Patents of Invention
– Law on Patents (Official Gazette “Sl. glasnik BiH” No. 53, June 29, 2010), in force since January 1, 2011.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since March 1, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 1, 1992.
– PCT, since September 7, 1996.
– European Patent Convention (EPC) – Agreement of Cooperation – Extension of European patents to Bosnia and Herzegovina, in force since December 1, 2004.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, since January 27, 2009.
– Strasbourg Agreement Concerning the International Patent Classification, since October 27, 2009.
– Patent Law Treaty, since May 9, 2012.
Applicant: any legal entity or natural person.
Foreigners: must appoint a local patent attorney.
Protection of foreigners: they enjoy the same rights as nationals of Bosnia and Herzegovina in accordance with international contracts, conventions or on the basis of reciprocity.
Naming of inventor(s): an inventor must be named in the application, unless he/she signs a renunciation.
Kinds of protection: patents (twenty-year validity), consensual patents (ten-year validity, but could be transferred to patents with twenty-year validity).
Patentability: an invention which is novel, has inventive step(s) and is industrially applicable.
Novelty: worldwide novelty.
Not considered inventions: (1) scientific discoveries and theories, mathematical formulas; (2) aesthetic artifacts; (3) computer programs; (4) rules, schemas, methods and instructions for mental activities, games or business activities; (5) presentation of information which is defined solely by that piece of information.
Exceptions to protection: (1) inventions whose commercial exploitation would be contrary to the law or morality, in particular: processes for cloning human beings; processes for modifying the genetic identity of stem cells; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such process; (2) inventions of surgical or diagnostic methods or methods for treatment of humans or animals, excluding inventions relating to products, substances or compounds used in such methods; (3) the human body, at any stage of its formation and development, or the simple discovery of one of its elements, including sequences or partial sequences of genes (except for an element isolated from the human body or produced by means of a technical process, including the sequences or partial sequences of genes); (4) plant or animal species or essentially biological processes for the production of plants or animals, except for non-biological or non-microbiological processes and the products thereof.
Unity of the invention: a patent application may cover several inventions, provided that they are closely related in such a way as to form a single inventive concept.
Priority: single or multiple priority may be claimed; Union priority (according to the Paris Convention) – twelve months; priority must be claimed in the application or not later than two months after the claimed priority date.
Secret patents: can be obtained only by nationals of Bosnia and Herzegovina and are granted by the Ministry of Defense.
Territory covered: Bosnia and Herzegovina.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization);
2. 2 copies of patent specification, abstract (max. 150 words), drawings;
3. Priority document (if any), to be filed within three months from the filing date; a translation is required; no legalization.
Minimum requirements to obtain a filing date: name and address of the applicant; title of the invention; one provisional copy of specification, claims, abstract and drawings (if any).
Terms for filing missing documents: priority document and translation: three months from the filing date; other missing documents: upon request by the Intellectual Property Office, which sets the deadline of thirty days; one extension of up to ninety days is possible.
Filing in a foreign language: possible, a translation of documentation is required.
Electronic filing: not available.
Electronic signatures: are not accepted (only wet signatures).
PCT applications: time limit for entering the national phase under both Chapters I and II: 34 months.
Filing requirements for PCT applications:
1. Power of attorney (no legalization);
2. 1 copy of the PCT publication, search report, IPRP or IPER report.
Examination: formal examination and examination only with regard to obvious unpatentability. If an application does not meet these examination requirements, the applicant is informed and a deadline of thirty days is set for the applicant to file a reply; one extension of up to ninety days is possible.
Examination of patent applications filed but not granted until February 27, 2002 (date when the Law on Industrial Property became valid): protection will not be granted for substances or compounds used in the treatment of humans or animals. Use of substances or compounds for the production of pharmaceuticals for humans or animals does not constitute infringement of patents for those substances or compounds, if the corresponding patent application was filed but not granted by February 27, 2002.
Independent claims: independent and dependent claims covering methods, apparatus, products and uses are allowed in one application, as long as they are related to a single inventive idea.
Amendments of application: specification, abstract and drawings can be amended, but no essential changes or broadening of protection are allowed.
Division of application: the applicant can request that the application is divided into two or more applications; the new resulting applications inherit the priority and filing date of the original application.
Publication: eighteen months after filing date or priority date; the applicant may request an earlier publication, but not earlier than three months after filing; the abstract with one drawing (if any) is published in the Official Gazette.
Secrecy: applications are kept secret before publication in the Official Gazette.
Opposition: not provided for, but interested parties can notify the Intellectual Property Office about the existence of an identical or similar invention.
Urgent examination procedure: only if a lawsuit, a request for customs or trade inspectorate surveillance have been filed.
