Q1: What options are available?
When protecting your invention in multiple jurisdictions, there are options of going the Paris Convention route, PCT or EP way.
Paris convention has 177 members and allows member states a 12 month priority from the initial filing.
Apart form Kosovo, all other 7 territories are member states.
European Patents are filed in one or more of the 38 member states of the European Patent Convention, and then extended to other signatory countries via the EP validation process.
Companies planning to validate their EP rights have to do so within three months of first grant and, depending on the member state, often fulfil certain translation requirements.
It is possible to validate EP in all jurisdictions except Kosovo.
The third route is extension of PCT (Patent cooperation treaty) which has more than 150 contracting states, but here, unlike in the EP validation process, the granting of the patent itself remains under the control of the regional IPO, through extension of the PCT and entering the national phase.
There is a limit of usually 30 months from the very first priority to enter the national phase, but some countries extend this period – interestingly it is 34 months in Bosnia.
It is possible to extend PCT to all jurisdictions but Kosovo and Slovenia.
Q2: What are the necessary translations for different patent rights?
When validating EP (which is most often the case) translation of patent claims is translated for all jurisdictions except Serbia where the whole patent application needs to be translated; as Serbia falls in group 3, of member states, requiring full translation.
In Croatia, translation into English needs to be filed, too, if the patent application is not already in English (however, the translation needs to be informal and most often the clients already have a copy on file).
It is useful to know that the Serbian translation can be used in Bosnia and in Montenegro, meaning that one translation can cover 3 territories, cutting down on translation costs.
In all other patent application cases (PCT, Paris convention patent, petty patent) full translation is necessary in all jurisdictions.
And again, English translation is needed when the initial application text is in another language.
If filing a national application with priority, the priority document is translated, too.
Q3: How are the annuities paid?
Annuities are paid from the 3rd year from filing date until and including the 20th (if no SPC is requested. Kindly note that SPC is not available in Montenegro and Kosovo for the time being).
As the name suggest they are paid annually and have the usual grace period of 6 months, except in Macedonia and Albania which have longer grace periods for annuity payments - 9 and 8 months, respectively, doubling the official fees in the process.