International report - Croatia kicks off 2008 by joining the European Patent Convention 06 Feb 08
Korper & Partneri - Croatia
On 1st January 2008 Croatia acceded to the revised European Patent Convention (EPC). This is the latest in a series of initiatives designed to modernise the country’s patent regime, which is now fully in line with the level of international patent protection required by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), as well as EU legislation.
Evolution of patent law
A few months after the proclamation of independence in 1991, the Republic of Croatia established the Croatian State Patent Office, which took over the granting of industrial property rights from the Federal Patent Office of the former Yugoslavia in Belgrade. By the end of 1996 the office’s responsibilities had extended to copyright and related rights, which were previously handled by the Ministry of Culture. Subsequently, the office was renamed the State Intellectual Property Office for the Republic of Croatia (SIPO).
Following this, the Republic of Croatia became a member of the World Intellectual Property Organisation (WIPO), as well as a party to conventions and treaties administered by WIPO to which the former Yugoslavia had been party. The Law Governing Inventions and Technical Improvements and Trademarks, which generally conforms to the Paris Convention for the Protection of Industrial Property, entered into force in Croatia on 2nd April 1992. This has since passed through two major substantial changes. The first change extended the term of protection for patents to 20 years and stated that patents did not have to originate within the territory of the former Yugoslavia. The second removed restrictions relating to the patentability of chemical and pharmaceutical products.
The TRIPs Agreement lays down substantive principles for all members of the World Trade Organisation (WTO), leading to a more harmonised and robust global patenting system. In 2000 the Republic of Croatia became a party to the WTO and fulfilled all the obligations set out in TRIPs. By acceding to the Patent Cooperation Treaty (PCT) in 1998, Croatia further enhanced its protection for patents. The Croatian patent system was brought fully into line with the TRIPs Agreement through the introduction of a new Patent Law in 2000; this introduced substantially unexamined consensual patents, with 10-year terms.
In Croatia, as in many developing countries, the proportion of patent filings and patent grants to foreigners is much higher than for domestic applicants. For this reason, in 2000 new provisions were introduced to allow grants on the basis of the search and examination work conducted by foreign offices, provided that these were PCT examining authorities. Similarly, foreign patent applications that have previously been examined by the European Patent Office (EPO) could request that SIPO use EPO examination results. As a result, over the last seven years SIPO has been able to use work done by foreign offices as reference material in the substantive examination of patent applications.
As part of the EU accession process, Croatia harmonised its legal provisions for intellectual property in 2003. A new Patent Law was adopted by Parliament on 15th October 2003 and entered into force on 1st January 2004. The present Patent Law is fully harmonised with the rules and regulations of the EU Directive on Biotechnological Inventions (98/44/EC). A second important change was the implementation of the Council Regulation on Supplementary Protection Certificates for Medicinal Products for Humans and/or Animals (1768/92) and the Council Regulation on Supplementary Protection Certificates for Plant Products (1610/96). Further amendments made it possible to obtain protection for second medical indications. In addition, a new Chapter XII was introduced to the law in accordance with the Cooperation and Extension Agreement between the Croatian government and the European Patent Organisation, signed on 16th June 2003 in Munich. That law has been amended twice since 2004. The first set of amendments brought in formal requirements set out in the Patent Law Treaty relating to the filing date, reinstatement of rights, reinstatement of priority rights, further processing and acts of representation before a national office. The latest round of amendments to Chapter XII promulgated provisions relating to the enforcement of patent rights in line with the EU Directive on the Enforcement of IP Rights. The changes relate to supplementary protection certificates, which are defined in more detail.
Recent patent law developments
Most recently, Croatia acceded to the revised EPC on 1st January 2008. In order to prepare for this, Chapter XII.a was introduced to the Patent Law in order to regulate the processing of European patent applications. This meant that from 31st July 2007 it was no longer possible for applicants to request that substantive examination take into account examination results from foreign offices.
Going forward into 2008, the next big changes on the horizon are (i) the introduction and implementation of an appeal system against SIPO decisions in the first instance (making appeals possible within 30 days), and (ii) the establishment of the Board of Appeal as an independent body separate from SIPO (Chapter XI). The envisaged judicial body would comprise a president, two deputies and 14 legally and technically qualified members. These would be appointed by the government, following recommendations from the director general of SIPO. Members would be appointed for five years with the possibility of re-election. The Board of Appeal and SIPO would cooperate on administrative matters.
However, due to a lack of legally and technically qualified experts in Croatia, launching and maintaining the Board of Appeal will impose a tremendous burden on SIPO and the Croatian government. As the Croatian community of IP experts is so small, ensuring that decisions from the Board of Appeal remain autonomous will be a cumbersome process, since it remains unclear whether members of the board would be barred from involvement in the first instance decision. The relevant provisions will enter into force on 1st June 2008, so the eventual composition of the Board of Appeal remains to be seen.
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