Patent Laws and Regulations Kosovo 2024

1. Patent Enforcement

1.1 - Before what tribunals can a patent be enforced against an infringer? Is there a choice between tribunals and what would influence a claimant’s choice?

The Commercial Court of Kosovo has subject-matter jurisdiction to adjudicate all IP-related disputes between the parties (hereafter referred to as “the Court”). The seat of the Court is in the capital, Prishtina.


1.2 - Can the parties be required to undertake mediation before commencing court proceedings? Is mediation or arbitration a commonly used alternative to court proceedings?

According to the Law on Mediation, the Court may refer parties to mediation in any IP-related case. Parties may also voluntarily participate in mediation, and in fact contract-related disputes are most often resolved through alternative dispute resolution mechanisms.


1.3 - Who is permitted to represent parties to a patent dispute in court?

No special rules on representation apply to patent disputes. Parties may opt to represent themselves or decide to be represented by an attorney-at-law experienced in IP disputes.


1.4 - What has to be done to commence proceedings, what court fees have to be paid and how long does it generally take for proceedings to reach trial from commencement?

To commence Court proceedings, the plaintiff will have to file a statement of claim. The prescribed Court fees, as well as supporting evidence, may be submitted subsequently within the prescribed procedural deadlines. An official fee of EUR 50 should be paid in case patent infringement is claimed. In case of damage claims, the official fee may vary depending on the amount claimed, but will not exceed EUR 1,000. It usually takes up to 12 months to reach trial from commencement.


1.5 - Can a party be compelled to disclose relevant documents or materials to its adversary either before or after commencing proceedings, and if so, how?

In principle, the burden of proof is on the party raising the claim to be proved with such evidence. In certain circumstances, however, the Court may compel the other party to disclose or submit materials which are under their possession. Before commencing the proceeding, the plaintiff will need to file a motion for preservation of evidence in which case the plaintiff will have to evidence that their patent has been infringed or threatened to be infringed and that there is a possibility that the evidence at a later stage cannot be obtained or it will become more difficult to obtain it. Once the proceedings have been initiated, the Court may compel a party to disclose a relevant document or material if such a document is relevant for adjudication of the case.


1.6 - What are the steps each party must take pre-trial? Is any technical evidence produced, and if so, how?

A statement of claim and a statement of defence should be filed prior to trial. Parties should also make sure to propose and take all evidence which will be necessary for adjudication of the case.


1.7 - How are arguments and evidence presented at the trial? Can a party change its pleaded arguments before and/or at trial?

The hearing is opened by the judge who first identifies the parties presenting in the hearing as well as the subject-matter dispute. The floor is then left to the plaintiff to submit their statement of claim which is then followed by the defendant’s response. Once the parties complete their submissions, the judge will then administer all of the evidence that was proposed and gathered in the pre-trial. The final section requires submission of the final statements by the parties. In more complex cases, parties will be allowed to submit their final statements in writing within a certain period. Evidence or facts that were not disclosed during the pre-trial cannot be presented during the trial unless the party claiming such an argument or submitting the evidence proves that it was impossible to present those facts or gather such evidence earlier.


1.8 - How long does the trial generally last and how long is it before a judgment is made available?

In more complex cases which would require administration of a large amount of evidence and testimonials, the trial may involve a few hearing sessions. However, in general, the trial is completed within a day. The judgment will usually be rendered and made available to the parties within a 30-day period.


1.9 - Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?

Commercial related disputes in general and IP-related disputes are considered urgent and, therefore, handled with priority. Apart from the urgent nature of the subject matter, the procedural rules provide for no alternative shorter, flexible or streamlined Court procedure.


1.10 - Are judgments made available to the public? If not as a matter of course, can third parties request copies of the judgment?

All Court hearings and judgments are open to the public unless other laws expressly provide that certain matters are not to be publicly disclosed. The Court publishes its judgments within 60 days albeit redacted.


1.11 - Are courts obliged to follow precedents from previous similar cases as a matter of binding or persuasive authority? Are decisions of any other jurisdictions of persuasive authority?

Judges adjudicating matters within First Instance Chambers of the Court are not obliged to follow precedents from previous similar cases as a matter of binding authority. In practice, however, First Instance Chambers choose to rely on and follow the decisions of the Second Instance Chamber of the Court.


