PETOŠEVIĆ

January 2022

Serbia Amends Patent Law

Amendments to the Serbian Law on Patents entered into force on December 23, 2021 introducing important changes relating to Supplementary Protection Certificates (SPCs) and utility models.

SPC Manufacturing Waiver

The amendments harmonize Serbia’s patent law with EU Regulation No. 2019/933, enabling companies in Serbia to produce a generic or biosimilar version of an SPC-protected medicine during the SPC term, under two conditions:

• For the purpose of exporting to countries where SPC protection is not available or not enforceable (the packaging must be marked accordingly); or
• For stockpiling during the final six months of the SPC term in order to place the product on the Serbian market once the SPC expires.

These provisions will enter into force on July 2, 2022 and will not apply to SPCs that came into force before this date.

Prior to the amendments, generic drug producers in Serbia were at a competitive disadvantage compared to manufacturers based in countries without SPC protection. They could not carry out preparatory work for drug production or storage during an SPC term, and were therefore not able to place the medicine on the domestic market once the SPC expired. Conversely, the same medicine produced by manufacturers from countries without SPC protection could appear on the Serbian market as soon as the SPC term was over.

Generic drug manufacturers operating in Serbia now have the same legal status as the manufacturers operating in the EU. This creates an incentive to export medicines to countries where SPCs do not exist or have expired. Serbia-based manufacturers will also be able to place a drug on the Serbian market once its SPC expires, creating greater supply and competition, stimulating the development of the generic drug industry and providing patients with access to a broader volume of medicines at more favorable prices.

Utility Model Subject Matter

The amendments extend the utility model subject matter to devices, as opposed to just processes that refer to the construction of the device or the layout of its components, to which utility model subject matter was previously limited.

On the other hand, the amendments limit the utility model subject matter by excluding the following:

• Inventions in the field of biotechnology;
• Substances;
• Drugs;
• Substances or compositions contained in the prior art used in a surgical, diagnostic or treatment procedure;
• Plant varieties or animal breeds; and
• Patentable procedures.

These changes will likely lead to an increase in the number of utility model applications, as chemical mixture producers now may protect their products faster and at lower cost than by using patent protection.

Double Patenting

Double patenting is now prohibited. The Serbian Intellectual Property Office may grant only one patent when two or more applications have been filed for the same invention with the same filing/priority date by the same applicants or their successors. This occurs mainly when a PCT or European patent application is filed based on a national patent application as the priority application, or in the case of divisional applications.

Other Changes

In order to harmonize its practice with the European Patent Office, the Serbian IPO is now able to issue electronic letters patent upon European patent holders’ requests.

The Serbian IPO will now obtain data ex officio for the purpose of registering representatives in its IP Agent Register.

Finally, patent applications will no longer be published simultaneously with letters patent.

Regulations regarding the implementation of the amendments will be adopted within six months from the amendments’ entry into force, by June 23, 2022.

By: Nada Milović

For more information, please contact Nada Milović at our Serbia office.    

Montenegro Ratifies EPC, Amends Patent and Copyright Laws

On December 29, 2021, Montenegro adopted the Law on Ratification of the Convention on the Grant of European Patents, commonly known as the European Patent Convention (EPC), as well as amendments to the Patent Law and the Law on Copyright and Related Rights.

EPC Ratification

By adopting the Law on Ratification, which entered into force on January 8, 2022, Montenegro has fulfilled basic conditions for becoming a full member of the European Patent Organization (EPO) and will achieve this status after depositing the instrument of ratification with the German Ministry of Foreign Affairs, which is expected in the near future. The ratification will take effect on the first day of the third month after the instrument of ratification is deposited.

It has been possible to extend European patents to Montenegro since March 1, 2010, after Montenegro signed the Co-operation and Extension Agreement with the EPO.

Patent Law Amendments

While the previous Patent Law was already harmonized with the EPC, the relevant provisions referred to the Co-operation and Extension Agreement signed with the EPO. In the amended Patent Law, these provisions refer directly to the EPC and in essence remain the same, the most important of which are:

• A published European patent application gives preliminary protection to the subject of the patent application from the moment the applicant delivers the translation of the patent claims in the Montenegrin language to the person exploiting the invention;
• Once a patent is granted before the EPO, the patent holder must file, within three months from the date of grant, a request for entry of the European patent into the Montenegrin patent register, along with a translation of the patent claims and drawings (if the drawings are cited within the patent claims) in Montenegrin, and pay the necessary publication fees. Otherwise, the European patent will not be considered valid in Montenegro.

