THE PATENT LAW
(“Official Gazette RS” No. 99/2011, 113/2017 – other laws, 95/2018, 66/2019)
Unofficial consolidated version
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I INTRODUCTORY PROVISIONS
1. Subject Matter of Regulation and Definitions
Subject Matter of Regulation
Article 1
This Law shall regulate the legal protection of inventions.
The invention shall be protected by patent or petty patent.
Definitions
Article 2
For the purposes of this Law certain terms have the following meanings:
1) applicant means the person whom the records of the competent authority show, as the
person who is applying for the patent or petty patent pursuant to the applicable law;
2) application means an application for a protection of an invention, and any reference to
an application shall be considered as referring to the patent application, petty patent application,
the application for the patent of addition or divisional application;
3) competent authority means the administrative authority of the Republic of Serbia
which is competent for intellectual property rights;
4) person means a natural and/or legal person;
5) representative means an authorized person who can take actions in proceedings before
the competent authority;
6) Register means the collection of data kept and maintained by the competent authority,
relating to the applications filed with competent authority, granted patents with certificates of
supplementary protection, granted petty patents and representatives of foreign natural and legal
person having no seat or residence on the territory of the Republic of Serbia;
7) entry into Register means any act of including data into the Register of the competent
authority;
8) right holder means the person whom the Register of the competent authority shows as
the owner of the patent, petty patent, patent of addition and certificate of supplementary
protection;
9) the procedure before the competent authority means any action in proceedings before
the competent authority with respect to the application, request for Supplementary Protection
Certificate, patent, petty patent, Supplementary Protection Certificate or request for entry of the
European patent into the Register of Patents;
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10) international application means the application filed in compliance with the Patent
Cooperation Treaty;
11) designated office means the national Office of the State designated by the applicant
under Chapter I of the Patent Cooperation Treaty;
12) elected office means the national Office of the State which is elected by the applicant
under Chapter II of the Patent Cooperation Treaty;
13) receiving office means the national office or regional organization where the
international application is filed;
14) European Patent Convention means the Convention on the Grant of European Patents
signed in Munich on 5 October 1973, as amended by the act revising Article 63 on 17 December
1991 and by the Revision Act adopted in Munich on 29 November 2000;
15) European patent application is an application for a European patent filed under the
European Patent Convention, as well as an international application filed under the Patent
Cooperation Treaty, for which the European Patent Office acts as a designed or elected office
and in which the Republic of Serbia is designated;
16) European patent is the patent granted by the European Patent Office in compliance
with the European Patent Convention and based on the European patent application in which the
Republic of Serbia is designated;
17) national patent or petty patent application is patent or petty patent application filed
according to this Law with the competent authority;
18) national patent or petty patent is a patent or petty patent granted under the national
patent or petty patent application;
19) certificate means the Supplementary Protection Certificate granted for medicinal
products intended for humans or animals or plant protection products;
20) medicinal product means any substance or combination of substances intended for
treating or preventing disease in human beings or animals and any substance or combination of
substances which may be administered to human beings or animals with a view to making a
medical diagnosis or to restoring, correcting or modifying physiological functions in humans or
in animals;
21) basic patent means a patent found in the request for the grant of certificates chosen by
the holder of right and protecting a product from Article 113, paragraph 2 of this Law,
preparation from item 25 of this Article, procedure for obtaining a product or utilization of a
product.
22) plant protection product is active substance or preparation containing one or more
active substances, put up in the form in which they are supplied to the user, intended to:
(1) protect plants or plant products against all harmful organisms or prevent the effect of
such organisms,
(2) influence the life processes of plants, other than as a nutrient (e.g. plant growth
regulators);
(3) protection of plant products during storage, which is applied before or after harvest or
picking except preservatives;
(4) destruction of undesirable plants;
(5) destruction of parts of plants, checking or preventing undesirable growth of plants;
23) substance is chemical element and its compounds, as they occur naturally or by
manufacture, including any impurity resulting from the manufacturing process;
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24) active substance is substance or micro-organism, including viruses, having general or
specific influence against harmful organisms, on plants, parts of plants or plant products;
25) preparation means mixture or solution composed of two or more substances including
at least one intended for use as plant protection product;
26) plants means live plants and live parts of plants, including fresh fruits and seeds;
27) plant products means unprocessed products of plant origin or those having undergone
only simple preparation, such as milling, drying or pressing, but excluding plants from item 26)
of this Article;
28) harmful organisms means any species, strain or biotype belonging to the animal
kingdom, and also viruses, bacteria and mycoplasmas and other pathogen agents harmful for
plants or plant products;
29) data on the applicant filing the application, patent holder, applicant and requester,
holder of right, licensee, pledger or pledgee are: personal name and address for natural person or
a business title and a seat for legal persons.
30) Data on the representative are: personal name and address of the representatives
office for natural person or a business name and a seat for legal persons.
Data collection, processing and protection of personal data
Article 2a
The competent authority having the purpose to collect and process the personal data acts
in accordance with the law regulating the protection of personal data.
Access to information of public importance
Article 2b
Right of access to information of public importance contained in the patent application,
Registers from Article 70 of this Law, published patent application specifications, granted
patents, petty patents, Supplementary Protection Certificates and other information at the
disposal of the competent authority, shall be realized in accordance with the law regulating free
access to information of public importance.
2. Right to the Protection of an Invention
Entitlement to Protection
Article 3
The right to protection of the invention belongs to the inventor or his successor in title,
or in cases prescribed by this Law, to employer or his successor in title.
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If an invention is the result of the joint effort of a number of inventors they have a joint
right to protection. A person rendering technical assistance to an inventor shall not be considered
to be an inventor.
If two or more persons have filed an application for a protection of the joint invention, it
shall be considered, unless otherwise stipulated by them, that their ideal parts are equal.
Appropriate provisions of the law regulating obligations and proprietary right shall apply
to those issues concerning the mutual legal relations between two or more titular’s of rights on
the joint invention, that are not provided for by this Law.
If two or more persons have made an invention independently of each other, the right to
protection of invention therefore shall belong to the person whose patent or petty patent
application has the earliest date of filing.
Persons employed by the competent authority have no right to protection of their
inventions neither while they are employed by the competent authority, nor one year after the
termination of such employment.
Entitlement of Foreigners to Protection of Invention
Article 4
Foreign natural and legal person who has no seat or residence in the Republic of Serbia,
shall, in relation to the protection of invention in the Republic of Serbia, enjoy the same rights as
domestic natural and legal person, where such treatment derives from international treaties
binding for the Republic of Serbia.
Representation
Article 5
In proceedings before the competent authority, a foreign natural or legal person who has
no seat or residence in the Republic of Serbia must be represented by a representative listed in
the Register of Representatives kept by the competent authority or domestic attorney.
Notwithstanding the provisions of paragraph 1 of this Article, a foreign natural or legal
person may act individually for the following actions:
1) file an application and perform other actions for the purposes of the accordance of the
filing date of application;
2) receive notification by the competent authority referred to in procedure under item 1
of this paragraph;
3) pay fees and procedural costs.
In the case of undertaking actions referred to in paragraph 2 of this Article a foreign
natural or legal person must appoint a representative for correspondence who has address on the
territory of The Republic of Serbia.
If a foreign natural or legal person does not appoint a representative or representative for
correspondence in accordance with the provisions of paragraph 3 of this Article, the competent
authority shall invite him in writing to appoint a representative or representative for
correspondence and call his attention to the legal consequences of failure to proceed as
requested within three months from the receipt of the invitation.
If a foreign natural or legal person fails to comply with invitation of the competent
authority referred to in paragraph 4 of this Article, the competent authority shall render a
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conclusion rejecting his submission and providing for the delivery by public notice on the
notice board of the competent authority.
Notwithstanding the provisions of paragraph 1 of this Article, the fee for the
maintenance of the rights arising from the application and granted right may be paid by any
person on behalf of the applicant or right holder.
Rights of the Inventor
Article 6
The inventor shall have the right to be designated as such in the application for a
protection of an invention, specifications, Registers, certificates and publications related to his
invention, in the accordance with the provisions of this Law (hereinafter: Moral Rights).
The inventor shall have the right to enjoy economic benefits from the invention for which
he has filed an application or for which the patent or petty patent has been granted (hereinafter:
Pecuniary Rights).
The rights of an inventor who created an invention within the course of employment and
the rights of the employer in whose facilities the invention has been made, shall be regulated by
this Law, by general acts and by contract concluded between the employer and employee or
between their representatives.
II PATENTABILITY
Patentable inventions
Article 7
Patent is a right granted for an invention in any field of technology, which is new,
involves an inventive step and is susceptible of industrial utilization.
The subject matter of an invention protected by a patent may be a product, a process,
utilization of a product and utilization of a process.
In accordance with paragraph 1 of this Article, patent shall be granted for an invention for
a product consisting of or containing biological material, or the process by the use of which
biological material is produced, processed or used, including:
1) biological material isolated from its natural environment or produced by means of a
technical process, even if it previously occurred in nature;
2) plants or animals, if the technical feasibility of the invention is not confined to a
particular plant sorts or animal variety;
3) a microbiological or other technical process or a product obtained by means of such a
process.
Within the meaning of this Law, biological material shall mean any material containing
genetic information and capable of reproducing itself or being reproduced in a biological system.
The following, in particular, shall not be regarded as inventions, within the meaning of
this Law:
1) discoveries, scientific theories and mathematical methods;
2) esthetic creations;
3) schemes, rules and methods for performing mental acts, playing games or doing
business;
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4) computer programs, and
5) presentation of information.
Subject matter or activities referred to in paragraph 5 PARAGRAPH 4 of this Article
shall be excluded from patentability only to the extent in which the application for a patent
relates to the subject matter or activity as such.
Human Body and its Elements
Article 8
Human body, at the various stadia of its formation and development, and the simple
discovery of one of its elements, including sequences or partial sequences of gene, shall not be
regarded as invention that can be protected by a patent.
An element isolated from the human body or produced by means of a technical process,
including the sequences or partial sequences of genes, may be patentable, even where the
structure of that element is identical to that of a natural element.
The industrial application of a sequence or partial sequence of genes must be disclosed in
the patent application on the day of its filing.
Exceptions to Patentability
Article 9
Patent or petty patent shall not be granted to protect:
1) inventions whose commercial use would be contrary to public order or morality
providing that the use shall not be considered contrary to public order or morality only because it
is prohibited by law or any other regulation, particularly in respect of:
(1) processes for cloning human beings;
(2) processes for modifying the germ line genetic identity of human beings;
(3) uses of human embryos for industrial or commercial purposes;
(4) processes for modifying the genetic identity of animals which are likely to cause
them suffering without any substantial medical benefit to man or animal, and also animals
resulting from such processes;
2) inventions concerning methods for treatment by surgery or diagnostic methods or
therapy practiced directly on the human or animal body, providing that this provision shall not
apply to products or substances and compositions for use in any of these methods;
3) plant or animal variety or essentially biological process for the production of plant
or animal, and also plants and animals exclusively obtained by means of the essentially
biological process, providing that this provision shall not apply to microbiological processes or
the products obtained by such processes.
Plant variety referred to in paragraph 1, item 3) of this Article means any plant
grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective
of whether the conditions for the grant of a plant breeders’ rights are fully met, can be:
1) defined by the expression of the characteristics that results from a given genotype or
combination of genotype,
2) distinguished from any other plant grouping by the expression of at least one of the
mentioned characteristics,
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3) considered as a unit with regard to its suitability for being propagated unchanged.
Essentially biological process referred to in paragraph 1, item 3) of this Article for the
production of plants or animals is a process consisting entirely of natural phenomena such as
crossing or selection.
Microbiological process referred to in paragraph 1, item 3) of this Article means any
process involving or performed upon or resulting in microbiological material.
III CONDITIONS FOR THE PROTECTION OF AN INVENTION
Novelty of Invention
Article 10
An invention shall be new if it does not form part of the state of the art.
Within the meaning of this Law, the state of the art shall comprise:
1) everything 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 the protection of an
invention;
2) the content of all applications in the Republic of Serbia as filed, with the filing date
preceding the date referred to in the item 1) of this paragraph and published on or after that date,
in the manner prescribed by this Law.
The provisions of paragraphs 1 and 2 of this Article shall not exclude the possibility for
patent protection of substances or compositions included in the state of the art, for use in a
method of treatment by surgery or diagnostic method or therapy under Article 9. paragraph 1.
item 2) of this Law, provided their utilization for these purposes is not comprised in the state of
the art.
The provisions of paragraphs 1 and 2 of this Article shall also not exclude the possibility
for patent protection for substances or compositions, referred to in paragraph 3 of this Article, for
any specific utilisation in a method of treatment by surgical or diagnostic procedure or therapy
under Article 9 paragraph 1 item (2) of this Law, providing such utilization for these purposes is
not comprised in the state of the art.
Non-prejudicial Disclosure of Invention
Article 11
An invention which has already been part of the state of the art for a period of up to six
months before the filing of the application shall also be deemed to be new, if its disclosure was
due to or was a consequence of:
1) evident abuse in relation to the applicant or his legal predecessor;
2) the invention being displayed by the applicant or his legal predecessor at an official, or
officially recognized exhibition, falling within the terms of the Convention on International
Exhibitions, signed in Paris on 22 November 1928, and last revised on 30 November 1972,
providing that the applicant states, when filing the application, that the invention was exhibited
and that he provides an appropriate certificate to support this statement within a period of four
months from the filing date of the application.
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The certificate that an exhibition or a fair in the Republic of Serbia was of an officially
recognized international character shall be issued by the Chamber of Commerce of the Republic
of Serbia.
Inventive Step of the Invention
Article 12.
An invention shall be considered to involve an inventive step if, having regard to the state
of the art, it is not obvious to a person skilled in the art.
In examining whether an invention involves an inventive step, the content of applications
referred to in Article 10, paragraph 2, item 2) of this Law shall not be considered.
Industrial Application
Article 13.
An invention shall be considered to be susceptible to industrial application if its subject
matter can be made or used in any kind of industry, including agriculture.
IV CONTENT, ACQUISITION AND SCOPE OF RIGHT
Content of Right
Article 14
The owner of a patent or petty patent shall have the exclusive right to:
1) use the protected invention in production;
2) place on the market products made by the protected invention;
3) dispose of the patent or petty patent.
In exercising his exclusive right to the commercial use of protected invention, the owner
of a patent or petty patent shall have the right to prevent any third party not having his consent
from:
1) making, offering for sale, placing on the market or using the product made by means
of the protected invention or from importing or storing the product for mentioned purposes;
2) using the patented process;
3) offering the patented process for sale;
4) producing, offering for sale, placing on the market, using, importing or storing for such
purposes a product directly obtained by the patented process;
5) offering for sale or supplying products that constitute essential elements of an
invention to parties unauthorized to use such invention, if the person offering or supplier knows
or must have known based on factual circumstances that such product is intended for use in an
invention owned by someone else.
Content of Right in Patents in Field of Biotechnology
Article 15
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If the patent refers to biological material possessing specific characteristics which are the
result of a biotechnological invention, the rights laid down in Article 14, paragraph 2 of this
Law, shall extend to any biological material derived from that biological material through
propagation or multiplication, in an identical or divergent form and possessing those same
characteristics.
If the patent concerns a product containing or consisting of genetic information, the rights
laid down in Article 14, paragraph 2 of this Law shall extend to all other material in which the
product is incorporated, provided it contains genetic information that performs its function,
except the human body, at the various stages of its formation and development, and the simple
discovery of one of its elements, including the sequence or partial sequence of a gene in which
the product is incorporated, provided it contains genetic information that performs its function.
If the patent concerns a process that enables production of biological material possessing
specific characteristics as a result of the biotechnological invention, the rights laid down in
Article 14, paragraph 2 of this Law shall also extend to biological material directly obtained
through the process and to any other biological material derived from the directly obtained
biological material through propagation or multiplication, in an identical or divergent form and
possessing those same characteristics.
Within the meaning of this Law, biotechnological inventions are inventions which
concern a product consisting of or containing biological material or a process by means of which
a biological material is produced, processed or used.
Biological Material Obtained from the Propagation or Multiplication
Article 16
The protection from Article 15 of this Law shall not refer to biological material obtained
from the propagation or multiplication of biological material placed on the market by the owner
of the patent or with his consent, where the propagation or multiplication necessarily results from
the implementation for which the biological material has been marketed, providing that the
material obtained is not subsequently used for other propagation or multiplication.
Acquisition of Right
Article 17
A patent or petty patent shall be obtained by the publication of the mention of its grant in
the Official Gazette issued by the competent authority (hereinafter: Official Gazette) and shall
have effect as of the filing date of the application.
Rights from the Published Patent Application
Article 18
The applicant shall be conferred provisional rights, the content of which shall be identical
to those of a patent after publication of a patent application, and which shall be valid from the
date of publication of the application to the date of publication of mention of the grant of a
patent.
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In the case that a patent is not granted, the rights arising from the application shall be
deemed not to have existed.
Scope of Protection of Provisional Rights
Article 19
The scope of protection conferred by an application in the period up to the grant of a
patent shall be determined by the content of the claims in the application published in accordance
with this Law.
If a patent is granted with claims that have been amended during the procedure, the
amended claims shall determine the scope of protection conferred by the application, provided
they do not go beyond the protection referred to in paragraph 1 of this Article.
Scope of protection conferred by a patent or petty patent
Article 20
The scope of protection conferred by a patent or petty patent shall be determined by the
content of the claims, whereby the description and drawing shall be used to interpret the claims.
If the subject matter of a patent is a process, the rights conferred by the patent shall
extend to the product directly obtained by such process.
V LIMITATION OF RIGHTS
Exceptions to Exclusive Rights
Article 21
The exclusive rights of a right holder referred to in Articles 14 and 15 of this Law shall
not apply to:
1) the use of invention or the use of products made on the grounds of the invention for
personal, non-commercial purposes;
2) research and development activities relating to the subject matter of protected
invention, including activities that are necessary for obtaining an authorization from the
competent authority for placing on the market a product which is a drug intended for use on
humans or animals, or a medicinal product or plant protection products defined by the law
regulating plant protection products ;
3) the direct, individual preparation of a drug in a pharmacy based on a single
prescription, and to the placement of such drug on the market.
The provisions of paragraph 1 shall apply only if they do not conflict with normal
exploitation of the patent or petty patent, and do not unreasonably prejudice the legitimate
interests of right holders, taking into account the legitimate interests of third parties.
Exhaustion of Rights of the Right Holder
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Article 22
If a protected product is placed on the market on the territory of the Republic of Serbia
by the right holder or with his consent, the person coming into possession of such product may
use and dispose of it freely.
The Right of Prior User
Article 23
A patent or petty patent shall have no effect against a person acting in good faith who
has, before the date of priority, already started exploiting protected invention in production on
the territory of the Republic of Serbia, or has made all necessary preparations to initiate such
use.
The person referred to in paragraph 1 of this Article shall be entitled to continue
exploiting the invention exclusively for production purposes, in his own plant or in the plant of
another person for his own needs.
The person referred to in paragraph 1 of this Article cannot assign his right for the
exploitation of the invention to another person, except together with the enterprise or part of the
enterprise in which the preparation for use or the use of the invention has taken place.
Limitation of Rights to Facilitate International Traffic
Article 24
A patent or petty patent shall have no effect against a person who uses devices made on
the basis of a protected invention where such devices constitute an element in the structure or
equipment of a vessel, aircraft or land vehicle or which serve exclusively for the operation of
such vessel, aircraft or land vehicle belonging to a Member State to the Paris Union or member
of the World Trade Organization (hereinafter: WTO) when it enters the territory of The Republic
of Serbia temporarily or accidentally.
Limitation of Rights Concerning Biological Material
Article 25
By acquiring protected plant propagating material from the owner of a patent or with his
consent, a farmer shall obtain authorization to use the product of said propagating material for
further propagation or multiplication on his own farm, under conditions prescribed by the law on
the protection of, plant breeders’ rights.
By acquiring protected animal reproductive material or breeding stock from the owner of
a patent or with his consent, a farmer shall obtain authorization for use protected livestock or for
reproductive material for the purpose of his own agricultural activities, but not for sale within the
framework or for the purpose of a commercial reproduction activity.
