- 1. GENERAL PROVISIONS
- 2. SUBJECT MATTER OF PATENT PROTECTION
- 3. CONDITIONS FOR PATENT PROTECTION
- 4. RIGHT TO OBTAIN A PATENT
- 5. PATENT GRANT PROCEDURE
- 1. Common Procedural Provisions
- 2. Patent Application
- Instigation of Patent Grant Procedure Article 20
- Unity of Invention Article 21
- Content of a Patent Application Article 22
- Request for the Grant of a Patent Article 23
- Description of the Invention Article 24
- Patent Claims Article 25
- Abstract Article 26
- Content of a Patent Application Necessary to Be Accorded a Filing Date Article 27
- Division of a Patent Application Article 28
- Amendments to Pending Applications Article 29
- 3. Priority Right
- 4. Procedure from the Receipt to the Publication of a Patent Application
- 5. Granting of a Patent
- 6. CONTENT, ACQUISITION AND SCOPE OF RIGHTS
- 7. LIMITATION OF RIGHTS
- Exceptions to Exclusive Rights Article 45
- Exhaustion of Patent Holder’s Rights Article 46
- Right of Prior User Article 47
- Limitation of Rights to Facilitate International Traffic Article 48
- Compulsory Licences Article 49
- Article 50
- Article 51
- Compulsory Licence in the Public Interest Article 52
- Article 53
- Compulsory Licence Granted to Plant Breeders Article 54
- Limitation of Rights Concerning Biotechnological Material Article 55
- Article 56
- 8. DURATION AND TERMINATION OF A PATENT
- 9. SUPPLEMENTARY PROTECTION CERTIFICATE
- Article 63
- Subject Matter of Protection and Legal Effects Article 64
- Entitlement to a Certificate Article 65
- Conditions for Obtaining a Certificate Article 66
- Time Limit for the Filing an Application for a Certificate Article 67
- Term of Protection Article 68
- Termination of the Certificate Article 69
- Maintenance of the Certificate Article 70
- Publication Article 71
- Article 72
- 10. NULLIFICATION
- 11. PROTECTION OF RIGHTS UNDER THE CIVIL LAW
- 12. TRANSFER OF RIGHTS
- 13. SECRET INVENTIONS
- 14. INVENTIONS MADE IN THE COURSE OF EMPLOYMENT
- Article 92
- Right to Protection Article 93
- Article 94
- Remuneration to an Employee Article 95
- Procedure Article 96
- Article 97
- Article 98
- In the event of commercial use of the invention under paragraphs 3 and 4 of this Article, articles 94 and 101 of this Law shall apply mutatis mutandis. Article 99
- Article 100
- Article 101
- Article 102
- Confidentiality Requirement Article 103
- 15. THE EUROPEAN PATENT APPLICATION AND THE EUROPEAN PATENT
- Extension of the Effect of the European Patent Article 104
- Request for Extension Article 105
- Extension Fee Article 106
- Effects of European Patent Applications Article 107
- Effects of European Patents Article 108
- Authentic Text of European Patent Applications or European Patents Article 109
- Rights of Prior Date Article 110
- Simultaneous Protection Article 111
- Renewal Fees for Extended European Patents Article 112
- Application of the EPC Article 113
- 16. INTERNATIONAL PATENT APPLICATIONS UNDER THE PATENT COOPERATION TREATY
- Application of the Patent Cooperation Treaty Article 114
- The Responsible Authority as the Receiving Office Article 115
- The European Patent Office as Designated or Elected Office Article 116
- The European Patent Office as International Searching Authority and International Preliminary Examination Authority Article 117
- 17. CONDITIONS FOR THE ENTRY INTO THE REGISTER OF REPRESENTATIVES
- 18. PENAL PROVISIONS
- 19. FINAL AND TRANSITIONAL PROVISIONS
THE PATENT LAW
1. GENERAL PROVISIONS
This Law shall regulate the legal protection of inventions by means of patents.
This Law shall also apply to the sea and submarine areas adjacent to the territory of Montenegro in which Montenegro exercises sovereign rights or jurisdiction in accordance with international law.
