- 1. What is necessary to file a patent application?
A patent application contains a description of the invention, patent claims and an abstract, and drawings if referenced in the description of the invention. To file a patent application, a completed P-1 Form, proof of payment of administrative fees and procedural charges and the text of the application must be submitted to the Office, which is in accordance with Articles 34 to 38 and 40 of the Patent Act or Articles 12 to 16 of the Patent Regulations. For help, you can see an example of a correctly completed Form P-1, an example of payment slips for procedural charges and administrative fees, an example of a properly written application for a fictional invention and examples of European applications from the publication “How to Obtain a European Patent” (chemistry, electrical engineering/physics, mechanics, computer-implemented inventions). It is important to emphasize that after filing the application, the description of the invention must not be changed in such a way that the changes go beyond the scope of protection required by the original application, and it is extremely important that the invention is described clearly and in detail.
- 2. What are the costs of the patent protection and maintenance procedure?
When filing a patent application, it is necessary to pay HRK 1200 of procedural charges. The cost of maintaining a patent in value for the first two years is included in this price. The applicant must formally submit a request for a search of the state of the art and pay the costs of preparing a search report, and may request a written opinion on patentability, which is charged separately.
Following the publication of the application in the Gazette, a procedure of substantive examination of the requirements for granting a patent follows, and the amount of the procedural charges depends on whether a written opinion on patentability has been previously prepared or not.
The right holder is obliged to pay a fee for the maintenance of the patent in value every year. Maintenance in value is also paid for the patent application starting from the third year counting from the date of filing the application, since the first two years are included in the procedural charges for filing the application. An overview of costs and their sequence in the process of granting and maintaining a patent according to applicable regulations can be found in the “List of Basic Procedural Charges for Granting and Maintaining a Patent”.
- 3. Does the applicant have to appoint an authorised representative in procedures before the SIPO?
As a rule, an applicant who does not have a residence or a business domicile in Croatia must appoint an authorised representative to represent him in proceedings before the Office. However, there are exceptions to this rule, so a foreign person can independently take certain actions that are primarily related to the filing of the application or according the date of filing, then he can independently pay fees and for maintenance of rights, provided that the Office provides an address for correspondence in Croatia.
Applicants who are Croatian citizens do not have to appoint an authorised attorney; however, as the patent granting procedure is very complex and formalized, it would be useful to seek professional assistance from a patent representative in quality application preparation, as it could depend on this fact whether the procedure will end with the grant or rejection of the patent.
- 4. How long does the patent granting procedure take?
The patent granting procedure begins with the filing of an application with the Office. Once the filing date has been accorded, a legal period of 18 months runs during which the technical content of the application is kept secret. During this period, a formal examination of the patent application is carried out, a mandatory search of national and international databases that make up the state of the art is performed, and a preliminary opinion on patentability can be prepared when requested by the applicant. If the requirements are not fulfilled, the Office invites the applicant to eliminate the deficiencies within the legal time limit. After 18 months, the application is published in the Croatian Intellectual Property Gazette, and after publication it is available in the database on the website of the Office.
After publication, the applicant must submit a request for the implementation of a substantive examination procedure in which the novelty, inventive step and industrial applicability of the invention, as well as other legally prescribed requirements are examined. Although the patent granting procedure can take several years, it is important to note that protection is conditionally granted by according a filing date of a patent application. If a patent is granted, the protection granted may last for a maximum of 20 years, starting from the accorded filing date.
- 5. What is a search report of the state of the art?
A search report of the state of the art is a search report of national and international databases that make up the state of the art for an invention to be protected by a patent. Unlike the old Patent Act when the examination of the state of the art was performed simultaneously with the substantive examination procedure after the publication of the application in the official gazette, now this is carried out before the publication of the patent application. The search is an essential element of the patent granting procedure designed to identify the prior state of the art relevant to the application. The purpose of the search is to determine, on the basis of the documents listed in the search report, whether and to what extent the invention is patentable. This allows the applicant to assess his chances of obtaining a patent before paying the costs of a substantive examination, and to avoid further ineffective conduct of the procedure and its charges in the event of a negative prior opinion.
- 6. Is it always possible to prepare a search report of the state of the art?
When the subject matter of the claimed invention is clear from the claims, a state of the art search report may be prepared. It then lists the relevant documents with the date of their publication and with the category designation relevant to certain patent claims.
If it is not possible to clearly identify the subject matter for which protection is claimed from individual patent claims, or if the application does not have the unity of the invention, a partial state of the art search report will be made and the reasons why it was not possible to conduct the search in full will be stated. There is a possibility that a state of the art search for the claimed invention cannot be carried out at all, in which case a statement is drawn up detailing all the reasons why it was not possible to produce a search report.