Compulsory License
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Article 26
If the right holder refuses to license the right of commercial use of a protected invention
to other persons or sets unreasonable conditions for such licensing, the government authority
competent in the field in which the invention shall be employed may, at the request of an
interested party after considering the merits of each individual case, grant a compulsory license,
in the following cases:
1) if the right holder himself or a person authorized by him does not use the protected
invention or uses it insufficiently in the Republic of Serbia;
2) if the commercial use of an invention that has been subsequently protected in the name
of another person is not possible, without the use of the protected invention in whole or in part;
3) when it is necessary to remedy a practice determined after judicial or administrative
process to be anti-competitive.
The request for the grant of a compulsory license cannot be filed before the expiration of
a period of four years from the date of filing of the patent application or before the expiration of
a period of three years from the grant of the patent or petty patent, whichever period expires last.
Before making a request under the paragraph 1 of this Article the interested person shall
be required to prove that he has made efforts to obtain authorization for the use of the protected
invention from the right holder on reasonable commercial terms and conditions and that such
efforts have not been successful within a reasonable period of time.
The interested person, referred to in paragraph 1, item 1) of this Article, may only be a
person who proves that he has the appropriate technological capacity and production facilities for
the commercial use of the protected invention.
The interested person referred to in paragraph 1, item 2) of this Article may only be the
right holder of the second invention, under the following conditions:
1) that the second invention involves a technical advancement of special economic
significance in relation to the first protected invention and that
2) the owner of the first invention is entitled, on reasonable terms, to a cross-license to
use the second invention.
Authorization for the use of the earlier protected invention shall be non-assignable except
with the assignment of the second patent.
A compulsory license cannot be granted if the patent owner provides legitimate reasons
to justify non-exploitation or insufficiency of exploitation of the protected invention.
Provisions of paragraphs 2. and 3. of this Article shall not apply to compulsory license
granted when the public emergency endangers the survival of the state or its citizens or in cases
of public non-commercial use.
Holder of patent shall be promptly informed about the procedure on granting compulsory
license referred to in paragraph 8. of this Article.
In the case of semi-conductor technology, a compulsory license may be granted only with
the aim of public non-commercial use or when it is necessary to remedy a practice determined
after judicial or administrative process to be anti-competitive.
Remuneration for the Compulsory License to the Right Holder
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Article 27
The holder of compulsory license shall be required to pay to the right holder a mutually
agreed remuneration. In the absence of an agreement on the amount and method of payment of
such remuneration, the competent court shall decide, taking into account the merits of each
individual case and the economic value of the compulsory license.
Scope and Duration of Compulsory License
Article 28
The scope and duration of a compulsory license shall be limited to the purpose for which
it has been granted.
A compulsory license shall not be exclusive.
A compulsory license may be assigned only with the manufacturing plant that exploits
the invention for which the license has been granted.
A compulsory license shall predominantly be granted for the supply of the domestic
market.
A compulsory license may be terminated if and when circumstances that have led to its
grant cease to exist and are unlikely to recur.
On reasoned request, the government authority competent in the field in which the
invention shall be employed shall re-examine the further existence of circumstances referred to
in paragraph 5 of this Article.
Cross Compulsory License Granted to Plant Breeders and Patent Holder relating to
Biotechnological Invention
Article 29
Where a plant breeder cannot obtain or exploit a protected plant breeders’ rights without
infringing prior patent, he may file the request for the grant of a compulsory license to the
government authority competent for the Agriculture for the use of the invention protected by the
patent inasmuch as the license is necessary for the exploitation of the plant variety to be
protected.
If such a license is granted, the owner of the patent shall be entitled to a compulsory
cross-license to use the plant variety protected, on reasonable terms.
Where the owner of a patent concerning a biotechnological invention cannot exploit it
without infringing a prior protected plant breeders’ rights, he may file the request for the grant of
a compulsory license to the government authority competent for the Agriculture, that cannot be
exclusive, for the use of the plant variety protected.
If compulsory license is granted, the holder of the plant breeders right is entitled to a
compulsory cross-license to use the protected invention on reasonable terms.
Compulsory license from paragraph 1 and 3 shall not be exclusive.
A requester for the compulsory license referred to in paragraphs 1 and 3.of this Article
must demonstrate that:
1) he has unsuccessfully made efforts to obtain a contractual license;
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2) the plant variety or the invention constitutes significant technical progress of
considerable economic interest compared with the invention claimed in the patent or the
protected plant variety.
The compulsory license referred to in paragraphs 1 and 3of this Article may only be
assigned with the manufacturing plant that exploits the invention for which the license has been
granted.
For compulsory license referred to in paragraph 1 and 3 of this Article, the licensee shall
pay appropriate royalty.
Compulsory Licenses for Patents Relating to the Manufacture of Pharmaceutical
Products for Export to Countries with Public Health Problems
Article 30
Government authority responsible for Health, may grant a compulsory license in relation
to patents and Supplementary Protection Certificates concerning the manufacture and sale of
pharmaceutical products, when such products are intended for export to importing countries
having public health problems to any person who submits a request in accordance with the
provisions of this Law. In deciding to grant compulsory license the Government authority
responsible for Health will take particularly into account the need for execution of decisions of
the WTO Council on 30 August 2003 on the implementation of item (6) of the Doha Declaration
on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
and Public Health on 14 November 2001 (hereinafter: the Decision).
Pharmaceutical product specified in paragraph 1 of this Article means any product of the
pharmaceutical industry including medicinal products for human use, implying any substance or
combination of substances presented as having properties for treating or preventing disease in
human beings and any substance or combination of substances which may be used to human
beings, for the purpose of restoring, correcting or adjusting physiological functions by exerting a
pharmacological, immunological or metabolic action, or for making a medical diagnosis,
including active ingredients and diagnostic kits ex vivo.
Importing country referred to in paragraph 1 of this Article is any country to which the
pharmaceutical product is to be exported. The following are eligible importing countries:
1) any least-developed country appearing as such in the United Nations list;
2) any member of the WTO, other than the least-developed country members referred to
in item (1) of this paragraph, that has made a notification to the Council for TRIPS of its
intention to use the system as an importer, including whether it will use the system in whole or in
a limited way;
3) any country that is not a member of the WTO, but is listed in the OECD Development
Assistance Committee's list (hereinafter the OECD) of low-income countries with a gross
national product per capita of less than amount established by the OECD Development
Assistance Committee, and has made a notification to the Government of its intention to use the
system as an importer, including whether it will use the system in whole or in a limited way.
Any WTO member that has made a declaration that it will not use the system as the
importing WTO member is not an eligible importing country.
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Importing countries that are not WTO members, and that are the least developed
countries and developing countries and that meet the requirements referred to in paragraph 3 of
this Article must fulfil following additional conditions:
1) the importing country is obliged to make the notification pursuant to the Decision
directly to the Government;
2) the importing country is obliged, to state in the notification that it will use the system
to address public health problems and not as an instrument to pursue industrial or commercial
policy objectives and that it will adopt the measures referred to in paragraph 4 of the Decision;
Government authority responsible for Health, may at the request of the right holder, or at
its own initiative, terminate a compulsory license if the importing country has failed to honour its
obligations referred to in paragraph 5 item 2) of this Article.
The request referred to in paragraph 1 of this Article must include, in particular:
1) information about the requirements for the grant of compulsory licenses in other states
for the same product with details of the quantities and importing countries concerned;
2) data on the applicant for the grant of compulsory license and of any representative
whom he has appointed to act for him;
3) the non-proprietary name of the pharmaceutical product or products which the person
who has filed the request for the grant of compulsory license intends to manufacture and sell for
export under the compulsory license;
4) the amount of pharmaceutical product which the applicant intends to produce under
the compulsory license;
5) the importing country or countries;
6) evidence of prior negotiation with the right-holder pursuant to paragraph 11 of this
Article;
7) evidence of specific request from authorized representatives of the importing country
or countries or a non-governmental organization acting with the formal authorization of one or
more importing countries or UN bodies or other international health organizations acting with
the formal authority of one or more importing countries.
Government authority responsible for Health, shall notify the right holder without delay
of the requirement for the issue of compulsory license and before the grant of compulsory license
shall give the right-holder an opportunity to comment on the request and to provide the
competent authority with relevant information regarding the request.
When deciding on the request for the grant of compulsory license government authority
responsible for Health, shall verify that:
1) each importing country cited in the request which is a WTO member has made a
notification to the WTO pursuant to the Decision, or each importing country cited in the request
which is not a WTO member has made a notification to the Government pursuant to this Article
in respect of each of the products covered by the request. The foregoing is without prejudice to
the flexibility that least developed countries have under the Decision of the Council of TRIPS of
27 June 2002;
2) the quantity of product cited in the request does not exceed that notified to the WTO
by an importing country which is a WTO member, or to the Government by an importing
country which is not a WTO member;
3) taking into account other compulsory licenses granted in other countries, the total
amount of product authorized to be produced for any importing country does not significantly
exceed the amount notified by that country to the WTO, in the case of importing countries which
17
are WTO members, or to the Government body, in the case of importing countries which are not
WTO members.
The person who has filed the request for the grant of compulsory license is obliged to
specify the data prescribed in paragraph 9 of this Article in the request for the grant of
compulsory license.
Compulsory license may only be granted if the requester provides the evidence that he
has made efforts to obtain authorization from the right holder and that such efforts have not been
successful within a period of thirty days before submitting the request.
The provision referred to in paragraph 11, of this Article shall not apply in situations of
national emergency or other circumstances of extreme urgency or in cases of public non-
commercial use.
Compulsory License Conditions for Patents Relating to the Manufacture of Pharmaceutical
Products for Export to Countries with Public Health Problems
Article 31
A compulsory license may only be granted as a non-exclusive, its scope and duration
must be indicated in the decision and they are related solely to the purpose for which a
compulsory license was granted. The amount of products manufactured under the license shall
not exceed what is necessary to meet the needs of the importing country or countries cited in the
request, taking into account the amount of products manufactured under other compulsory
licenses granted elsewhere.
A compulsory license may be assigned only with the manufacturing plant that exploits
the invention for which the license has been granted.
The decision on the grant of a compulsory license shall contain the actions to which the
person who has filed the request for the grant of compulsory license is entitled and which are
necessary for the purpose of manufacturing the product in question for export and distribution in
the country or countries cited in the request. No product made or imported under the compulsory
license shall be offered for sale or put on the market in any country other than that cited in the
application, except where an importing country avails itself of the possibilities under item 6(i) of
the Decision to export to fellow members of a regional trade agreement that share the health
problem in question.
The decision on the grant of a compulsory license shall require:
1) that the products made under the compulsory license must be clearly identified,
through specific labelling or marking, as being produced under compulsory license, must be
distinguished from those made by the rights-holder through special packaging and/or special
colouring or shaping, providing that such distinction is feasible and does not have a significant
impact on price,
2) the packaging and any associated text must bear an indication that the product is
subject to a compulsory license, giving the name of the authority that has granted the compulsory
license and any identifying reference number, and specifying clearly that the product is
exclusively for export to and distribution in the importing country or countries concerned,
3) details of the product characteristics shall be made available to the customs authorities
of the Republic of Serbia.
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The decision on the grant of a compulsory license shall require that the licensee shall post
on a website before shipment to the importing country, the following information, about which
the licensee shall notify the Government authority responsible for Health, in particular:
1) the quantities being supplied under the compulsory license and the importing countries
to which they are supplied;
2) the distinguishing features of the product or products concerned.
If the product covered by the compulsory license granted in the Republic of Serbia is
protected by patent of petty patent in the importing countries cited in the request, the product
shall only be exported if those countries have issued a compulsory license for the import, sale
and/or distribution of the product.
The decision on the grant of a compulsory license shall require that licensee shall pay the
remuneration to the right holder that is to be determined as follows:
1) in the cases of national emergency or other circumstances of extreme urgency or in
cases of public non-commercial use, the remuneration shall be a maximum of 4 % of the total
price to be paid by the importing country or on its behalf;
2) in all other cases, the remuneration shall be determined taking into account the
economic value of the use authorized under the license to the importing country or countries
concerned, as well as humanitarian and non-commercial circumstances relating to the issue of
the license.
After the decision to grant a compulsory license becomes final, the authority to which the
Government authority responsible for Health delegates competence may, on the proposal for the
preservation of evidence submitted by the right holder, have access to books and records kept by
the licensee, for the sole purpose of checking whether all obligations cited in the decision to
grant compulsory license, and in particular those relating to the final destination of the products,
have been met.
The business books and records from paragraph 8 of this Article, shall include proof of
exportation of the product, through a declaration of exportation certified by the customs
authority, as well as evidence of import.
The license conditions are without prejudice to the method of distribution in the
importing country.
Refusal of the Request to Grant Compulsory License
Article 32
The Government authority responsible for Health shall refuse the request to grant
compulsory license if the request does not contain the elements necessary for making the
decision referred to in Article 30 of this Law or if the conditions to grant the license prescribed
by Article 31 of this Law are not met.
Notification
Article 33
The Government authority responsible for Health shall notify the Council of TRIPS of
its final decisions to grant compulsory license for patents relating to the manufacture of
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pharmaceutical products for export to countries with public health problems, of the specific
conditions attached to it, as well as on its modification and termination.
The information provided shall include the following details of the license:
1) the name and address of the licensee;
2) the product concerned;
3) the quantity to be supplied;
4) the importing country;
5) the duration of the license;
6) the website referred to in Article 31 paragraph 5 of this Law.
Prohibition of Importation
Article 34
The import of products manufactured under a compulsory license granted under the
paragraph 30 of this Law for the purposes of release for free circulation, re-export, placing under
suspensive procedures or placing in a free zone or free warehouse shall be prohibited in the
Republic of Serbia.
Paragraph 1 of this Article shall not apply in the case of re-export to the importing
country cited in the request and identified in the packaging and documentation associated with
the product, or placing under a transit or customs warehouse procedure or in a free zone or free
warehouse for the purpose of re-export to that importing country.
Action by Customs Authorities
Article 35
If there are sufficient grounds for suspecting that products manufactured under a
compulsory license granted pursuant to this Law are being imported into the Republic of Serbia
contrary to Article 34 paragraph 1 of this Law, the Customs authorities shall suspend the release
of, or detain the products concerned for the time necessary to obtain a decision of the
Government authority responsible for Health on the character of the imported products, not
exceeding ten working days. If special circumstances apply, the Customs authority may extend
the period of the detention by a maximum of ten working days.
The right holder and the manufacturer or exporter of the products concerned shall be
informed without delay of the detention of the products referred to in paragraph 1 of this Article
and shall be given ample opportunity to supply the Customs authority with information and
evidence on the relevant products.
If it is confirmed in the period of the detention, violation of the compulsory license
contrary to the prohibition of the Article 34 paragraph 1 of this Law, the Customs authority shall
ensure that the products are seized and disposed of in accordance with the Customs regulations.
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The procedure of detention or seizure of the goods shall be carried out at the expense of
the importer in accordance with the Customs regulations and the costs of the procedure of
detention or seizure are covered jointly with the importer and any other person who attempted
illicit importation.
If the products detained by the Customs authorities are subsequently found not to violate
the prohibition referred to in Article 34 paragraph 1 of this Law and if the customs regulations
have been complied with, the Customs authority shall release the products on the territory of the
Republic of Serbia.
The Customs authority shall inform the Government body responsible for Health of any
decisions on seizure or destruction of products in accordance with this Article.
Exceptions to the Prohibition of Importation
Article 36
Articles 34 and 35 of this Law, shall not apply to import of small quantities of goods
contained in travellers' personal luggage for personal and non-commercial use within the limits
laid down in respect of relief from the Customs duty.
Cancellation or Modification of the Compulsory License
Article 37
Right holder or licensee may request from the Government authority responsible for
Health to cancel the compulsory license if it finds that the opposing party does not comply with
the decision on the grant of compulsory license. In a decision on the cancellation of compulsory
license, the Government authority responsible for Health shall, in consultation with the right
holder, set a period in which the licensee shall at its expense, redirect all the products that are in
his possession to the country having needs as referred to in Article 30 paragraph 9 of this Law or
otherwise dispose of them with the consultation with the holder of right.
If the importing country submits a notification that the quantity of pharmaceutical
products has become insufficient to meet its needs, the licensee may require modification of
conditions of the license permitting the manufacture and export of additional quantities of the
product to the extent necessary to meet the needs of the importing country concerned.
Procedure on request referred to in paragraph 2 of this Article is urgent.
If additional quantity of products does not exceed 25%, of originally approved amount of
pharmaceutical products the provisions of Article 30 paragraph 9 of this Law shall not apply,
when deciding on the request referred to in paragraph 2 of this Article.
Legal Protection
Article 38
The Government authority referred to in Articles 26, 29 and 30 of this Law shall pass the
decision on the grant of compulsory license, refusal of the request to grant compulsory license,
amendment and cancellation of compulsory license.
21
Decisions of the Government authority referred to in paragraph 1 of this Article on the
grant of compulsory license, refusal of the request to grant compulsory license, amendment and
cancellation of compulsory license may be appealed with the Government within 15 days from
the receipt of the decision.
The decision of the Government is final and administrative dispute may be instituted
against that decision concerning the appeal within 30 days from the date of the receipt of the
Government’s decision.
VI TERM AND CESSATION OF RIGHT
1. Term and Maintenance of Right
Term of Right
Article 39
The term of a patent shall be 20 years from the filing date of the application.
The term of a petty patent shall be 10 years from the filing date of the application.
The term of a patent of addition cannot exceed that of the basic patent.
If patent of addition becomes basic patent, its term shall not exceed the remaining term
of the initial basic patent.
Maintenance of Right
Article 40
Prescribed fees shall be paid for the maintenance of rights arising from the application
and granted right.
The fee for the maintenance of rights arising from the application and the granted right
may be paid by any person on behalf of the applicant or right holder.
The fees under paragraph 1 of this Article shall be paid in respect of the third year and
each subsequent year, calculated from the date of filing of the application.
The fees under paragraph 1 of this Article for the divisional application must be paid for
the current and each subsequent year from the date of filing of the original application.
If the applicant or the right holder fails to pay the fee referred to in paragraph 1 of this
Article, the fee may be validly paid within an additional time limit of six months, provided a
prescribed additional fee is paid at the same time. The proof of payment of these fees must be
submitted to the competent authority.
2. Cessation of Right
Non-Payment of Fee
Article 41
If the applicant or the right holder fails to pay the prescribed fee for the maintenance of
rights and to submit the proof of payment of these fees, within the time limit referred to in the
22
Article 40, such rights shall cease on the day following the due date referred to in Article 40
paragraph 3 of this Law.
In the case referred to in paragraph 1 of this Article, the competent authority shall pass a
decision on annulment of rights which is final and may be subject to administrative dispute
before the competent court.
Abandonment of the Application and Waiver of Right
Article 42
If an applicant files a declaration in writing with the competent authority abandoning his
application, such right shall cease on the day following the filing of the declaration.
If any right belonging to a third party has been entered into the Register, the applicant
cannot abandon his right without prior written consent from the party in whose name license,
pledge or any other right has been entered.
In the case from paragraphs 1 and 2 of this Article, the competent authority shall render
conclusion to suspend the procedure.
If a right holder files a declaration in writing with the competent authority abandoning his
right, such right shall cease on the day following the filing of the declaration.
If any right belonging to a third party on the patent or petty patent has been entered into the
Register, the owner of the patent or petty patent cannot abandon his right without prior written
consent from the party in whose name license, pledge or any other right has been entered.
In the case from paragraphs 4 and 5 of this Article, the competent authority shall adopt
decision which is final and may be subject to administrative dispute before the competent court.
Death or Dissolution of a Right Holder or applicant
Article 43
A right shall cease to exist on the day of the death of a natural person or on the day of the
dissolution of a legal person who is the owner of the patent or petty patent, unless it has been
transferred to heirs or legal successors in title.
In the case from paragraph 1 of this Article, the competent authority shall render decision
on termination of rights which is final and may be subject to administrative dispute before the
competent court.
Paragraph 1 of this Article shall apply accordingly to applicant who has died or ceased to
exist during the grant procedure of the patent.
