Have you developed a new idea, devoted your time to inventing, and is your invention capable of industrial application? If you can answer “yes” to all three questions and you are the inventor, congratulations – you have just met the three basic conditions for the grant of a patent and the associated legal protection of your intellectual property, and it is time to visit the patent office. Be aware that patenting is a time-consuming process, and it takes several years before a patent is actually granted. There is no need to worry about competitors getting ahead of you, however, since filing a patent application creates a right of priority in your favour.
In the Slovak Republic, the official patent authority is the Industrial Property Office of the Slovak Republic (UPV), based in Banská Bystrica, and the principal legislation is Act No. 435/2001 Coll. (the Patent Act). The Office’s website also provides precise instructions and comprehensive guidance on filing Slovak, European and international applications for patent protection, together with the forms needed for the proceedings.
The patent application
The first step for anyone seeking a patent is therefore to file a patent application, either in person at the UPV or its Bratislava branch, by post or electronically. The application is usually filed in two copies on the Office’s form, in which you describe the invention precisely, set out the patent claims defining the subject matter you wish to protect, include a brief abstract and, where applicable, drawings (note that the dimensions of drawings and even the margin and print parameters are strictly prescribed), and pay the administrative fee of 27€.
To avoid delays in the proceedings, it is advisable to consult World Intellectual Property Organization (WIPO) Standard ST.22 when preparing your patent application documents; it concerns the presentation of patent applications to facilitate optical character recognition. A detailed manual on formatting a patent application is available on the Office’s website. The formal requirements of a patent application are governed by Office Decree No. 223/2002 Coll., which implements the Patent Act.
Once filed, your patent application will be entered in the register of patent applications and the Office will carry out a preliminary examination, so that it can quickly exclude the application from the proceedings on grounds of obvious unpatentability (methods of medical treatment, for example) or because of formal errors, which the Office will notify you of and ask you to correct. If, however, you have devoted enough time to your application and your invention is not obviously unpatentable, the UPV will publish it in its Journal 18 months after the priority date, after which anyone may submit observations on its subject matter. A full examination of the patent application takes place if you or another person file a request for it within 36 months of the filing date and pay the administrative fee of 116 € for up to 10 patent claims, plus 17 € for each additional claim. If the full examination shows that the invention meets the relevant legal requirements, a patent will be granted. It is worth remembering that a patent is valid for 20 years from the filing of the application, and renewal fees must be paid to keep it in force. Renewal fees rise slightly with each year of validity, starting at 66 € from the 3.rd year and rising to 663,50 € in the 20. year, and they also apply to European patents. An overview of all current fees for the proceedings is available on the Office’s website.
Patent protection in Europe and worldwide
If you wish to protect your invention at European or international level, you can do so by filing abroad by means of a national patent application, a European patent application or an international PCT application. A national application is filed in the country where you expect to exploit your invention and wish to protect it; the proceedings before the local office are essentially the same as before the Slovak Office, but are conducted in the relevant official language.
If you wish to seek patent protection for an invention in 2 or more EU Member States, you must file a European patent application, either through the UPV or directly with the European Patent Office (EPO). There are as many as 38 contracting states, and a European patent can also take effect in certain non-member countries under the so-called “extension system” (currently Montenegro and Bosnia and Herzegovina.) The relevant forms are available at the UPV filing office in B. Bystrica, at its Bratislava branch, and on the websites of both the UPV and the EPO. Such an application may be filed in one of the EPO’s official languages (English, French or German, or indeed in any other world language) and, since 1.7.2002, also in Slovak, in which case a translation into one of the EPO languages must be submitted within 1 month of filing the European patent application. Here too, there are fees, set by the EPO’s Rules relating to Fees, and they deserve attention: if you file online, i.e. electronically via the Office’s website, the fee is 120€, whereas filing in the standard paper form raises it to as much as 210 €.
An international application filed under the Patent Cooperation Treaty (PCT) allows you to seek protection for your invention outside the EU as well. The PCT is administered by the World Intellectual Property Organization (WIPO), based in Geneva. An international application automatically covers patent protection in all states that are PCT contracting states on the date of filing, and in respect of those states it is automatically deemed to request every type of protection available in each country. If you are a citizen of the Slovak Republic, or are resident or have your registered office there, you can again file the international application at the UPV in Banská Bystrica or its Bratislava branch. This type of application is filed in English, Slovak, German or French on form PCT/RO/101, either electronically (via the ePCT system) or on paper, but it must always be submitted in English, French or German. The fee is 66 €, or as much as 1219 € for legal entities; filing electronically is advisable, as it can reduce this amount by 183-275 €. In this case the proceedings have 2 phases – international and national – each with different procedures and deadlines, which are described in detail in the relevant section of the website of the Industrial Property Office of the Slovak Republic. The preliminary examination costs 1930 €.
Although the process leading to patent protection for an invention may seem complex, you should not be put off from going through it – provided, of course, that you expect a genuine return on the time and money invested. A worthwhile step that can save you a great deal of time, money and, not least, stress is working with a specialist adviser in industrial property law who professionally advises and represents applicants in patent proceedings before the Office. Patent attorneys in the Slovak Republic are members of the SKPZ (Slovak Chamber of Patent Attorneys).