Lawyer Monthly Magazine -December 2019 Edition

nullified in subsequent action taken by third parties. Many proprietors are not aware of this fact and falsely believe having a strong right after their utility model is registered. What practical steps do you have to take to obtain patent protection? On paper, the process of obtaining a patent is quite simple in Slovakia. You have to file a patent application which meet the requirements, pay the filing fees, request the substantive examination within 36 months and undergo the examination process. In real life, this is far from easy. Many of the applicants are not aware of the current invention space and subsequently, they fail to pass the substantive examination due to lack of novelty and/or inventive step. We often see applicants approaching a patent attorney only after they face an office action, which they are not able respond to. In many cases, this is simply too late and even the best patent attorney does not manage to save their application. It is, therefore, more than recommended to talk to a patent attorney, experienced in the related field as soon as possible, in order to increase the probability to get the patent granted. The patent attorney will help determine the most effective filing strategy respecting the scope of protection, in the respective jurisdictions they would like to get protection in; they will also research the prior art, as well as draft the application in a way to include various backup scenarios if the search that is performed by the authorities produce results influencing the grant proceedings. When selecting a patent attorney, we recommend evaluating their work by looking at their references, as well proceedings from cases they represent. Unfortunately, the proceedings in front of the Slovak Patent Office are not freely available via the internet, so it might be a good idea to have a look at cases they represent in front of the European Patent Office via the European Patent Register, for example. LM and methods for production and use of biological material - are excluded, in addition to the subject matter excluded from patent protection. Patents undergo substantive examination, thus the request must be submitted within the 36 months of filing. For utility models, applications are subject to a substantive search and the search report is published with the publication of the application, however, there is no office action taken that relates to the results of the search performed ex- officio. Based on the published report, any party can file an opposition and technically prevent utility models from being registered should they not meet the conditions for novelty, inventive step and industrial applicability. This process often leads to the registration of utility models, which are ‚weak‘ and can be 49 DEC 2019 | WWW.LAWYER-MONTHLY.COM Professional Excellence By Dagmar Cechvalova, inventa About Dagmar Cechvalova Dagmar Cechvalova has more than 50 years of experience in the patent field and is one of the longest-serving patent attorneys in Slovakia. She founded inventa Patent and Trademark Agency 30 years ago and grew it to become one of the leading patent service firms in Slovakia, managing the largest patent portfolio for her clients. She is a qualified Slovak and European Patent Attorney, as well as European Trademark and Design Attorney, member of EPI, INTA, AIPPI and GRUR. Mrs Cechvalova served many years as the president of the Slovak Chamber of Patent Attorneys as well as a EPI board member. In her professional work, she focuses on inventions related to chemistry, biochemistry as well as green technologies. In addition to patents, inventa provides its services in the trademark field, processes annuity payments, providing a broad range of services in the field of counterfeits and provides consulting services in the field of IP valuation. inventa puts special focus on the technical qualification of its patent attorneys, so they are fully capable to provide services to its clients in various subject fields, including genetics, biotech, pharma as well information technologies and artificial intelligence. When selecting a patent attorney, we recommend evaluating their work by looking at their references, as well proceedings from cases they represent.