Foreign natural and legal persons shall, in relation to the protection of inventions in Montenegro, enjoy the same rights as domestic natural and legal persons, where such treatment derives from international agreements or from the principle of reciprocity. The reciprocity shall be proved by the person who claims that it exists.
In the proceedings before the administrative authority responsible for intellectual property affairs (hereinafter: responsible authority), a foreign natural or legal person must be represented by a representative listed in the Register of Representatives kept by the responsible authority, or by a domestic attorney.
2. SUBJECT MATTER OF PATENT PROTECTION
- (1)
-
A patent shall be granted for an invention, in any field of technology, provided it is new, involves an inventive step and is susceptible of industrial application.
- (2)
-
The subject matter of an invention protected by a patent may be a product (e.g. a device, substance, composition) or a process. The subject matter protected by a patent may also be related to:
- 1)
-
a product consisting of or containing biological material;
- 2)
-
a process by means of which biological material is produced, processed or used;
- 3)
-
a biological material isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature.
- (1)
-
For the purpose of this Law, biological material shall mean any material containing genetic information and capable of reproducing itself or being reproduced in a biological system (e.g. micro-organisms, plant and animal cell cultures, sequence of genes).
- (2)
-
The following, in particular, shall not be regarded as inventions, within the meaning of this Law:
- 1)
-
discoveries, scientific theories and mathematical methods;
- 2)
-
aesthetic creations;
- 3)
-
schemes, rules and methods for performing mental acts, playing games or doing business;
- 4)
-
computer programs, and
- 5)
-
presentations of information.
- (3)
-
The provisions of paragraph 4 of this Article shall exclude patentability of subject matter or activities only to the extent to which the application for a patent or a patent relate to the subject matter or activity as such.
- (3)
-
The human body, at any stage of its formation and development, and the discovery of one of its elements, including sequences or partial sequences of genes, shall not be regarded as invention.
- (4)
-
An element isolated from the human body or produced by means of a technical process, including the sequences or partial sequences of genes, may be patentable, even where the structure of that element is identical to that of a natural element.
- (5)
-
The industrial application of a sequence or partial sequence of a gene must be disclosed in the patent application on the day of its filing.
- (1)
-
Patent protection shall not be granted in respect of:
- 1)
-
inventions the commercial use of which would be contrary to ordre public or morality (providing that the use shall not be considered contrary to ordre public or morality merely because it is prohibited by law or any other regulation), particularly in respect of:
- -
-
processes for cloning human beings;
- -
-
processes for modifying of 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 which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;
- 2)
-
inventions concerning methods for treatment by surgery or diagnostic methods or therapy practiced directly on the human or animal body, except products, in particular substances or compositions, for use in any of these methods;
- 3)
-
a plant or animal variety or an essentially biological process for the production of a plant or animal, except:
- -
-
a biotechnological invention concerning a plant or animal, if the technical feasibility of the invention is not confined to a particular plant or animal variety;
- -
-
a microbiological or other technical process, or a product obtained by means of such process other than a plant or animal variety.
- (2)
-
For the purposes of this Law:
- 1)
-
“plant variety” shall have the meaning laid down in the law governing the protection of new plant varieties;
- 2)
-
an “essentially biological process” for the production of plants or animals shall be a process consisting entirely of natural phenomena such as crossing or selection;
- 3)
-
a “microbiological process” shall be a process involving or performed upon or resulting in microbiological material;
- 4)
-
“biotechnological inventions” are inventions that concern a product consisting of or containing biological material or a process by means of which a biological material is produced, processed or used.
3. CONDITIONS FOR PATENT PROTECTION
- (1)
-
An invention shall be deemed to be new if it does not form part of the state of the art.
- (2)
-
For the purposes of this Law the state of the art shall comprise:
- 1)
-
everything made available to the public by means of written or oral description, by use or in any other way, prior to the date of the filing of an application for a patent;
- 2)
-
the content of all applications in Montenegro as filed, with the filing date preceding the date referred to in the previous item and published on or after that date, in the manner prescribed by this Law.
- (3)
-
The provisions of paragraphs 1 and 2 of this Article shall not exclude the patentability of substances or compositions included in the state of the art, which are used for treatment by surgical or diagnostic or therapeutic methods, provided their use for these methods is not comprised in the state of the art.
