LAW n. 79 of 25 May 2005
REPUBLIC OF SAN MARINO
INDUSTRIAL PROPERTY CONSOLIDATION ACT
We the Captains Regent
of the Republic of San Marino
Hereby promulgate and order the publication of the following law approved by the Great and General Council in its sitting on 25 May 2005.
PREAMBLE
For the purpose of this Industrial Property Consolidation Act, indicates both the San Marino patent-rights established through patenting (patents, utility models, vegetable varieties) or through registration (marks, designs and models) and the rights related to trade names, indications of origin, geographical names, distinctive signs different from registered marks, confidential trade information.
This Single Text also regulates protection against acts of unfair competition.
Besides the substantial part, this Single Text sets forth the specific discipline to be followed with a view to guaranteeing preventive measures for the protection of the above-mentioned rights.
TITLE I
PATENTS
Article 1
(Definition of “patent” and “invention”)
For the purposes of this Single Text:
Article 2
(Subject-matter of the patent and exclusions from patentability)
1. An invention is patentable if it is new, involves an inventive step and is susceptible of industrial application.
2. Under Article 1, the following, in particular, shall not be regarded as inventions:
a) discoveries, scientific theories and mathematical methods,
b) aesthetic creations;
c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
d) presentations of information.
3. The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to therein only to the extent to which an application or a patent relates to such subject-matter or activities as such.
4. The following inventions are not patentable:
a) inventions concerning methods for surgical or therapeutic treatment or diagnostic methods practiced on humans or animals. This provision shall not apply to products, in particular substances or compositions of substances, for use in such methods;
b) inventions the use of which would be contrary to public order or morality; the use of an invention shall not be deemed contrary to public order or morality merely because it is prohibited by law or regulation; to this end, the following, in particular, shall not be patentable:
I) processes for cloning human beings;
II) processes for modifying the genetic identity of human sex cells;
III) use of human embryos for industrial or commercial purposes;
IV) processes for modifying the genetic identity of animals, which are likely to cause them suffering without any substantial medical benefit to man or animal, including animals resulting from such process;
c) inventions concerning animal varieties or essentially biological processes for the production of animals varieties; this provision shall not apply to microbiological processes and the products thereof;
d) inventions concerning the human body, at all of 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.
5. An essentially biological process means a process, which consists entirely of natural phenomena such as crossing or selection.
6. Biological material, which is isolated from its natural environment or produced by means of a technical process, may be the subject of an invention, even if it previously occurred in nature.
7. For the purpose of this Single Text:
a) “biological material” means material that contains genetic information and can reproduce itself or be reproduced in a biological system;
b) “microbiological process” means any process involving, performed upon or resulting in microbiological material.
Article 3
(Novelty)
1. An invention shall be new if it does not form part of the state of the art.
2. The state of the art shall be held to comprise everything made available to the public anywhere in the world by publication or oral disclosure or use, prior to the date of filing of the application claiming the invention or, where applicable, prior to the date of priority.
3. For the purposes of paragraph 2 above, any disclosure shall be deemed relevant only if it is adequate for an unspecified number of people to understand the content of the inventive teaching.
4. For the purposes of paragraph 2 above, any disclosure to the public of the invention shall not be taken into consideration if it occurred in the six months preceding the date of filing or, where applicable, the date of priority of the application and if it was due to, or in consequence of, related actions by the applicant or his legal predecessor or a related abuse by a third party in respect of the applicant or his legal predecessor.
5. To determine the novelty of an invention, the elements of the state of the art can be considered only individually and not in combination with one another.
6. The state of the art also includes the content of the patent applications filed in the Republic of San Marino, or of other patent applications having effect in the same State, in particular Italian patent applications, protected by virtue of Article 43 of the Convention on Friendship and Good Neighbourhood between San Marino and Italy of 31 March 1939, as they were filed, if their date of filing precedes that mentioned in paragraph 2 above and if they were published or disclosed to the public on or after this date.
7. The provisions set forth in the preceding paragraphs shall not exclude from patentability a substance or composition of substances already forming part of the state of the art for the purposes of using it in one of the methods specified in Article 2, paragraph 4, letter a) above, provided that its use in any such methods does not form part of the state of the art.
8. Any disclosure to the public through display of the invention at an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions, done at Paris on November 22, 1928, and subsequent amendments, shall not be taken into consideration, provided that the invention has not been made available to the public within six months prior to the filing of the application. The Director of the Patents and Trade Marks State Office may designate other official exhibitions to which these provisions shall apply.
Article 4
(Inventive step)
1. An invention shall be considered as involving an inventive step if, having regard to the state of the art relating to the application claiming the invention, it would not be obvious to a person normally skilled in the art.
