Bulgaria Amends Patent Law

The amendments to the Bulgarian Law on Patents and Utility Model Registration entered into force on October 30, 2020.

The most important change brought by the new law is that legal practitioners are now allowed to represent clients before the Bulgarian IPO without passing a qualifying examination on patent, trademark or design law. They can now act without having to register as IP representatives. This change applies not only to patents but to all industrial property rights.

The occupation of an IP representative is now for the first time recognized as a regulated profession. The law now includes the requirements for the exercise of the profession and the rules on the qualifying examination and training of future professionals. There are also rules on the recognition of the professional qualification of foreign IP representatives, as well as rules on the temporary and occasional provision of services by foreign professionals. The law also regulates the associations of representatives and introduces a register of IP representatives and associations. It defines their rights, obligations, liability and insurance, as well as the rights of their clients.

The patent-specific part of the new law provides for electronic filing and electronic correspondence with the IPO. There will be new electronic registers of patents, utility models and supplementary protection certificates, while the introduction of electronic files is also envisaged in the future.

In the field of substantive patent law, plants and animals obtained by essentially biological processes are now excluded from patentability. Although such processes were already excluded from patentability, the legislation did not cover products obtained by such processes. The amendment brings the Bulgarian patent law in line with Rule 28(2) of the Implementing Regulations of the European Patent Convention.

The rules on employee inventions have been slightly amended as well. The law introduces a possibility for contractual derogation from the principle that unless the employer files a patent application within three months after receiving a notification from their employee that an invention was created, the right to apply for a patent shifts to the employee. This rule clearly favors employers who can extend the default three-month period in the employment contracts. The provision also seems to open the possibility to completely deprive employees of the right to file patent applications, but this issue will have to be resolved by subsequent case law.

A significant change in the patent prosecution procedure is that the applicant is no longer required to file a separate search and substantive examination request and pay the corresponding fees within 13 months from the filing or the priority date. All fees, including the search and substantive examination fee and the publication fee, are now paid upfront at the time of filing. Applicants therefore lose the possibility of abandoning the application prior to its publication and substantive examination by not filing the search and substantive examination request. Unless they explicitly withdraw the application, the IPO will publish it and proceed with the search. Many local applicants, unaware of the requirement to file such an additional request, were missing the deadline and losing their rights. This increased the number of requests for reinstatement of rights, so the change is aimed at reducing the number of such requests and streamlining the procedure for users.

The period to request reinstatement of rights has been significantly shortened, to one month from learning of the expiry of the term and no later than three months from the expiry. Previously it was three months from learning of the expiry but no more than a year from the expiry. This change again aims at reducing the number of reinstatement requests filed with the IPO.

In the field of utility models, deferment of the registration must now be requested at the time of filing. Until now, deferment could be requested within a period of three months after the filing date.

Certain provisions concerning the Unitary Patent have been added, but they will apply only if and when the Agreement on a Unified Patent Court enters into force.

By: Dimitar Batakliev

For more information, please contact Dimitar Batakliev at our Bulgaria office.