The recognition of the right of priority in the application for invention protection is determined in the procedure conducted by the Intellectual Property Office of the Republic of Serbia, as the competent authority, in accordance with the provisions of the Patent Law (“Official Gazette of RS”, no. 99/2011, 113/2017 – other law, 95/2018, 66/2019 and 123/2021) (hereinafter: Patent Law).
The determination of the priority date, as the date of applying for invention protection, may affect the possibility of exercising the right to invention protection. According to the provisions of the Patent Law, the effect of the right of priority is that the priority date is considered as the filing date of the application for invention protection in relation to the application of the provisions of the Patent Law governing novelty, as one of the conditions for the protection of the invention, as well as the right to protection of the invention if two or more persons independently create the invention.
Suppose two or more persons independently create the invention. In that case, the right to invention protection belongs to the person who filed the patent or petty patent application with the earliest filing date.
Conditions for recognition of the right of priority
A person who has filed a regular application for any form of invention protection in a member state of the Paris Union for the Protection of Industrial Property or a member state of the WTO or their legal successor or heir shall be granted, upon applying for the protection of the same invention in the Republic of Serbia, the right of priority provided that they request it from the competent authority within 12 months from the date of filing the first regular application.
A regular application is considered any application to which a filing date has been granted in accordance with the national legislation of any member state of the Paris Union, WTO member state, or pursuant to international treaties concluded between these members, regardless of the later legal fate of that application.
A later application having the same subject matter as the first application in the same country shall be considered the first application for the purpose of determining the right of priority, provided that on the day of its filing, the first application has been withdrawn, abandoned or rejected, and has not been made available to the public and has not been the basis of any rights and has not previously served as the basis for claiming the right of priority. In such a case, the right of priority may no longer be claimed based on the first application.
Request for recognition of the right of priority
The applicant for invention protection who intends to use the right of priority of an earlier application in the Republic of Serbia is obliged to submit to the Intellectual Property Office of the Republic of Serbia:
- A request for recognition of the right of priority which contains crucial information about the first application which is the basis for recognition of the right of priority (application number and filing date, the member state of the Paris Union or WTO in which or for which the application was filed), no later than two months from the date of applying in the Republic of Serbia;
- A copy of the first application certified by the competent authority of the member state of the Paris Union or WTO in which or for which the application was filed, no later than three months from the filing date of the application for invention protection in the Republic of Serbia or sixteen months from the earliest date of the claimed priorities, depending on which of the mentioned periods expires earlier.
Suppose the first application is not in the Serbian language and is relevant for determining the patentability of the subject invention. In that case, the competent authority shall invite the applicant to submit a translation of the first application into Serbian within 2 months of receipt of the invitation.
The Intellectual Property Office of the Republic of Serbia shall prescribe in more detail the content of the request for recognition of the right of priority, as well as the attachments submitted with the request and prescribe their content.
Request for recognition of multiple priority rights
The applicant may, under the conditions prescribed by the Patent Law for one regularly applied, request recognition of multiple priority rights based on several previously filed applications in one or more member states of the Paris Union, WTO member states, or an international organisation to which the application was filed.
When multiple priority rights are requested, the deadlines, which, according to the Patent Law, run from the priority date, shall be calculated from the earliest date of the multiple priorities.
Request for restoration of the right of priority
If the application for invention protection for which the right of priority from the first application is claimed was filed at a date later than 12 months from the filing date of the first regular application, the applicant may submit a request for restoration of the right of priority.
The request for restoration of the right of priority may be submitted within two months from the expiration of the priority period and before the expiry of the period in which all technical preparations for the publication of the later application have been completed.
The Intellectual Property Office of the Republic of Serbia shall approve the request for restoration of the right of priority by decision, provided that the applicant:
- States valid reasons and provides evidence why the deadline for claiming the right of priority was missed despite due care required by the circumstances;
- Pays the prescribed fee and submits to the competent authority proof of payment of the prescribed fee.
The Intellectual Property Office of the Republic of Serbia shall prescribe in more detail the content of the request for restoration of the right of priority, the type of attachments submitted with the request, as well as their content.
Request for correction or supplementation of the request for recognition of the right of priority
The applicant for invention protection may submit a request for correction or supplementation of the request for recognition of the right of priority within 16 months from the date of the priority right or, if the correction or supplementation would result in a change of the priority date, within 16 months from the changed priority date, provided that the valid 16-month period is the one that expires earlier, and on condition that such request is submitted within four months from the filing date of the application for invention protection.
Along with the request for correction or supplementation of the request for recognition of the right of priority, the applicant is obliged to pay the prescribed fee and to submit to the competent authority proof of payment.
The Intellectual Property Office of the Republic of Serbia shall prescribe in more detail the content of the request for correction or supplementation of the request for recognition of the right of priority, the conditions and procedure for deciding on the request for correction or supplementation of the request for recognition of the right of priority, as well as the attachments submitted with the request for correction or supplementation of the request for recognition of the right of priority and prescribe their content.
Exceptions from submitting a request for correction or supplementation of the request for recognition of the right of priority
A request for correction or supplementation of the request for recognition of the right of priority may not be submitted in the following cases:
- After the applicant for invention protection has submitted a request for early publication of the patent application, unless such a request for publication has been withdrawn before the completion of technical preparations for the publication of the application;
- If a request for expedited examination has been submitted.
Features of the invention to which the request for recognition of the right of priority applies
The request for recognition of a single or multiple right of priority may relate only to those features of the invention which are described in any part of the application, i.e. the applications whose priority right is claimed.
If certain features of the invention for which priority is claimed are not found in the patent claims set out in the earlier application, the condition for recognition of the right of priority is that these features can be determined from all the constituent parts of the application.
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