Conditions and guide for patent registration in Serbia

Patent protection and registration is a procedure that protects an invention from any field of technique or technology, i.e. that enables the inventor to protect his invention. One can justifiably ask why invest in new ideas and solutions at all if it creates additional costs for you and your business in the form of taking the necessary legal measures for the protection of intellectual property.

Perhaps the best example that gives an answer to the question in question is the fact that according to the research of the World Bank in 1978, the value of intangible assets in relation to the total assets in companies amounted to only 5%. Today, intangible assets (that is, intellectual property) amount to more than 75% of the value of company assets. 

What does a patent mean

A patent is a right that protects an invention from any field of technique or technology.

Although at first glance we would think that any invention can be protected by patent law, the law lays down the conditions that an invention must meet in order to enjoy patent protection.

A patent means an invention that:

• New;
• Inventive;
• Industrially applicable.

New invention

An invention is new if it is not covered by the prior art. State of the art, consists of:

• everything that is available to the public before the date of filing the invention application, by written or oral description, use or in any other way;
• content of all patent applications for inventions filed in the Republic of Serbia.

Inventive invention

An invention has an inventive level if, for an expert in the relevant field, it does not derive, in an obvious way, from the state of the art, i.e. from what is already available to the public.

Industrial applicability of the invention

An invention is industrially applicable if the object of the invention can be produced or used in any branch of industry, including agriculture.

Therefore, after an examination procedure has been carried out, a patent will be granted for an invention which:

• is new – if the same solution was not available to the public before the date of submission of the application for protection of the invention;
• has an inventive level – the invention does not arise in an obvious way compared to solutions that are already available to the public, that is, known, in the relevant technical field;
• is industrially applicable – it can be produced or used in any branch of industry.

Who is entitled to protection

The right to protection of an invention belongs to the inventor or his legal successor or his successor, that is, the employer. If several inventors came up with the invention through joint work, they have a common right to protection. The rights of the inventor who created the invention in the employment relationship and the rights of the employer where the invention was created are determined on the basis of general acts or a contract between the employer and the employee, which is why, in the case that you are involved in the development of new technologies, it is necessary to have your internal acts in detail the way you regulate the issue of protecting your intellectual property and the relationship with employees.

The reason why it is important that you take steps to protect your invention or patent as soon as possible is the fact that the right to protect the invention belongs to the person who first filed the patent or small patent application. Namely, if two or more persons create an invention independently of each other, the right to protect the invention belongs to the person who filed the patent or small patent application, whose filing date is the earliest. That is why it is necessary to submit a report in a timely manner in order to protect your rights.

The right of patent protection provides the possibility of protecting the right holder for a period of 20 years. This right guarantees the inventor that competitors cannot economically exploit the subject invention, but only the inventor or a person authorized by him has a monopoly over its economic exploitation.

Protection of the invention from the employment relationship

Practice shows there is often a situation where the title of inventor belongs to a person who is employed by the employer and who creates the invention by carrying out tasks that are determined by the employment contract between the employee and the employer or in accordance with a special act of the employer that regulates research and development activities.

In that case, it is an invention from an employment relationship, for which special rules apply. In addition to the above case, an invention from employment is also considered an invention that was created during the employment or within a period of one year from the date of termination of the contract, if that invention was created in connection with the employer’s activities or the use of material and technical means, information and other conditions provided by the employer or created as a result of professional training provided by the employer to the employee.

The employer has the right to protect such an invention, unless otherwise stipulated in the contract between the inventor and the employer.

If an invention from an employment relationship is protected in the name of the employer, the inventor, i.e. the employee, has moral rights related to that invention, as well as the right to compensation. The amount of compensation, the method and time of its payment are determined by the employment contract or the general act of the employer, or by a special contract concluded by the employer and the employee as the inventor regarding that particular invention.

