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Extending the protection abroad
Patent protection is territorial. This means that if you want to protect your invention in another country outside Slovakia, you must apply for a patent in that country.
If you decide to apply for patent protection abroad after filing a patent application in Slovakia, you may be able to claim a right of priority abroad under the Paris Convention for the Protection of Industrial Property from an application filed in Slovakia. An application filed abroad will be granted priority to an application filed in Slovakia if it is filed within 12 months of the filing of the application in Slovakia.
To obtain patent protection abroad, you can:
- file individual applications (jednotlivé prihlášky) in the respective countries, or
- file a european patent application (európsku patentovú prihlášku), or
- file an international application under the Patent Cooperation Treaty (zmluvy o patentovej spolupráci (PCT) and later enter the national or regional phase in the countries of your choice.
Patent Cooperation Treaty (PCT)
By filing an international application under the Patent Cooperation Treaty, the applicant can apply for protection of his invention abroad. The Patent Cooperation Treaty (PCT), which is administered by the WIPO International Bureau (IB) based in Geneva, is an international treaty to facilitate applying for patent protection for an invention in several countries at the same time by filing a single application with a single office.
By filing an international application, all countries that are contracting states to the PCT at the date of filing of the international application are automatically designated as the countries in which the applicant seeks protection for the invention. In relation to each State, it is automatically determined that the international application seeks the grant of every type of protection available in that State (http://www.wipo.int/pct/en/texts/pdf/typesprotection.pdf), including the grant of both national and regional patents, if applicable in relation to that State.
In order to file an international application under the PCT directly with the Office of the Slovak Republic in Banská Bystrica, you must be a citizen of the Slovak Republic or a person domiciled or established in the Slovak Republic. The international application must be filed in English, French, German or Slovak. The application (form PCT/RO/101, Instructions to Applicants, Inštrukcia pre prihlasovateľov (PDF, 2,1 MB)) must always be submitted in English, French or German.
You can file an international application with the Office on paper or electronically using the ePCT, which is an electronic tool administered by WIPO.
For more information on how to register and get started using the ePCT, see the WIPO FAQs, často kladených otázkach organizácie WIPO, the Getting Started, Začíname, (ePCT (Version 3.3) - Getting Started) page and the User Guide.
For more information on PCT fees, click on the link https://www.indprop.gov.sk/patenty/patenty/poplatky/poplatky-pct
Summary of the international application procedure
International phase
The applicant files an international application under the PCT with the Industrial Property Office of the Slovak Republic, the WIPO IB or the EPO.
The international application is assigned an international filing date.
The international search authority chosen by the applicant prepares an international search report (ISR) and a written opinion.
An applicant filing an international application with the Office for Harmonisation in the Internal Market may choose the European Patent Office or the Visegrad Patent Institute as the international search authority. Based on the results of the search and the written opinion, the applicant decides whether to apply for protection for his invention in the specific countries of his choice or whether to apply for the relevant regional patent (national phase of the proceedings).
After 18 months, the international application is published together with the international search report.
If interested, the applicant may file a request for an international preliminary examination with the competent International Preliminary Examining Authority (IPEA).
An international preliminary report on patentability is issued.
National phase
As a rule, before 30 months have elapsed from the priority date, the applicant must enter the national phase in selected countries, e.g. Slovakia.
The legislation of the country or regional organisation concerned may allow for an even longer period (usually 31 months) - more detailed information on the time limits for entering the national phase for individual countries and regional organisations can be found on the WIPO website, webovej stránke WIPO.
The national phase of the proceedings is conducted according to the requirements of the national legislation of the State concerned or the legislation of the regional organisation. To enter the national phase, the applicant must comply with the requirements laid down in this legislation, pay the relevant fees and, where appropriate, choose a representative who is authorised to represent the applicant in the proceedings before the national or regional office concerned.
Further information on the procedure for international applications can be obtained from the WIPO website, webovej stránke WIPO.