

IV. Authentic text of a European patent application or European patent (Article 70 EPC, Article 62 PA)

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 (Article 62(2) PA).

Under Article 62(3)(4) PA, an applicant for or proprietor of a European patent may file a corrected Slovak translation of the claims or a corrected Slovak translation of the European patent specification at any time. After payment of the prescribed publication fee, the IPO will make the corrected translation available to the public and publish this fact in the Slovak Official Journal; the corrected translation applies instead of the original one as of the date of the publication of the mention in the Slovak Official Journal of the availability of the corrected translation.

Regarding the rights of a prior user where a translation is corrected, Article 62(5) PA provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC, Article  67 PA)

Renewal fees in respect of European patents requesting protection in the Slovak Republic shall be paid to the IPO for each patent year following the year, in which the European Patent Office publishes the mention of the grant of the European patent. Each patent year starts from the anniversary of the filing date of the patent application. The renewal fees for each subsequent patent year are due on the last day of the month, in which the preceding patent year expires. The first national maintenance fee for the European patent shall be paid within three months of the anniversary of the filing date or within two months of the date of the publication of the mention of grant in the European Patent Bulletin, whichever period expires later.

In case of failure to observe the time limit referred to above, renewal fees may still be paid within a period of grace of six months of the due date provided that twice the rate is paid; no reminder will be issued in case of non-payment. Restitutio in integrum is not possible.

The appointment of a national professional representative is not necessary for the payment of renewal fees.

Renewal fees are currently as follows

VI. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC, Article 61 PA)

The Slovak law provides for conversion into a national patent application in the case of deemed withdrawal pursuant to Article 77(5) EPC or when the European patent application is withdrawn or deemed to be withdrawn or refused, or the European patent is revoked (Article 61(1)(3) PA). A European patent application may also be converted into an application for a utility model (Article 61(5) PA). The applicant must pay the filing fee and submit a Slovak translation of the European patent application within three months of the date of receipt of a respective invitation by the IPO (Article 61(2) PA); for these procedural steps, a national representative authorised to act before the IPO must be appointed.

VII. Payment of fees (Article 79(8) PA)

Fees are payable to the following accounts:

Important notice

Applicants and patent proprietors are requested to state the following details for proper identification of the payments. Attention is drawn in particular to the fact that the "account number with the State Treasury" to be cited varies according to the type of payment made.

Please state with each payment of renewal fees:

• the name of the beneficiary "Úrad priemyselného vlastníctva SR" (Industrial Property Office of the Slovak Republic),
• its account number with the "State Treasury": 7000119169/8180 (Bank code: 8180), as well as
• the „variable symbol" described below needed to identify the European patent application or European patent concerned.

Please state with each payment of any other fees:

• the name of the beneficiary "Úrad priemyselného vlastníctva SR" (Industrial Property Office of the Slovak Republic),
• its account number with the "State Treasury": 7000060750/8180 (Bank code: 8180), as well as
• the „variable symbol" described below needed to identify the European patent application or European patent concerned.

The „variable symbol" consists of a 10-digit numerical code set up as follows:

Payments may also be made by cheque by post. The effective date of payment is the date on which the required amount is credited to the above-mentioned bank account.

VIII. Miscellaneous

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

The Slovak patent law excludes simultaneous protection according to Article 139(3) EPC (Article 64 PA).

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

The EPC applies in the territory of the Slovak Republic.

C. Amendment of Slovak patent law

1. Patentability (Articles 5 to 9 PA)

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 29 PA)

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

3. Rights conferred by the patent

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

4. Extent of protection (Article 13 PA)

The extent of the protection is determined by the claims. The description and the drawings shall be used to interpret the claims.

Patent protection for biological material with specific characteristics which are the result of an invention extends to any biological material derived from the original biological material by reproduction in identical or divergent form, which possesses the same characteristics.

Patent protection for a process for producing biological material possessing specific characteristics as a result of the invention, shall extend to biological material directly obtained through that process and to any biological material possessing the same characteristics which is derived from such biological material by reproduction in identical or divergent form.

Under Article 13(6) Pa, patent protection for a product containing or consisting of genetic information extends to all material in which this product is incorporated and in which the genetic information is contained and performs its functions unless Article 6(1)(d) PA on inventions concerning the human body applies.

D. Other international treaties

The Patent Cooperation Treaty took effect in the Slovak Republic on 1 January 1993. Since 1 July 2002 it has been possible to obtain a European patent for the Slovak Republic by filing a Euro-PCT application.

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure took effect on 1 January 1993 (Regulation of the Minister of Foreign Affairs of the Slovak Republic No. 212/1989 Coll.)

The TRIPS Agreement took effect on 1 January 1995 (Notification of the Ministry of Foreign Affairs of the Slovak Republic No. 152/2000 Coll.).

The Slovak Republic is a party to the 1978 Act of the International Convention for the Protection of New Varieties of Plants (UPOV) as of 1 January 1993 (Act No. 132/1989 Coll.)

E. Updating of the information brochure "National law relating to the EPC"

Users of the EPO information brochure "National law relating to the EPC" (12th edition) are asked to enter the following correction in table III.A., column 1, row on Slovakia: The reference to Article 67 EPC should read Article 67(1) EPC.