2. For the purposes of determining the inventive step, the document of the state of the art referred to in the preceding Article 3, paragraph 5, shall not be taken into consideration.
Article 5
(Industrial application)
1. An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry.
2. The term “industry” may be understood in the broadest sense; it includes any activity also in the field of handicraft, agriculture, fishery and services.
Article 6
(Right to a patent)
1. The right to a patent shall belong to the inventor or his successor in title. If two or more persons have created an invention jointly, the right to the patent shall be regulated by this Single Text, unless otherwise agreed.
2. If two or more persons have created an invention independently of each other, the right to the patent shall belong to the inventor, or his successor in title, who filed the application with the earliest date or, where applicable, with the earliest date of priority, provided that the patent application was published.
3. For the purposes of the procedures before the Patents and Trade Marks State Office, it shall be presumed that the applicant is the holder of the right to the patent and that he is authorised to exercise such right.
4. The patent applicant may designate in his application one or more persons on whom he confers the rights in the patent, specifying the nature of such rights.
5. Such designation shall be entered in the Patent Register and on the patent itself, provided that the acceptance of the designated person is reported to the Patents and Trade Marks State Office prior to the grant of the patent.
6. If two or more persons have created an invention jointly, each inventor has an undivided equal right to the patent and its exploitation, unless otherwise agreed, and such rights are regulated by the legal provisions on joint ownership.
7. Unless otherwise agreed, the assignment of patent rights shall impose on the assignee the obligation to pay the fees due; if rights are assigned to several persons, either jointly or proportionally, all of them shall be jointly liable to the payment of such fees.
8. Any benefits which foreigners presently enjoy, have enjoyed or will enjoy in the territory of the under international Conventions with regard to patents shall be extended to San Marino citizens.
9. Employees of the Patents and Trade Marks State Office may not, either directly or indirectly, apply for patents, become assignees thereof or in any way be interested in patents, until two years after the date of termination of their employment at the Office.
Article 7
(Inventions made by employees)
1. When an invention is developed in execution of a commission or an employment contract, the rights deriving from the invention shall belong, in the absence of contractual provisions to the contrary, to the person having commissioned the work or to the employer.
2. However, the employee shall have a right to equitable remuneration, taking into account his salary, the economic value of the invention and any benefit derived from the invention by the employer.
3. If the conditions provided for in paragraphs 1 and 2 above do not exist, but the industrial invention falls within the field of activity of the private enterprise or the public administration in which the inventor is employed, the employer shall have a right of pre-emption with regard to the exclusive or non-exclusive use of the invention or to the acquisition of the patent, as well as the right to apply for or acquire patents for the same invention in foreign countries, against payment of a royalty or price to be fixed after deduction of an amount equivalent to the value of such assistance as the inventor may have received from the employer in the development of the invention.
4. In the case provided for in paragraph 3 above, the inventor shall have the duty to inform the employer of the invention, f the filing of the patent application and of the grant of the patent. The employer may exercise the right of pre-emption within three months from receipt of the notice informing him of the grant of the patent.
5. The relationship ensuing from the exercise of the right of pre-emption provided for in paragraphs 3 and 4 above shall terminate de jure if the fixed compensation is not paid in full by the date on which it is due.
6. If, in the cases provided for by paragraphs from 3 to 5 above, non agreement can be reached on the compensation, royalty or price, or on the terms and conditions relative thereto, a decision thereon shall be taken by a Board of Arbitration consisting of three members, one to be appointed by each of the parties and the third by the first two, or, in case of disagreement, by the Single Court of the Republic of San Marino.
7. For the purposes of the preceding paragraphs, an industrial invention shall be considered as developed during the performance of an employment contract or relationship when a patent for the invention has been applied for within one year from the date on which the inventor left the service of the private enterprise or public administration in whose field of activity the invention falls.
8. By way of derogation from the preceding provisions, when the employment relationship is with a Public Research Organisation (PRO) having research among its institutional aims, the inventor shall inform the PRO of his/her invention, according to the terms established by the PRO itself, so that the organisation can notify, within two months from receipt of the notice informing it of the invention, its interest in exercising the right to apply for the relevant patent.
9. PROs having research objectives shall establish, within the limits of their own financial resources, appropriate facilities to guarantee the promotion of inventions developed by researchers.
10. The inventor shall have the right to be recognised as the author and is entitled to at least 30% of the proceeds from the economic exploitation of the patent applied for by the PRO.
11. If the PRO has not notified its interest in exercising the right to apply for the patent within the term set forth in paragraph 8 above, or if it has not filed the patent application within four months following notification of its interest, the inventor has the right to file the patent application. In case the PRO has exercised the right to apply for the patent but it has not started to exploit it within two years since the grant of the patent, the inventor shall automatically acquire the right to exploit the invention free of charge and to exercise the patrimonial rights related to such invention.
