The Intellectual Property Review: Slovakia

Forms of intellectual property protection

Slovakia is a Member State of the European Union. Its intellectual property (IP) regulation is thus affected by the international treaties and multilateral agreements that have been implemented into national IP regulation.

IP protection is divided into two groups in Slovakia.

The first form of IP protection is by law governing authors' rights, which protects works (i.e., literary, musical, photographic, architectural works) and various other subject matter to which related rights are attached (i.e., artistic performance, recording: sound, audiovisual) and computer programs and databases. There is no registration for authors' rights as this type of protection automatically arises when an original work of authorship is created. Therefore, this form of protection is more related to artistic, cultural and software fields.

The second form of IP protection is by industrial property law. An industrial property right requires registration with the Slovak Intellectual Property Office (IPO) or other relevant authority (e.g., the European Union Intellectual Property Office (EUIPO)). Slovak law recognises various types of IP rights – for example patents, supplementary protection certificates (SPCs), utility models, designs, trademarks, topography of semiconductor products, and designations of origin of products and geographical indications of products. This form of protection is more related to business and technical fields, manufacturing and services.

i Patents

Patent protection is based on a registered patent that provides its owner with an exclusive right to use an invention for a certain time period. A patent application may be filed by an inventor or multiple co-inventors, their legal representatives or their successors, and in cases of employee inventions it can be filed by an employer. After its filing, a patent application is published in the IPO's gazette for 18 months. The registration procedure can take up to three years. Slovak national patents and European patents with a designation for Slovakia have effect in Slovakia for a period of 20 years from the date of the filing of the application. There are official fees for registering and maintaining a patent. A failure to make timely payments might result in the forfeiture of a patent application. The maximum term of patent protection is 20 years. A patent cannot be granted, for example, for a discovery, scientific theory, computer program, plant variety, animal breed, disease diagnosis, treatment procedure, cloning method or use of the human embryo.

ii Supplementary protection certificates

SPCs protect medicinal products and plant protection products, which may be launched on a market only with an official authorisation. SPCs can be granted only to an owner of a basic patent2 or to a legal successor thereof. A deadline for filing an SPC application is six months from the date of obtaining a first authorisation to place a medicinal product or plant protection product on the Slovak market. There is an official fee for filing an SPC application, which is payable within 15 days of receiving an SPC application number assignment information. The IPO shall grant an SPC if the following prerequisites are satisfied:

  1. a medicinal product or plant protection product is protected by a valid patent;
  2. there is a valid marketing authorisation; and
  3. no SPC has already been granted previously.

An SPC has effect in Slovakia for a period of five years starting on the date of its effectiveness. This period can be extended by six months only in relation to protection of paediatric medicinal products. There are official fees for maintaining an SPC.

iii Utility models

A utility model protects a registered utility model that provides its owner with exclusive rights to use a new industrially usable technical solution that is a result of an inventive activity in a technological field. A utility model application can be filed by an inventor or several co-inventors, their legal representatives or their successors, or an employer for an employee utility model. A utility model application is published in the IPO's gazette for six months after its filing. The registration procedure can take up to 12 months. A Slovak national utility model has effect in Slovakia for four years from the date of the application filing. This period can be extended twice for three years each (i.e., the maximum period of protection is 10 years). There are official fees for registering and maintaining the utility model. A utility model cannot be granted for a discovery, scientific theory, mathematical method, aesthetic creation, plan, rule or computer program.

iv Designs

Design protection provides an owner of a registered design exclusive rights to use a new and distinctive designation of an industrial or craft product or part thereof for a certain period. A design application can be filed by an originator or an originator's representative, an originator's legal successor or an employer for employee designs. The IPO registers a design in its Designs Register and the registration is announced in the IPO's gazette. Slovak national designs have effect in Slovakia for five years from the date of the application filing. This period can be extended four times for five years each (i.e., the maximum period of protection for registered designs is 25 years). There are official fees for registering a design and extending its period of protection. Designs cannot be granted for a technical, constructional, functional or material nature of the product.

