WORLD TRADE ORGANIZATION
ORGANISATION MONDIALE DU COMMERCE
ORGANIZACIÓN MUNDIAL DEL COMERCIOIP/N/1/SVN/I/1
16 January 2004
(04-0144)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English/
anglais/
inglés
MAIN DEDICATED INTELLECTUAL PROPERTY
LAWS AND REGULATIONS NOTIFIED UNDER
ARTICLE 63.2 OF THE AGREEMENT
SLOVENIA
The present document reproduces the text1 of the Industrial Property Act of 23 May 2001, as
notified by Slovenia under Article 63.2 of the Ag reement (see document IP /N/1/SVN/1/R ev.1/Add.3).
Conseil des aspects des droits de propriété
intellectuelle qui touchent au commerce
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE
DE L'ARTICLE 63:2 DE L'ACCORD
SLOVÉNIE
Le présent document contient le texte1 de la Loi du 23 mai 2001 sur la propriété industrielle,
notifiée par la Slovénie au titre de l'article 63:2 de l'Accord (voir le document
IP/N/1/SVN/1/Rev.1/Add.3).
Consejo de los Aspectos de los Derechos de PropiedadIntelectual relacionados con el Comercio
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO
ESLOVENIA
En el presente documento se reproduce el texto
1 de la Ley de la Propiedad Industrial de 23 de
mayo de 2001, que Eslovenia ha notificado en virtud del párrafo 2 del artículo 63 del Acuerdo (véase
el documento IP/N/1/SVN/1/Rev.1/Add.3).
                                                     
1 In English only./En anglais seulement./En inglés solamente.IP/N/1/SVN/I/1
Page 2
INDUSTRIAL PROPERTY ACT2
CHAPTER I
BASIC PRINCIPLES
Article 1
Scope of the Act
(1) This Act defines the types of industrial property rights under this Act and proceedings for the
grant and registration of these rights, judicial protection of rights and representation of parties in the
proceedings under this Act.
(2) Industrial property rights under this Act shall be patents, industrial designs, marks and
geographical indications.
Article 2
National treatment
(1) Legal and natural persons that are foreign nationals shall enjoy, in respect of the protection of
industrial property rights in the Republic of Slovenia, the same rights as domestic legal or natural
persons, or other domestic nationals, in conformity with the Agreement on Trade-Related Aspects of
Intellectual Property Rights of 15 April 1994 (Off icial Gazette RS - MP, No 10/95), hereinafter
referred to as “the TRIPS Agreement”, or the application of the principle of reciprocity.
(2) The party invoking reciprocity shall be required to prove the existence of reciprocity.
Article 3
Applications for the acquisition of industrial property  rights
(1) Subject to Article 17, the acquisition of an industrial property right in the Republic of
Slovenia shall be requested by filing a national application with the Slovenian Intellectual Property
Office, hereinafter referred to as “the Office”, in accordance with this Act.
(2) The acquisition of industrial property rights  in the Republic of Slovenia may also be
requested on the basis of applications filed abroad, if this is in conformity with an international treaty
which is binding on the Republic of Slovenia. The legal effect of the rights conferred by such
applications shall be the same as that of the rights conferred by national applications, unless otherwise
provided by a respective international treaty.
 
(3) A national application shall not give rise to an industrial property right if a prior application
has been filed, by the same person, under paragraph (2), for the acquisition of the same right.
 
(4) The acquisition of industrial property rights abroad may also be requested on the basis ofapplications filed with the Office, if this is in conf ormity with an international treaty which is binding
on the Republic of Slovenia.
Article 4
                                                     
2 Unofficial translation of the Industrial Property Act of 23 May 2001, published in the Official Gazette
RS No 45/2001, entry into force: 7 December 2001.IP/N/1/SVN/I/1
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Priority of the earlier application
Where two or more applicants file applications to acquire protection for the same invention,
design or sign in the Republic of Slovenia, the ap plicant who has the earliest date of filing or, if
priority is claimed, the date of priority, shall have priority over the other applicant.
Article 5
The Office
(1) The main tasks of the Office shall be:
(a) to receive applications by which the acquisition of industrial property rights is requested;
(b) to carry out autonomously proceedings relating to the grant of patents and registration of
industrial designs, marks and geographical indications, and to grant patents and register
industrial designs, marks and geographical indications;
(c) to keep the registers of industrial property rights and other registers under this Act;
(d) to provide information services relating to industrial property rights;
(e) to represent the Republic of Slovenia, in conformity with the position, instructions and
authorisation by the Government of the Republic of Slovenia, in foreign and international
organisations in the field of industrial property;
(f) to perform other tasks which fall within its competence.
(2) The Office shall publish its Official Journal containing data on applications and industrial
property rights.
(3) The Office shall be autonomous with respect to finances relating to payment of fees under this
Act and payments for services supplied under Article 7, and shall verify those payments.
(4) The Office shall be managed by the Director who shall be responsible for its operation and
shall be appointed by the Government of the Republic of Slovenia.
Article 6
Decisions of the Office
(1) In proceedings for the grant or registration of industrial property rights and maintenance
thereof, and in proceedings concerning the keeping of registers of rights and other registers, the Office
shall issue decisions, orders and other acts pursuant to this Act. In the absence of corresponding
provisions in this Act, the Act regulating general administrative procedure shall apply.
(2) Proceedings relating to applications under Article 3(2) or (4) shall be conducted by the Office
in conformity with international treaties which are binding on the Republic of Slovenia and
implementing rules and instructions relating thereto. In the absence of corresponding provisions in the
relevant international treaty, the provisions of this Act shall apply mutatis mutandis .
Article 7
Information to the public
(1) Subject to Article 8, the Office shall make possible for any person to inspect files relating to
applications, and to have access to data relating to applications and rights granted or registered.
(2) Against payment, the Office shall supply information on the state of the art comprised in
patent documents, and other services in the field of information and documentation.IP/N/1/SVN/I/1
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(3) The Minister competent for the field of industrial property shall issue an order on the tariff
fixing the kinds and the amount of payments under paragraph (2).
Article 8
Secrecy and inspection of applications
(1) The files relating to patent and industrial design applications, which have not yet been
published in the Official Journal, shall be official secrecy.
(2) The files which are official secrecy shall be made available for inspection only with the
consent of the applicant.
(3) Any person who can prove that, in relation to his acts, the applicant informed him in writing
about his application and the scope of requested protection may obtain inspection of the files which
are official secrecy without the consent of the applicant.
(4) Even prior to the publication of the patent application in the Official Journal, the Office may
publish the following data or communicate them to third parties:
(a) the number of the application;
(b) the date of filing of the application and, where the priority is claimed, the date, State or Office
and file number of the previous application;
(c) data concerning the applicant (surname, forename and address, or firm and seat);(d) the title of the invention.
Article 9
Fees
(1) For the acquisition and maintenance of rights under this Act, fees shall be paid in time limits
laid down by this Act. The amounts of fees shall be fixed by a decree issued by the Government of the
Republic of Slovenia.
(2) In proceedings in which fees under paragraph (1) shall be paid, the fees under the Act
regulating administrative fees shall not be payable.
(3) If procedural fees are not paid in due time, or are not paid in full, they are deemed to be
unpaid and the request to be withdrawn, unless othe rwise provided by this Act. Upon request, the
Office shall refund the amount which has been paid.
CHAPTER II
PATENTS
Section I
Patents and Short-Term Patents
Article 10
Subject-matter of patent protection
(1) Patents shall be granted for any inventions, in all fields of technology, which are new, involve
an inventive step and are susceptible of industrial application.IP/N/1/SVN/I/1
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(2) Detailed conditions for the grant of patents in respect of individual fields of technology with
certain technical or technological characteristics shall be defined by a decree issued by the
Government of the Republic of Slovenia.
Article 11
Exceptions to patent protection
(1) Discoveries, scientific theories, mathematical methods, and other rules, schemes, methods and
processes for performing mental acts as such shall not be considered inventions within the meaning of
Article 10.
(2) A patent shall not be granted for:
(a) inventions, the exploitation of which would be contrary to public order or morality;
(b) inventions of surgical or diagnostic methods or methods of treatment practised directly on the
living human or animal body, with the excep tion of inventions relating to products, in
particular substances or compositions for use in any of these methods.
Article 12
Novelty
(1) An invention shall be considered to be new if it does not form part of the state of the art.
(2) The state of the art shall be held to comprise everything made available to the public by
means of an oral or written description, by use, or in any other way, before the date of filing of the
patent application. The right of priority shall have the effect that the date of priority shall count as the
date of filing for the purposes of this Article.
(3) The contents of the following applications, which have been filed before the date referred to
in paragraph (2) and which were published on or after that date, shall also be considered as comprised
in the state of the art:
(a) national patent applications, as originally filed with the Office;
(b) European patent applications, as originally filed with the European Patent Office, hereinafter
referred to as “the EPO”, under the European Patent Convention of 5 October 1973,
hereinafter referred to as “the EPC”, requesting protection in the Republic of Slovenia;
(c) international applications, as originally filed under the Patent Cooperation Treaty of 19 June
1970, as amended on 2 October 1979 and modified on 3 February 1984 (Official Gazette RS -
MP, No 19/93), hereinafter referred to as “the PCT”, received by the Office as the elected
Office in accordance with Article 39 of the PCT.
(4) The provisions of paragraphs (1) to (3) shall not exclude from patentability any substance or
composition comprised in the state of the art where it is intended for use in a method of treatment
referred to in Article 11(2)(b) and such use is not comprised in the state of the art.
Article 13
Non-prejudicial disclosures
(1) For the purpose of applying Article 12, a disclosure of the invention shall not be taken into
consideration if it occurred no earlier than six months preceding the filing of the application and if it
was due to, or in consequence of:(a) an evident abuse in relation to the applicant or his legal predecessor;  or
(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or
officially recognised, international exhibition referred to in Article 62.IP/N/1/SVN/I/1
Page 6
(2) The provision of paragraph (1)(b) shall apply only if the applicant states, when filing the
application, that the invention has been so displayed and files a supporting certificate in conformity
with Article 62(2).
Article 14
Inventive step
(1) An invention shall be considered as involving an  inventive step if, having regard to the state
of the art within the meaning of Article 12(2), it is not obvious to a person skilled in the art.
(2) If the state of the art also includes documents  within the meaning of Article 12(3), these
documents are not to be considered in deciding whether there has been an inventive step.
(3) Where an applicant, after having filed an application which has not yet been published, files
another application for the same invention, the first application is not to be considered in deciding
whether there has been an inventive step in the second application.
Article 15
Industrial application
An invention shall be considered as susceptible of industrial application if it can be made or
used in any kind of industry, including agriculture.
Article 16
Subject-matter of short-term patent protection
(1) With the exception of processes, plant varieties and animal breeds, a short-term patent may be
granted for inventions which are new, susceptible of industrial application and are the result of a
creative effort.
(2) An invention shall be considered to be the result of a creative effort if it exhibits either
particular effectiveness or a practical industrial advantage.
(3) The provisions of this Act relating to patents shall apply mutatis mutandis  to short-term
patents, unless otherwise provided by this Act.
Article 17
Secret inventions
(1) Invention which are important for the defence or security of the Republic of Slovenia shall be
deemed secret and shall be registered at the Ministry competent for the defence.
(2) The conditions of exploitation of secret inventions, in particular compensation for the
exploitation, shall be subject to mutual agreement between the inventor and the Ministry competent
for the defence.
(3) The application for the invention referred to in paragraph (1) may be filed with the Office if
the Ministry competent for the defence does not wish to exploit it or if it consents to the filing of thepatent application.IP/N/1/SVN/I/1
Page 7
Article 18
Rights conferred by a patent
(1) A patent shall confer on its owner the following exclusive rights:
(a) where the subject-matter of a patent is a product, to prevent third parties not having the
owner’s consent from the acts of making, using,  offering for sale, selling, or importing for
these purposes that product;
(b) where the subject-matter of a patent is a process, to prevent third parties not having the
owner’s consent from the act of using the process, and from the acts of offering for sale,
selling, or importing for these purposes the product obtained directly by that process.
(2) The scope of protection conferred by a patent shall be determined by the terms of the claims.
Nevertheless, the description and drawings shall be used to interpret the claims.
Article 19
Limitation of rights conferred by a patent
The rights conferred by a patent within the meaning of Article 18 shall not extend to:
(a) acts done privately and for non-commercial purposes;
(b) acts done for research and experimental purposes of any kind relating to the subject-matter of
the patent irrespective of their final purpose;
(c) the extemporaneous preparation for individual cases in a pharmacy of a medicine in
accordance with a medical prescription nor acts concerning the medicine so prepared;
(d) the use on board vessels of other countries of the patented invention, in the body of the vessel,
in the machinery, tackle, gear and other accessories, when such vessels temporarily or
accidentally enter the waters of the Republic of Slovenia, provided that the invention is usedthere exclusively for the needs of the vessel;
(e) the use of the patented invention in the construction or operation of aircraft or land vehicles of
other countries, or of accessories to such aircraft or land vehicles, when those aircraft or land
vehicles temporarily or accidentally enter the territory of the Republic of Slovenia;
(f) the acts specified in Article 27 of the Convention on International Civil Aviation of
7 December 1944 (Official Gazette FLRJ-MP Nos 3/54, 5/54, 9/61, 5/62, 11/63, 49/71, 62/73,
15/78, 2/80, Official Gazette RS-M P No 9/92), where these acts concern the aircraft of a State
benefiting from the provisions of that Article.
Article 20
Right based on prior use
(1) The rights conferred on the owner of a patent by virtue of Article 18 shall have no legal effect
vis-a-vis  a person who was using the invention in the Republic of Slovenia in good faith before the
date of filing or, if priority is claimed, the date of priority, or was making preparations for such use,
and who continues such use. Such person retains the right to use the invention, but has no right to give
licence or otherwise use the invention.
(2) The right of the person referred to in paragraph (1) to continue the use of the invention may
only be transferred together with his enterprise or business in which the use or preparations for use
have been made.IP/N/1/SVN/I/1
Page 8
Article 21
Exhaustion of the rights conferred by a patent
(1) The rights conferred by a patent shall not extend to acts concerning a product covered by that
patent which are done in the Republic of Slovenia after that product has been put on the market in theRepublic of Slovenia by the owner of the patent or with his express consent, unless there are grounds
which, under the law of the Republic of Slovenia, would justify the extension to such acts of the rights
conferred by the patent.
(2) The exhaustion of the rights referred to in paragraph (1) may be extended beyond the territory
of the Republic of Slovenia, if this is in conformity with an international treaty which is binding on
the Republic of Slovenia.
Article 22
Term of a patent
(1) Subject to Article  91(3) and corresponding provisions of Article 109, the term of a patent
shall be twenty years as from the date of filing of the application.
(2) Immediately on expiry, the term of a patent may be extended once in the case of a state of war
or similar emergency conditions, for the duration of such state or conditions, but not for more than
five years.
(3) Immediately on expiry of the term of the patent, a supplementary protection certificate may
be granted once, in accordance with a decree issued by the Government of the Republic of Slovenia, if
the subject-matter of the patent is a product or a process of manufacturing a product or a use of a
product which has to undergo an administrative authorisation procedure required by law before it can
be put on the market, for the duration of such administrative procedure, but not for more than fiveyears.
Article 23
Term of a short-term patent
Subject to corresponding provisions of Article 109, the term of a short-term patent shall be
ten years as from the date of filing of the application.
Section II
European Patent Applications and European Patents
Article 24
Applicable law
(1) Patents granted by the EPO in accordance wi th the EPC, hereinafter referred as “European
patents”, and applications for a European patent fi led in accordance with the EPC, hereinafter referred
to as “European patent applications”, requesting protection in the Republic of Slovenia shall be
governed by this Act, unless otherwise provided by the EPC.
(2) In case of conflict between the provisions of the EPC and those of this Act, the provisions of
the EPC shall prevail in respect of European patent applications and European patents.IP/N/1/SVN/I/1
Page 9
Article 25
Filing of European patent applications
(1) European patent applications, other than divisional applications, may be filed with the Office
in any language accepted under Article 14(1) and (2) of the EPC.
(2) Article 17 shall apply to European patent applications relating to inventions that may affect
the national security of the Republic of Slovenia.
Article 26
Effects of a European patent application
(1) A European patent application requesting protection in the Republic of Slovenia which has
been accorded a filing date shall be equivalent to a national application, where appropriate with thepriority claimed for the European patent application, whatever its outcome may be.
(2) A published European patent application requesting protection in the Republic of Slovenia
shall confer the protection conferred under Article 122(4) as from the date on which a translation of
the claims of that application as published has been communicated by the applicant to the person
using the invention in the Republic of Slovenia.
Article 27
Effects of a European patent
(1) A European patent requesting protection in the Republic of Slovenia shall, subject to
paragraphs (2) to (4), confer as from the date of the mention of its grant by the EPO the same rights as
a patent granted by the Office under Article 18.
(2) The owner of the European patent shall furn ish to the Office within three months after the
mention of its grant a translation of the claims into the Slovene language and shall pay the prescribed
fee for publication.
(3) Where, as a result of an opposition procedure before the EPO, the European patent is
maintained as amended, paragraph (2) shall apply mutatis mutandis .
(4) If the text of the claims contains reference signs used in drawings, those drawings shall be
attached to the translation referred to in paragraphs (2) and (3). The text in the drawings, if any, shall
also be translated into the Slovene language.
(5) The Office shall publish any translation filed in  conformity with paragraphs (2), (3) or (4).
(6) Where the owner of the European patent complies with paragraph (2), the Office shall issue a
decision on entry of the European patent in the Office’s patent register.
(7) If the translation referred to in paragraphs (2),  (3) or (4) is not filed, or the prescribed fee is
not paid, in due time, the European patent requesting protection in the Republic of Slovenia shall be
deemed to be void.
Article 28
Authentic text of European patent applications or European patents
(1) Where a translation referred to in Articles 26 and 27 confers protection which is narrower
than that conferred by a European patent application or European patent in the language of theIP/N/1/SVN/I/1
Page 10
proceedings, that translation shall be regarded as the authentic text, except for opposition proceedings
before the EPO.
(2) The applicant for or owner of the European patent may file a corrected translation of claims at
any time. The corrected translation shall take effect only after it has been published by the Office, or
communicated to the person using the invention in the Republic of Slovenia by the applicant for orowner of the European patent.
(3) Any person who, in good faith, is using or has made effective and serious preparations for
using an invention, the use of which would not consti tute infringement of the application or patent in
the original translation may, after the corrected translation takes effect, continue such use in the
course of his business and for the needs thereof without payment.
Article 29
Fees for European patents
(1) Subject to Articles 109 and 110, renewal fees in respect of European patents requesting
protection in the Republic of Slovenia shall be paid to the Office for each year following that in which
the order on the grant of the European patent is published.
(2) Notwithstanding paragraph (1), the first renewal fee in respect of a European patent shall fall
due within two months after the order on the grant of the European patent is published.
(3) Pursuant to Article 39 of the EPC, the European Patent Organisation shall be remitted a
proportion of fees paid under this Article.
Article 30
Conversion into a national patent application
(1) A European patent application requesting protection in the Republic of Slovenia may be
converted into a national patent application, where the European patent application is deemed to be
withdrawn pursuant to Article 77(5) of the EPC or , because the translation of the application under
Article 14(2) of the EPC has not been filed in due time, pursuant to Article 90(3) of the EPC.
(2) The applicant shall pay, within the prescrib ed time limit, the prescribed fee, and file a
translation of the application into the Slovene language with the Office.
Article 31
Simultaneous protection
Where a European patent and a national patent having the same date of filing or, if priority is
claimed, date of priority, have been granted to the same person, the national patent shall have no legal
effect, to the extent that it covers the same inve ntion as the European patent, as from the date on
which the time limit for filing an opposition to the Eu ropean patent has expired without an opposition
having been filed, or as from the date on which the opposition procedure has resulted in a final
decision maintaining the European patent.IP/N/1/SVN/I/1
Page 11
Section III
PCT Patent Applications
Article 32
Applications under the PCT
(1) The Office shall act as a receiving Office under the PCT.
(2) The Office shall accept international applications filed by nationals of the Republic of
Slovenia or persons having their residence or seat therein.
(3) International applications under the PCT shall be filed in English, French or German
language. They may also be filed in the Slovene language if a translation in English, French orGerman language is submitted to the Office within  the time limit prescribed in implementing rules
and instructions under the PCT.
(4) The Office shall collect fees in respect of ap plications under this Article on behalf and for the
account of the International Bureau of the World Intellectual Property Organization.
(5) The EPO shall act as an International Searching Authority and International Preliminary
Examining Authority in respect of international applications under the PCT filed with the Office.
(6) A designation or election of the Republic of Slovenia in an international application under
Article 2(viii) of the PCT shall be considered as a request for the grant of a European patent having
effect in the Republic of Slovenia under an international treaty which is binding on the Republic of
Slovenia.
CHAPTER III
INDUSTRIAL DESIGNS
Section I
Industrial Designs
Article 33
Subject-matter of industrial design protection
(1) Industrial design shall be registered for a design to the extent that it is new and has an
individual character.
(2) “Design” means the appearance of the whole or a part of a product resulting from the features
of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itselfand/or its ornamentation.
(3) “Product” means any industrial or handicraft item, including, inter alia,  parts intended to be
assembled into a complex item, packaging, get-up, graphic symbols and typographic typefaces, but
excluding computer programmes. “Complex product”  means a product which is composed of multiple
components which can be replaced permitting disassembly and reassembly of the product.IP/N/1/SVN/I/1
Page 12
(4) A design applied to a component part of a complex product shall only be considered to be
new and to have an individual character:
(a) if the component part, once it has been incorporated into the complex product, remains visible
during normal use of the latter, and
(b) to the extent that those visible features of the component part fulfil in themselves the
requirements as to novelty and individual character.
(5) “Normal use” within the meaning of paragraph (4)(a) shall mean use by the end user,
excluding maintenance, servicing or repair work.
Article 34
Novelty and individual character
(1) A design shall be considered new if no identical design has been made available to the public
before the date of filing of the industrial design application or, if priority is claimed, the date of
priority. Designs shall be deemed to be identical if their features differ only in immaterial details.
(2) A design shall be considered to have individual character if the overall impression it produces
on the informed user differs from the overall impression produced on such a user by any design which
has been made available to the public before the date of filing of the application or, if priority is
claimed, the date of priority.
(3) In assessing individual character, the degree of freedom of the designer in developing the
design shall be taken into consideration.
Article 35
Disclosure of a design
(1) For the purpose of applying Article 34, a design shall be deemed to have been made available
to the public if it has been published following registration or otherwise, or exhibited, used in trade or
otherwise disclosed, except where these events c ould not reasonably have become known in the
normal course of business to the circles specialised in the sector concerned, operating within the
Republic of Slovenia, before the date of filing of the application or, if priority is claimed, the date of
priority. The design shall not, however, be deemed to have been available to the public for the sole
reason that it has been disclosed to a third person under explicit or implicit conditions of
confidentiality.
(2) For the purpose of applying Article 34, disclosure shall not be taken into consideration if a
design for which protection is sought has been made available to the public  in the Republic of
Slovenia:(a) by the designer, his successor in title, or a third person as a result of information provided or
action taken by the designer, or his successor in title, and
(b) during the twelve month period preceding the date of filing of the application or, if priority is
claimed, the date of priority.
(3) Paragraph (2) shall also apply if the design has been made available to the public as a
consequence of an abuse in relation to the designer or his successor in title.IP/N/1/SVN/I/1
Page 13
Article 36
Refusal of an industrial design
(1) A design shall not be registered as an industrial design if:
(a) it is not a design within the meaning of Article 33(2);(b) it does not fulfil the requirements of Article 33(1) or (4), or Articles 34 or 35;
(c) it should be refused pursuant to Article 6
ter of the Paris Convention for the Protection of
Industrial Property of 20 March 1883, last revised on 14 July 1967 (Official Gazette SFRJ-
MP Nos 5/74, 7/86, Official Gazette RS-MP No 9/92), hereinafter referred as “the Paris
Convention”, on the ground that authorisation by the competent authorities has not been
submitted;
(d) it includes or imitates badges, emblems or escutcheons other than those covered by Article 6ter
of the Paris Convention and which are of particular public interest, unless the consent of the
competent  authorities to its registration has been given;
(e) it is contrary to public order or morality.
(2) An industrial design shall not subsist in features of appearance of a product, which are solely
dictated by its technical function.
(3) An industrial design shall not subsist in fe atures of appearance of a product which must
necessarily be reproduced in their exact form and dimensions in order to permit the product to which
the design is applied to be mechanically connected to or placed in, around or against another product
so that either product may perform its function.
(4) Notwithstanding paragraph (3), an industrial design shall, under the conditions set out in
Article 34, subsist in a design serving the purpose of allowing multiple assembly or connection of
mutually interchangeable products within a modular system.
Article 37
Rights conferred by an industrial design
(1) The industrial design shall confer on its owner the exclusive right to use it and to prevent any
third party not having his consent from using it. The aforementioned use shall cover, in particular, the
making, offering, putting on the market, importing, exporting or using of a product to which the
design is applied, or stocking such a product for those purposes.
(2) The scope of protection shall include any design which does not produce on the informed user
a different overall impression. In assessing the scope of protection, the degree of freedom of the
designer in developing the design shall be taken into consideration.
(3) The rights referred to in paragraph (1) shall not extend:
(a) mutatis mutandis  to acts referred to in Article 19, with the exception of subparagraph (c);
(b) to acts of reproduction for the purposes of making citations or of teaching, provided that such
acts are compatible with fair trade practice and do not unduly prejudice the normal
exploitation of the design, and th at mention is made of source.
(4) Any third person may assert the right based on prior use in respect of an industrial design. In
this case, provisions of Article 20 shall apply mutatis mutandis .IP/N/1/SVN/I/1
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Article 38
Exhaustion of rights conferred by an industrial design
(1) The rights conferred by an industrial design shall not extend to acts relating to a product to
which the design is applied, when the product has been put on the market in the Republic of Sloveniaby the owner of the industrial design or with his consent.
(2) The exhaustion of rights referred to in paragraph (1) may be extended beyond the territory of
the Republic of Slovenia, if this is in conformity with an international treaty which is binding on the
Republic of Slovenia.
Article 39
Other forms of industrial design protection
(1) Provisions of this Act concerning industrial designs shall be without prejudice to provisions
of other Acts relating to unregistered industrial designs, marks or other distinctive signs, patents,
utility models, typefaces, civil liability or unfair competition.
(2) An industrial design shall be eligible for copyright protection as from the date on which the
design was created or fixed in any form  if it fulfils the conditions under which such a protection is
conferred under the Act regulating copyright and related rights.
Article 40
Term of an industrial design
(1) The term of an industrial design shall be one or more periods of five years as from the date of
filing of the application.
(2) Subject to corresponding provisions of Article 109 , the owner of an industrial design may
renew its term for one or more periods of five years each, up to a total term of 25 years from the date
of filing of the application.
(3) The term of a multiple industrial design may be renewed, in conformity with paragraph (2), as
a whole, or in limited scope for only some products.
Section II
International Deposit of Industrial Designs
Article 41
Requests under the Hague Agreement
(1) The requests under the Hague Agreement Concerning the International Deposit of Industrial
Designs of 28 November 1960, as completed on 14 July 1967 and amended on 28 September 1979
(Official Gazette RS-MP No 20/94), hereinafter referred to as “the Hague Agreement” shall be filed,in accordance with the Hague Agreement and implem enting rules and instructions thereto, with the
International Bureau.
(2) In accordance with Article 8 of the Hague Ag reement, provisions of this Act, with the
exception of the provision of Article 96(2), shall apply mutatis mutandis  to requests under the Hague
Agreement by which protection of an industrial de sign is sought in the Republic of Slovenia.IP/N/1/SVN/I/1
Page 15
CHAPTER IV
MARKS
Section I
Marks and Collective Marks
Article 42
Subject-matter of mark protection
(1) Any sign, or any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of another undertaking, and capable of being graphically represented, in
particular words, including personal names, letters, numerals, figurative elements, three dimensionalimages, including the shape of goods or of their packaging, combinations of colours as well as any
combination of such signs, shall be eligible for registration as marks.
(2) In deciding whether a sign is eligible for registration as a mark, all circumstances, in
particular the duration of its use, shall be taken into account.
(3) The nature of the goods or services to which a mark is to be applied shall in no case form an
obstacle to the registration of the mark.
Article 43
Absolute grounds for refusal
(1) A sign shall not be eligible for registration as a mark if:
(a) it cannot constitute a mark;
(b) it is devoid of any distinctive character;(c) it serves, in trade, to designate merely the kind, quality, quantity, intended purpose, value,
geographical origin, or the time of production of the goods or of rendering of the service, or
other characteristics of the goods or services;
(d) it contains or consists of a geographical indication identifying wines or spirits, where the
mark application relates to wines or spirits not having this origin;
(e) it consists exclusively of signs or indications which have become customary in the current
language or in the bona fide  and established practices of the trade;
(f) it consists exclusively of the shape which results from the nature of the goods themselves or is
necessary to obtain a technical result or gives substantial value to the goods;
(g) it is contrary to public order or morality;
(h) it deceives the public, in particular to the nature, quality or geographical origin of the goods
or services;
(i) it contains official signs or hallmarks for controlling or guaranteeing the quality of goods, or
imitations thereof;
(j) it has not been authorised by the competent authorities and should be refused pursuant to
Article 6
ter of the Paris Convention;
(k) it includes or imitates badges, emblems or escutcheons other than those covered by Article 6ter
of the Paris Convention and which are of particular public interest, unless the consent of the
competent  authorities to its registration has been given.
(2) Paragraph 1(b), (c) and (e) shall not apply to marks which acquired a distinctive character
through long-term use.IP/N/1/SVN/I/1
Page 16
(3) A sign which is ineligible for registration becau se it contains the name or abbreviation of the
name, State armorial bearing, emblem, flag or other official sign of the Republic of Slovenia, or a part
thereof, which is in breach of the provisions of paragraph (1)(j) and (k), shall not be used in the course
of trade without the consent of the Government of the Republic of Slovenia.
Article 44
Relative grounds for refusal
(1) Further, a sign shall not be eligible for registration as a mark if:
(a) it is identical with an earlier mark of anothe r owner, and the goods or services for which the
registration is applied for are identical with the goods or services for which the earlier mark is
registered;
(b) because of its identity with or similarity to the earlier mark of another owner and the identity
or similarity of the goods or services covered by the sign and the mark there exist the
likelihood of confusion on the part of the public, which includes the likelihood of association
with the earlier mark;
(c) because of its identity with or similarity to an earlier mark of another owner, registered for
goods or services which are not identical with or similar to the goods or services for which the
registration has been applied for, the use without due cause of such sign would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark,
or if it would indicate a connection between the goods or services and the owner of the earlier
mark, and provided that the interests of the owner of the earlier mark are likely to be damagedby such use;
(d) it is identical with or similar to a mark or unregistered sign, which is in the Republic of
Slovenia a well-known mark within the meaning of Article 6
bis of the Paris Convention or
Article 16(3) of the TRIPS Agreement;
(e) the owner of the mark registered in any Member State of the Union established under the
Paris Convention, hereinafter referred to as “the Paris Union”, or the World Trade
Organisation, hereinafter referred to as “the WTO”, proves that his agent or representative
applied, without the owner’s consent, for the registration of the sign in his own name;
(f) its use would contradict an earlier right to a name, personal portrayal, plant variety,
geographical indication or other industrial property right, or an earlier copyright, unless the
owner of the earlier right gives his express consent to the registration of such sign.
(2) “Earlier mark” within the meaning of paragraph (1) means:
(a) mark which was applied for or registered in the Republic of Slovenia on the basis of a
national application before the date of filing of the application for the later mark or, if priority
is claimed, the date of priority;
(b) mark for which the protection was sought in the Republic of Slovenia on the basis of an
international application before the date of filing of the application for the later mark or, if
priority is claimed, the date of priority.
Article 45
Subject-matter of collective mark protection
(1) Any sign which meets the requirements of Article 42 and is capable of distinguishing the
goods or services of the members of the holder of the collective mark from those of another
undertakings as to their origin in a given enterprise  or their geographical origin, their nature, quality,
or other properties, shall be eligible for registration as a collective mark.
(2) The applicant for or holder of a collective mark may be any association of legal or natural
persons, including umbrella associations having legal personality, hereinafter referred to as “the
associations”, or legal persons governed by public law.IP/N/1/SVN/I/1
Page 17
(3) The members of the holder may use a collective mark in conformity with regulations referred
to in Article 46.
(4) The provisions of this Act shall apply to the registration of collective marks, unless otherwise
provided by this Act.
Article 46
Regulations governing use of a collective mark
(1) An applicant for a collective mark must submit, when filing the application, regulations
governing use of the collective mark.
(2) Regulations referred to in paragraph (1) shall include at least:
(a) the name and seat of the applicant;
(b) indication of the applicant’s business and information concerning the person whom he
officially and by laws represents;
(c) the conditions of membership;(d) data concerning the group of persons having authority to use the collective mark;
(e) provisions concerning the rights and obligations of the members in the event of infringement
of the collective mark.
(3) The applicant for or holder of a collective mark shall immediately communicate to the Office
any amendment to the regulations, which shall be examined by the Office as to its compliance with
paragraph (2).
(4) Anyone may inspect the regulations governing use of a collective mark.
Article 47
Rights conferred by a mark
(1) A mark shall confer on the owner exclusive right to use the mark and other exclusive rights
under this Act. The owner of a mark shall be entitled  to prevent all third parties not having his consent
from using in the course of trade:
(a) any sign which is identical with the mark in relation to goods or services which are identical
with those for which the mark is registered;
(b) any sign where, because of its identity with  or similarity to the mark and the identity or
similarity of the goods or services covered by the mark and the sign, there exists a likelihood
of confusion on the part of the public, which includes the likelihood of association between
the sign and the mark;
(c) any sign which is identical with or similar to the mark in relation to goods or services which
are not similar to those for which the mark is registered, where the mark has a reputation in
the Republic of Slovenia and where the use without due cause of that sign would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the mark.
(2) The following, inter alia , may be prohibited under paragraph (1):
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for these purposes under that
sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under that sign;(d) using the sign on business papers and in advertising.IP/N/1/SVN/I/1
Page 18
Article 48
Limitation of rights conferred by a mark
(1) The mark shall not entitle the owner to prohibit a third party from using in the course of trade
and in accordance with honest practices in industrial or commercial matters:(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical
origin, the time of production of goods or of rendering the service, or other characteristics of
goods or services;
(c) the mark where it is necessary to indicate the intended purpose of a product or service, in
particular as accessories or spare parts;
(d) any sign which is identical or similar to the mark, where the third party started to use it in
good faith before the date of filing of the application or, if priority is claimed, the date of
priority.
(2) Where the owner of an earlier mark as referred to in Article 44(2) has not opposed, in a period
of five successive years, the use of the later mark while being aware of such use, he shall no longer beentitled on the basis of the earlier mark to file an action under Article 114 or 119, or prohibit the use
of the later mark in respect to the goods or services for which the later mark has been used, unless
registration of the later mark was applied for in bad faith.
Article 49
Limitation of rights conferred by a collective mark
The holder of a collective mark which consists also of an indication of the geographical origin
shall enable any person whose goods or services originate in the geographical area concerned and
meet the conditions for use set out in the regulations  governing use of the collective mark to become a
member of the association which is the holder of the mark.
Article 50
Exhaustion of rights conferred by a mark
(1) A mark shall not entitle the owner to prohibit its use in relation to goods which have been put
on the market in the Republic of Slovenia by the owner or with his consent.
(2) Paragraph (1) shall not apply where there exist legitimate reasons for the owner to oppose
further commercialisation of the goods, especially where the condition of the goods is changed or
impaired after they have been put on the market.
(3) The exhaustion of rights referred to in paragraph (1) may be extended beyond the territory of
the Republic of Slovenia, if this is in conformity with an international treaty which is binding on the
Republic of Slovenia.
Article 51
Reproduction of marks in dictionaries
If the reproduction of a mark in a dictionary, encyclopaedia or similar reference work gives
the impression that it constitutes the generic name of the goods or services for which the sign is
registered, the publisher of the work shall, at the request of the owner of the mark, ensure that the
reproduction of the mark at the latest in the next edition of the publication is accompanied by an
indication that it is a mark.IP/N/1/SVN/I/1
Page 19
Article 52
Term of a mark
(1) The term of a mark shall be ten years computed from the date of filing of the application.
(2) Subject to corresponding provisions of Article 109,  the owner of a mark may renew its term
an unlimited number of times, each time for ten years, computed from the date of filing of the
application.
(3) The term of a mark may be renewed, in accordance with paragraph (2), as a whole, or in
limited scope for only some goods or services.
Section II
International Registrations of Marks
Article 53
Filing of requests with the Office
(1) The Office shall accept requests under the Madrid Agreement Concerning the International
Registrations of Marks of 14 April 1891 as last revised on 14 July 1967 (Official Gazette SFRJ-MPNo 2/74, Official Gazette RS-MP No 9/92), hereinafte r referred to as “the Madrid Agreement” and the
Protocol Relating to the Madrid Agreement Concerning the International Registrations of Marks of
27 June 1997 (Official Gazette RS-MP No 21/97), hereinafter referred to as “the Madrid Protocol”.
(2) Upon filing the request, or within three months after the receipt of the Office’s invitation, the
fee shall be paid. If the fee is not paid in due time, the request shall be deemed to be withdrawn.
(3) The request for international registration of a mark shall be accompanied by a list of goods or
services in the language prescribed by the Madrid Agreement or the Madrid Protocol, and
implementing rules and instructions thereto.
(4) If the request is not drawn up in conformity with the Madrid Agreement or the Madrid
Protocol, implementing rules and instructions thereto, this Act and executive regulations thereto, the
Office shall invite the person filing the request to amend the request within three months from the
receipt of the invitation. If the request is not amended in due time, it shall be deemed to be withdrawn.
(5) An executive regulation issued by the Minister competent for the field of industrial property
shall define, in greater detail, the contents of the request referred to in paragraph (1) and procedures
relating thereto.
Article 54
Examination of international marks
(1) In accordance with Article 5 of the Madrid Agreement or Article 5 of the Madrid Protocol,
the provisions of this Act, other than those of Article 103, shall apply mutatis mutandis  to requests
under the Madrid Agreement and the Madrid Protocol, by which the protection of a mark is sought in
the Republic of Slovenia.
(2) The publication of data concerning the international registration of a mark in the Gazette of
the International Bureau shall be construed as the publication of the mark application in the Republic
of Slovenia.IP/N/1/SVN/I/1
Page 20
(3) Where the owner of the mark for which protection is sought in the Republic of Slovenia under
the Madrid Agreement or the Madrid Protocol does not comment on the intended refusal of the
protection of the mark, of which he has been notified in conformity with Article 5 of the Madrid
Agreement or Article 5 of the Madrid Protocol, the Office shall, notwithstanding Article 129(5), mailthe decision through a postal service directly to the owner of the mark.
CHAPTER V
GEOGRAPHICAL INDICATIONS
Article 55
Subject-matter of protection of registered geographical indications
(1) Geographical indications eligible for registration are indications which identify a good as
originating in a territory, or a region or a locality in that territory, where a given quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin.
(2) The name of a good, which has become generally known through long-term use in the course
of trade as the name indicating that the good originates in a specific place or region, is also eligible for
registration as a geographical indication.
(3) Geographical indications relating to a good of special historic or cultural importance may be
protected by a decree issued by the Government of the Republic of Slovenia.
(4) Geographical indications for agricultural products and foodstuffs as well as for wines and
other products obtained from grapes or wine shall not be eligible for registration under this Act.
Article 56
Grounds for refusal
A geographical indication shall not be eligible for registration if:
(a) it indicates or suggests that the good in question originates in a geographical area other than
the true place of origin in a manner which misleads the public as to the geographical origin of
the good;
(b) although literally true as to the territory, region or locality in which the good originates, it
falsely represents to the public that the good originates in another territory;
(c) it has become generally known through long-term use in the course of trade as a designation
for a specific kind of goods;
(d) in the light of a mark’s reputation and renown and the length of time it has been used,
registration is liable to mislead the consumer as to the true identity of the product.
Article 57
Protection against general use
Registered geographical indications may not become generic or common names which would
be freely used in the course of trade.IP/N/1/SVN/I/1
Page 21
Article 58
Rights conferred by a registered geographical indication
(1) A registered geographical indication is a collective right and may be used as such in the
course of trade only by those who, in accordance with the specification referred to in Article 104(2),produce or market the goods protected by the geographical indication.
(2) The use of a registered geographical indication by unauthorised persons shall be prohibited.(3) The use of a registered geographical indication shall be prohibited where the goods do not
originate in the place indicated by the geographical indication, even if the true origin of the goods is
indicated, and where the geographical indication is used in translation or accompanied by expressionssuch as “kind”, “type”, “style”, “imitation” or the like.
Article 59
Limitation of rights conferred by a registered geographical indication
(1) A mark shall not be cancelled nor its use prohibited where a mark which is identical with or
similar to a registered geographical indication has been applied for or registered in good faith, or
where rights to a  mark have been acquired through use in good faith before the geographical
indication has been registered.
(2) A registered geographical indication shall not exclude the right of any person to use, in the
course of trade, that person’s name or the name of that person’s predecessor in business, except where
such name is used in such a manner as to mislead the public.
Article 60
Term of a registered geographical indication
The term of a registered geographical indication shall be unlimited.
CHAPTER VI
GENERAL PROVISIONS CONCERNING
PROCEDURES BEFORE THE OFFICE
Article 61
International right of priority
(1) Any person who has duly filed an application for a patent, industrial design or mark in any
Member State of the Paris Union or WTO shall enjoy,  for the purpose of filing the application in the
Republic of Slovenia, a right of priority, for patents during a period of twelve months, and for
industrial designs and marks during a period of six months following the date of filing of the first
application.
(2) A person claiming the right of priority referred to in paragraph (1) shall indicate, when filing
the application in the Republic of Slovenia, the date of the claimed priority. Within three months afterthe filing of the application, the number and Stat e or Office of the first application shall be
communicated to the Office. If the applicant fails to comply with the provision of this paragraph, the
priority shall be deemed not to have been claimed.IP/N/1/SVN/I/1
Page 22
(3) Upon the request of the Office or, in case of dispute, upon the request of the court, the person
requesting the right of priority shall submit a copy of the first application, certified by the competent
authority in the Member State of the Paris Union or WTO, in which such application was filed. A
copy of the first application may not be required before the expiration of sixteen months from the
filing of the first application.
(4) Where the copy of the first application referred to in paragraph (3) is not the Slovene
language and the validity of the priority claim is relevant to the determination of whether the
invention concerned is patentable, the Office or, in case of dispute, the court may require that a
translation of the first application in the Slovene language be filed by the person requesting priority
within three months from the receipt of the invitation.
(5) Multiple priorities may be claimed in respect of several previous applications filed in one or
several countries.
(6) The applicant may claim the right of priority for a patent application on the basis of a utility
model application.
(7) Upon request and against payment of the fee prescribed by the Act regulating administrative
fees, the Office shall issue a priority certificate. An executive regulation issued by the Minister
competent for the field of industrial property shall define, in greater detail, the contents of the priority
certificate and proceedings relating to the issuance thereof.
Article 62
Temporary protection at certain international exhibitions
(1) A person who displays an invention, appearance  of the whole or a part of a product, or who
uses a specific sign for marking goods or services, at an official or officially recognised internationalexhibition, falling within the terms of the C onvention on International Exhibitions, signed on
22 November 1928 and last revised on 30 November 1972, in the Republic of Slovenia or other
Member State of the Paris Union or WTO, may claim in his application, within three months after the
closing of the exhibition, the right of priority as of the first day of the display of the invention or
appearance of the whole or a part of th e product, or of the use of the sign.
(2) A person claiming the right of priority referred to in paragraph (1) shall indicate, when filing
the application in the Republic of Slovenia, the type of exhibition, the place at which it was held, the
opening and closing dates and the first day of exhibition or use, and submit a written certificate issued
by a competent authority in the Member State of the Paris Union or WTO, attesting to the official or
officially recognised international nature of the ex hibition. If the applicant fails to comply with the
provision of this paragraph, the priority shall be deemed not to have been claimed.
(3) The claiming of priority under paragraph (1) shall not extend the time limits of the
international right of priority referred to in Article 61(1).
Article 63
Correction or addition of a priority claim
(1) The applicant may request a correction or addition of a priority claim with respect to a patent
application within sixteen months from the date of priority or, where the correction or addition would
cause a change in the date of priority, sixteen months from the date of priority as so changed,provided that such a request is filed within four months from the date of filing of the application.IP/N/1/SVN/I/1
Page 23
(2) When filing the request, the applicant shall pay a fee. If the fee is not paid, the request shall
be deemed to be withdrawn.
(3) Any request referred to in paragraph (1) received after the applicant has requested the
publication under Article 89(2) shall be deemed not to have been filed, unless the request underArticle 89(2) is withdrawn before the technical preparations for publication of the application have
been completed.
(4) Where the correction or addition of a priority claim causes a change in the date of priority, the
time limits shall be computed from the date of priority as so changed.
Article 64
Restoration of the right of priority
(1) Where a patent application which could have claimed the priority of an earlier application has
a filing date which is later than the date on which the priority period expired, but within two months
from that date, the applicant may request the restoration of the right of priority, if he failed to file theapplication within the time limit referred to in Article 61(1) in spite of all due care required by the
circumstances having been taken.
(2) The request for restoration of the right of priority shall be filed within two months from the
date on which the priority period expired and before technical preparations for publication of theapplication have been completed. Upon filing the request, the fee shall be paid. If the fee is not paid,
the request shall be deemed to be withdrawn.
Article 65
Prohibition to extend the scope of an application
(1) As from the date of filing, the subject-matter of a patent application may not be extended
beyond he subject-matter of the application as initially filed.
(2) As from the date of filing, in the case of an industrial design application, the appearance of
the whole or a part of a product shall not be substantially modified, or the number of products
increased.
(3) As from the date of filing, in the case of a mark application, the sign shall not be substantially
modified, or the original number of goods or services increased.
Article 66
Extension of time limits
(1) The applicant for or owner of a right may request, prior to the expiration of a time limit, its
extension for up to three months.
(2) The time limits for filing an action as well as those referred to in paragraph (1) and in
Articles 13(1), 27(2), 35(2), 61(1), 62(1), 63(1), 64(2), 67(2), 68(2), 80(3), 86(3), 91(1), 92(3), 94(2)
and (3), 101(1) and (5), 109, 110, 117(1), 130(2) and 137(2) shall not be extended.
Article 67
Further processing after the non-observance of a time limit
(1) The applicant, who has failed to comply with  a time limit set out for the fulfilment of the
obligations required in the proceedings for the acquisition of a right, may request that the non-IP/N/1/SVN/I/1
Page 24
observed time limit be deemed to have been complied with, that legal consequences of such non-
observance be abolished, and that the Office continues the proceedings for the acquisition of the right.
(2) The request for further processing shall be filed, the omitted act must be completed, and the
fee shall be paid within two months from the date on which the applicant was informed of the failure
to comply with the time limit and the legal conseque nces of such non-observance. If the omitted act is
not completed or if the fee is not paid in due ti me, the request shall be deemed to be withdrawn.
(3) The grant of further processing may not be requested for the non-observance of the time limit
referred to in paragraph (2) and the time limit for filing an opposition or action, or if a request for the
grant of restitutio in integrum  or for correction or addition of a priority claim or for restoration of the
right of priority has been filed.
(4) If the Office grants a request for further processing, Article 68(6) or (7) shall apply mutatis
mutandis .
Article 68
Restitutio in integrum
(1) A party to the proceedings before the Office who, in spite of all due care required by the
circumstances having been taken, was unable to observe any time limit set out for the obligations
required by the Office in accordance with this Act and the executive regulations issued pursuant to
this Act, may request, on the basis of justifiable reasons, to have his rights re-established if the non-observance had the consequence of causing the deeming of the application, or of any request, to have
been withdrawn, or the rejection or refusal, or the loss of the right.
(2) The request for the grant of restitutio in integrum  shall be filed within three months from the
removal of the cause of non-compliance with the time  limit, or, if the party only learned subsequently
about that non-compliance, from the day when the party learned. Upon filing the request, the omitted
act shall be completed and a fee shall be paid. Failure to observe this condition shall lead to the
request being deemed to be withdrawn.
(3) The request for the grant of restitutio in integrum  may not be refused, wholly or in part,
without previously notifying the requesting party in writing of the reasons for the intended refusal, in
whole or in part, and without inviting him to react, within three months from the receipt of theinvitation, to the reasons.
(4) The request for the grant of restitutio in integrum  shall only be admissible within one year
following the expiry of the unobserved time limit.
(5) The grant of restitutio in integrum  shall not be requested for the non-observance of the time
limit prescribed for the filing of the opposition or action, or the copy of the first application, the
request for the grant of restitutio in integrum , the request for the grant of further processing, the
request for the right of priority, the request for a correction or addition of priority claim, or the request
for restoration of the right of priority.
(6) Any person who in good faith has used or made effective and serious preparations for using
an invention or an industrial design which is the subject of a published application in the course of the
period between the loss of the right referred to in paragraph (1) and publication of the mention of re-
establishment of that right, may, without payment, continue such use in the course of his business or
for the needs thereof.IP/N/1/SVN/I/1
Page 25
(7) Where the applicant for or owner of a mark has his right re-established, he may not invoke his
rights to any person who, in good faith, has put goods on the market or supplied services under a sign
which is identical with or similar to the mark in the course of the period between the loss of the right
referred to in paragraph (1) and publication of the mention of re-establishment of that right.
Article 69
Withdrawal of a request
(1) A party to the proceedings before the Office may, at any time in the course of a proceeding,
withdraw any request he might have filed.
(2) The request is deemed to be withdrawn as of the date when the Office receives the request for
its withdrawal.
(3) On the basis of the request for the withdrawal of a request, the Office shall issue an order on
the termination of the proceeding.
(4) If the applicant withdraws a request for the grant of a patent after technical preparations for
publication of the application have been completed, and the application has been published, the
publication of the application shall not be deemed to form part of the state of the art under Article 12.
Article 70
Notification of the applicant before refusal of a right
(1) The Office may not issue a decision on refusal, in whole or in part, of a request for the grant
or registration of a right without previously info rming the applicant in writing of the reasons and
without inviting him to react, within three months from the receipt of the invitation, to the reasons oramend the submitted request.
(2) If the applicant reacts in due time to the reasons for refusal of his request, or amends the
request, the Office shall, before issuing the decision, verify whether the reasons for the refusal, in
whole or in part, still exist.
Article 71
Administrative litigation
There shall be no appeal against a decision or order issued by the Office; however, an action
in the administrative litigation proceedings may be filed with the Administrative Court of the
Republic of Slovenia in Ljubljana. The court shall decide on the case at its seat in Ljubljana.
Article 72
Proceedings relating to actions
(1) The court shall immediately notify the Office of the receipt of an action under this Act and of
the final decision. The court shall submit its judgement, together with the confirmation that it islegally binding, to the Office for execution.
(2) The Office shall issue a decision through which the court decision is executed.(3) Proceedings relating to actions under this Act shall be expeditious. The court shall accord
priority to decisions relating to actions under this Act.
(4) Paragraphs (1) and (2) shall not apply to litigations concerning infringements of rights.IP/N/1/SVN/I/1
Page 26
Article 73
Inventor, designer
(1) In the procedure for the grant of a patent, the inventor mentioned as such in the application
shall be deemed to be the inventor, except when the court decides otherwise.
(2) Paragraph (1) shall apply mutatis mutandis to designers.
(3) The Office shall not verify the accuracy of the data on the inventor or designer.
Article 74
Owner of a right
(1) Patents shall be granted and industrial designs or marks registered in the name of the person
who is designated as the applicant at the time of the grant or registration.
(2) Where several persons are designated as joint applicants, paragraph (1) shall apply mutatis
mutandis . Mutual relations between the persons designated  as joint applicants shall not be determined
by the Office.
Article 75
Transfer and licensing of rights
(1) The owner of a patent, industrial design or mark may assign by contract, in part or in whole,
his right and conclude licence agreements.
(2) Paragraph (1) shall apply mutatis mutandis  to the applicant.
(3) Neither a collective mark nor a geographical indication may be transferred or be subject of a
licence agreement.
Article 76
Date of the acquisition of a right
(1) Subject to paragraph (2), the rights under Articles 18, 37, 47 and 58 shall be acquired as of the
date of their entry in the corresponding register.
(2) Subject to Article 122, the right under Article 18(1) may not be not enforceable by an action
under Article 121  for infringement of a patent  before the date of issuance of a declaratory  decision
under Article 93(1)(a) or (b), or before the date of the entry of a European patent already granted in
the Office’s register.
Article 77
Lapse of rights
Notwithstanding the terms laid down in Articles 22, 23, 40 and 52, the granted or registered
rights shall lapse:
(a) in case that the owner renounces his right, on the day following the date on which the request
for renunciation is received by the Office;
(b) if prescribed fees are not paid in conformity with the provisions of this Act;
(c) pursuant to a final decision of the court or a decision of the Office in those cases provided by
this Act, on the date specified in such decision.IP/N/1/SVN/I/1
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Article 78
Correction of errors
(1) The Office may at any time, ex officio  or upon request, correct errors in names, dates and
numbers, and other obvious errors in its acts, publications and registers.
(2) Corrections of errors shall be published in the Official Journal.
CHAPTER VII
PROCEDURE FOR THE ACQUISITION OF RIGHTS
Section I
Filing of Applications and Examination as to Formal Requirements
Article 79
Requirements of an application
(1) The application shall contain a statement to the effect that the acquisition of a right is
requested, and:
(a) for patents, all items listed in Article 86(1);
(b) for industrial designs, all items listed in Article 94(1);
(c) for marks, all items listed in Article 97(1) and, for collective marks, also the regulations
referred to in Article 46.
(2) The application shall also contain:
(a) a power of attorney, if the application has been filed by a representative;
(b) the translation in the Slovene language of the application which has been filed in a foreign
language in accordance with Article 81(2);
(c) receipt for payment of the full amount of the filing fee.
(3) Executive regulations issued by the Minister competent for the field of industrial property
shall define, in greater detail, the contents of the application, and proceedings relating to the grant ofpatents and registration of industrial designs and marks.
Article 80
Form of the application and the means of filing
(1) The application for the acquisition of a right shall comply as to its contents and form with
provisions of this Act and the regulations issued pursuant to this Act. It shall be legible and
transmitted in a manner which enables a clear and proper reproduction of its contents.
(2) The application shall be filed in writing, either directly or by post, by facsimile machine or by
other electronic means of communication. An executive regulation issued by the Minister competent
for the field of industrial property shall define, in greater detail, the manner of filing applications by
other electronic means.
(3) Where an application, which has been transmitted by facsimile machine or by other electronic
means, is not legible or can not be clearly and properly reproduced, the Office shall invite the
applicant to submit, within three months follow ing the receipt of the invitation, a copy of thatIP/N/1/SVN/I/1
Page 28
application in writing. If the requested copy is not transmitted in due time, the application shall be
deemed to be withdrawn.
(4) When filing the application, or no later than three months after the date of receipt of the
invitation, the filing fee shall be paid. If the fee is not paid in full in due time, the application shall be
deemed to be withdrawn.
Article 81
Language of applications
(1) Applications shall be filed in the Slovene language, unless otherwise provided by this Act or
an international treaty which is binding on the Republic of Slovenia.
(2) Applications may be filed in a foreign language, provided that it includes at least the
indication of the right requested, and the indication allowing the applicant to be contacted by the
Office, in the Slovene language or in one of the of ficial languages of the EPC, the Madrid Agreement,
the Madrid Protocol or the Hague Agreement.
(3) If an application is filed in a foreign language, the applicant shall submit to the Office the
translation thereof in the Slovene language within three months following receipt of the invitation. If
the Office does not receive the translation in due  time, the application shall be deemed to be
withdrawn.
(4) The Office shall conduct the proceedings on the basis of the application in the Slovene
language.
Article 82
Date of filing
(1) Subject to Article 81(2), the Office shall accord the date of filing and number to any
application containing at least:
(a) a statement to the effect that the acquisition of a right is requested;
(b) indications allowing the identity of the applican t to be established or allowing the applicant to
be contacted by the Office;
(c) essential items of an application for the requested right referred to paragraph (2).
(2) Essential items referred to in paragraph (1)(c) are the following:
(a) for patents, a part of the application which on the face of it appears to be a description;
(b) for industrial designs, a photograph or graphical representation of the appearance of the whole
or a part of the product or, with two-dimens ional products, where deferment of publication
under Article 94(2) has been requested, a specimen of that product or its part;
(c) for marks, a representation of the sign and a list of the goods or services for which the
protection is sought and, for collective marks, also the regulations referred to in Article 46.
(3) Subject to Article 83, the date of filing of an application shall be the date on which the Office
has received all items referred to in paragraph (1), unless otherwise provided by this Act or by an
international treaty which is binding on the Republic of Slovenia. The Office shall issue a receipt to
the applicant to the effect that it received the application, indicating the date of filing and number of
the application.
(4) If the application does not contain all items referred to in paragraph (1) and can not be
accorded the date of filing and number, the Office shall, as soon as it receives the indication allowing
it to make contact with the applicant, notify the applicant accordingly and invite him to amend theIP/N/1/SVN/I/1
Page 29
application within three months from the receipt of the invitation, to fulfil at least the conditions laid
down in paragraph (1).
(5) If the application referred to in paragraph (4) is amended in due time so as to contain all items
referred to in paragraph (1), the Office shall accord to the application the date of filing and number.The date of filing of such application shall be the date when the Office received all of the items
referred to in paragraph (1), and shall issue a receipt to that effect to the applicant.
(6) If the application referred to in paragraph (4) is not amended in due time, or is not amended as
requested, it shall be deemed to be withdrawn, and the Office shall notify the applicant accordingly.
Article 83
Particularities concerning the filing date
(1) Where, in establishing the filing date, it appears that a part of the description is missing from
the application, or that the application refers to a drawing which appears to be missing from the
application, the Office shall promptly notify the applicant accordingly and invite him to amend theapplication within three months from the receipt of the invitation.
(2) Where a missing part of the description or a missing drawing is filed with the Office within
the time limit prescribed in paragraph (1), that part of the description or that drawing shall be included
in the application, and the date of filing shall be the date on which the Office has received that part ofthe description or that drawing, or the date on which it has received all of the items referred to in
Article 82(1), whichever is later.
(3) Where the applicant claims the priority under Article 61 in respect of an application from
which a part of the description or a drawing appears to be missing, the missing part of the descriptionor missing drawing shall be completely contained in the earlier application.
(4) Where the applicant claims the priority under Article 61, the essential items of the application
referred to in Article 82(2)(a) shall be deemed to have been filed, for the purposes of the date of filing,
if the applicant, when filing the application in the Republic of Slovenia, indicates the date, number
and State or Office of the previous application. In such case, the applicant shall submit the copy of the
previous application referred to in Article 61(3) wi thin three months from the receipt of the invitation,
unless the previous application was filed with the Office, or is available to the Office from a digital
library which is accepted by the Office for that purpose. If the applicant fails to submit the copy, the
right of priority shall be deemed not to have been requested.
Article 84
Invitation to submit all items
(1) Where an application to which the date of filing and number were accorded does not contain
all items referred to in Article 79, the Office shal l invite the applicant to amend the application within
three months from the receipt of the invitation, and to remedy deficiencies.
(2) If the application referred to in paragraph (1) is not amended in due time, or is not amended as
requested, it shall be deemed to be withdrawn, except in cases referred to in Articles 128(4) and
129(5).IP/N/1/SVN/I/1
Page 30
Article 85
Examination of an application as to formal requirements
(1) When an application contains all items referred to in Article 79, the Office shall examine
whether the items of the application or supplements or evidence, if any, are, as to their contents andform, drawn up as prescribed by this Act and the regulations issued pursuant to this Act.
(2) In the case of a patent application, the Office shall also examine whether the invention meets
the requirements of Article 87(2) and (4), and whether all fees have been paid, including any renewal
fees under Articles 109(4) or 110(4).
(3) If, in the case of a mark application, the Office establishes that the list of goods and services
contains a good or service which is not classified according to the international classificationestablished by the Nice Agreement Concerning the International Classification of Goods and Services
for the Purposes of the Registration of Marks of 15 June 1957, as revised on 14 July 1967 (Official
Gazette SFRJ-MP No 51/74, Official Gazette RS-MP No 9/92), hereinafter referred as “the Nice
Classification”, or is classified in the wrong class, the Office may, in the case of minor irregularities,
on its own motion, classify the good or service according to the Nice Classification, or correct theclassification, and inform the applicant accordingly. Where the Office groups or corrects more than
five classifications of goods or services according to the Nice Classification, it shall invite the
applicant to pay, within one month from the receipt of the invitation, the fee for classification. If the
applicant fails to pay the fee in due time, the application for the goods or services which the Office
classified according to the Nice Classification or co rrected the classification thereof, shall be deemed
to be withdrawn.
(4) If, in the case of a mark application, the Office establishes that a good or service in the list of
goods and services is indicated by a term that is too vague for the purposes of a correct classification
according to the Nice Classification, or if the Offi ce does not act according to paragraph (3), it shall
invite the applicant to remedy irre gularity within three months from the receipt of the invitation. If the
applicant fails to remedy the irregularity in due time, the application for the goods or services which
were not clearly indicated or correctly classified according to the Nice Classification shall be deemed
to be withdrawn.
(5) If any deficiencies are noted in the application or in supplements or evidence, the Office shall
invite the applicant to remedy deficiencies within  three months from the receipt of the invitation.
(6) If the applicant does not remedy all deficiencies in due time, the application shall be deemed
to be withdrawn, except in the cases referred to in  paragraphs (3) and (4), and in Articles 128(4) and
129(5).
(7) If the Office establishes that all the items of the application or supplements or evidence, if
any, comply, as to their contents and form, with the provisions of this Act and the regulations issuedpursuant to this Act, the proceedings shall continue:
(a) for patent applications, under Article 88 and subsequent articles;
(b) for industrial design applications, under Article 96;
(c) for mark applications, under Article 99 and subsequent articles.IP/N/1/SVN/I/1
Page 31
Section II
Special Provisions for Patents
Article 86
Requirements of a patent application
(1) A patent application shall contain:
(a) a request for the grant of a patent;
(b) a description of the invention;
(c) one or more claims;
(d) a short summary of the subject-matter of th e invention, hereinafter referred to as “the
abstract”;
(e) if necessary, one or more drawings of the invention.
(2) Not later than up to the issue of an order on the publication of the application, the applicant
may file a divisional application in respect of subject-matter which does not extend beyond thecontent of the earlier application. The divisional application shall be deemed to have been filed on the
date of filing of the earlier application and shall have the benefit of the same right to priority as the
earlier application.
(3) Short-term patents shall be requested when filing the patent application or within twelve
months from the date of filing. After the expiry of  this time limit, the request shall be irrevocable.
Article 87
Substance of requirements of a patent application
(1) The request for the grant of a patent shall contain data on the applicant (surname, forename
and address, or firm and seat), the title of the invention defining its subject-matter, and other data
relating to the application which are prescribed by an executive regulation.
(2) The description of the invention shall include the presentation of the problem, information on
the state of the art or of other solutions available by that time and their deficiencies which have been
known to the applicant, together with a descriptio n of the new solution to the problem. The invention
shall be described in a manner sufficiently clear and complete for it to be carried out by a person
skilled in the art to which the subject-matter of the invention relates.
(3) If an invention relates to biological material defined by an executive regulation, which is not
available to the public and can not be described in a manner to be carried out by a person skilled in theart to which the subject-matter of the invention relates, the description of the invention shall be
supplemented by a certificate of the deposit of biological material with an international depository
authority under Article 7 of the Budapest Treaty on the International Recognition of the Deposit of
Micro-organisms for the Purposes of Patent Procedure of 28 April 1997, and amended on
26 September 1980 (Official Gazette RS-MP No 21/97).
(4) The claims shall define the subject-matter for which protection is sought. They shall be clear
and concise and be supported by the description.
(5) The abstract shall merely serve for use as technical information; it may not be taken into
account for any other purpose, in particular not for the purpose of interpreting the scope of the
protection sought.IP/N/1/SVN/I/1
Page 32
(6) A patent application may relate to several inventions, provided that they are so linked as to
form a single inventive concept.
Article 88
Examination of requirements for the grant of a patent
(1) In the examination preceding the grant of a patent, the Office shall examine:
(a) whether, subject to Article 11, the subject-matter of the claimed invention is patentable;
(b) whether the claimed invention meets, at first sight, the requirements of Articles 12, 14 and 15.
(2) In the examination preceding the grant of a short-term patent, the Office shall examine:
(a) whether, subject to Article 11(1) and (2)(a), the subject-matter of the invention to which the
application relates may be protected by a short-term patent;
(b) whether the claimed invention meets, at first sight, the requirements of Articles 12, 15 and 16.
(3) If the Office establishes that the claims of the patent application meet all the requirements of
paragraph (1), or that the claims of the short-term patent application meet all the requirements of
paragraph (2), it shall decide to publish the application in the Official Journal.
(4) If the Office establishes that the claims of the patent application do not meet all the
requirements of paragraph (1), or that the claims of the short-term patent application do not meet all
the requirements of paragraph (2), it shall refuse the application.
(5) If the Office establishes that the claims of the patent application do not meet the requirements
of paragraphs (1) and (2) only in part, it sh all refuse the application only in that part.
Article 89
Publication of a patent application
(1) The Office shall publish a patent application after the expiry of a period of eighteen months
from the date of the filing or, if priority has been claimed, the date of priority.
(2) The applicant may request that the application be published before the expiry of the period
referred to in paragraph (1), but no earlier than after the expiry of three months from the date of the
filing or, if priority has been claimed, the date of priority.
(3) The Office shall publish a patent application together with the mention of the grant of the
patent.
Article 90
Grant of a patent
(1) The Office shall issue a decision on the grant of a patent and enter the patent in the register of
patents. The date of the publication of a patent application shall be deemed to be the date of the grant
of a patent.
(2) Until the issuance of a decision under Article 93, the scope of protection shall be determined
by the contents of claims as published.IP/N/1/SVN/I/1
Page 33
Article 91
Time limit for submission of a written evidence
(1) Owners of patents or exclusive rights from patents shall submit to the Office no later than the
expiry of the ninth year of the patent term written evidence that the patented invention satisfies all therequirements of Articles 10, 12, 14 and 15.
(2) Owners of patents or exclusive rights from patents shall pay, when submitting the evidence
under paragraph (1) or within three months from the receipt of the invitation, a fee for the declaratory
decision. If the fee is not paid in due time, the evidence shall be deemed not to have been submitted.
(3) If the owner of a patent or exclusive right from a patent fails to act in accordance with
paragraph (1), the patent shall lapse on the date of the expiry of the tenth year of the patent term.
(4) If the owner of a patent submits the evidence referred to in paragraph (1) with respect to an
action under Article 121, the Office shall issue one of the decisions referred to in Article 93 using an
expeditious procedure.
(5) The provisions of this Article shall not apply to short-term patents.
(6) In the case of a European patent, which is valid in the Republic of Slovenia on the basis of a
European patent application filed in accordance with Article 3(2), the provisions of this Article and of
Articles 92 and 93 are directly fulfilled as of the date on which the EPO publishes the mention of itsgranting.
Article 92
Forms of written evidence
(1) A Slovene translation of a European patent, or several European patents, granted for the same
invention by the EPO shall be considered evidence as referred to in Article 91.
(2) If no application for a European patent has been filed for the same invention, the Slovene
translation of a patent for the same invention, granted, following substantive examination, by another
authority which, under Article 32 of the PCT, enjoys the status of International Preliminary
Examining Authority, or by any other patent office with which a relevant treaty has been concluded,
may be submitted as evidence under Article 91.
(3) If the granting proceedings, which constitute the evidence under paragraph (1) or (2), have
not yet been finished, the applicant shall inform th e Office accordingly in the time limit prescribed in
Article 91(1). On the basis of that information, the Office shall interrupt the proceedings. The
proceedings shall continue if the applicant submits evidence under this Article within three months
after the grant of the patent. If the evidence under this Article is not submitted in due time, the patentshall lapse on the date of the expiry of the tenth year of the patent term.
(4) A Slovene translation of a patent which constitutes the evidence referred to in Article 91 shall
not confer protection which is broader than that conferred by it in the original text.
(5) Where the Office doubts the correctness of the translation, it may request that the owner of a
patent or exclusive right from a patent submits, within three months from the receipt of the invitation,
a certified text of the Slovene translation which constitutes the evidence from Article 91. If the
certified text of the Slovene translation is not filed in due time, the evidence is deemed not to have
been submitted.IP/N/1/SVN/I/1
Page 34
(6) When the evidence is submitted pursuant to pa ragraph (2), the owner of a patent or exclusive
right from the patent shall submit a list and copies of all other patents which could be considered as
evidence, including data on patent applications and patents which have been refused. If the list and
copies of the patents do not supplement the evidence, the evidence is deemed not to have been
submitted.
(7) If the Office establishes that the evidence under this Article is forged or is not true, it declares
the patent to be void.
(8) When the owner of a patent or exclusive right from a patent does not have an evidence
referred to in paragraph (1) or (2), he may request, against payment of a fee, that the Office obtains
relevant data or opinions to be used as the basis for the issuing of one of the decisions underArticle 93 from any of the authorities or offices listed in paragraph (2).
Article 93
Issuing declaratory decisions
(1) On the basis of the submitted evidence and other documents under Article 92, the Office shall
issue:
(a) a declaratory decision stating that the invention meets the requirements of Articles 10, 12, 14
and 15, and that the claims of a patent granted entirely meet those requirements; or
(b) a declaratory decision stating that the invention meets the requirements of Articles 10, 12, 14
and 15 only in part, and thereby correspondingly amending the claims of a patent granted; or
(c) a declaratory decision stating that the invention failed to meet the requirements of Articles 10,
12, 14 and 15 on the date of the filing of the application, and thereby declaring the patent to
be void.
(2) A decision under paragraph (1)(b) or (c) may not be issued by the Office if it has not
previously notified the owner of a patent of the intended amendments of claims or the nullity of a
patent, and if the owner of a patent has not been invited to comment, within three months from the
receipt of the invitation, on the decision, or amend the claims. If the owner of a patent comments on
the decision, or amends the claims in due time, the Office shall, before issuing the decision under
paragraph (1)(b) or (c), verify if the reasons for the issuance thereof still exist. If the owner of a patent
fails to comment on the decision in due time, it shall be deemed that he shares the opinion of theOffice.
(3) Patent claims which are amended pursuant a decision under paragraph (1)(b) shall not confer
protection which is broader than that conferred by  claims of a patent granted by a decision under
Article 90.
(4) Where the Office establishes, on the basis of the submitted evidence under Article 92, that the
patent granted does not meet the requirement of Arti cle 87(6), it shall divide the patent into several
patents preserving the date of filing of the initial application and, if priority is claimed, the date of
priority.IP/N/1/SVN/I/1
Page 35
Section III
Special Provisions for Industrial Designs
Article 94
Requirements of an industrial design application
(1) An application for an industrial design shall contain:
(a) a request for the registration of an industrial design;
(b) a photograph or graphical representation of the appearance of the whole or a part of the
product, or of the products in case of a multiple application, in the number of copies
prescribed by an executive regulation.
(2) The applicant may request, when filing the application, that the essential data of the
application shall not be published before the expiry of twelve months from the date of filing of the
application or, if a priority is claimed, the date of priority . The multiple application can not contain a
request for deferment of publication for only some products.
(3) Where the industrial design is two-dimensional, including a textile design or hologram, and a
request for deferment of publication is made in accordance with paragraph (2), the application may,
instead of containing a photograph or graphical representation of the appearance of the whole or a part
of the product, be accompanied by a specimen of that product or the part thereof. The photograph orgraphical representation of the product, in the number of copies prescribed by an executive regulation,
shall be submitted no later than two months before the expiry of the time limit for requested
deferment of publication under paragraph (2). In the opposite case, the application shall be deemed to
be withdrawn.
Article 95
Substance of requirements of an industrial design application
(1) The request for the registration of an industrial design shall contain data concerning the
applicant (surname, forename and address, or firm and seat), an indication of the product to which the
subject-matter of the application relates, a su ggestion for the classification according to the
international classification established by Locarno Agreement on International Classification forIndustrial Designs of 8 October 1968 (Official Gazette SFRJ-MP, No 51/74, Official Gazette RS-MP,
No 9/92), hereinafter referred as “the Locarno Classification”, and other data relating to the
application which are prescribed by an executive regulation.
(2) An industrial design application may cover several products, provided that they belong to a
single class of the Locarno Classification.
(3) The photograph or graphical representation of the appearance of the whole or a part of the
product shall clearly show the novelty and the indi vidual character of the appearance of the product
for which protection is sought.
Article 96
Examination of requirements for the registration of industrial designs
(1) The Office shall examine whether the design to which the application relates may be
protected by an industrial design, subject to provisions of Article 36, but excluding item (b).IP/N/1/SVN/I/1
Page 36
(2) Where the Office establishes that the design to which the application relates meets the
requirements of paragraph (1), it shall issue a decision on the registration of the industrial design,
enter the industrial design in the register and publish the mention of the registration.
(3) Where the Office establishes that the design to which the application relates does not meet the
requirements of paragraph (1), it shall refuse the application wholly or in part.
Section IV
Special Provisions for Marks
Article 97
Requirements of a mark application
(1) A mark application shall contain:
(a) a request for the registration of a mark;(b) a list of the goods or services for which the protection is sought;
(c) a representation of the sign, in the number of copies prescribed by an executive regulation.
(2) A collective mark application shall contain, besides items listed in paragraph (1), also the
regulations referred to in Article 46.
(3) A separate application shall be filed for each sign, however, the registration of the same mark
may be requested, in the same application, for several kinds of goods or services. The applicant may
also request, on the basis of several applications, the registration of several different or similar marks
for the same kind of goods or services.
(4) Any application listing goods or services belonging to two or more classes of the Nice
Classification may, during the registration procedure, including administrative litigation, be divided,
upon the request of the applicant, into several applications. Each application shall preserve the date of
filing of the initial application and, if priority is claimed, the date of priority.
Article 98
Substance of requirements of a mark application
(1) The request for the registration of a mark shall contain data concerning the applicant
(surname, forename and address, or firm and seat), where the sign is in colours, an indication of
colours, where the mark is a three-dimensional mark or a collective mark, a statement to that effect,and other data relating to the application which are prescribed by an executive regulation.
(2) Goods and services shall be classified in the list of goods or services in accordance with the
Nice Classification.
Article 99
Examination of absolute requirements for the refusal of a mark
(1) In the examination preceding the publication of a mark application, the Office shall examine
whether the sign to which the application relates may be registered as a mark, subject to provisions ofArticles 42 and 43. Where the application relates to  a collective mark, the Office shall also examine
whether the application meets the requirements of Articles 45 and 46.IP/N/1/SVN/I/1
Page 37
(2) Where the Office establishes that the sign to which the application relates meets the
requirements of paragraph (1), it shall publish the application.
(3) Where the Office establishes that the sign to which the application relates does not meet the
requirements of paragraph (1), it shall refuse the application wholly or in part.
Article 100
Opposing observations by third parties
(1) Following the publication of a mark application, any person may present to the Office
observations concerning the registration of a sign, subject to Articles 42 and 43, and shall state the
reasons.
(2) The person submitting such observations to the Office shall not be a party to the proceedings
before the Office.
(3) The Office shall communicate the observations by third parties referred to in paragraph (1) to
the applicant who may comment on them.
Article 101
Opposition against registration of a mark
(1) Within three months following the publication of a mark application, a written notice of
opposition to registration of the mark may be filed with the Office by the owner of an earlier mark.
(2) The notice of opposition may only be given on the grounds referred to in Article 44 and shall
contain supporting evidence.
(3) The opposition under paragraph (1) may also be filed by the owner of a mark which has been
registered in any Member State of the Paris Union or WTO and has been applied for in the Republic
of Slovenia by his agent or representative without the owner’s consent.
(4) Where the ground for opposition is Article 44(1)(f), a notice of opposition under this Article
may also be filed by an owner of the earlier right referred to in Article 44(1)(f).
(5) When filing the opposition, or no later than three months from the receipt of the invitation,
the opposition fee shall be paid, and a power of attorney shall be submitted, if the opposition has been
filed by a representative.
(6) If the opponent withdraws the opposition, the withdrawal may not be cancelled later on.
(7) If the opposition does not meet requirements under this Article, it shall be deemed not to have
been filed.
Article 102
Examination of the application following the opposition
(1) The Office shall notify the applicant for a mark of an opposition filed. The applicant may,
within three months from the receipt of the notification, comment on the opposition.
(2) On the basis of the opposition and any observations from the applicant for a mark, the Office
shall examine the grounds for the opposition.IP/N/1/SVN/I/1
Page 38
(3) Where the examination of the opposition reveals that the opposition is not grounded and that
the mark may be registered in respect of the goods or services for which the application has been
made, the Office shall refuse the opposition.
(4) Where the examination of the opposition reveals that the opposition is grounded and that the
mark may not be registered in respect of all or some of the goods or services for which the application
has been made, the Office shall refuse the application wholly or in part.
Article 103
Registration of marks
(1) Where no notice of opposition to registration of the mark has been filed or where opposition
has been refused or has been deemed not to have been filed, the Office shall invite the applicant to
pay, within three months from the receipt of the invitation, the registration fee which includes the
maintenance fee for the first ten years.
(2) Following the payment of the fee referred to in  paragraph (1), the Office shall issue a decision
on registration of the mark, enter the mark in the register and publish the mention of the registration.
(3) If the applicant fails to pay the fee referred to in paragraph (1) in due time, the application
shall be deemed to be withdrawn.
Section V
Special provisions for geographical indications
Article 104
Registration of geographical indications
(1) A request for the registration of a geographical indication may be filed by associations of
legal or natural persons, chambers, communes, larger local communities or State authorities.
(2) The request under paragraph (1) shall be accompanied by a specification including in
particular:(a) indication to be registered as a geographical indication;
(b) indication of the good to which that geographical indication relates;
(c) a description of the good including the raw materials and principal physical, chemical,
microbiological, organoleptic or other characteristics of the good;
(d) indication of location or region, including borders;(e) a description of the method of obtaining the good and, if necessary, the authentic and
unvarying local methods;
(f) details bearing out the link between the good and the location or region;
(g) details of inspection structures;
(h) labelling details.
(3) Where the request complies with the provisions of this Article and of Articles 55 and 56, the
Office shall issue a decision on the registration of the geographical indication, enter the geographical
indication in the register and publish the mention of the registration.
(4) Provisions of this Article shall not apply to geographical indications which have been
protected by virtue of Article 55(3).IP/N/1/SVN/I/1
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CHAPTER VIII
REGISTERS AND MAINTENANCE OF RIGHTS
Article 105
Registers
(1) The Office shall keep registers of patents, industrial designs, marks and geographical
indications, and registers of applications for the above-mentioned rights. Registers shall be open to
public inspection, unless otherwise provided by this Act.
(2) The date of the grant of a patent or the date of issuance of a decision on the registration of
industrial design, mark or geographical indication shall be considered as the date of entry in the
register.
(3) The Office shall deliver extracts from registers on request and against payment of a fee
prescribed by the Act regulating administrative fees.
(4) An executive regulation issued by the Minister competent for the field of industrial property
shall define, in greater detail, the contents of regist ers, the contents of requests for entry of alterations
in registers, the procedure for entry of such alteratio ns, the contents of extracts from registers and the
procedure for deliverance of such extracts.
Article 106
Contents of registers
(1) The register of patents shall contain primaril y the following entries: registration number, date
of filing and number of the application, requested right of priority, date of publication, date of entry in
the register, number and date of issuance of the declaratory decision under Article 93, data concerning
the owner (surname, forename and address, or firm and seat), type of the patent, data concerning theinventor (surname, forename and address), title of the invention, data concerning the maintenance of
the patent, date of lapse of the patent.
(2) The register of industrial designs shall contain primarily the following entries: registration
number, date of filing of the application, requested right of priority, date of publication, date of entryin the register, data concerning the owner (surname, forename and address, or firm and seat), data
concerning the designer (surname, forename and address), if the designer so wishes, indication of the
product, number of products, classification code according to the Locarno Classification, data
concerning the renewal of the industrial design, date of lapse of the industrial design.
(3) The register of marks shall contain primarily the following entries: registration number, date
of filing of the application, requested right of priority, date of publication of the application and the
registration, data on opposing observations by third parties, data concerning any opposition andopponent, date of entry in the register, data concerning the owner or holder (surname, forename and
address, or firm and seat), appearance of the mark, list of goods or services and classification code
according to the Nice Agreement, data concerning the international registration, data concerning
renewal of the mark, data concerning the cancellation of the mark, date of lapse of the mark.
(4) The register of geographical indications shall contain primarily the following entries:
registration number, date of filing of the request, date of publication, date of entry in the register,
geographical indication, the kind of the good and the location to which the indication relates.IP/N/1/SVN/I/1
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(5) Information on litigations of which the Office has been notified and final judgements shall be
entered ex officio  in the registers referred to in Article 105(1).
(6) Provisions of this Article shall apply mutatis mutandis  to registers of applications.
Article 107
Entry of alterations in the registers
(1) Upon request, all subsequent alterations rega rding a right or the owner of a right shall be
entered in the register referred to in Article 105 (1). The provisions of this paragraph shall apply
mutatis mutandis to applications and applicants.
(2) Transfers of rights or licences shall be entered in the corresponding register at the request of
one of the parties to the contract.
(3) The person who has been entered in the register  as the owner of a right prior to the alteration
may, by submitting relevant evidence, contest any alteration which has been unduly entered withouthis consent, instituting an action in the administrative litigation filed with the Administrative Court of
the Republic of Slovenia in Ljubljana, which has exclusive territorial jurisdiction.
Article 108
Procedure for entry of alterations
(1) A single request may relate to more than one alteration in the register. A single request shall
also be sufficient where the alteration or alterations relate to more than one application and/or right of
the same person, provided that the alteration or alterations are the same for all applications and rights
concerned, and the numbers of all applications and rights concerned are indicated in the request.
(2) When filing the request or within three months from the receipt of the invitation, a fee for the
entry of each alteration in the register for each applic ation or right shall be paid. If the fee is not paid
in due time, the request shall be deemed to be withdrawn.
(3) Where the request for the alteration is filed by the person who has been entered in the register
as the owner of a right, the Office shall immediately issue a decision on the entry of alteration andenter such alteration in the register.
(4) Where the request for the alteration is filed by the person who has not been entered in the
register as the owner of a right, that person sha ll submit, when filing the request or within three
months from the receipt of the invitation, the consen t of the owner of the right for the entry of the
requested alteration in the register or, of his own choosing, other documents evidencing the legal basis
for the entry of the alteration. Where the Office doubts the veracity of any indication contained in the
request for the alteration or if the submitted documents are in a foreign language, it may require that,
within three months from the receipt of the inv itation, additional documents or a Slovene translation
of the submitted documents be furnished.
(5) If the requesting party fails to submit additional documents or their translation requested
under paragraph (4) in due time, the request for entry of alterations shall be deemed to be withdrawn.
(6) The Office shall decide on the entry of an alteration by a decision.IP/N/1/SVN/I/1
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Article 109
Renewal fees
(1) The renewal of rights shall be subject to the payment of fees which shall be due, calculated
from the date of filing of the application:(a) in respect of patents, each year for one subsequent year;
(b) in respect of industrial designs, each five years for subsequent five years;
(c) in respect of marks, each ten years for subsequent ten years.
(2) The fees under paragraph (1) shall be paid within twelve months preceding the due date.(3) The application fee for patents includes the renewal fee for the first three years. The
application fee for industrial designs includes the renewal fee for the first five years.
(4) Where the procedure for the grant of a patent lasts more than three years from the date of the
filing of the application, or the procedure for the registration of an industrial design more than five
years from such date, the provisions of paragraphs (1) and (2) shall apply mutatis mutandis to patent
and industrial design applications.
Article 110
Payment of renewal fees in a subsequent time limit
(1) Where a renewal fee has not been paid in accordance with Article 109 on or before the due
date, it may still be paid within six months following the due date, provided that the additional fee,
amounting to 50 % of the fee which has not been paid in due time, is paid.
(2) The Office shall remind the owner of a right of the failure of due payment of the renewal fee
under Article 109(1), of the possibility of payment under paragraph (1) of this Article, and of theconsequences of non-payment.
(3) The non-payment of renewal fees in due time or, following the reminder of the Office, within
the subsequent time limit referred to in paragraph (1), together with the additional fee, shall entail
lapse of the right on the day following the due date referred to in Article 109(1).
(4) Paragraphs(1) and (2) shall apply mutatis mutandis  in the cases referred to in Article 109(4).
If in such cases the renewal fee and the additional fee have not been paid in the subsequent time limit,
the application shall be deemed to be withdrawn.IP/N/1/SVN/I/1
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CHAPTER IX
JUDICIAL PROTECTION AND ENFORCEMENT OF RIGHTS
Section I
Judicial Protection
Subsection I
Nullity of Rights
Article 111
Actions for a declaration of nullity
Any interested party may bring an action in the court of competent jurisdiction to declare
nullity of a patent, short-term patent, industrial design or mark.
Article 112
Actions for a declaration of nullity of a patent
(1) Actions to declare nullity of a patent may be filed on one or more of the following grounds:
(a) on the date of the filing of the application the invention did not meet all requirements under
Articles 10, 11, 12, 14 and 15 or, in the case of a short-term patent, requirements under
Article 16;
(b) the invention does not disclose the invention in a manner sufficiently clear and complete for it
to be carried out by a person skilled in the art to which the invention relates;
(c) the content of the protection extends beyond the content of the first received application or, if
the patent was granted on a divisional application, beyond the content of the initial
application.
(2) Actions to declare nullity of a patent may also be filed in instances where a declaratory
decision under Article 93(1)(a) or (b) has already been issued, or where the patent has lapsed.
(3) Where an action to declare nullity of a European patent valid in the Republic of Slovenia
pursuant to an international treaty, and which has been the subject of an opposition at the EPO, hasbeen filed during the opposition procedure at the EP O, the court shall interrupt the proceedings until
the decision of the EPO on the opposition has become final.
Article 113
Actions for a declaration of nullity of an industrial design
Actions to declare nullity of an industrial design may be filed, subject to the date of the filing
of the application, on one of the following grounds:
(a) the industrial design has been registered contrary to Article 36;
(b) the applicant for or the owner of the industria l design has not been entitled to an industrial
design protection.
Article 114
Actions for a declaration of nullity of a mark
(1) Actions to declare nullity of a mark may be filed where the mark has been registered, subject
to the date of the filing of the application, contrary to Article 42 or 43.IP/N/1/SVN/I/1
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(2) Actions to declare nullity of a collective mark may be filed where the collective mark has
been registered, subject to the date of filing of the application, contrary to Article 42, 43, 45 or 46.
(3) Where the ground for the action under paragraph (2) is a collective mark which has been
registered contrary to Article 46, the court shall reject the action if the holder of the collective mark,
prior to the issuance of the court’s decision, amends the regulations referred to in Article 46.
Subsection II
Contesting of Rights
Article 115
Contesting the right to a patent or industrial design
(1) An inventor, his heir or other successor in title may, at any time during the validity of a
patent, file an action with a court of competent jurisdiction, requesting that he be declared owner of
the patent, if the patent has been granted in the name of a person who is not the inventor, his heir or
other successor in title.
(2) The designer, his heir or other successor in title may, at any time during the validity of an
industrial design, file an action with a court of competent jurisdiction requesting that he be declared
owner of the right, if the industrial design was re gistered in the name of a person who is not the
designer, his heir or other successor in title.
(3) The action referred in paragraphs (1) or (2) may also be filed by a person who is entitled to
the rights conferred by a patent or industrial design if the patent was granted or industrial design was
registered in the name of the inventor or designer or a third person, which the inventor or the designer
unjustifiably authorised that the patent be granted or industrial design be registered in his name.
Article 116
Contesting the right to a mark
(1) Legal or natural persons may file an action with a court of competent jurisdiction requesting
the court to decide that a sign which they use in trade for marking their goods or services is identical
or similar to a mark used by a third person in marking his goods or services of the same or similar
kind and that the sign was generally known as the sign for designation of the goods or services of the
legal or natural person before the defendant filed his mark application, and requesting the court toissue a decision declaring the plaintiff to be the owner of the mark.
(2) The court shall rule against the request referred to paragraph (1) if the defendant owner of the
mark proves that he had used the contested sign for the same or similar goods or services for as long
as or longer than the plaintiff before filing his application.
(3) The action referred to in paragraph (1) may not be filed after the expiry of five-year period
following the date of entry of the mark in the register.IP/N/1/SVN/I/1
Page 44
Article 117
Entry in the register of the new owner
(1) Within three months from the receipt of a final judgement that rules favourably on the actions
referred to in Articles 115 or 116, the plaintiff may request to be entered in the register as the ownerof the patent, industrial design or mark and to be issued a certificate to that effect.
(2) If the successful plaintiff does not submit a request to be entered in the register as the owner
of the right within the time limit laid do wn in paragraph (1), the right shall be ex officio  removed from
the register.
(3) Any rights a third person has acquired from the person who has been entered in the register as
the owner of the right before the judgement referred  to in paragraph (1) shall be binding on the new
owner if entered in the corresponding register or if correctly applied for the entry before the action
was filed.
Subsection III
Right of the Inventor or Designer to be Named
Article 118
Actions for recognition of the right to be named
(1) An inventor or designer may file an action with a court of competent jurisdiction requesting:
(a) that he be named in the application and in all documents;
(b) that a final judgement be published at the defendant’s expense.
(2) The action referred in paragraph (1) may be filed at any time during the validity of the patent
or industrial design.
Subsection IV
Removal and Cancellation of Marks
Article 119
Actions removal of marks from the register
(1) Actions to remove marks from the register and to prohibit the use of signs may be filed with
the court of competent jurisdiction on one of the following grounds:
(a) the applicant was acting in bad faith when filing the application;
(b) the mark has been registered, subject to the date of the filing of the application, contrary to
Article 44, except in the cases referred to in Article 139;
(c) in consequence of acts or inactivity of the owner, the mark has become the common name in
the trade for goods or services in respect of which it is registered;
(d) in consequence of the use made of it by the ow ner of the mark or with his consent in respect
of the goods or services for which it is registered, the mark is liable to mislead the public,
particularly as to the nature, quality or geographical origin of those goods or services.
(2) Save the grounds referred to in paragraph (1 ), actions to remove collective marks from the
register and to prohibit the use of signs may be filed on one or more of the following grounds:
(a) the holder of the collective mark ceased to exist;
(b) the collective mark is used contrary to the regulations under Article 46;IP/N/1/SVN/I/1
Page 45
(c) the regulations governing use of the collectiv e mark have been amended in such a manner as
to contradict Article 46.
(3) Where the ground for an action under paragraph (1) or (2) is Article 44(1) (c), (d) or (e), the
plaintiff may, instead of the removal of the mark from the register, requests the transfer thereof on hisname.
(4) In the case provided for in paragraph (2)(c), Article 114(3) shall apply mutatis mutandis .
(5) The action under paragraph (1)(b) shall not been admissible after the expiry of five-year
period following the entry of a right in the register , unless the applicant was acting in bad faith when
filing the mark application.
(6) The mark shall be removed from the register as of the date on which the judgement on the
removal has become final.
Article 120
Actions for cancellation of marks on account of non-use
(1) Any interested party may file an action with a court of competent jurisdiction requesting
cancellation of a mark if, within a continuous period of five years from the date on which the entry of
the right in the register has become final, or the day on which the mark has been seriously andeffectively used in the Republic of Slovenia for th e last time, the owner without proper reasons fails to
use the mark in connection with the goods or services in respect of which it is registered.
(2) Cancellation of a mark may not be requested where, during the interval between the expiry of
the five-year period referred to in paragraph (1) and filing of the action for cancellation, the owner hasstarted or resumed to seriously and effectively use the mark. The commencement or resumption of use
within a period of three months preceding the filing of the action which began at the earliest on expiry
of the time limit referred to in paragraph (1) shall,  however, be disregarded where preparations for the
commencement or resumption occur only after the owner becomes aware that the action for
cancellation of his mark may be filed.
(3) The owner of the mark shall prove the use of the mark in the cancellation procedure.(4) Use of the mark with the consent of the owne r or by any person who has authority to use it
shall be deemed to constitute use by the owner.
(5) A collective mark shall be deemed to be used by the holder where it is used by at least one
person who has authority to use it.
(6) The following shall also constitute use of the mark:
(a) use of the mark in a form differing in elements which do not alter the distinctive character of
the mark in the form in which it was registered;
(b) affixing of the mark to goods or to the packaging thereof in the Republic of Slovenia solely
for export purposes.
(7) The Office shall cancel the mark as of the day on which the judgement on cancellation has
become final for those goods or services for which it is established that the mark has not been used inthe territory of the Republic of Slovenia.IP/N/1/SVN/I/1
Page 46
Section II
Enforcement of Rights
Article 121
Actions for infringement of rights
(1) Against a person who encroaches a right listed in Articles 18, 37, 47 or 58 without the
owner’s consent, the owner of the right may file an action with a court of competent jurisdiction
requesting:
(a) that the infringer be enjoined from future infringing acts;
(b) that the infringer removes the objects of the infringement from the channels of commerce, or
destroy them where there is no other way to cease the infringement;
(c) that the infringer removes the means of the infr ingement that are used or intended exclusively
or almost exclusively for the creation of the infringing goods, or destroy them where there is
no other way to cease the infringement;
(d) that the final judgement be published in public media at the infringer’s expense, to the extent
and in the manner determined by the court.
(2) The infringer shall be liable for any da mages in accordance with general regulations
governing compensation for damages, unless otherwise provided by this Act.
(3) An action for infringement of rights may be filed within three years from the date on which
the plaintiff learned of the infringement and the infr inger. Monetary claims shall only be enforced for
infringing acts which have taken place during the five years preceding the date on which the action
was filed.
(4) The owner of an exclusive licence, person entitled to use a collective mark and person entitled
to use a geographical indication shall be deemed to be mutatis mutandis  the owner of the right
referred to in paragraph (1).
Article 122
Additional provisions governing in fringement of patent rights
(1) In the case of infringement of a patent conferring protection on a process for obtaining a new
substance, such substance shall be deemed, in the absence of proof to the contrary, to be of an
identical composition or identical and made under the protected process. The burden of proof shall be
borne by the defendant or alleged infringer whose legitimate interests in protecting his business
secrets shall be taken into account.
(2) Where the action under Article 121 refers to infringement of patent rights or a published
European patent application requesting protection in the Republic of Slovenia, the court shall interrupt
proceedings until the Office issues a declaratory decision under Article 93(1)(a) or (b), or until the
European patent is entered in the Office’s patent register.
(3) In the case of infringement of a patent in respect of which a declaratory decision under
Article 93(1)(a) or (b) has not yet been issued, the court shall, for the use of invention during the
interval between the granting of the patent and the issuance of the declaratory decision, impose on the
infringer the payment of compensation reduced  with respect to the given circumstances.
(4) Paragraph (3) shall apply mutatis mutandis  to a published patent application filed abroad
under Article 3(2), for the use of invention during the interval between the publication of the
application and the granting of the patent or, where the European patent has been entered in theIP/N/1/SVN/I/1
Page 47
Office’s register, the date on which the EPO published its decision on the grant of the European
patent.
Article 123
Provisional measures
(1) The court shall adopt provisional measures if the following conditions are fulfilled:
(a) the person requesting a provisional measure is owner of the right under Article 18, 37, 47 or
58;
(b) the owner of the right submits evidence enabling the court to establish that his right is being
infringed or that such infringement is highly probable, and that he is likely to suffer an
irreparable damage;
(c) a provisional measure, which may prove unfounded in the course of the proceedings, does not
have more detrimental consequences for the opposing party that would have the non-adoption
of such measure for the person requesting it;
(d) the owner of the right requests the adoption of a provisional measure within three months
after he has learned of the alleged infringement.
(2) By adopting provisional measures the court may, in particular:
(a) interdict imminent infringements or infringements already commenced;
(b) prevent the entry of goods into the channels of commerce;
(c) seize, exclude from circulation and take into custody, for the duration of the civil procedure,
the objects of infringement and the means mainly used for the production of the object
infringing a right under this Act.
(3) The court may adopt provisional measures inaudita altera parte , in particular where any
delay is likely to cause irreparable damage to the owner of the right. The opposing party shall be
given notice on the adopted measure without delay after the execution of the measures at the latest.
(4) Unless otherwise provided by an international treaty which is binding on the Republic of
Slovenia, the court shall order, upon the request of the opposing party, that the person requesting a
provisional measure provide a security for possible damages caused to the opposing party, if that
party shows probable grounds for belief that the person requesting a provisional measure has not
enough property in the Republic of Slovenia to cover possible damages. If the person requesting aprovisional measure does not act according to the court’s decision and does not provide a security, the
request for a provisional measure is deemed to be withdrawn.
(5) Upon the adoption of a provisional measure, the court shall prescribe a time limit in which the
person requesting a provisional measure is to file an action under Article 121. The time limit shall
start on the date on which the provisional measure is served on the person requesting it, and shall notexceed 31 days.
(6) The provisions of the Act regulating execution of judgements and insurance of claims shall
apply to the proceedings for the adoption of provis ional measures, unless otherwise provided by this
Act. Proceedings shall be expeditious.IP/N/1/SVN/I/1
Page 48
Article 124
Preservation of evidence
(1) Upon the request of a party who shows probable grounds for belief that his right under
Article 18, 37, 47 or 58 is being infringed, and that there is a demonstrable risk that evidence of suchinfringement will be destroyed or that it will be im possible to obtain such evidence at a later time, the
court may take such evidence without prior notification or inaudita altera parte .
(2) The order on the grant of the request for preservation of evidence, and the request, shall be
served on the opposing party at the time when the actual taking of evidence begins or, when this is
impossible, as soon as it is possible. There shall be no appeal against such order.
(3) The provisions of the Act regulating civil pr ocedure shall apply to the proceedings for the
preservation of evidence, unless otherwise provided by this Act. Proceedings shall be expeditious.
CHAPTER X
COMPULSORY LICENCES
Article 125
Compulsory licences
(1) The court may decide that a third party or the Government of the Republic of Slovenia exploit
the invention without the authorisation of the owner of the patent:(a) where the public interest concerning, in particular, national security, nutrition, health or the
development of other vital sectors of the national economy so requires;  or
(b) where the court has determined that the owner of the patent or his licensee abuses the patent
rights, in particular where the manner of exploitation, contrary to the adopted regulations,
restrains competition.
(2) The court shall grant compulsory licences under paragraph (1) with regard to given
circumstances and after hearing the owner of the patent.
(3) Compulsory licences under paragraph (1) shall be granted provided that the person filing the
request proves that he has made efforts to conclude  a licence contract with the owner of the patent on
reasonable commercial terms and that such efforts failed to succeed within a reasonable period of
time.
(4) Paragraph (3) shall not apply if a state of war or similar state of emergency has been declared.
Nevertheless, the owner of the patent shall be notified of the decision of the court as soon as
reasonably practicable.
Article 126
Conditions for granting compulsory licences
(1) Compulsory licences under Article 125 shall be granted under the following conditions:
(a) scope and duration shall be limited with regard to their purpose;
(b) they shall be non-exclusive;
(c) they shall be non-transferable, with the exception of the part of the enterprise or business of
the licence owner to which the licence refers;
(d) they shall be granted primarily for the supply of the market of the Republic of Slovenia.IP/N/1/SVN/I/1
Page 49
(2) Where a patent, hereinafter referred to as “the second patent”, cannot be exploited without
infringing another patent, hereinafter referred to as “the first patent”, the following conditions, in
addition to those of Article 125 and paragraph (1) above, for the grant of compulsory licence in
respect of the first patent shall be met:(a) the invention claimed in the second patent shall involve a technical advance of considerable
economic significance compared to the invention claimed in the first patent;
(b) the owner of the first patent shall under reas onable conditions be entitled to a cross-licence to
use the invention claimed in the second patent;
(c) the use authorised in respect of the first patent shall not be transferable except with the
simultaneous transfer of the second patent.
(3) The court shall decide that a compulsory licence expire if the circumstances which led to it
being granted have ceased to exist and are unlikely to recur.
Article 127
Remuneration for compulsory licences
(1) Owners of patents under a compulsory licence shall be entitled to remuneration.
(2) The amount of the remuneration shall be determined with regard to the circumstances of each
case and taking into account the economic value of the compulsory licence.
CHAPTER XI
REPRESENTATION
Article 128
Representation before the Office
(1) Only representatives whose names have been entered in the corresponding register of
representatives maintained by the Office shall be authorised to act before the Office. The
representative shall be appointed in a power of attorney which shall be in writing.
(2) The party making the appointment may appoint one or several representatives for all or only
for certain acts in the proceedings before the Office. If several representatives are appointed and the
party does not name one to whom the Office should address notifications, they shall be addressed to
the representative who is named first.
(3) The party making the appointment may, in a general power of attorney, authorise a
representative for acts in respect of all applications, rights and requests filed with the Office. If the
general power of attorney has been deposited with the Office, its reference number shall be indicated,
and its copy attached, when filing any request with the Office.
(4) The power of attorney shall be submitted when filing the request or within three months from
the receipt of the invitation. If the power of attorney  is not submitted in due time, the representative is
deemed not to have been appointed and his acts not to have been carried out. The request filed by the
alleged representative shall be rejected by an order of the Office. The order on rejection shall be
served on the alleged representative.IP/N/1/SVN/I/1
Page 50
Article 129
Representation of foreign persons
(1) Foreign natural and legal persons having neither residence nor real and effective industrial or
commercial establishment in the Republic of Slovenia, hereinafter referred to as “foreign persons”,shall assert their rights under this Act in proceedings before the Office through a representative,
unless otherwise provided by an international treaty which is binding on the Republic of Slovenia.
(2) Notwithstanding paragraph (1) and subject to paragraph (3), a foreign person may file
applications, perform acts relating to the establishment of the filing date, pay fees in the proceedings
before the Office, file copies of first applications when claiming the right of priority under Article 61,
and receive notifications by the Office relating to those proceedings, without a representative.
(3) If a foreign person, in cases referred to in paragraph (2), does not have a representative in the
proceedings before the Office, he shall communicate to the Office an address for correspondence
which shall be in the territory of the Republic of Slovenia. Any notification referred to in
paragraph (2) which the Office sends to the address for correspondence shall be deemed to be a
sufficient notification.
(4) Notwithstanding paragraph (1), a renewal fee may be paid by any person.
(5) If a foreign person, contrary to this Arti cle, does not appoint a representative in the
proceedings before the Office, or does not communicate an address for correspondence which is in the
territory of the Republic of Slovenia, the Office shall exceptionally invite him directly by post toappoint, within three months from the receipt of the invitation, a representative and submit a power of
attorney or, in accordance with paragraph (3), communicate an address for correspondence. If a
foreign person does not appoint a representative and does not submit a power of attorney or, in
accordance with paragraph (3), communicate an address for correspondence in due time, the Office
shall reject any request by order, unless otherwise provided by this Act. The order shall be announcedon the notice board of the Office.
Article 130
Revocation and renunciation of a power of attorney
(1) The party making the appointment may, at any time, revoke the power of attorney, and the
representative may, at any time, renounce his appointment.
(2) The revocation or renunciation shall be communicated to the Office and shall be effective as
from the date of receipt by the Office. If the repr esentative has renounced his appointment, he shall
continue, for three months, to perform acts for the party who has appointed him, unless the party has
another representative.
(3) If due to the revocation or renunciation a foreign person remains without a representative,
Article 129(5) shall apply mutatis mutandis .
Article 131
Representatives
(1) Parties may be represented in proceedings before the Office by patent agents and by industrial
design and mark agents. Patent agents shall represent parties to proceedings relating to the acquisition
and maintenance of any right under this Act and other requests concerning such rights. Industrial
design and mark agents shall only represent parties to proceedings relating to the acquisition andIP/N/1/SVN/I/1
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maintenance of industrial designs, marks and geographical indications and other requests concerning
those rights.
(2) Patent agents may be:
(a) persons, resident in the Republic of Slovenia, who have completed university studies in
technology or science and have passed the qual ifying examination for a patent agent at the
Office;
(b) lawyers or law firms, employing on a regular or contractual basis a person who fulfils the
conditions laid down in sub-paragraph (a);
(c) legal persons, having their seat in the Republic of Slovenia, employing at least one person
who fulfils the conditions laid down in sub-paragraph (a).
(3) Industrial design and mark agents may be:
(a) persons, resident in the Republic of Slovenia, who have completed university studies and
have passed the qualifying examination for industrial design and mark agents at the Office;
(b) lawyers or law firms;
(c) legal persons, having their seat in the Republic of Slovenia, who employ at least one person
who fulfils the conditions laid down in sub-paragraph (a).
(4) Parties to proceedings relating to rights under this Act may be represented by patent agents
and industrial design and mark agents also before courts and other State authorities, provided that they
fulfil the conditions laid down in regulations governing representation before courts and other State
authorities, and by an authorised person employed by such agents, provided that he is a national of theRepublic of Slovenia, that he has graduated in law at the university in the Republic of Slovenia or has
acquired a foreign law degree recognized by the Republic of Slovenia, that he has passed the lawyer’s
state examination, that he a professional experience of at least five years and a good command of the
Slovene language. In such cases, the agent is entitled to be paid for his work in the amount fixed by
the agent’s price list, and to have his costs refunded by the opposing party. The agent’s price list shallbe adopted by agent or association of agents with the consent of the Minister competent for justice.
Article 132
Entry of agents in the register
(1) The Office shall keep the register of patent agents and the register of industrial design and
mark agents.
(2) A fee prescribed by the Act regulating administrative fees shall be paid for entry in the
register. Following the payment of the fee, the Office shall issue the decision on the entry.
(3) A patent agent may request that he be removed from the register of patent agents and entered
in the register of industrial design and mark agents. An industrial design and mark agent may request
that he be removed from the register of industrial design and mark agents and entered in the register
of patent agents only if he fulfils the requirements of Article 131(2).
(4) Agents shall be removed from the register if:
(a) they file a request for removal;
(b) they are barred by a final judgement from acting as representatives.
(5) The following data in particular shall be entered in the register: registration number of the
representative, data on the representative (surname, forename and address, or firm and seat), date ofentry in the register and data on persons who fulfil the conditions under Article 131(2)(a) or (3)(a) and
are employed by the agent on a regular or contractual basis (surname, forename, address and
education).IP/N/1/SVN/I/1
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(6) An executive regulation issued by the Minister competent for the field of industrial property
shall define, in greater detail, the contents of the requests for entry in the register of agents,
proceedings relating to such entries, data to be entered in the register and proceedings relating to
entries of alterations.
Article 133
Qualifying examinations
(1) The Office shall conduct qualifying examinations under Article 131(2) and (3). A fee
prescribed by the Act regulating administrative fees shall be paid before the examination.
(2) The Office shall keep a list of persons who have passed the qualifying examination.(3) An executive regulation issued by the Minister competent for the field of industrial property
shall define, in greater detail, the manner of conducting qualifying examinations under Article 131(2)
and (3).
CHAPTER XII
PENAL PROVISIONS
Article 134
Offences
(1) By a fine of SIT 100,000 to 10,000,000 shall be punishable for an offence any legal person
who:
(a) uses, in the course of trade, the signs referred to in Article 43(3) without the consent of the
Government of the Republic of Slovenia;
(b) submits to the Office a false or untrue evidence referred to in Article 92, or request an
interruption of the proceeding referred to in Article 92(3) by a false or untrue communication;
(c) represents a third person in the proceedings before the Office without being entered in the
register referred to in Article 132.
(2) By a fine of SIT 10,000 to 500,000 shall be punishable the person responsible within the legal
person for any offence referred to in paragraph (1).
(3) By a fine of not more than SIT 150,000 shall be punishable natural persons for any offence
referred to in paragraph (1).
CHAPTER XIII
TRANSITIONAL AND FINAL PROVISIONS
Article 135
The use of substances as medicine
(1) The use of substances as medicine for humans and animals shall not be deemed to constitute
infringement of a patent for invention of such substances if the corresponding patent application was
filed on or before 31 December 1992, or if a right of priority was claimed for the application on or
before 31 December 1992.IP/N/1/SVN/I/1
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(2) By the use of substance as a medicine with in the meaning of paragraph (1) is meant its
production and processing into the medicine under a process which is not the subject-matter of a
relevant patent protection, and marketing of this substance or medicine.
(3) Following the accession of the Republic of Slovenia to the European Union, Article 21(2)
shall apply to substance or medicine referred to in  paragraph (1) only if the consent of the owner of
the patent under which such substance or medicine is protected has been obtained.
Article 136
Treatment of applications and validity of rights
(1) Procedures concerning the registration and grant of industrial property rights with respect to
applications filed before the date of entry into force of this Act enters shall be carried out in
accordance with the provisions of this Act, unless otherwise provided by this Act.
(2) The industrial property rights which are valid on the date of entry into force of this Act shall
continue to be valid according to the provisions of this Act, unless otherwise provided by this Act.
Article 137
Patent applications and patents
(1) The provisions of Articles 10, 77, 78 and 112 of the Law on Industrial Property (Official
Gazette RS No 13/92, 27/93, 34/97 - Decision by Cons titutional Court, 75/97) shall continue to apply
to patents applied for or granted prior to entry into force of this Act.
(2) The provisions of Article 22(2) and (3) of this Act shall apply to patents applied for after
1 January 1993.
(3) From the date of accession of the Republic of Slovenia to the European Union, Article 22(3)
of this Act shall apply in accordance with the regulations of the European Union.
(4) Within six months following the accession of the Republic of Slovenia to the European
Union, a supplementary protection certificate may be requested for patents applied for after 1 January
1993, and for which the time limit referred to in Article 7 of the EU Regulation No 1768/92 of18 June 1992, or Article 7 of the EU Regulation No 1610/96 of 23 June 1996, expired.
(5) The provisions of Articles 24 to 31 of this Act shall begin to apply on entry into force of the
EPC for the Republic of Slovenia.
(6) The provision of Article 32(6) of this Act shall not apply to applications under the PCT which
have been filed prior to entry into force of this Act.
Article 138
Industrial design applications and industrial designs
(1) Article 58 of the Law on Industrial Property shall continue to apply to industrial designs
published prior to entry into force of this Act, and for which opposition against the issuance of the
decision on the registration has been filed.
(2) Where an industrial design application has been published prior to entry into force of this Act,
and opposition against the issuance of the decision on the registration under Article 58 of the Law onIP/N/1/SVN/I/1
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Industrial Property has not been filed, the Office shall issue the decision on the registration of the
industrial design, enter it in the register and publish the mention of the registration.
(3) Industrial designs valid on the date of entry into force of this Act shall be dealt with in
accordance with the provisions of this Act.
Article 139
Opposition on the basis of a mark applied for or  registered with the Office for Harmonisation in
the Internal Market (trade marks and designs)
(1) Prior to the accession of the Republic of Slovenia to the European Union, a mark which was
applied for or registered with the Office for Harmonisation in the Internal Market (trade marks and
designs) before the date of application for or registration of the later mark in the Republic of Sloveniashall also be deemed to be an earlier mark under Article 44(1).
(2) The owner of the earlier mark referred to in paragraph (1) may file an opposition under
Article 101, provided that he files, within the time limit provided for the opposition, a correct
application for his mark in the Republic of Slovenia.
(3) If the owner of the earlier mark referred to in paragraph (1), when filing an opposition under
Article 101, does not file in due time also a correct application for his mark in the Republic of
Slovenia, the opposition shall be deemed not to have been filed.
Article 140
Appellations of origin
Appellations of origin valid on the date of entry into force of this Act shall be dealt with as
geographical indications under this Act, unless otherwise provided for by another act.
Article 141
Qualifying examinations and agents
(1) Qualifying examinations passed or recognised up to the date of entry into force of this Act
shall be treated as qualifying examinations for patent agents and qualifying examinations for
industrial design and mark agents.
(2) The Office shall ex officio  enter in the register of patent agents all representatives who have
been entered in the register of representatives by the date of entry into force of this Act.
Article 142
Executive regulations
(1) Executive regulations under this Act and order on the tariff referred to in Article 7(3) shall be
issued within six months following the entry into force of this Act, with the exception of the
regulation referred to in Article 80(2) which shall be issued after the Office will have had thenecessary technical facilities.
(2) Prior to the issuance of new regulations, the following regulations issued under the Law on
Industrial Property shall apply mutatis mutandis :
(a) Regulations governing grant of patents (Official Gazette RS No 49/93);(b) Regulations governing registration of industrial designs (Official Gazette RS No 49/93, 37/95
- Decision by Constitutional Court);
(c) Regulations governing registration of marks (Official Gazette RS No 49/93);IP/N/1/SVN/I/1
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(d) Regulations governing international registration of marks (Official Gazette RS No 15/93);
(e) Regulations governing qualifying examinations and entry in the register of representatives
(Official Gazette RS No 20/92);
(f) Regulation governing fees for acquisition and protection of industrial property rights
prescribed by the Slovene Intellectual Property Office (Official Gazette RS No 14/95);
(g) Regulation governing fees for information and other services provided by the Slovene
Intellectual Property Office (Official Gazette RS No 57/96).
Article 143
Termination of validity
(1) On the date of entry into force of this Act,
(a) Law on Industrial Property, and
(b) Regulations governing transfer of industrial property rights applied for at the Federal Patent
Office in Belgrade to the Slovene Intellectual Property Office (Official Gazette RS No 49/93)
shall cease to apply.
(2) Notwithstanding paragraph (1)(a) and subject to Articles 137(1) and 138(1) of this Act, the
provisions of Articles 10, 58, 77, 78 and 112 of the Law on Industrial Property shall continue to
apply.
Article 144
Entry into force
This Act shall enter into force after the expiry of six-month period following its publication in
the Official Gazette of the Republic of Slovenia.
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