12. In the assessment of the extension of the territorial scope of protection, the PRO may decide to which Countries it will extend the scope of the priority application. However, the inventor shall have the possibility (at his own expenses) to decide whether the extension shall apply to territories excluded by the PRO. Similarly, with regard to annual renewal fees, the PRO shall not be obliged to continue to pay such fees in Countries, which it is not interested in. However, the inventor shall have the possibility of continuing to pay (at his own expenses) such annual fees. In the cases provided for in the preceding paragraph, the inventor shall be entitled to 70% of the economic benefits deriving from exploitation in the Countries chosen by him, or renewed through the payment of maintenance fees, while the remaining 30% shall in any case be devolved to the PRO.
13. The inventor shall have a right of pre-emption to acquire the patent if the PRO, once the patent has been filed, decides to offer it on the market.
14. If there are several inventors, they are all entitled to be recognised as authors; in this case, the right to obtain at least 30% of the proceeds from the exploitation of the patent shall be equally divided among the authors, unless a different participation in the development of the invention is agreed or established. In this latter case, the division shall be proportional to the contribution made by each author. The Law Commissioner shall be entrusted with the establishment of such entities.
Article 8
(Right to the patent)
1. If a final decision has been taken stating that the right to the patent belongs to a person other than the applicant, that person may, provided that the patent has not yet been granted and within three months after the decision has become final, at his own discretion:
a) prosecute the patent application in his own name, assuming for all purposes the quality of the applicant;
b) file a new patent application, which, as long as its contents do not go beyond those of the first application, shall be effective as of the filing date, or the priority date, of the original application, which shall in any case cease to produce effects;
c) cause the application to be rejected.
2. If the patent has already been granted to a person other than the person entitled to it, the latter may, at his own discretion:
a) cause the patent to be transferred to his name by a decision having retroactive effect;
b) claim nullity of the patent granted to a person not entitled to it.
3. If two years have elapsed from the date of publication provided for by Article 26, paragraph 1 below, and the person entitled to the patent has failed to exercise any of the rights provided for in paragraph 2, letter b) above, any interested person may claim nullity of the patent granted to a person not entitled to it.
Art. 9
(Designation of the inventor)
Art. 10
(Patent applications)
1. A patent application shall be filed with the Patents and Trade Marks State Office and it shall contain a request, a description of the invention and an abstract. The application shall be filed by the inventor or a person acting on his behalf, i.e. his representative.
The application shall be subject to the payment of the prescribed fee.
Art. 11
(Documents to claim priority)
Art. 12
(Description)
Art. 13
(Abstract)
Art. 14
(Technical presentation)
1. The technical presentation shall:
a) indicate first of all the title of the invention, as it is mentioned in the request for the grant of the patent;
b) specify the technical field to which the invention relates;
c) indicate the background art which, as far as known to the applicant, can be regarded as useful in order to understand the invention and, preferably, quote the documents reflecting such art.
d) disclose the invention, as claimed, in such terms that the technical problem, even if it is not expressively stated as such, and its solution can be understood and state any advantageous effects of the invention with reference to the background art;
e) briefly describe the figures in the drawings, if any;
f) indicate precisely, at least one way of implementing the invention for which protection is claimed; where appropriate, it shall give examples and refer to the drawings, if any;
g) indicate explicitly, if it is not clear from the description or nature of the invention, the way in which it is capable of exploitation in industry;
2. The technical presentation must be submitted in the manner and order specified in paragraph 1, unless because of the nature of the invention, a different manner or order would afford a better understanding and a briefer description.
Art. 15
(Form and content of claims)
1. Claims shall define the matter for which protection is sought, considering the technical features of the invention. Whenever necessary, claims shall contain:
a) an introduction dealing with the designation of the subject-matter of the invention and the technical features which are necessary to define the claimed elements but which, in combination, are part of the state of the art;
b) a characterising portion, preceded by the expression “characterised in” or “characterised by”, stating the technical features for which, in combination with the features mentioned in subparagraph a), protection is sought.
2. A patent application may contain more than one independent claim in the same category (product, process, device or use) only if the subject-matter of the invention cannot properly be covered by a single claim.
3. Any claim mentioning the essential features of the invention may be followed by one or more dependent claims, containing all the features of the claims they depend on concerning particular embodiments of that invention.
4. Any dependent claim shall present, if possible at the beginning, a reference to the other claim or claims it depends on and state the additional features for which protection is sought. A dependent claim is also admitted when the claim to which it directly refers is itself a dependent claim. All dependent claims referring to a single previous claim or to several previous claims shall be grouped together to the extent and in the most appropriate way possible.
