By Josip Perkušić, Attorney-at-Law in Zagreb
A patent constitutes the most comprehensive form of legal protection for a technical solution recognised under Croatian law. The procedure for its acquisition before the State Intellectual Property Office of the Republic of Croatia (DZIV) is, both formally and substantively, more demanding than that applicable to other forms of protection. It is therefore useful to know, in advance, which requirements an invention must satisfy, what the application itself must contain, and which steps follow upon its filing. The following sets out a practical overview of these matters.
Requirements for the Patentability of an Invention
A patent is granted for an invention, in any field of technology, which is new, involves an inventive step and is susceptible of industrial application. An invention is new if it is not comprised in the state of the art, the state of the art being understood as everything made available to the public, prior to the filing date, by means of written or oral description, by use, or in any other way – including the content of earlier-filed applications which are published only on or after the filing date. An inventive step is present if the solution does not follow, in an obvious manner, from the state of the art for a person skilled in the relevant art, and industrial applicability exists where the subject matter of the invention can be made or used in any branch of industry, including agriculture.
The Patents Act expressly provides that discoveries, scientific theories, mathematical methods, aesthetic creations, rules and methods for performing mental acts, playing games or doing business, presentations of information, and computer programs shall not be regarded as inventions – but solely to the extent that the application or patent relates to those subject matters or activities as such (per se), which in practice leaves scope for the protection of technical solutions employing such elements within a broader technical context.
Special rules apply to inventions in the field of biotechnology: patentable, for instance, is a product consisting of, or a process by which, biological material is produced, processed or used, as well as biological material isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. Conversely, the mere discovery of an element of the human body, including a gene sequence, is not patentable, whereas an element isolated from the human body, or otherwise produced by means of a technical process, may be patentable, provided that its industrial application is disclosed in the application.
Inventions Excluded from Patent Protection
Excluded from patent protection are plant varieties and animal breeds, essentially biological processes for the production of plants or animals (such as crossing or selection), and plants or animals obtained exclusively by means of such processes – save where a microbiological or other technical process, or a product obtained by means thereof, is concerned. Also excluded are diagnostic and surgical methods, and methods of treatment, applied directly to the human or animal body, although products, in particular substances and compositions, used in such methods remain patentable.
Further excluded from protection are inventions the commercial exploitation of which would be contrary to public policy or morality, it being understood that this does not automatically extend to everything prohibited by law, but rather calls for a separate assessment. The Act identifies, as particularly sensitive examples, processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, uses of human embryos for industrial or commercial purposes, and processes for modifying the genetic identity of animals likely to cause them suffering without any substantial medical benefit.
The Right Holder and Representation before the Office
The right to obtain a patent vests in the inventor – the person who created the invention through his or her own creative effort – or in his or her successor in title, including an employer where the right to the invention created in the course of the employment relationship accrues to the employer by operation of law or under the contract of employment. Where an invention has been made jointly by two or more inventors, the right to protection accrues to them jointly. A person who has merely provided technical assistance in the making of the invention is not regarded as an inventor, and the inventor is entitled, should he or she so wish, not to be named in the application, provided that a written declaration to that effect is filed with DZIV no later than four months from the filing date.
A natural or legal person having neither a residence, nor an actual and effective industrial or commercial place of business, in the Republic of Croatia must be represented before DZIV by an authorised representative. Exceptionally, such a person may, without a representative, file the application, take steps for the purpose of establishing the filing date, submit a copy of the first application in order to claim the right of priority, pay fees and costs, and receive communications relating to those steps – subject to the obligation to furnish DZIV with an address for service within the territory of the Republic of Croatia.
Content of the Patent Application
A patent application must contain a request for grant of a patent on the prescribed form, a description of the invention, one or more claims, drawings referred to in the description or the claims (where necessary), and an abstract. A separate application must be filed for each invention, save where several inventions are so linked as to form a single general inventive concept, in which case they may all be comprised in a single application.
The description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the relevant art. In practice, the description comprises the following elements:
– the technical field to which the invention relates;
– the technical problem which the claimed solution addresses;
– an account and analysis of known solutions to the same problem, i.e. the state of the art;
– disclosure of the essence of the invention and its advantages over the state of the art;
– a brief description of the drawings, where any exist;
– a detailed description of at least one embodiment of the invention, with reference to the drawings and the corresponding reference signs;
– the manner of industrial application of the invention.
The claims define the subject matter for which protection is sought and must be clear, concise and fully supported by the description. They may be independent, comprising new and essential features of the invention, or dependent, further specifying features defined in an independent or another dependent claim. The abstract serves solely for technical information purposes, may not exceed what is necessary for that purpose, and may not be relied upon for the purpose of construing the scope of protection. Where the invention involves biological material not available to the public, a sample thereof must be deposited with an authorised depositary institution no later than the filing date, and the application must state the name of that institution and the accession number under which the material is recorded.
Completing Form P-1 and the Accompanying Documents
The request for grant of a patent is filed on Form P-1, which forms an integral part of the Patent Regulations. The form comprises, inter alia, an express indication that the grant of a patent is requested, the title of the invention, which must clearly and concisely convey its essence (without commercial designations, trade marks or abbreviations), particulars of the applicant and the inventor, particulars of the authorised representative where one exists, a declaration as to the right of priority where an earlier application is relied upon, an indication of any exhibition of the invention at an international exhibition, an indication of any request for division from a parent application, and particulars of the other constituent parts of the application (the number of pages of the description, the number and pages of the claims, and the number of drawings and pages thereof). The name and address of the applicant, the inventor and the authorised representative are stated in accordance with the uniform format prescribed for such particulars: for a natural person, the given name and surname, street, house number, postal code, place and country of residence; for a legal person, the company name or designation and particulars of its registered seat.