- 7. What do the categories of documents listed as relevant to patent claims mean?
Categories of documents or their relevance for each individual patent claim of the invention for which the state of the art is searched are indicated by letters having the following meaning:
||particularly relevant to the novelty and inventive step of the invention if the document is taken alone (the invention cannot be considered new or inventive)
||particularly relevant to the inventive step if combined with one or more documents of the same category (the invention cannot be considered inventive)
||defines a general state of the art that is not considered particularly relevant (does not prejudice the novelty or inventive step of the invention)
||a document relating to oral communication, use, exibition or otherwise (always accompanied by a symbol indicating the relevance of the document, for example: "O, X"; "O, Y" or "O, A")
||a document published before the filing date but after a recognized priority date (always accompanied by a symbol indicating the relevance of the document, for example: "P, X"; "P, Y" or "P, A")
||an earlier document but published on or after the date of filing the application
||a later document published after the filing date or priority date, but stated to understand the principle or theory on which the invention is based, or to explain that the reasoning or facts on which the invention is based are incorrect
||a document already cited in the application
||a document cited for other reasons (e.g. calls into question the right of priority)
||a document belongs to the same patent family
- 8. Can an application be amended (description, patent claims and drawings) before publication?
Yes, but only once, after receiving the report on the search of the state of the art, and at the latest until the submission of the request for a substantive examination. These changes will be considered in the substantive examination procedure.
- 9. Can software or web pages be protected by a patent?
Software/computer support as such or web pages cannot be protected by a patent. Computer programmes as such are not considered inventions (Article 6 paragraph (2), item 5 of the Patent Act), because they do not contain technical essence. Computer programmes are copyrighted and are protected under the Copyright and Related Rights Act. The appearance of the website may be protected under the Industrial Design Act.
However, a computer program as a form of computer-implemented invention could be protected by a patent if such a program can cause a greater technical effect during its work on the computer that exceeds the usual physical interactions of programs and computers, provided that all other statutory requirements are met, and in particular requirements relating to novelty and inventive step. Such patent claims cannot contain a list of programs, but should define all the characteristics that ensure the patentability of the process that is intended to be performed by the computer program during its operation.
- 10. Can an idea be protected by a patent?
The idea cannot be protected by a patent or by any other form of intellectual property protection. An idea is considered to be what is still in the mind of the innovator. Only when an idea is worked out and realized in some way can one try to protect the realization of that idea. Thus, a patent does not protect an idea but a concrete solution to a technical problem for the elaboration of which an intellectual effort has been invested.
- 11. On what basis can the right to exemption or reduction of payment of fees and charges be exercised?
Payment of fees and procedural charges is comprised by:
- Administrative Fees Act in the field of intellectual property rights; and
- Regulation on Fees for Proceedings in the Field of Intellectual Property and Professional Services of the State Intellectual Property Office.
These acts describe the categories of persons in the proceedings who are partially or completely exempt from paying these items. Thus, a patent applicant who, for example, submits proof of pensioner status will be completely exempt from paying administrative fees and partially (75% off) from paying charges.
In addition to the exemption of certain categories of persons in the proceedings, a lower price for filing a patent application may be realised if the applicant and the inventor are one and the same person, and additionally if the application is submitted not only in writing but also in electronic form. Calculation of basic charges is available here.
- A patent applicant shall pay HRK 100 of administrative fee and HRK 1,200 of charges.
- The applicant and the inventor are one and the same person, so that the amounts shall be reduced by 50%, i.e. HRK 50 of administrative fee and HRK 600 of charges.
- Furthermore, the application is submitted both in paper form and on a CD, so that the charges shall be reduced additionally by 50%, i.e. the applicant shall pay HRK 50 of administrative fee and HRK 300 of charges.
- Also, the applicant submitted proof of pensioner status, which exempts him completely from paying administrative fee, and charges shall be reduced additionally 75%, i.e. the applicant shall pay only HRK 75 of charges.
If the applicant is included in a certain category, he must submit proof of the stated status when submitting the application. It is desirable to submit also a completed Request for exemption from payment of administrative fees and/or special procedural charges. It is also possible to refer to the leaflet displaying correctly completed payment slips for patent application.
- 12. What intellectual creations are not considered inventions?
Pursuant to Article 6 paragraph (2) of the Patent Act, the following is not considered invention in particular:
• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• rules, instructions, and methods for performing mental activities, games or doing business;
• presentation of information and
• computer programmes.
