Patent Litigation 2026 Comparisons

The Slovenian legal system provides protection for inventions through patents, short-term patents and supplementary protection certificates, as regulated by the Industrial Property Act (Zakon o industrijski lastnini; Official Gazette No 51/06; “ZIL-1”) and Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products. Case law plays a supplementary role by interpreting statutory provisions, but does not constitute an independent source of intellectual property rights.

In addition, inventions may be protected under trade secret law, provided that the invention qualifies as a trade secret within the meaning of Article 2 of the Trade Secrets Act (Zakon o poslovni skrivnosti; Official Gazette No 22/19; “ZPosP”).

A national patent right in Slovenia arises through a patent grant procedure conducted before the Slovenian Intellectual Property Office (SIPO) in accordance with ZIL-1.

A patent application is filed with the SIPO, which examines the application to verify whether it complies with the requirements set out in ZIL-1 and other applicable legislation, without examining the novelty, inventive step or industrial applicability of the invention. If the application contains no deficiencies or if such deficiencies are remedied in due time, the SIPO issues a decision on the publication of the patent application. The SIPO then publishes the patent application after the expiry of 18 months from the filing date (or from the priority date, if claimed). The SIPO also publishes the grant of the patent simultaneously with the publication of the patent application. In addition, the SIPO issues a decision granting the patent and enters the patent in the patent register. The date of publication of the patent application is deemed to be the date of grant of the patent.

The procedure for obtaining a supplementary protection certificate begins with the filing of an application, which must be submitted to the SIPO. If the application for a supplementary protection certificate and the product or substance to which it relates fulfil all statutory requirements, the SIPO grants the supplementary protection certificate and publishes the relevant data on the application and the grant.

In practice, the national patent grant procedure in Slovenia typically lasts 18 months from the filing date of the patent application to the granting of the patent, provided that the application complies with the statutory requirements and no deficiencies delay the procedure.

Representation by a patent attorney is not mandatory for Slovenian legal entities or physical persons. Foreign legal entities and physical persons who do not have their residence or actual and serious industrial or economic enterprise in the Republic of Slovenia can exercise their rights in proceedings before the SIPO only through a representative patent attorney registered with the SIPO, unless otherwise provided by an international treaty binding on the Republic of Slovenia.

Notwithstanding the above, a foreign person may:

• file an application and perform acts relating to the determination of the date of filing of the application;
• pay the fee or charge in proceedings before the SIPO;
• file a copy of the first application for the assertion of priority rights; and
• receive correspondence from the Office in relation to these proceedings.

The official filing fee for a national patent application is EUR110; this fee also covers the first three annual fees. However, additional costs arise if the application is prepared by a patent attorney.

The term of protection of a national patent is 20 years from the filing date of the application, while a short-term patent is granted for a term of ten years from the filing date of the application, provided that the prescribed maintenance fees are paid.

However, if by the expiry of the ninth year of the patent term the patent-holder does not submit to the SIPO written evidence demonstrating that the patented invention meets the requirements of novelty, inventive step and industrial applicability, the patent shall lapse on the day on which the tenth year of its validity expires.

The duration of the supplementary protection certificate may not exceed five years from the date on which it takes effect.

A patent grants its holder exclusive rights to prevent unauthorised use of the patented invention, including direct and indirect infringement. In the event of infringement, the patent-holder may seek judicial remedies by filing a lawsuit or an application for interim injunction, including the prohibition of ongoing and future infringements, recall and removal of infringing goods from commercial channels, and other corrective measures, wherein the claims depend on whether a lawsuit or an application for an interim injunction is filed – the patent-holder can also claim damages in accordance with Article 121a of ZIL-1.

The principal obligation of the patent-holder is to pay annual maintenance (renewal) fees, starting from the fourth year following the filing date, in order to keep the patent in force.

Public information on granted patents is available through the patent database maintained by the SIPO. The database contains bibliographic data on granted patents and allows searches by the International Patent Classification, keywords contained in the abstract and other data. However, it is not possible to link patents to specific products or processes. There is also no patent linkage system that would link the drug marketing approval with the resolution of patent disputes.

A supplementary protection certificate may be granted once for the invention for a maximum period of five years, where the subject matter of the patent is a product, or a process for the manufacture or use of a product, which requires a statutorily prescribed official authorisation procedure prior to the commencement of its commercial exploitation.

Under Slovenian law, third parties can file third-party observations but are not considered parties to such proceedings.

In accordance with Article 71 ZIL-1, there is no appeal against a refusal to grant an intellectual property right by the SIPO, though it is possible to file a lawsuit in an administrative dispute with the Administrative Court of the Republic of Slovenia in Ljubljana.

If an annual fee is not paid by the due date, it may still be paid within an additional six-month grace period, subject to payment of a late fee amounting to 50% of the unpaid amount. If the fee, together with the late fee, is not paid within this additional period, the patent right lapses.

Under certain conditions, restitutio in integrum is possible (Article 68 of ZIL-1). The request has to be filed within three months from the date on which the cause of the delay ceased to exist, or, if the party only learned of the delay at a later date, from the date on which it learned of the delay, but not after the expiry of one year as of the day of the delay. The request must be accompanied by the performance of the delayed act and payment of the fee. The official fee for the restitutio in integrum proceedings is EUR150.

