The consensual patent is a special form of patent protection in Bosnia and Herzegovina, regulated by the Patent Law of Bosnia and Herzegovina (BIH). The main feature of a consensual patent is that it is granted without a full examination of the patent application, i.e., based on public consensus. This consensus is reflected in the fact that the application for the grant of a consensual patent is published in the Official Gazette of the Institute for Intellectual Property of BiH and that no objections have been filed against the application within the legally prescribed period.
The process of granting a consensual patent in Bosnia and Herzegovina is definitely faster and simpler compared to the procedure for protecting an invention through a “classic” patent. This is because no substantive examination of patentability conditions is conducted during the process, i.e., the novelty, inventive level, and industrial applicability of the invention are not examined.
The process of granting a consensual patent begins with the submission of an application for patent recognition to the Institute for Intellectual Property. Once the application is received, the Institute starts a formal examination of the application. If, during the formal examination, the Institute finds that any formal requirements have not been met, the applicant will be invited to correct the deficiency within a specified period. If the applicant fails to correct the deficiency within the given period, the Institute will reject the application. However, if the applicant corrects the deficiency within the prescribed period, the Institute will continue processing the application.
A patent application, which has been examined and found to fulfil all the requirements for publication, will be published in the Official Gazette of the Institute after 18 months from the submission date or the date of the recognition of the priority right, thus becoming available to the public.
The applicant may, within six months from the publication date of the patent application in the Official Gazette of the Institute, submit a request for:
a) the recognition of a patent by conducting a complete examination procedure of the patent application, or
b) the recognition of a patent based on the confirmed submitted results of the complete examination procedure of the patent application,
c) the postponement of the complete examination procedure of the patent application and the granting of a consensual patent.
Thus, the process of granting a consensual patent is conducted under the identical rules as the patent granting procedure, until the applicant requests the postponement of the complete examination procedure of the patent application and the granting of a consensual patent. The request for the granting of a consensual patent will be published in the Official Gazette of the Institute. Any individual or legal entity may, within six months of the publication of the request for postponement of the complete examination procedure of the patent application and the granting of a consensual patent, submit an objection to the granting of the consensual patent or submit a request to the Institute for the initiation of the complete examination procedure of the patent application. If no objection to the granting of the consensual patent or request for the initiation of the complete examination procedure is submitted within this period, the Institute will issue a decision on the granting of the consensual patent.
The specific features of the consensual patent are reflected in the following facts:
• A consensual patent lasts for 10 years starting from the date of the application, whereas a regular patent lasts for 20 years from the application date.
• The institute of supplementary protection certificates does not apply to the consensual patent (which applies to medical products for humans or animals or plant protection products, for which prior approval from the competent authority is required before being placed on the market),
• If the exclusive rights of the holder of the consensual patent are violated, the holder of those rights can file the same claims as the holder of a regular patent, with the difference that the holder of a consensual patent must provide evidence that they have submitted a request for the granting of a patent through the complete examination procedure of the patent application before filing a lawsuit.
Regarding all other characteristics, unless otherwise prescribed by the Patent Law of BIH, provisions related to patents shall apply accordingly to a consensual patent.
In comparative law, the institute of the consensual patent is widely accepted, although in some countries it is also regulated as a petty patent or utility model. In the draft of the new Patent Law of BiH, which is currently in the legislative procedure and aims to harmonize BiH patent law with European Union law, the so-called utility model is prescribed instead of the consensual patent. Like the consensual patent, in the procedure for recognizing a utility model, the conditions of novelty, inventive level, and industrial applicability of the invention would not be examined. However, unlike the present institute of the consensual patent, the utility model application would not be published, but would instead be recognized and registered if it is determined that: (I) the utility model application fulfils all the formal requirements prescribed by law, and (II) the invention is not excluded from patent protection. This approach would more significantly accelerate and simplify the process of acquiring rights for patentable inventions in BiH, and it remains to be seen how the norms for the utility model will be shaped in the final version of the new law.
The idea behind the consensual patent, as well as the utility model in the draft of the new Law, is to enable innovators, particularly those with limited resources, to protect their inventions without undergoing the complex, lengthy, and costly procedure typically associated with patent protection, which involves a systematic examination of the patent application, including an assessment of novelty, inventive level, and industrial applicability of the invention. Therefore, the consensual patent represents an adequate mechanism for protecting inventions with reduced costs and a faster procedure, but with the acceptance of the risks associated with protecting an invention without examining the conditions of patentability.
Author: Igor Letica, attorney-at-law
E-mail: [email protected]
