On May 24, 2019, the Croatian Intellectual Property Office closed the public discussion on the new Patent Act draft, which should soon be forwarded to the Croatian Parliament for approval.
The main change brought by the new Act is the introduction of the “utility model” concept to replace the existing “consensual patent”. The new Act would also provide for the completion of the prior art search and opinions on patentability at an earlier stage of the application procedure, allowing for more effective risk management by the rights holders. Finally, all existing amendments to the Act would be consolidated for the sake of clarity and transparency.
The existing term “consensual patent” can be misleading because the word “patent” contained in it implies that it refers to an examined right, which is why the new Act proposes its replacement by the term “utility model”. The Act also limits the utility model subject matter, excluding processes, inventions in the field of biotechnology, chemical or pharmaceutical substances, and inventions the commercial use of which would be contrary to public order or morality.
The Act introduces a separate registration procedure for utility models – an application will be published as soon as the formal examination is completed, which will significantly shorten the registration procedure. There will be no 6-month period for opposition proceedings as is the case with the registration procedure for patents and consensual patents under the current Patent Act.
Due to frequent doubts and issues related to the enforcement of utility models, i.e. in infringement procedures, the proposed Act provides that the holder of a utility model cannot request civil protection on the basis of an unexamined right.
While the existing Patent Act allows utility model holders to file a request for substantive examination of the utility model in order to convert it into a patent throughout the ten-year duration of the utility model, the new Act proposes the shortening of this deadline to seven years from the utility model application date.
According the existing Patent Act, the prior art search is carried out in parallel with substantive examination, namely, after the application has been published in the Official Gazette and a request for substantive examination has been filed. The new Act proposes the introduction of a preliminary prior art search and a preliminary written opinion on the patentability of an invention at an early stage of the examination procedure, before an application is published in the Official Gazette. Under the new draft Act, a preliminary search and written opinion on patentability is to be conducted by the European Patent Office (EPO), which has the capacity to conduct searches and examinations in the most complex areas of technology. For such cooperation between the Croatian IPO and the EPO, a proper amendment of the Act is required.
Finally, the new Act would amend certain provisions found to have shortcomings in practice. For example, it proposes the introduction of definitions for the most important terms used in the Act, as well as a clear distinction between the “reinstatement of rights” and the “restitution of rights”.
The new Patent Act would improve legal certainty by introducing a clear distinction between the patent and utility model concepts. It would also provide a more efficient and transparent registration procedure, and ensure quality protection in all areas of technology, including the most complex areas. It is also expected to have a positive impact on applicants such as startups and research organizations who are often unable to register their inventions because of lengthy and costly procedures.