In accordance with Article 65 of ZIL-1, the subject matter of a patent application may not be extended beyond the content of the application as originally filed. Any amendments made after the filing date may therefore only limit, and not broaden, the scope of protection. The limitation of the scope is requested as a partial renouncement of the right.

The owner of a technical intellectual property right may, in the event of infringement, bring an action before the competent court and request:

• the prohibition of ongoing and future infringements;
• the recall of infringing goods from commercial channels, taking into account the interests of good-faith third parties;
• the removal of the situation created by the infringement;
• the permanent removal of infringing goods from commercial channels;
• the destruction of infringing goods;
• the destruction of the means of infringement that are used exclusively or predominantly for the infringement and are owned by the infringer;
• the transfer of the infringing goods to the claimant against payment of production costs; and
• the publication of the judgment.

In addition to these measures, the owner of a technical intellectual property right may also claim damages for the harm suffered as a result of the infringement, in accordance with the general rules on liability for damages or an agreed-upon or customary licence fee – the latter being the usual choice of the patentee.

The holder may also file an application for interim injunction.

Pursuant to Article 111 of ZIL-1, any interested person may bring an action before the competent court seeking a declaration of invalidity of a patent. Furthermore, a compulsory licence may be requested by a third party, provided that the statutory conditions set out in Article 125 ZIL-1 are fulfilled.

In addition, inventors, their heirs or other legal successors may, under Article 115(1) ZIL-1, bring an action before the competent court requesting that they be declared the rightful patent-holder where the patent was granted to a person who is not the inventor, heir or legal successor. Under Article 118(1) ZIL-1, an inventor may also bring an action requesting recognition as the inventor in the patent application and related documents, as well as the publication of the final judgment at the defendant’s expense.

According to the publicly available case law, a negative declaratory lawsuit can be filed, requesting that the court establish that there is no infringement (provided that legal interest is shown for such a lawsuit). In this regard, the plaintiff has to substantiate its legal interest in the action by demonstrating that its legal position is specifically threatened by the defendant’s conduct.

At first instance, intellectual property matters are heard by the Ljubljana District Court, which has exclusive territorial jurisdiction over such disputes pursuant to Article 103(2) of the Courts Act (Zakon o sodiščih; Official Gazette No 94/07, as amended; “ZS”).

At second instance, appeals against decisions of the court of first instance are decided by the Higher Court in Ljubljana.

At third instance, extraordinary legal remedies are decided by the Supreme Court of the Republic of Slovenia.

Slovenia does not have specialised bodies for the resolution of patent disputes. All patent-related disputes are handled by the regular commercial courts. However, proceedings for the revocation and declaration of invalidity of trade marks are conducted in administrative proceedings before the SIPO.

A lawsuit may only be brought on the basis of the patent for which it was established with a declaratory decision that the invention fulfils the conditions for patent protection (Article 93 of ZIL-1). Granted European Patents are considered to have such a declaratory decision (Article 91(6) of ZIL-1). If the declaratory decision has not been issued yet or if the lawsuit is based on a European Patent application, the court will stay the proceedings until the decision is issued or the European Patent is granted.

An application for interim injunction may only be brought on the basis of a granted European Patent or a patent with a declaratory decision – ie, there is no staying of the procedure if the patent does not fulfil this condition, and the application would be rejected outright.

Warning letters, formal demand letters or engaging in mediation are not prerequisites to filing a lawsuit. 

Parties in intellectual property matters are not generally required to be represented by a lawyer. However, in proceedings involving extraordinary legal remedies, a party may perform procedural acts only through a representative who is a lawyer with the Bar or through an attorney (Article 86 of the Civil Procedure Act; Official Gazette of the Republic of Slovenia, No 26/99, as amended; “ZPP”).

Furthermore, pursuant to Article 146 of the ZPP, a claimant or its legal representative who is domiciled or seated abroad and does not have an authorised representative in the Republic of Slovenia must appoint an authorised representative to receive correspondence in the Republic of Slovenia when filing a lawsuit. If the plaintiff fails to do so, the court appoints such representative at its expense and orders the plaintiff or its legal representative to appoint an authorised representative to receive documents within a specified period. If the plaintiff or its legal representative fails to do so within the additional time limit, the court dismisses the lawsuit.

Similar rules apply if the defendant or its legal representative is abroad and does not have an authorised representative in the Republic of Slovenia. In such a case, the court orders the defendant to appoint an authorised representative for the receipt of documents in the Republic of Slovenia. If, however, the defendant or its legal representative fails to appoint an authorised representative to receive documents, the court appoints a temporary representative authorised to receive documents at the defendant’s expense, and notifies the defendant or its legal representative of this appointment through the appointed temporary representative.

The court proceedings are conducted in the Slovenian language; hence, in practice, foreign legal entities or physical persons are represented by Slovenian lawyers. In that respect it is also customary for Slovenian legal entities or physical persons to be represented by lawyers, due to the complexity of these matters. 

Interim injunctions are available, including ex parte interim injunctions (Article 123 of ZIL-1).