1.12 - Are there specialist judges or hearing officers, and if so, do they have a technical background?

Judges of the Commercial Court are expected to have more comprehensive knowledge and experience in commercial law in general. However, judges are not required to have a technical background.


1.13 - What interest must a party have to bring (i) infringement, (ii) revocation, and (iii) declaratory proceedings?

Infringement proceedings – the patent holder or the exclusive licensee may initiate legal actions.
Revocation proceedings – any person can initiate revocation/invalidation proceedings before the Industrial Property Agency (IPA).
Declaratory proceedings – can be initiated under two circumstances. First, if specifically provided for in the relevant law; the Law on Patents provides no such option. Second, if the party initiating declaratory proceedings has an interest that the Court decides on this matter.


1.14 - If declarations are available, can they (i) address non-infringement, and/or (ii) claim coverage over a technical standard or hypothetical activity?

In a declaratory proceeding, the party may only request to confirm the existence or non-existence of a right.


1.15 - Can a party be liable for infringement as a secondary (as opposed to primary) infringer? Can a party infringe by supplying part of, but not all of, the infringing product or process?

Patent holders can prevent third parties not having their consent from offering and supplying the product constituting an essential element of the patented invention, if the offeror or supplier knew or ought to have known from the circumstances of the case that such product is intended for exploitation of a patented invention. Offering or supplying staple products is exempt from infringement.


1.16 - Can a party be liable for infringement of a process patent by importing the product when the process is carried on outside the jurisdiction?

A party importing to Kosovo a product produced by infringement of a patented process carried outside the country will be liable for infringement.


1.17 - Does the scope of protection of a patent claim extend to non-literal equivalents (a) in the context of challenges to validity, and (b) in relation to infringement?

The scope of patent protection is defined by patent claims. However, the content of patent claims is supported by the description of the invention. Therefore, protection provided by a patent should not be limited to complete or identical infringement of patent claims.


1.18 - Can a defence of patent invalidity be raised, and if so, how? Are there restrictions on such a defence e.g. where there is a pending opposition? Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?

A defence of patent invalidity can be raised by the defendant during the Court proceedings. The IPA has competence to decide on the validity of a patent. Therefore, if raised during infringement proceeding, the Court will stay the proceedings waiting for the decision from the IPA.


1.19 Is it a defence to infringement by equivalence that the equivalent would have lacked novelty or inventive step over the prior art at the priority date of the patent (the “Formstein defence”)?

Neither the Law on Patents nor the case law established thus far answers this question.


1.20 - Other than lack of novelty and inventive step, what are the grounds for invalidity of a patent?

If granted, a patent shall be declared invalid:

  1. For a subject that is not patentable under articles 7 to 14 of the Law on Patents, respectively, the invention is not new, lacks an inventive step, is not applicable in the industry or the subject matter is excluded from patentability.
  2. For an invention which is not sufficiently disclosed in a manner that can be performed by a person skilled in the art.
  3. The subject matter was extended beyond the content of the patent application as filed or, if the patent was granted based on a divisional application, beyond the content of the earlier application as filed.


1.21 - Are infringement proceedings stayed pending resolution of validity in another court or the Patent Office?

The Court may stay the proceedings awaiting the decision on validity from the IPA.


1.22 - What other grounds of defence can be raised in addition to non-infringement or invalidity?

Apart from non-infringement and invalidity, the following acts are exempted from infringement:

  1. Private and non-commercial exploitation of the invention.
  2. Acts carried out for research, development and experimental purposes.
  3. Preparation of a medicine in a pharmacy.
Other defences may include:
  1. Prior user rights.
  2. Exhaustion of rights.
  3. Statute of limitation.


1.23 - (a) Are preliminary injunctions available on (i) an ex parte basis, or (ii) an inter partes basis? In each case, what is the basis on which they are granted and is there a requirement for a bond? Is it possible to file protective letters with the court to protect against ex parte injunctions? (b) Are final injunctions available? (c) Is a public interest defence available to prevent the grant of injunctions where the infringed patent is for a life-saving drug or medical device?

