Patent is a territorial right and it represents legal protection for the invention only in the countries in which it is formally registered and during that time for which maintenance fees are paid. If the patent is not registered or not valid in a certain country, every person can freely use it on that territory. When it concerns international protection, the decision in which countries procedure should be initiated should be passed having in mind the expenses of protection, business activities on those territories and the defined business goals.
International protection of patents
If the patent application is filed abroad, in the course of 12 months from the date of filing of the national RS (the first) application, for the same invention, one can ask for priority right for every later application filed abroad. This is important because when two patent applications, requesting protection for the same invention, have different filing dates, the precedence goes to the application with the earlier priority date.
When you pass decision about the protection of inventions abroad, you should decide about the way to initiate protection. Today several different systems can be used for international patent protection. They are:
- National system – implies direct filing of the patent application in the country on which territory you wish to have patent protection, under the condition that the chosen state is the signatory of some of the valid international agreements regulating patent protection.
- System of filing the International application – PCT system – prescribed by the Law on the Ratification of the Patent Cooperation Treaty, with the Regulations for the implementation of the PCT (Patent Cooperation Treaty – PCT) (Official Gazette FRY – International Treaties, no. 3/96). PCT system represents the system of filing the patent application, and not the system of patent grant. Only the national offices or regional patent organizations can grant patent. This system enables the applicant to request protection by filing only one international application, in several member states of the PCT Treaty (totally 153 countries) in which the applicant has the intention to protect his invention. The applicant can file the international application in the English language at the Intellectual Property Office or directly at the World Intellectual Property Organization (WIPO). More information about this kind of application can be found at the “Instruction for the Filing of the International Patent Application”.INFORMATIONS REGARDING ENTERING THE NATIONAL PHASE OF PROCEEDING FOR GRANTING A PATENT, INITIATED BY A PCT APPLICATION
- System of the European patent application – prescribed by the Law on the Ratification of the Convention for the Grant of European Patents (European Patent Convention) (Official Gazette RS – International Agreements” no. 5/10).
By initiating proceedings before the European Patent Office (EPO), by filing one European patent application, the applicant can obtain protection in several member states of the European Patent Organization (EPO) (38 countries). The European application can be filed in English, French or German language directly in the European Patent Office or in the Intellectual Property Office that will transfer the application to the EPO. After the examination of the patent application, if the conditions are fulfilled, the EPO shall grant European Patent. However, European Patent shall be valid only in those member states of the EPO chosen by the patent holder, by filing request for the entry of patent in their national register of patents. More information about this kind of protection of the invention can be found in the instruction How to get the European Patent.INFORMATIONS REGARDING VALIDATION PROCEDURE OF EUROPEAN PATENT IN THE REPUBLIC OF SERBIA
Unitary patent – Since June 1, 2023, the implementation of the system of Unitary patent started – implying European patent with unitary effect in up to 25 member states of the European Union which acceded to the system of Unitary patent. The system of Unitary patent brings important benefits for the holder of European patent, such as reduction of expenses of protection, higher degree of transparency and legal safety. By filing one application for the Unitary effect of the European patent in the term of one month from the date of publication of data on the grant of European patent in the European Patent Bulletin, it is possible to realize the legal effect in all the member states of the Unitary system, instead of the individual validations in those countries. For the annual maintenance of validity of the European patent with Unitary effect in those countries, one fee is paid which is significantly lower in comparison to the sum of the individual fees for the annual maintenance of validity in the member states of the Unitary system. In the case of dispute in those countries, procedure would be conducted before the Unified Patent Court. More about the “Unitary patent “ can be found in the publication Unitary Patent Guide, as well as in other publications concerning the Unitary patent in the section Electronic publications. Information on the site of the European Patent Office can be seen at the following link.