In the event that an employee creates an invention in the course of employment, he is obliged to submit a written report to the employer immediately after the creation of the invention, informing him of the invention, with a complete and accurate description of the invention, with special emphasis on the new technical solution, then the way in which he came up with it of the invention and which assets owned by the employer he used. The subject report also contains:

• name and surname of the inventor;
• the best way to apply the invention;
• data on the job or special work task the employee was working on at the time of the invention or on the concluded research contract;
• names and creative contribution of collaborators, if any.

The employer then has a period of six months from the receipt of the orderly report to inform the employee in writing whether he considers the invention to belong to the group of inventions from the employment relationship. If an agreement cannot be reached between the employer and the employee as to whether the invention in question belongs to this category, the competent court will make a decision on it. In the event that the invention does not belong to the category of invention from the employment relationship, the right to protect such an invention belongs to the employee and not to the employer.

If, on the other hand, it is an invention from the employment relationship, the employer is obliged to inform the employee whether he will submit a report. In a situation in which the employer does not want to submit an application, and considers that the invention does not include one of its manufacturing secrets, he must inform the employee of this in writing. The employee, in that case, can protect the said invention in his own name, unless otherwise agreed between the employer and the employee. If the employer assesses that the invention includes one of his production secrets, he must inform the employee, who in that case does not have the right to protect the invention. However, the employee is then entitled to compensation from the employer.

What is patent registration?

Patent registration is actually a procedure for protecting a patent or an invention.

The process of patent protection, i.e. patent registration in Serbia, is carried out in the proceedings before the Intellectual Property Office and involves the engagement of both a lawyer who specializes in the protection of intellectual property and an expert in the field of the state of the art to which the invention relates.  

Types of patent registration in Serbia and protection

An application for patent protection can be:

• National – patent or small patent application submitted to the Intellectual Property Office of the Republic of Serbia;
• International – application filed in accordance with the Agreement on cooperation in the field of patents;
• European – a patent application filed on the basis of the European Patent Convention, as well as an international patent application filed on the basis of the Agreement on Cooperation in the Field of Patents, for which the European Patent Office performs tasks as designated or selected office and in which the Republic of Serbia is indicated.

What cannot be protected and registered as a patent in Serbia

The Law on Patents explicitly stipulates that, even if the invention meets the requirements in terms of innovation, inventiveness and industrial applicability, the following shall not be considered an invention:

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. plans, rules and procedures for performing intellectual activities, for playing games or for performing tasks;
4. computer programs;
5. display of information.

One of the frequent questions addressed to our law office is the question of whether software can be protected by a patent. This answer depends on where you want to protect your software. If it is the territory of the EU or Serbia, bearing in mind the above provisions, the computer program or software cannot be protected by patent law. On the other hand, if you would like to protect your software on the territory of the USA, you can do so as a rule. However, in certain situations, it is possible through the protection of a “physical” invention to protect the software that is functionally related to the invention so that they form a unique entity (the best example for this is ABS brakes).

The following cannot be protected by a patent or small patent:

• inventions whose commercial use would be contrary to public order or morality, with the proviso that commercial use will not be considered contrary to public order or morality only because it is prohibited by law or other regulation, and in particular the following:

(1) procedures for cloning human beings;

(2) procedures for changing the genetic identity of germ cells of human beings;

(3) using a human embryo for industrial or commercial purposes;

(4) procedures for changing the genetic identity of animals, if these procedures are likely to cause suffering to animals, without achieving a significant medical benefit for humans or animals, as well as animals that are the result of such procedures.

• inventions related to surgical or diagnostic procedures or treatment procedures that are applied directly to the human or animal body, with the provision that this provision shall not apply to products, and especially to substances and compositions for use in those procedures;
• plant variety or animal race or an essentially biological process for obtaining a plant or animal, as well as plants or animals obtained exclusively by an essentially biological process, with the provision that this provision shall not be applied to a microbiological process or a product obtained by that process.

Registration of national patent in Serbia

A patent or small patent is acquired by publishing the recognized right in the Official Gazette issued by the competent authority, and is valid from the date of submission of the application.

The applicant of the patent application acquires temporary rights, which are the same in content as the patent, by publication of the patent application, which are valid from the date of publication of the application until the date of publication of the recognized patent.

