New Patent Law in Serbia Introduces Important Changes

Serbia’s new Law on Patents entered into force on January 4, 2012 and introduced important novelties, which we explain below.

Serbia become the European Patent Organization’s (EPO) member state on October 1, 2010, thus the new law provides important requirements related to the European patent validation process. The extension system in accordance with the old patent law will, however, continue to apply to all European and international applications filed prior to October 1, 2010, as well as to all European patents granted as a result of such applications. The new law also provides requirements for the filing of European patent applications directly with the Serbian IPO.

In case the patent applicant or holder fails to comply with deadlines set by the Serbian IPO, they are under certain circumstances entitled to request continued processing of the corresponding patent application or registration within three months from the receipt of the official notification informing that the deadline for taking action has expired.

The new patent law for the first time includes provisions on the restoration of the priority right. Namely, the applicant can file a request for the restoration of the priority right within two months following the expiration of the priority period, but before the completion of the technical preparations for the publication of the patent application.

One of the major novelties is the possibility to appeal an IPO decision before the government, within 15 days from the date of the receipt. The administrative proceedings may be instituted against the government’s decision within 30 days from the date of the receipt of the government’s decision.

The new patent law prescribes that a patent application may be examined in an expedited procedure upon the request of the court, market inspection or customs authority, if judicial proceedings, inspection surveillance or customs procedures have been initiated. This urgent procedure may be requested in the event of an infringement litigation arising from the published application; along with request, the applicant is required to furnish evidence that the court proceedings for infringement terminated the finality of a competent authority on the application.

In case of an infringement action arising from the published application, the court will stay the civil proceedings until the IPO’s issuance of the final decision. If the patent revocation proceeding is requested before the IPO, the court shall stay the proceedings on an infringement action initiated by the right holder or the holder of an exclusive license, or on an action for the establishment of the right to protection initiated by the inventor or his successor in title or employer, or on an action for the recognition of the inventor’s status.

The new law introduces a novelty in the patent granting procedure. Once an application is submitted and the formal requirements have been fulfilled, the IPO is obliged to invite the applicant to request the patent search and to pay the corresponding search fees within one month of the invitation. When it receives the search request, the IPO will conduct the search on the basis of the claims, with due regard to the description and the drawings, and forward it to the applicant, who is entitled to request substantive examination within six months of the receipt of the search report. The report will be published together with the patent application in the Official Gazette or separately.

Provisions on third-party observations are explicitly stipulated in the new law. The law provides the possibility for the interested parties to present written observations concerning the patentability of the invention, after the patent application’s publication. The IPO is however not obliged to take such observations into consideration and the interested party will not be considered a party to the proceedings.

The new patent law prescribes that all supplementary protection certificate (SPC) provisions will enter into force on July 1, 2013.

The government body responsible for public health is entitled to grant the SPCs or the compulsory licenses for the manufacture and sale of pharmaceutical products intended for export to countries dealing with public health problems, to any party whose request fulfills the requirements outlined in the new law. When deciding whether to grant a compulsory license, the government must take into account the Decision of the General WTO Council of 30 August 2003 on implementation of paragraph 6 of the Doha Declaration on the TRIPS Agreement and public health. The validity of the provisions regulating the compulsory licenses related to the manufacture of pharmaceutical products for export to countries with public health problems will cease on the day of Serbia’s accession to the EU.

For more information, please contact Tijana Milijanovic at our Balkan Regional Office.

Source: The local text of the law