Q&A IV – Ex-Yu: Basics on patent protection Protocol

Monday, September 21, 2020

Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.

We invite you to let us know if you have any IP questions – ip@ptma-mihailovic.com

 

Q1: Are EP validations and PCT extensions available in all jurisdictions?

We are able to validate EP in all jurisdictions except Kosovo.

It is possible to extend PCT to all jurisdictions but Kosovo and Slovenia.

Q2: What are the necessary translations for different patent rights?

When validation 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.

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).

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.

In all other patent application cases (PCT, national patent with priority, petty patent) full translation is necessary in all jurisdictions.

And again, English translation is needed when the initial application text is in another language.

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. 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.