Depending on the particular circumstances, the application must be accompanied by evidence of payment of the administrative fee and the costs of the procedure (or evidence of the basis for exemption from payment), a power of attorney where the application is filed through an authorised representative, a declaration as to a joint representative where there are several applicants, a declaration by the inventor that he or she does not wish to be named in the application, a certified copy of the first or earlier application where the right of priority is claimed, a certificate of exhibition of the invention at an international exhibition, evidence of deposit of a sample of the living biological material, and a listing of nucleotide or amino-acid sequences, where the application discloses any such sequences. The application may be filed in person, by post or electronically using a qualified electronic certificate, the latter also giving rise to a 50 per cent reduction in the basic administrative fee.
Proceedings before the State Intellectual Property Office
Upon receipt of the application, DZIV first examines whether the requirements for according a filing date have been met (an indication that the grant of a patent is requested, particulars enabling identification of the applicant, and a part which, at first sight, appears to be a description of the invention or a reference to a previously filed application). Formal examination follows, whereby it is verified whether the fee has been paid, whether a translation into Croatian has been filed where the application is drawn up in a foreign language, whether the applicant is represented by an authorised representative where this is mandatory, whether an inventor has been indicated, whether the application contains all prescribed parts and accompanying documents, and whether any request for recognition of the right of priority is in order.
Where the application is formally in order, DZIV invites the applicant to file a request, and to pay the fee, for the preparation of a search report on the state of the art, prepared on the basis of the claims and, to the extent necessary, the description and drawings. The applicant may also request a written opinion on patentability, assessing, together with the search report, whether the invention satisfies the requirements of novelty, inventive step and industrial applicability. The application is, as a rule, published in the Official Gazette of the Office upon the expiry of 18 months from the filing date or from the date of the recognised priority, whereupon it becomes available to the public, and the applicant acquires provisional rights on the basis of which compensation may be claimed from unauthorised users of the invention for the period preceding the grant of the patent.
Following publication of the search report, the applicant may, within six months, file a request for substantive examination of the requirements for grant of the patent – a request which, once filed, may not be withdrawn. By way of substantive examination, DZIV establishes whether the invention satisfies all statutory requirements: that it is not excluded from protection, that it complies with the requirement of unity of invention, that it is new, that it involves an inventive step and is industrially applicable, that it is sufficiently disclosed in the application, and that the claims satisfy the prescribed requirements. Where deficiencies are established, the Office notifies the applicant and invites observations or correction within a period of between two and three months. Depending on the outcome of the examination, DZIV issues a decision granting the patent on the basis of the final, where applicable amended, content of the application, or a decision refusing the patent where the requirements are not met.
Once the applicant has paid the fee for printing the publication and for issuing the certificate, DZIV issues the decision granting the patent, records the particulars in the register of patents, and issues to the holder the certificate evidencing the granted right, together with the patent specification. The grant is published in the Official Gazette of the Office, whereupon the holder acquires the exclusive right to prevent third parties, without authorisation, from making, offering, placing on the market, using, importing or storing the product which is the subject matter of the patent, or from applying the protected process.
Right of Priority
A person who has already filed a regular application for the same invention in a State party to the Paris Union or a member of the World Trade Organization enjoys, when filing the application in the Republic of Croatia, a right of priority for a period of 12 months from the filing date of that first application. The request for recognition of the right of priority must be filed with the Office no later than two months from the filing date, indicating the number and filing date of the first application and the State, or organisation, with which it was filed, and a certified copy of the first application must be furnished no later than 16 months from the earliest priority date claimed. Upon recognition of the right of priority, the filing date of the first application is taken as the relevant date for the assessment of the novelty and inventive step of the invention.
Duration of Protection and Maintenance of the Patent
A patent has a term of 20 years, calculated from the filing date, subject to the obligation to pay an annual maintenance fee from the third year of the term of the application or patent onward. Should the fee not be paid within the prescribed period, it may be paid within a further period of six months, subject to payment of a surcharge; failing this, the right lapses on the day following the expiry of the period for payment. The holder may also surrender the right, wholly or in part, by a written declaration to the Office, and the patent, or the application, likewise lapses upon the death of a natural person, or the cessation of a legal person, unless the right has passed to heirs or successors in title.
Costs of the Procedure
Broadly speaking, the following fees are payable to the Office prior to grant of the patent: the fee for formal examination of the application and maintenance of the right for the first two years (reduced by 50 per cent where the application is filed electronically), the fee for preparation of the search report on the state of the art, the fee for substantive examination of the requirements for grant of the patent (lower where a written opinion on patentability has previously been prepared), the fee for publication of the grant, and the fees for issuing the patent specification and the certificate of the granted patent. Taken together, these basic fees typically amount to several hundred euros already at the stage preceding grant, exclusive of the annual maintenance fees payable in subsequent years of the term.
Concluding Remarks
A patent affords the strongest and most durable legal protection for a technical solution, but requires that the invention satisfy, from the outset, the strict requirements of novelty, inventive step and industrial applicability, and the procedure itself, owing to the search report on the state of the art and the substantive examination, takes longer and comprises more formal steps than other forms of protection. It is precisely for this reason that, already at the stage of preparing the application – in particular when drafting the description and the claims – it is essential to ensure that the documentation is complete and precise, since the content of the application, as fixed on the filing date, may not subsequently be extended beyond what was originally disclosed. Prior to filing, a legal analysis of the patentability of the invention, and the preparation of the documentation in accordance with the requirements of the Patents Act and the Patent Regulations, is recommended.
Zagreb, 14 September 2026