v Trademarks

Trademark protection provides a trademark owner with exclusive rights to use a word; a figurative, spatial or positional mark; a design mark; a mark consisting of a single colour or a combination of colours without outlines; a sound mark; movement; multimedia; a holographic; or other mark capable of distinguishing the goods or services of one party from the goods or services of other parties. A trademark application can be filed by an individual, a legal entity, or an association of individuals or legal entities or their representatives. Once filed, a trademark application is published in the IPO's Trademark Register. An opposition can be filed against the registration of the trademark application within three months of its publication in the register. The opponent must satisfy legal prerequisites stipulated in Section 7 of the Trademarks Act. Moreover, an objection can be filed against a trademark application by any party before an application procedure is finished. A Slovak national trademark has effect in Slovakia for 10 years from the date of the application filing. This period can be repeatedly extended each time for 10 years without any limitations. There are official fees for filing a trademark application and maintaining the trademark. Trademark rights expire only if a trademark has lapsed, an owner forfeits the trademark, or a trademark is revoked or declared invalid by an IPO decision in proceedings initiated by a third party. Trademarks cannot be granted for certain types of subject matter; for example, those comprising a Slovak flag or a Slovak coat of arms. It must be noted that a mark that is not registered with the IPO can gain certain legal protection if it is used for a sufficiently long time and it is not used just locally.

vi Topography of semiconductor products

Semiconductor product topography protects a series of fixed or encoded interrelated representations of a three-dimensional arrangement of which a semiconductor product is composed, which depicts a surface pattern of the semiconductor product at any stage of its production and is a result of an inventor's creative intellectual activity. An application for topography may be filed by an originator, co-originators or an employer for employee topography and, furthermore, a licensee to topography. There is an official fee for registering a topography. The authority for registering topographies and issuing a certificate of registration to an applicant is the IPO; the IPO also publishes the registration in its gazette. A topography has effect in Slovakia from the day of its first commercial use if the application was filed within two years of this use or from the day of the filing of the application if the topography was not used commercially for a period of 10 years. The 10-year period starts from the end of the calendar year in which the topography protection was granted.

vii Designations of origin of products and geographical indications of products

Designations of origin and geographical indications of products protect objects whose quality or characteristics derive from natural conditions or those that are associated with a particular geographical area by reputation, tradition or geographical origin (i.e., agricultural products, foodstuffs, wine, spirits, mineral waters, handicraft products, etc.). An application for designation of origin or geographical indication of product can be filed by an association or federation of producers without regard to its legal form; an association or federation of processors without regard to its legal form; and an individual or a legal entity in cases where, at the time of filing the application, the individual or legal entity is the only one producing or processing the product in the defined territory. The protection can be provided at a national, international and European Union level. Agricultural products and foodstuffs can be registered only at the European Union level (i.e., there is no option for a national registration).

Recent developments

Slovak legislation on the protection of industrial rights has not been amended in the past year, nor is amendment planned in the coming year.

Slovak law and related case law offer legal protection for IP rights, which is mostly on a par with the level of protection offered throughout the European Union. Nevertheless, there have been cases where Slovak courts reached conclusions that differed from conclusions of courts in other European Union Member States on similar issues.

A Slovak appellate court dismissed a preliminary injunction application in IP matters on grounds that an allegedly infringed SPC was about to expire (the SPC was valid at the time of the decision). This is contrary to standard practice in other EU countries (e.g., Germany) where enhanced protection via preliminary injunctions or other interim measures is commonly provided to IP rights that are about to expire. This opinion was not adopted by the Constitutional Court, which stated in its unrelated decision No. IV. ÚS 84/2021-29 of 23 February 2021 that an upcoming expiry of an IP right strengthens the need to protect the IP right by preliminary injunctions.

Moreover, the Constitutional Court confirmed in its decision No. IV. ÚS 84/2021-29 of 23 February 2021 lower courts' decisions stating that filing an application for a categorisation (official price and reimbursement from a national health system insurance) of a generic drug in Slovakia amounts neither to an offer nor to a promotion under the Patents Act, and therefore filing a categorisation application for a generic drug does not amount to an infringement of an original drug manufacturer's patent or SPC rights. Furthermore, the Constitutional Court also de facto concluded that a statutory obligation to present a drug on the Slovak market once a related categorisation decision comes into force does not amount to a threat of a launch of a drug on the Slovak market in cases where a legal penalty for not being present on the market can be imposed falls outside the maximum term of patent or SPC protection.

Obtaining protection

Certain IP rights, such as unregistered marks, copyright and trade secrets, are protected under Slovak law without any registration once related prerequisites are met.

Other IP rights, such as patents, SPCs, trademarks, utility models, etc., must be registered with the IPO or other relevant authority (e.g., EUIPO) to obtain legal protection in Slovakia.

As regards patents, pursuant to Section 5(1) of the Patents Act, all inventions in all fields of technology with an industrial use are patentable under Slovak law if they comprise an inventive step and they are innovative.

