Inventions can be protected by a patent or a petty patent.
A patent or a petty patent protects an invention which is new, involves an inventive step and is susceptible of industrial application.
Legal protection obtained by a patent/petty patent means that the invention may not be commercially produced, used, placed on the market or sold without the consent of its owner. So, the owner of a patent/petty patent is entitled to decide as to who may or may not use his invention during the period under the protection. A right holder may give a license to other persons to use his invention under conditions that are subject to mutual agreement. A right holder may also transfer his right to a third person that becomes its new holder. After the expiry of the period of protection or maintenance, the protection shall cease to exist and the invention becomes a public good. That means that the patent owner has no longer an exclusive right to a patent which then becomes free for commercial use.
The difference between a patent and a petty patent lies in the following:
- the subject matter of the protection: the subject matter of an invention protected by a patent may be a product, a process, use of a product and use of a process. The subject matter of an invention protected by a petty patent can only be a solution relating to the structure of a product or the layout of its components.
- the duration period: the term of patent shall be 20 years from the filing date of the application, while the term of petty patent shall be 10 years from the filing date of the application.
- the grant procedure: a petty patent application will not be published, a search report will not be drawn up and the subject matter of the invention claimed in the application shall not be examined as to novelty, inventive step or susceptibility to industrial application (see answer to question no.9).
However, as far as the rights are concerned, both a patent and a petty patent are identical and secure identical rights to their owner.
A patent earns its owner a social recognition for his creative work as well as remuneration for his invention that can be placed on the market.
At the same time, it encourages inventiveness which improves development of science and technology and the quality of human life.
Patented inventions affect every aspect of men’s life, ranging from electrical power transmission and remote control (Tesla’s patents), electric light (Edison’s and Swan’s patents), plastic (Baekeland’s patents) to ballpoint pens (Biro’s patents) and microprocessors (Intels’ patents).
The applicant is obliged to describe his invention thoroughly and clearly, so that a person skilled in the appropriate art can apply it. Thereby, patents are not just offering protection to their owner, but also constitute a source of valuable technical information and the inspiration for future generations of researchers and inventors.
A patent/petty patent application is filed in writing, triplicate, in Serbian language and is handed over at the reception desk of the Office or by mail. The applicant will get a filing receipt indicating the serial number and date of the reception of his application.
The application can also be filed in the foreign language, provided that the applicant files its translation in the Serbian language. The applicant may submit the translation not later than within 2 months from the date of receipt of an invitation.
The fees for filing an application are laid down by the Tariffs of the Republic Administrative Fees, which is an integral part of the Law on Republic Administrative Fees.
If an application for patent/petty patent is filed by a natural person, the fee specified in appropriate tariff number is paid in the amount reduced by 50%.
The fees are paid in a bank, or a post office and the payment slip is enclosed with the application.
A patent/petty patent application must contain:
1. a request for the grant of right (form P-1/MP1),
2. a description of the invention (the technical field to which the invention relates, the defined problem for which solution is required the protection, state of the art which as far as known to the applicant, can be regarded as useful to understand the invention, expostulation of the essence of the invention, short description of the drawings, if any and detailed describe at least one way of carrying out the invention, using examples where appropriate and referring to the drawings, if any),
3. one or more patent claims,
4.a drawing referred to in the description and/or claims and
5. an abstract.
When drawing up an application please study carefully “The Instructions for the filing of a patent application” which can be obtained from the web site of the Office or at the reception desk of the Office.
After the applicant files an application for a patent or petty patent, officials employed in clerk’s office of the Intellectual Property Office shall receive the application and assign it P/MP number and date of receipt, and then make a data entry in the Register of patents/petty patent applications. After that, the application with the assigned P/MP number, shall be delivered to the Patent Department, in which the formal requirements of the application are first examinated. That means that the Office examines wether the application meets the requirements for the publication of the application stipulated in the provisions of Article 99 of the Patent Law. If the formal examination shows that the application does not comply with the provision in mentioned paragraph, the Office shall set out the reasons thereof in a communication to the applicant, inviting him to correct the deficiencies in a specified time period. If the applicant fails to remedy the defects in application, the Office shall render a conclusion rejecting the application. If the formal requirements are met or if the applicant remedies defects in application the procedure for the grant of a patent/petty patent continues.
From the next phase, the procedures for patent applications and petty patent applications are significantly different.