The Patent Law amendments also entered into force on January 8, 2022, but they will become applicable once the EPC ratification process is completed.

Copyright Law Amendments

The copyright law amendments, which entered into force on January 8, 2022, complete the harmonization of Montenegrin legislation with Directive (EU) 2014/29, as previous amendments only implemented a part of the provisions from the EU legislation.

Clear procedures for the establishment of Collective Management Organizations (CMOs) have been adopted. They outline the rights and responsibilities of the CMOs, right holders and users during the process of establishing a CMO, becoming its member, registering it before the Ministry of Economy and regarding every other aspect of its functioning. The amendments also precisely determine how CMOs and user associations can create tariff agreements and introduce out-of-court dispute resolution (mediation) for disputes arising between parties taking part in the collective management of rights.

The Ministry of Economy will perform regular yearly supervisions of CMOs, while extraordinary supervisions will be conducted if requested by the CMO, a right holder, a user, or by any intrested third party. The amendments also define what constitutes an offense committed by a CMO, members of its supervision board as well as its users.

The Market Inspectorate, Tourism Inspectorate, Tax Inspectorate and the Agency for Electronic Media are supervising the implementation of the law. Supervision can now be triggered ex officio or upon the request of a right holder or a person authorized by the right holder. Once the relevant Inspectorate or the Agency officially notifies the right holder on the measures taken upon their request, the right holder has 15 days to initiate legal action against the infringer or deliver a preliminary injunction issued by the competent court.

Inspectors may also temporarily prohibit the production of goods, confiscate them, or prohibit the performance of a service or any action which infringes copyright or related rights.

The Agency for Electronic Media, on the other hand, is authorized to:

• Temporarily prohibit an audiovisual media service provider from unauthorized broadcasting, rebroadcasting and cable retransmission of content; and
• Temporarily prohibit an electronic communications network operator from unauthorized retransmission of a certain media service provider’s content.

The relevant Inspectorate or the Agency for Electronic Media may require the right holder to compensate them for the costs of temporary storage of detained goods until the court procedure is finalized or for the damage caused by an unjustified confiscation.

By: Mladen Čolović

For more information, please contact Mladen Čolović at our Montenegro office.

Hungary Amends Patent Act

Amendments to the Hungarian Patent Act entered into force on January 1, 2022, introducing changes regarding the Bolar exemption and affecting the bifurcation system and the grant of preliminary injunctions. 

Clarification of the Bolar Exemption

Prior to the amendments, the Hungarian Patent Act regulated both the experimental use exemption and the Bolar exemption together within the same provision. The amended law separates the two exemptions, which appears justified from both the substantive and the technical point of view because these two exemptions only partially overlap.

While the experimental use exemption permits the use of a patented invention when such use is experimental in nature, the Bolar exemption permits the use of a patented invention for research and development purposes and for obtaining the required regulatory approval. These exemptions are especially relevant for pharmaceutical companies, because they allow generic drug manufacturers to prepare generic drugs before the patent expires.

The amended Act, which is now harmonized with the EU Directive 2001/83/EC, clarifies the scope and conditions of the Bolar exemption. The following uses of a patented invention will not constitute patent infringement:

• Private use, not involving an economic activity;
• Use for experimental purposes relating to the subject matter of the invention;
• Trials, tests and any acts necessary to obtain the marketing authorization for placing the product on the European Economic Area market or in a third country, including manufacturing, use, placing on the market, offering for sale, keeping in stock, importing into or exporting from the country, whether or not these activities are carried out directly by the marketing authorization applicant or by any person having economic links with the applicant for that purpose; and
• Preparation, in a pharmacy, of a medicine in accordance with the medical prescription, or acts concerning the medicine so prepared.

Revocation and Infringement Proceedings

The former Hungarian Patent Act provided for a bifurcated patent litigation system, meaning that the first instance authority in patent revocation proceedings was the Hungarian Intellectual Property Office, while in infringement cases it was the Metropolitan Court of Budapest. In a patent infringement case, the court did not rule on patent validity – if the validity of the basic patent was disputed, the court proceedings had to be suspended until the Hungarian IPO’s decision in the revocation case became final. Practice has shown that this resulted in excessive duration of the litigation proceedings in some cases.

