Patent protection in Slovenia

In Slovenia, a national patent application is filed with the Intellectual Property Office. Slovenian applicants can file the application by themselves or through an agent.

Three types of patent protection can be acquired through a national application:

Patent

The term of the patent is 20 years, provided the holder pays maintenance fees. Before the end of the ninth year of the patent’s validity, the holder must submit written evidence to the Office that the patented invention fulfils all the substantive criteria, i.e. novelty, an inventive step and industrial applicability. If the written evidence is not submitted in due time, the validity of the patent lapses irrevocably after the tenth year. The holder of the patent must also produce written evidence when suing a third party for infringement of patent rights.

Written evidence may be a patent granted for the same invention by the European Patent Office or, if no application for a European patent has been filed for the same invention, by one of the offices having the status of an International Preliminary Examining Authority under Article 32 of the Patent Cooperation Treaty or by another patent office with which a relevant agreement has been concluded. If the holder does not have such evidence, they may, on payment of a special fee, request that the Office obtain an opinion from the relevant institution or body as a basis for issuing the relevant decision.

Short-term patent

The other option is a short-term patent, which is limited to 10 years. This type of patent cannot protect processes or new plant varieties or animal breeds but does not require the holder to provide proof of the novelty, inventive step and industrial applicability of the invention.

Divisional patent application

A special option is the divisional patent application, which is either requested by the Office or opted for by the applicant when the invention for which protection is sought lacks unity. This is the case where there are several inventions which are not so interrelated as to constitute a single inventive concept. A divisional patent application retains the filing date of the application from which it is divisional but continues to live its own life and is not affected by the expiry of the protection of the basic application.

What is a patent?

A patent is an exclusive right of a natural or legal person for an invention that involves an inventive step and is industrially applicable.

• An invention or a technical solution is considered to be new if it does not form part of the state of the art, that is to say, it has not been made available to the public by means of oral or written description, by use, or in any other way before the filing date of the patent application.
• An invention is considered as involving an inventive step if it is obvious to an expert that the subject of the invention is not a result of the state of the art.

An invention is considered as industrially applicable if the subject of the invention can be made or used in an industry of any kind, including agriculture.

What cannot be protected by a patent?

Discoveries, scientific theories, mathematical methods, aesthetic creations, plans, rules and procedures for mental activities, games or business activities, and computer programs and representations of information are not directly considered as inventions as such and therefore cannot be the subject of patent protection.

• A patent is also not granted for:
  an invention the commercial exploitation of which is contrary to public policy or morality (for example, an invention which is likely to injure other persons or endanger their lives);
• an invention of a surgical or therapeutic procedure for the treatment of the human or animal body and of a diagnostic procedure applied to the human or animal body (thereby enabling the unimpeded treatment of humans and animals), except an invention relating to products, in particular substances or mixtures, used in any of these procedures.

Claiming priority

Within one year of the filing of the application in any Member State of the Paris Union or the World Trade Organization (WTO), the applicant has the possibility of filing applications referring to this first application. Such a reference is called "claiming priority" and is very important in carrying out a full substantive examination. Priority can also be claimed on the basis of the exhibition of the invention. Only those exhibitions that are registered by the Bureau International des Expositions and listed on its website may be the basis for granting a priority right under Article 62 of the Industrial Property Act.

As a rule, a patent application is filed in those countries where we want to protect our interests or where we expect our competitors to try to exploit our invention by making the invention or by selling it.

Procedure for obtaining patent protection in Slovenia

The procedure for obtaining patent protection from the Intellectual Property Office consists of a few basic steps.

Finding relevant information

Before applying for a patent, we advise you to find out whether your invention is really new at the global level, whether your invention is eligible for a patent, how the procedure for granting a patent works, who can help you with the application and so on.

Declaratory decision

In order to successfully exercise patent rights, the patent holder must have a declaratory decision.