  1. Preliminary injunctions are available on an ex parte as well as inter partes basis. The Court may grant an injunction provided the plaintiffs prove with sufficient degree of certainty that they are the patent holders and that their patent has been infringed or threatened to be infringed. The injunctions should also be fair, equitable, proportionate and affordable. The Court may grant an ex parte injunction only if the patent holder proves that by acting otherwise, the injunction would not be effective, or any further delay would cause them irreparable damages. The Court may subject the grant of an injunction with a bond deposit. Filing of protective letters is not prescribed as an option
  2. Final injunctions are available and will be granted only if the plaintiff succeeds on the merits of the case.
  3. The Court may grant a compulsory licence if the exploitation of a patented invention is necessary in an emergency – national security, protection of the public interest in the field of health, food supply, environmental protection, and improvement, among others. That said, provided other requirements for grant of a compulsory licence are fulfilled, we understand that it would be possible to invoke a public interest defence.


1.24 - Are damages or an account of profits assessed with the issues of infringement/validity or separately? On what basis are damages or an account of profits assessed? Are punitive/flagrancy damages available?

In principle, damages are assessed along with infringement/validity. However, it is possible and in fact recommended to request for separation of proceedings.
Damages are assessed considering all relevant aspects, such as adverse economic consequences, including lost profits, any unjust profit of the infringer and other aspects such as economic factors and the moral prejudice caused to the patent holder.
The Law on Patents also provides for punitive damages.


1.25 - How are orders of the court enforced (whether they be for an injunction, an award of damages or for any other relief)?

Preliminary injunctions are enforced by the Court itself. An award for damages or a judgment on the merits is enforced, if not voluntarily by the debtor, through a request for compulsory execution of the judgment with a licensed enforcement agent.


1.26 - What other form of relief can be obtained for patent infringement? Would the tribunal consider granting cross-border relief?

The Commercial Court does not grant cross-border relief.
When initiating the matter with the Court, the patent holder may ask for relief to:

  1. Confirm infringement and cease ongoing and future infringement acts.
  2. Order seizure and destruction of infringing products.
  3. Claim damages.
  4. Request publication of the Court judgment.

Seizure and destruction of goods may be replaced with monetary compensation.


1.27 - How common is settlement of infringement proceedings prior to trial?

It is relatively common for all IP-related dispute cases to be settled prior to trial.


1.28 - After what period is a claim for patent infringement time-barred?

Patent infringement claims are time-barred after three years from the date the right holder became aware of the infringement and the infringer, and no later than five years from the date the infringement occurred.


1.29 - Is there a right of appeal from a first instance judgment, and if so, is it a right to contest all aspects of the judgment?

The judgment from the First Instance Chambers can be appealed to the Second Instance Chambers of the Commercial Court within a deadline of seven days from the receipt of the decision. A judgment can be appealed on the grounds of substantial violation of procedural provisions, wrongful application of the substantive law and erroneous or incomplete determination of the factual situation.


1.30 - What effect does an appeal have on the award of: (i) an injunction; (ii) an enquiry as to damages or an account of profits; or (iii) an order that a patent be revoked?

Injunction – an appeal will have no suspensive effect on the decision to grant an injunction. The opponent may, however, request to stay the enforcement of the decision in specific situation.
Enquiry as to damages or an account profit – damages are granted through a judgment on the merits. An appeal filed against a final judgment will have a suspensive effect in the meaning that the first instance judgment will not be considered final and enforceable.
An order for revocation – a decision to revoke or invalidate a patent is rendered in the administrative procedure, respectively, by the IPA. If an appeal is filed to the Commission of Appeals against the decisions of the IPA, the enforcement of the decision will be suspended. The unsatisfied party can then request judicial review by the Commercial Court of the decision rendered in the administrative proceedings. The motion for judicial review will not have a suspensive effect unless the party specifically requested from the Court to stay the enforcement of the administrative decision pending the final decision from the Court.
1.31 Is an appeal by way of a review or a rehearing? Can new evidence be adduced on appeal?
Second Instance Chambers generally decide matters by way of review through a panel of three judges. In specific situation, Second Instance Chambers may schedule a hearing. New evidence can be submitted only if the party proves that they were not able to submit this evidence during the first instance trial.


1.32 - How long does it usually take for an appeal to be heard?

It may take 12–18 months from the filing of an appeal to rendering of the decision.


1.33 - How many levels of appeal are there? Is there a right to a second level of appeal? How often in practice is there a second level of appeal in patent cases?