Acting in the procedure on the petty patent application Office further examines whether the conditions prescribed by Article 163 Paragraph 2-6 and Article 104 Paragraph 1, items 1, 2 and 4 of the Patent Law are fulfilled. If the Office determines that the application for any of the prescribed reasons is not eligible for petty patent protection, it will notify reasons to the applicant and leave him a reasonable time for the response. If the applicant fails to respond to the Office, and has not requested an extension of time limit for response or if he files the answers, but the Office nevertheless stands on its earlier opinion the Office shall render a conclusion rejecting the petty patent application.
On the other hand, the grant procedure for patent application which meets formal requirements continues with sending invitation to the applicant to file the request for the search report based on the subject of the invention (hereafter: search report) and to pay the fee for that. Only after filing of the request for search report and a proof that the fee for search report is payed (original receipt or original bank certificate on the transfer of funds) the Office shall send it to the applicant. The search report will be published by the Office together with the patent application not earlier than 18 months from the date of filing. If request for search report is not filed or the fee is not payed the Office shall render a conclusion rejecting the application. In the stage of substantive examination, the patent application enters only at the request of the applicant, which shall be submitted to the Office not later than 6 months from the date of receipt of the search report. If the Office determines that the application does not meet the requirements for patent protection, for any of the grounds prescribed in Article 104 Paragraph 1 of the Patent Law, it shall inform the applicant of the reasons and invite him as many times as it is necessary to correct the deficiencies, leaving him a reasonable time limit for response. If the applicant fails to respond to the Office, or if he answers, but the Office nevertheless stands by its earlier opinion, the application will be refused.
The next part of the grant procedure is common for patent and petty patent application:
If, after the examination procedure of the patent/petty patent application Office determines that it meets all legal requirements, the Office shall invite the applicant to pay a prescribed fee for certificate for the granted right, the costs of publishing data on the right granted and the cost of patent specification and to submit the proof of payment (original receipt or original bank certificate on the transfer of funds). If the applicant fails to comply with invitation of the Office regarding the payment of these fees and costs within the set time limit the Office shall render conclusion rejecting the application of patent / petty patent.
The decisions of the Intellectual Property Office may be appealed with the Government within 15 days from the receipt of the decision, unless Law on Patents provides otherwise. Government decision on the appeal is final and administrative dispute proceedings may be instituted against such decision within 30 days from the date of receipt of the Government’s decision.
In order to be protected by a patent, an invention has to:
involve an inventive step and
be industrial applicable on the day of filing an application for the protection of an invention, that is, on the priority date granted.
An invention is new if it does not form part of the state of the art. An invention is deemed to be part of the state of the art if it was made available to the public by means of written or oral description, by use or in any other way, prior to the date of the filing of an application for a protection of an invention. The state of the art includes the content of all published applications in the Republic of Serbia as filed before the filing date of a patent application by means of oral or written description, by use or in any other way.
An invention is considered to involve an inventive step if the solution to a technical problem, having regard to the state of the art, is not obvious to a person skilled in the art.
An invention is industrial applicable if the subject matter of an invention can be produced or utilized in any kind of industry including agriculture.
In addition to these requirements, an invention has to be “patentable” for the purpose of the law. In many countries, including Serbia, discoveries, scientific theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, computer programmes as such and presentations of information are not regarded as inventions.
Similarly, an invention cannot be protected through a patent whose publishing or application is contrary to morality or the law; an invention concerning surgical or diagnostic method or therapy practiced directly on the human or animal body (except products or substances or compositions used in that method); a plant or animal variety or an essential biological process for the production of new plant or animal, except from a microbiological process or a product obtained by means of such process.
Search report based on the subject of the invention is search report of national and international databases comprising state of the art which Intellectual Property Office submit to the applicant after filing a request for the Search report and payment of appropriate fees. This allows the applicant before paying fee for substantive examination of patent application to consider chances of obtaining a patent. Also, on this report will depend applicants decision to file patent application abroad, and a decision on a possible correction of the patent claims in order to increase chances of obtaining a patent.
You can check if your invention has already been protected and find information about the inventions belonging to the same field as yours at the Documentation Department of the Office, free of charge and with all the necessary assistance from the Office’s employees. You can also get the required information by submitting a written request for search in the national or an international patent database according to the subject matter of the invention. The amount of fee payable for such a request is prescribed by the Tariff of fees of proceedings costs and costs for the provision of information services of the Intellectual Property Office.
It takes a few months for a petty patent to be granted because the application is examined only in terms of meeting formal requirements.
The application procedure for the grant of a patent takes much longer, about several years, because of a substantive examination proceeding.
However, from the date of publication of his application, an applicant acquires the rights conferred by the application that are similar to those of a patent, and in the case that a patent is not granted, the rights arising from the application shall be deemed never to have existed.