Not later than by the end of the ninth year of the patent term, the patent holder must provide the Office with written evidence that the patented invention fulfils all the requirements of novelty, inventive step and industrial applicability and pay the appropriate fee for the issue of a declaratory decision. On the basis of the evidence submitted, the Office issues one of three declaratory decisions.

Written evidence may be a patent granted for the same invention by the European Patent Office or, if no application for a European patent has been filed for the same invention, by one of the offices having the status of an International Preliminary Examining Authority under Article 32 of the Patent Cooperation Treaty or by another patent office with which a relevant agreement has been concluded.

If the holder does not have such evidence, they may, on payment of a special fee, request that the Office obtain an opinion from the relevant institution or body as a basis for issuing the relevant decision.

If the holder fails to submit the written evidence in due time, the validity of the patent lapses irrevocably after the tenth year.

Maintaining the validity of the patent and monitoring possible infringements

To maintain your patent, you must pay annual fees, which are due each year on the "anniversary" of the filing date of the application.

During the term of the patent, monitor for possible infringements.

Notifying changes relating to the patent

The Office keeps registers of industrial property rights. If you wish to transfer your patent to a new holder or if you have changed your name, registered name, address or registered office, you must register the change in the relevant patent register.

You can also contact the Office if you need a certificate of the patent from the register.

Patent protection abroad

Patent protection is limited territorially and applies only within the area of jurisdiction of each patent-granting institution. There are three different options for obtaining patent protection in other countries.

National applications with foreign offices

The most basic option is the national application filed with the relevant authority of the country where protection is sought. An applicant who is not a national of that country must carry out the procedure through an agent who is entered in the register of that country.

In most countries, the procedure is similar to the procedure before the Slovenian Office, except that, before granting a patent, some offices carry out a full examination procedure to determine whether the invention is new, involves an inventive step and is industrially applicable.

International application

The second possible option is filing an international application in accordance with the Patent Cooperation Treaty (PCT), which has over 150 Contracting States. Slovenian applicants can submit their application to the Slovenian Office in English, French, German or Slovenian. If the application is submitted in Slovenian, a translation into one of the other three languages must be provided within one month. The procedure can therefore start at the Slovenian Office and continue at the World Intellectual Property Organization (WIPO) in Geneva. After the completion of the procedure at WIPO, the applicant must request patent granting with the relevant authorities of the countries where they seek protection. The applicant needs an agent only for the procedure before the authorities of individual foreign countries.

European application

The third option for obtaining patent protection abroad is a European patent, which is valid in all contracting states to the European Patent Convention and in countries that have specific agreements with the European Patent Organisation (EPO) on the extension of European patents to those countries. Slovenia has been a full member of the EPO since 1 December 2002. An applicant may file an application for a European patent with the Slovenian Intellectual Property Office in the Slovenian language or in any other language, provided that, within the prescribed time limit, they submit a translation of the application into one of the three official languages of the European Patent Office directly with the Slovenian Office, where the procedure continues. The applicant may act alone or through a European patent representative. Several Slovenian patent representatives are already registered as European patent representatives.

After the granting of a European patent, the holder must supply to the offices of the countries where they want their European patent to take effect a translation of the patent claims or a translation of the granted patent into the language of the country concerned within the prescribed time limit and pay the appropriate fees. More information on this can be found in the EPO publication National law relating to the EPC.

Slovenian European patent holders or foreign European patent holders can register their European patent in the register of patents at our Office and thus obtain protection in Slovenia.

The new Unitary Patent System came into effect on 1 June 2023. European patent holders now have the additional possibility to register unitary effect with the European patent within the prescribed time limit. The application for unitary effect is filed by the proprietors with the EPO. The European patent with unitary effect is currently valid in 17 countries, with the possibility of other Member States of enhanced cooperation joining later.

Holders of a European patent can combine unitary effect with "traditional" entries of the European patent in national registers, but simultaneous protection is not allowed.

Slovenian European patent proprietors or foreign European patent proprietors who do not opt for unitary effect can enter their European patent in the patent register at our Office and thus obtain protection in Slovenia.