IF, IN THE COURSE OF THE PROCEDURE FOR THE GRANT OF PATENT, THE
APPLICANT DIES OR CEASES TO EXIST, THE COMPETENT BODY PASSES A
DECISION TO HAULT THE PROCEDURE TILL THE LEGAL FOLLOWERS OF THE
APPLICANT HAVE ENTERED INTO THE PROCEDURE.
In the case from paragraph 3 of this Article, the competent authority shall render
conclusion to suspend the procedure.
VII TRANSFER OF RIGHTS
23
Assignment
Article 44
The right to file an application, rights arising from the application, right on patent or petty
patent may be assigned, in whole or in part, as the consequence of an assignment contract, a
change of status of the applicant or right holder, as well as inheritance, court or administrative
decision.
The assignment of rights under paragraph 1 of this Article shall be entered into the
appropriate Register of the competent authority upon the request of the right holder, applicant or
assignee.
The entry of the assignment referred to paragraph 1 of this Article into the appropriate
Register of the competent authority, shall produce legal effect in relation to third parties.
The entry of the assignment referred to in paragraph 1 of this Article into the appropriate
Register of the competent authority shall be subject to a special decision.
Issues related to the contract on transfer of rights, that is not regulated by this Law, shall
be subject to provisions of the Law regulating obligations.
Content of the Assignment Contract
Article 45
The applicant or right holder may transfer rights arising from the application, right on
patent or petty patent by the assignment contract under Article 44 paragraph 1 of this Law.
The assignment contract under paragraph 1 of this Article shall be drawn up in writing
and it shall contain: the date of signing the agreement, name and surname or business name,
domicile or residence or seat of the contractual parties, the patent or petty patent registration
number, the number of the application, as well as the amount of remuneration, if agreed.
License
Article 46
The rights arising from the application, right on patent or petty patent may be with or
without restrictions transferable by the license contract.
If two or more persons are right holders referred to in paragraph 1 of this Article on the
same invention, the consent of all of them is necessary for concluding contractual license, unless
otherwise stipulated by them.
The license contract under paragraph 1 of this Article shall be in writing and shall
contain: the date of signing the agreement, name and surname or business name, domicile or
24
residence or seat of the contractual parties, the patent or petty patent registration number, the
number of the application, the term of validity of the license and the scope of the license.
The license contract under paragraph 1 of this Article shall be entered into the appropriate
Register with the competent authority at the request of the right holder, applicant or licensee.
The entry of the license contract under paragraph 1 of this Article into the appropriate
Register of the competent authority shall produce effect in relation to third parties.
The entry of the license agreement under paragraph 1 of this Article into the appropriate
Register of the competent authority shall be subject to a special decision.
Any issue related to the license contract that is not regulated by this Law shall be subject
to provisions of the law regulating obligations.
Right of Pledge
Article 47
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 pledge contract under paragraph 1 of this Article shall be drawn up in writing and
shall contain in particular: the date of signing, name and surname or business name, domicile or
residence or the seat of the pledgee and pledger, as well as the debtor, if they are not the same
person, the patent or the number of the application or the registration number of the granted
right, and data about the claim secured by possessory lien.
The pledge under paragraph 1 of this Article shall be entered into the appropriate Register
of the competent authority upon the request of the right holder, applicant or pledgee.
The following data shall be entered into the Register of the competent authority, and in
particular: data on the pledger and debtor, when they are not the same person, as well as data on
the lien creditor, the patent or petty patent registration number, the number of the patent or petty
patent application; data on the claim secured by possessory lien including a designation of the
basic and the maximum amount.
In the Register of the competent authority any changes of the data referred to in
paragraph 4 of this Article shall also be entered.
The entry of the pledge under paragraph 1 of this Article into the appropriate Register of
the competent authority shall be subject to a special decision.
The pledgee shall acquire possessory lien upon entry into the appropriate Register of the
competent authority.
Any issue that is not regulated by this Law shall be the subject of provisions of the law
regulating non-possessory lien, ownership rights and obligations.
The competent authority shall prescribe the particulars of the type of data under
paragraph 4 of this Article to be entered into the Register of the competent authority.
Procedure for the Entry of Assignment, License and Pledge into the Register
Article 48
25
The procedure for the entry of an assignment, license and pledge into the Register shall
be initiated by written request.
The request under paragraph 1 of this Article shall include in particular: the patent or
petty patent registration number or the patent or petty patent application number, data on the
right holder or applicant, a designation specifying that registration is sought of the assignment of
the patent or petty patent, or the rights arising from the application or a designation of the rights
whose registration is sought.
The request under paragraph 1 of this Article shall be filed with the following:
1) evidence of legal ground for the requested entry;
2) power of attorney if the procedure for the registration of the assignment, license or
pledge is initiated through the representative;
3) proof of payment of the fee for the decision rendered on the request for the registration
of the assignment, license or pledge.
The entry of the assignment of several patents or petty patents or applications into the
Register may be requested on the basis of a single request referred to in paragraph 1 of this
Article, provided that the earlier right holder and the new right holder are the same in respect of
every patent or petty patent or application and that the registration numbers or application
numbers are designated in the request.
The entry of a license or a pledge in respect of several patents or petty patents or
applications into the Register may be requested on the basis of a single request referred to in
paragraph 1 of this Article, providing that the right holder, the licensee or pledgee are the same
in respect of each patent or petty patent or application, and that the registration numbers or
application numbers are designated in the request.
The competent authority shall prescribe in details the particulars of the request under
paragraph 1 of this Article, and shall determine the attachments to be filed with the request, and
prescribe their content.
Examination of the Compliance with the Formal Requirements of the Request for Entry of
Assignment, License and Pledge into the Register
Article 49
A request for the entry into the Register of an assignment, license or pledge shall be
admissible if it contains the data referred to in Article 48 of this Law.
If the request for the entry into the Register of the assignment, license and pledge is not
admissible, the competent authority shall invite the requester in writing to remedy the
deficiencies within the two month from the date of receiving the notification.
Upon a reasoned request of the person who required the entry into the Register of an
assignment, license or pledge and upon payment of the prescribed fee, the competent authority
shall extend the time limit referred to in paragraph 2 of this Article, for a time period considered
to be justified, but not exceeding two months.
If the person who has filed the request for entry into the Register fails to proceed as
requested within the set time limit, the competent authority shall pass a decision rejecting the
request.
26
Deciding on the Request for Entry of Assignment, License and Pledge into the Register
Article 50
If the request for the entry into the Register of an assignment, license or pledge is
admissible pursuant the Article 49 of this Law, the competent authority shall examine whether
the legal title on which the request is based on, complies with the requirements prescribed by the
Law for the entry of an assignment, license or pledge into the Register.
If there is no legal basis to decide on the request for the entry of an assignment, license
and pledge into the Register or if the data arising from the request do not match the data in the
Registers, the competent authority shall notify in writing the requester about the reasons due to
which the entry into the Register cannot be granted and shall invite him to submit his
observations regarding the reasons, within two month from the date of receiving the notification.
Upon a reasoned request of the person who required the entry into the Register of an
assignment, license or pledge and upon payment of the prescribed fee, the competent authority
shall extend the time limit referred to in paragraph 2 of this Article, for a time limit considered to
be justified, but not exceeding two months.
The competent authority shall render a decision refusing a request for the entry of an
assignment, license or pledge into the Register, if the requester fails to submit his observations,
within the set time limit, regarding the reasons for which the entry into the Register cannot be
approved, or if he submits his observations but the competent authority still considers that
registration cannot be approved.
VIII INVENTIONS OF IMPORTANCE FOR DEFENCE AND SECURITY OF THE
REPUBLIC OF SERBIA
Secret Application
Article 51
An application filled by a national of the Republic of Serbia which is found to be
important for the defence or security of the Republic of Serbia is considered to be secret
application.
Application under paragraph 1 of this Article shall be filed with the authority competent
in national defence.
Procedure in Respect of the Application
Article 52
If the competent authority estimates in its examination of a patent or petty patent
application that it falls under the category to be important for the defence or security of the
Republic of Serbia it shall forward application to the authority competent for national defence,
and such application shall retain the filing date accorded to it by the competent authority.
27
If the authority competent for national defence finds in its examination of an application
filed that is not secret, it shall forward the application to the competent authority within three
months from the reception of the application referred to in paragraph 1 of this Article.
If an application has ceased to be secret, authority competent for national defence shall
forward such application to the competent authority without delay. Such application shall retain
the filing date accorded to it by the competent authority.
Expert Opinion
Article 53
In the examination of an application containing secret invention, the authority competent
in national defence may request an expert opinion from the competent authority on whether the
secret invention claimed in the application fulfils legal requirements for protection of patent or
petty patent.
The competent authority shall prescribe the particulars of expert opinion under paragraph
1 of this Article.
Secret invention
Article 54
A secret invention shall not be published.
A national of the Republic of Serbia may claim protection for a secret invention abroad
only with approval of the authority competent for national defence.
Any issue related to the method, procedure and protection measures concerning secret
invention before the authority competent for national defence shall be subject to law regulating
national defence of the Republic of Serbia.
Procedure Following the Grant of Right
Article 55
If the authority competent for national defence establishes, upon the grant of a patent or
petty patent for a secret invention, that the invention has ceased to be secret, it shall forward the
file concerning the invention to the competent authority, which shall enter the patent or petty
patent into the appropriate Register, publish the data on the granted right and issue a
corresponding certificate to the right holder, in accordance with the provisions of this Law.
Right to Use
Article 56
The authority competent in national defence or in internal affairs shall have the exclusive
right to use and dispose of a secret invention.
Any issue related to inventor's right to the remuneration for the protected secret invention
shall be subject to legislation regulating national defence of the Republic of Serbia.
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IX INVENTIONS MADE IN THE COURSE OF EMPLOYMENT
Definition of Invention Made in the Course of Employment
Article 57
An invention shall be considered to have been made in the course of employment if it
constitutes:
1) an invention made by an employee in the course of his regular duties or specially
assigned tasks concerning scientific and technical research and development, as well as an
invention made under a research contract concluded with the employer;
2) an invention which does not fall under the provisions of item 1) of this Article but is
made by an employee related to the activities of his employer or with the use of material and
technical facilities, information and other conditions provided by the employer;
3) an invention made by an employee within a period of one year from the termination of
his employment, which would be an invention under items 1) or 2) of this Article if it had been
made during the employment.
CONCEPT OF THE INVENTION FROM THE WORKING RELATIONSHIP AND
THE CONCEPT OF THE EMPLOYEE
ARTICLE 57
INVENTION FROM THE WORKING RELATIONSHIP IS:
1) THE INVENTION WHICH THE EMPLOYEE CREATES PERFORMING TASKS
ESTABLISHED BY AN EMPLOYING CONTRACT CONCLUDED BETWEEN
THE EMPLOYEE AND THE EMPLOYER OR WHICH HAVE BEEN CREATED
IN COMPLIANCE WITH THE SEPARATE ACT OF THE EMPLOYER
REGULATING TASKS OF THE RESERCH AND DEVELOPMENT;
2) INVENTION CREATED DURING THE DURATION OF THE WORKING
CONTRACT OR IN THE PERIOD OF ONE YEAR FROM THE DATE OF THE
TERMINATION OF THE CONTRACT, IF THAT INVENTION HAS BEEN
CREATED IN CONNECTION WITH THE ACTIVITIES OF THE EMPLOYER OR
THE USE OF THE MATERIAL AND TECHNICAL FACILITIES,
INFORMATION AND OTHER WORKING CONDITIONS SECURED BY THE
EMPLOYER, OR CREATED AS THE RESULT OF THE PROFESIONAL
TRAINING THAT THE EMPLOYER SECURED FOR THE EMPLOYEE.
THE EMPLOYER IS THE NATURAL PERSON PERFORMING THE WORK FOR
THE EMPLOYEE ON THE BASIS OF THE WORKING CONTRACT.
Employer's Right to Protection of Invention Made in the Course of Employment
Article 58
29
The right to the protection of an invention pursuant to Article 57, item 1) shall belong to
the employer, unless otherwise provided by contract between the inventor and employer.
If an invention made in the course of employment has been protected in the name of the
employer, the inventor shall have moral rights related to the invention and shall be entitled to
remuneration depending on the effects of the commercial use of the invention.
The right to remuneration referred to in paragraph 2 of this Article shall belong to the
inventor even if the employer assigns his rights or license to the third party for the use of the
protected invention.
Employee's Right to Protection of Invention Made in the Course of Employment
Article 59
The right to protection of an invention under Article 57, item 2) shall belong to the
employee provided that the employer is entitled to commercial use of the invention and is
obliged to pay the employee remuneration in accordance with a contract concluded with regard
to the specific invention.
Notwithstanding the provisions of paragraph 1 of this Article, if the invention includes
any trade secret of the employer for whom the inventor works, that employer shall be entitled to
prohibit the disclosure of the invention, but shall be required to pay remuneration to the
employee and the employee shall not be entitled to a protection of invention.
Remuneration to the Employee
Article 60
Criteria for determining the amount of remuneration and the method and time of payment
shall be established by a general act or a labour agreement between the employer and the
employee or by a special agreement concluded between the employer and employee with regard
to the specific invention.
In case of dispute regarding the amount, method and time of payment of the
remuneration, the court shall decide, on request of the inventor or employer taking into account
the extent to which the invention contributed to the increase of profits or savings within the
enterprise.
The employee cannot waive his right to remuneration in advance.
IN THE CASE THAT THERE IS NO ACT FROM PARAGRAPH 1 OF THIS
ARTICLE DETERMINING THE COMPENSATION TO THE EMPLOYEE, THE
COMPENSATION IS DETERMINED IN EVERY INDIVIDUAL CASE TAKING INTO
CONSIDERATION :
1) THE ECONOMIC AND OTHER CONTRIBUTIONS COMING OUT OF THE
UTILIZATION OF THE INVENTION BY THE EMPLOYER OR THE THIRD
PARTIES, WITH THE AGREEMENT OF THE EMPLOYEE;
2) CONTRIBUTION OF THE EMPLOYER IN THE CREATION OF THE
INVENTION; IN PARTICULAR FACILITIES THAT HAVE BEEN PLACED AT
THE DISPOSAL OF THE EMPLOYEE;
30
3) INDIVIDUAL CONTRIBUTION OF EVERY INVENTOR, IN THE CASE WHEN
THE INVENTION HAS BEEN CREATED BY MORE EMPLOYEES.
THE COMPETENT COURT, AT THE REQUEST OF THE EMPLOYER OR THE
EMPLOYEE, DECIDES ON THE AMOUNT AND MANNER OF PAYMENT OF
COMPENSATION IN THE CASE WHEN THERE IS NO AGREEMENT
BETWEEN THE EMPLOYER AND THE EMPLOYEE WITH REGARD TO THE
COMPENSATION.
Acting of Employee
Article 61
Employee who comes up with an invention in the course of employment shall be required
to submit a written report to the employer immediately upon the creation of the invention,
informing him thereof.
THE REPORT FROM PARAGRAPH 1 OF THIS ARTICLE CONTAINS:
1) NAME AND SURNAME OF THE INVENTOR;
2) COMPLETE AND PRECISE DESCRIPTION OF THE INVENTION WITH THE
SPECIAL EMPHASIS OF THE NOVEL TECHNICAL SOLUTION, AS WELL AS
THE DRAWING IF NECESSARY FOR THE UNDERSTANDING;
3) BEST WAY OF THE UTILIZATION OF THE INVENTION;
4) DATA ON THE BUSINESS OR SPECIAL WORKING TASK ON WHICH THE
EMPLOYEE WAS ENGAGED AT THE MOMENT OF THE CREATION OF THE
INVENTION OR THE CONCLUDED RESEARCH CONTRACT;
5) MANNER OF COMING TO THE INVENTION (EXPERIMENTS, ETC.)
6) DATA ON THE FACILITIES OF THE EMPLOYER THAT THE EMPLOYEE
USED IN THE PROCESS OF CREATION OF THE INVENTION;
7) NAMES AND CREATIVE CONTRIBUTION OF THE COLLABORATORES, IF
ANY.
EMPLOYER CERTIFIES, ON THE COPY OF THE REPORT FROM
PARAGRAPH 1 OF THIS ARTICLE, THE RECEPTION OF THE REPORT WITH
THE INITIAL DATE OF THE RECEPTION.
If the report referred to in paragraph 1 of this Article does not contain the prescribed
elements, the employer shall set an appropriate time limit for the employee to remedy
deficiencies thereof.
The competent authority shall prescribe the particulars of the content of the report
referred to in paragraph 1 this Article.
Notification to Employee
Article 62
Within a period of two months from the receipt of the report complied with the formal
requirements referred to in Article 61 of this Law, the employer shall be required to notify the
employee in writing whether he considers the invention to be an invention referred to in Article
57, items 1) and 2) of this Law.
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If the employee fails to deliver the report referred to in Article 61 of this Law to the
employer, the time limit under paragraph 1 of this Article shall start from the date on which the
employer gained knowledge of the invention.
BEHAVIOUR OF THE EMPLOYER
ARTICLE 62
IN THE TIME LIMIT OF SIX MONTHS FROM THE RECEIPT OF THE FORMALLY
CORRECT REPORT FROM THE ARTICLE 61 OF THIS LAW, THE EMPLOYER HAS THE
OBLIGATION TO INFORM THE EMPLOYEE IN WRITING IF HE CONSIDERS THAT
THE INVENTION BELONGS TO THE GROUP OF INVENTIONS FROM ARTICLE 57 OF
THIS LAW.
IF THE EMPLOYEE OMITS TO GIVE TO THE EMPLOYER THE REPORT IN THE
MEANING OF THE ARTICLE 61 OF THIS LAW, TIME LIMIT FROM PARAGRAPH 1 OF
THIS ARTICLE BEGINS FROM THE DATE WHEN THE EMPLOYER ACQUIRED
KNOWLEDGE ABOUT THE INVENTION.
RIGHT FOR THE PROTECTION OF THE INVENTION CREATED BY THE
EMPLOYEE, WHICH DOES NOT BELONG TO THE CATEGORY OF THE INVENTIONS
FROM PARAGRAPH 57 OF THIS LAW, BELONGS TO THE EMPLOYEE.
THE COMPETENT COURT DECIDES IF THE INVENTION BELONGS TO THE
CATEGORY OF THE INVENTIONS FROM PARAGRAPH 57 OF THIS LAW IN THE CASE
WHEN THERE IS NO AGREEMENT BETWEEN THE EMPLOYER AND THE EMPLOYEE
WITH REGARD TO THE INVENTION.
Acts of Employer and Employee after the Notification
Article 63
When dealing with an invention referred to in Article 57, item 1) of this Law, the
employer shall be required to inform the employee in the notification referred to in Article 62
paragraph 1 of this Law whether he shall file an application.
If the employer informs the employee, that he shall file an application, referred to in
paragraph 1 of this Article, he shall file an application within six months from the date of the
receipt of the notification referred to in Article 62 paragraph 1 of this Law and be required to
inform the inventor of the content of the application prior to its filing, of all actions taken by the
competent authority in the examination of the application and of the content of all documents
filed with the competent authority prior to their filing, and the inventor shall be required to
provide the employer with all information needed in the invention grant procedure.
If the employer does not wish to file an application and assess that the invention contains
no trade secrets within the meaning of Article 59 paragraph 2 of this Law, he shall notify the
inventor in writing, within the time limit referred to in Article 62 paragraph 1 of this Law, who
shall be entitled to protect such invention in his own name.
If the employer does not file an application within time limit referred to in paragraph 2 of
this Article and assesses that the invention contains no trade secrets within the meaning of
Article 59 paragraph 2 of this Law, he shall notify the inventor in writing, without delay, and the
inventor shall be entitled to protect such invention in his own name.
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If the employer assesses that the invention contains trade secrets and decides not to file
an application, he shall notify, within the time limit referred to in Article 62. paragraph 1 of this
Law, the inventor in writing.
In the case referred to in paragraph 5 of this Article the employee shall not be entitled to
protect such invention but he shall be entitled to remuneration from the employer.
If the employer decides to abandon the filed application or to waive the granted right, he
shall notify the inventor in writing and shall assign to him rights arising from the application or
the granted right.
In the case of failure to observe the time limit provided in Article 62 paragraph 1 of this
Law, the inventor shall be entitled to protect the invention in his own name.