Certain types of subject matter are not considered to be inventions under Slovak law: the Patents Act offers a non-definitive list in Section 5(3) mentioning discoveries, scientific theories, mathematical methods, aesthetic creations, computer programs and provision of information. Moreover, plans, rules and manners of executing intellectual activities, games and business activities are not considered to be inventions either. Artistic and scientific works including computer programs are protected by authors' rights pursuant to Sections 1(1) and 3 of the Authors Act.

Furthermore, certain subject matters are expressly excluded from patentability, including plant varieties and animal breeds. Moreover, fundamentally biological processes for obtaining plants and animals, therapeutics methods for humans and animals, and diagnostic and illness prevention methods are also excluded except for products (e.g., substances and mixtures) that can be used for the above-mentioned therapeutic, diagnostic or prevention methods.

In general, discovery of human body elements, including gene sequences, are excluded from patentability by Section 6(1)(d) of the Patents Act. That said, pursuant to Sections 6(1)(d) and 5(2)(d) of the Patents Act, there is an exemption for patentability elements (including gene sequences and partial gene sequences) that are isolated from a human body or otherwise manufactured in a technical manner.

Moreover, biotechnological products relating to a product made from or comprising biological material or a method for manufacturing, exploiting or using such biological material can be the subject matter of a patent even if it relates to animals or plants in cases where a technological realisation of a patent is not limited to a certain plant variety or certain animal breed.

Swiss-style claims used to be patentable, and patents comprising such claims are still valid in Slovakia. Nevertheless, the current IPO's trend is to refrain from patenting Swiss-style claims and to ask a patent applicant to reformulate or rephrase such claims.

After a patent application is filed, the IPO will carry out a preliminary review (i.e., it will focus on a priority right, formal prerequisites, etc.) A full review of a patent application is conducted upon the request of an applicant or third party. The application cannot be withdrawn. If necessary, the IPO can also conduct a full review ex officio (i.e., of its own will, without an applicant's or a third party's request).

Enforcement of rights

i Possible venues for enforcement

If a party wants to challenge the validity of a registered IP right – for example by a revocation action or invalidation action – it must be done in administrative proceedings before the IPO or other relevant authority (e.g., EUIPO). Proceedings before the IPO can be divided into a first instance proceeding before the IPO and appellate proceedings before the IPO president. An IPO president's decision can be challenged by an administrative action filed with an administrative court.

As regards civil and commercial disputes claims based on an IP right's infringement, the Banská Bystrica District Court has had exclusive jurisdiction over all IP-related disputes in Slovakia since 2016. This allows for a quicker harmonisation of jurisprudence. The Banská Bystrica Regional Court is the appellate court. Appellate decisions can be challenged by an extraordinary appeal to the Supreme Court (there are exemptions to this rule), and Supreme Court decisions can be further challenged by a constitutional complaint filed with the Constitutional Court. Even though Constitutional Court decisions can be challenged by a complaint to the European Court of Human Rights (ECHR), Constitutional Court decisions cannot be overturned by the ECHR.

A dispute can also be brought before a criminal court by a Slovak prosecutor if the prosecutor and police can establish that prerequisites including malicious intent and sufficient harm caused to an injured party are met.

ii Requirements for jurisdiction and venue

A claim can be raised by an IP right owner. In cases of registered IP rights such as patents, SPCs and trademarks, etc., a non-exclusive licensee can file an action for IP right infringement claims only with the written consent of an IP right owner. An exclusive licensee can file such an action only in cases where the exclusive licensee sent a written notice to an IP right owner about an infringement and the IP right owner failed to file an action in a reasonable period. Any of the above-mentioned persons can join proceedings initiated by one of them as an intervenient.

There is a statutory obligation that a party in IP-related court proceedings must be represented by an attorney-at-law with the exception of a defendant with a college degree in law. If a party is not represented by an attorney-at-law, then a court will notify the party about the deficiency and the court will set a deadline for the party to obtain representation by an attorney-at-law. A failure to adhere to the court's request would result in the court disregarding the party's submissions.

iii Obtaining relevant evidence of infringement and discovery

The burden of proof for establishing claims lies with the party that raises the claim. For example, the burden of proof for establishing a claim relating to an infringement of an IP right lies with the plaintiff.

During a civil trial, a party can ask a court to order anybody holding relevant evidence to present the evidence to the court.

