Patents of Invention
– The Law on Patents No. 04/L-029, published on August 29, 2011 in the Official Gazette of the Republic of Kosovo, in force since September 13, 2011, amended by Law No. 05/L-039 of August 24, 2015.
– Administrative Instruction No. 13/2016 on the Procedure for Registration of Patents, in force since September 2, 2016.
Membership in International Conventions
– Kosovo is not a member of any international conventions related to intellectual property matters, except:
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since July 14, 2016.
Applicant: the inventor or his legal successor (individual, firm, company).
Foreigners and nationals not living in the country: must have a local representative registered with the IP Agency.
Protection of foreigners: they enjoy the same rights as nationals.
Data on the inventor(s): the patent application must contain the name of the inventor(s), or the inventors’ declaration that he/(they) does not want to be nominated in the application.
Patentability: a patent is granted for an invention in any field of technology, which is new, which involves an inventive step and which is capable of industrial application.
Novelty: an invention is novel if before the filing of the patent application it was not encompassed in the prior art (absolute novelty). An invention will be considered encompassed in the prior art if it has been made public by means of a written or oral disclosure, by use, or if it has been included in a prior patent application having an earlier filing date than the subject patent application, and published on the filing date of the subject patent application or after.
Novelty grace period: six months for cases of prior demonstration at an official exhibition or in case of evident abuse in relation to the applicant.
Exceptions to protection: (1) an invention whose commercial use would be contrary to public order or morality (in particular: processes for cloning human beings; processes for modifying of the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; processes for the genetic modification of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes); (2) plant variety or animal species or essentially biological processes for the production of plants or animals, except for microbiological procedures and the products thereof; (3) methods for treatment or therapy and diagnostic methods practiced on the human or animal body, except for products, substances or compositions for use in any of these methods; (4) substance that are results of internal nuclear transformations for military purposes; (5) human body, at any stage of its formation and development, and 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).
Not considered inventions: discoveries, scientific theories, mathematical methods, aesthetic creations, plans, rules and methods for performing mental activities, for playing games or for doing business, as well as computer programs, presentation of information.
Unity of invention: provided for if the inventions are so linked as to form a single general inventive concept.
Kinds of protection: patent.
Secret patents: only for inventions of nationals of Kosovo and concerning State interests such as national defense or security.
Priorities: from filing date of the patent application. Union priority must be claimed within two months from filing of the application in Kosovo. A certified copy of the first application must be filed within a period of ninety days from the filing date of the priority claim or four months as from the date of filing the application in Kosovo or sixteen months from the earliest priority date claimed – whichever expires first.
Territory covered: Kosovo.
Filing requirements (to be sent to resident agent for filing of application):
1. Specification, claims (EPO type) and abstract;
2. Drawings (if any);
3. Certified copy of the priority application(s), if priority is claimed;
4. Power of attorney, original or notarized copy thereof/legalization not required (must be filed at the time of filing). Note: a general power of attorney must be notarized.
Electronic filing: not available.
Electronic signatures: are not accepted (only wet signatures).
PCT applications: Kosovo is not a Contracting State to the PCT Agreement.
Extension of European Patents: not possible.
Examination: formal examination, as to whether the application is complete and fulfills formal requirements as well as if the subject matter of the application is patentable and if the application complies with the rule regarding the unity of invention at first sight.
Publication: after having been examined, the registered patent is published.
Registration: once the application is examined the IP Agency will issue a decision on the grant of the patent after the expiration of eighteen months from the filing date or the date of priority if it is claimed and the patent will be entered into the Register of Patents. All this provided that the fees for maintenance of the patent, for printing of the publication, for the issuance of the patent certificate and patent specification have been paid.
Document of Evidence (DoE): the owner of the patent has to file a DoE before the expiry of the ninth year of the patent term. If the patent owner fails to do so, the patent shall lapse on the date of the expiry of the tenth year of the patent term. In case the granting proceedings in the Office performing the substantive examination of the patent application have not been finished before the expiry of the ninth year, the IP Agency of Kosovo may extend the time limit for not more then ninety days after the termination of the substantive examination.
Amendments: extending the subject matter of the application is not permitted once the application date has been accorded.