An employee who makes an invention, pursuant to Article 57, paragraph 1, item 2) of this
Law, cannot file an application with the competent authority before he receives the notification
referred to in Article 62 of this Law from the employer or before the expiry of the time limit for
such notification.
If the employee, referred to in paragraph 9 of this Article, decides to abandon a filed
application, he shall notify the employer in writing and shall assign to him rights arising from the
application.
ARTICLE 63
WITH REGARD TO THE INVENTION FROM PARAGRAPH 57 OF THIS LAW,
THE EMPLOYER HAS THE OBLIGATION, IN THE INFORMATION ISSUED IN
COMPLIANCE WITH ARTICLE 62, PARAGRAPH 1 OF THIS LAW, TO INFORM THE
EMPLOYEE THAT HE INTENDS TO FILE THE APPLICATION.
IF THE EMPLOYEE INFORMS THE EMPLOYER, IN THE MEANING OF
PARAGRAPH 1 OF THIS ARTICLE, THAT HE WILL FILE AN APPLICATION, HE HAS
THE OBLIGATION TO FILE AN APPLICATION IN THE REASONABLE TIME LIMIT.
IF THE EMPLOYER DOES NOT WISH TO FILE AN APPLICATION, AND HE
ESTIMATES THAT THE INVENTION DOES NOT INCLUDE ONE OF HIS TRADE
SECRETS, HE MUST, IN THE TIME LIMIT FROM ARTICLE 62, PARAGRAPH 1 OF THIS
LAW, INFORM THE EMPLOYEE ABOUT IT IN WRITING, WHO HAS A RIGHT TO
PROTECT THE MENTIONED INVENTION IN HIS OWN NAME, IF NOT OTHERWISE
AGREED BETWEEN THE EMPLOYER AND THE EMPLOYEE.
IN THE CASE FROM PARAGRAPHS 2 AND 3 OF THIS ARTICLE, THE
EMPLOYER AND THE EMPLOYEE HAVE THE OBLIGATION TO SECURE ALL THE
NECESSARY STATEMENTS AND DOCUMENTS FOR THE FILING OF THE
APPLICATION ON THE TERRITORY OF THE REPUBLIC OF SERBIA AND/OR
ABROAD IN COMPLIANCE WITH THE PROVISIONS REGULATING THE PROTECTION
OF INVENTIONS.
IN THE CASE FROM PARAGRAPHS 2 AND 3 FROM THIS ARTICLE, THE
EMPLOYER AND THE EMPLOYEE HAVE THE OBLIGATION TO MUTUALLY INFORM
ONE ANOTHER IN WRITING ABOUT THE CONTENTS OF ALL FILINGS AND ALL THE
ACTIONTOS UNDERTAKEN WITH REGARD TO THE PROTECTION OF INVENTION
ON THE TERRITORY OF THE REPUBLIC OF SERBIA AND/OR ABROAD.
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IF THE EMPLOYER ESTIMATES THAT THE INVENTION INCLUDES SOME OF
THE TRADE SECRETS OF THE EMPLOYER AND DECIDES THAT FOR THOSE
REASONS HE CAN NOT FILE AN APPLICATION, HE HAS THE OBLIGATION, IN THE
TIME LIMIT FROM ARTICLE 62, PARAGRAPH 1 OF THIS LAW, TO INFORM THE
EMPLOYEE IN WRITING.
IN THE CASE FROM PARAGRAPH 6 OF THIS ARTICLE, THE EMPLOYEE HAS
NO RIGHT TO THE PROTECTION OF AN INVENTION, BUT HE HAS A RIGHT TO GET
THE COMPENSATION FROM THE EMPLOYER.
THE ESTIMATION OF THE AMOUNT, MANNER OF PAYMENT AND TIME OF
PAYMENT OF THE COMPENSATION FROM THE PARAGRAPH 7 OF THIS LAW IS
SUBJECT TO THE PROVISIONS OF ARTICLE 60 OF THIS LAW.
AT THE REQUEST OF THE EMPLOYER, THE EMPLOYEE SHALL SECURE THE
TECHNICAL ASSISTANCE FOR THE OBTAINING OF PROTECTION AND
UTILIZATION OF INVENTION CREATED DURING THE EMPLOYMENT.
Employer's Right to Obtain an Exclusive License
Article 64
With regard to the use of an invention protected in the name of the inventor, the employer
is obliged to state, within a period of six months from the receipt of the admissible report on the
invention under Article 61 of this Law, whether he is interested in obtaining an exclusive license
from the inventor.
Until the expiry of the time limit referred to in paragraph 1 of this Article, the inventor
shall not be entitled to assign the right to the invention to a third party or to license the use of the
invention.
Use of an Invention Made in the Course of Employment
Article 65
The use of an invention made in the course of employment cannot be initiated before the
regulation of remuneration issue under Article 60 of this Law is settled or before the competent
court takes a final decision.
In the case of commercial use of the invention under the Article 63 paragraphs 3, 4 and 5
of this Law, Articles 59 and 64 of this Law, shall apply accordingly.
Requirement of Secrecy
Article 66
The employer and inventor shall be required to maintain the secrecy of an invention made
within the course of employment until the publication of the patent application or granted petty
patent or until the invention becomes available for public inspection in some other manner.
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If the employer displays justifiable interest in the invention not being published, the
obligation of the employee to keep the secret shall continue upon the termination of his
employment with that employer.
OBLIGATION OF KEEPING A BUSINESS SECRET
ARTICLE 66
WITH REGARD TO THE INVENTION WHICH HAS BEEN CREATED IN THE
EMPLOYMENT RELATIONSHIP, EMPLOYER AND EMPLOYEE HAVE THE
OBLIGATION DURING THE COMMUNICATION WITH THIRD PERSONS TO ACT IN
COMPLIANCE WITH THE LAW REGULATING THE TRADE SECRET TILL THE
PATENT APPLICATION OR GRANTED PETTY PATENT GET PUBLISHED OR THE
INVENTION BECOMES ACCESSIBLE TO THE PUBLIC IN SOME OTHER MANNER.
IF THE EMPLOYER EMPHASIZES THE WELL GROUNDED INTEREST THAT
THE INVENTION SHOULD NOT BECOME ACCESSIBLE TO THE PUBLIC, THE
OBLIGATION OF THE EMPLOYEE TO PROTECT A BUSINESS SECRET LASTS EVEN
AFTER THE TERMINATION OF THE EMPLOMENT RELATIONSHIP WITH THAT
EMPLOYER.
X PROCEDURE FOR THE PROTECTION OF AN INVENTION
1. Common Provisions
Legal Protection of an Invention
Article 67
The legal protection of an invention shall be realized within the course of an
administrative procedure conducted by the competent authority.
The decisions of the competent authority from paragraph 1 of this Article may be
appealed with the government within 15 days from the receipt of the decision, unless this Law
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.
Making Application Available to the Public
Article 68
During the invention grant procedure, the competent authority shall not make an
application available for inspection to any person or body, before the application has been
published, except in the cases referred to in Article 52 paragraph 1 of this Law.
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The competent authority shall make available for inspection applications referred to in
paragraph 1 of this Article in the presence of an official on written request of the applicant or the
person having his authorization.
Upon the written request of the applicant or authorised person, subject to submission of
the proof of the prescribed costs, the competent authority shall make available the copies of the
documents and the files of patent applications referred to in paragraph 1 of this Article.
Fees
Article 69
The administrative procedure before the competent authority shall be subject to payment
of Republic administrative fees and the proof of payment is furnished to the competent body.
Registers
Article 70
The competent authority shall keep Register of Patents and Register of Petty Patents.
The Register of Patents shall include: the patent registration number; filing date of the
application; title of the invention; International Patent Classification; Priority date of the
application; data on the applicant; the patent holder, the inventor or inventors statement that he
does not want to be mentioned in the application, data on the representative; publication number
of the application and the number of the Official Gazette; data of the supplement publication of
the search report and the number of the Official Gazette; data referring to changes in the patent
application or granted patent (assignment, license, pledge and etc); patent registration number,
publication date of the granted patent and number of the Official Gazette; data on the
Supplementary Protection Certificates as well as the information on the outcome regarding the
submitted application
In addition to data referred to in paragraph 2 of this Article, for International Patent
Applications, the Patent Register shall include number and date of filing of the International
Patent Application and the number and date of the International Publication of an International
Patent Application.
In addition to data referred to in paragraph 2 and 3 of this Article for an Extended
European patent and a European Patent, the Patent Register shall include number of request and
date of submitting the request for entry into the Register.
Register of Petty Patents shall include: the petty patent registration number; filing date of
the application; title of the invention; International Patent Classification; priority date of the
application; data on the applicant; petty patent holder of rights; the inventor or inventor statement
that he does not want to be mentioned in the application; data on the representative; data on
changes in the petty patent application or granted petty patent (assignment, license, pledge, etc.);
petty patent registration number; publication date of the granted petty patent; and number of the
Official Gazette; data on certificate examination; as well as information on the outcome of the
submitted applications.
Publication in the Official Gazette
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Article 71
Particulars prescribed by this Law and by regulations under this Law, shall be published
in the Official Gazette issued by the competent authority.
Availability of the Documentation and Information
Article 72
The Registers referred to in Article 70 of this Law shall be open to the public and any
interested parties may have access to them.
The files of published patent applications, granted patents, petty patents and
Supplementary Protection Certificates may be inspected by any person upon the oral or written
request, in the presence of an official.
Upon the written request of an interested party, payment of the prescribed fee and costs
and submission of the proof of payment, the competent authority shall issue the copies of the
documents and the corresponding attestations and certificates with respect to facts contained in
the official records kept by the authority.
The competent authority is obliged to make its documentation and information on the
state of the art and on rights concerning the protection of inventions available to any person.
Reestablishment of Rights
Article 73
If, in spite of having taken all due care required by given circumstances, the applicant or
right holder fails to perform any procedural step within the prescribed time limit, resulting in the
loss of filing date of the application, rights arising from the application or granted right as a legal
consequence of such omission, the competent authority shall render decision to allow the
reestablishment of such rights if the applicant or right holder, within the prescribed period:
1) files the request for the reestablishment of rights and completes the all omitted acts;
2) states the reasons that have prevented the performance of the omitted acts in due time
justifying them;
3) submits proof of Republic administrative fees.
If the competent authority permits the reestablishment of rights the decision concerning
the missing deadline shall be revoked.
The request for the reestablishment of rights shall be filed within three months from the
date on which grounds for the omission ceased to exist or, if the person who requires
reestablishment of rights learned about the omission subsequently, from the date on which he
found out about the omission, but not later than 12 months from the date of non-observance of
the time limit or, if the request relates to the non-payment of the maintenance fee at least 12
months from the date of expiry of the additional time limit for payment referred to in Article 40,
paragraph 5 of this Law.
The competent authority shall pass a decision rejecting the request for the reestablishment
of rights, if such request is filed after expiration of the time limit prescribed in paragraph 2 of
this Article.
If the proposal for the reinstatement of rights does not meet the requirements in terms of
content or if they are not the conditions from paragraph 1, items 1) and 3) of this Article, the
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competent authority shall invite the applicant in writing to remedy the mistake within a
reasonable time limit.
I
f the requester fails to comply with the conditions stipulated in paragraph 5 of this Article, the
competent authority shall take the conclusion, rejecting the request for the reestablishment of
rights.
The request for the reestablishment of rights cannot be filed for non-observance of time
limits for the performance of the following procedural acts:
1) filing of the request under paragraph 1 of this Article;
2) filing of the request for the extension of a time limit;
3) filing of the request for continued processing;
4) all procedural steps involving several parties before the competent authority.
5) filing of the request for restoration of priority right and request for correction or
addition of priority claim.
The competent authority shall render a conclusion rejecting the request for the
reestablishment of rights if such request is filed for non-observance of time limits for the
performance of the procedural acts referred to in paragraph 7 of this Article.
The competent authority cannot refuse the request referred to in paragraph 1 of this
Article, fully or partially, without prior notification to the applicant specifying grounds for
refusal and inviting him to file his observations in writing within a period of 2 months.
Any person acting in good faith, who has, in the course of production, started exploiting
an invention which is the subject matter of a published application, or has made all necessary
preparations to initiate such exploitation within the period between the loss of rights and the
publication of the notification on the reestablishment of rights, shall be entitled to continue
exploiting the invention for production purposes only in his own production plant or in the plant
of any other person for his own needs.
The data on the reestablishment of rights shall be published in the Official Gazette of the
competent authority.
Continued Processing
Article 74
If the applicant or right holder has failed to comply with a time limit set by the competent
authority for an action in a procedure before the competent authority, in respect of an application
or a granted right referred to in Article 107, paragraph 5 and Article 149, paragraph 9 of this
Law, he may file a request for continued procedure with respect to the application or granted
right, and the competent authority shall pass decision to allow the continuation of procedure,
provided that applicant or right holder:
1) files the request for continued processing and completes the omitted acts within
prescribed time limit;
2) submits proof of payment of the Republic administrative fee.
If the competent authority permits the continuation of procedure, it annuls the decision
with regard to the missed deadline.
Request for continued procedure may be filed within three months from the receipt of the
notice from the competent authority that the applicant or the right holder did not comply with the
38
time limit set by the competent authority or the receipt of the information on the losing of right
as the immediate legal consequence of the expiration of the time limit.
The request for the continuation of the procedure filed after the expiry of the time limit
from paragraph 3 of this Article shall be rejected by the competent authority.
If the omitted actions have not been complied with within the time limit referred to in
paragraph 3 of this Article, the competent authority shall pass the decision rejecting the request
for continuation of procedure.
If the proposal for continuation of procedure does not meet the requirements in terms of
content or if they are not the conditions from paragraph 1 of this Article, the competent authority
shall invite the applicant, in writing to correct the mistakes within a reasonable time limit. If the
requester fails to comply with the conditions referred to in paragraph 6 of this Article, the
competent authority shall pass the decision rejecting the request for continuation of processing.
The request for continued procedure cannot be filed if time limit is omitted:
1) as referred to in paragraph 3 of this Article;
2) for filing of the request for restoration of priority right and request for correction or
addition of claim for priority right;
3) for filing of the request for the restauration of right referred to in Article 73 of this
Law:
4) for filing of another or any subsequent request for the extension of a time limit;
5) for all procedural steps involving several parties before the competent authority.
The competent authority shall pass a decision rejecting the request for continued
procedure if such request is filed for non-observance of time limits for the performance of the
procedural acts referred to in paragraph 8 of this Article.
If the competent authority has approved the request referred to in paragraph 1 of this
Article, the provisions of Article 73 paragraph 10 of this Law shall apply accordingly.
Change of Name and Address of the Applicant and Right Holder
Article 75
Upon the request of a right holder or applicant, the competent authority shall pass a
decision on the entry of change of the name and address of the right holder or applicant into the
appropriate Register of the competent authority, as well as other changes.
The request of the entry the change referred to in paragraph 1 of this Article into the
Register shall include, in particular: the patent or petty patent registration number, the
application number, data on the right holder or the applicant, and designation of the kind of
change.
On the basis of a single request, under paragraph 1 of this Article, for the entry of the
change of name and address of the applicant and right holder, into the Register, this change may
be requested in respect of several patents or petty patents or several applications, provided the
registration numbers or application numbers have been designated in the request.
If the request for the entry of change of name and address of the right holder and
applicant into the Register does not include the prescribed data, the competent authority shall
39
invite in writing the person who required the registration to remedy the deficiencies within two
months from the date of receiving the notification.
Upon a reasoned request of the person who required the entry into the Register, upon
payment of the Republic administrative fee and submission of the proof of payment of these fees,
the competent authority shall extend the time limit referred to in paragraph 4 of this Article, for a
time period considered to be justified, but not exceeding two months.
If the applicant fails to proceed as requested within the set time limit, the competent
authority shall pass a decision rejecting the request.
If the applicant or right holder who is a national of the Republic of Serbia changes the
address so that it is not in the territory of the Republic of Serbia, in the request for the entry of
change of address into the Register, he shall appoint a representative for correspondence with
address on the territory of the Republic of Serbia.
If a national of the Republic of Serbia does not appoint representative for correspondence
in accordance with the provisions of paragraph 7 of this Article, the competent authority shall
notify him in writing to appoint a representative for correspondence and warn him about legal
consequences of failure to comply with such requirement referred to in notification, within three
months from the date of receiving the notification.
If national of the Republic of Serbia does not comply with the notification of the
authority in paragraph 8 of this Article, the competent authority shall specify delivery by the
public notice on the notice board by the competent authority.
The right to submit the request for the change of names and addresses of the inventors
belongs to the applicant, holder of right and inventor.
Correction of Errors in the Submissions and Formal Documents
Article 76
Language errors, typing errors, as well as any other similar deficiencies in the
submissions and formal documents can be corrected on the basis of a written request of the
applicant or right holder or ex officio.
2. Initiation of the Procedure for the Protection of an Invention
Filing of an Application
Article 77
The procedure for the protection of an invention shall be initiated by the filing of an
application with the competent authority.
Application for the protection of an invention shall be filed in the Serbian language.
The application for the protection of an invention can also be filed in the foreign
language, providing that the applicant files its translation in the Serbian language.
40
If the applicant fails to submit a translation of the application referred to in paragraph 3 of
this Article the competent authority shall invite the applicant to submit the translation within two
months from the date of receipt of the invitation.
If the applicant fails to submit the translation of the application within time limit referred
to in paragraph 4 of this Article the competent authority shall pass decision rejecting the
application.
Applications for the protection of inventions abroad shall also be filed with the competent
authority, if it is thus stipulated by international agreements.
Legal protection of inventions in the Republic of Serbia shall also be granted in respect
of applications filed abroad, if it is thus stipulated by international agreements. An application
filed in this manner shall have the same effects as a national application, unless otherwise
stipulated by appropriate international agreements.
The competent authority shall prescribe the particulars concerning the filing of the
application for the protection of invention.
Unity of invention
Article 78
Protection only for one invention may be required with a single application.
A single patent application may be filed for a number of inventions only if the inventions
are mutually so linked as to form a single general inventive concept.
Content of the Application for the Protection of an Invention
Article 79
An application for protection of an invention shall contain:
1) request for the grant of right;
2) description of the invention;
3) one or more patent claims for the protection of an invention;
4) drawing referred to in the description and/or claims;
5) an abstract.
Request for the Grant of Right
Article 80
A request for the grant of right shall contain an explicit indication that a patent or petty
patent is being sought, data concerning the applicant, data concerning the inventor or a statement
to the effect that the inventor does not wish to be mentioned in the application, and the title of the
41
invention which shall clearly and concisely state the technical designation of the invention and
shall exclude all fictional or commercial names, trademarks, the names of codes, abbreviations
for common products etc, request for information concerning the priority date, application
number and the country where the application has been filed, which serves as the basis of
priority, details of exhibition at the international exhibition if the invention was exhibited,
number of the basic application, in case of submitted divisional application, number of the first
application or the first patent, in case of submitted patent of addition, information relating to
other elements of the application (page number of the description of the invention, the number of
claims and the page number of drawings), signature of the applicant.
The competent authority shall not investigate whether the applicant is entitled to file the
application for the protection of an invention.
If the applicant is not the inventor or is not the sole inventor, he shall be required to cite
the names of all the inventors in the application and to file a statement indicating the ground of
right to file the application.
If the inventor does not wish his name mentioned in the request for the grant of right,
Registers and in other documents stipulated by this Law, the applicant shall be required to
furnish the competent authority with the inventor’s written statement to that effect.
During the grant procedure and during the entire term of the patent or petty patent, the
inventor may withdraw his statement that he does not wish his name mentioned in the
application, Registers and other documents stipulated by this Law.
The competent authority shall define more closely the attachments to be filed with
request for the grant of right.
Prohibited Content in the Application
Article 81
The application cannot contain:
1) content or drawings contrary to law or moral;
2) statements that diminish the products or procedures of any third party or quality and
importance of the application or patent, or petty patent of that person, provided that the
comparison with the state of the art, as such, is not considered diminishing;
3) statements that are obviously not important or necessary.
If the application has content referred to in paragraph 1 of this Article, the competent
authority shall omit them during publication.
Description of the Invention
Article 82
An invention shall be described in a manner that is clear and complete enough for the
invention to be carried out by a person skilled in the art.