As regards patent infringement disputes, it must be emphasised that trials are heard by legal judges with no technical backgrounds. Therefore, it might be recommended to commission an expert to prepare an expert opinion on the patent infringement before initiating court proceedings. Such an expert opinion, if it satisfies all prerequisites, is considered to be on a par with an expert opinion prepared by a court-appointed expert. The above is also recommended for calculations relating to a claim for damages.

iv Trial decision-maker

A trial in its first instance phase is presided over by a single legal judge with no technical background. Proceedings before the Regional Court in Banská Bystrica (the appellate court), the Supreme Court and the Constitutional Court are heard by a panel of three judges or, in special and rare cases, more. Judges are assigned to cases in accordance with the work schedule of the given court. Parties can object to a judge presiding over a case on impartiality grounds.

The Slovak legal system recognises neither technical judges nor a jury.

v Structure of the trial

All claims and counterclaims are usually considered in a single court proceeding. There is an option to orally dictate an action or application to a court; however, it is exceptionally rare. The common approach for a plaintiff is to send an action or application in writing along with all necessary evidence and to pay a court fee. A first instance court then serves the action along with evidence on a defendant and it allows the defendant to make a statement of defence within a court-stipulated deadline. The statement of defence is then served on the plaintiff, who is allowed to make a rejoinder. The plaintiff's rejoinder is usually served on the defendant, who is allowed a response. Further submissions can be made by both parties at any time during a trial.

A court takes evidence during oral hearings. The court may refuse to consider evidence if it is not submitted in a timely fashion and if, for example, a party intentionally withholds evidence so as bring it up later in proceedings. Although a first instance court usually attempts to lead the proceedings in such a manner that the case can be decided in a single oral hearing, if necessary, it is not uncommon for multiple hearings to take place. As regards appellate and other subsequent proceedings, there are usually no oral hearings unless further evidence-taking is necessary.

All duly registered IP rights are presumed to be valid (unless proven otherwise). If an IP right's validity is disputed by an action with the IPO, a judge may or may not stay an IP right infringement court proceeding until the IPO administrative proceedings are resolved. It depends on the approach of the specific judge.

vi Infringement

Lists of activities considered to be infringement of registered IP rights are stipulated in relevant acts. For example, manufacturing, exploiting, using, offering or launching on a market a product that is protected by a patent, and its storing or importing for these purposes, is considered to amount to an infringement of a patent pursuant to Section 15 of the Patents Act. This is also true for a product directly acquired by a manufacturing process protected by a patent. Moreover, using a manufacturing process protected by a patent or offering such a manufacturing process to a third party is considered to be an infringement. Providing means for realisation of an invention or offering to provide such means may also be considered a patent infringing activity if an alleged infringer was aware that the means were intended or suitable to create an invention.

When considering infringement activities, the doctrine of equivalents can be used. Because judges considering claims have no technical backgrounds, if there is a technical issue that requires consideration, Slovak courts may base their conclusions on the opinion of an expert who is either appointed by the court or commissioned by a party (statutory prerequisites must be met).

Slovak courts consider patent claims literally: the extent of patent protection is determined by the content of patent claims and a description of an invention and drawings. Documents used in a patent application process can be used to support arguments in infringement litigation.

vii Defences

In the pre-litigation phase, a potential future infringer may file a declaratory administrative action with the IPO to pre-empt infringement claims. Moreover, a claim to a compulsory licence to patents is available three years after granting a patent or four years after filing a patent application (the later of the two deadlines applies) pursuant to Section 27 of the Patents Act. An extension of a compulsory licence is subject to specific statutory restrictions.

A defendant can oppose a preliminary injunction on grounds that evidence presented by a plaintiff does not establish an infringement or a threat of infringement. Moreover, a defendant can file for the preliminary injunction to be dismissed because of new factual circumstances that were not present at the time of a preliminary injunction decision. Furthermore, the defendant can request that the court orders the plaintiff to pay consideration to the court to cover any potential damage caused by the preliminary injunction. Should the plaintiff succeed in the action on the merits, the consideration will be refunded in full.

In proceedings relating to an action on the merits, a defendant may try to establish that no actual infringement or a threat of infringement occurred. Other defences, including an exhaustion of rights, a fair use exemption, a toleration of a trademark use, and a non-use of trademarks, etc., are also available.

A defendant may also challenge an IP right's validity in separate administrative proceedings and ask a court to stay infringement proceedings. The success of requests of this kind depends on the specific judge and the circumstances of a given case.

Slovak law does not recognise equitable defences.

viii Time to first-level decision

First instance proceedings heard by the IPO are usually concluded in one to two years.