- (4)
-
Paragraphs 1 and 2 shall also not exclude the patentability of any substance or composition referred to in paragraph 3 of this Article for any specific use in a surgical, diagnostic or therapeutic method, provided that such use is not comprised in the state of the art.
An invention which was already part of the state of the art for a period of up to six months before the filing of a patent application, shall also be deemed to be new, if its disclosure was due to or was a consequence of:
- 1)
-
evident abuse in relation to the applicant or his legal predecessor, or
- 2)
-
the invention being displayed by the applicant or his legal predecessor at an official, or officially recognized, international exhibition falling within the terms of the Convention on International Exhibitions, concluded in Paris on 22 November 1928, with all subsequent revisions, provided that the applicant states, on filing the application, that the invention has been so exhibited and that he provides an appropriate certificate to support this statement within a period of four months from the filing date of the application.
- (1)
-
An invention shall be deemed to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the appropriate art.
- (2)
-
In examining whether an invention involves an inventive step, the content of applications referred to in Article 8, paragraph 2, item 2 of this Law shall not be taken into account.
An invention shall be considered to be susceptible of industrial application if its subject matter can be made or used in any kind of industry, including agriculture.
4. RIGHT TO OBTAIN A PATENT
- (1)
-
The right to obtain a patent shall belong to the inventor or his successor in rights, or in cases provided for by this Law, to the employer or his successor in rights.
- (2)
-
If an invention is the result of the joint effort of a number of inventors, the right to a patent shall belong to such inventors jointly. A person rendering technical assistance to an inventor shall not be considered to be an inventor.
- (1)
-
The inventor shall have the right to be designated as such in the patent application, specifications, registers, certificates and publications related to his invention, in the manner stipulated by this Law.
- (2)
-
The rights of an inventor who has come up with an invention within the course of employment and the rights of the organisation in which such invention has been made, shall be governed by this Law, by general legal acts and by contract concluded between the employer and employee or between their representatives, as the case may be.
5. PATENT GRANT PROCEDURE
1. COMMON PROCEDURAL PROVISIONS
- (1)
-
The legal protection of an invention shall be attained within the course of an administrative procedure conducted by the responsible authority, which shall also perform other administrative and professional tasks concerning the protection of inventions.
- (2)
-
Administrative decisions taken within the course of the administrative procedure referred to in paragraph 1 of this Article shall be final and may be contested within the administrative dispute proceedings before the competent court.
During the patent grant procedure, the responsible authority shall not make an application available for inspection to any person or body, before the application has been published, except on request or with the consent of the applicant.
The administrative procedure before the responsible authority shall be subject to payment of fees and procedural costs, in accordance with special regulations on administrative fees, procedural costs and information service fees.
- (1)
-
The responsible authority shall keep a Patent Applications Register, a Register of Patents and a Register of Supplementary Protection Certificates.
- (2)
-
The content and manner of keeping public registers referred to in paragraph 1 of this Article shall be governed by a regulation issued by the Ministry responsible for industrial property (hereinafter referred as: the Ministry).
Any information prescribed by this Law and by implementing regulations for this Law shall be published in the Official Bulletin issued by the responsible authority.
The responsible authority shall make its documentation and information on the state of the art and on rights concerning the protection of inventions available to commercial entities and other legal and natural persons.
2. PATENT APPLICATION
- (1)
-
The patent grant procedure shall be instigated by the filing of an application with the responsible authority.
- (2)
-
Applications for the protection of inventions abroad shall also be filed with the responsible authority, if so provided by international agreements.
- (3)
-
Legal protection of inventions in Montenegro shall also be granted in respect of applications filed abroad, if so provided by international agreements. An application filed in this manner shall have the same effects as a national application, unless otherwise provided for by relevant international agreements.
- (1)
-
As a rule, a separate patent application shall be filed for each individual invention.
- (2)
-
A single application may be filed for a number of inventions only if the inventions are mutually so linked as to form a single general inventive concept.