Procedure of granting a patent can be accelerated only in 2 cases:
1) Urgent procedure
An application may be examined in an urgent procedure in the event of judicial proceedings upon the request of the court or in the event of litigation for infringement of a published application upon the request of applicant. Also, an application may be examined in an urgent procedure in the event of inspection surveillance or customs procedures have been initiated upon the request of the competent market inspection authority or the customs authority.
2) Premature publication of a patent application
If a patent application meets requirements layed down in Paragraph 1 of the Article 99 of the Patent Law, at the request of the applicant with submitted proof of payment, the Office shall publish patent application before the expiry of 18 month period but not before the expiry of 3 month from the filing date.
Yes, it is. The Office will revoke the decision granting a patent or a petty patent at any time, at the request of any person, if it establishes that:
the subject matter of protection is not an invention, for the purpose of the law,
that the invention falls under the category of inventions excluded from protection,
that the invention was not new on the date of the filing of the patent application or on the date of priority or did not involve an inventive step or was not industrially applicable,
that the invention is not described fully and clearly so that it can be carried out by a person skilled in the art,
the scope of rights granted exceeds the scope that could be supported by the description of the invention on the filing date or on the priority date of the application, or if protection was granted on a divisional application, the subject matter of which extends beyond the basic application as filed.
The decision of the Intellectual Property Office may be appealed with the Government within 15 days from the receipt of the decision, unless Patent Law provides otherwise, and administrative dispute proceedings may be instituted against Governments decision on the appeal within 30 days from the receipt of such decision.
The conclusion of the Office pursuant to the provisions of of Patent Law may not be appealed, unless Patent Law provides otherwise.
No, it does not. District courts and commercial courts, if the dispute involves legal persons, are deciding cases concerning infringement of rights.
However, the Patent Law contains provisions on legal means – civil proceedings that patent owners can institute in case of the infringement of their rights;
1) Infringement action
A patent/petty patent infringement constitutes any commercial exploitation of a protected invention without the authority of the right holder, that is, any offering, delivery or placing on the market of the protected subject matter, thereby allowing for another person’s unauthorized commercial exploitation of that invention. Applicant, the owner of a patent/petty patent or the holder of an exclusive license are entitled to institute civil proceedings, which can be done within three years from the date of learning about the infringement and the infringer, but not later than five years from the date on which the infringement occurred.
2) Action for the Establishment of the Right to Protection
The inventor, his successor in title or employer shall be entitled to require through a civil action before the court the establishment of his right to the protection of a given invention, or the establishment that he is the right holder, instead of or, together with the person who has already filed an application for that invention. This Action may be brought before the right has been granted, or prior to the expiry of the right if the decision to grant a patent has already been taken by the competent authority.
3) Action for the Protection of Employer's or Employee's rights
An employer and/or an employee entitled to the protection or commercial use of an invention made in the course of his employment may institute court proceedings for the establishment and protection of his rights. Legal proceedings for the establishment of employee/employer’s rights may be instituted within two years from the date of the publication of the patent application, but not after the expiry of two years from the date of termination of employment during which the invention was made.
4) Action for Recognition of the Status of Inventor
If the patent/petty patent application or any other document provided by the law, has designated any other person as an inventor, the inventor is entitled to institute civil proceedings requesting the court to establish his status as inventor or to order the entry of his name in the patent documents and registers kept by the Office. There is no time limit for the institution of proceedings.
For granted petty patent initiation of mentioned actions is possible only if granted petty patent has a certificate of examination. That means theat granted petty patent fulfills the substantive examination requirements in accordance with Paragraph 1 of Article 104 of the Patent Law. Office shall examine granted petty patent at the request of the petty patent holder and shall issue the certificate of examination if mentioned requirements are fulfilled. Otherwise the Office shall ex officio revoke the petty patent. It shall be deemed that the request for the examination of the granted petty patent is filed only when the fees for the substantive examination and search report are paid and the proofs of payments are submitted.
1) Provisional Measures
On a request of the person who proves reasonable probability that his right arising from the published application or granted right is or shall be infringed, the court may, pending a final decision, pronounce the provisional measure. A request for the grant of a provisional measure may be filed before the infringement action, provided that the infringement action is brought within thirty days from the court decision of the provisional measure.
2) Preservation of Evidence
Upon the request of the person, who proves reasonable probability that his right arising from the published application or granted right is being infringed or shall be infringed the court may undertake to preserve evidence (the inspection of premises, records, documents, databases, as well as the seizure of assets and the questioning of witnesses and experts).