Civil first instance proceedings dealing with actions on merits can take one to three years.

As regards first instance decisions in preliminary injunction matters, there is a 30-day statutory deadline for issuing a decision.

ix Remedies

As regards pretrial remedies, a customs seizure can be carried out to protect IP rights. An IP right owner (e.g., an owner of a trademark, SPC, patent, etc.) can file an application with the Customs Office to take action against allegedly infringing goods. If the Customs Office grants such an application, the Customs Office will start seizing goods suspected of infringing IP rights. The Customs Office is also authorised to seize suspected infringing goods on its own initiative (i.e., without a decision). After seizing goods, the Customs Office will issue a decision and it will send a written or, if practical, electronic notice to the IP right owner about the seizure of goods. The decision recipient will be given 10 business days (three days in the case of highly perishable goods) to oppose the destruction of goods or to state whether the seized goods infringe the IP right and whether they should be destroyed. A failure to respond is understood to be consent for the destruction of goods. In the interim, the Customs Office will announce its decision on the seizure of goods to the 'holder of goods' (i.e., a person offering, selling, owning, manufacturing, storing, transporting or keeping the goods in question). The holder of goods has a three-day deadline to appeal the decision. If prerequisites for the destruction of goods are not met (e.g., the holder of goods opposes the destruction in a timely manner), then the IP right owner is ordered to file an infringement action with a court. Failure to do so will result in termination of the goods' impoundment.

An application for a preliminary injunction is available as a temporary relief (or a permanent relief in specific cases). A court can order a defendant to refrain from activities that infringe the IP right or threaten such infringement. Alternatively, if a plaintiff makes a request, the defendant can be ordered to pay to a court a security covering damages, instead of being ordered to refrain from the above-mentioned activities. To be granted a preliminary injunction, a plaintiff must establish an actual infringement of an IP right or a threat thereof by a defendant and the prerequisite of urgency. It must be filed within a reasonable time of a plaintiff becoming aware of an infringement. A precise period is not stipulated; nevertheless, filing the application a few months after finding out about an infringement is usually acceptable. If the application is granted, a court will order the plaintiff to file an action on the merits within a court-stipulated deadline, which is usually 30 days. If a preliminary injunction is revoked for reasons other than satisfaction of the plaintiff's claims or a related action on the merits being granted, a plaintiff can be held liable for damage and harm caused by the preliminary injunction to a defendant and third parties.

Remedies available in an action on the merits might differ depending on the IP right. As regards patent infringement, an infringing party can be ordered to refrain from infringing activities (e.g., to withdraw infringing goods from the Slovak market, to refrain from offering, promoting, selling, storing infringing goods in Slovakia, etc.). Moreover, claims against unjust enrichment, for financial redress and damages, and to provide information relating to the infringement (e.g., providing the number of sold goods, uncovering distribution networks, etc.) are available. An infringement of an IP right may also amount to unfair competition conduct.

x Appellate review

Appellate court proceedings are conducted in writing (an oral hearing is an exception). The proceedings are held before a panel of three legal judges with no technical background.

An appellate review of claims, arguments and evidence is restricted by appellate reasons invoked in an appeal and to the extent to which a first instance decision is challenged by the appeal.

In general, new evidence is inadmissible in appellate court proceedings. Nevertheless, there are exemptions, such as a party not presenting evidence through no fault of its own (e.g., an IP right has been declared null and void after a first instance decision, a witness could not give a testimony because of an illness, etc.).

It might take an appellate court one to three years to issue its decision.

xi Alternatives to litigation

Parties are free to use alternative dispute resolution proceedings at any time before a trial starts or during the trial. Slovak courts have a statutory obligation to lead parties to a settlement. If parties reach a settlement during an ongoing trial, they can ask the court to issue a decision based on the settlement.

Trends and outlook

The Slovak jurisdiction is still developing. There is currently a trend for approaching the interpretation of the impact of generic drug categorisation applications on patents or SPCs protecting original drugs in a different manner from that of various other EU countries (see Section II).

Moreover, the Slovak parliament is considering overhauling the Slovak court system in 2022, which might or might not impact the overall jurisdiction for civil and commercial IP disputes of the Banská Bystrica District Court.

Footnotes

1 Michal Baláž is an attorney and Dominik Bajger is a junior attorney at Cermák a spol.

2 A basic patent is a patent that protects a medicinal product or plant protection product as such, a preparation for plant protection, and the method of production and the application of a medicinal product or a plant protection product, and designated by its owner for the purposes of the certification procedure.

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