5. The number of claims must be reasonable, in consideration of the nature of the invention for which protection is sought. If there are several claims, they shall be numbered consecutively in Arabic numerals.
6. The number of claims shall not, except where absolutely necessary, rely on references to the description or drawings, as far as the technical features of the invention are concerned; in particular, they shall not rely on references such as: “as described in the part of the description” or “as illustrated in the figure of the drawings”.
7. Claims must be clear and concise. They must exclusively be supported on the description.
8. If the patent application contains drawings, the technical features mentioned in the claims must, as a rule, be followed by reference signs relating to these features and placed between parentheses, if the understanding of the claim can thereby be increased. These reference signs shall not be considered as limiting the claim.
Art. 16
(Drawings)
a) Drawings shall be executed in durable, black or blue, sufficiently dense and dark, uniformly thick and well-defined lines and strokes, without colourings.
b) Sections shall be indicated by cross-hatching which should not impede the clear reading of the reference signs and leading lines.
c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty. When the scale is given on a drawing, it must be represented graphically.
d) Numbers, letters and reference signs appearing on the drawings shall be simple and clear. Brackets, circles or inverted commas cannot be used in association with numbers and letters.
e) All lines in the drawings shall usually be drawn with drafting instruments.
f) Elements of the same figure shall be in proportion to each other, unless a difference in proportion is indispensable for the clarity of the figure.
g) The height of the numbers and letters shall not be less than 0.32 cm. The Latin and, where customary, the Greek alphabets shall be used for the letters on drawings.
h) The same sheet of drawings may contain several figures. When figures drawn on two or more sheets are intended to form one whole figure, the figures on the several sheets shall be so arranged that the whole figure can be assembled without concealing any part of the partial figures. Figures shall preferably be arranged in an upright position, on one or more sheets, clearly separated from one another, without wasting space. Figures shall be numbered consecutively in Arabic numerals, independently of the numbering of the sheets.
i) Reference signs shall appear on drawings only if they are mentioned in the description and claims and vice versa. The same elements, when denoted by reference signs, shall be denoted by the same signs throughout the application.
4. The drawings shall nor contain explanations, except, when absolutely necessary, a single word or words such as “water”, “steam”, “open”, “closed”, “section AB” and, in the case of electric circuits and block schematic or flow sheet diagrams, a few short keywords which are indispensable for their understanding.
5. Flow sheet diagrams and schemes are considered to be drawings.
6. When the applicant presents a single copy of the description and drawings, he may be allowed to present the other two copies within two months after filing of the patent application.
Art. 17
(Deposit of microbiological material)
2. The information referred to in letter c) may be submitted within a period of two months after the date of filing of the patent application. The communication of this information shall be considered as constituting the unreserved and irrevocable consent of the applicant to make the deposited sample available to any person making a request to the depositary institution from the date of publication of the patent application.
3. The request shall be notified to the applicant or the patent owner and it shall indicate:
a) the name and address of the person making the request;
b) the undertaking by the person presenting the request vis-à-vis the applicant or the patent owner not to make the sample available to any third party;
c) the undertaking to use the sample through a named qualified expert only for experimental purposes up until the date on which the patent application is refused or withdrawn or the patent has finally expired or been declared to be null and void and can no longer be restored in favour of the applicant for or the proprietor of the patent.
4. The expert designated to use the sample shall be jointly responsible for any violation committed by the person making the request.
5. If the biological material, deposited in accordance with the previous paragraphs, is no-more available from the recognised institution with which it was deposited, it is allowed to make a new deposit of the material under the conditions laid down in this article.
6. Any new deposit shall be accompanied by a statement signed by the depositor certifying that the newly deposited biological material is the same as that originally deposited.
Art. 18
(Unity of invention)
Art. 19
(Examination on filing)
1. When the patent application is filed, the Patents and Trade Marks State Office formally examines the documents forming the application and accords the date of filing if at least the following documents have been filed:
a) a San Marino patent application for an invention;
b) sufficient information identifying the applicant;
c) a description of the invention.
2. If the Patents and Trade Marks State Office notes on the date of filing of the patent application that the provisions under paragraph 1 have not been satisfied, it shall invite the applicant, if available, to meet the provisions of this Single Text. If the applicant satisfies the requirements, the date of filing shall be the date on which the missing documents are filed. If the deficiencies are not remedied in due time, the application shall be deemed not to be received.
3. If the description of the patent application contains references to drawings, the Patents and Trade Marks State Office shall invite the applicant to file the missing drawings. If the applicant satisfies the requirement, the date of filing shall be the date on which the missing drawings are received. If they are not filed, the date of filing will be the date on which the description is received and any reference to drawings will be deleted.
4. If the date of filing is accorded, the Patents and Trade Marks State Office shall inform the applicant about it in writing or it shall notify it.