3) Precautionary Measures
At the request of the person against whom the infringement action has been brought or proceeding for provisional measures has been instituted, the court may order appropriate cash deposit amount to ensure compensation in the case of ungrounded request to pronounce provisional measures, to be borne by the plaintiff or the person who has requested the provisional measures.
Yes, it can. If, for any reason, your patent granting decision or a patent/petty patent certificate is missing, the Office will issue, at your request, a copy of the requested document indicating that these are actually copies.
The right to file an application, rights conferred by an application, a patent and a petty patent may be transferred in whole or in part by means of an assignment contract or by inheritance.
At the request of the one of the contracting parties, the transferre of right will be entered in the register kept by the Office, if the original contract (or a certified copy) or the inheritance decision is enclosed with the request. If the transfer of rights has not been registered it will have no legal effect with respect to third parties.
A license agreement is defined in Articles 686-711 of the Law on Contracts and Torts. This agreement obliges a licensor to grant the licensee , in whole or in part, the right to exploit an invention and technical know-how, while a licensee is obliged to pay the licensor certain remuneration fee. A license agreement must be concluded in writing. A license for exploiting a patented invention cannot be issued for a period longer than the term of legal duration of these rights.
At the request of a licensor or licensee, the license agreement is entered in the appropriate register kept by the Office while the agreement not entered in the register produces no legal effect with respect to third parties.
Yes. The patent, petty patent or right arising from the application may be the subject of a pledge on the basis of a pledge contract, court decision and decision by other state authority. The pledgee shall acquire possessory lien upon entry into the appropriate register of the competent authority, upon the request of the right holder, applicant or pledgee.
Domestic natural and legal person doesn't have to, but it is considered extremely useful to prepare and file an application with the help of a patent agent or attorney who is professionally representing persons in this field.
However, foreign natural or legal person may individually, without representative file an application and perform other actions for the purposes of the accordance of the filing date of application, also receive notification by the competent authority in connection with the mention, or pay fees and procedural costs, but just in case that he appointed a representative for correspondence who has address in the territory of the Republic of Serbia.
You can get it at the Receiving Office or via our link Registered IP Agents.
No, it cannot. It is up to you to select your agent. The Office, will, at your request, submit a list of agents authorized to represent you in an administrative procedure before the Office, pointing out that all local attorneys-at-law also have the right to represent you before the Office.
No. You and the agent/ attorney whom you choose to represent you have a contractual relation. It would be useful for you to inquired around about their fees before hiring any of them and taking any actions (for example, drawing up of an application, paying annual fees, filing requests for substantive examination etc.).
No, it does not. A patent/petty patent is a territorial right and the patent/petty patent granted by our Office has an effect in the territory of our country only.
The protection of the invention outside the territory of the Republic of Serbia can be accomplished in three ways:
1) Via National system
National System means directly filing an application of an invention in the country of wich territory the applicant wants to accomplished a patent protection, in the case that elected country is the contracting states of one
2) Via PCT system
The system of filing the international application, the so-called PCT system is prescribed by the Law on Ratification of the Patent Cooperation Treaty, with the Regulations for the implementation of the Patent Cooperation Treaty (PCT) ("Off. . Gazette FRY, International Agreements," no. 3 / 96) which was implemented in the Patent Law ("Off. Gazette of RS" no. 99/11).
This system allows the applicant by filing only one international application, to request protection in more countries Parties of the PCT contracts (total of 144 countries) in which the applicant intends to protect his invention.
The applicant may file an international application in English to the Intellectual Property Office or directly to the World Intellectual Property Organization (WIPO).
For more information about this type of protection of the invention please refer to the "Instructions for filing an international patent application" that can be obtained free of charge at the reception desk of the Office or downloaded from the website of the Office.
3) Via the European patent application system
The European Grant procedure, so-called. European application system, is regulated by the Law on Ratification of the Convention for the Grant of European Patents (European Patent Convention) ("Off. Gazette - International Treaties" no. 5 / 10) which was implemented in the Law on Patents ("Off. Gazette" no. 99/11).
The applicant may, by filing a European application to the Intellectual Property Office or directly to the European Patent Office, require protection in more member states of the European Patent Organization (total 38 countries), based on which the European Patent Office conducts a single procedure for the grant of a patent.
The European application shall be submitted in English, French or German.
For more information about this type of protection of the invention please refer to the guide "How to get a European patent" that can be obtained free of charge at the reception desk of the Office or downloaded from the website of the Intellectual Property Office.