The court may grant an interim injunction if the applicant establishes as likely that it is the holder of the intellectual property right and that the right has been infringed or that there is a real danger of infringement. The applicant must also establish as likely one of the following conditions:

• a risk that enforcement of the claim would be prevented or significantly impeded;
• that the injunction is necessary to prevent the occurrence of irreparable harm; or
• that the alleged infringer would not suffer more adverse consequences from the granting of the interim injunction, should it later prove to be unjustified, than the harm that would occur to the right-holder if the injunction were not granted.

An additional requirement for granting an interim injunction is the requirement of reversibility, which is not expressly provided for in the Enforcement and Securing of Civil Claims Act (Zakon o izvršbi in zavarovanju; Official Gazette No 3/07; “ZIZ”), but derives from the decision of the Constitutional Court, Case No Up-275/97 of 16 July 1998. This requirement further restricts the issuance of regulatory interim injunctions, the effect of which must be reversible after the interim injunction is revoked and means that the creditor must also demonstrate the possibility of restoring the previous situation in the event of the claim being rejected. The issued interim injunction must not result in the court – without having conducted an adversarial procedure and without ensuring the defendant’s right to be heard – effectively granting the claimant’s substantive claim or pre-judging the decision on the merits.

Ex parte interim injunction may be suggested. In such case, the court would follow the suggestion if it is likely that any delay in issuing an interim injunction would cause the right-holder irreparable damage. In this case, the opposing party shall be notified immediately after the injunction has been enforced.

In addition, in the case of an interim injunction sought in relation to patent infringement, the following conditions must also be fulfilled:

• the right-holder has to submit a declaratory decision issued pursuant to point (a) or (b) of the first paragraph of Article 93 of ZIL-1; and
• the right-holder has to file the application for an interim injunction within three months from the date on which it became aware of the alleged infringement.

The court may issue any provisional order necessary to secure the claims, in particular:

• to prohibit the alleged infringer from committing the alleged infringement and future infringements; and
• to seize, exclude from circulation, and store the objects of infringement and the means of infringement that are exclusively or predominantly intended or used for infringement.

If the conditions for issuing an ex parte interim injunction are not met, the court serves the application for an interim injunction on the opposing party and invites it to submit observations. The court has discretion as to the conduct of the proceedings. In practice, the court usually sets short deadlines for the submission of pleadings, and the parties may exchange several rounds of submissions. In individual cases, a hearing may also be held. It is therefore important that the applicant submits the relevant evidence already in the application for an interim injunction. In interim injunction proceedings in patent disputes, judicial practice generally takes the position that, as a rule, no expert is appointed, although this possibility is not excluded.

If, on the other hand, the court issues an ex parte interim order, the debtor has the option of filing an objection to such an order. This ensures that the proceedings are subsequently adversarial. The same court that issued the interim injunction decision decides on the objection.

Furthermore, an appeal may be lodged against the decision of the court of first instance on the objection, which is decided by the Higher Court.

Pursuant to Article 274(2) of the ZIZ, in conjunction with Article 123(7) of ZIL-1, a potential opponent may also protect itself in interim injunction proceedings by requesting that the court allow the posting of a security instead of an interim injunction.

ZIL-1 provides that, in the case of patent infringement, a request for an interim injunction has to be filed within three months from the date the right-holder became aware of the alleged infringement. However, ZIL-1 does not prescribe specific limitation periods for other patent infringement claims. As a result, the general rules of the Obligations Code (Obligacijski zakonik; Official Gazette 97/07, as amended; “OZ”) apply.

If damages are sought in accordance with the general rules on reimbursement of damages, under the OZ claims for damages expire three years from the date that the right-holder became aware of both the damage and the liable party, and in any case five years from the date the damage occurred. If an agreed-upon or customary licence fee is sought, the statutory period is five years.

Under Slovenian law, a party may request the preservation of evidence before or during proceedings, provided they submit reasonably accessible evidence showing that:

• they are the holder of a patent right;
• the right has been infringed or there is a real risk of infringement; and
• the evidence of the infringement is likely to be destroyed or rendered unobtainable at a later stage.

Additionally, the patent-holder has to submit a declaratory decision confirming that the invention satisfies the statutory requirements and that the granted patent claims fully meet those requirements, or base the request on a granted European Patent. The request for preservation of evidence has to be filed within three months from the date that the right-holder became aware of the alleged infringement.

ZIL-1 introduces certain specific rules for intellectual property disputes (for example, a plaintiff seeking the invalidation of a patent must specify the legal ground for such a claim in the complaint). Otherwise, general procedural rules for lawsuits in intellectual property proceedings are governed by the ZPP.

In accordance with the ZPP, a statement of claim must contain a specific claim, the facts on which the claimant bases the claim, and the evidence supporting those facts. It must include the identification details of the parties and all other necessary elements to allow the court to consider the claim (eg, designation of the court, addresses of the parties and their legal representatives, the subject matter of the dispute, content of the statement, and the claimant’s signature) and be comprehensible. In addition to these formal requirements, the claim must be substantiated (sklepčna), meaning that, if the alleged facts were proven true, the claim would be legally justified under substantive law.

