Five IP-Related Administrative Instructions Enter into Force in Kosovo

Five IP-related administrative instructions have recently entered into force in Kosovo.

The Administrative Instruction (AI) No. 09/2012 on the responsibilities, mandate and scope of work of the IPO’s Appellate Commission entered into force on June 19, 2012.

According to the IP-related laws in force, the appeals against the IPO’s decisions can be filed within 15 days from the receipt of the decision. The laws required that the Ministry of Trade and Industry, under which the IPO operates, establish a commission, which will have the authority to review the appeals. In accordance with the applicable IP laws, the AI defines the responsibilities, mandate and the scope of work of the Appellate Commission.

The Commission is to review and decide on IPO’s decisions as the first instance decision maker. The Commission will consist of three members, two permanent and one ad hoc. The two permanent members will be proposed by the head of the IPO and appointed by the Minister of Trade and Industry, while the ad hoc member will be appointed by the head of the IPO. The members will be appointed for three years. The AI further explains the procedure to be followed by the members of the Commission when deciding on an appeal.

The Administrative Instruction No. 10/2012 on the patent registration procedure entered into force on July 11, 2012.

Following the entry into force of the new Law on Patents in September 2011, the Ministry of Trade and Industry approved the new AI on the patent registration procedure, which provides answers to a number of procedural questions left open by the new law.

The provisions of particular significance in the new AI are highlighted below:

• Patent applications, together with other required documents translated into the official language, should be submitted electronically in a Word document format within two weeks as of the date of filing, or 12 months from the earliest date of priority;
• The line space to be used when submitting patent description and claims should be 1.5;
• Recordal of any amendments to the patent registry should be made by using the IPO’s already prescribed form;
• Provided certain formalities are fulfilled, one single recordal request can be filed with the IPO in case the recordal of amendments concerns a number of patent applications or patents belonging to the same owner.

The AI clarifies, to a certain extent, the issue of international patents filed in Kosovo. In other words, the IPO decided to recognize the priority of PCT applications filed before November 19, 2007 and extended to Serbia (or former Yugoslavia), regardless of the Kosovo date of filing.

There are, however, a few other situations some patent holders can find themselves in and for which solutions are still needed, namely if an:

• EP or PCT is filed before November 19, 2007 but NOT extended to Serbia and NOT filed in Kosovo within the priority period of 12 months prescribed by the Paris Convention;
• EP or PCT is filed and extended to Serbia after November 19, 2007 but NOT filed in Kosovo within the priority period of 12 months prescribed by the Paris Convention;
• EP or PCT is filed after November 19, 2007 but NOT extended to Serbia and NOT filed in Kosovo within the priority period of 12 months prescribed by the Paris Convention.

The Administrative Instruction No. 12/2012 on official fees, entered into force on August 28, 2012.

This AI relates to the official fees to be applied for the registrations of patents, trademarks and industrial designs. In general, there was no increase in the official fees. On the contrary, some official fees have been reduced, and, more importantly, the official fees for a few actions not covered by the previous AI have been clarified.

Finally, the Administrative Instruction No. 11/2012 on the industrial design registration procedure and the Administrative Instruction No. 13/2012 on the trademark registration procedure were approved and entered into force on August 14, 2012. They provide detailed information on the procedures prescribed by the respective laws, in force as of September 2011. These AIs thoroughly describe the procedures of application, registration, opposition, publication, recordal of changes in the register, renewal, termination of validity, availability searches and the like.

Prepared by: Jelena Jankovic

For more information, please contact mail@petosevic.com.