Art. 20
(Amendment, correction and withdrawal of the application)
1. The applicant is entitled, in sufficient time during the examination procedure, even after the publication of the application referred to in article 21, but in any case before the Patents and Trade Marks State Office has decided whether or not to grant the patent, to correct, integrate, also by adding new examples, or to abbreviate the description, the claims and the drawings originally filed, through a marginal note in the description or corrections to the drawings, signed by the applicant or his representative.
2. The Patents and Trade Marks State Office shall keep all the documents concerning the original application, indicate the date on which the amendments were filed and adopt any further measure to inform the public about the amendments and the date on which they were made.
3. Amendments, integrations or corrections cannot extend the technical content of the description beyond the content described in the application as filed. For this purpose, the technical content may be extended if a person skilled in the art cannot objectively derive the added technical information from the application as filed.
4. The applicant may withdraw his application at any time, provided that his request is received by the Patents and Trade Marks State Office and in due time during the examination procedure, or in any case before the Patents and Trade Marks State Office has decided whether or not to grant the patent. If this is the case, the documents accompanying the application must be kept secret and they shall not be disclosed to the public.
Art. 21
( Publication of the application and provisional protection)
1. With the exception of the following paragraphs 4 and 5 of this article, the Patents and Trade Marks State Office publishes any application filed in the due forms and as soon as possible after the expiry of a period of eighteen months from the date of filing or, if priority has been claimed, from the date of priority.
2. The files containing the description and the drawings of each patent application, printed or reproduced by using other suitable means, shall be sold by the Patents and Trade Marks State Office. The documentation associated with the patent applications, which is not secret, is made available to the public and can be inspected at the Patents and Trade Marks State Office from the date on which the applications were filed.
3. These files are sent free of charge, in exchange, to the Industrial Property Offices of the States applying for them.
4. Applications are not published if they have been withdrawn or finally refused before the termination of the technical preparations for the publication.
5. If the applicant submits a written request to make the application be published before the expiry of the period of eighteen months referred to in paragraph 1 of this article, the Patents and Trade Marks State Office will publish the application as soon as possible after receiving this request.
6. After the publication of the patent application any person may obtain inspection of the files relating to the application.
7. The patent application confers, from the date of its publication, upon the applicant the same rights as would be conferred by a patent. Towards the persons to whom the application containing the description and any drawings has been notified by the applicant, the patent application shall confer on the applicant, from the date of notification, the same rights as would be conferred by the patent. The patent application shall be deemed never to have had effect when it has subsequently been withdrawn or the grant of the patent has been refused.
Art. 22
(Search reports and observations by third parties)
1. Following the publication of the patent application, any person may present observations concerning the patentability of the invention in respect of which the application has been filed. Such observations must be filed in writing and must include a statement of the grounds on which they are based. In this case, they are enclosed with the file of the patent application. The third parties shall not become parties to the proceedings before the Patents and Trade Marks State Office. Any third party may request that his name is not disclosed. If this is the case, any reference to the third party shall be excluded from the documentation available to the public.
2. Search reports, drawn up by authorities and bodies conducting search activities, for patent applications which correspond to San Marino patent applications are attached to the file of the patent application.
3. Observations and search reports referred to in paragraphs 1 and 2 shall be communicated to the applicant or proprietor who may comment on them.
4. The Patents and Trade Marks State Office may invite the applicant to present a written statement in order to comment on the search reports and observations referred to in the precedent paragraphs and any other communication on the state of the art, which have been produced during the examination procedure and may represent grounds to call into question the patentability of the invention which is the subject matter of the patent application.
5. The applicant may request, by paying the fees due, that search activities are conducted by any national or international authority or organisation, either public or private, which has concluded an agreement with the Patents and Trade Marks State Office, in order to determine whether or not the invention claimed in the application meets the patentability criteria laid down in this Single Text. This request may be submitted at any time, until the date on which it is decided whether or not to grant the patent. In this case, the Patents and Trade Marks State Office may require the applicant to produce a translation of the claims and/or the whole description into an other language, where applicable, and to supply it to the searching authority.
6. The procedure up to grant shall be interrupted by the Patents and Trade Marks State Office until the search report is drawn up.
7. The Director of the Patents and Trade Marks State Office shall publish the information concerning any offices or organizations which have concluded an agreement to conduct novelty search for San Marino patent applications, the prescribed fees and the procedures to follow.
Art. 23
(Examination of the application and findings)
1. The examination of the application shall be aimed at ascertaining whether the invention meets the requirements of this Single Text. Firstly, it shall be aimed at recognising the formal correctness of the patent application and shall not concern itself with the technical or economic value of the invention.
