Law on Amendment and Supplements to the Patent Law

The Republic of Serbia has made some important changes to its Patent Law by enacting new Law on Amendments and Supplements to the Law on Patents (hereinafter referred to as “Law”) which entered into legal force on September 26st 2019.

One of the main reasons for this change is further harmonization with EU legislation in this field and ensuring better civil protection of patent rights in case of infringement. It also brings new rules and procedures in case of so-called “invention from the employment relation” which is surely the biggest change in the Law.

The “Invention from the employment relation” is defined as 1) invention made by an employee while executing the obligation laid down a contractual agreement between the employee and the employer or which has been created in accordance with specific decision of  the employer which regulates the activity regarding research and development, 2) invention that was created during the employment contract or in a period of one year from termination of the contract if the invention has created in connection with  the activities of employer or in connection with usage of employers material of technical resources, information and other conditions provided by the employer or the invention was created as a result of professional training of employee provided by the employer. The Employee, under the Law, is a natural person who is engaged with an employer based on the employment contract.

An employee who creates an invention from employment relation is obliged to submit a written report to the employer immediately upon the occurrence of the invention informing him about the invention. The employer is obliged to inform an employee whether he will submit a patent application or not. If the employer informs the employee that he will submit application he must submit a formal patent application within a “reasonable time” after informing the employee, which is a novelty in this version of the law, unlike the previous version where the deadline for formal application was set at six months.

The Law prescribes new criteria for determining the amount of compensation to an employee for the invention from the employment relation. Unlike the previous version where the only criteria were economic contributions and effect from the exploitation of the invention, the new Law stipulates two more criteria such as a contribution of the employer to the creation of the invention and individual contribution from each inventor, if several employees created the invention. Regarding this, the inventor is authorized to receive compensation for the innovation-based on these three criteria and if the employer or employee does not reach the agreement concerning the compensation the competent court shall decide on the amount and the manner of payment of the compensation to the employee.

Furthermore, the novelty in the Law is also a provision that the inventor (employee) is no more entitled to the compensation in cases when the invention is licensed to third parties which have a license for exploiting the invention from the employment relation, as it was previously prescribed.

Last but not least is provision which regulates that the employer and the inventor (emloyee), when communicating with third parties in connection with “invention from the employment relation”, must comply with the law governing business secrets until the patent application or recognized small patent is published or the invention is otherwise made available to the public. .

If the employer expresses a justified interest in not making the invention available to the public, the obligation of the employee to keep the trade secret will continue after the termination of employment with that employer.

If you need more detailed information on the provisions of the Law and legal assistance regarding Patent Law, please feel free to contact us at any time.