Supplementing the claim is allowed, but the claimant has to present all facts, evidence and responses to the opposing party's arguments no later than by the end of the first oral hearing. The same rule applies for the defendant. After that point, new facts and evidence may only be introduced if the party could not have submitted them earlier without fault, or if their submission would not significantly delay the proceedings. The plaintiff may also amend the claim until the conclusion of the main hearing; however, after service of the claim, the defendant’s consent is required unless the court deems the amendment appropriate for the final resolution of the dispute. The consent of the defendant is not required if the plaintiff amends the claim so that, due to circumstances that arose after the claim was filed, it seeks a different subject matter or monetary amount based on the same factual basis, or if it asserts an interim declaratory claim pursuant to the third paragraph of Article 181 of the ZPP.

Slovenian law does not provide for representative or collective actions (such as class actions) for intellectual property rights proceedings.

If a court determines that the patent-holder or licensee is abusing their patent rights – in particular, by exploiting the invention in a way that restricts competition contrary to applicable regulations – the court may decide to allow a third party or the government of the Republic of Slovenia to exploit the invention even without the consent of the patent-holder.

Irrespective of the scope of the exclusive rights conferred by a patent, competition law – including rules on the abuse of dominance, restrictive agreements and concentrations – continues to apply. ¬¬While patent-holders or licensees are not automatically considered to hold a dominant position, patent ownership may constitute a relevant factor in the assessment of dominance, depending on the circumstances of the case.¬¬Where a patent-holder is found to hold a dominant position, it must ensure that its conduct does not impair effective competition. This includes refraining from abusive practices of any kind, such as exclusionary abuses (for example, under certain conditions, the strategic misuse of patent procedures or misrepresentation of facts related to patents, refusal to license), exploitative abuses (for example, under certain conditions, the imposition of excessive prices) and discriminatory conduct (for example, under certain conditions, discriminatory licensing practices).¬¬Moreover, the exercise of patent rights does not exempt patent-holders from the prohibition of restrictive agreements, whether vertical or horizontal in nature. While competition law recognises certain specifics in relation to intellectual property and provides for limited exemptions – such as those applicable to technology transfer, research and development, or specialisation agreements – these do not grant a general immunity from antitrust scrutiny.¬¬In the field of intellectual property, competition law in particular addresses restrictive agreements known as “pay-for-delay” settlements, whereby an originator pharmaceutical manufacturer remunerates generic manufacturers in exchange for their agreement not to challenge the patent and to delay or abstain from market entry.

In proceedings concerning the infringement of industrial property rights, the necessary parties are the holder of the right (eg, the patent-holder) as the claimant, and the person who infringes the right without the holder’s consent (the alleged infringer) as the defendant. In addition to the holder, certain third parties may also assert the right to judicial protection under Article 120a of ZIL-1, namely:

• the licensee, to the extent that the right has been transferred to it by law or by legal transaction, provided the right-holder consents;
• the exclusive licensee, if the right-holder does not take action within a reasonable period after being notified of the infringement; and
• a professional association established to protect industrial property rights, if the rights have been transferred to it by law or legal transaction.

Slovenian law recognises both direct and indirect infringement of industrial property rights but does not distinguish between them in terms of the legal remedies available. In both cases, the entitled party may file a lawsuit and request:

• that ongoing and future infringements be prohibited;
• that infringing goods be recalled from commercial channels, taking into account the interests of good-faith third parties;
• that the situation resulting from the infringement be remedied;
• that infringing goods be permanently removed from commercial channels;
• that infringing goods be destroyed;
• that the means used for the infringement, which are exclusively or predominantly intended for or used in the infringement and owned by the infringer, be destroyed;
• that the infringing goods be transferred to the claimant in return for payment of production costs; and
• that the judgment be published.

Which of the claims provided for by law will be asserted by the right-holder depends on the circumstances of the specific case and on its decision. However, according to the case law, the function of judicial protection is (solely) to remedy and prevent specific infringement acts. The plaintiff cannot obtain a court injunction “in advance and in reserve” against all types of possible infringement acts, including those that have not (yet) occurred in a specific form, nor can it obtain a court injunction against conduct that cannot be defined as a specific infringement of rights.

Under Slovenian law, a specific rule applies in relation to process patent infringement, as set out in Article 122(1) of ZIL-1.

In line with Article 122(1) of ZIL-1, if the subject matter of the infringement is a patent protecting a process for the manufacture of a new substance, any substance of the same composition or that is identical and manufactured by the protected process is deemed to be infringing, unless proven otherwise. The burden of proof lies with the defendant or alleged infringer, taking into account their legitimate interest in protecting trade secrets.

There are no specific statutory provisions addressing the issue of process patent infringement where parts of the allegedly infringing process are practised outside the jurisdiction. There is no publicly available case law dealing with such situations.

The scope of patent protection under Slovenian law is defined by the content of the patent claims, as explicitly stated in Article 18(4) of ZIL-1. For the interpretation of these claims, the description and drawings are also taken into account.

According to case law, the wording of an individual claim must be interpreted in light of the patentee’s intent, as derived from the description and the other claims. The key criterion is how a person skilled in the relevant technical field would understand the language and features used in the claim (Higher Court of Ljubljana, Decision V Cpg 558/2018). Additionally, case law emphasises that the scope of protection must be predictable for third parties. The invention must be fully and clearly described in the claims so that third parties can understand the extent of the protection (Higher Court of Ljubljana, Decision V Cpg 351/2019). Nevertheless, Slovenian courts also apply the doctrine of equivalents.