There is one level of appeal. Judgments from the Second Instance Chamber of the Commercial Court are final and enforceable. An extraordinary appeal will be accepted by the Supreme Court only if the dispute value is EU 30,000 or higher.


1.34 - What are the typical costs of proceedings to a first instance judgment on: (i) infringement; and (ii) validity? How much of such costs are recoverable from the losing party? What are the typical costs of an appeal and are they recoverable?

The official fee depends on the amount of damages claimed. It will not in any case exceed the maximum of EUR 1,000. The attorney fees depend on the complexity of the case. In a patent infringement case involving an international element, i.e. the patent holder is a foreign company, the attorney may charge a service fee equivalent to those in the country of the client. Litigation costs should be specified by the end of the trial and will be awarded against the defeated party.


1.35 - For jurisdictions within the European Union: What is the status in your jurisdiction on ratifying the Unified Patent Court Agreement and preparing for the unitary patent package? For jurisdictions outside of the European Union: Are there any mutual recognition of judgments arrangements relating to patents, whether formal or informal, that apply in your jurisdiction?

This is not applicable in our jurisdiction.


2. Patent Amendment
2.1 - Can a patent be amended ex parte after grant, and if so, how?

After grant, the patent holder will be obliged to submit the evidence on patentability by the expiry of the ninth year of the patent term. The evidence on patentability will be accepted if issued for the same invention by the European Patent Office or one of the national and international offices which, by virtue of the Patent Cooperation Treaty, have the status of International Preliminary Examining Authority for international patent applications. If based on the submitted evidence, the IPA finds that the invention meets the requirements conditions partly, the IPA shall issue a decision on partial grant of the patent and amend the granted patent accordingly.



2.2 - Can a patent be amended in inter partes revocation/invalidity proceedings?

A patent can be amended in revocation/invalidity proceedings only if the IPA concludes that the invalidation grounds are based only regarding some claims. In this case, the IPA will issue a decision on partial invalidation of the patent as well as, upon payment of the prescribed fee, re-issuing the amended patent specification.



2.3 - Are there any constraints upon the amendments that may be made?

The amendments made after the filing date is assigned should not extend the subject matter of the invention as initially filed.



3. Licensing
3.1 - Are there any laws which limit the terms upon which parties may agree a patent licence?

The Law on Protection of Competition, in particular the rules on the anti-competitive agreements and the abuse of dominant position are relevant to patent licensing.


3.2 - Can a patent be the subject of a compulsory licence, and if so, how are the terms settled and how common is this type of licence?

A patent can be subject to a compulsory licence if:

  1. the patent holder has not exploited the patented invention in the territory of Kosovo; and
  2. the patented invention is necessary in situations of urgency such as national security, public interest protection in the field of health, food supplying, environmental protection and improvement, specific commercial interest; or
  3. when it is necessary to remedy a practice determined after judicial or administrative process to be anti-competitive.

A request for the grant of a compulsory licence can be filed only after the expiration of four years as of the filing date of a patent application or after the expiration of a period of three years from the grant date. A compulsory licence shall be non-exclusive and non-transferable, and its scope and duration shall be exclusively limited to the purpose for which it was authorised. To the best of our knowledge, there are no cases of requests for granting a compulsory licence filed with the Court.


4. Patent Term Extension
4.1 - Can the term of a patent be extended, and if so, (i) on what grounds, and (ii) for how long?

The patent term can be extended beyond 20 years only for inventions related to pharmaceuticals and plant products which are subject to market authorisation. A supplementary protection certificate (SPC) can be granted for another period of up to five years.


5. Patent Prosecution and Opposition
5.1 - Are all types of subject matter patentable, and if not, what types are excluded?

Under the Law on Patents, the following cannot be patented:

  • Discoveries, scientific theories and mathematical methods.
  • Aesthetic creations.
  • Schemes, rules and methods for performing mental acts, playing games or doing business.
  • Computer programs.
  • Presentations of information.
  • Inventions – the exploitation of which would be contrary to public order or public morality.