In order to speed up the proceedings, the amendments aim at a partial revision of the bifurcation system by allowing the defendant in an infringement case to file a counterclaim for patent revocation with the court. In that case, the IPO will suspend any parallel revocation proceedings until the court decision in the revocation counterclaim proceeding becomes final. The amendment does not alter the IPO’s competence in relation to revocation proceedings if they do not involve a patent infringement proceeding.

Preliminary Injunctions

The amendments put more emphasis on the consideration of the counterclaim for patent revocation when ordering a preliminary injunction. Particularly, new provisions have been added on the repeal of a preliminary injunction and on compensatory damages resulting from a preliminary injunction that has subsequently been revoked due to the revocation of a patent.

Prepared by: Zita Szilágyi and Erika Farkas

For more information, please contact hungary@petosevic.com.

Belarus Joins Eurasian Design System

On January 19, 2022, Belarus deposited its instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with the World Intellectual Property Organization (WIPO). The Protocol will enter into force in Belarus on April 19, 2022.

The Eurasian industrial design protection system became operational on June 1, 2021, when the Eurasian Patent Office started accepting design applications. The Eurasian design system allows applicants to obtain protection simultaneously within the territory of the states where the Protocol is in force – Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan, Russia, and Tajikistan. Belarus will now be added to the list of countries.

Turkmenistan is the only remaining Eurasian Patent Organization (EAPO) member state which has yet to complete its ratification procedure. According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.

Prepared by: Anastasia Khioni and Tatyana Kulikova

For more information, please contact belarus@petosevic.com.

UPC Provisional Application Protocol Enters into Force

On January 18, 2022, Austria deposited its instrument of ratification of the Protocol on Provisional Application of the Unified Patent Court (UPC) Agreement, becoming the thirteenth EU member state to do so and therefore triggering the Protocol’s entry into force.

This marks the start of the Provisional Application Period (PAP) and the birth of the UPC as an international organization. During the PAP, which is estimated to last at least eight months, parts of the UPC Agreement and the UPC Statute to be applied provisionally, and the structural, organizational and financial functioning of the UPC will be prepared. Once the contracting states are confident that the Court is functional, Germany will deposit its instrument of ratification of the UPC Agreement, which will then enter into force on the first day of the fourth month after this date.

The UPC will be a court common to the contracting states and thus part of their judicial system, with exclusive competence with regard to European patents and patents with unitary effect. The exclusive competence is however subject to exceptions during the transitional period. The UPC’s rulings will have effect in the territory of those contracting states that ratified the UPC Agreement at the given time. The UPC will not have any competence with regard to national patents. The UPC Agreement is open to accession by any EU member state. Up to date, all EU member states except Spain and Poland have signed the Agreement.

Prepared by: Djurdja Krivokapić

For more information, please contact mail@petosevic.com.

Russia Accedes to Geneva Act of the Lisbon Agreement

The Law on the Accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was signed on December 30, 2021, and will enter into force on December 31, 2022. This is also when the Geneva Act of the Lisbon Agreement will enter into force with respect to Russia.

Accession to the Geneva Act of the Lisbon Agreement will allow Russian applicants to protect their regional brands abroad as appellations of origin or geographical indications through a single application and upon payment of one set of fees.

The Geneva Act, concluded in 2015, and the Lisbon Agreement, concluded in 1958, constitute the “Lisbon System” for the international registration and protection of appellations of origin and geographical indications. The “Lisbon System” currently covers 56 countries.

Prepared by: Anastasia Khioni

For more information, please contact russia@petosevic.com.

EAPO Enables WIPO DAS for Eurasian Design Applicants

On December 1, 2021, the Eurasian Patent Office enabled the World Intellectual Property Organization’s Digital Access Service (WIPO DAS) for Eurasian industrial design applicants.

The WIPO DAS is an electronic system allowing priority documents and similar documents to be securely exchanged between participating intellectual property offices (IPOs).

Now, when claiming priority in a Eurasian design application referring to an earlier application previously placed in the WIPO DAS digital library, applicants may submit the access code for this earlier application within WIPO DAS to EAPO instead of submitting a copy of the earlier application.