2. The Patents and Trade Marks State Office shall examine whether the invention satisfies the requirements laid down in articles 1 and 2, paragraphs 2 and 5, and articles 10, 11, 12, 13, 14, 15, 16 and 18 above. However, the Patents and Trade Marks State Office does not examine the conformity of the application with the requirements of articles 3, 4 and 5 above.
3. To apply paragraph 2 above, the Patents and Trade Marks State Office may use search reports or preliminary examination reports drawn up by another authority, in particular searching and/or examining authorities under the Patent Cooperation Treaty (PCT).
4. The Patents and Trade Marks State Office shall not examine the application before the patent application is published. On request of the applicant, the examination procedure may be accelerated, in accordance with the resources that are available to the Patents and Trade Marks State Office, in order to conclude as soon as possible the examination. If it is requested to accelerate the examination procedure before one of the reports referred to in paragraph 3 above is drawn up, the applicant shall provide this report to the Patents and Trade Marks State Office.
5. The applicant shall provide, on request of the Patents and Trade Marks State Office, a copy of any communication received concerning the results of search activities or examinations related to a patent application or another title of protection filed by the applicant abroad, concerning the same or substantially the same invention claimed in the application filed with the Patents and Trade Marks State Office.
6. Except for the provisions referred to in paragraphs 1 and 2 above, if the Patents and Trade Marks State Office notices that the application does not satisfy any requirements of this Single Text, the findings upon which the examination is based must be communicated in writing to the person concerned. Moreover, the applicant shall be invited to file his observations within a period to be fixed, which can be extended upon reasoned request, under this Single Text. If the applicant fails to reply in due time to the remarks and comments of the Patents and Trade Marks State Office, the application shall be deemed to be refused.
Art. 24
(Grant of patent or rejection of patent application)
Art. 25
(Confirmation of patent grant)
Art. 26
(Publication of the patent)
Art. 27
(Patent Register)
Art. 28
(Rights conferred by the patent)
The right to be recognised as the author may be claimed, after the author’s death, by the person designated for this purpose by the author himself. When such designation is lacking, or after the designated person’s death, the above mentioned right shall be claimed by the spouse and the descendants up to second degree; in lack thereof or after their death, by parents and other ascendants, and in lack thereof or after their death, by relatives up to fourth degree included.
Art. 29
(Rights of prior use)
Art. 30
(Context of exclusive rights and claim interpretations)
Art. 31
(Modifications and amendments to the patent)
Art. 32
(Patent lapse and limitation)
Art. 33
(Duration, annual fees)
Art. 34
(Lapse)
Art. 35
(Nullity of patent)
Art. 36
(Compulsory licence)
Art. 37
(Interference of rights deriving from San Marino and Italian patents)
In application of article 43 of the Convention on Friendship and Good Neighbourhood between San Marino and Italy of 31 March 1939, the following provisions shall be applied:
TITLE V
GENERAL PROVISIONS
Article 88
(Provisions concerning application for a title of protection )
1. The application for a patent concerning an industrial invention, for registration of an industrial design and model or for a trademark or collective mark, may be filed by both San Marino citizens and foreigners, be they individuals, companies, associations or moral entities, or collectively by more than one individual.
2. If the application is filed by a company, association or moral entity, it shall indicate the trade name and registered office of the company or entity.
3. The application for a patent concerning an invention, for registration of an industrial design and model or for a trademark or collective mark shall be filed by the author or his successor in title or by his representative.
Article 89
(Re-establishment of rights)
1. The applicant for or proprietor of a patent-right who, despite all due care required having been taken, was unable to observe a time limit, under the law or this Single Text or fixed by the Patents and Trade Marks State Office, vis-à-vis the Patents and Trade Marks State Office itself shall have his rights re-established if the non-observance in question has the direct consequence of causing the refusal of an application for a patent, for registration of an industrial mark, model or design, or of a request relative thereto or the lapse of the patent or the loss of any right or means of appeal.
2. The application for re-establishment must be filed by the successor in title within two months from receipt of a notice by the Patents and Trade Marks State Office informing the person entitled to it of the unobserved time limit. The application shall only be admissible within six months following the expiry of the unobserved time limit. The application shall be considered valid only upon payment of the prescribed fee.
3. The acceptance of the application shall nullify the legal consequences of the unobserved time limit, or lead to their revocation if, in the meantime, these legal consequences have taken effect.
4. The provisions of this Article shall not be applicable:
a) to the time limits indicated in paragraph 2 above;
b) to the time limit within which priority rights may be claimed;
c) to the time limit granted for the division of patent applications and the filing of a divisional application, and;
d) to the time limits indicated in Articles 33, 54 and 76 above concerning the payment of maintenance and renewal fees.
