Pages 244-252

Impact of the European Patent Convention on national law

On 1 July 2009, San Marino became a contracting state to the EPC. Provisions implementing the EPC and bringing San Marinese patent law into line with the EPC are contained in Decree Law No. 76 of 22 June 2009 ("Provisions for the application of the European Patent Convention") and in the Consolidated Act on Industrial Property (Law No. 79 of 25 May 2005, last amended by the Law of 20 July 2005). Further amendments to the national provisions governing the functioning of the EPC system were made in 2010 by Delegated Decree No. 78 of 20 April 2010 (Fees for patents, trademarks and designs).

A. National legal bases

1. Law No. 79 of 25 May 2005 (Consolidated Act on Industrial Property), published in Official Journal 2005, No. 5, Part 2 (hereinafter: IPA)

2. Law No. 114 of 20 July 2005 (Amendments to Law No. 79 of 25 May 2005), published in Official Journal 2005, No. 7, Part 1 (hereinafter: Law No. 114/2005)

3. Delegated Decree No. 78 of 20 April 2010 (Fees for patents, trademarks and designs), published in Official Journal 2010, No. 4 (hereinafter: Fees Decree)

4. Decree Law No. 76 of 22 June 2009 (Provisions for the application of the European Patent Convention), published in Official Journal 2009, No. 3 (hereinafter: Decree Law No. 76/2009).

B. Application of the EPC in San Marino

The main provisions relating to the application of the EPC in San Marino are summarised below.

The information is structured in the same way as in the EPO brochure "National law relating to the EPC".

I. Filing of European patent applications (Article 75 EPC, Article 3 Decree Law No. 76/2009)

A European patent application, other than a European divisional application, may be filed with either the EPO or the State Office for Patents and Trademarks (USBM) of the Republic of San Marino:

Ufficio di Stato Brevetti e Marchi (USBM)
Repubblica di San Marino
Via 28 Luglio, 196
47893 Borgo Maggiore B4

Rep. San Marino

Tel. +378 88 29 82

Fax +378 88 38 56

[email protected]

www.usbm.sm

A European patent application may be filed with the USBM in any of the languages pursuant to Article 14(2) EPC. Filing by fax is permitted.

II. A. Rights conferred by a European patent application after publication (Articles 67 and 93 EPC, Article 4(2) Decree Law No. 76/2009, Article 21(7) IPA)

Under Article 4(2) Decree Law No. 76/2009, a published European patent application designating the Republic of San Marino confers upon the applicant provisional protection corresponding to that enjoyed by national patent applications under Article 21(7) IPA - rights identical to those conferred by a national patent (cessation of infringement, redress in respect of its consequences, surrender of unlawfully obtained profits and compensation for damages in accordance with Articles 118 and 121 IPA) - as from the date on which the applicant has notified an Italian translation of the published claims to the assumed infringer.

II.B. Translations for obtaining provisional protection (Articles 67(3) and 70(4)(b) EPC, Articles 4(2) and 6(5) Decree Law No. 76/2009)

A translation of the claims must be drawn up in Italian and provided to the assumed infringer.

The applicant for or proprietor of a European patent may, at any time, correct the translation and communicate it to the assumed infringer. Regarding the rights of a prior user where a translation is corrected, Article 6(5) Decree Law No. 76/2009 provides for the safeguards mentioned in Article 70(4)(b) EPC.

III. Translation requirements after grant (Article 65 EPC, Article 5 Decree Law No. 76/2009, Fees Decree Table 1)

A European patent has effect in the Republic of San Marino only if its proprietor files with the USBM an Italian translation of the description and claims of the patent as granted by the EPO within six months of the date on which the mention of grant is published in the European Patent Bulletin (Article 5(2) Decree Law No. 76/2009).

If, as a result of an opposition or a request for limitation filed with the EPO, the European patent is maintained in amended form, the proprietor of the patent must supply to the USBM, within six months from the publication of the EPO's decision, an Italian translation of the amended claims (Article 5(4) Decree Law No. 76/2009).

