New Patent Act Enters into Force in Croatia

A new Patent Act came into force in Croatia on February 20, 2020, introducing important changes. The Act was drafted in 2019 and adopted by the Croatian Parliament on January 21, 2020.

Introduction of the Utility Model Concept

The main change brought by the new Act is the introduction of the “utility model” concept to replace the previous “consensual patent”, which was often misleading because of the word “patent” contained in it. The clear distinction between the utility model and patent concepts improves legal certainty, in particular when it comes to enforcement.

The Act also limits the utility model subject matter, excluding processes, inventions in the field of biotechnology, chemical or pharmaceutical substances, and inventions the commercial use of which would be contrary to public order or morality.

The new Act introduces separate registration procedures for patents and utility models, thus significantly shortening the registration procedure for utility models – a utility model application will be published as a registered right as soon as the formal examination is completed.

Another novelty is that utility model holders cannot request civil protection on the basis of an unexamined right, and that they are allowed to file a request for substantive examination of the utility model in order to convert it into a patent, within seven years from the utility model application date, instead of ten years as was the case for consensual patents.

Introduction of Mandatory Preliminary Prior Art Search

The new Act introduces a mandatory preliminary prior art search and an optional preliminary written opinion on the patentability of an invention at an early stage of the examination procedure, before an application is published in the Official Gazette. Under the previous Patent Act, the prior art search was carried out in parallel with substantive examination. The purpose of the revision is to avoid unnecessary proceedings and costs for applicants whose applications do not meet patentability requirements and allow for more effective risk management by the rights holders.

The prior art search and written opinion on patentability is conducted by the Croatian Intellectual Property Office in cooperation with the European Patent Office (EPO), which has the capacity and the resources to conduct searches and examinations in the most complex areas of technology. This should ensure a high quality of patent protection in all areas of technology, in particular information and communication technology, nanotechnology and biotechnology, for which the Croatian IPO does not have adequate resources. The new Act should also have a positive impact on applicants such as small and medium-sized enterprises and research organizations that were often unable to register their inventions because of lengthy and costly procedures, now streamlined by the new Patent Act.

By: Ivan Kos

For more information, please contact Ivan Kos at our Croatia office.