On December 21st 2013 the Act amending the Industrial Property Act (ZIL-1D) came into force, amending the option to continue the processing to obtain intellectual property rights after the non-observance of a deadline.
Prior to adoption of ZIL-1D, the applicant, who missed to make a timely performance in the course of obtaining intellectual property rights, could within two months after he was made aware of the non-observance of a deadline and of the legal implications thereof, request from Office of the Slovenian Intellectual Property (hereinafter referred to as SIPO) to continue the proceeding of obtaining of rights (eg. the registration of a patent). SIPO continued the proceeding, if the applicant, together with a request for continuation of the proceedings also performed the missed act and paid the fee for continuation of the proceedings. Thus, the applicant successfully acquired the intellectual property right, despite the non-observance of a deadline, and regardless of the cause for the non-observance of a deadline or the degree of diligence. Since the timeframe, when the applicant could request the continuation of the proceeding for obtaining rights, was not based on the objective criteria, the applicants could request the continuation of the proceedings even after many years of delay. Such legislation, in practice, lead to considerable legal uncertainty, particularly for companies in Slovenia, who wanted to use or did use creations, which were not protected in Slovenia (e.g. by a patent).
The above-mentioned request for continuation of the proceeding of the acquisition of rights was in practice often used in the procedure of registration of European patents into the Register of Slovenian patents. In that procedure the applicant for a European patent must submit to SIPO, within three months of publication of the decision on granting of a European patent, the translation of the claims of the European patent and pay the appropriate fee (Article 27 of the Industrial Property Act-1). Non-observance of this deadline takes effect ab inito and consequently has the same effect as if the applicant has not request the extension of its validity to the territory of Slovenia (annulment of a European patent in the territory of Slovenia).
The new rules introduce different subjective criteria and new objectively based criteria for the run of a deadline for filing a request for a continuation of the proceeding. The deadline, when the applicant is entitled to request the continuation of the proceeding, will now start to run from the date of removal of the obstacles that cause the delay. In case where the applicant learned of the delay after the removal of obstacles, the deadline shall start to run on the date on which the applicant indeed learned of the non-observance of a deadline. No matter when the cause for the non-observance of the deadline ceased, or when the applicant learned of the delay, the applicant will be able to request the continuing of the proceedings only within 6 months after the occurrence of the delay (objective deadline). Thus, the period of legal uncertainty concerning the validity of intellectual property rights (e.g. European patent) in Slovenia is shortened to the relatively short period. In event of obtaining of a European patent in the terror of Slovenia this period is now to 9 months, (including 6-month from the occurrence of the delay and additional 3-month for the submission of translations of patent claims). In particular, companies, which want to exploit an unprotected invention or other unprotected creations in Slovenia, will also be able to rely more on the correctness of the information in the intellectual property right registers.
