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Utility models

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Applying abroad

Patents and utility models protect technical solutions and it is up to the applicant to decide which form of protection, subject to the legal requirements, to opt for. The same applies to foreign applications. An invention that is applied for patent protection in the Slovak Republic may be granted utility model protection abroad and vice versa. A technical solution which is protected by a utility model in Slovakia may be protected by a patent abroad. However, before filing a utility model abroad, it is necessary to ascertain whether the country in which protection is sought has the possibility of granting protection by utility model, whether the procedure is based on the examination or registration principle, etc. A utility model can be filed abroad by means of a national utility model application or an international PCT application.

If the applicant opts for protection by a utility model abroad after filing a patent application or utility model application in Slovakia, he may, according to the Paris Convention for the Protection of Industrial Property, claim a right of priority abroad from the application filed in Slovakia. An application filed abroad will be granted priority to an application filed in Slovakia if it is filed within 12 months of the filing of the application in Slovakia.

If the national legislation allows it and the applicant expects his solution to be used in a particular state, it is advisable to try to secure protection for the utility model in that state by filing a national utility model application. In order to initiate proceedings for a utility model application, it is necessary to apply for protection, to submit a description of the technical solution claiming protection in the appropriate language, to pay the fees and to choose a representative who is entitled to represent the applicant in the proceedings before that patent office.

By filing an international application under the Patent Cooperation Treaty, the applicant can apply for protection of his invention abroad. The PCT is administered by the World Intellectual Property Organisation (WIPO), based in Geneva. By filing an international application, all states that are contracting states to the PCT at the date of filing of the international application are automatically designated as the states in which the applicant seeks protection for the invention. In relation to each State, it is automatically determined that the international application seeks the grant of every type of protection available in that State (http://www.wipo.int/pct/en/texts/pdf/typesprotection.pdf, including the grant of both national and regional patents, if applicable in relation to that State.

An international application may be filed with the Industrial Property Office of the Slovak Republic (hereinafter referred to as 'the Office') in Banská Bystrica by any citizen of the Slovak Republic or by any person residing or having his/her registered office in the Slovak Republic. The international application must be filed in English, French, German or Slovak. The application (PCT/RO/101, Inštrukcia pre prihlasovateľov (PDF, 2,1 MB)) must always be submitted in English, French or German. The international application may be filed with the Office on paper or electronically via the ePCT system (systému ePCT).

Proceedings on the international application shall begin with the filing of the international application. The filing of the international application and the subsequent prosecution of the international application are subject to the payment of the relevant fees (http://www.indprop.gov.sk/patenty/patenty/poplatky-pct). The international application procedure consists essentially of two main phases - the international phase of the proceedings and the national phase of the proceedings.

In the international phase of the proceedings, the international search authority chosen by the applicant prepares an international search report and a written opinion in relation to the subject matter of the international application. An applicant filing an international application with the Office may choose the European Patent Office or the Visegrad Patent Institute as the international search authority. On the basis of the results of the search and the written opinion, the applicant decides whether to apply for protection for his invention in the specific countries of his choice or whether to apply for the relevant regional patent (national phase of the proceedings). Under the PCT, the time limit for entering the national phase is 30 months from the priority date, although the legislation of the relevant State or regional organisation may allow for an even longer period (usually 31 months). For Luxembourg and Tanzania, which do not have harmonised national legislation under the provisions of Article 22(1) of the PCT, the time limit is shorter. In these States, as well as in some others, the longer time limit is conditional upon the filing of an application for international preliminary examination. More detailed information on the time-limits for entering the national phase of proceedings for individual States and regional organisations can be found on the WIPO website (http://www.wipo.int/pct/en/texts/time_limits.html).

The national phase of the proceeding is conducted according to the requirements of the national legislation of the State concerned or the legislation of the regional organisation. To enter the national phase, the applicant must comply with the requirements laid down in this legislation, pay the relevant fees and, where appropriate, choose a representative who is authorised to represent the applicant in the proceedings before the national or regional office concerned.

Further information on the procedure for international applications can be obtained from the WIPO website (http://www.wipo.int/pct/en/).