Where an invention involves the use of or concerns biological material which is not
available to the public and which cannot be described in a patent application in such a manner as
42
to enable the invention to be reproduced by a person skilled in the art, the description shall be
considered inadequate for the purposes of paragraph 1 of this Article unless:
1) the biological material has been deposited no later than the date on which the patent
application was filed with the recognized depositary institution;
2) the application as filed contains such relevant information on the characteristics of the
biological material deposited on the filing date of the application as is available to the
applicant;
3) the patent application states the name and address of the depository institution and the
accession number under which the biological material has been deposited and the
date of the depositing, The information on the deposit may be submitted
subsequently till the end of the technical preparations for publication of the patent
application or till the date of the submitting of the request for early publication.
Competent depository institution referred to in paragraph 2 of this Article shall mean an
institution designated in accordance with the provisions the Budapest Treaty on the International
Recognition of the Deposits of Microorganisms for the Purpose of Patenting. (Official Gazette
SFRY, International Treaties no 3/93)
The competent authority prescribes the particulars and manner of description of the
invention, conditions for issuing samples of defined biological material, re-depositing of
biological materials, and the way of furnishing depositing of sequences disclosed in the
description of the invention.
Patent Claims
Article 83
Patent claims, which shall be clear, concise and fully supported by the description of the
invention, define the subject matter for which protection is sought.
The competent authority shall closely prescribe the particulars of the form and content of
patent claims referred to in paragraph 1 of this Article.
Abstract
Article 84
An abstract shall briefly set out the essential content of the invention which shall serve
exclusively to provide technical information and may not be used for any other purpose, in
particular for interpreting the scope of the protection sought or applying of Article 10, paragraph
2, item 2).
The competent authority is authorized to change the abstract, if it deems necessary.
The competent authority shall prescribe the content of the abstract.
Drawing
Article 85
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The drawing is the collection of all the drawings.
The competent authority shall prescribe the image and characteristics of the drawing.
Content of the Application for the Protection of an Invention Required for the Accordance of
Filing Date
Article 86
In order to be accorded a filing date, an application filed with the competent authority
shall contain on such a date:
1) an indication that a grant of right is being sought;
2) the name and surname or business name and address of the applicant;
3) a description of the invention or reference to a previously filed application.
The competent authority shall prescribe the particulars of the manner of referring to a
previously filed application.
3. Special Types of Applications
Divisional Patent Application
Article 87
If an application which has been accorded a filing date referring to more inventions
which are not mutually so linked as to form a single general inventive concept (the original
application), the applicant may at his own initiative or upon request of the competent authority,
extract from it one or more inventions and for each of them file separate application (divisional
application).
Divisional application may be filed until the termination of the proceedings concerning
the original application.
The subject matter of the divisional application may not extend beyond the content of the
original application, as filed and then it shall retain the filing date of the original application and,
where appropriate, shall enjoy the priority right.
Тhe filing fee and search report based on the subject of the invention shall be paid for
each divisional application within one month of its filing and the proof of payment shall be
submitted to the competent authority.
If the proof of payment referred to in paragraph 4 of this Article fail to be submitted to
the competent authority in a time the competent authority shall pass decision rejecting the
application.
Application for Patents of Addition
Article 88
If an applicant or owner of any patent supplements or perfects the invention which is
subject matter of the original application or of the basic patent, he may file an application for a
44
patent of addition to cover the supplements or additions, that application shall not retain the
filing date of the basic application.
An application for a patent of addition may be filed only upon the basic application or
patent.
Waiver of the basic patent application shall lead to the termination of procedure
concerning the application for the patent of addition. If the procedure concerning the basic
application is terminated for any other reason, the applicant shall be entitled to file a request with
the competent authority for the conversion of the application for the patent of addition into a
basic application, within a period of three months from the date on which the decision to
termination of procedure has become final.
If the applicant does not submit in the proposed time request that the application for the
patent of addition should become basic patent, competent authority shall suspend the procedure
referring to the application for the patent of addition.
A patent of addition may be obtained on the basis of the additional application, but may
not be granted before the grant of the basic patent.
If the basic patent ceases to exist or if the decision on its grant is revoked, the patent
owner shall be entitled to file a request for the conversion of the patent of addition into a basic
patent with the competent authority, within a period of three months from the date of cessation of
the patent or from the date on which the appropriate decision became final.
If the applicant does not file the request in the proposed time limit, request that the patent
of addition should become basic patent, should be suspended by the competent authority in the
procedure referring to the application for the patent of addition.
In the case when there is more than one application for the patent of addition or there are
more patents of addition, only one shall be converted into a basic application or patent, while the
rest, as additional, shall be attached to the basic application or patent, at the request of the
applicant or patent owner within the time limit specified in paragraph 6 of this Article.
4. Priority
Requirements for the Grant of Priority Right
Article 89
Any person who has duly filed an application for any form of protection of an invention
in any Member State of the Paris Union for the Protection of Industrial Property or in any
Member State of the World Trade Organization, or his successor in title, shall be granted priority
in the Republic of Serbia from the date of filing of the first application, provided that he files a
claim to that effect with the competent authority with the filing of an application for the
protection of that invention, and that the application for the same invention is filed with the
competent authority within twelve months from the filing date of the first application.
A “duly filed” application referred to in paragraph 1) of this Article shall be considered to
be an application that has been accorded a filing date under the national legislation of Member
State of the Paris Union or member of the WTO, or under international agreements concluded
between such states, regardless of the eventual legal outcome of the application.
Any subsequent application in respect of the same subject-matter as a previous first
application, filed in the same State, shall be considered as the first application for the purposes of
determining priority, provided that, at the date of filing of the subsequent application, the
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previous application has been withdrawn, abandoned or refused, without being open to public
inspection and without being the basis of some right, and has not served as a basis for claiming a
right of priority.
In the case referred to in paragraph 3 of this Article, on the basis of the first application
request for the grant of priority right can not be demanded.
Priority Claim
Article 90
An applicant who has filed an application for a protection of an invention and who
intends to take advantage of the priority of a previous application in the Republic of Serbia shall
file with the competent authority:
1) request for the priority right containing essential data concerning the first application
claiming priority (application number and filing date, a Member State of the Paris Union or
WTO in or for which the application was filed) not later than up to the expiration of two months
from the date of filing the application in the Republic of Serbia;
2) a copy of the first application certified by the competent authority of the Member State
of the Paris Union or WTO in which or for which it was filed, not later than up to the expiration
of the period of three months from the filing of the application in the Republic of Serbia or 16
months from the earliest priority date claimed, whichever period expires first.
When the first application is not in the Serbian language, and when it is relevant for the
determination of patentability of the subject matter of an invention, the competent authority shall
invite the applicant to furnish a translation of the first application into the Serbian language
within two months from the date of the receipt of the invitation.
The competent authority shall prescribe the particulars of the request under paragraph 1
of this Article, and shall determine the attachments to be filed with the request, and their content.
Multiple Priority Claim
Article 91
The applicant may, subject to the requirements referred to in Article 89 of this Law,
claim multiple priorities on the basis of several earlier applications filed in one or more Member
States of the Paris Union, Member States of the WTO, or international organization where such
an application has been filed.
Where multiple priorities have been claimed, time limits which run from the date of
priority, pursuant to this Law, shall run from the earliest date of multiple priority.
Request for the Restoration of the Priority Right
Article 92
If a patent application claiming priority of the first application is filed on the date, which
is later than the date on which the priority period referred to in Article 89 paragraph 1 of this
Law expired, the applicant may file a request for the restoration of the priority right.
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The request referred to in paragraph 1 of this Article may be filed within two months
from the date of expiration of the priority period, and before technical preparations for
publication of the subsequent application have been completed.
The competent authority shall pass a decision to adopt a request for the restoration of the
priority right, provided that the applicant:
1) states the reasons and files the evidence in support of the reasons for the failure to
comply with the priority period in spite of due care taken as required, due to the circumstances
having occurred;
2) pays the prescribed fees and submits of the proof of payment to the competent
authority.
The competent authority shall pass a decision rejecting the request for restoration of the
priority right, if such request is filed after expiration of the time limit prescribed in paragraph 2
of this Article.
If the requester does not submit proof of payment of prescribed fees mentioned in
paragraph 3 item 2) of this Article, the competent authority shall invite him in writing to submit
such proofs within time limit prescribed by the competent authority.
If the requester fails to submit the proof of payment of prescribed fees within set time
limit mentioned in paragraph 5 of this Article, the competent authority shall pass a decision
rejecting the request.
The competent authority cannot refuse the request referred to in paragraph 1 of this
Article, fully or partially, without prior notification to the applicant specifying grounds for
refusal and inviting him to file his observations within a period of 2 months.
If the requester fails to submit his observations thereof within time limit under paragraph
7 of this Article or if he submits his observations, but competent authority considers that priority
right cannot be restored, the competent authority shall pass the decision that such request shall be
refused fully or partially.
The competent authority shall prescribe the particulars of the content of the request,
requirements and procedure under paragraph 1 of this Article, and shall determine the
attachments to be filed with the request and their content.
Request for the Correction or Addition of a Request for the Grant of the Priority Right
Article 93
An applicant may file a request for the correction or addition of a request for the grant of
a priority claim within a time limit of sixteen months from the priority date or, if the correction
or addition would cause a change in the priority date, sixteen months from the priority date as so
changed, whichever sixteen-month period expires first, provided that such a request is filed
within four months from the filing date of the patent application.
In addition to the request referred to in paragraph 1 of this Article, the applicant shall pay
the prescribed fee and submit of the proof of payment.
The competent authority shall pass a decision rejecting the request for correction or
addition of the priority right, if such request is filed after expiration of the time limit prescribed
in paragraph 1 of this Article.
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If the requester does not submit proof of payment of the prescribed fees referred to in
paragraph 2 of this Article, the competent authority shall invite him in writing to submit such
proof within time limit prescribed by the competent authority.
If the requester fails to submit the proof of payment of the prescribed fees within time
limit under paragraph 4 of this Article, the competent authority shall pass a decision rejecting the
request.
Prior to refusing a request for the correction or addition of a request for the priority right,
the competent authority shall inform the applicant of the reasons why it intends to refuse the
request in whole or in part, and shall invite him to file observations on such reasons within two
months from the date of receipt of the invitation.
If the requester fails to submit his observations thereof within time limit under paragraph
6 of this Article or if he submits his observations but competent authority considers that priority
right cannot be corrected or added to, the competent authority shall take the decision that such
request shall be refused fully or partially.
If the priority date is changed due to the correction or addition of the priority claim, the
time limits shall be counted from the priority date as changed.
The competent authority shall prescribe the particulars of the content of the request,
requirements and procedure under paragraph 1 of this Article, and shall determine the
attachments to be filed with the request and their content.
Exceptions to Filing the Request for the Correction or Addition of a Request for the Grant of
Priority Right
Article 94
The request referred to in Article 93 paragraph 1 shall not be filed:
1) after the applicant has filed a request for early publication, unless such a request for
publication has been withdrawn before technical preparations for the publication of the
application have been completed;
2) if the request for urgent procedure has been made.
Features of the Invention for which Priority is Requested
Article 95
A request for one or more priorities can only refer to those elements of the invention that
have been clearly disclosed in any part of the application or applications for which priority is
requested.
If certain features of the invention for which priority is requested do not appear among
the patent claims formulated in the previous application, the condition for the grant of priority
right implies that such features can be established from all the constituent parts of the
application.
Effect of Priority Right
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Article 96
The right of priority shall produce effect which means that the priority shall be counted as
the date of filing of the patent application for the purposes of Article 10, paragraph 2, and Article
3 paragraph 5 of this Law.
5. Examination procedure
Accordance of the Date of Filing
Article 97
Upon receipt of an application, the competent authority shall examine whether it meets
the requirements laid down in Article 86 of this Law for accordance of its date of filing.
If the competent authority establishes, in a filing date according procedure, that parts of
the description or drawings referred to in the description or the claims appear to be missing, the
competent authority shall invite the applicant to file the missing parts within two months.
If the applicant files part of the description or missing drawings in the time limit of two
months from the filing date of the patent or in the time limit from paragraph 2 of this Article in
the case when the competent authority invited the applicant to furnish part of the description of
drawing, the competent authority shall accept as the date of filing of the patent application the
date when the applicant has submitted the missing part of the description or the drawing.
If the applicant furnishes part of the description or drawing that has been missing within
the time limit from paragraph 2 of this Article and if he had requested the grant of priority right
while filing the patent application, the granted filing date of patent application remains the date
when conditions have been fulfilled from the Article 86 of this Law providing that part of the
missing description or drawing has been completely contained in the previous patent application.
If the applicant fails to comply with the invitation from competent authority, within a
period specified in paragraph 2 of this Article, it shall be deemed that the applicant has not
referred at all to the to the missing part of the description or the drawings.
If the applicant corrects the deficiencies within the time limit mentioned in paragraph 2 of
this Article, the competent authority shall pass the decision that the date of receipt of the required
corrections shall be accorded as the filing date of the patent application.
Where reference is made in the application to the drawings that were not attached to the
application, the competent authority shall invite the applicant to file the drawings within a period
of two months from the date of receipt of notification. If the applicant responds accordingly, the
date on which the drawing is filed shall be treated as the filing date of the application. If the
drawings are not filed, any reference to them in the application shall be deemed not to have been
made.
An application which has been accorded a filing date shall be entered in the Register of
Patents or in the Register of Petty Patents.
If the applicant fails to act upon the invitation referred to in paragraph 2 of this Article
within the prescribed time period, the competent authority shall pass a decision rejecting the
application.
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Issuing Priority Documents
Article 98
At the request of the applicant, the competent authority shall issue a priority document.
The request for issuing a priority document shall contain, in particular: particulars of the
requester, number of the application for which the issuing of priority document is requested and
proof of fee payment for the issuing of priority document.
Priority document shall contain, in particular: particulars of the applicant, number of the
application and certification that the enclosed documents are identical to the original.
Examination as to Formal Requirements
Article 99
Once the application has been accorded a date of filing, the competent authority shall
examine whether:
1) the filing fee for the application has been paid and the proof of payment has been
submitted;
2) a valid authorization for the representative or a statement on the appointment of a
common representative has been filed, as appropriate;
3) the application contains designation of the inventor or a statement to the effect that he
does not wish to be mentioned in the application;
4) a claim for a grant of priority, satisfying all formal requirements, has been filed;
5) a statement indicating the origin of the right for filing the application has been
submitted;
6) the application has been filed pursuant to Article 5 of this Law in the case when the
applicant is a foreign national;
7) the content of the application satisfies all requirements prescribed by Article 79 of this
Law;
8) the form of the application document has been respected;
9) the drawing has been made subject to the provisions of Article 85 of this Law;
10) the abstract has been made subject to the provisions of Article 84 of this Law;
If the examination under paragraph 1 of this Article shows that the application does not
comply with the provisions of that paragraph, the competent authority shall set out the reasons
thereof in a communication to the applicant, inviting him to correct the deficiencies within a time
limit no less than two months nor more than three months.
On a reasoned request filed by the applicant, the competent authority may extend the time
limit under paragraph 2 of this Article, for a time period considered to be justified, but not
exceeding three months.
If the applicant fails to remedy the mistakes referred to in paragraph 2 of this Article,
with the exception of a statement on the appointment of a common representative, the competent
authority shall pass a decision rejecting the application.
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The competent authority shall prescribe the particulars regarding the form of the
application documents under paragraph 1 item 8) of this Article.
Search Report
Article 100
If a patent application fulfils the requirements laid down in paragraph 1 of the Article 99
of this Law, the competent authority shall invite the applicant to file the request for search report
based on the subject of the invention (hereafter: search report) and to pay the fee for drawing up
the search report within one month from the date of the receipt of the invitation.
An applicant may file request for search report before receipt of the invitation referred to
in paragraph 1 of this Article.
The competent authority shall, upon the receipt of the request and the proof of fee
payment for drawing up the search report, draw up a search report in respect of the patent
application on the basis of the patent claims, with due regard to the description and drawings and
shall forward it to the applicant.
If the competent authority establishes that the patent application does not comply with the
provisions of this Law so that it is impossible to carry out a complete search report on the basis
of all or some of the subject-matter claimed, it shall either issue a reasoned declaration to that
effect or, as far as is practicable, draw up a search report for only one part of the application or
partial search report.
The partial report shall be drawn up even when the patent application does not comply
with the requirement of unity of invention.
The declaration or the partial report referred to in paragraph 4 shall be considered, for the
purposes of subsequent proceedings, as the search report.
The competent authority shall publish the search report together with the patent
application. If the search report is not published at the same time as the application, it shall be
published separately.
If the applicant has not, within the applicable time limit, filed the request and the proof of
paying the fee for establishing the search report required under paragraph 1 of this Article, the
competent authority shall pass a decision rejecting the application.
The request under paragraph 1 of this Article can not been withdrawn.
The competent authority shall prescribe the particulars of the content of the search report.
Amendments to Pending Patent Application
Article 101
An application which has been accorded a filing date cannot eventually be amended by
means of changing or extending the subject matter for which protection is being sought.
The particulars of the content of an application may be amended prior to the taking of a
decision regarding the patent application, insofar as these amendments do not extend the subject
mater as filed.
Before receiving the search report, the applicant may not amend the description, patent
claims and drawing of an application and after receipt of the search report, the applicant may, of
his own volition, amend the description, patent claims and drawing.
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Amended patent claims may not relate to unsearched subject-matter which are not
connected with the originally claimed invention or group of inventions forming a single general
inventive concept for which initially protection has been sought.
Publication of Patent Application
Article 102
The patent application shall be published in the Official Gazette as soon as possible:
1) after the expiry of a period of eighteen months from the filing date or, if priority has
been claimed, from the expiry of the date of priority, or
2) at the request of the applicant, patent application can be published earlier.
The patent application shall be published at the same time as the patent specification
when the decision to grant the patent becomes effective before the expiry of the period referred
to in paragraph 1 item 1) of this Article.
An application shall not be published if the applicant withdraws the patent application or
if the patent application is rejected before the completion of technical preparations for its
publication.
The competent authority shall prescribe when technical preparations for the publication
of the application are considered complete and the particulars of the content of the publication of
a patent application are completed.
For every number of the Official Gazette, the competent body publishes on its Internet
page when technical preparations for the publication of the patent application are considered
completed.
Request for Substantive Examination of an Application
Article 103
The request for the substantive examination of the patent application shall be filed by the
applicant within a period of six months from the date of the publication of the search report in
the Official Gazette.
In the case of failure to observe the time limit under paragraph 1 of this Article, the
applicant may file the request for substantive examination within an extended period of 30 days
from the date of the receipt of a notification of the expiry of the time limit.
The request from paragraph 1 of this Article shall not be deemed to be filed until the
substantive examination fee has been paid and the proof of payment has been submitted.
The request referred to in paragraph 1 of this Article may not be withdrawn.
If no request under paragraph 1 of this Article has been made in due time, the competent
authority shall pass decision rejecting the application.
Substantive Examination
52
Article 104
In the course of the substantive examination of an application, the competent authority
shall examine whether the subject matter of the application:
1) constitutes an invention within the meaning of Articles 7 and 8 of this Law;
2) constitutes an invention for which, within the terms of Article 9 of this Law, patent
protection shall not be granted;
3) constitutes an invention that is, in accordance with Article 78 of this Law, relating to
unity of invention;
4) is disclosed in a manner sufficiently clear and complete pursuant to Article 82 of this
Law and satisfies all requirements under Article 83 and 85 of this Law;
5) constitutes a technical solution of a specific problem, is new in the meaning of Articles
10 and 11 of this Law, involves an inventive step as set out by Article 12 of this Law and is
susceptible to industrial application as laid down in Article 13 of this Law;
6) complies with the requirements set out in this Law as to the priority right.
The substantive examination of a patent application shall be conducted within the limits
set by the content of the patent claims.
The utility of the invention shall not be examined during the substantive examination
procedure.
An applicant, who has filed an application for the same invention also in another state,
may furnish the competent authority with a translation of the examination report issued in that
state.
If the competent authority establishes that the subject matter of an application does not
meet the requirements under paragraph 1 of this Article, it shall inform the applicant about the
results of the examination and invite him, as many times as considered necessary, to rectify any
deficiencies identified, or to comment on the reasons why patent can not be granted within a time
limit no less than two months nor more than three months.