Slovenian industrial property law allows the alleged infringer to defend against an infringement claim by raising the following substantive and procedural defences:

• expiry of protection due to lapse of time (Article 22 of ZIL-1);
• exhaustion of rights (Article 21 of ZIL-1);
• prior use right (Article 20 of ZIL-1);
• existence of own right or licence (Article 75 of ZIL-1);
• compulsory licence (Article 125 of ZIL-1); and
• other procedural defences under the ZPP, such as lack of jurisdiction, lack of legal interest or standing, etc.

In accordance with the provisions of the ZPP, the court appoints an expert where the determination or clarification of a specific fact requires specialised knowledge that the court itself does not possess. Experts are appointed by the court; however, before deciding on the appointment, the court may give the parties an opportunity to comment on the proposed expert.

In addition, a party may obtain and submit an expert opinion either before or during the proceedings as its own evidence to support its claims. Such privately commissioned expert opinions generally carry less or no evidentiary weight than opinions prepared by court-appointed experts, as they are considered to be part of that party’s assertions. However, such expert opinions may be taken into account by the court in interim injunction proceedings.

Under Slovenian law, there is no separate procedure for construing the terms of a patent’s claims. Claim construction is carried out as part of the regular infringement proceedings.

Slovenian law does not recognise a separate mechanism for third-party opinions such as amicus briefs. Comparable input from third parties may be provided through expert opinions or evidence submitted by a party.

Under Slovenian law, the primary remedy for invalidating a patent is a declaratory action for nullity, which may be brought before the competent court by any interested party. An action for the declaration of patent nullity may be filed if one of the following grounds exists:

• the invention, at the date of filing the application, did not meet all legal requirements (eg, the invention does not fulfil the criteria of novelty, inventive step and/or industrial applicability);
• the invention is not disclosed in the description clearly and completely enough to be carried out by a person skilled in the art; and
• the subject matter of the protection extends beyond the content of the first filed application, or the patent granted on the basis of a divisional application exceeds the scope of the original application.

Separately, an action to contest entitlement to the patent may be filed by the true inventor or their legal successor during the term of the patent, if the patent was granted to someone who is not entitled to it.

Finally, in the case of a revoked European Patent that had been validated in Slovenia, the SIPO must issue a decision ex officio declaring the Slovenian patent null, and must publish the relevant information.

Case law confirms that a court may declare a patent invalid only in respect of certain patent claims. However, ZIL-1 does not regulate a specific procedure for the partial revocation or cancellation of a patent. Consequently, the circumstances under which a patent may be partially revoked or cancelled correspond to the circumstances applicable to an action for a declaration of patent invalidity.

Under Slovenian law, amendment of the claim in revocation or cancellation proceedings is possible in accordance with Article 184 of the ZPP. A party may amend the claim either by changing its identity, increasing the existing claim, or adding a new claim up until the conclusion of the main hearing. Once the claim has been served on the defendant, the defendant’s consent is generally required for any amendment. However, the court may allow the amendment even without the defendant’s consent if it considers the amendment reasonable for the final resolution of the legal relationship between the parties.

The patent claims can also be amended during the revocation proceedings, by filing a partial renouncement of the right before the SIPO.

Under ZIL-1, proceedings for revocation (nullity) of a patent and proceedings for infringement are regulated separately. However, under Article 183 of the ZPP, the defendant may file a counterclaim before the same court, provided that:

• the counterclaim is related to the original claim;
• the claims can be set off against each other; or
• the counterclaim seeks a determination of a right or legal relationship that affects the decision on the original claim.

In such cases, revocation and infringement may be considered together in a single proceeding, but only if the conditions for a counterclaim are met. The court decides whether or not it will join the cases. If the cases are joined (which is usually the case), the court would first deal with the nullity request.

The timeline of intellectual property proceedings in Slovenia does not differ from that of other civil proceedings. The time required by first-instance courts to hold the first hearing amounts to up to 21 months in civil cases and 16 months in commercial cases. The overall duration of the case largely depends on its complexity and may extend over several years. In practice, where there are no particularly complex legal or factual issues, it usually takes around three years for the court to issue a first-instance judgment. The above applies regardless of the fact that in accordance with Article 72(3) of ZIL-1 the proceedings on the basis of ZIL-1 are expedited, with the court giving priority to such cases.

The court first holds a preparatory hearing, at which it discusses with the parties the further course of the proceedings. At the first oral hearing following the preparatory hearing, the parties must present all relevant facts and propose all evidence on which they rely. At subsequent hearings, the court takes the evidence that is relevant for its decision, based on the evidence proposed by the parties. This may include the examination of the parties, witnesses or experts appointed by the court. The taking of evidence may extend over several hearings, depending on the scope and complexity of the examination. The examination is conducted by the court, after which the party who proposed the witness or expert may ask questions, followed by additional questions from the opposing party.

