August 31, 2023
In order to harmonize its legal framework with the European Union (EU) and international standards, The National Assembly of Slovenia adopted amendments to the Slovenian Industrial Property Act, which entered into force on July 27, 2023. The primary purpose of the amendments is to simplify procedures, increase affordability, and improve effectiveness. This article delves into the key changes regarding the amendments and their implications.
General changes:
• Modernizing Document Submission: One of the most significant changes is the shift from requiring original Power of Attorneys (POAs) to accepting scanned copies in electronic form. This change not only simplifies the process but also brings it in line with digital practices. In cases where a client has authorized multiple representatives, unless specified otherwise, the SIPO will direct documents to the most recent registered representative.
• Extension of Time Requests: The amendments now permit any party involved in proceedings to request an extension of time, a privilege previously reserved for applicants and right holders. This is predominantly necessary, because in new invalidation/revocation proceedings, not only holders of trade marks will have three-month time limits to respond to other party’s submissions, but also petitioners. So all parties to procedure before the SIPO will be able to extend time limits, unless it is explicitly excluded. This change adds flexibility to the process and acknowledges the varying needs of all stakeholders.
• Shortened Time Limits: The absolute time limit for requesting an extension of proceedings after missing a deadline (not fulfilling the obligations required in the procedure for obtaining the right) has been reduced from six months to four months, effective from the end of September. The unchanged two-month timeframe for filing this request from the point of discovering the delay (subjective deadline) remains in place. This adjustment aims to enhance timeliness and efficiency. However, there exists uncertainty regarding the specific delays to which this new remedy can be applied as the SIPO has displayed reluctance in applying this provision uniformly.
• Representation before Courts and SIPO: The amendments distinguish between representation before courts and the Slovenian Intellectual Property Office (SIPO). While court representation requires individuals to be attorneys at law or state bar examination passers, SIPO representatives can be patent or trade mark attorneys registered on the SIPO’s list of IP attorneys.
• New uniform tariff: The association of Slovenian Intellectual Property Attorneys shall introduce a uniform representative’s tariff within one year of the entry into force of this amendment.
• The amendments explicitly stipulate that evidence in foreign languages must be translated into Slovenian, ensuring clarity and accessibility in proceedings.
• Alterations Pertaining to Trade marks:
Previously conducted by the District Court in Ljubljana, the procedures for trade mark cancellation and annulment are now administrative processes under the jurisdiction of the IPO. While the new Act has already come into force, certain aspects remain uncertain due to the absence of corresponding Ministry regulations. This has created a situation where the official fees for such actions are yet to be determined. Pending cases initiated before the amendments came into effect will be resolved under the previous legal framework.
A change was also introduced with respect to proving the reputation of EU trade marks (as the basis for an opposition). According to the previously valid provision, the reputation of the previous mark was assessed only on the territory of Slovenia, which caused many problems. Due to this uncertainty, it has been added to the text that in the case of a prior EUTM, the reputation of this mark will be assessed on the territory of the European Union.
• Patent-Related Changes:
As of June 1, 2023, a patent package introducing unitary effect patents and the Unified Patent Court (UPC) came into force. This regime will coexist with the existing framework of national and European patents without unitary effect. There is a limitation foreseen on jurisdiction of Slovenian courts over European patents, validated in Slovenia for a specific period 7 years, extendable followed by potential 7 more years or more) giving European patent holders the option to exclude their patents from the exclusive jurisdiction of the UPC.