A patent application must contain:
- 1)
-
a request for the grant of a patent;
- 2)
-
a description of the invention;
- 3)
-
one or more claims for the protection of an invention by a patent (hereinafter: patent claims),
- 4)
-
a drawing referred to in the description or claims, when appropriate;
- 5)
-
an abstract.
- (1)
-
A request for the grant of a patent shall contain an explicit indication that a patent is being sought, details concerning the applicant, details concerning the inventor or a statement to the effect that the inventor does not wish to be mentioned in the application, and the title of the invention clearly reflecting its essence.
- (2)
-
The responsible authority shall not investigate whether the applicant is entitled to protection.
- (3)
-
If the inventor does not wish his name mentioned in the request for the grant of a patent and in other documents under this Law, the applicant shall be required to furnish the responsible authority with the inventor’s written statement to that effect, within a period of three months from the date of the filing of the application at the latest.
- (1)
-
An invention shall be described in a manner that is clear and complete enough for the invention to be carried out by a person skilled in the art.
- (2)
-
If the invention concerns a biological material and cannot be carried out on the basis of the description of the invention, the description shall be deemed to fulfil the conditions laid down in paragraph 1 of this Article if a sample of the naturally reproducible biological material is deposited with a relevant depository institution not later than the filing date of the application.
- (3)
-
The term “relevant depository institution” referred to in paragraph 2 of this Article shall mean an institution designated in accordance with the provisions of the Budapest Treaty on the International Recognition of the Deposits of Microorganisms for the Purpose of Patent Procedure concluded on 28 April 1977 with all subsequent revisions.
Patent claims shall define the subject matter for which protection is sought. They shall be clear, concise and fully supported by the description of the invention.
An abstract shall briefly set out the essential content of the invention and shall serve exclusively to provide technical information.
In order to be accorded a filing date, an application filed with the responsible authority must contain, on that date:
- 1)
-
an indication that a patent is being sought;
- 2)
-
the given and family name or business name and address of the applicant;
- 3)
-
a description of the invention, even if it does not fulfil the prescribed requirements.
- (1)
-
The applicant may divide the subject matter of an application which has already been accorded a date of filing (original application) into two or more independent applications (divisional application) at his own discretion or at the request of the responsible authority.
- (2)
-
The division of applications shall be allowed only until the completion of preparation for publication of the application.
- (3)
-
The subject matter of the divisional application may not extend beyond the content of the original application, as filed. It shall retain the filing date of the original application and, where appropriate, shall enjoy the benefit of the priority of that application.
- (1)
-
A patent application which has been accorded a filing date cannot subsequently be amended in a manner that would extend the subject matter for which protection is being sought.
- (2)
-
Any amendments to the particulars of the application that do not extend its subject matter may take place prior to the taking of a decision on the application.
3. PRIORITY RIGHT
1. GENERAL PROVISIONS
This Law shall regulate the legal protection of inventions by means of patents.
This Law shall also apply to the sea and submarine areas adjacent to the territory of Montenegro in which Montenegro exercises sovereign rights or jurisdiction in accordance with international law.
Foreign natural and legal persons shall, in relation to the protection of inventions in Montenegro, enjoy the same rights as domestic natural and legal persons, where such treatment derives from international agreements or from the principle of reciprocity. The reciprocity shall be proved by the person who claims that it exists.
In the proceedings before the administrative authority responsible for intellectual property affairs (hereinafter: responsible authority), a foreign natural or legal person must be represented by a representative listed in the Register of Representatives kept by the responsible authority, or by a domestic attorney.
2. SUBJECT MATTER OF PATENT PROTECTION
A patent shall be granted for an invention, in any field of technology, provided it is new, involves an inventive step and is susceptible of industrial application. The subject matter of an invention protected by a patent may be a product (e.g. a device, substance, composition) or a process. The subject matter protected by a patent may also be related to: a product consisting of or containing biological material; a process by means of which biological material is produced, processed or used; a biological material isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature. For the purpose of this Law, biological material shall mean any material containing genetic information and capable of reproducing itself or being reproduced in a biological system (e.g. micro-organisms, plant and animal cell cultures, sequence of genes). The following, in particular, shall not be regarded as inventions, within the meaning of this Law: discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business; computer programs, and presentations of information. The provisions of paragraph 4 of this Article shall exclude patentability of subject matter or activities only to the extent to which the application for a patent or a patent relate to the subject matter or activity as such.