As a rule, the court decides on all claims at the end of the main hearing. If, however, the decision depends on the prior resolution of a preliminary issue concerning the existence of a right or legal relationship that has not yet been decided by a court or another competent authority, the court will resolve that issue itself as a preliminary issue before deciding on the merits of the case.

In Slovenia, intellectual property cases are decided by legal judges, not by a jury. Judges are not technically trained or specialised in intellectual property matters – ie, there are no specialised intellectual property courts dealing only with such matters. The parties do not have any influence over the selection of the judge, but they may request the judge’s disqualification in accordance with the rules of the ZPP.

In Slovenia, the defendant may settle the case through a court settlement (sodna poravnava). At the preparatory hearing, the parties indicate their willingness to reach such a settlement. If no agreement is reached, the proceedings continue.

The parties also have the option of court-affiliated mediation, which can be proposed either by the court at the start of the proceedings or by the parties at any stage of the litigation – even after a first-instance judgment and during the appeal. If all parties consent, they provide written approval (either on a court form or recorded in the hearing), and the court appoints a mediator who invites the parties to a first session within 30 days.

Finally, during the court proceedings, the parties may also agree on another alternative form of dispute resolution (eg, dispute resolution through mediation). In this case, pursuant to Article 206(3) of the Civil Procedure Act, the court shall, at the request of the parties who agree to attempt alternative dispute resolution, order a stay of proceedings for a period not exceeding three months.

In Slovenia, court proceedings are in principle conducted independently, and parallel proceedings – such as infringement actions and revocation (nullity) actions – do not automatically affect one another. However, the court would usually join the two proceedings and firstly deal with the invalidity claim. If two actions concern the same claim or mutually exclusive or overlapping claims, the action that is served later will be dismissed in order to avoid deciding the same matter twice.

An opposition procedure initiated before the European Patent Office (EPO) may also affect national revocation proceedings concerning a European Patent. Pursuant to Article 112(3) of ZIL-1, if an action for a declaration of invalidity of a European Patent is filed while opposition proceedings before the EPO are still pending, the Slovenian court must stay the proceedings until a final decision is issued by the EPO in the opposition proceedings.

Lastly, the course of the proceedings may also be affected where the SIPO has not yet issued a declaratory decision on whether the invention, in whole or in part, meets the statutory patentability requirements (such as novelty, inventive step and industrial applicability), or where a European Patent has not yet been entered into the Slovenian patent register. In such cases, pursuant to Article 122(2) of ZIL-1, the court may stay the infringement proceedings until the relevant declaratory decision is issued or until the European Patent is entered in the Slovenian patent register.

Under Slovenian law, a patentee may seek a wide range of remedies against a person who infringes the patent without the patentee’s consent. By filing a civil action before the competent court, the patentee may request:

• prohibition of ongoing infringement and preventing future infringements;
• the recall of infringing goods from commercial channels, taking into account the interests of good-faith third parties;
• the removal of the situation created by the infringement;
• the permanent removal of infringing goods from commercial channels;
• the destruction of infringing goods;
• the destruction of the means of infringement that are used exclusively or predominantly for the infringement and are owned by the infringer;
• the transfer of infringing goods to the claimant against payment of production costs; and
• the publication of the judgment.

When deciding on recall/removal requests, the court shall take into account all circumstances of the case – in particular, the proportionality between the severity of the infringement and the request, and the interest of the right-holder in ensuring effective protection of their rights.

In addition to these measures, the patentee may also claim damages for the harm suffered as a result of the infringement, in accordance with the general rules on liability for damages or within the scope of the agreed-upon or customary licence fee, which is usually the case. There are no enhanced damages for wilful infringement.

The patentee may also file an application for interim injunction. If it is granted, the court determines a financial penalty to be paid by the alleged infringer if it does not comply with the interim injunction as issued, in the amount of up to EUR10,000 for a physical person and up to EUR500,000 for a legal entity. If the debtor fails to fulfil their obligations, the court shall, ex officio, enforce the decision on the imposition of a financial penalty. At the same time, the court shall issue a new decision, setting a new deadline for the debtor to fulfil their obligations and imposing a new financial penalty, higher than in the previous decision, in case the debtor fails to fulfil their obligations even within the new deadline.

When imposing a financial penalty within the prescribed limits, the court shall take into account the significance of the act that the debtor should have performed and other circumstances of the case.

Further, it may seek a reimbursement of litigation costs, including court fees, attorneys’ fees, and other necessary expenses. However, attorneys’ fees are awarded in accordance with the applicable attorneys’ tariff, meaning that only recoverable costs as determined by the tariff are reimbursed, rather than all costs actually incurred.

Pursuant to Article 19(1) of the ZIZ, a court decision is enforceable if it has become final and if the deadline for voluntary fulfilment of the debtor’s obligation has expired. In addition, pursuant to Article 21(1) of the ZIZ, a court decision must be suitable for enforcement, which means that it must specify the creditor and the debtor, as well as the subject matter, type, scope, and time of performance of the obligation.

In Slovenia, a prevailing defendant is entitled to reimbursement of litigation costs, including court fees, attorneys’ fees and other necessary expenses. However, attorneys’ fees are awarded in accordance with the applicable attorneys’ tariff, meaning that only recoverable costs as determined by the tariff are reimbursed, rather than all costs actually incurred.