5. Any person who has made serious and effective preparations for using an invention of has begun using it in the course of the period between the loss of the exclusive rights or of the right to acquire exclusivity and the re-establishment provided for by this Article may, without payment, carry out the invention within the limits of his prior use or those resulting from the preparations.
Article 90
(Language of the procedure)
1. Applications, and the documents provided for in this Single Text, must be written in Italian, as well as the documents attached to them. Any documents written in a language other than Italian must be accompanied by an Italian translation. In case of a patent application filed, under Article 10 above, in a language other than Italian, the Italian translation may be filed within one month since the date of filing, without prejudice to the submission, on the date of filing of the documents, in the Italian language, provided for in Article 10, paragraph 2.
2. If not otherwise provided for in this Single Text, the successor in title shall certify correspondence of the Italian translation with the original text.
Article 91
(Patent application procedure)
1. Applications and the relevant documents may be transmitted postal service, or equivalent service, in a registered cover with acknowledgement of receipt, addressed to the Patents and Trade Marks State Office. In this case, the date of receipt by the above-mentioned Patents and Trade Marks Office shall be considered as the date of filing.
2. Applications and the relevant documents may be transmitted by fax, in conformity with the provisions set forth in Article 98 hereunder.
Article 92
(Representation)
1. If the applicant’s normal place of residence or principal place of business is outside the Republic of San Marino, the applicant must be represented by a representative authorised to practice before the Patents and Trade Marks State Office.
2. The applicant, or his representative, if any, shall in each application indicate or elect a domicile in the Republic of San Marino for any communications or notices to be sent to him under this Single Text.
3. If the appointment of one or several representatives has not been made in a separate, authentic or authenticated act, it may be made in a special power of attorney, to be signed by the applicant and countersigned by the representative. The power of attorney shall be considered a private agreement. The power conferred by the power of attorney shall be valid only for the subject matter specified in it and shall be limited to relations with the Patents and Trade Marks State Office.
4. A representative who has submitted a general power of attorney may refer to it in any subsequent patent application made in the name of the same representative.
5. No applicant residing in San Marino shall be represented by a representative authorised to practice before the Patents and Trade Marks State Office; San Marino individuals and juridical persons may act through one of their employees, although not authorised thereto.
6. The power may be conferred only on representatives whose names appear on a list maintained for this purpose by the Patents and Trade Marks State Office. The power may also be conferred upon a lawyer or an attorney-at-law whose name appears in the respective professional roll.
Article 93
(Recording of documents)
1. The following documents shall be made public by means of being recorded in the Patents and Trade Marks State Office, without prejudice, in any case, to the provisions set forth in the preceding Article 74:
a) inter vivos deeds, with or without consideration, which cover assignments, in whole or in part, of rights in San Marino patents;
b) inter vivos deeds, with or without consideration, which establish, modify or transfer rights of employment, in personam or in rem, or rights of security established in the aforesaid patents in accordance with Article 94, paragraph 10 hereunder;
c) deeds of division, corporate documents, settlements and surrenders, relative to the rights conferred to at the two preceding letters;
d) bills of attachment;
e) official reports on awards following forced sales;
f) official reports on suspensions of sales of portions of attached patents which are to be returned to the debtor in accordance with the law;
g) court decisions which declare the existence of the documents listed under letters a), b) and c) above, when such deeds have not been recorded already;
h) court decisions pronouncing the nullity, invalidation, termination, rescission or revocation of a recorded document shall be entered in the margin of the record of the document to which such decisions refer;
i) petitions addressed to the court in order to obtain the decisions provided for in this Article may also be recorded. In this case, the recording of the decision shall take effect from the date on which the petition was recorded;
j) testaments and any documents which prove legitimate succession as well as any court decisions relative thereto;
k) the decisions pronouncing the nullity of patents and the relevant demands filed with the courts.
2. Recordings shall be subject to payment of the prescribed fee.
Article 94
(Recording procedure)
1. To obtain the recording of a document concerning a patent in the relevant Register maintained by the Patents and Trade Marks State Office, the person requesting it shall file a specific application made out in two copies. Applications must be filed with the Patents and Trade Marks State Office, accompanied by an authenticated copy of the public document or by the original or an authenticated copy of the authenticated private document. Where authentication is not possible, the Patents and Trade Marks State Office may authorize the recording of an unauthenticated private document be. It shall contain:
a) the surname, given name and domicile of the applicant and of his representative, if any;
b) the surname and given name of the proprietor of the patent, as well as the indication of the number and date of the patent;
c) the date and nature of the patent to be recorded and, in case of a public document, the indication of the notary who has received it;
d) the indication of the object of the document to be recorded.
2. The request for recording provided for in Article 93 shall be accompanied by:
a) the legal document to be recorded;
b) the document proving payment of the prescribed fee in the form provided for in this Single Text;
c) if the document is in a language other than Italian, it shall be accompanied by an authenticated translation into Italian.
