Montenegro Adopts New Patent Law

On July 16, the Parliament of Montenegro adopted the new Law on Patents, which enters into force on August 6.

Montenegro’s new Law on Patents aims to harmonize national patent legislation with the EU and the relevant international treaties. Furthermore, the new law addresses some flaws of the former patent law, adopted in 2008, and regulates the enforcement of patent rights before the courts in more detail.

The main novelty is the provisions related to the substantive examination. Namely, the Montenegro IPO conducts only formal examination of a patent application and if the formal requirements are met, the patent is published and thereby granted. Under the new law, the right owner has to submit the proof of patentability before the end of the ninth year of its validity and pay the prescribed fee. If no proof of patentability is filed, the patent will cease to exist at the end of the 10th year of its validity. The proof of patentability is a certified copy in the Montenegrin language of a patent granted for the same invention, following the substantive examination conducted by a state or an interstate office in accordance with Article 32 of PCT, as well as by the other office with which the local office has a cooperation agreement at the time of filing the proof.

Under the new law, the IPO is competent to nullify a patent, while under the previous law only the courts had such jurisdiction. The civil protection, including an action to establish the right to a patent, an action to establish the status of the inventor as well as patent infringement actions, remain under the competence of courts.

Finally, the new law makes it possible for rights owners who failed to maintain protection of their rights acquired in the State Union of Serbia and Montenegro by June 3, 2006, or in the Republic of Serbia by May 28, 2008, to revalidate the rights in Montenegro. The revalidation request must be filed within 6 months from the date the new law entered into force and the outstanding annuity must be paid. The same is possible for European Patents extended to Serbia before the cooperation and extension agreement between the EPO and Montenegro came into force in March 1, 2010.

Further novelties include the regulation of compulsory licenses for patents relating to the production of pharmaceutical products for export to countries with public health issues, clarification of the procedure for obtaining a Supplementary Protection Certificate (SPC) including the paediatric extension, as well as various clarifications of requirements and procedures that have proven to be necessary.

By: Jasna Jusic

For more information, please contact Jasna Jusic at our Montenegro office.