REGULATION ON THE EXTENSION OF EUROPEAN PATENTS TO
SLOVENIA UNDER THE AGREEMENT IMPLEMENTING ARTICLE 3(3)
OF THE COOPERATION AGREEMENT BETWEEN THE
GOVERNMENT OF THE REPUBLIC OF SLOVENIA AND THE
EUROPEAN PATENT ORGANISATION 1
Article 1
Extension of the effects of European patents
A European patent application and a European patent extending to Slovenia
shall, subject to the provisions of this Regulation, have the effect of and be subject
to the same conditions as a national patent application and a national patent under
the Law on Industrial Property (IPL).
For the purposes of this Regulation,
(a) "European patent application" means an application for a European patent
filed under the European Patent Convention (EPC), as well as an international
application filed under the Patent Cooperation Treaty for which the European
Patent Office (EPO) acts as designated or elected Office and in which Slovenia is
designated;
(b) "extended European patent" means a European patent granted by the EPO
on a European patent application in respect of which extension to Slovenia has
been requested;
(c) "national patent application" means a patent application filed under the
IPL with the Office for the Protection of Industrial Property ("the Office");
(d) "national patent" means a patent granted on a national patent application.
Article 2
Request for extension
A European patent application and a European patent granted on such
application shall be extended to Slovenia at the request of the applicant. The
request for extension shall be deemed to be filed with any European patent
application filed on or after 1 March 1994.
Any request for extension shall be published by the Office as soon as possible
after it has been transmitted by the EPO but not before the expiry of 18 months
from the filing date or, if priority has been claimed, the earliest priority date.
The request for extension may be withdrawn at any time. It shall be deemed
withdrawn where the prescribed extension fee has not been paid in time or where
the European patent application has been finally refused, withdrawn or deemed
withdrawn. The Office shall publish this as soon as possible if the request for
extension has already been published.
1 Published in the Official Gazette RS No. 6/1994 on February 11, 1994, and entered into force on February 12,
1994.
Article 3
Extension fee
The extension fee under Article 2(2) shall be DEM 200. It is due to be paid to
the EPO within the applicable time-limit provided under the EPC for the payment
of the designation fee.
The extension fee may still be validly paid within the period of grace of two
months, as it is specified in Rule 85a(2) EPC, provided that a surcharge of 50% is
paid within this period.
For the payment of extension fees the EPO Rules relating to Fees shall apply
mutatis mutandis. Extension fees validly paid shall not be refunded.
Article 4
Effects of European patent applications
A European patent application which has been accorded a filing date shall be
equivalent to a regular national application, where appropriate with the priority
claimed for the European patent application, whatever its outcome may be.
A published European patent application shall provisionally confer the
protection conferred by Articles 93 and 94 IPL as from the date on which a
translation of the claims of the published European patent application into the
Slovenian language has been communicated by the applicant to the person using
the invention in Slovenia.
The European patent application shall be deemed not to have had ab initio the
effects referred to in paragraph (2) where the request for extension has been
withdrawn or is deemed withdrawn.
Article 5
Effects of European patents
An extended European patent shall, subject to paragraphs (2) to (6), confer
from the date of publication of the mention of its grant by the EPO the same rights
as would be conferred by a national patent under Article 32 IPL.
Within three months from the date on which the mention of the grant of the
European patent has been published, the owner of the patent shall furnish to the
Office a translation of the claims of the European patent into the Slovenian
language and shall pay the prescribed fee for publication.
If, as a result of an opposition filed with the EPO, the European patent is
maintained with amended claims, the owner of the patent shall, within three
months from the date on which the decision to maintain the European patent as
amended was published, furnish to the Office a translation of the amended claims
into the Slovenian language and pay the prescribed fee for publication.
The Office shall publish any translation duly filed under paragraph (2) or (3).
If the translation specified in paragraph (2) or (3) is not filed in due time or
the prescribed fee is not paid in due time, the extended European patent shall be
deemed to be void ab initio.
An extended European patent and the European patent application on which it
is based shall be deemed not to have had ab initio the effects specified in paragraph
(1) and Article 4(2) to the extent that the patent has been revoked in opposition
proceedings before the EPO.
Article 6
Authentic text of European patent applications or European patents
The text of a European patent application or a European patent in the
language of the proceedings before the EPO shall be the authentic text in any
proceedings in Slovenia.
However, the translation as provided for under Articles 4 and 5 shall be
regarded as authentic, except in revocation proceedings, where the application or
patent in the language of the translation confers protection which is narrower than
that conferred by it in the language of the proceedings.
The applicant or owner of the patent may file a corrected translation of the
claims of the European patent application or European patent. The corrected
translation shall not have any legal effects until it has been published by the Office.
Any person who, in good faith, uses or has made effective and serious preparations
for using an invention, the use of which would not constitute infringement of the
application or patent in the original translation may, after the corrected translation
takes effect, continue such use in the course of his business or for the needs thereof
without payment.
Article 7
Rights of earlier date
A European patent application for which the extension fee has been paid and
an extended European patent shall have with regard to a national patent application
and a national patent the same prior art effect as a national patent application and a
national patent under Article 9 No. 2 IPL.
A national patent application and a national patent shall have with regard to
an extended European patent the same prior art effect as they have with regard to a
national patent under Article 9 No. 2 IPL.
Article 8
Simultaneous protection
Where an extended European patent and a national patent having the same
filing date or, where priority has been claimed, the same priority date have been
granted to the same person or his successor in title, the national patent shall have
no effect to the extent that it covers the same invention as the extended European
patent as from the date on which the time limit for filing an opposition to the
European patent has expired without an opposition having been filed or as from the
date on which the opposition procedure has resulted in a final decision maintaining
the European patent.
Article 9
Renewal fees for extended European patents
Renewal fees for an extended European patent shall be paid to the Office for
the years following the year in which the mention of the grant of the European
patent was published by the EPO.
Article 10
Applicability of the EPC
The provisions of the EPC and its Implementing Regulations shall not apply
unless otherwise provided in this Regulation.
Article 11
Entry into force
This Regulation shall enter into force on the day following its publication in
the Official Gazette of the Republic of Slovenia.