SLOVENIA Law and Practice Contributed by: Nataša Pipan Nahtigal, Veronika Novak and Katarina Čepon, Šelih & partnerji
If no such declaratory decision is requested or issued, the patent’s validity is ten years from the application date. In cases where the patent owner applied for a short- term patent, then the patent’s validity is ten years from the application date. Renewal and Maintenance Fees Patents are maintained on an annual basis through the payment of prescribed renewal fees. If a renewal fee is not paid by its due date, the patent owner may still validly pay the fee within a six-month grace period, subject to a 50% surcharge. If the fee is also not paid within this grace period, the patent owner may, within one month from the expiry of that period, file a request for further processing and pay the prescribed fee. Should this deadline likewise not be observed, the pat- ent owner may request restitutio in integrum, provided that the request is filed within three months from the date on which the cause of non-compliance ceased (subjective period) and, in any event, no later than one year from the missed deadline (objective period). Supplementary Protection Certificates and Term Extensions Supplementary Protection Certificates (SPCs) and paediatric extensions are available under the law of the Republic of Slovenia. SPCs are granted for medici- nal products and plant protection products. Paediatric extensions are available only for medicinal products. 1.4 Ownership, Assignment and Licensing Applicant The applicant must be the inventor or the inventor’s employer. Employee Inventions If the applicant is the employer, rules on employee inventions apply. The inventor and employer shall fol- low a procedure described in the Employee Inventions Act (notification, taking over of the invention, patent application) and shall conclude an agreement that awards the inventor an appropriate remuneration.
Specific rules regarding remuneration apply for inven- tions made at public higher education institutions or
other public research institutions. Patent Assignments and Licences
To assign a patent, one of the parties (assignor or assignee) shall: (i) file a request for patent assignment; (ii) submit the agreement on the transfer of the patent with a translation in the Slovenian language when the request is filed by the assignee; (iii) pay the official fee; and (iv) where applicable, submit a Power of Attorney. The patent assignment is then recorded in the patent register. The assignment is valid upon conclusion of the assignment agreement; however, third parties may still rely on the register and consider the registered holder as the rightful owner. Likewise, the assignee may face limitations in enforcing the patent against third parties. Licence agreements must be concluded in writing and cannot be concluded for a term exceeding the dura- tion of the statutory protection of the patent rights. There is no requirement for a licence to be recorded in the patent register, nor is there any statutory provision stipulating that recordal is necessary for the licence to be effective against third parties. However, third parties will generally only become aware of existing licences if they are recorded in the register; therefore, recordal is recommended. 1.5 Patent Infringement and Defences Direct and Indirect Patent Infringement Direct infringement occurs where a third party, with- out the consent of the patent owner, performs any of the following acts: • manufacturing, offering, placing on the market, using, importing or stocking a product that is the subject of the patent; • using a patented process, or offering the process for use where the third party knows or should have known that such use is prohibited; or • offering, placing on the market, using, importing or stocking a product obtained directly by a patented process. Indirect infringement occurs where a third party:
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