If the patent is not recognized based on the application, it is considered that the rights from the published application did not even arise.

It should be borne in mind that the patent is territorially limited, which further means that the patent recognized by the Intellectual Property Office of the Republic of Serbia has effect only on the territory of Serbia.

Difference between a patent and a small patent

The difference between patent protection and small patent is that when registering a small patent, the competent authority, i.e. the Intellectual Property Office, does not examine whether the invention is new, whether it has an inventive level or whether it is industrially applicable.

A small patent protects an invention related to a product, while legal protection is not provided for procedures or the application of procedures that can be protected by a patent. A patent lasts 20 years, counting from the date of filing the application, while a small patent lasts ten years counting from the date of filing the application.

Patent registration procedure in Serbia

The procedure is initiated by submitting an application in Serbian or in a foreign language, but with a certified translation. The applicant may, by submitting one application, seek protection for only one invention. Exceptionally, there is a possibility to request the recognition of a patent for several inventions with one application, but only if these inventions are interconnected so that they realize a unique inventive idea.

Upon receipt of the application, the procedure for examining the application is carried out by the competent authority, i.e. the Intellectual Property Office of the Republic of Serbia. It is an examination that includes the recognition of the date of submission of the application (the date from which the application is considered to have been submitted, which differs depending on whether the applicant has eliminated certain deficiencies by order of the competent authority), as well as a formal examination of the application. In the event that the application contains formal defects, which the applicant does not remove within the given deadline, the application is rejected. The applicant has the right to appeal against the rejection decision.

If the application meets the formal requirements, the next step is to submit a request for the preparation of a state-of-the-art search report within one month of receiving the invitation from the competent authority and pay the prescribed fee. We remind you that the state of the art means everything that is available to the public before the date of filing the invention application, by written or oral description, use or in any other way.

Therefore, a search is made for products, patents, written documents and everything that was available to the public, and in this way the state of the art is determined. It is very important that the request in question be submitted in a timely manner along with proof of payment of the fee, otherwise the application will be rejected by the competent authority.

The next stage is the essential examination of the patent application, after which the competent authority, if it determines that all conditions for patent recognition have been met, submits to the applicant a proposal of the final text of the patent claims that it intends to adopt, with which the applicant must agree within 30 days.

If the applicant does not agree with the text and number of patent claims within the relevant deadline, the competent authority makes a decision on the recognition of the patent according to the final text of the patent claims submitted for approval.

If, after the substantive examination of the patent application, the competent authority determines that the conditions for patent recognition have not been met, it will issue a decision rejecting the request for patent recognition.

The Institute for Intellectual Property of the Republic of Serbia maintains the register of patents and small patents, and the Institute issues extracts from the register to interested persons, which have the significance of a public document.

European patent application

The European patent application and the European patent have the same legal effect and will be treated under the same conditions as the national patent application and the national patent, if certain conditions stipulated by law are met.

A European patent application can be filed:

1. European Patent Office;
2. The Intellectual Property Office of the Republic of Serbia.

The Intellectual Property Office of the Republic of Serbia forwards the European patent application to the European Patent Office within a certain period, i.e. within six weeks from the date of submission or four months from the date of submission, i.e. within 14 months from the priority date.  

A European patent application submitted to the Intellectual Property Office of the Republic of Serbia has the same effect as if it had been submitted to the European Patent Office on the same date, provided that the competent authority forwarded the European application to the European Patent Office in a timely manner.

Procedure for international patent protection

An international application is an application filed in accordance with the Agreement on Cooperation in the Field of Patents.

The provisions of the Agreement on Cooperation in the Field of Patents, the provisions of the Law on Patents and the regulations adopted on the basis of this law shall apply to international applications that are submitted to the Intellectual Property Office of the Republic of Serbia as the receiving authority or in which the competent authority is listed as a designated or elected authority.

An international application can be submitted to the competent authority as a receiving authority if the applicant is a natural person who is a citizen of the Republic of Serbia or has a residence in the Republic of Serbia or if the applicant is a domestic legal entity, i.e. a legal entity with a registered seat in the Republic of Serbia.

