Patents

A patent can protect an invention in any field of technology that is new, involves inventive activity and is capable of industrial application. New solutions to any technical problem which are not obvious to a person skilled in the art and which can be regarded as inventive may be patented. The subject of patent protection may be new products, devices, methods of production, new technologies, drugs biotechnological inventions and others. These do not always have to be revolutionary inventions, as patent protection can also be granted for improvements to well-known solutions. However, the worldwide novelty of an invention is a condition for patentability. The fact that a known technical solution is not protected by a patent in Slovakia or is not used economically in Slovakia does not mean that it can be granted a patent in Slovakia.

Some subject matter, such as discoveries, scientific theories, computer programs, plant varieties, animal breeds, surgical and therapeutic methods of treating humans and animals, and others, cannot be protected by a patent, either because the subject matter is not considered an invention under the Patent Act or because it is excluded from patentability.

Provided that the owner of a patent granted by the Industrial Property Office of the Slovak Republic (hereinafter referred to as the Office) pays annual maintenance fees, he has the exclusive right to commercially exploit his invention throughout the territory of the Slovak Republic for a period of 20 years from the filing of the patent application. Without his consent, no one in Slovakia may manufacture, use, offer or place on the market, or for this purpose store or import a product protected by a patent or a product manufactured in a manner protected by a patent. Thanks to the monopoly on the commercial exploitation of the invention, the patent holder acquires a strong market position.

The owner of a patent may dispose of the patent like other items of property - in addition to being able to use the invention protected by the patent in his or her economic activity, he or she may transfer the patent to another person, grant consent to third parties to use the invention (he or she may grant them an exclusive or non-exclusive licence) or create a pledge over the patent.

The grant of a patent for an invention is a confirmation of its novelty and inventability. For this reason, the number of patents granted is one of the criteria used to assess the 'technical maturity' of an undertaking. Patents create a positive image of a company and can increase its success in business negotiations.

The validity of a patent is limited territorially - the patent is valid only in the territory of the country for which it was granted. Patents granted by the Office are valid (rights can be exercised) only in the territory of the Slovak Republic. Slovak applicants must apply for patent protection abroad to the relevant national or regional patent offices. The owner must pay annual maintenance fees to maintain the validity of the patent. The amount of the fee that a patent owner must pay in a particular country depends on the size and purchasing power of the market offered by that country (as a rule, the higher the fees, the more lucrative the market offered by that country). For this reason, it is recommended that the owner maintains the patent in those states in which he exploits his invention economically or in which he wishes to prevent competitors from exploiting the invention. Applicants should also not be "prolific" in filing patent applications (there is also a filing fee). They should develop a strategy for patenting their invention, in which they should take advantage of all the benefits provided by international agreements governing the protection of industrial property, in particular the possibility of claiming the right of priority from an earlier filed application in Slovakia when filing an application abroad.

After the expiry of 18 months from the priority date, the Office shall publish the patent application. By publication, the solution which is the subject of the patent application becomes prior art, on the basis of which no one anywhere in the world should be granted a patent for an identical solution. Thus, the filing of a patent application is of significance to the applicant even if the patent is not granted or if the applicant decides not to maintain the granted patent in force. By filing an application, the applicant avoids being prevented from commercial exploitation by a competitor who later developed an identical solution but obtained patent protection for it.

If a patent is granted on the basis of a patent application filed with the Office, its owner obtains a monopoly for the commercial exploitation of the protected invention in the territory of the Slovak Republic. In addition, the filing of a patent application with the Office gives the applicant a right of priority, which he may exercise within 12 months when filing an application with identical subject matter abroad. Thus, filing an application with the Office allows the applicant time to investigate the commercial potential and patentability of the invention and, where appropriate, to obtain the funds necessary to patent the invention abroad. This may prevent the applicant from wasting money on patent protection in countries where the invention will not be commercially exploited (the product is not in demand on the market, cheaper products with similar characteristics are available on the market, the applicant fails to raise the capital needed to establish itself on the foreign market, etc.) and from finding out that its invention does not meet the conditions for patentability only after filing applications abroad. If the applicant fulfils the statutory requirements, the Office shall, within 9 months of the filing of the application, carry out a search on the subject-matter of the application and notify the applicant of the result of the search. The search report prepared by the Office is a valuable source of information which can greatly assist the applicant in deciding whether to apply for patent protection for the invention abroad. It is also important to note that by filing an application in Slovakia, the applicant, at a relatively low cost (the filing fee is EUR 30 if the applicant is the originator of the invention or EUR 60 if the applicant is another person), prevents anyone, anywhere in the world, from being granted a patent on the identical invention.