The translation must be signed by the professional representative and accompanied by a declaration, signed by the proprietor or the representative, that the translation corresponds to the original text (Article 5(2) Decree Law No. 76/2009).

Documents meeting the formal requirements of Rule 49(2) to (12) EPC are accepted.

Upon filing the translation (comprising the title of the invention, the description, any drawings, and the patent claims) in quadruplicate, the patentee must also pay the fee for publication of the translation. According to Fees Decree Table 1 the patentee must pay EUR 100, plus EUR 15 for the 21st and each subsequent page of the translation. The total sum has to be paid within six months of the date on which the mention of grant of the European patent is published in the European Patent Bulletin. The USBM makes the translation available for inspection in the USBM's reading room and publishes a mention of the translation in the Official Bulletin (Article 5(5) Decree Law No. 76/2009).

The patentee may, at any time, file a corrected translation (in two copies), subject to payment of the above-mentioned publication fee (Article 5(4) Decree Law No. 76/2009).

Applicants not having their domicile or headquarters in the Republic of San Marino must appoint a professional representative who has been entered on the list of representatives maintained by the USBM. An address for correspondence in the Republic of San Marino must be given (Article 92 IPA as amended by Law No. 114/2005, Article 8 Decree Law No. 76/2009).

In the event of failure to file with the USBM the Italian translation of the description and claims, or to pay the prescribed publication fee, the patent is deemed void ab initio in the Republic of San Marino (Article 5(6) Decree Law No. 76/2009).

IV. Authentic text of a European patent application or European patent (Article 70 EPC, Article 6 Decree Law No. 76/2009)

The translation is the authentic text of the European patent application or patent if the scope of protection is narrower than in the language of proceedings (Article 6(2) Decree Law No. 76/2009); this does not apply, however, in revocation proceedings (Article 6(3) Decree Law No. 76/2009).

The applicant for or proprietor of a European patent may, at any time, supply a corrected translation (in two copies). The corrected translation has effect with respect to third parties after it has been made available to the public by the USBM or communicated to the assumed infringer (Article 6(4) Decree Law No. 76/2009). Regarding the rights of a prior user where a translation is corrected, Article 6(5) Decree Law No. 76/2009 provides for the safeguards mentioned in Article 70(4)(b) EPC.

V. Payment of renewal fees for European patents (Article 141 EPC, Article 33(3) IPA, Article 7 Decree Law No. 76/2009, Fees Decree Table 1)

Renewal fees in respect of European patents requesting protection in the Republic of San Marino must be paid to the USBM for each patent year following the year in which the EPO publishes the mention of the grant of the European patent. Each patent year starts from the anniversary of the filing date of the patent application. The renewal fees for each subsequent patent year are due on the last day of the month in which the preceding patent year expires (Article 33(3) IPA).

In case of failure to observe the time limit referred to above, the USBM issues a reminder, and renewal fees may still be paid within a period of grace of six months after the due date, provided that a surcharge of 25% of the fee due is paid at the same time. The USBM notifies the patent proprietor of any failure to pay a renewal fee within the period of grace, and records this fact in the Patent Register, indicating that the patent has lapsed because of failure to pay the renewal fee. This notice of lapse is subsequently published in the Official Bulletin (Article 33(3) IPA).

The patent owner may apply for re-establishment with respect to the time limits mentioned above, provided he does so within two months after USBM's communication regarding expiry of the time limit but not later than six months after expiry of the non-observed time limit (Article 89(2) IPA).

Applicants not having their domicile or headquarters in the Republic of San Marino must appoint a professional representative who has been entered on the list of representatives maintained by the USBM. An address for correspondence in the Republic of San Marino must be given (Article 92 IPA as amended by Law No. 114/2005, Article 8 Decree Law No. 76/2009).

Renewal fees are currently as follows (Fees Decree Table 1):

plus any bank charges.

