Legislation

Materials for the comment procedure

Since 1 April 2016, the materials for the inter-ministerial comment procedure have been published on the Slov-Lex Portal at the following Internet address: https://www.slov-lex.sk/domov

Since 1 June 2008, the materials for the inter-ministerial comment procedure have been published on the Portal of the Ministry of Justice of the Slovak Republic, located at the following Internet address: https://lt.justice.gov.sk/

MPK archive until 31.5.2008  (Archív MPK do 31.5.2008)

Archive of ex post consultations (Archív ex post konzultácií)

NOTICE OF THE LAUNCH OF THE PUBLIC EX POST CONSULTATION

The Industrial Property Office of the Slovak Republic announces that on 30 March 2023 it will start public ex post consultations with business entities on the ex post evaluation of the following regulation:

Period for conducting the ex post evaluation (calendar semester):
I/2023 

Gestor(s) of the legislation:
Industrial Property Office of the Slovak Republic

Title of the legislation:
Act No. 517/2007 Coll. on utility models and on amendment and supplementation of certain acts, as amended

Specification:
n/a

Ex post evaluation:
Regulations of one piece of legislation 

Regulation number from the ex post register:
26 - link to ex post register here (tu)

Location:
§ Sections 38(4) and 40(1) and (2)

Reason for inclusion:
10.3(d) of the Uniform Methodology for Selected Impact Assessment

Brief description of the regulation:
Obligatory carrying out of a search by the Office of the State Patent Office on the state of the art in proceedings for a utility model application. Time limit for filing objections to the registration of a utility model.

Wording of suggestions from the business environment:
The proceedings on utility models and the associated obligation to conduct a search by the Industrial Property Office unnecessarily overwhelms the patent department clerks and has a negative impact on the patent grant proceedings and the Office's commercial services. We recommend reconsidering the obligation to carry out a search as well as reconsidering the time limits in opposition proceedings.

Consultation deadline:
Businesses and/or the public may express their interest in the consultation until 11 May 2023.  The consultation will take place by electronic exchange of information.

Preliminary position of the consultee:
The introduction of a mandatory state-of-the-art search in utility model application proceedings and the introduction of an opposition procedure with effect from 1 January 2008 on the basis of Act No 517/2007 Coll. on utility models and on amendment and supplementation of certain Acts. The prepared search report is published by the Office for Design Research together with the application, and after this publication third parties may file objections to the technical solution applied for on the grounds provided for by law within a period of 3 months. The main objective of the introduction of the opposition procedure was to prevent the deliberate abuse of the registration principle of the procedure for registration of utility models. 

A state-of-the-art search is carried out by the Office for the Protection of Competition of the Slovak Republic on all utility model applications that are not withdrawn, rejected or discontinued before publication (whereby the search report contains only a list of documents found by the search without an evaluation of their degree of relevance). The search report is sent to the applicant prior to publication of the application and the applicant may, on the basis of the result of the search, modify the claims for protection prior to the registration of the utility model in such a way that the protection conferred by the utility model does not conflict with the documents found by the search, thus avoiding the possible later deletion of the utility model from the register.

Currently, the search report is generally delivered to the applicant within 6 months of the filing of the utility model application (i.e. before the expiry of the period during which the applicant can claim priority from the application abroad), on the basis of which the search can also be used as a basis for deciding whether it is appropriate/reasonable to apply for protection of the solution abroad. In addition, if the applicant claims priority from the Slovak utility model application when filing a subsequent application abroad and submits a search prepared by the Office in the proceedings on the subsequent application, a part of the fee for the search on the subject matter of the subsequently filed application may be refunded to the applicant (e.g. The VPI, on the basis of the submission of a search report carried out by the Office on the subject-matter of the utility model application, refunds to the applicant up to 40 % of the fee for carrying out the search on the subject-matter of the international application subsequently filed, which currently amounts to a "rebate" of € 710). 

Currently, the searches carried out on the subject matter of utility model applications are published together with the respective applications and third parties may file objections to the registration of a utility model in the Register or a petition for the deletion of a utility model from the Register also on the basis of the documents listed in the search report (i.e. they do not have to look for documents themselves which are an obstacle to the protection of a particular solution - a list of such documents is "supplied" to them by the Office of the Office of the Slovak Republic). If the search were carried out only optionally on the basis of the applicant's request, which would be accompanied by an administrative fee, in most cases third parties would lose this "service" (this can be assumed in particular in cases where the applicant knows that he is applying for protection of a known solution and would not have requested the search for obvious reasons).

Replacing the 'automatic' search with a search carried out only on the basis of a fee-based request would therefore constitute a narrowing of the 'services' available to applicants and third parties under the system currently in place. A modification which would bring the mandatory carrying out of prior art searches in proceedings for a utility model application into the realm of an option at the applicant's discretion could be perceived by those entities as a 'step backwards', since they would lose some of the advantages provided by the current system.  It should also be pointed out that the possible introduction of an option search fee would increase the financial burden on entrepreneurs.

The Gestor does not deny that the issue of the nature of the utility model application procedure has been a resonant one and has been the subject of several discussions and consultations in recent years (public consultation on the opposition system for utility models in the first half of 2021; public consultation on the conduct of searches in the utility model application procedure 11/2022 to 1/2023).While the regulation still serves its purpose, the Gestor sees longer-term demands for a rethink of the current system of registration of utility models. According to one of these requests, which is also the subject of the business complaint under review, the introduction of an optional search would create room for speeding up proceedings, as there would be less of a burden on the Office's expert staff, and would also create room for revenue for the Office. However, the Gestor stresses the need to maintain a balanced system that respects the needs and capacities of all stakeholders. Therefore, the complaint as such cannot be accepted in its entirety; the Gestor considers the search as a mandatory element of the utility model application procedure to be a value-added element which brings more positives than negatives. In the light of the above, the Gestor considers the part of the complaint concerning the overburdening of the OHIM's experts and the negative effects on the patent grant procedure and the OHIM's commercial services to be unfounded.

Contact person of the rapporteur:

Jitka Mikuličová, jitka.mikulicova@indprop.gov.sk, 048/4300 269

Lenka Midriaková, lenka.midriakova@indprop.gov.sk, 048/4300 273


Questionnaire on the ex post evaluation of regulation No 26

Annex_Questionnaire for the ex post evaluation of regulation No-26 (Príloha_Dotazník k ex post hodnoteniu regulácie č-26)

Annex_Questionnaire on the ex post evaluation of regulation No-26 (Príloha_Dotazník k ex post hodnoteniu regulácie č-26)

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[1] The regulation in question was included in the Ex Post Register pursuant to point 10.3(d) of the Uniform Methodology and the assessed regulation was submitted to the legislative process before 1 April 2015.

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Archive of consultations with businesses (Archív konzultácií s podnikateľskými subjektmi)