12.7.2023
IP
> Intellectual Property

The amendment to the Industrial Property Act (ZIL-1F) will soon enter into force – update

What are the changes it brings?

 

On 28 June 2023, the National Assembly of Republic of Slovenia adopted the Act on amendments and modifications to the Industrial Property Act (the “ZIL-1F”)[1], which will enter into force on 27 July 2023, i.e., on the 15th day after its publication in the Official Gazette of the Republic of Slovenia.[2]

The most important changes introduced by the ZIL-1F are in particular the following: (1) additional competences granted to the Intellectual Property Office of the Republic of Slovenija (the “Slovene IPO”), in particular the transfer of the jurisdiction to decide on applications for revocation of a trademark and application for a declaration of invalidity of a trademark from the court to the Slovene IPO; (2) a more detailed definition of the exceptions to patent protection; (3) the definition of the effective date of revocation of a trademark; (4) changes to the time limit for filing a request for extension and the time limit for filing a request for continuation of the proceedings after the delay; (5) further specification of the relevant evidence or opinions that the claimed invention meets the conditions of novelty, individuality and industrial applicability; and (6) the adjustments to the text of the act due to the entry into force of the Unified Patent Court and the unitary European patent (i.e., the European patent with unitary effect) by the Agreement on the Unified Patent Court[3], which entered into force on 1 June 2023.

A few of the more significant changes are set out in more detail below.

I. Changes in connection to patents

On 1 June 2023, the so-called patent package concerning patents with unitary effect and the related Unified Patent Court (the “UPC”) entered into force. The regime of patents with unitary effect and the UPC will, for a certain period, apply in parallel to the existing regime of national patents and European patents (without unitary effect). During a period of seven years (which may be extended for a further seven years by the Management Board of the UPC), European patent holders have the possibility to opt out of the exclusive jurisdiction of the UPC with respect to their patent application, a granted European patent or a supplementary protection certificate. This opt-out may be effective until the end of the validity of the patent or the supplementary protection certificate granted under it. Therefore, in theory, the parallel jurisdiction of a national court and the UPC could last for 39 years (or over 40 years if we allow a few years for any final national court proceedings to be concluded).

In order to ensure the greatest possible uniformity of national patent law with the Agreement on the UPC, the amendment to the ZIL-1F introduced certain changes to the act, which will apply to national patents or (more commonly) European patents valid in Slovenia (but without unitary effect).

In addition, the provisions of the ZIL-1 have not been aligned with the revision of the European Patent Convention[4] (the “EPC 2000”) for quite some time. The amendment to the ZIL-1F therefore also reflects some of the changes necessary to align with the EPC 2000.

The changes introduced by the ZIL-1F in the field of patents as a result of the above-mentioned unifications include, inter alia:

  • The amendment to the ZIL-1F will align the scope of protection offered by a patent with unitary effect under the provisions of the Agreement on the UPC. The scope of the rights conferred by a patent will also be extended to a certain extent. For example, for the first time, the well-known and well-established foreign rule prohibiting indirect patent infringement (which has been recognised by Slovenian case law in some cases) will be introduced into Slovenian law. Furthermore, for the first time, storage is explicitly mentioned as infringing conduct. A new infringing act is also offering a patent-protected process for use (with the knowledge of the potential infringer that the process is protected).
  • The act will explicitly include provisions on the possibility of patenting a known substance for a first or second or subsequent medical use. In practice, such patents have been common under the EPC 2000, but so far there has been no explicit legal basis for them in Slovenia.
  • The rule on exceptions to patent protection will also be unified. This change is not intended to lead to a (substantially) different assessment of the exceptions to patent protection in practice, but rather to avoid the possibility of a different interpretation of this provision compared to Article 52(2) of the EPC 2000.[5] The amendment to the ZIL-1F (in line with the EPC 2000), inter alia, explicitly provides that computer programs as such are not inventions for which patent protection would be available.
  • The act also provides for changes to the limitations of patent rights, with the ZIL-1F reproducing to a certain extent the provisions of the Agreement on UPC.

The ZIL-1F also amends certain other provisions of the ZIL-1F relating to patents, for example: (i) the procedure for confirming the validity of a European patent in Slovenia; (ii) the competence of the Slovene IPO to issue a decision of its own motion on the invalidity of a European patent entered in the Register at the Slovene IPO if the European patent has been revoked in its entirety by the European Patent Office (the “EPO”); (iii) the possibility to subsequently enter a European patent in the Register of the Slovene IPO if the EPO has refused the request for the entry of unitary effect of the European patent; (iv) the non-existence of simultaneous protection for the same invention with different patent rights available in or for Slovenia; (v) written evidence concerning nationally granted patents; (vi) the information services of the Slovene IPO and others.

II. Changes in connection to trademarks

The amendment to the ZIL-1F also introduces significant changes in relation to trademarks. One of the most significant changes brought about by the amendment to the ZIL-1F is certainly the transfer of the jurisdiction and competence to decide on the applications for revocation of a trademark and applications for a declaration of invalidity of a trademark from the courts to the Slovene IPO.[6] By transferring this jurisdiction to the Slovene IPO, Slovenia has duly transposed the provisions of the Directive to approximate the laws of the Member States relating to trade marks (recast).[7] The deadline for transposition of the Directive expired on 14 January 2019.