In Slovenia, remedies are the same for all technical intellectual property rights.

Pursuant to the ZIZ, interim injunctions may be granted before proceedings are initiated, during the proceedings or even after they have concluded, as long as the conditions for enforcement have not been met and provided that the statutory conditions are met. The applicable requirements depend on whether the injunction secures a monetary or a non-monetary claim. Where the court finds these conditions satisfied, it issues a decision granting the interim injunction, which has the effect of an enforcement order. Consequently, the injunction is enforceable, and the filing of an appeal does not automatically suspend its enforcement; however, the infringer may request a stay of enforcement.

Since ZIL-1 as a sectoral law primarily regulates substantive legal aspects (ie, the conditions for obtaining, scope and duration of patent protection) rather than providing a comprehensive procedural framework for the operation of courts, the ZPP applies as a general procedural act. The provisions of the ZPP also apply in appeal proceedings before the Higher Court in Ljubljana. Therefore, there are no special provisions in appeal proceedings in intellectual property cases.

In accordance with the provisions of Article 338(1) of the ZPP, a judgment in appeal proceedings before the Higher Court may be challenged on the grounds of a violation of procedural provisions, erroneous or incomplete findings of fact, and erroneous application of substantive law. Owing to the high technical complexity of patent disputes, appeals quite frankly often focus on the correctness of the findings of fact, with the parties being limited by the strict rules of the ZPP regarding the submission of new evidence in the appeal phase. The Higher Court therefore conducts both a factual review and a legal review in the appeal proceedings.

In this regard, Article 350 of the ZPP is also important, as it stipulates that the Higher Court reviews the first-instance judgment only in the part that is challenged by the appeal and within the limits of the grounds stated in the appeal, while ex officio examining certain essential violations referred to in Article 339 of the ZPP and regarding the correct application of substantive law.

An appeal is automatic – ie, it does not need to be allowed by the Higher Court first – whereas a revision as an extraordinary legal remedy to be dealt with by the Supreme Court needs to be allowed by the Supreme Court. A revision may be lodged on the grounds of a material violation of the provisions of civil procedure before the court of first instance (which the party asserted before the court of second instance), on the grounds of a material violation of the provisions of civil procedure before the court of second instance, or on the grounds of erroneous application of substantive law. A revision cannot be lodged on the grounds of an erroneous or incomplete finding of fact.

Since no specific statutory prerequisites for filing a claim are provided for by law (see 2.5 Prerequisites to Filing a Lawsuit), there are likewise no costs envisaged that would be incurred by a party prior to the filing of the claim. However, in practice, in order to avoid court proceedings, the parties will attempt to reach an amicable settlement of the dispute and will, to that end, exchange various letters, including notices of infringement and cease-and-desist letters calling for the termination of the infringements under the threat of initiating court proceedings or filing a claim.

Thus, certain costs may be incurred by the parties prior to the filing of the claim in connection with such attempts to reach an amicable settlement; such costs are not considered as being the costs that arise during or as a result of the proceedings (see 8.3 Responsibility for Paying the Costs of Litigation) and are classified as pre-litigation costs. Slovenian case law generally recognises pre-litigation costs in matters where, for example, an expert opinion was needed for filing a lawsuit such as an evaluation of damages. The pre-litigation costs in patent disputes are generally not reimbursable.

The court fee for initiating proceedings in intellectual property disputes is calculated based on the value of the dispute. The coefficients used to calculate the amount of the court fee are specified in the Fee Schedule, which is part of the Court Fees Act (Zakon o sodnih taksah; Official Gazette No 37/08; “ZST-1”). Pursuant to Article 16 of ZST-1, the amounts of fees for all values of the subject matter in dispute are specified in Annex 1 of ZST-1. According to Annex 1, the fee amount with a coefficient of 1.0 for a value of the subject matter in dispute of, for example, EUR500,000 or more is EUR2,175.

In the case of a non-monetary claim, the procedure for assessing the court fee is based on an appraisal of the value of the subject matter in dispute, which must reflect the actual economic interest of the party. In both cases, the amount of the fee follows the same statutory table, with the distinction that the basis for a non-monetary claim for the fee assessment remains subject to preliminary evaluation.

Under Articles 115 to 173 of the ZPP, which apply to the payment and coverage of costs of litigation (ie, costs incurred during or as a result of the proceedings in accordance with Article 151(1) of the ZPP), the system of covering costs of civil litigation is based on the ongoing payment of all costs of the proceedings incurred by each party to the dispute (eg, the plaintiff must pay the court fee for the lawsuit when filing the lawsuit or at the latest within the time limit set by the court in the order for payment of the court fee; each party pays the costs of drafting individual submissions in the proceedings and other attorneys’ costs, costs of expert witnesses proposed in the proceedings, etc) and on the principle of success (Article 154(1) of the ZPP).

The party that loses the case must therefore reimburse the other party for the legal costs incurred by the latter. If a party wins the case in part, the court may, depending on the success achieved, decide that each party shall bear its own costs, or, taking into account all the circumstances of the case, may order one party to reimburse the other party for a proportionate part of the costs. The court may also decide that one party must reimburse all the costs incurred by the opposing party if the opposing party has been unsuccessful in only a relatively small part of its claim and no special costs have been incurred as a result of that part (Article 154(2) and (3) of the ZPP).