  • The following are also excluded from patent protection:
  • Processes for cloning human beings or modifying the germ line genetic identity of human beings.
  • Uses of human embryos for industrial or commercial purposes.
  • Processes for modifying the genetic identity of animals.
  • Inventions that concern animal breeds and plant varieties, and essentially biological processes to produce plants or animals.
  • The human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene.
  • Inventions that concern diagnostic or surgical methods or methods of treatment practised directly on the human or animal body, except for the products, in particular substances or compositions used in such methods.
  • Inventions that concern substances obtained through internal nuclear transformations for military purposes.

  • 5.2 - Is there a duty to the Patent Office to disclose prejudicial prior disclosures or documents? If so, what are the consequences of failure to comply with the duty?

    No such requirement is provided in the Law on Patents.


    5.3 - May the grant of a patent by the Patent Office be opposed by a third party, and if so, when can this be done?

    Filing of an opposition against a pending patent application is not possible. The IPA publishes a patent only after grant. Therefore, it is possible to only request invalidation of a patent.


    5.4 - Is there a right of appeal from a decision of the Patent Office, and if so, to whom?

    Decisions issued by the IPA can be appealed within a 30-day deadline to the Commission of Appeals. Decisions of the second instance administrative body are subject to judicial review by the Commercial Court, Department for Administrative Matters.


    5.5 - How are disputes over entitlement to priority and ownership of the invention resolved?

    Disputes over entitlement to priority are resolved through the first to file rule in invalidation proceedings. Ownership disputes are resolved in Court.


    5.6 - Is there a “grace period” in your jurisdiction, and if so, how long is it?

    An invention that was already part of the state of the art for a period of up to six months before the filing of a patent application will also be considered new if its disclosure was due to or was a consequence of evident abuse or the invention was displayed by the applicants at an exhibition.


    5.7 - What is the term of a patent?

    A patent is granted for a period of 20 years and is subject to annuity payments as of the third year of protection. By the expiry of the ninth year of protection, the patent holder is obliged to submit the evidence on patentability. If such evidence is not submitted, the patent will expire on the 10th year.


    5.8 - Is double patenting allowed?

    Double patenting is not allowed.


    5.9 - For jurisdictions within the European Union: Once the Unified Patent Court Agreement enters into force, will a Unitary Patent, on grant, take effect in your jurisdiction?

    This is not applicable in our jurisdiction.


    6. Border Control Measures
    6.1 - Is there any mechanism for seizing or preventing the importation of infringing products, and if so, how quickly are such measures resolved?

    Seizing or preventing the importation of infringing products is carried out either ex officio by Customs or upon the filing of an application by the patent holder.
    If the importer does not object to destruction of the goods, the patent holder will follow a simplified procedure for the destruction of the goods. In such cases, the goods are usually destroyed within 30 days as of the notification on detention of the goods by Customs. If the importer explicitly objects to the destruction of the goods, the patent holder is obliged to initiate legal actions with the Commercial Court to confirm patent infringement and obtain an order for destruction. Customs will not release those goods to circulation until a final Court decision is rendered.


    7. Antitrust Law and Inequitable Conduct
    7.1 - Can antitrust law be deployed to prevent relief for patent infringement being granted?

    The provisions of the Anti-trust law can be deployed to prevent relief for patent infringement; however, to the best of our knowledge, no such mechanism has been used until now.


    7.2 - What limitations are put on patent licensing due to antitrust law?

    Patent licensing and all other agreements are subject to anti-trust rules just as any other contract.


    7.3 - In cases involving standard essential patents, are technical trials on patent validity and infringement heard separately from proceedings relating to the assessment of fair reasonable and non-discriminatory (FRAND) licences? Do courts set FRAND terms (or would they do so in principle)? Do courts grant FRAND injunctions, i.e. final injunctions against patent infringement unless and until defendants enter into a FRAND licence?

    Neither the Law on Patents nor the case law established thus far answers this question.


    8. Current Developments
    8.1 - What have been the significant developments in relation to patents in the last year?

    With the entry into force of the new Law on Patents in January 2022, the provisions related to SPCs entered into force for the first time. With the new bylaw also enacted, holders of inventions related to pharmaceuticals and plant products may file for an SPC.


    8.2 - Are there any significant developments expected in the next year?

    No significant developments are expected in the next year.


    8.3 - Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

    Patents and disputes related thereto are not very frequent in Kosovo. Therefore, general practice or enforcement trends are yet to become evident.

    This chapter first appeared in Comparative Legal Guides - Patents 2024.

    Published : 29 November 2023


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