New Patent Act

(Act No. 435/2001 Coll. on Patents, Additional Protective Certificates, and amending and supplementing certain acts (the Patent Act))

The purpose of this Act (the "Patent Act") is to provide such legal environment, which would guarantee the level of protection of industrial property rights comparable to the legislation of the European Union in accordance with an obligation of the Slovak Republic resulting from the Association Agreement between the Slovak Republic and the European Union.

The new legal regulation also reflects obligations arising from the membership of the Slovak Republic in the World Trade Organisation by implementation of the TRIPS agreement and also the new Patent Law Treaty adopted at the diplomatic conference held at the World Intellectual Property Organisation in Geneva in May 2000.

The Patent newly regulates legal relationships arising in connection with establishment, legal protection and application of a patent, which is the subject of a patent application, patent or an additional protective certificate.

The Patent Act defines terms such as biological material, microbiological method, reproduction, European patent application, European patent, International application and commercial utilisation of a patent.

Patents for inventions which meet conditions stipulated by this Act are granted by the Intellectual Property Office of the Slovak Republic (the "Office").

he Patent Act contains detailed provisions on the issue of patents for inventions, according to which patents are granted for inventions from all fields, mainly technical field, which are new, include inventive step and may be industrially utilised. Further, patents are granted also for certain bio-technical inventions, which are exactly specified in the Patent Act. In particular discoveries, scientific theories and mathematical methods, aesthetical works, plans, rules and manners of performance of intellectual activity, games or business activity, computer programs and provision of information are not regarded as inventions. The Patent Act further specifies exclusions from the issue of patents, newly defines the terms 'novelty', 'inventive step' and 'industrial utilisation'.

The author of an invention is a person who has created the invention by his/her own creative activity. The author of an invention has the right to solution, including the right to file an invention application.

Further, the Patent Act regulates the right of co-authors to solution, as well as the right of an employer to solution, if the author has created the invention within the fulfilment of tasks arising from labour or similar relationships or membership relationships.

The Patent Act also regulates legal relationships arising at utilisation of patents, limitation of effects of patents, transfer of patents, pledge over patents, licence agreements, cases of compulsory licence, waiver of patents, as well as cessation of patents.

The owner of a patent is a legal entity or an individual registered as the owner in the Patent Register of the Office (the "Register"). Under the sanction of invalidity, the Patent Act stipulates that an agreement on transfer of a patent must be executed in writing.  The patent transfer is legal by effective towards third parties (except for third parties, which knew or should know about the patent transfer) as of the date of its registration in the Register. A licence agreement becomes effective towards third parties only after its registration in the Register.

Pursuant to provisions of the Patent Act, it is possible to establish a pledge over a patent, whereas provisions of the Civil Code (Act No. 40/1964 Coll., as amended) will be adequately used for the pledge and relationships between the pledgor and the pledgee. An agreement on establishment of pledge must be executed in writing, otherwise it is invalid. The pledge is effectively established as of the date of its registration in the Register.

An owner of a patent may waive the patent by a written notification to the Office, however a partial waiver of the patent is not permitted. In case that a co-author waives his/her co-authorship interest, the Patent Act stipulates that his/her interest is transferred to other co-authors in the ratio corresponding to their co-authorship interests.

In the Patent Act, the patent life is fixed at 20 years as of the date of filing an application for patent.

The Patent Act also contains detailed provisions related to proceedings before the Office, as well as provisions on an international application filed on the basis of the Agreement on Patent Co-operation.

In its fourth part, the Patent Act contains provisions related to the execution of the European Patent Treaty, in particular: effects, amendment and wording of the European patent application, as well as effects, cancellation or retention of the European patent (i.e. the patent granted by the European Patent Office with effects for the Slovak Republic), filing a European patent application and charges for the European patent.

In its fifth part, the Patent Act regulates a process of granting of additional protective certificates for medicaments and products for plant protection.

An additional protective certificate is an instrument of legal protection, which follows the granted patent protection after the expiration of patent protection period stipulated by law.

In this connection the Patent Act defines the term 'basic patent' in relation to medicaments as the patent for a medicament or a mixture of medicaments, manner of acquisition and usage of the medicament. At the same time, the Patent Act defines the term 'basic patent' in connection with products for plant protection as the patent for a product for plant protection as such, a preparation designed for usage of a product for plant protection and production method for the acquisition of a product for plant protection.

One of the conditions for granting the additional protective certificate is that a medicament or a product for plant protection is protected by the basic patent in the territory of the Slovak Republic.

The subject of protection of medicaments or products for plant protection on the basis of the additional protective certificate for medicaments or the additional protective certificate for products for plant protection are: (1) medicaments or products for plant protection to which registration of a medicament or registration of a preparation for plant protection is related, (2) usage of this medicament or product permitted before the expiration of certificate. The owner of certificate has the same rights and duties and is subject to the same limitations as the owner of a basic patent. This additional certificate is valid during the period equal to the time period starting by the date of filing an application for the basic patent and ending by the date of first registration of a medicament or a preparation for plant protection and this period is shortened by five years, however the maximum period is five years from the effective date of the certificate. The certificate becomes effective from the day following the expiration of the basic patent stipulated by law.

The full first part of the Act No. 527/1990 Coll. (the original Patent Act) and the third and fifth part in the extent in which they regulate legal relationships and proceedings related to inventions, patents and authorship certificates have been cancelled by this Act. At the same time, the first part of the Order of the Federal Office for Inventions No. 550/1990 Coll. on invention and industrial design proceedings is cancelled as well.

In connection with the adoption of the new Patent Act there have been also slight amendments to the Act No. 132/1989 Coll. on protection of rights to new varieties of plants and breeds of animals, as amended, and the Act No. 478/1992 Coll. on utility models, as amended.

This Act is in force from 1 November 2001, apart from the fourth and fifth parts which will become effective from 1 July 2002.

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