3. If there is a representative, it should also be accompanied by the power of attorney in due form.
4. If the Patents and Trade Marks State Office rejects the application, the applicant may file an appeal.
5. Recordings shall be effected in the chronological order in which applications are filed.
6. Omissions or inaccuracies shall not affect the validity of a recording, provided that they do not create total uncertainty about the document to be recorded, or about the patent referred to in it.
7. The documents and court decisions referred to in the preceding paragraphs, except testaments and the documents and court decisions referred to in letters d), j) and k) of Article 93 above, shall, as long as they have not been recorded, not be effective against third parties who have in any way acquired and lawfully maintained rights in the patent.
8. Where several persons acquired the same right from the same patent owner, the person who first recorded his title of acquisition shall enjoy priority.
9. Recordings of bills of attachment shall, as long as the attachment is in force, suspend the effects of later recordings of the aforesaid documents and court decisions; the effects of such recordings shall become void after the award has been recorded, provided that such recordings take place within three months from the date of the award.
10. Testaments and the documents which prove legitimate succession, as well as the court decisions relative thereto, shall be recorded only in order to ensure the continuity of transfers.
11. Rights of security in patents for industrial inventions must be established through cash credits. Any amounts of such credits not expressed in national currency shall, at the time of recording, be converted into the equivalent amount in such currency.
12. Where more than one right of security exists, their rank shall be determined by the order in which such rights were recorded.
13. Recordings of rights of security shall be cancelled upon filing the deed of consent issued by the creditor, whose signature must be authenticated, or when the cancellation was ordered in a court decision which has become final, or after satisfaction of the rights of security.
14. For cancellation, the same fee shall be due as the fee provided for recordings.
15. Decisions and documents received by the Patents and Trade Marks State Office in conformity with this Single Text shall be noted in the relevant Register and the recording shall be published in the Official Bulletin. For each recording of document or decision, the Register shall indicate:
a) the date of submission of the application, which shall be that of the recording;
b) the surname, given name and domicile of the successor in title, or the trade name and registered office in the case of a company or legal entity, and, where applicable, the surname, given name and domicile of the representative;
c) the nature of the rights to which the recording refers.
16. The Patents and Trade Marks State Office shall return to the applicant a copy of the application with a declaration of the recording made. Documents and decisions submitted for recording shall be kept by the Patents and Trade Marks State Office.
17. Requests for the cancellation of a recording shall be made in the same form and following the same procedure as those for requests for recording. Cancellation shall be effected by annotations in the relevant Register.
18. If it is necessary to convert the amount due for the recording of rights of security into national currency, the conversion shall be made on the basis of the exchange rate prevailing on the day the security was granted.
19. Recordings concerning patents for industrial inventions shall have the nature of actions concerning commercial property.
Article 95
(Execution procedure)
1. Patrimonial rights in patents for industrial inventions may be subject to forced execution. The rules on executions on personal property laid down in the law shall be applicable to such executions.
2. The bill of attachment shall contain:
a) a declaration of attachment of the patent containing references enabling it to be identified and corresponding to those in the relevant Register;
b) the date of the act and of its dispatch for enforcement;
c) the amount for which it is being enforced;
d) the surnames, given names, domiciles or places of residence of the creditor and debtor;
e) the surname and given name of the legal officer.
3. If the person on whom the bill of attachment shall be served does not have a domicile or place of residence, nor has elected domicile, in the Republic of San Marino, the bill shall be served at the Patents and Trade Marks State Office. In the latter case, a copy of the bill shall be put on the Office's notice board and shall be published in the Official Bulletin.
4. Patents for industrial inventions may be seized, even if they are in the process of being granted.
5. Disputes concerning the forced execution and seizure of patents shall be brought before the competent judicial authority of the Republic of San Marino.
TITLE VI
ADMINISTRATIVE PROVISIONS
Article 96
(Administrative guidelines)
Art. 97
(Notices sent to the Patents and Trade Marks State Office)
Patent-right applications and notices may be submitted to the Patents and Trade Marks State Office, sending them together with the required copies of the document:
Art. 98
(Notices via telecopy)
Art. 99
(Notices via electronic means)
Art. 100
(Notices of the Patents and Trade Marks State Office)
Art. 101
(Domicile and changes)
Art. 102
(Publications)
Art. 103
(Forms)
TITOLO VII
FEES
Art. 104
(Fees for patent of invention)
Art. 105
(Fees for industrial model and design)
Art. 106
(Fees for trademarks)
Art. 107
(Methods of payment)
Art. 108
(Proof of payment)
Art. 109
(Error in payment)
Art. 110
(Reduction of and exemption from patent fees)