Notwithstanding the transfer, the court still have jurisdiction to rule on revocation and invalidity of trademarks in cases where a counterclaim for revocation or invalidity of a trademark is brought in a trademark infringement dispute.[8] Since the Directive to approximate the laws of the Member States relating to trade marks does not exclude judicial protection in proceedings for revocation or invalidity of a trademark, the proposed regime partially preserves the jurisdiction of the courts. Such a regime allows the parties to resolve all issues between them in court proceedings, which will contribute to the proceedings being conducted more efficiently and economically.[9]

Another change, which is also related to the transposition of the Directive to approximate the laws of the Member States relating to trade marks, is the determination of the date of revocation of the trademark, which was not regulated until the amendment to the ZIL-1F. As a result, there have been disagreements between the parties in litigation as to the point in time from which the trademark is revoked and, consequently, the question of the direct applicability of the Directive has arisen due to the delay in the deadline for its implementation. The amendment to the ZIL-1F now provides that the trademark shall be revoked as from the date of the final decision and that the revocation of the trademark shall take effect from the date of filing the request for revocation. However, at the request of one of the parties, an earlier date on which one of the grounds for revocation has occurred may be set as the effective date of revocation.

The amendment therefore provides that the revocation of a trademark shall take effect from the date of filing the request for revocation or from an earlier date on which one of the grounds for revocation arose, i.e., retroactively (ex tunc). The amendment will thus have an important practical consequence, since the use of a trademark so revoked in the interim of the proceedings may also entail, inter alia, the infringement of another trademark (as opposed to the current regime, where such a risk existed only for possible use after the proceedings had already been concluded).

III. General changes

Last but not least, with regard to time limits, the amendment to the ZIL-1F also introduces some general changes that apply to all industrial property rights.

The amendment to the ZIL-1F now allows any party to the proceedings to request an extension of time under Article 66 of the ZIL-1, which was previously only possible for applicants or right holders. For example, this amendment will also allow an applicant for revocation of a trademark or an applicant for a declaration of invalidity of a trademark to request an extension of time under Article 66 of the ZIL-1.

In order to ensure legal certainty, the amendment to the ZIL-1F also provides for a shorter time limit for filing a request for continuation of the proceedings after a missed time limit (i.e., delay). The objective time limit for filing a request for continuation of the proceedings after a delay is thus reduces from six (6) months from the date of delay to four (4) months from the date of delay.[10] This will therefore encourage parties of proceedings to proceed more expeditiously. However, the provision on the shorter time limit for filing a request for continuation of the proceedings after a delay will only apply two (2) months after the entry into force of the amendment to the ZIL-1F. Taking into account the date of entry into force of the amendment to the ZIL-1F, the shorter time limit will therefore only enter into force at the end of September 2023.

[1] The text of the Act on amendments and modifications to the Industrial Property Act (ZIL-1F), which was adopted by the National Assembly of the Republic of Slovenia on 28 June 2023, is available at the following URL (in Slovene): https://imss.dz-rs.si/IMiS/ImisAdmin.nsf/ImisnetAgent?OpenAgent&2&DZ-MSS-01/1d4cbc2c2ce50404d7f8d63e43c42fee7f30d24d01b73f15d60322500b3a17bc (available on 4 July 2023).

[2] The act was published in the Official Gazette of the Republic of Slovenia on 12 July 2023.

[3] Act ratifying the Agreement on a Unified Patent Court (in Slovenian: Zakon o ratifikaciji Sporazuma o enotnem sodišču za patente, Official Gazette of the Republic of Slovenia, no. 13/16 – International Treaties as amended, the “Agreement on UPC”).

[4] Act Ratifying the Convention on the Grant of European Patents (in Slovenian: Yakon o ratifikaciji Konvencije o podeljevanju evropskih patentov, Official Gazette of the Republic of Slovenia, no. 19/02 as amended, the “EPC 2000”).

[5] Cf. Explanatory note to the Act on amendments and modifications to the Industrial Property Act dated 6. 3. 2023, EEA: 2023-2180-0010, Note to Article 7, pp. 63-64.

[6] Pursuant to Article 103 of the Courts Act (in Slovenian: Zakon o sodiščih, Official Gazette of the Republic of Slovenia, no. 94/07 as amended, the “ZS-1”)

[7] Directive (EU) 2015/2436/EU of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (recast) (Official Journal of the European Union, no. L 336/1 as amended, the “Directive to approximate the laws of the Member States relating to trade marks”).

[8] Cf. Article 121(4) of the ZIL-1.

[9] Cf. Explanatory note to the Act on amendments and modifications to the Industrial Property Act dated 6. 3. 2023, EEA: 2023-2180-0010, 2.3 Main solutions, pp. 20-21.

[10] Cf. Explanatory note to the Act on amendments and modifications to the Industrial Property Act dated 6. 3. 2023, EEA: 2023-2180-0010, Note to Article 21, p. 71.