Changes in the IP Rights Protection System in Bosnia and Herzegovina

This article was published on The Legal 500 website.

Prepared by:
Tarik Prolaz, PETOŠEVIĆ

Bosnia and Herzegovina is a good example of an Eastern European country in transition, with all the “childhood sicknesses” of a young democratic and business society. Accession to the EU is one of the goals that is undisputed by any of the dominant ethnic or political groups in Bosnia, and many steps have been taken towards this objective. Some of the steps include ratification of the Stabilization and Association Agreement (SAA), free trade agreements with the neighboring countries, and CEFTA.

In the process of harmonizing the local legislation with the aquis communautaire, WTO requirements and other international treaties and agreements, the Parliamentary Assembly of Bosnia and Herzegovina replaced its old industrial property law and passed five intellectual property laws in May 2010:

• Patent Law,

• Trademark Law,

• Law on Industrial Designs,

• Law on the Protection of Indications of Geographical Origin, and

• Law on the Protection of Topographies of Integrated Circuits.

The whole set of laws entered into force on January 1, 2011, replacing the old Industrial Property Law that was in force.

PATENT LAW

The new Patent Law stipulates that an applicant is entitled to request patent protection:

1. Through substantive examination of a patent application;

2. Based on a submitted substantive examination of a patent application accepted in Bosnia; or

3. By delaying substantive examination of an application and obtaining a consensual patent. A consensual patent is granted based on public consensus, meaning that it is granted if there are no objections by third parties. The duration of a consensual patent is 10 years.

The new law also introduces restoration and continuation of proceedings. Previously, restoration was governed by the provisions of the general Administrative Proceedings Law and, as such, was not fully suitable for IP rights.

The law also regulates Supplementary Protection Certificates and corresponding procedures. The previous IP Law addressed this issue in just one paragraph, allowing supplementary protection in the cases of war and similar emergencies (for the duration of such emergencies) and for patents requiring prior official consent for marketing (for the period required to obtain such a consent).

The Patent Law also introduces new and improved PCT provisions and contains provisions on European Patent extensions. This is an improvement because Bosnia’s legislation was never amended to include and address the signing/ratification of the Agreement between Bosnia and Herzegovina and the European Patent Organisation on Co-operation in the Field of Patents in 2004. Until January 1, 2011, extensions were governed solely on the grounds of the Agreement.

The law also includes provisions on customs and border measures for protection of patent rights. The previous law contained only one provision on custom and border measures, but without any further guidance on their implementation. This caused difficulties in obtaining customs protection. For the first time, Bosnia and Herzegovina has clear and concise provisions on customs monitoring, requirements, duration, proceedings and deadlines. Previously, all proceedings related to customs monitoring were ad hoc and usually varied among the customs offices throughout the country.

TRADEMARK LAW

The biggest change introduced with the new Trademark Law is the opposition procedure, meaning that the PTO of Bosnia and Herzegovina now examines trademark applications only on absolute grounds. The IP Law that was in force in Bosnia and Herzegovina until January 1, 2011 specified that trademark applications should be examined on both relative and absolute grounds. The PTO of Bosnia and Herzegovina, just like many PTOs of countries in transition is understaffed and this practice of full examination resulted in an almost 5-year delay in the examination procedure.

In addition to the individual and collective trademarks, the Trademark Law also introduces warranty trademarks, as well as disclaimers.

The new law also contains provisions on exhaustion of rights. The earlier law had no such provisions and the question of exhaustion was always unclear.

Customs measures are also regulated and are identical to the ones prescribed for patents.

INDUSTRIAL DESIGN

As stipulated in the Law on Industrial Designs, a protected design must be convenient for industrial or craft production. A design that has exclusively esthetical characteristics represents a work of art and is therefore protected by copyright. The earlier IP Law allowed registration of purely aesthetical characteristics of a product (fashion creations, etc), while the current law prescribes that such creations should be protected by copyright,

The new law also introduces opposition, in accordance with the Hague Convention on the International Registration of Industrial Designs and Models. It also contains full provisions on customs protection, assignment of right, and licensing.

According to the old IP law in Bosnia and Herzegovina, designs were valid for 10 years, without the possibility of renewal. The new Law on Industrial Designs prescribes that designs will be valid for 25 years, with 5-year renewal periods.

The provision on international exhaustion of rights is also introduced with the new law.

GEOGRAPHICAL INDICATIONS

The Law on the Protection of Indications of Geographical Origin introduces the opposition system in the application examination procedure. The supervision by market inspectors and administrative measures are introduced, as are the customs and seizure measures and measures for securing evidence and deposit insurance funds. The law also ensures protection of traditional, historic and homonymous names.

The court now has jurisdiction to determine the geographical indications of origin, while prior to January 1, 2011, this was one under the jurisdiction of the PTO.

TOPOGRAPHIES OF INTEGRATED CIRCUITS

Bosnia and Herzegovina has made an important step toward harmonizing its legislation with international standards in the area of topographies of integrated circuits.. The Law on the Protection of Topographies of Integrated Circuits follows the Council Directive 87/54/EEC, relevant TRIPS provisions, and the Washington Treaty. So far there have been no topography registrations in Bosnia and Herzegovina, and the lack of legislation is certainly one of the reasons. Prior to January 1, 2011, topographies were regulated by a mixture of legislations remaining from the former Yugoslavia and by entity level legislation.

CONCLUSION

Years 2010 and 2011 have seen tremendous change in the area of intellectual property law developments in Bosnia. Past and current efforts of the local government and internationally funded IPR projects have created a solid legal ground for an efficient and modern system for obtaining and enforcing intellectual property rights. The Bosnian Institute for Intellectual Property acknowledges the significance of intellectual property for Bosnia and Herzegovina’s transition toward a society based on technology, knowledge and creativity. The Strategy drafted by the Institute aims to position the Institute as the focal point for initiating, moderating and coordinating the activities for continuing development of the newly formed system for protection of intellectual property rights in Bosnia and Herzegovina. It also foresees that the number of employees of the Institute will increase significantly in the following year or two, estimating that by year 2015 the Institute will be in full capacity to take the leading role in the field of intellectual property in Bosnia and will be ready to stand shoulder to shoulder with the IP institutions in the region. Intellectual property is one of the first successfully completed chapters in the process of harmonizing the local legislation with the EU legal system. We hope that the remaining segments will be completed equally efficiently.