Restoration: possible by reinstatement to the former status; the request for the reinstating has to be filed within two months from receipt of the decision on the status which is to be restored.
To secure registration: within six months from publication of the application, the applicant must file one of the following requests for examination to secure registration: (a) substantial examination; (b) examination by filing proofs of previously conducted substantial examination; (c) deferring examination and obtaining the consensual patent. (a) substantial examination is conducted by the Institute, on its own or in cooperation with other approved relevant authorities; (b) proofs of previously conducted substantial examination are accepted from any PCT Preliminary Examination Authority or other approved relevant authorities; the proof is in the form of a copy of the specification of the corresponding patent registered by the said authority, including translation; deadline for filing is six months after registration of the corresponding patent, and not later than five years; this deadline could be extended; (c) a request for obtaining the consensual patent is published and could be opposed by a third party within six months from publication; in case of opposition the applicant must within six months file a request for substantial examination.
Registration: for an application that fulfills all requirements for registration, the Intellectual Property Office registers the patent or consensual patent, issues the corresponding registration decision and the certificate of registration, and publishes the patent in the Official Gazette.
Appeals: no complaint can be lodged against the registration decision, but it may be appealed to the Complaints Authority of the Institute within fifteen days from the receipt of the decision. Furthermore, a decision of the Complaints Authority can also be appealed within thirty days of receipt by filing an administrative suit with the Court of Bosnia and Herzegovina.
Duration: consensual patents: ten years from the filing date; patents: twenty years from the filing date.
Supplementary Protection Certificate (SPC): issued upon a filing request for patents (not consensual patents) for human or animal medicinal products or plant protection products, which cannot be placed on the market without prior marketing authorization issued by the relevant authority. Deadline for filing the said SPC request: if the marketing authorization is issued after registration of the patent, then the deadline is six months after issuance of the marketing authorization; if the marketing authorization is issued prior to registration of the patent, then the deadline is six months after publication of the registered patent. Duration: for the period from the patent application to issuance of the marketing authorization minus five years; maximum five years from issuance of the certificate.
Paediatric extension: not possible.
Annuities: paid each year, any time before the anniversary of the filing date (or of the international filing date for PCT applications).
Annuity grace period: six months, with 50% fine.
Compulsory license: exists.
Compulsory license in the public interests: exists.
Assignments: applications and/or granted patents may be assigned; corresponding assignment deeds must be registered with the Intellectual Property Office.
Licenses: exclusive or non-exclusive licenses in written form must be registered with the Intellectual Property Office.
Marking: not compulsory.
Modification of Protection after Registration
Transformation of a consensual patent into a patent: a request for substantial examination may be filed at any time during the duration of a consensual patent.
Rights of prior user: the patent has no effect against persons who, at the time of application, have already used in good faith the invention within Bosnia and Herzegovina or have made the necessary arrangements for using it.
Nullification action: during the whole duration of a patent, any interested party can lodge a complaint with the Intellectual Property Office for nullification of the patent on the grounds that provisions for granting the patent have not been fulfilled.
Disputes about authorship and ownership: settled by the court.
Infringement and penalties: the applicant/owner/licensee can initiate civil and penal proceedings against any infringer at the relevant court; the proceedings must be initiated within three years after the proprietor learned about the infringement and the infringer, but not later than five years from the date of the actual infringement; the court may interrupt the proceedings until the Intellectual Property Office completes the registration procedure of the patent application in question; the court can prohibit the infringement, grant indemnification, and order the infringer to bear the costs of publishing the court verdict; the infringer can be imprisoned and fined.
Extension of European Patents
Extension of European patents to Bosnia and Herzegovina: from December 1, 2004, it is possible to extend the protection conferred by European patent applications and patents to Bosnia and Herzegovina. Extension is not available for European patent applications filed prior to that date, or for any European patents resulting from such applications. Extension occurs at the applicant’s request, subject to payment of extension fees to the EPO. Extended European patent applications and patents enjoy the same protection as national applications and granted patents in Bosnia and Herzegovina. The Intellectual Property Office publishes any request for extension as soon as it receives notification from the EPO, but not before the expiry of eighteen (18) months from the filing date, or if the priority has been claimed, the earliest priority date.
Grant of a European patent in which Bosnia and Herzegovina is a designated country confers the same rights as a grant of a national patent. The patent owner must file a translation of the claims of the granted European patent with the Intellectual Property Office and pay the publication fees not later than three months from the publication date of the grant of the European patent.
European patent validation requirements: (a) appointment of a national representative is required; (b) translation into the national languages of only the claims is required, within a non-extendible term of three months after the date on which the mention of the grant of the European patent is published in the European Patent Bulletin; (c) the minimum time period for paying renewal fees due at validation is two months.