The new patent law, which entered into force in Kosovo on September 13, introduces important novelties, which we explain below.
The Law on Patents
The new Law on Patents introduces the possibility for an invention belonging to a citizen of the Republic of Kosovo to be kept secret for such period of time as the national interest requires. The Security Council of the Republic of Kosovo is expected to set forth the criteria and the procedures to be applied under these circumstances.
According to the new law, the patents, as objects of property, may not only be assigned or licensed to other parties, but may also be pledged, levied in execution or be subject to bankruptcy proceedings.
The new law for the first time introduces provisions on compulsory licenses for pharmaceutical products for export to countries with public health problems, as well as supplementary protection certificates for pharmaceutical and plant products. When deciding on the grant of such a compulsory license, the court must take into consideration the Decision of the World Trade Organization (WTO) General Council of 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health. These provisions will not enter into force until the Republic of Kosovo joins the European Union.
The law introduces the possibility for the applicant to restore the priority rights provided (1) the request is filed within two months following the expiration of the 12-month priority period, but before the completion of the technical preparations for the patent application publication (2) proof is provided that the applicant failed to meet the deadline despite the exercise of due care, and (3) the prescribed official fees are paid.
Under the former patent law, the Kosovo IPO had to perform a formal and a substantive examination before publishing a patent application in the Official Gazette. If the patent application met the formal criteria and it was a patentable subject matter, at first sight, as provided in Articles 7, 8 and 9 of the former law, the patent application would be published in the IPO’s Official Gazette. Once a patent application was published, the IP holder had a six-month deadline to file a request for the issuance of the decision. The IP holder could, along with the request for the issuance of the decision, submit a copy of the grant decision issued by any International Preliminary Examining Authority. If the copy of the grant decision was not submitted within six months from the publication of the patent application because the decision had not been issued, the IP holder, in accordance with Article 40, had to submit a confirmation of the granted patent within ten years from the date of application.
Under the new law, the Kosovo IPO will also perform a formal and a substantive examination of the patent application, primarily in order to establish whether an invention, at first sight, is novel on the global level, involves an inventive step and is industrially applicable. However, under the new law, if the patent application complies with the formal and substantive requirements, the IPO will issue the grant decision, which will be entered in the IPO’s Register of Patents and published in the Official Gazette. The IP holders will not be obliged to file a request for the issuance of the decision within six months from the publication of the patent application. The IP holder will only be obliged to submit to the IPO the written evidence confirming the patentability of the subject matter. Such evidence must be submitted no later than on the date of expiration of the ninth year of the patent term. Any patent for the same invention granted by the European Patent Office, or any other patent office which is a member of the European Patent Convention and also acting as an International Preliminary Examining Authority under the Patent Cooperation Treaty, will be accepted as an evidence of the granted patent. For the patent applications already published in the Official Gazette, the patent examiner will send official notifications to the right holders on how to proceed.
Appeals of IPO’s decisions can be filed within 15 days from the receipt of the decision. The law requires that the Ministry of Trade and Industry, under which the IPO operates, establish a commission, which will have the authority to review the appeals. There is a 30-day deadline to file a lawsuit against the commission’s decision before the competent court. Before the new law entered into force, the rules of the Law on Administrative Procedure applied.
The new law for the first time allows foreign legal entities or natural persons to file patent applications, receive notifications from the IPO and pay official fees directly to the Kosovo IPO provided a local address for correspondence is communicated to the IP Office. The foreign legal or natural persons can also submit the patent application in a language different from the official languages in Kosovo provided they file the translation of the patent application within six months from the filing date.
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