The human body, at any stage of its formation and development, and the discovery of one of its elements, including sequences or partial sequences of genes, shall not be regarded as invention. An element isolated from the human body or produced by means of a technical process, including the sequences or partial sequences of genes, may be patentable, even where the structure of that element is identical to that of a natural element. The industrial application of a sequence or partial sequence of a gene must be disclosed in the patent application on the day of its filing.
Patent protection shall not be granted in respect of: inventions the commercial use of which would be contrary to ordre public or morality (providing that the use shall not be considered contrary to ordre public or morality merely because it is prohibited by law or any other regulation), particularly in respect of: processes for cloning human beings; processes for modifying of 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 which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes; inventions concerning methods for treatment by surgery or diagnostic methods or therapy practiced directly on the human or animal body, except products, in particular substances or compositions, for use in any of these methods; a plant or animal variety or an essentially biological process for the production of a plant or animal, except: a biotechnological invention concerning a plant or animal, if the technical feasibility of the invention is not confined to a particular plant or animal variety; a microbiological or other technical process, or a product obtained by means of such process other than a plant or animal variety. For the purposes of this Law: “plant variety” shall have the meaning laid down in the law governing the protection of new plant varieties; an “essentially biological process” for the production of plants or animals shall be a process consisting entirely of natural phenomena such as crossing or selection; a “microbiological process” shall be a process involving or performed upon or resulting in microbiological material; “biotechnological inventions” are inventions that concern a product consisting of or containing biological material or a process by means of which a biological material is produced, processed or used.
3. CONDITIONS FOR PATENT PROTECTION
An invention shall be deemed to be new if it does not form part of the state of the art. For the purposes of this Law the state of the art shall comprise: everything made available to the public by means of written or oral description, by use or in any other way, prior to the date of the filing of an application for a patent; the content of all applications in Montenegro as filed, with the filing date preceding the date referred to in the previous item and published on or after that date, in the manner prescribed by this Law.
The provisions of paragraphs 1 and 2 of this Article shall not exclude the patentability of substances or compositions included in the state of the art, which are used for treatment by surgical or diagnostic or therapeutic methods, provided their use for these methods is not comprised in the state of the art. Paragraphs 1 and 2 shall also not exclude the patentability of any substance or composition referred to in paragraph 3 of this Article for any specific use in a surgical, diagnostic or therapeutic method, provided that such use is not comprised in the state of the art.
An invention which was already part of the state of the art for a period of up to six months before the filing of a patent application, shall also be deemed to be new, if its disclosure was due to or was a consequence of:
evident abuse in relation to the applicant or his legal predecessor, or the invention being displayed by the applicant or his legal predecessor at an official, or officially recognized, international exhibition falling within the terms of the Convention on International Exhibitions, concluded in Paris on 22 November 1928, with all subsequent revisions, provided that the applicant states, on filing the application, that the invention has been so exhibited and that he provides an appropriate certificate to support this statement within a period of four months from the filing date of the application. An invention shall be deemed to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the appropriate art. In examining whether an invention involves an inventive step, the content of applications referred to in Article 8, paragraph 2, item 2 of this Law shall not be taken into account.
An invention shall be considered to be susceptible of industrial application if its subject matter can be made or used in any kind of industry, including agriculture.
4. RIGHT TO OBTAIN A PATENT
The right to obtain a patent shall belong to the inventor or his successor in rights, or in cases provided for by this Law, to the employer or his successor in rights. If an invention is the result of the joint effort of a number of inventors, the right to a patent shall belong to such inventors jointly. A person rendering technical assistance to an inventor shall not be considered to be an inventor. The inventor shall have the right to be designated as such in the patent application, specifications, registers, certificates and publications related to his invention, in the manner stipulated by this Law. The rights of an inventor who has come up with an invention within the course of employment and the rights of the organisation in which such invention has been made, shall be governed by this Law, by general legal acts and by contract concluded between the employer and employee or between their representatives, as the case may be.
