- TITLE I PATENTS
- Article 1(Definition of “patent” and “invention”)
- Article 2(Subject-matter of the patent and exclusions from patentability)
- Article 3(Novelty)
- Article 4(Inventive step)
- Article 5(Industrial application
- Article 6(Right to a patent)
- Article 7(Inventions made by employees)
- Article 8(Right to the patent)
- Art. 9(Designation of the inventor)
- Art. 10(Patent applications)
- Art. 11(Documents to claim priority)
- Art. 12(Description)
- Art. 13(Abstract)
- Art. 14(Technical presentation)
- Art. 15(Form and content of claims)
- Art. 16(Drawings)
- Art. 17(Deposit of microbiological materian( �/A>
- Art. 18(Unity of invention)
- Art. 19(Examination on filing)
- Art. 20(Amendment, correction and withdrawal of the application)
- Art. 21( Publication of the application and provisional protection)
- Art. 22(Search reports and observations by third parties)
- Art. 23(Examination of the application and findings)
- 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)
- 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)
- TITLE V GENERAL PROVISIONS
- Article 88(Provisions concerning application for a title of protection )
- Article 89(Re-establishment of rights)
- Article 90(Language of the procedure)
- Article 91(Patent application procedure)
- Article 92(Representation)
- Article 93(Recording of documents)
- Article 94(Recording procedure)
- Article 95(Execution procedure)
- TITLE VI ADMINISTRATIVE PROVISIONS
- Article 96(Administrative guidelines)
- Art. 97(Notices sent to the Patents and Trade Marks State Office)
- 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)
- FEES
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: