RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q3/SVN/1
4 February 1998
(98-0411)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION IN THE FIELDS OF PATENTS, LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS, PROTECTION OF
UNDISCLOSED INFORMATION AND CONTROL OF
ANTI-COMPETITIVE PRACTICES IN
CONTRACTUAL LICENCES
Slovenia1
The present document reproduces the introductory statement made by delegation of Slovenia,
the questions put to it and the responses given in the review of legislation on patents, layout-designs
(topographies) of integrated circuits, protection of undisclosed information and control of anti-
competitive practices in contractual licences at the Council's meeting of 26-30 May 1997.2
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I. INTRODUCTORY STATEMENT
1. Patents
Patent protection is regulated in the Law on Industrial Property of 1992, which was amended
in 1993.  This amendment was to a large extent an exercise of harmonizing the Law with the EPC so
that it was possible to conclude the so-called extension agreement with EPO which allows to obtainpatent protection in Slovenia through European patents in addition to normal national route.  Slovenia
is member of PCT, so this route can be applied as well, again either directly or via European patent.
Slovenia is of course member of Paris Union, and currently also member of its executive
committee.
The basic feature of patent protection in Slovenia is that patents are available in all fields of
technology, including animal and plant varieties.  In this respect Slovenia offers broader protection
than EPC.  This is partly due to the fact that Slovenia is not yet member to UPOV, although the workon UPOV-compatible national legislation is now under way.
                                                     
1 As regards laws and regulations relevant to the areas under review and notified by Slovenia under
Article 63.2 of the Agreement, reference is made to document IP/N/1/SVN/1/Rev.1 and Rev.1/Add.1.
2 The minutes of the meeting have been circulated in document IP/C/M/13.IP/Q3/SVN/1
Page 2
An official notification in a form of an explanatory note about protection of plant varieties is
in the process of being submitted to the TRIPS Council, in order to meet requirements as specified by
the TRIPS Agreement.3
2. Topographies
The Law on Protection of Topographies of In tegrated Circuits was adopted in 1995 and is
compatible with the relevant TRIPS provisions.  The only feature of this Law that perhaps deserves tobe mentioned is that the Law does not provide for the possibility of compulsory licence for protected
topographies.
3. Undisclosed information
Undisclosed information is in general terms regulated in Articles 39 and 40 of Law on
Companies of 1993.  Concerning protection of undisclosed information for information submitted to
governmental authorities for obtaining marketing approval for medicines, this is regulated by
Article 52 of the Medicinal Product Act.
These two laws, i.e. their relevant articles are also in a process of an official notification to the
TRIPS Council in accordance with standard practice.
There are also some relevant provisions in respect of protection of undisclosed information in
the Law on Protection of Competition (Article 13) which was already notified in full.4
4. Control of Anti-competitive Practices
There is not much to be said about this.  There is no specific administrative control in
Slovenia in this respect.  However, there is a general and fairly common provision in Article 111 of
the Law on Industrial Property which says that any provision of a licence agreement which imposes
upon the licensee limitations which do not proceed from the right which is the subject of the
agreement, or which are unnecessary for safeguarding that right, shall be null and void.
Even this statement is under way to be duly notified to the TRIPS Council in a form of an
official explanatory note.3
II. REPLY TO THE GENERAL QUESTION ON PRIORITY RIGHTS5
Does your country recognize a right of priority on the basis of an earlier patent
application filed in any other WTO Member by a national of a WTO Member?
Yes.  A right of priority is a subject of Article 4 of the Paris Convention and this Article is,
together with other Articles, incorporated into the TRIPS Agreement by virtue of its Article 2.1.  It is
therefore our understanding that it is our obligation under the TRIPS Agreement to recognize a right
of priority for patents filed first in any other WTO Member state.  However, an exception to this rule
                                                     
3 The mentioned explanatory note can be found in document IP/N/1/SVN/1/Rev.1/Add.1.
4 This law will be distributed in document IP/N/1/SVN/U/1, once its text has been made available in a
WTO language.
5 At the meeting of the TRIPS Council of 27 February 1997, Members agreed to respond to this
question in the context of the present review (document IP/C/M/12, paragraph 18).IP/Q3/SVN/1
Page 3
may occur with regard to a country which, by virtue of Articles 65.2 and 65.3 of the TRIPS
Agreement, is not obliged to apply said Articl e 2.1 of the TRIPS Agreement for the period until
exhaustion of said transitional term.
III. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. Article 12(1) of the Law on Intellectual Property excludes patentability of certain
inventions the publication or use of which would be contrary to law or morality.  Is the
reference to "publication or use" broader in coverage than the term "commercial exploitation"
used in Article 27.2 of TRIPS to define the relevant permitted exclusions from patentability?
The phrase "publication or use" is almost identical with the English text of Article 53(a) of the
European Patent Convention.  However, it will be amended to comply with Article 27.2 of the TRIPS
Agreement which, meanwhile, is superseding the LIP on the basis of Article 8 of the Constitution,
which provides for direct applicability of international treaties as national law.
[Follow-up question from the EC]
What is the timeframe for the amendment of the Slovenia Patent Law?
There is no urgent need to amend the Law on Industrial Property (LIP), which covers also
patents, because this part of the Law is compa tible in all substantive aspects with the TRIPS
Agreement.  The Law is also harmonized with the EPC to the extent that Slovenia can immediately
become the Member of the European Patent Organisation if invited by the EPO's Administrative
Council.  Nevertheless, the whole LIP will undergo a thorough update in order to apply the TRIPS
terminology as much as possible.  This will result in a new Law on Industrial Property.  The text of
the new LIP will be prepared for the first reading in the Slovenian Parliament in the second half of
this year.  This version will be at disposal fo r suggestions and comments by WTO Members, which
will be taken into account for the final text of the Law.  It may be assumed that the Law will enter into
force in 1998.
2. On what basis can the Slovenian court rea ch decisions concerning royalties for the
commercial exploitation of protected layout- designs in cases where the right holder and the
person exploiting the design have not reached agreement?  Is the concept of "reasonableroyalty" found in Slovenian law (Article 37.1 of the TRIPS Agreement)?
The concept of "reasonable royalty" does not appear verbatim  in Slovenian law, though it is to
be assumed that the court will decide accordingl y.  In addition, the TRIPS Agreement is directly
applicable as the law (see Article 8 of the Constitution) and is therefore binding for courts.
3. How is undisclosed test or other data which is submitted to the Slovenian Government
as a condition of approving the marketing of pharmaceutical or of agricultural chemical
products protected under Slovenian law (Article 39.3 of the TRIPS Agreement)?
Article 52(1) of the Law on Marketing of Pharmaceutical Products (Official
Gazette No. 9/96) explicitly provides that the documentation which accompanies an application for a
marketing authorization shall remain the property of the applicant and be considered as a trade secret.
In addition, Article 39.3 of the TRIPS Agreement is directly applicable as the law as far as
agricultural products are concerned.IP/Q3/SVN/1
Page 4
IV. REPLIES TO QUESTIONS POSED BY JAPAN
1. In your country, are the following subject matters protectable by patent:  (1) plants and
animals, and (2) plant and animal varieties?
Yes (see Article 12 of the Law on Industrial Property (LIP) in conjunction with Article 8(1)).
2. In your country, is the act of offering for sale included in the exclusive rights of patent?
Yes (see especially point 2 of Article 32 of the LIP).
3. In your country, what kinds of acts are rec ognized as exceptions to the exclusive rights
conferred by a patent right?
Exceptions to the exclusive rights conferred by a patent right are defined in Article 32(2) of
LIP which reads as follows:
"The rights conferred by a patented invention shall not extend to:
(i) acts done privately and fo r non-commercial purposes;
(ii) acts done for research and experimental purposes of any kind relating to the subject
matter of the patented invention irrespective of their final purpose;
(iii) the extemporaneous preparation for individual cases in a pharmacy of a medicine in
accordance with a medical prescription or acts concerning the medicine so prepared;
(iv) the use on board vessels of other countries of the Union of Paris for the Protection of
Industrial Property 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 used there exclusively for the needs of the vessel;
(v) 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, whenthese temporarily or accidentally enter the territory of the Republic of Slovenia;
(vi) the acts specified in Article 27 of the Convention on international civil aviation of
7 December 1944 where these acts concern the aircrafts of a State benefiting from theprovisions of that Article."
4. In your country, in which case is use wi thout the authorization of the right holder
permitted, including use by the government or by third parties authorized by the government?
The use without the authorization of the right holder is possible in two cases:
First, according to Article 43 of LIP, an invention may be used without authorization of the
right holder if prior to the filing of an application a third person had been exploiting that invention
privately in good faith or had made the necessary preparation for its exploitation.
Second, if a compulsory licence is granted under conditions set out in Articles 113 to 118 of
the LIP.  A compulsory licence may be granted only if an invention is in the public interest or if theIP/Q3/SVN/1
Page 5
patentee misuses the rights granted by a patent to him.  The law provides for many restrictions as far
as a compulsory licence is concerned, and also provides for safeguarding the legitimate interests of a
patentee.
5. In your country, how is the obligation under Articles 34.1 and 34.2 of the TRIPS
Agreement regarding the shift of the burden of proof in civil proceedings for patent
infringement related to a process patent implemented?
The shift of the burden of proof is provided for in Article 93(3) of LIP.  This provision is in
compliance with the provisions of Article 33 of the TRIPS Agreement.
V. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
1. Article 47 of the Law on Industrial Property implements Article 11 of the Paris
Convention regarding protection for inventions disp layed at recognized exhibitions.  It restricts
acceptable exhibitions to those held in Slovenia  or the countries of the Paris Union.  Please
explain how this provision complies with the requirement to provide national treatment and
most-favoured nation treatment to all WTO Members pursuant to Articles 3 and 4 of theTRIPS Agreement.
The Law on Industrial Property (LIP) had been adopted before the TRIPS Agreement was
concluded, however, the TRIPS Agreement is directly applicable as a law (Article 8 of the
Constitution).  Consequently, the rights provided for in Articles 47 and 48 of the LIP for Members of
the Paris Union extend automatically to all WTO Members.
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2. Article 48 of the Slovenian Law on Industrial Property implements Article 4 of the Paris
Convention regarding the right of priority.  This provision is limited to nationals of countries of
the Paris Union.  Please explain how this provision complies with the requirements of Article 4
of the TRIPS Agreement to provide most-favou red nation treatment to all TRIPS Members.
See reply to question No. 1 above.
3. Article 94 of the Law on Industrial Property defines infringement of a patent as any
unauthorized use.  No specific acts of infringement are enumerated in this or any other
provision of Slovenian law.  Please explain how the Slovenian patent law complies with
Article 28 of the TRIPS Agreement, in particular with respect to the specifically enumerated
rights that are to be associated with the grant of a patent.
Exclusive rights conferred by a patent are enumerated in Article 32(1) of the LIP and are to be
interpreted to be in compliance with the provision of Article 28 of the TRIPS Agreement.
4. Articles 113 through 118 of the Industrial Property Law provide for the grant of
compulsory licences.  These Sections, however, do not impose the specific terms of compulsory
licences that are granted in Slovenia, nor th e situations where such licences are to be
terminated.  In light of this, please explain how Slovenian law complies with the following
provisions of Article 31 of the TRIPS Agreement:
(a) the first clause of paragraph (c), which requires that the scope of any licence be
limited to the purpose for which it was authorized;
                                                     
6 The delegation of Slovenia has indicated that this reply also covers question No. 2 posed by the US.IP/Q3/SVN/1
Page 6
(b) the second clause of paragraph (c), which specifies that licences for inventions in
the field of semiconductor technology may only be justified for public
non-commercial use or to remedy a judici al or administrative finding of anti-
competitive practices;
(c) paragraph (e), which precludes assignability of a compulsory licence except with
the transfer of that part of the enterprise or goodwill which enjoys the use of thepatented invention authorized by the licence;
(d) paragraph (f), which restricts the authorization provided by a compulsory
licence to use of the patented invention fo r supplying the domestic market of the
Member;
(e) paragraph (g), which specifies that the patent owner be able to seek termination
of the licence when the conditions leadin g to its grant cease to exist and are
unlikely to recur; and
(f) paragraph (h), which  requires the remuneration to take into account the
economic value of the authorization pr ovided by the compulsory licence.
Slovenian law complies with the following provisions of Article 31 of the TRIPS Agreement.
(a) The provision of Article 31, paragraph (c) of the TRIPS Agreement is met by
Article 115 of the LIP which explicitly describes that a compulsory licence may notextend the scope and duration in respect of the purpose for which it was granted.
(b) The Slovenian Law on Protection of Topographies of Integrated Circuits does not
provide for the possibility of compulsory licences at all.
(c) The provision of Article 31(e) of the TRIPS Agreement is met indirectly by
Article 113(3) of the LIP which specifies that a compulsory licence may be grantedonly to persons who provide evidence of possessing the technological facilities and
manufacturing capacities required for effective working of the patented invention.
(d) Any judicial decision about compulsory licence can be granted only with respect to
any patent valid in Slovenia and under circumstances prevailing in Slovenia.
(e) The provision of Article 31, paragraph (g) of the TRIPS Agreement is met by
Article 115 of the LIP.
(f) Article 31, paragraph (h) of the TRIPS Agreement is directly applicable in
conjunction with Article 117 of the LIP.
 [Follow-up question from the US]
The answer to question 4(b) form the United States provided by the Slovenian
Government refers to the fact that no compul sory licences are available under the Slovenian
Law on Protection of Topographies of Integrated Circuits.  The answer provided odes not
specify whether , under Slovenian la w, compulsory licenses under a patent  are available in
relation to inventions in the field of semiconductor technology, other that "for public non-
commercial use or to remedy a practice determined after judicial or administrative process to
be anti-competitive".IP/Q3/SVN/1
Page 7
LIP does not provide for such limitations of compulsory licensing as specified in the
Article 31(c) of the TRIPS Agreement, for patents related to semi-conductor technology.  This will becorrected at the very first occasion.  However, the TRIPS Agreement is in any case directly applicable
as law (Article 8 of the Constitution).
5. Article 114 of the Industrial Property law permits the issuance of compulsory licences to
the holders of dependent patents if the subject matter of the dependent patent is "of specialimportance for the economy or is in the public interest".  Clause (l) of Article 31 permits
compulsory licences only if the subject matter of the dependent patent is an "important
technical advance of considerable economic significance".  Please explain how Article 114
complies with Article 31(l) of the TRIPS Agreement.  Please also explain how the requirementthat the licence be non-assignable has been implemented in Slovenia.
The phrase "special importance for the economy" in Article 114 of the LIP is to be interpreted
to have the same meaning as clause (1) of Article 31 of the TRIPS Agreement.  With regard to
non-assignability, see the answer to the question 4(c) above.
6. Article 121 of the Industrial Property Law excludes from liability for infringement the
use of certain patented substances as medicines if the patent applications were filed before acertain date.  Please explain how this complies with the requirements of:
(a) Article 70.2, which requires all WTO Members to apply the Agreement to all
subject matter in existence at the date of application;
(b) Article 27.1, which prohibits discrimination among different fields of
technology;  and
(c) Article 30, which places limitations on the types of exceptions to the exclusive
rights associated with the grant of a patent.
(a) The prime legal effect of Article 121 of the LIP is that the subject matter which
relates to substances as medicines for humans and animals in patent claims, or partsthereof, of patents having filing or priority date on or before 31 December 1992, has
automatically fallen into the public domain with its first disclosure to the public.  Theprovision of Article 121 of the LIP, that the use of such subject matter does not
constitute an act of infringement, is based on, and directly deducted from, this effect.
Another consequence arising out of the time limit set by the specified date of
31 December 1992 is that all subject matter affected by Article 121 of the LIP has
fallen into public domain before the date of application of the TRIPS Agreement.  Incompliance with Article 70.3 of the TRIPS Agreement, Article 121 of the LIP does
not affect the validity of Article 70.2 of the TRIPS Agreement, which is fully
applicable in respect of all subject matter existing at the date of application of this
Agreement.
(b) and (c) Article 121 of the LIP is part of transitional and final provisions of the LIP,
which means that its applicability was timely limited, as explained already above in
the answer to question (a).  All acts in respect of this Article had therefore occurred,
and its applicability had been exhausted, before the date of application of the TRIPSAgreement.  The fact that Article 121 of the LIP does not comply with provisions of
Articles 27.1 and 30 of the TRIPS Agreement is therefore not relevant, when the
above time limit, together with Article 70.1 of the TRIPS Agreement, is taken under
consideration.  It should be noted, however, that substantive provisions of the LIP,IP/Q3/SVN/1
Page 8
especially Articles 8 to 12, do comply with the provisions of the said (and other)
Articles of the TRIPS Agreement without any restriction from the date of its
application.
7. Please explain whether all patents in force in Slovenia as of 1 January 1996 have a term
of protection of twenty years from the filing date.  If not, please explain which patents are not
given this term, and how Slovenian law complies with the obligations of Article 70.2 of the
TRIPS Agreement.
All patents in force in Slovenia as of 1 January 1996 have a term of protection of 20 years
from the filing date.
[Follow-up question from the US]
In relation to its implementation of Article 70.2, does Slovenian law provide that the
term of a patent that is granted on the basis of an application pending on 1 January 1996, will
last at least twenty years from the date of its filing, as required by Article 70.2?
In compliance with the provisions of Article 70.2 of the TRIPS Agreement, Slovenian Law on
Industrial Property (LIP) does provide for the term of 20 years for all patent applications pending on1 January 1996.  This rule holds also for all granted patents valid on that date, including those being
reregistred from the former Federal Patent Office of SFR Yugoslavia.  See Article 37(1) and
Article 122(2,3) of the LIP.
8. Please indicate how many compulsory licen ces on a yearly basis have been granted in
Slovenia since 1 January 1993.
No compulsory licence has been granted in Slovenia since its independence,
i.e. 25 June 1991.
9. Please indicate whether, under Slovenian law,  the following inventions are eligible to be
patented:
(a) process inventions which, in whole or in part, consist of steps that are performed
by a computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention,
including in particular
(i) machine-readable computer program code stored on a tangible medium
such as a floppy disk, computer ha rd drive or computer memory; and
(ii) a general purpose computer whose novelty over the prior art arises
primarily due to its combination with a specific computer program;
(c) methods of treatment or diagnosis of humans or animals;  or(d) non-naturally occurring microorganisms , plants or animals produced through
some act of human intervention.IP/Q3/SVN/1
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All inventions listed in this question, except in ventions for methods of treatment or diagnosis
of humans and animals (paragraph (c) of the question), are eligible for patent protection, provided of
course that they meet the usual criteria of novelty, inventive step, and industrial applicability.
Computer-related inventions are patentable, except  computer programs as such.  See Articles 8,9
and 12(2) of the LIP.
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