VI. Conversion of European patent applications into national patent applications (Articles 135 and 137 EPC, Article 9 Decree Law No. 76/2009, Fees Decree Table 1)

San Marinese law provides for conversion into a national patent application in the case of non-compliance with the time limit referred to in Article 14(2) in conjunction with Rule 6(1) EPC or where the European patent application is deemed to be withdrawn under Article 77(3) EPC. Within two months from the date of receipt of the USBM's invitation, the applicant must pay the filing fee, provide, if he has not already done so, an address for correspondence in San Marino and supply an Italian translation of the original text of the European patent application and, where appropriate, of the application as amended during proceedings before the EPO.

If the applicant does not have his domicile or headquarters in the Republic of San Marino, these procedural steps must be taken by a professional representative who has been entered on the list of representatives maintained by the USBM. An address for correspondence in the Republic of San Marino must be given (Article 92 IPA as amended by Law No. 114/2005, Article 8 Decree Law No. 76/2009).

VII. Payment of fees (Fees Decree)

All fees may be paid by transfer or payment into a Giro account.

The USBM holds three such accounts:

(1) Banca di San Marino – Agenzia Città 1

Account No. 5500419

IBAN: SM91 R 08540 09804 000550041910

SWIFT: ICRAITRR

(2) BANCA AGRICOLA COMMERCIALE – Filiale Tavolucci

Account No. 703262

IBAN: SM95 C030 3409 809 000020703262

SWIFT: BASMSMSMAEIBDEFX

(3) Giro account (CCP) No.11751294

IBAN: IT87 I 07601 13200 000011751294

SWIFT: BPPIITRRXXX

In case of a transfer, the effective date of payment is the date on which the sum was credited to the account in question. In case of payment into the account, it is the date marked by postal date stamp on the payment form.

Fees may also be paid in cash at the USBM; in this case, the effective date of payment is the date stamped on the payment form handed in at the USBM. Lastly, fees may also be paid by postal money order; the effective date of payment in this case is the date marked by the postal date stamp (at an Italian post office) on the postal money order.

VIII. Registering a transfer, licences and other rights in respect of a European patent in the national patent register (Articles 93 and 94 IPA, Fees Decree Table 4)

To register a transfer of rights or licences in respect of a European patent, the interested party has to submit the document recording the transfer of rights or a licence agreement (original or a duly certified copy) to the Registry Office of San Marino and pay stamp duty and a registration tax.

Thereafter, the interested party must file a written request with the USBM and submit the document regarded as providing grounds for the USBM to make an entry in its Register (Articles 93 and 94 IPA). To file the request, applicants do not need to use any special form. However, they are obliged to pay a special fee of EUR 120 (Fees Decree Table 4). Furthermore, all foreign documents should contain an apostille under the Hague Convention of 5 October 1961 and must be accompanied by a translation certified by a sworn translator.

Applicants not having a domicile or their headquarters on the territory of San Marino are required to act in proceedings before the USBM through a professional representative who has been entered on the list of representatives maintained by the USBM. An address for correspondence in the Republic of San Marino must be given (Article 92 IPA as amended by Law No. 114/2005, Article 8 Decree Law No. 76/2009).

The following entries and data are recorded in the Register by the USBM: transfers of rights by transaction or by operation of law, and licences. The registration of transfers and licences has declaratory effect vis-à-vis third parties.

A transfer registered by the EPO under Rule 85 EPC is not recognised.

IX. Miscellaneous

1. Simultaneous protection (Article 139(3) and 140 EPC)

Simultaneous protection by national patents according to Article 139(3) EPC is excluded. To the extent that it protects the same invention, the national patent ceases to have effect from the date on which:

(a) the period for filing an opposition to the European patent has expired without any opposition being filed

(b) opposition proceedings are concluded with a decision to maintain the European patent.

2. Territorial field of application of the EPC (Article 168 EPC)

The EPC applies in the territory of the Republic of San Marino.

C. Other international treaties

San Marino has been a party to the Paris Convention for the Protection of Industrial Property since 4 March 1960 and bound by the Stockholm Act of this Convention since 26 June 1991.

On 26 June 1991, San Marino became a party to the WIPO Convention.

The Patent Cooperation Treaty took effect in San Marino on 14 December 2004.

Lastly, San Marino signed the Patent Law Treaty on 10 October 2000.