Applicants may deposit an earlier application in the WIPO DAS digital library through the WIPO International Bureau or another IPO which accepts applications for depositing in the WIPO DAS library, now including the EAPO.

Prepared by: Djurdja Krivokapić

For more information, please contact mail@petosevic.com.

Ukraine Launches Madrid e-Filing

On December 20, 2021, the Ukrainian Intellectual Property Office launched the Madrid e-Filing service, allowing applicants who want to protect their marks abroad under the Madrid Protocol to file international trademark applications online.

Madrid e-Filing provides in-app access to the Madrid Goods and Services Manager, allowing users to check the classification of terms in their lists of goods and services, communicate with their office of origin and receive and respond to irregularities issued by WIPO electronically.

The Ukrainian IPO’s adoption of Madrid e-Filing brings the number of users of this WIPO facility to fifteen.

Prepared by: Djurdja Krivokapić

For more information, please contact ukraine@petosevic.com.

Ukrainian Authorities Shut Down Sale of Fake Cancer Drugs

The Ukrainian Security Service officials have recently put an end to the distribution of counterfeit cancer drugs in the capital of Kyiv and the city of Lviv in western Ukraine.

During the raids, the authorities seized nearly EUR 31,000 (USD 35,000) worth of counterfeit cancer medications, as well as cash, bank cards, computers and mobile phones.

The counterfeit drugs were produced in Belarus and Russia, transported to Ukraine on international shuttle buses and planes, stored in a rented warehouse in Kyiv and subsequently sold online. The counterfeiters joined various online cancer forums and offered the drugs as leftover prescription medicines from their relatives who allegedly were cancer patients. The fake drugs were then delivered to customers through postal services and in person.

In 2019, amendments to Ukraine’s Criminal Code increased criminal penalties for the production and distribution of counterfeit medicines.

Prepared by: Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Fake Apparel, Footwear, Accessories Destroyed In Montenegro

On December 28, 2021, a PETOŠEVIĆ Montenegro representative and local customs authorities witnessed the destruction of nearly 8,200 items found to infringe the Nike®, Dsquared2®, USPA®, Under Armour® and Hermès® trademarks.

The goods, which were destroyed in the capital of Podgorica, included:

• 1,830 pairs of sneakers and 5,410 sportswear items, mostly tracksuits, T-shirts, shorts, socks and caps infringing the Nike® trademark;
• 630 clothing items, including jeans and T-shirts, infringing the Dsquared2® trademark;
• 95 shirts infringing the USPA® trademark;
• 207 clothing items, including shorts and T-shirts, infringing the Under Armour® trademark; and
• 27 items of accessories and footwear infringing the Hermès® trademark.

The destruction was carried out by a local company from Podgorica that undertakes the destruction in accordance with ecological and sanitary standards.

The counterfeits were seized during 2020 and 2021 at various customs terminals in Podgorica and Nikšić, as well as at the Božaj border crossing point with Albania. The goods were mostly intended for local companies from Podgorica and Nikšić, but some of them were in transit.

You can see the photos from the destruction in our gallery.

By: Jelena Radević and Mladen Čolović

For more information, please contact Mladen Čolović at our Montenegro office.

Serbian Customs Detain Fake Apparel and Accessories

On December 25, 2021, Serbian customs officials at the Gradina border crossing point with Bulgaria detained around 30 pairs of jeans believed to infringe the Dsquared® trademark and around 30 bags believed to infringe several trademarks, including Guess®, Fendi®, Christian Dior®, Bottega Veneta® and Louis Vuitton®. 

The counterfeits were discovered during the inspection of a bus arriving from Turkey.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Tarik Prolaz Participates in AmCham Bosnia Webinar on Trademark Protection

On January 20, 2022, PETOŠEVIĆ Bosnia and Herzegovina Head of Office Tarik Prolaz participated as a panelist in a webinar on trademark protection organized by the AmCham Bosnia and Herzegovina’s IP Rights Committee of which he is president.

The two-hour webinar focused on the importance of trademark registration and protection. Other panelists included two lawyers from local law firms and Zoran Strsoglavec, Brand Protection Director at Nike. The webinar welcomed 29 members of AmCham and the public.

For more information, please contact Tarik Prolaz at our Bosnia and Herzegovina office.