An international application in which the Republic of Serbia, in accordance with the provisions of the Agreement on Cooperation in the Field of Patents, is designated or selected for the recognition of a national patent, is submitted to the Intellectual Property Office of the Republic of Serbia in the Serbian language and published in the official gazette, no later than six months. from the date of receipt of the application by the competent authority.

Procedure after registration

As we mentioned, the patent lasts for 20 years, counting from the date of filing the application. On the other hand, a small patent lasts ten years from the date of filing the application. However, it is necessary to undertake certain actions even after the registration of the patent in order for it to be valid.

Namely, it is necessary to pay annual fees for the maintenance of patent rights. Fees are payable starting from the third year and for each subsequent year, counting from the date of submission of the application. The payment of the fee can be made by any person, in the name and for the account of the applicant, i.e. the right holder. Even if the payment of the fee is late, it can be paid within an additional period of six months with the mandatory payment of an additional fee.

What Is Patent Infringement

If an unauthorized third party:

1. produces, offers, puts into circulation or uses a product made according to a protected invention or to import or store that product for the stated purposes;
2. applies a procedure that is protected by a patent;
3. offers a process that is protected by a patent;
4. produces, offers, puts into circulation, uses, imports or stores for these purposes a product directly obtained by a procedure protected by a patent;

thus infringing patent rights. In that case, the law provides for the possibility of filing a lawsuit with the competent court for the protection of rights. Moreover, the law provides that a lawsuit can be filed when there is a serious danger that the right will be violated – that is, when the right has not yet been violated.

The claimant may demand in lawsuit, in particular:

1. determination of a violation of the right or a serious danger that the right will be violated;
2. prohibition of actions that violate the right or actions that pose a serious risk that the right will be violated, as well as the prohibition of repetition of such or similar actions under the threat of paying an appropriate amount of money to the plaintiff;
3. compensation for damages due to violation of rights;
4. publication of the judgment at the defendant’s expense;
5. confiscation, i.e. permanent exclusion from circulation or destruction, or alteration without any compensation, of products that were created or acquired through infringement of rights;
6. prohibition of alienation, confiscation or destruction, without any compensation, of materials and objects (accessories, tools) that are mainly used in the creation of products that violate the right.

Compensation for both material and non-material damages can be requested with a lawsuit. When determining the amount of compensation for damages, the court will take into account all the circumstances of the specific case, such as the negative economic consequences suffered by the injured party, including the lost profit and the profit that the injured party made due to the violation of rights. What is also important is the time limit in which a claim for violation of rights can be filed – this is a time limit of three years from the date of knowledge of the violation and the perpetrator, but not after the expiration of the five-year period from the day of the violation or from the date of the last violation when the injury is done continuously.

In addition to the above, the law prescribes the possibility of submitting:

1. Lawsuits for determining the right to protection of a certain invention, submitted by the inventor, his legal successor or employer;
2. Lawsuits for the protection of the employer or the employee, which is submitted by the employer or the employee, who by law has the right to protection or economic exploitation of the invention from the employment relationship;
3. Lawsuits to determine the inventor’s status, which is submitted by the inventor if another person is named as the inventor in the patent or small patent application.

FAQ about patent protection and registration in Serbia

Procedure of patent protection in Serbia is not a complicated process, but, however, there are few frequently asked questions when it comes to this topic:

Conclusion on patent protection and registration in Serbia

A patent is a right that is recognized for an invention from any technical field, under the aforementioned conditions, and the registration of a patent is the protection of such a right.

Protection of the patent is important because it gives the holder of a patent or small patent certain exclusive rights, that is, the exclusive right to use the protected invention in production, to market products made according to such an invention, and to dispose of the patent or small patent. Our experienced team from the NCR lawyers can help you and provide legal support during the process of protecting your rights, procedure of opening a firm in Serbia and many more legal issues.

This article is for informational purposes only and does not constitute legal advice. If you need additional information regarding the topic in question, please feel free to contact us by email at office@ncrlawyers.com or by phone at +381677049551.