Notification on results of the examination, under paragraph 5 of this Article, shall
especially contain a reasoned statement covering all the grounds against the grant of the patent.
After receipt of the examination report, under paragraph 5 of this Article, the applicant
may, of his own volition, amend only once the description, claims and drawings, provided that
the amendment is filed at the same time as the reply to the examination report. No further
amendment may be made without the consent of the competent authority.
On a reasoned request from the applicant, the competent authority shall extend the time
limit under paragraph 5 of this Article for a time period considered to be justified, but not
exceeding three months.
Urgent Procedure
Article 105
An application may be examined in an urgent procedure in the event of judicial
proceedings or if inspection surveillance or customs procedures have been initiated upon the
request of the court or the competent market inspection authority or the customs authority.
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In the event of litigation for infringement of a published application, the applicant may
file the request for examination of a patent application in an urgent procedure and with it
applicant shall submit:
1) request for substantive examination of patent application with proof of payment of fees
for substantive examination, if the request has not previously been submitted and
2) evidence that the court proceedings for infringement of a published application has
been terminated until the finality of the decision of the competent authority on the application.
Observations by Third Parties
Article 106
In proceedings before the competent authority, following the publication of the patent
application, any third party may present observations concerning the patentability of the
invention to which the application relates.
Person referred to in paragraph 1 of this Article shall file the observations in writing and
give the reasons covering all the grounds against the grant of the patent and such observations
may be taken into consideration by the competent authority.
The person referred to in paragraph 1 of this Article shall not be considered to be a party
in the proceedings.
Decision to Grant a Patent
Article 107
If the competent authority establishes in the substantive examination of the application
that all requirements for the grant of a patent prescribed by this Law have been satisfied, it shall
communicate to the applicant a draft of the final wording of the patent claims for adoption and
shall invite the applicant to give his approval within a period of 30 days.
If the applicant fails to submit a written statement that he approves of the wording and the
number of claims, within the prescribed time limit under paragraph 1 of this Article, the
competent authority shall take a decision to grant a patent on the basis of the final wording of the
claims as communicated for approval.
If the applicant states that he does not approve of the wording of the claims under
paragraph 1 of this Article, he shall be required to state the reasons for his disapproval and to file
an amended wording of the claims.
If the competent authority accepts the reasons or the amended wording of the claims,
referred to in paragraph 3 of this Article, it shall take the decision to grant the patent, and if it
does not, it shall notify the applicant, stating its grounds thereof, and shall take a decision to
grant the patent according to the final wording of the patent claims communicated for approval.
The decision to grant a patent shall be taken by the competent authority provided that the
proofs of payment for certificate for the granted right, costs of publication for granted right and
costs for patent specification have been submitted.
54
If the applicant fails to pay the fees and costs under paragraph 5 of this Article within the
set time limit and to submit the proof of payment, the competent authority shall pass decision
rejecting the application.
Decision to Refuse Request for the Grant of Patent
Article 108
If the competent authority establishes, on the basis of the substantive examination
conducted under Article 104 of this Law, that not all requirements for the grant of a patent have
been satisfied or that the defects identified have not been remedied, the competent authority shall
take a decision to refuse the grant of a patent.
Entry of the Granted Right into the Register
Article 109
The competent authority shall enter the prescribed data on granted right in the appropriate
Register.
Certificate of the Granted Right
Article 110
After the entry of the prescribed data on granted right, referred to in Article 109 of this
Law in the appropriate Register, the patent owner or the petty patent owner shall be issued a
certificate for the granted right, which shall contain, in particular: the patent or petty patent
registration number; data on the patent owner or the petty patent owner; data on the inventor; the
title of the invention and date of issuing of the certificate.
Certificate of the granted right shall be issued upon the payment of the prescribed fee.
The competent authority shall prescribe the particulars of the content of the certificate for
the granted right under paragraph 1 of this Article.
Publication of Grant
Article 111
Granted right entered in the appropriate Register shall be published in the Official
Gazette.
The decision to grant a patent or a petty patent shall have effect from the date of
publication of the grant.
The Official Gazette shall publish the following data, in particular: the patent or petty
patent registration number, the date of filing of the application, the date of publication of a patent
application, data on the right holder, data on the inventor and the title of the invention.
The granted right shall be published upon the payment of the prescribed costs.
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The competent authority shall prescribe the particulars referred to in paragraph 3 of this
Article, which shall be published in the Official Gazette.
Patent Specification
Article 112
After the publication of the granted right in the Official Gazette, the competent authority
shall issue the specification, which shall particularly contain: the patent or petty patent
registration number, the date of publication of the mention of the grant of a patent, data on the
right holder, data on the inventor and the title of the invention.
The patent specification shall be issued upon the payment of the prescribed costs.
The competent authority shall prescribe the particulars of the patent specification referred
to in paragraph 1 of this Article.
Article 112a
The competent authority shall closely regulate the manner of search of the state of the art and the
sequence of acts of the official person in the procedure of the FORMAL AND substantive
examination of the patent application.
XI SUPPLEMENTARY PROTECTION CERTIFICATE
Scope of Implementation
Article 113
Any product protected by a patent and subject to authorization from the competent
authority prior to being placed on the market on the territory of the Republic of Serbia, as a
medicinal product for human or animal use or a plant protection product, may under the terms
and conditions provided for in this Law be subject of protection by a Certificate.
In respect of the protection by Certificate, the product is the active substance or
combination of substances or active substances of medicinal products or active substance
referred to in Article 2 Paragraph 1 item 27) or a combination of active substances of plant
protection products.
Subject Matter of the Protection and the Legal Effect
Article 114
Within the limits of the protection conferred by the basic patent, the protection conferred
by a Certificate shall extend only to the product covered by the authorization to place on the
market the corresponding medicinal product for human or animal use and for any use of the
product as a medicinal product that has been authorized before the expiry of the certificate.
Within the limits of the protection conferred by the basic patent, the protection conferred
by the certificate shall extend only to the product covered by the authorization to place the
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corresponding plant protection product on the market and for any use of the product as a plant
protection product that has been authorized before the expiry of the certificate.
Subject to paragraph 1 and 2 of this Article, the Certificate shall confer the same rights as
conferred by the basic patent and shall be subject to the same limitations and the same
obligations.
Entitlement to a Certificate
Article 115
A Certificate shall be granted to the owner of the basic patent covering the product or to
his successor in title.
The owner of two or more patents covering the same product may be granted only one
certificate for that product. Where there are two or more requests for a certificate filed by
different persons who are owners of different patents covering the same product, the same
certificate for the product may be granted to each of these persons individually.
Conditions for Obtaining a Certificate
Article 116
At the request of the patent owner, a Certificate shall be granted if the following
conditions are fulfilled on the filing date of the request:
1) the product is protected by a basic patent in force;
2) an authorisation to place the product on the market as a medicinal product for human
or animal use, or a plant protection product, has been granted in accordance with special
regulations,
3) the medicinal product for human or animal use or plant protection product has not
already been the subject of a certificate;
4) the authorisation referred to in item 2) of this Article, is the first authorisation to place
the product on the market as a medicinal product for human or animal use, or a plant protection
product on the territory of the Republic of Serbia.
5) the first authorization is granted after 1 January 2005.
Time Limit for the Filing of a Request for the Certificate
Article 117
The application for the Certificate shall be filed with the competent authority within 6
months from the date of the grant of the authorization, referred to in Article 116 item 2) of this
Law.
If the authorization has been granted before the grant of the basic patent, a request for the
grant of Certificate shall be filed, within six months from the date on which the patent is granted.
The Request for Certificate
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Article 118
The request for the grant of the Certificate, shall contain:
1) the data on requester: the name, surname and address for natural person, or name and
seat for legal person;
2) the data on the representative, if any;
3) the number of the basic patent and the title of the invention;
4) the number and date of the first authorisation to place the product on the market issued
by the competent authority to place the product on the market on the territory of the Republic of
Serbia. In addition to the request for the grant of the Certificate the following shall shall be
filled:
1) the authorization to place the product on the market, issued by the competent authority
for placing the products on the market on the territory of the Republic of Serbia, as well as
summary of the product characteristics;
2) the proof of payment of the Republic administrative fee.
Data on request for the grant of the Certificate shall be entered into the Register of
Patents kept by the competent authority.
Procedure Following the Request for the Grant of Certificate
Article 119
The competent authority shall carry out examination procedure upon the request for grant
of Certificate and shall establish that:
1) the request is filed within a period prescribed by Article 117 of this Law ;
2) the request is filed in the required form and contains all the indications prescribed by
Article 118, paragraph 1, and 2 of this Law;
3) the basic patent was in force at the time of filing of the request for the Certificate and
the applicant is at the same time the holder of the basic patent.
If the request for the Certificate does not contain the elements prescribed by paragraph 1
of this Article, the competent authority shall invite the applicant to correct the mistakes indicated
in the invitation or to comment on them, within a period of 30 days from the receipt of the
invitation.
If the requester fails to correct found mistakes or fails to comment on them, within the
prescribed time limit, the competent authority shall pass a decision rejecting the application for
the grant of Certificate.
If the requirements referred to in paragraph 1 of this Article are fulfilled or if the
applicant corrects the mistakes within the period referred to in paragraph 2 of this Article,
authorities shall accord a filing date of the request for the grant of Certificate, the very date when
the Certificate has been submitted to the competent authority.
After grant of the filing date of the application, the competent authority shall not allow
changes of the request for the grant of the Certificate concerning the basic patent.
If the request for the grant of the certificates meets requirements from paragraph 1 of this
Article, the competent authority determines whether on the day of the application all conditions
for the grant of certificates prescribed by the Law are fulfilled.
If the competent authority establishes that all conditions for the grant of certificates
prescribed by this Law are not fulfilled it shall inform the applicant about the results of
examination and invite him to correct any mistakes identified or to comment on the reasons why
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the Certificate can not be granted within a time limit no less than two months from the date of
receiving the notification.
On a reasoned request from the applicant, the competent authority shall extend the time
limit under paragraph 2 of this Article for a time period considered to be justified, but not
exceeding three months providing the proof of the payment of the Republic administrative fee
has been furnished.
If the applicant fails to respond to notices in due time concerning the results of
examination, from paragraph 2 of this Article, the competent authority shall pass the decision
rejecting the request for the grant of Certificate.
If the competent authority establishes that all requirements for the grant of a Certificate
have not been satisfied, the competent authority shall pass the decision on the refusal to grant the
Certificate.
Decision on the Grant of the Certificate
Article 120
If the requirements for the grant of a Certificate prescribed by this Law are fulfilled and if
proof of payment of the expenses of the publication fee has been furnished, the competent
authority shall pass decision on the grant of the Certificate determining its duration.
If the basic patent has expired, the competent authority shall pass a decision from
paragraph 1 of this Article providing all due fees for the maintenance of the certificate, including
those whose additional time limit for the payment has lapsed, have been paid.
If the applicant has not paid all fees prescribed in paragraph 1 and 2 of this Article, within
the prescribed time limit and if proof of payment of the expenses of the publication fee has been
furnished, the competent authority shall pass a decision rejecting the request.
Publication
Article 121
The competent authority shall publish in the Official Gazette the data from the request for
the grant of Certificate, prescribed in Article 118, paragraph 1of this Law, data on the Certificate,
the data on the refusal or rejection of the Certificate and the data concerning the expiration of
Certificate.
Entry into the Register
Article 122
Data on the procedure for the grant of the Certificate, and the duration of the protection
of the granted Certificate shall be entered into the Register of Patents kept by the competent
authority.
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The competent authority shall closely prescribe the particulars from paragraph 1 of this
Article which shall be entered into the Register.
Duration of Protection
Article 123
The Certificate shall take effect at the end of the lawful term of the basic patent. Duration
of protection for granted Certificate is equal to the period which elapsed between the date on
which the application for a basic patent was applied for and the date of the first authorisation to
place the product on the market, reduced by a period of five years.
The duration of the Certificate referred into paragraph 1 may not exceed five years from
the date on which it takes effect.
For the purpose of calculating the duration of the Certificate from paragraph 1 of this
Article, account shall be taken of a provisional first marketing authorization only if it is directly
followed by a final authorization concerning the same product.
Extension of Certificate
Article 123a
Duration of certificates for medicinal product under Article 123, paragraph 1 and 2 of this
Law can be extended for six months, if all needed tests prescribed after the approved
paediatrician research plan are completed in the countries of the European Union, providing
that authorization to put the product on the market was issued in all member states of the
European Union in accordance with the special regulations.
Maintenance of the Certificate
Article 124
For maintenance of the Certificate a prescribed annual fee shall be paid, calculating from
the effective date of the Certificate.
Cessation of the Certificate
Article 125
The Certificate shall lapse:
1) on expiry of its term referred into Article 123 of this Law;
2) on its waiver by the Certificate holder, such right shall cease on the day following the
filing of the declaration;
3) the following day from the day of the Certificate expiry prescribed in Article 124 of
this Law, on failure to pay on time he annual fee for its maintenance, referred to in Article 124 of
this Law, and the proof of payment has not been submitted,
4) if the product for which the Certificate was granted may no longer be placed on the
market as a result of the termination of the authorization, for whatever reason.
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The competent authority shall decide on the lapse of the Certificate either ex officio or at
the request of any person in the case from paragraph 1, item 4 of this Article.
In the case of lapse of the certificate, the competent authority shall pass a decision.
The decision prescribed in paragraph 1, item 2 and 3 of this Article is final and may be
subject to administrative dispute.
Application of the Provisions
Article 126
The provisions of this Law prescribed for patents shall be applicable for the Certificate,
unless the Law provides otherwise.
Revocation of the Decision on Grant of the Supplementary Protection Certificate
Article 127
The decision on grant of the Supplementary Protection Certificate shall be revoked:
1) if Certificate was granted contrary to the conditions set out by this Law;
2) if the basic patent ceases to be valid within the terms of Articles 41, 42 and 43 of this
Law;
3) if the basic patent is revoked or limited to the extent that the product for which the
Certificate was granted is no longer protected by the claims of the corresponding basic patent or,
after the basic patent has expired, grounds for revocation, which would have justified such
revocation, exist.
Procedural provisions of this Law applicable to the application for the revocation of a
decision to grant a patent shall accordingly apply to the revocation of a Supplementary
Protection Certificate.
If the basic patent has been revoked in total or in part, the competent authority may ex
officio revoke the Certificate.
XII REVOCATION
1. Revocation of Decision to Grant a Patent or a Petty Patent
Grounds for Revocation
Article 128
The competent authority may revoke at any time the decision to grant a patent or petty
patent, in whole or in part, at the request of any person, if it establishes that:
1) the subject matter of protection is not an invention, within the meaning of Articles 7
and 8 of this Law;
2) the invention falls under the category of inventions excluded from protection as
defined in Article 9 of this Law;
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3) the invention was not new within the meaning of Articles 10 and 11 on the date of the
filing of the patent application or on the date of priority, or did not involve an inventive step
pursuant to Article 12 or was not industrially applicable in accordance with Article 13 of this
Law;
4) the invention is not disclosed in a manner sufficiently clear and complete, as defined in
Article 82 of this Law;
5) the scope of granted rights exceeds the scope that could be supported by the
description of the invention as disclosed on the filing date or priority date of the application, or if
protection was granted for a divisional application, the subject matter of which extends beyond
the basic application as filed.
Request for Revocation of a Decision to Grant a Patent or Petty Patent
Article 129
The procedure for the revocation of a decision to grant a patent or a petty patent shall be
instituted with the filing of a written request with the competent authority.
The request under paragraph 1 of this Article shall include in particular: data on the
requester; data on the right holder; indication that the revocation of a decision to grant is
requested; the reference number of a decision and the patent or petty patent registration number;
the reasons for which revocation is requested, the appropriate evidences and the proof of
prescribed fee payment.
Procedure upon Request for the Revocation of a Decision to Grant a Patent or a Petty Patent
Article 130
The request for the revocation of a decision to grant a patent or a petty patent shall be
admissible if it includes data under Article 129 of this Law.
Where the request for the revocation of a decision to grant a patent or a petty patent is not
admissible, the competent authority shall invite the requester in writing to remedy deficiencies
within 30 days from the date of receipt of such communication, stating the reasons thereof.
Upon a reasoned request by the requester, and upon his payment of the Republic
administrative fee, the competent authority shall extend the time limit under paragraph 2 of this
Article by the period of time the competent authority deems appropriate.
If the requester fails to proceed in accordance with the invitation within the set time limit,
the competent authority shall pass a decision on rejecting the request.
The competent authority shall forward the admissible request and filed evidences to the
right holder and invite him to submit his reply within 30 days from the date of receipt of the
invitation.
During the revocation proceedings, the competent authority shall invite the parties, as
many times as is necessary, to file their observations on the submissions of the opposite party
within the time limit specified in paragraph 5 of this Article.
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During the revocation procedure, the competent authority shall conduct a hearing only if
it assesses it to be necessary for the establishment of facts relevant for the passing of a decision
about the request.
If the competent authority establishes on the basis of the procedure for the revocation of
the decision to grant a patent or a petty patent that all requirements for revocation referred to in
Article 128 of this Law are fulfilled and that the patent or petty patent can not be maintained as
amended, the competent authority shall take a decision to revoke the patent or petty patent in
total.
If the competent authority establishes on the basis of the procedure for the revocation of
the decision to grant a patent or a petty patent that the requirements for revocation referred to in
Article 128 of this Law are not fulfilled, the competent authority shall pass a decision to refuse
request for revocation of a decision to grant a patent or petty patent.
If the competent authority establishes that there are grounds that the patent or petty patent
maintain as amended, it may invite the right holder to submit the patent claims as amended,
within the time limit referred to in paragraph 5 of this Article. If the patent holder submits the
patent claims as amended, the competent authority shall forward it to the requester and invite
him to submit reasoned objection within tie limit prescribed in paragraph 5 of this Article.
If patent holder does not submit the patent claims as amended, or the competent authority
did not invite him to submit patent claims as amended, competent authority shall notify the
parties to the procedure on the text of the patent claims with which it intends to maintain a patent
or petty patent in force as amended and shall invite them to submit reasoned observations within
the time limit prescribed in paragraph 5 of this Article.
If the parties approve of the text in which the competent authority intends to maintain the
patent or petty patent in force as amended or if they fail to file the reasoned comments within the
time limit referred to in paragraph 11 of this Article, the competent authority shall take the
decision to revoke the decision on the grant of the patent or petty patent in part, by which patent
or petty patent is maintained in force as amended according to patent claims which are
communicated to the parties for approval.
If the right holder states that he does not approve the wording of the claims under
paragraph 11 of this Article, he shall be required to state the reasons for his disapproval and to
file with the competent authority an amended wording of the claims.
At the reasoned request of the right holder or requester, the competent authority shall
extend the time limit prescribed in paragraph 5 of this Article, providing that administrative fee
has been paid.
If the competent authority accepts the amended wording of the claims, it shall take the
decision to revoke the patent or petty patent in part, by which patent or petty patent is maintained
in force as amended, according to patent claims which are submitted by the right holder.
If the competent authority does not accept the amended wording of the claims, it shall
take the decision to revoke the patent or petty patent in part, by which patent or petty patent is
maintained in force as amended, according to patent claims which are communicated to the
parties for approval.
The decision to revoke the patent or petty patent in part shall be passed by the competent
authority provided that the administrative fee for publication of the prescribed data referred to in
the decision to revoke patent or petty patent in part and the fee for amended specification for the
patent have been paid.
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Where the right holder fails to pay the fees and costs under paragraph 17 of this Article
and to submit the proof of payment within the set time limit, the patent or petty patent shall be
revoked in whole and the competent authority shall pass a decision to that effect which is final
and may be subject to administrative dispute.
Decision to revoke the patent or petty patent in part or in total shall neither produce any
effect on court decisions relating to establishing infringement of rights, which were legally
binding at the moment of the passing of the above decision, nor on assignment and licensing
agreements that have been entered into if, and to the extent that, such agreements have been
executed, providing the plaintiff or patent or petty patent holder have acted in good faith.
Publication and Issuing Patent Specification as Amended
Article 131
The competent authority shall publish particulars on the revoked patent or petty patent in
the Official Gazette within three months from the date on which the decision becomes final.