5. PATENT GRANT PROCEDURE
1. COMMON PROCEDURAL PROVISIONS
The legal protection of an invention shall be attained within the course of an administrative procedure conducted by the responsible authority, which shall also perform other administrative and professional tasks concerning the protection of inventions. Administrative decisions taken within the course of the administrative procedure referred to in paragraph 1 of this Article shall be final and may be contested within the administrative dispute proceedings before the competent court.
During the patent grant procedure, the responsible authority shall not make an application available for inspection to any person or body, before the application has been published, except on request or with the consent of the applicant.
The administrative procedure before the responsible authority shall be subject to payment of fees and procedural costs, in accordance with special regulations on administrative fees, procedural costs and information service fees.
The responsible authority shall keep a Patent Applications Register, a Register of Patents and a Register of Supplementary Protection Certificates. The content and manner of keeping public registers referred to in paragraph 1 of this Article shall be governed by a regulation issued by the Ministry responsible for industrial property (hereinafter referred as: the Ministry).
Any information prescribed by this Law and by implementing regulations for this Law shall be published in the Official Bulletin issued by the responsible authority.
The responsible authority shall make its documentation and information on the state of the art and on rights concerning the protection of inventions available to commercial entities and other legal and natural persons.
2. PATENT APPLICATION
The patent grant procedure shall be instigated by the filing of an application with the responsible authority. Applications for the protection of inventions abroad shall also be filed with the responsible authority, if so provided by international agreements. Legal protection of inventions in Montenegro shall also be granted in respect of applications filed abroad, if so provided by international agreements. An application filed in this manner shall have the same effects as a national application, unless otherwise provided for by relevant international agreements. As a rule, a separate patent application shall be filed for each individual invention. A single application may be filed for a number of inventions only if the inventions are mutually so linked as to form a single general inventive concept.
A patent application must contain:
a request for the grant of a patent; a description of the invention; one or more claims for the protection of an invention by a patent (hereinafter: patent claims), a drawing referred to in the description or claims, when appropriate; an abstract.
A request for the grant of a patent shall contain an explicit indication that a patent is being sought, details concerning the applicant, details concerning the inventor or a statement to the effect that the inventor does not wish to be mentioned in the application, and the title of the invention clearly reflecting its essence. The responsible authority shall not investigate whether the applicant is entitled to protection. If the inventor does not wish his name mentioned in the request for the grant of a patent and in other documents under this Law, the applicant shall be required to furnish the responsible authority with the inventor’s written statement to that effect, within a period of three months from the date of the filing of the application at the latest.
An invention shall be described in a manner that is clear and complete enough for the invention to be carried out by a person skilled in the art. If the invention concerns a biological material and cannot be carried out on the basis of the description of the invention, the description shall be deemed to fulfil the conditions laid down in paragraph 1 of this Article if a sample of the naturally reproducible biological material is deposited with a relevant depository institution not later than the filing date of the application. The term “relevant depository institution” referred to in paragraph 2 of this Article shall mean an institution designated in accordance with the provisions of the Budapest Treaty on the International Recognition of the Deposits of Microorganisms for the Purpose of Patent Procedure concluded on 28 April 1977 with all subsequent revisions.
Patent claims shall define the subject matter for which protection is sought. They shall be clear, concise and fully supported by the description of the invention.
An abstract shall briefly set out the essential content of the invention and shall serve exclusively to provide technical information.
In order to be accorded a filing date, an application filed with the responsible authority must contain, on that date:
an indication that a patent is being sought; the given and family name or business name and address of the applicant; a description of the invention, even if it does not fulfil the prescribed requirements. The applicant may divide the subject matter of an application which has already been accorded a date of filing (original application) into two or more independent applications (divisional application) at his own discretion or at the request of the responsible authority. The division of applications shall be allowed only until the completion of preparation for publication of the application. The subject matter of the divisional application may not extend beyond the content of the original application, as filed. It shall retain the filing date of the original application and, where appropriate, shall enjoy the benefit of the priority of that application. A patent application which has been accorded a filing date cannot subsequently be amended in a manner that would extend the subject matter for which protection is being sought. Any amendments to the particulars of the application that do not extend its subject matter may take place prior to the taking of a decision on the application.
3. PRIORITY RIGHT