The Office shall first subject each duly filed application to a so-called preliminary examination, during which it shall ascertain in particular whether the application complies with the prescribed formal requirements - i.e. whether the application contains the prescribed particulars, whether the relevant administrative fees have been paid and whether the application does not contain any obvious defects which would prevent its publication. In the event of a positive outcome of the preliminary examination, the Office shall publish the application after the expiry of 18 months from the date of priority. After publication of the patent application, anyone may submit observations on the patentability of its subject matter, which shall be taken into account by the Office when carrying out a full examination of the application. A full examination of a patent application, which determines whether the subject matter of the application meets the substantive conditions for protection, i.e. whether it is new, whether it is the result of inventive activity and whether it is capable of industrial application, shall be carried out by the Office on the basis of a request from the applicant or a third party. Such a request must be made within 36 months of the filing of the application, otherwise the Office shall discontinue the application. If, in the course of a full examination, it is found that the subject-matter of the application is novel, involves an inventive step and is capable of industrial application, and the application meets all the requirements laid down by law, the Office shall grant a patent for the invention. Otherwise, the Office shall refuse the application or, as the case may be, discontinue the application proceedings. The maximum term of validity of a patent is 20 years from the filing of the application, subject to the owner paying annual maintenance fees.

In particular, they should not disclose their invention to the public before filing a patent application, as such disclosure is an obstacle to the grant of a patent for the invention. Making an invention available to the public does not only mean publishing information relating to the invention in the literature, but also presenting such information in the media, at seminars, conferences, workshops or other public events, exhibiting the product at an exhibition or placing it on the market. If the inventor wishes to protect his invention by a patent, he may not make his invention available to the public in any way before filing the application. Due care should also be taken by the applicant in the preparation of the patent application documents, as the possibilities to amend the patent application after filing are largely limited. After filing, the applicant may only make changes to the application which do not go beyond the scope of the original filing. This means that it is not permissible to expand the content of the application to include information that was not already part of the application at the time of filing.

An invention (technical solution) may also be protected by a utility model in the territory of the Slovak Republic. The rights of the owner of a utility model are in principle the same as the rights of the owner of a patent, but the maximum term of protection is different - a patent is valid for a maximum of 20 years from the filing of a patent application, a utility model for a maximum of 10 years from the filing of a utility model application. The procedure before the Office for a patent application and a utility model application is also different. Before granting each patent, the Office assesses whether the invention meets the conditions for protection, i.e. whether it is new, involves an inventive step and is capable of industrial application. In proceedings for a utility model application, the Office does not examine ex officio whether the technical solution is new and inventive. In the case of a utility model application, compliance with these conditions is examined only if objections to the registration of the utility model are filed after publication of the application (objections to the registration of the utility model may be filed by anyone within three months of the publication of the utility model application). As a result, the procedure for a utility model application is considerably shorter than the procedure for a patent application - ideally (if the application documents are already competently prepared at the time of filing the application and no opposition to the registration of the utility model is filed) the utility model is registered before the expiry of 12 months from the filing of the application. The same solution may be protected simultaneously by a patent and a utility model in the territory of the Slovak Republic. An invention may also be protected by a European patent in the territory of the Slovak Republic. A European patent application shall be filed with and prosecuted before the European Patent Office.

Where the rights of the patent proprietor are infringed, for example where a third party markets a protected product without the patent proprietor's consent, the patent proprietor may seek an injunction against the infringement in the appropriate court. If the patent proprietor has suffered damages as a result of the interference with his rights, he has the right to claim compensation for those damages, including lost profits. The court may, upon application, order that the infringing products be withdrawn or permanently removed from the market, otherwise secured in such a way as to prevent further infringement or threat to the rights of the patent proprietor, or destroyed at the expense of the infringer. Where the patent proprietor has suffered non-pecuniary damage, he shall be entitled to appropriate compensation, which may include monetary compensation.

What are the main differences between a patent and technical solution? More info  (Aké sú hlavné rozdiely medzi patentom a úžitkovým vzorom? Viac info...)