If the patent or petty patent is maintained as amended in compliance with the Article 130
of this Law, the competent authority shall publish the amended patent specification, as soon as
possible, after the mention of the decision taken in the revocation procedure has been published.
The provisions of the Article 112 of this Law shall apply in accordance with the
publication of new specification for the patent or petty patent which is maintained as amended.
The competent authority shall prescribe the particulars referred to in paragraph 1 of this
Article.
XIII PROTECTION OF RIGHTS UNDER CIVIL LAW
1. Infringement Action
Infringement of Rights and Right of Action against Infringement of Rights
Article 132
The infringement of rights arising from the published patent application, patent or petty
patent shall be any unauthorized action referred to in Article 14 and Article 15 of this Law.
The action for the infringement of rights or existence of serious threat that the rights are
about to be infringed may be submitted to the court by the applicant, right holder or licensee.
The applicant or the licensee shall be entitled to initiate legal suit against the infringement
of rights after the publication of the patent application.
The licensee shall be entitled to initiate legal suit against the infringement of rights in the
competent court in the extent entitled by the Law or the licensing contract providing for the
utilization of the invention, unless the contract provides otherwise.
If more than one person are the holders of right or right holders on the published patent
application for the same invention, each of them is entitled to require in their own name and on
their own account the protection of rights under the Civil Law.
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If more than one person are right holders or right holders of the published patent
application on the same invention each of them is entitled to require in their own name and on
their account the protection of rights under Civil Law.
Infringement Claims
Article 133
An action against the infringement may contain particularly a claim for:
1) establishment of the existence of an infringement of right or serious threat that the
rights are about to be infringed;
2) prohibition of acts infringing the right or acts representing serious threat that the rights
are about to be infringed as well as the prohibition of the continuation of such or similar acts
under the threat of penalty payment;
3) compensation for damages caused by infringement;
4) publication of the court decision at the expense of the defendant;
5) seizure or definitive removal from the channels of commerce or destruction or
alteration of infringing products, without compensation of any sort;
6) prohibition of alienation, seizure or destruction of material or Articles (equipment,
tools) predominantly used in the creation of infringing products, without compensation of any
sort.
An action against the infringement of rights may be issued against any person whose
services are used to infringe the rights (intermediary).
The court shall, within the infringement claims under paragraph 1 item 4) of this Article,
decide in which media of public communication the court decision will be published. If the court
decides to publish the court decision in part it will determine, within the infringement claims, to
publish the sentence and if necessary that part of the court decision which shows the nature of
the infringement and the responsible person who committed the infringement.
In considering the claims referred to in paragraph 1 items 5) and 6) of this Article, the
court shall take into account the need to maintain proportionality between the gravity of the
infringement and the action claims, as well as the interests of third parties.
The applicant shall be entitled to damages from the date of the publication.
Any issue related to the damage compensation caused by infringement of right that is not
regulated by this Law shall be subject to appropriate provision of the law regulating obligations.
Compensation for the Damage
Article 134
The injured party shall have a right to compensation for the material damage and moral
prejudice.
When the Court sets the damage, the Court shall take into consideration all circumstances
of the particular case, such as negative economic consequences, including lost profits, which the
injured party has suffered and any unfair profits made by the infringer.
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Instead of setting the damage referred to in paragraph 1 of this Article, the court may, in
appropriate cases, adjudge to the injured party the compensation as a lump sum which could not
be lower than the license remuneration for particular use of the protected subject matter.
The infringer who did not knowingly, or with reasonable grounds to know, injured the
rights shall be under obligation to recover the profits to the injured party.
Provisional Measures
Article 134
At the request of the person who has presented reasonable evidence to support his clam
that his rights have been infringed or are about to be infringed, the court may order the
provisional measure of:
1) seizure or exclusion of the infringing products from the channels of commerce;
2) seizure or prohibition of alienation of the materials or Articles (equipment, tools)
principally used in the creation of the infringing products;
3) prohibition of acts infringing the rights or representing serious threat that the rights
are about to be infringed.
A provisional measure may be passed, under the same conditions, against any person
whose services are being used by a third party to infringe the rights (intermediary).
At the request of the person who has presented reasonable evidence to support his claims
that his rights have been infringed or are about to be infringed on a commercial scale and
demonstrates circumstances likely to endanger the recovery of damages, the court may order,
apart from the provisional measures from paragraph 1 of this Article, a provisional measure of:
1)seizure of the movable and immovable property of the person against whom the
provisional measure has been passed.
2) prohibition of payments of monetary funds from the account of the person against
whom the provisional measure has been passed.
For passing the provisional measure from paragraph 3 of this Article, the court may order
the communication of banking, financing, business or other essential documents and data or
access to such documents and data.
The person against whom the prohibition referred in paragraph 1, items 2 and 3 and
paragraph 2, item 2 of this Article has been passed and who has not acted in compliance with the
prohibition or the order, shall be fined in compliance with the appropriate provisions of the law
regulating enforcement and security procedure.
Procedure for the Determination of the Provisional Measure
Article 135
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The Court may pass the provisional measure immediately after the receipt of the proposal
for the determination of the provisional measure, without the preliminary hearing of the
defendant, and in particular if there is danger that the delay would cause irreparable damage to
the right holder.
The decision determining provisional measure, in the case from paragraph 1 of this
Article is forwarded to the parties in the procedure with no delay and at the latest immediately
after the enforcement of the measure.
When the provisional measure is determined before the initiation of the litigation or other
procedure, the legal suit, or the proposal for the initiating of other procedure for the sake of the
justification of the measure, must be submitted in the time limit of 30 days from the passing of
the decision on the determination of the provisional measure.
Cancellation of Provisional Measure and Compensation of Damages
Article 135a
If the action against the infringement of rights has not been initiated within the time limit
referred to in paragraph 3 of Article 135 or if other procedure for the justification of the
provisional measure has not commenced, the court shall, upon request from the defendant cancel
the procedure and revoke the acts already taken.
If the procedure before the court is cancelled and taken acts are revoked in compliance
with this Article or if the court found that there has been no infringement or serious threat that
the rights are about to be infringed, the defendant shall have a right to the compensation of
damages for any injury caused by the provisional measure.
The court may condition the provisional measure by demanding deposit consisting of the
adequate amount of money intended to ensure compensation for any prejudice suffered by the
defendant in the case referred to in the paragraph 2 of this Article.
Apt Enforcement of the Law Regulating Enforcement and Security
Article 135b
The issues regarding the procedure of determination of the provisional measure, not
subject to this Law, are aptly subject to the provisions of the law regulating enforcement and
security.
Securing of Evidence
Article 136
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Upon request by a party who has presented reasonably available evidence to support its
claims that the rights have been infringed or are about to be infringed, the court may order, in the
course of the court proceedings as well as before the commencement of proceeding on the merits
of the case, the measures to preserve evidence, subject to the protection of confidential
information.
The measures for preserving evidence referred to in paragraph 1 of this Article shall
include:
1) taking the detailed description of the infringing products, with or without taking
samples;
2) seizure of infringing products or part of products and, in appropriate cases, the
materials and implements (equipment, tools), principally used in the production or
distribution of the infringing products and the documents relating thereto.
Procedures for the Securing of Evidence
Article136a
The court may order the measures for preserving evidence immediately after the
submission of the request for the preserving of evidence without the other party having been
heard, in particular where any delay would cause irreparable harm to the right holder or where
there is a demonstrable risk of evidence being destroyed.
In the case referred to in paragraph 1 of this Article, the parties shall be given notice
without delay and after the implementation of the measure, at the latest.
When the securing of evidence is determined before the initiation of the litigation
procedure, the legal suit must be initiated in the time limit of 30 days from the date of passing the
decision on the securing of evidence.
Suspension of the Securing of Evidence and the Compensation of Damages
Article 136b
If in the time limit from Article 136a, paragraph 3 of this Law, the legal action is not
initiated, at the proposal of the opposing party, the court shall suspend the procedure and abolish
the measures taken.
If the procedure before the Court is suspended and taken acts are revoked or if the Court
found that there has been no infringement or serious threat that the rights are about to be
infringed, defendant shall have a right to the compensation of damages for any injury caused by
the securing of evidence.
The Court may order that the measures to secure evidence may be subject to the deposit
of adequate amount of money intended to ensure compensation for any injury suffered by the
defendant in the case referred to in paragraph 2 of this Article.
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Obtaining of Evidence
Article 136c
When a party in the proceedings before the Court has presented reasonable available
evidence to support its claims and has specified evidence which is in the possession of the
opposing party or is under control of the opposing party, the Court shall order that such evidence
be presented by the opposing party, subject to the protection of confidential information.
Under the same conditions from paragraph 1 of this Article, in the case of the
infringement committed on a commercial scale, the Court shall order, as proposed by a party, the
communication of banking, financial or commercial documents which are in possession or under
control of the opposing party, subject to the protection of confidential information.
Apt Implementation of the Law regulating the Litigation Procedure
Article 136d
The issues connected to the procedure for the securing of evidence, not regulated by this
Law, are aptly subject to the provisions of the Law regulating the litigation procedure.
Time Limit for Filling the Infringement Action
Article 137
The infringement action may be brought within a period of three years from the date of
obtaining knowledge of the infringement and of the infringer, but not later than five years from
the date on which the infringement occurred or from the date when the last infringement
occurred providing the infringement was performed continuously.
The infringement proceeding referred to in paragraph 1 of this Article shall be urgent.
Burden of Proof
Article 138
If the subject matter of an infringement of right is a process for obtaining a new product,
any identical product shall be deemed to have been obtained by means of the protected process,
until proven otherwise.
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The burden of proof shall be on the defendant who manufactures such product, whereby
the legitimate interests of such defendant in protecting his manufacturing and business secrets
shall be taken into account.
Right of Information
Article 139
The Court may order the infringer, in response to a justified and proportionate request of
a party whose right has been infringed to provide the information about the other persons
involved in infringement, as well as information on the origin and distribution networks of the
products and services that infringe the rights and to surrender the documents connected to the
infringement of rights.
Providing of information specified in paragraph 1 of this Article the court may order also
to the other person who:
1) was found in possession of the infringing goods on a commercial scale which infringe
the right;
2) was found to be using the infringing services on a commercial scale which violate the
right;
3) was found to be providing on a commercial scale services used in infringing activities
which infringe the right;
4) was indicated by the person referred to in item 1), 2) or 3) of this Article as being
involved in the manufacture or distribution of the goods or the providing of the services which
infringe the right.
The information referred to in paragraph 1 of this Article shall comprise in particular:
1) data of the producers, distributors, suppliers and other previous holders of the goods or
services, as well as the intended wholesalers and retailers;
2) the information on the quantities produced, delivered, received or ordered, as well as
the price obtained for the goods or services in question.
If persons referred to in paragraphs 1 and 2 of this Article unreasonably fail to comply
with a Court order and do not provide the requested information they will be responsible for the
damage thus caused.
2. Action for the Establishment of the Right to Protection
Article 140
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
instead of the person or, together with the person who has already filed an application for that
invention.
If the decision to grant a patent has already been taken by the competent authority the
inventor, his successor in title or employer referred to in paragraph 1 of this Article may require
through a civil action before the court the establishment that he is the right holder instead of or
together with the person Registered as the right holder.
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Action under paragraph 1 of this Article may be initiated before the right has been
granted and the action under paragraph 2 of this Article may be initiated prior to the expiry of the
right.
The proceedings under paragraph 1 and 2 of this Article shall be urgent.
The final court decision upholding the claims referred to in paragraphs 1 and 2 of this
Article shall be communicated to the competent authority, which shall enter changes concerning
the applicant or right holder into the appropriate Register.
3. Action for the Protection of Employer's or Employee's Rights
Article 141
An employer or employee entitled, under the provisions of this Law, to the protection or
commercial use of an invention made in the course of employment, may require through a civil
action before the court the establishment and protection of his rights.
Action under paragraph 1 of this Article, for the establishment of the rights of the
employee or employer, may be brought 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.
The final court decision upholding the claims referred to in paragraphs 1 and 2 of this
Article shall be communicated to the competent authority, which shall enter the changes of
ownership into the appropriate Register.
4. Action for Recognition of the Status of Inventor
Article 142
If any other person has been designated as the inventor in the patent or petty patent
application or in any other document provided for by this Law, the inventor shall be entitled to
require through a civil action before the court the establishment of his status as inventor and
order the entry of his name in the patent or petty patent application and in other relevant
documents and Registers in accordance with the provisions of this Law.
There shall be no time limit for an action referred to in paragraph 1 of this Article.
In the case of the death of the inventor, his heirs shall be entitled to bring an action
referred to in paragraph 1 of this Article.
5. Stay of the Civil Proceedings
Article 143
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The court shall stay the proceedings on action for infringement of rights arising from the
published application, pending a decision by the competent authority on such application.
If procedures defined in Articles 128 of this Law have been initiated before the
competent authority, the court shall stay the proceedings on action referred to in Articles 132
paragraph 1, 133, 140 paragraph 2 and 142 of this Law until a final decision of the competent
authority.
6. Revision
Article 144
Revision is always allowed against second-instance final court decisions passed in
disputes relating to the protection and use of inventions.
XIV THE EUROPEAN PATENT APPLICATION AND THE EUROPEAN PATENT
Effects of European Patent Applications and European Patents in the Republic of Serbia
Article 145
A European patent application and a European patent shall, subject to the provisions of
this Law, have the same effect and be subject to the same conditions as a national patent
application and a national patent.
Filing of European Patent Application
Article 146
The European patent application may be filed:
1) with the European Patent Office;
2) with the competent authority.
Competent authority shall forward the European patent application to the European
Patent Office within:
1) six weeks from filing, where the subject of the application is evidently not liable to
secrecy under this Law;
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2) four months of filing or if priority has been claimed, fourteen months from the date of
priority, where the application requires further examination as to its liability to secrecy.
A European patent application filed with the competent authority shall have the same
effect as if it has been filed on the same date with the European Patent Office, provided that it
has been transmitted by the competent authority in accordance with the provisions of paragraph 2
of this Article to the European Patent Office in due time.
A European divisional patent application and the new European patent application
referred to in Article 61 paragraph 1 item b) of the European Patent Convention shall be filed
directly with the European Patent Office.
If the competent authority estimates that the invention falls under the category of
inventions being important for the defence and security of the Republic of Serbia, it shall not
transmit the European patent application to the European Patent Office in accordance with
paragraph 2 of this Article, but shall act in accordance with provisions of this Law relating to
inventions of importance for defence and security of the Republic of Serbia, and shall notify the
applicant thereof.
The European patent application, which is to be filed with the competent authority in
accordance with the provisions of this Article, may be filed in any of the official languages
referred to in Article 14, paragraph 1 of the European Patent Convention or if it is filed in
another language referred to in Article 14, paragraph 2 of the European Patent Convention, must
be translated into one of the official languages and filed within two months from the filing of
European patent application.
Fees and Procedural Costs for European Patent Applications
Article 147
The fees and costs payable in respect of European patent applications shall be paid to the
European Patent Office in accordance with provisions of the European Patent Convention and
regulations to the European Patent Convention.
Priority Right and Provisional Protection of European Patent Applications
Article 148
The European patent application, which has been accorded a date of filing and where the
Republic of Serbia has been designated, shall be equivalent to a regular national patent
application, with priority claimed for a European patent application, if such claim has been
made, whatever the outcome of proceedings relating to the application may be.
A published European patent application shall confer upon the applicant the same
provisional protection under this Law as is conferred by a national patent application, from the
date on which a translation of the claims of the published European patent application into the
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Serbian language is communicated by the applicant to the person using the invention in the
Republic of Serbia.
The European patent application shall be deemed not to have had the effect specified in
paragraph 2 of this Article, ab initio, if it is withdrawn, deemed to be withdrawn, if it is finally
refused or if the designation of the Republic of Serbia has been withdrawn or deemed
withdrawn.
Effects of European Patent and Procedure for Entry of
the European Patent into the Register of Patents
Article 149
Subject to paragraphs 2 to 6 of this Article, a European patent designated for the
Republic of Serbia shall, from the date of the publication of mention of the grant of the
European patent by the European Patent Office, confer the same rights as by a national patent
under this Law.
Within 3 months from the date on which the mention of the grant of the European patent
has been published, the owner of the patent shall submit to the competent authority:
1) a request for entry of the European patent into the Register of Patents;
2) a specification of the European patent as published in the Official Journal of European
Patent Office translated into the Serbian language;
3) the proof of payment of procedural costs for publication.
If the European P atent Office maintains the European patent in force with amended
claims, the patent holder shall submit to the competent authority the translation of the amended
patent specification in Serbian language and proof that Republic administrative fee has been paid
for the publication within three months from the date of the publication in the Official Gazette of
the European Patent Office of data on the decision to maintain in force the European patent with
amended claims.
The competent authority shall publish the mention of any translation duly filed under
paragraph 2 or 3 of this Article.
If the translation referred to in paragraph 2 or 3 of this Article is not filed in the
prescribed time-limit or the prescribed administrative fees are not paid within the period referred
to in paragraph 2 or 3 of this Article, the European patent shall be deemed to be void ab initio for
the Republic of Serbia.
The 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 of this Article and Article
148, paragraph 2 of this Law, to the extent that the patent has been revoked in the scope as if it
were revoked by the decision under Article 131 this Law.
The competent authority shall pass a decision on entry of the European patent into the
Register of Patents provided that the costs for printing of the patent specification in the Serbian
language are submitted.
If an applicant filing the request for entry of the European patent into the Register of
Patents does not submit the proof of payment of the prescribed fee under paragraph 8 of this
Article within set time limit from the date of receipt of the notification for costs payment, the
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competent authority shall pass decision rejecting the request for entry of the European patent into
the Register of Patents.
Translation of the amended patent specification, as published by the European Patent
Office, the competent authority shall publish at the written request of the right holder, providing
that administrative fee has been paid and the translation has been submitted.
Data on the European patent enrolled in the Register of patents shall be published in the
Official Gazette of the competent authority.
IF THE EUROPEAN PATENT OFFICE DECLARES THE EUROPEAN PATENT
ENTERED INTO THE REGISTER OF PATENTS TOTALLY NULL AND VOID, THE
COMPETENT BODY PASSES A DECISION EX OFFICIO ON THE ANULLMENT OF THE
DECISION ON THE ENTRY OF THE EUROPEAN PATENT INTO THE REGISTER OF
PATENTS.
Authentic Text of European Patent Applications or European Patents
Article 150
The text of a European patent application or a European patent in the language of the
proceedings before the European Patent Office shall be the authentic text in any proceedings
conducted in The Republic of Serbia.
Notwithstanding paragraph 1 of this Article, a translation furnished in accordance with
Article 148, paragraph 2 or Article 149, paragraph 2 and 3 of this Law, shall be regarded as
authentic, except in revocation proceedings, where the application or patent in the language of
the translation confers narrower protection than that conferred by it in the language of the
proceedings.
An applicant or the owner of a European patent may file a corrected translation of the
claims of the European patent application or European patent at any time.
The corrected translation of the claims of the published European patent application
referred to in paragraph 3 of this Article shall not have any legal effects in the Republic of
Serbia until it has been communicated to the person using the invention in the Republic of
Serbia.
The corrected translation of the specification of the European patent referred to in
paragraph 3 of this Article designating the Republic of Serbia shall not have any legal effect,
until the competent authority has published the mention of the correction of the specification.
Publication of the mention of corrected translation shall be done as soon as possible after
payment of costs prescribed for the publication.
Any person who, in good faith, uses or has made effective and serious preparations for
the use of an invention, so that such use does not constitute an infringement of the rights arising
from the application or patent in the original translation, may, after the corrected translation takes
effect, continue such use in the framework of his job or for his needs, without payment of
remuneration.
Rights of Earlier Date
Article 151
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European patent application and a European patent designating the Republic of Serbia
shall have, with regard to a national patent application or petty patent application and a national
patent or petty patent, the same prior art effect as a national patent application or petty patent
application and a national patent or petty patent.
In the Republic of Serbia, a national patent application or petty patent application and a
national patent or petty patent shall have, with regard to a European patent designating the
Republic of Serbia, the same prior art effect as they have with regard to a national patent or petty
patent.