Restoration: possible by reinstatement of rights; the request has to be filed within three months from the day on which the grounds for the omission ceased to exist, but not later than one year from the omission; further processing of the application/patent: if the applicant or the owner of the patent fails to comply with a time limit for an act in the procedure of the IP Agency and that failure has the direct consequence of causing the loss of rights, he may file a request for further processing of the application/patent and performs all the omitted acts within two months from the day on which he learned about the omission.
Appeals: the Board of Appeal has been established by Administrative Instruction No. 09/2012, in force since June 19, 2012. The decision of the IP Agency can be appealed by the interested party within a fifteen-day deadline from the receipt of the decision of the IP Agency. The Committee will decide on the appeal within thirty days of its receipt. It is possible to initiate a lawsuit at the competent court within thirty days from the receipt of the decision of the Appeal Committee.
Beginning of protection: the decision to grant a patent shall have effect from the date of publication of the grant in the Official Bulletin.
Duration: the validity of a patent is twenty years from the filing date of the patent application.
Supplementary Protection Certificates (SPCs) for medical products and plant protection products: will be provided for a maximum of five additional years, after Kosovo becomes a member of the EU.
Annuities: are due for the third and each following year for patent applications and patents counting from the filing date.
Annuity grace period: annuities can be paid within six months from the due date if an additional tax is paid.
Marking of patented goods: not compulsory.
Text of marking: not provided for.
Amendment of issued patent: not feasible.
Corrections: possible to correct typographical errors.
Modification of Protection after Granting
Disputes about ownership: a lawsuit can be filed with the court to establish the right to the patent/application during the whole validity of the patent.
Dispute about inventorship: the inventor can request, by filing a lawsuit with the competent court, to be declared an inventor and recorded as such in relevant documents and registers.
Rights of prior user: a prior user acting in good faith can continue to use the invention in the enterprise or part of the enterprise in which the preparation for use or the use of the invention has taken place. A prior user’s rights can be transferred or inherited only with the enterprise or part of the enterprise in which the preparation for use or the use of the invention has taken place.
Opposition to granted patent: not provided for.
Assignment: provided for patents and patent applications; contract must be in a written form and registered to take effect vis-à-vis third parties, as well as vis-à-vis third parties who knew about the transfer of rights even if the contract was not registered.
License: provided for patents and patent applications; can be exclusive or not exclusive; contract must be in a written form and registered to take effect vis-à-vis third parties, as well as vis-à-vis third parties who knew about the existence of the license agreement even if it was not registered. Patents can be given as security or be subject of lien as well as be levied in execution proceedings. Also, patents, patent application and Supplementary Certificate are considered as part of bankruptcy estate.
Compulsory license: can be imposed if the patentee, either by himself or through a third party, does not work or insufficiently works the patented invention, or when another invention protected by a patent cannot be worked, either in its entirety or partially, without the use thereof, and the patentee refuses to grant a license to the interested person or imposes unjustified conditions on him. It cannot be imposed if the patentee proves that the non-working or insufficient working of the invention is justified. The request for a compulsory license cannot be made before the expiry of a period of four years from the filing date of the patent application, or before the expiry of a period of three years from the patent granting date. A compulsory license can be issued if the use of a patent is of interest because of national defense or protection or other needs (protection of health and alimentary needs of the population, protection of public interest, protection of public interest environmental protection and improvement, specific commercial interest) or the patent is used in a way which has been established to be contrary to the principle of free competition.
Expropriation: not provided for.
Cancellation: the patent may be cancelled for reasons of non-payment of taxes, withdrawal of rights, or death of the holder if there is no legal successor.
Nullification: a granting decision can be annulled if it is established that the subject was not patentable, that the invention was not presented in the application in such a way as to be clear so that it could be reproduced, that the invention was not new, innovative or that it is not applicable in the industry; or that the scope of the patent granted is greater then the scope of the application as filed; however, in cases in which the court granted the patent protection to the inventor, the granted patent can be nullified as whole or in part if the inventor files a new application. The request can be filed with the IP Agency during the whole duration of the patent.
Validation of invalidated patents: not provided for.
Infringement: the court can be requested to issue a declaration of infringement and prohibit the activities which constitute infringement. Preliminary injunctions and securing of evidence are provided for.