Another important provision relating to the reimbursement of costs on a success basis is the provision whereby, when deciding which costs are to be reimbursed to a party, the court shall only take into account those costs that were necessary for the proceedings – ie, costs without which it is not possible to perform reasonable acts to enforce the plaintiff’s claim or to defend the defendant. In determining the scope of costs to be reimbursed, the court also considers whether the incurred procedural costs are in proper proportion to the procedural objective and whether they are reasonable.

The attorneys’ costs are reimbursed in accordance with the Attorney’s Tariff, regardless of whether a written agreement for the payment of attorneys’ services according to a different tariff or in a lump-sum amount was concluded between the attorney and client – ie, a party will not necessarily be reimbursed for all incurred attorney service costs.

Since intellectual property rights disputes can also lead to lengthy, unpredictable and costly litigation, with “costs” also arising in terms of time spent managing the proceedings, alternative dispute resolution is a suitable and frequent choice in these disputes as well. Mediation and other forms of alternative dispute resolution (negotiation, settlement) can improve the efficiency of the dispute resolution process and, by focusing on the needs of the parties involved, provide a cost-effective and tailored mechanism for resolving disputes.

The most suitable and commonly used forms of alternative dispute resolution in practice are mediation and negotiation. Mediation is a structured process in which two or more parties to a dispute attempt to voluntarily reach an agreement on the resolution of the dispute with the help of a mediator, while negotiation is the most direct and informal form of alternative dispute resolution. This procedure is used to resolve disputes between two or more parties directly or through their legal representatives without the involvement of a neutral third party. Both forms of alternative dispute resolution are suitable choices for all types of intellectual property disputes and are particularly recommended in cases where such a “softer” form of dispute resolution would be important for protecting a party’s market reputation and avoiding unnecessary tensions with business partners and/or competitors.

For the valid assignment (transfer) of industrial property rights, a transfer and assignment agreement needs to be concluded. The content of the agreement needs to define the details of the right, the parties and the scope of the transfer. 

The change shall also be entered in the register, subject to prior completion of the procedure before the SIPO, based on the request submitted by one of the parties (Article 107 of ZIL-1), whereby the SIPO decides on the entry of the change by issuing a decision. If the request for the registration of a change is filed by the party entered in the register as the right-holder, the SIPO shall immediately issue a decision on the entry of the change and register the change in the register (Article 108(3) of ZIL-1). In contrast, if the request is filed by a person not entered in the register as the right-holder, they must submit either the right-holder’s consent for the entry of the requested change or, at their choice, other documentation evidencing the legal basis for the change, either together with the request or within three months from the service of the SIPO’s invitation (Article 108(4) of ZIL-1).

If the SIPO doubts the veracity of the statements in the request for the registration of a change, or if the submitted documentation is in a foreign language, it may require the applicant to submit additional documentation or a Slovenian translation of the submitted documentation within three months from the service of the invitation (Article 108(4) of ZIL-1).

Refer to 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights.

The process of assigning an intellectual property right under Slovenian law takes place in two stages: the conclusion of a legal transaction and the entry of a change in the register, whereby the entry of a new right-holder in the register is not of a constitutive nature. The registration process before the SIPO involves filing a request for the entry of a change into the register. After the filing of a complete request and the payment of the prescribed administrative fee, the SIPO conducts a (formal) examination of the fulfilment of the statutory conditions. If the conditions under Article 108 of ZIL-1 (as described in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights) regarding the formal requirements for the entry of a change in the register are met, the SIPO issues a decision on the entry of the change in the register, and the change is subsequently published in the Office’s Official Gazette.

For the valid licensing of industrial property rights, the conclusion of a licence agreement is required, and this must be in writing. The content of the agreement must define the subject matter of the licence, the duration of the licensing relationship, the territorial validity, and the substantive scope of the right of use.

The change shall be entered in the register before the SIPO on the basis of a request submitted by one of the parties (Article 107 of ZIL-1), whereby the SIPO decides on the entry of the change by issuing a decision. Article 108 of ZIL-1 also applies to the registration of a change of the licensee of an intellectual property right; see 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights.

The licensing duration is directly linked to the duration of the right itself, meaning that a licence cannot survive the expiry of the validity of, for example, the patent to which it relates.

A patent may be licensed in whole or in part for the entire territory of the Republic of Slovenia or part of its territory. A licence may be exclusive or non-exclusive. The same applies to the patent application.

Refer to 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights.

The procedure for licensing an intellectual property right begins with concluding a written licence agreement and continues with the entry of the change in the register. In licensing an intellectual property right, the effect of the entry of the change in the register is the same as when a new right-holder is entered in the register – ie, the entry is not of a constitutive nature.

Regarding the procedure for the entry of a change of the licensee in the register before the SIPO, the same applies as for the procedure for the registration of a change of the intellectual property right-holder; therefore, the explanations set out in 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights and 10.2 Procedure for Assigning an Intellectual Property Right also apply with respect to entry of the licence agreement.