Simultaneous Protection
Article 152
Where a European patent designating the Republic of Serbia and a national patent or
petty patent have the same filing date or, where priority has been claimed and the same priority
date has been granted to the same person or his successor in title, the national patent or petty
patent shall have no effect to the extent that it covers the same invention as the European patent
designating the Republic of Serbia, 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 to maintain the
European patent.
Conversion of a European patent application into a National Patent Application
Article 153
The competent authority shall carry out a procedure for the grant of national patent upon
the request of an applicant of a European patent application in the following cases:
1) where the European patent application is deemed to be withdrawn under Article 77,
paragraph 3 of the European Patent Convention,
2) where the translation of a European patent application has not been filed in due time in
accordance with the provision of Article 14, paragraph 2 and Article 90, paragraph 3 of the
European Patent Convention.
In the case referred to in paragraph 1 item 1) of this Article, a request for conversion of
European patent application into the national application shall be filed with the competent
authority. The competent authority shall, subject to the provisions on national security, transmit
the request for conversion of European patent application into the national application directly to
the central industrial property offices of the Contracting States specified therein. The time limit
for the transmission and the legal sanction for belated transmission are provided for in the
European Patent Convention.
In the cases referred to in paragraph 1 item 2) of this Article, a request for conversion of
European patent application into the national application shall be filed with the European Patent
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Office, which shall transmit it to the competent authority, if the Republic of Serbia is specified
therein.
The request for conversion of the European patent application into the national
application shall be deemed as filed after the conversion fee and costs have been paid and the
proof of payments has been submitted to the competent authority. The time limit for filing the
request for conversion is provided for in the European Patent Convention. The effects of the
European patent application referred to in Article 66 of the European Patent Convention shall
lapse if the request for conversion is not filed in due time.
Within two months from the filing date of the request for conversion of a European
patent application into a national patent application, the applicant shall pay the costs for
publication of mention of the conversion and submit the proof of payment and shall file with the
competent authority the translation of the original text of the European patent application into the
Serbian language. Mention of the conversion shall be published in the Official Gazette.
If the prescribed remuneration of costs referred to in paragraph 5 of this Article has not
been paid and the proof of payment has not been submitted to the competent authority in due
time, or if the translation of the original text of the European patent application into the Serbian
language is not filed in due time, the request for conversion shall be deemed not to have been
filed, and the competent authority shall pass a decision about it.
Renewal Fees for European Patents
Article 154.
Renewal fees for European patents shall be paid to the competent authority for the years
following the year in which the mention of the grant of the European patent was published in
accordance with special regulation.
Dispositions of European Patent Applications and European Patents
Article 155
The provisions of this Law on the assignment, license, right of pledge, and compulsory
licenses shall apply to European patent applications and European patents with effect on the
territory of the Republic of Serbia.
Protection against Infringement
Article 156
The provisions of this Law on the protection of rights under Civil Law in the case of
infringement shall apply to European patent applications and European patents designating the
Republic of Serbia.
Revocation of the European patent
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Article 157
Subject to the provision of Article 138 of the European Patent Convention, European
patent may be revoked in the procedure before the competent authority in accordance with the
provisions of this Law, with the effect for the Republic of Serbia.
In the proceeding before the competent authority relating to the validity of the European
patent, the right holder of the European patent shall have the right to limit the patent by
amending the claims. The patent as thus limited shall form the basis for the proceedings.
If a request for revocation of a European patent is filed with the competent authority after
the initiation of the opposition procedure before the European Patent Office, referred to in
Article 99 of the European Patent Convention or the procedure concerning a request for
limitation or revocation referred to in Article 105a of the European Patent Convention, the
competent authority shall stay the procedure concerning the request for the revocation up to the
termination of the mentioned procedures before the European Patent Office.
Application of European Patent Convention
Article 158
Provisions of this Law shall apply to the European patent applications and European
patents designating the Republic of Serbia unless provided otherwise in the European Patent
Convention.
European Patent Convention shall apply in the case of conflict between the European
Patent Convention and this Law.
XV INTERNATIONAL PATENT APPLICATION
PURSUANT TO THE PATENT COOPERATION TREATY
International Application
Article 159
An “international patent application” shall mean a patent application filed under the
Patent Cooperation Treaty. Any reference to the Patent Cooperation Treaty in this Law shall also
be construed as reference to the Regulations under the Patent Cooperation Treaty.
The provisions of the Patent Cooperation Treaty, of this Law and of regulations under
this Law shall apply to international patent applications filed with the competent authority acting
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as the receiving office, or in which the competent authority has been indicated as the designated
or elected office.
International Application Filed with the Competent Authority as a Receiving Office
Article 160
An international patent application may be filed with the competent authority acting as a
receiving office, if the applicant is a natural person who is a national and a resident of the
Republic of Serbia or a legal person whose seat is in the Republic of Serbia.
International Application Indicating the Competent Authority as a Designated or Elected Office
Article 161
An international application in which the Republic of Serbia, pursuant to the provisions
of the Patent Cooperation Treaty has been designated or elected for the granting of a national
patent, shall be filed with the competent authority, in the Serbian language, within a period of
thirty months, at the latest, from the international filing date or from the date of priority, if
priority has been claimed in the international application.
The time limit referred to in paragraph 1 of this Article shall be extended by 30 days, if
the applicant of the international patent application pays a prescribed extension fee and submits
the proof of payment to the competent authority.
An international application filed with the competent authority acting as the designated or
elected office shall be published in the Official Gazette in accordance with Article 102 of this
Law, not later than six months from the date of receipt of the application by the competent
authority.
The applicant shall be granted the provisional rights laid down in Article 18, paragraph 1
of this Law as of the date of publication of application in the Official Gazette as specified in
Article 102 of this Law.
The substantive examination of an international application shall be conducted at the
request of the applicant, if such request has been filed within the time limit stipulated in Article
103 of this Law.
An international application published in accordance with Article 21 of the Patent
Cooperation Treaty shall not be deemed to be part of the state of the art under the provisions of
Article 10, paragraph 2, item 2) of this Law until conditions stipulated in paragraph 1 of this
Article have been fulfilled.
International Search and International Preliminary Examination Authority
Article 162
For international applications filed at the competent authority as the receiving office, the
applicant may designate authority for international search and international preliminary
examination in compliance with the signed international treaties.
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XVI PETTY PATENT
Subject Matter and Conditions of Protection
Article 163
A petty patent is a right granted for an invention that is new, involves an inventive step
and is susceptible to industrial application.
Only a solution relating to the construction of a product or the layout of its components
may be the subject matter of an invention protected by petty patent.
Petty patent application can contain only one independent claim and at the most four
dependent claims.
Petty patent application cannot be used to obtain protection for the unity of invention.
A petty patent application can be divided into two or more independent petty patent
applications (divisional application).
Petty patent application cannot be filed as the application for patent of addition in the
meaning of Article 88 of this Law.
Petty Patent Grant Procedure
Article 164
If the competent authority finds in the examination of petty patent application, in
compliance with Article 163 paragraphs 2, 3, 4, 5 and 6, Articles 99 and 104 paragraph 1 items
1), 2) and 4) of this Law, that fees prescribed in the Article 107, paragraph 5 of this Law have
been paid and that the application fulfils all requirements prescribed therein, it shall take a
decision to grant the petty patent. The subject matter of the invention of the application shall not
be examined with regard to novelty, inventive step and industrial applicability in the course of
grant procedure for petty patent.
If the competent authority finds that the subject matter of the application does not comply
with the requirements, as referred to in paragraph 1 of this Article, the applicant shall be
informed about it in the examination report, which specially contains a reasoned statement
covering all grounds against the grant of the petty patent, and the applicant shall be invited to
correct deficiencies in the prescribed time limit, which shall last no less than two months, but
also cannot be longer than three months.
After receiving of examination report referred to in paragraph 2 of this Article, the
applicant may amend only once the description, patent claims and drawing, if the amendment is
submitted concurrently with applicant's response to the examination report in this paragraph and
other changes may be made only with the consent of the competent authority.
Upon a reasoned request of the applicant, competent authority shall extend the time limit
referred to in paragraph 2 of this Article, by the period of time the competent authority deems
justified, but not exceeding three months.
If the applicant fails to correct the deficiencies referred to in paragraph 2 of this Article,
the competent authority shall pass a decision rejecting petty patent application.
The petty patent application shall not be published.
Examination of Granted Petty Patent
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Article 165
At the request of the petty patent holder the competent authority shall examine the
granted petty patent in accordance with Article 104, paragraph 1 items 5) and 6) of this Law.
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.
The request referred to in paragraph 1 of this Article may not be withdrawn.
If the requirements referred to in paragraph 1 of this Article are fulfilled, the competent
authority shall issue to the petty patent holder the certificate of examination.
If the requirements referred to in paragraph 1 of this Article are not fulfilled the
competent authority shall ex officio revoke the petty patent.
Notification of the issued certificate of examination and decision on revocation of petty
patent shall be published in the Official Gazette and entered into the Register of petty patents.
The provisions of Article 132 to 144a and the provisions of Article 26 to 38 of this Law
in part relating to the initiation of proceedings do not apply if the granted petty patent does not
have certificate of examination.
Conversion of the Application
Article 166
Before passing a decision to grant rights, the applicant may file a request for the
conversion of the petty patent application into patent application or industrial design and vice
versa.
A converted application shall retain the filing date of the application of the originally
filed application.
Apt Implementation of the Provisions of the Grant Procedure and Cessation of Right Procedure
Article 167
Provisions of this Law shall duly apply to petty patents, unless otherwise expressly
stipulated.
XVII CONDITIONS FOR THE ENTRY INTO THE REGISTER OF REPRESENTATIVES
Article 168
Natural persons who are nationals and residents of the Republic of Serbia, who have
command of one language of international communication and who represent clients on
professional basis, may be entered into the Register of Representatives referred to in Article 5 of
this Law under one of the following conditions:
1) that they have not been convicted of a criminal offence to unconditional prison
sentence of at least six months or a criminal offence that makes them unworthy to be
representatives;
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2) that they are graduates from one of the following faculties: the Faculties of
Technology and Engineering Sciences or the Faculties of Sciences and Mathematics or the
Faculty of Pharmacy or the Faculty of Law;
3) that they have at least three years of working experience in the field of industrial
property with the competent authority and have passed a special expert examination with the
competent authority or at least five years of working experience in the field of industrial property
with the competent authority.
Legal persons having seat in the Republic of Serbia and employing at least one Law
Faculty graduate and one graduate from one of following faculties: the Faculties of Technology
and Engineering Sciences or the Faculties of Sciences and Mathematics or the Faculty of
Pharmacy that fulfils conditions referred to in paragraph 1 of this Article, may also be entered
into the Register of Representatives referred to in Article 5 of this Law.
Persons mentioned in paragraphs 1 and 2 of this Article shall submit to the competent
authority the address of the representative office.
Special expert examination prescribed in paragraph 1, item 3) of this Article shall be
taken before a panel established by the competent authority.
Administrative fee has been prescribed for the special expert examination.
The competent authority shall issue a certificate of passed special expert examination.
The competent authority shall prescribe in particular the program for the special expert
examination.
Entry in the Register of Representatives
Article 168a
Entry in the Register of Representatives, which contains a representative number, data
concerning the representative and the date of enrolment into the Register, shall be made upon
written request of a natural and legal person.
Applicant mentioned in paragraph 1 of this Article shall provide proof concerning
meeting conditions prescribed in Article 168 of this Law and proof of payment of administrative
fee when applying to be enrolled in the Register.
The competent authority shall pass decision rejecting request to be enrolled into the
Register if applicant has not provided proof of meeting all the conditions prescribed in the
Article 168 of this Law and proof of payment of administrative fee.
The competent authority shall pass decision to enrol a person into the Register of
Representatives if the person mentioned in paragraph 1 of this Article meets all the prescribed
conditions.
The competent authority shall pass decision refusing the application to enrol a person in
the Register of Representatives if all conditions prescribed in Article 168 have not been met.
The competent authority shall enter the changes of data into the Register of
Representatives at a written request, providing administrative fees have been paid.
Enrolment into the Register of Representatives shall be published in the Official Gazette.
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Renewal, Delete, Re-Entry
Article 168b
Entry in the Register of Representatives shall be renewed every year, calculating from the
date of the enrolling.
Renewal of registration in the Register of Representatives shall be made at written
request confirming the fulfilment of conditions prescribed in Article 168 of this Law providing
there is proof of payment of administrative fee.
Persons enrolled in the Register of Representatives shall be deleted from the Register:
1.) at the request of the Registered representative;
2.) ex officio without delay after having knowledge of the occurrence of circumstances
such as:
(1) death of the natural person or termination of the legal entity;
(2) deprivation of business capacity;
(3) termination of citizenship of the Republic of Serbia of a natural person or
conviction for criminal offence to an unconditional prison sentence of at least six
months, which makes a person unworthy to be a representative;
3.) the entry into the Register is not renewed.
Person who has been deleted from the Register may be re-entered if written request is
submitted with the
1) evidence that the consequences resulting in the deleting of the representative
from the Register, as prescribed in the paragraph 3, items 2 and 3 of this
Article have stopped producing legal effect;
2) a proof of payment of the Republic administrative fee is submitted.
The competent authority shall pass decision on the delete and re-entry in the Register of
Representatives.
Delete and re-entry in the Register of Representatives shall be published in the Official
Gazette.
XVIII APT IMPLEMENTATION OF THE PROVISIONS OF THE LAW ON GENERAL
ADMINISTRATIVE PROCEDURE
Article 169
Appropriate provisions of the Law of General administrative procedure shall apply to
those issues concerning procedures for patent or petty patent application or granted rights that are
not prescribed by this Law.
XIX PENAL PROVISIONS
Misdemeanour
Article 170
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Legal person who manufactures, imports and/or exports, offers for sale, places on the
market, stores or uses for commercial purposes the product or process protected by patent or
petty patent without authorization contrary to the provisions of this Law (Article 14 and 15) shall
be punished by a fine of RSD 100,000 to 2,000,000.
An entrepreneur shall be punished for the acts referred to in paragraph 1 this Article by a
fine of RSD 50,000 to 500,000, and
For the acts referred to in paragraph 1 this Article a fine shall be imposed on a natural
person or a responsible person in legal person of RSD 50,000 to 150,000.
The infringing objects in the misdemeanour acts and the objects used for the perpetration
of the misdemeanour under paragraph 1-3 of this Article shall be seized, provided that the
infringing objects are also destroyed.
The judgment prescribing fine against the offender for a misdemeanor referred to in
paragraphs 1-3. of this Article shall be published in the media for the public information.
Article 171
A legal person who acts as representative in the exercising of the rights under Article 5 of
this Law without having a power of attorney shall be sanctioned on grounds of the
misdemeanour with a fine of between RSD 100,000 and 1,000,000.
The natural person or responsible person in a legal person shall be sanctioned on grounds
of the misdemeanour for the acts under paragraph 1 of this Article with a fine of between RSD
10,000 and 50,000.
XIX a INFORMATION AND EDUCATION SERVICES
Article 171a
The competent authority performs education and information services in the field of legal
protection of inventions and other intellectual property rights: conducts training of interested
parties, provides professional assistance to the authorities responsible for enforcing intellectual
property right, performs diagnostics of intellectual property rights for legal persons, announces
publication on intellectual property and performs search reports from available data bases of
industrial property.
For the performance of information and education services, the competent authority shall
charge Republic administrative fees.
XX TRANSITIONAL AND FINAL PROVISIONS
Continuity in the Maintenance of Registers
Article 172
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The Register of Patent Applications, the Register of Patents, the Register of Petty Patent
Applications and the Register of Petty Patents, specified by the Patent Law („Official Gazette of
the S&M”, No. 32/04, 35/04 and „Official Gazette of RS”, No. 115/2006), shall continue to be
maintained pursuant to this Law.
Pledges entered, by the date of this Law entering into force, into the Register of
Possessory Lien on Movable Property and Rights (hereinafter: the Pledge Register) at the
Agency for Business Registers shall remain in effect and shall be entered into the relevant
Register with the competent authority.
The Agency for Business Registers shall, within 30 days from the date of this Law
entering into force, forward to the competent authority data and documentation on the basis of
which pledge on patent, petty patent or rights arising from the application have been entered into
the Pledge Register.
Effects of this Law on Valid Patents and Petty Patents and on applications for patents and petty
patents that are filed by the date of entering into force of this Law
Article 173
The Registered patents and petty patents valid on the date of this Law entering into force
shall remain in effect and they shall be subject to the provisions of this Law.
The provisions of this Law shall also apply to patent applications and petty patent
applications submitted by the date when this Law, takes effect providing that administrative
procedure has not yet been finalized, as well as to other proceedings instituted in respect of
patent and petty patent that remain pending on the date when this Law takes effect.
Extended European patents and extended European patent applications
Article 174
The provisions of the Chapter XV of the Patent Law („Official Gazette of the S&M”,
No. 32/04, 35/04 and ”Official Gazette of RS“, No. 115/2006) shall apply on the European
patent applications extended for the Republic of Serbia and on the European patents which have
been granted based on such applications.
Deadline for Adoption of Bylaws
Article 175
Bylaws for the enforcement of this Law shall be adopted within six months from the date
of entering of this Law into force.
Until the adoption of the bylaws referred to in paragraph 1 of this Article, bylaws adopted
on the basis of the Patent Law („Official Gazette of the S&M”, No. 32/04 and 35/04 and
”Official Gazette of RS“, No. 115/2006) shall apply except for the provisions contrary to this
Law.
Cessation of Validity of the Law
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Article 176
On the date when this Law enters into force the validity shall cease for:
1) The Patent Law („Official Gazette of the S&M”, No. 32/04, 35/04 and ”Official
Gazette of RS“, No. 115/2006);
2) Provision of Articles 3 to 13 of the Law on Ratification of the Convention on the
Grant of European Patents ("Official Gazette RS-International Treaties, No. 5/2010);
Cessation of Validity of the Provisions of this Law
Article 177
The validity of the provisions of this Law that regulates compulsory licenses of patents
relating to the manufacture of pharmaceutical products for export to countries with public health
problems shall cease on the day of accession of the Republic of Serbia to the European Union.
Entry into Force
Article 178
This Law shall enter into force on the eighth day from the date of its publication in the
“Official Gazette of the Republic of Serbia”, provided that the provisions of this Law referring
to the Supplementary Protection Certificate shall apply from 1 July 2013.
FINAL PROVISIONS
Article 59
Independent Acts of the Law on the Amendments of the Patent Law
The Register of Patent Applications and the Register of Patents established by the Patent
Law (“Official Gazette RS” No. 99/11 and 113/17-other laws) shall continue to be maintained as
the Register of Patents pursuant to this Law.
The Register of Petty Patent Applications and the Register of Petty Patents established by
the Patent Law (“Official Gazette RS” No. 99/11 and 113/17-other laws) shall continue to be
maintained as the Register of Petty Patents pursuant to this Law.
Article 60
Bylaws for the enforcement of this Law shall be adopted within six months from the date
of entering of this Law into force.
Bylaws from Article 26 of this Law shall be adopted within nine months from the entry
into force of this Law.
Until the adoption of the Bylaws referred to in paragraph 1 and 2 of this Article, bylaws
adopted on the basis of the Patent Law (“Official Gazette RS” No. 99/11 and 113/17-other laws)
shall apply except for the provisions contrary to this Law.
Article 61
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From the day of the accession of the Republic of Serbia to the European Union, the
provisions of Articles 16 and 22 of the Patent Law (“Official Gazette RS” No. 99/11 and 113/17-
other laws) shall be applied in the case that the right holder or the person authorized by the right
holder placed the protected products on the market in a member state of the European Union or
the European Economic Area.
Article 62
Provisions of the Patent Law (“Official Gazette RS” No. 99/11 and 113/17-other laws)
regulating Supplementary Protection Certificate, as well as the provisions of Article 2, paragraph
1, items 19) to 28) shall cease to apply on the accession date of the Republic of Serbia to the
European Union.
The provision of Article 36 of this Law shall apply after the day of the accession of the
Republic of Serbia to the European Union.
Article 63
This Law shall enter into force on the eighth day from the date of its publication in the
“Official Gazette of the Republic of Serbia”.