These subject matters or activities are excluded from patent protection only to the extent that the patent application would relate to the subject matters or activities themselves. Patentable inventions can belong to any field of technology, must be new, have an inventive step and industrial applicability (in accordance with Article 6 paragraph (1) of the Patent Act).
- 13. Can a business method or operation be protected by a patent?
A business method or operation cannot be protected by a patent because it belongs to a category of creations not considered inventions (pursuant to Article 6 paragraph (2) item 3 of the Patent Act).
- 14. Can a project, event, quiz, game rules, TV show or teaching programme be protected by a patent?
A project, event, quiz, game rules or teaching program cannot be protected by a patent. The name or title of the project, event, quiz, rules of the game or teaching program could be protected under the Trademark Act.
- 15. Can a product that is not sold in Croatia be protected by a patent?
First of all, a product as a market category should be distinguished from a product category as one of the possible subject matters of patent protection. A product as a category of patent protection or an invention can be protected by a patent only if its technical essence is new, inventive and industrially applicable. The novelty of the invention (defined in Article 10 of the Patent Act) is assessed globally, so the invention will not be new if its technical essence is disclosed before filing a patent application in any country, in any language, in written, spoken form or on the Internet. Obtaining protection for a product should not be related to the market of the country for whose territory the product is to be patented, but the basic criterion is whether the product for which protection is required is new and inventive in relation to the known state of the art in the world. So, regardless of the fact that a product is not sold on the market of Croatia, it will not be able to be patented in Croatia if it has already been available to the public in any way anywhere in the world.
- 16. How to find out if there exists something similar to one’s own invention?
The similarity of the invention can be verified by searching the databases of patent documents. Free patent bases are most commonly used, such as register of the Office and hr.espacenet.com. In addition to independent search, professional patent search services are available, which can be requested at the INCENTIV as well.
- 17. Can a traditional product or process be protected by a patent?
In its essence, tradition means the transmission of knowledge, cognition and customs from generation to generation. Consequently, traditional products are products that have been present and known for generations in a certain area or in a certain environment, and their technical essence is most often known to a large number of people. If the technical essence of the invention was available to the public before the filing of the patent application, then patent protection is not possible. Certain traditional products or processes may be protected under the Act on Geographical Indications and Designations of Origin of Products and Services.
- 1. What is a utility model?
A utility model is a form of protection of an invention that is registered without a procedure for substantive examination of the patentability requirements. The process of registering a utility model is faster, cheaper and more suitable for simpler inventions and for individual inventors and small and medium-sized enterprises than patent protection.
- 2. Can the utility model protect the same as the patent?
No, the utility model protects only an invention in the product category, which cannot be in the field of biotechnology or a chemical or pharmaceutical substance, while a patent may protect an invention in any technical field belonging to the product, process, device or application category.
- 3. How does the utility model registration procedure work?
The application of the utility model has the same content as the patent application (description of the invention, patent claims and abstract and drawings, if necessary) and the same provisions of the Act apply to it as to the patent application. To submit an application for a utility model, it is necessary to submit a completed UM-1 form to the Office, evidence of payment of procedural costs and the text of the application in accordance with Articles 34 to 38 and 40 of the Patent Act or Articles 12 to 16 of the Patent Regulations. For assistance, please refer to an example of a correctly completed form UM-1, an example of payment slips for fees, and an example of a correctly written application for a fictional invention. The difference in relation to the patent application is in the allowed number of patent claims, which is limited to 10 in the utility model application. Novelty, inventive step and industrial applicability are not examined, and the utility model application is not published but the registered right.
- 4. How long does the utility model registration process take?
The registration procedure is short because the application is not examined or published, but after the formal examination a decision is made on the registration or rejection of the application of the utility model, so that the whole procedure can be realized within a few months from the date of application.
- 5. Can patentability of the utility model be examined?
At the request of the holder of the utility model, a substantive examination of the utility model may be performed to determine whether the invention is new, inventive and industrially applicable. This request cannot be submitted later than the end of the seventh year of the utility model and it cannot be withdrawn. If the examination shows that the invention is not new, inventive or industrially applicable, the utility model will be cancelled ex officio. If it is found to meet the necessary requirements, the utility model will be converted into a patent and as such entered in the patent register.
- 6. Can a utility model application be converted into a patent application and vice versa?
The applicant for a utility model may request its conversion into a patent application until a decision is made to reject or register the utility model.
Also, no later than 6 months from the date of publication of the report on the search of the state of the art in the official gazette of the Office, the patent applicant may request its conversion into an application of the utility model. In doing so, the converted applications retain the original date of their filing.
- 7. How long does the utility model last?
The utility model lasts 10 years starting from the filing date of the application of the utility model, as opposed to the patent protection which lasts 20 years.