Montenegro Ratifies EPC, Amends Patent and Copyright Laws

On December 29, 2021, Montenegro adopted the Law on Ratification of the Convention on the Grant of European Patents, commonly known as the European Patent Convention (EPC), as well as amendments to the Patent Law and the Law on Copyright and Related Rights.

EPC Ratification

By adopting the Law on Ratification, which entered into force on January 8, 2022, Montenegro has fulfilled basic conditions for becoming a full member of the European Patent Organization (EPO) and will achieve this status after depositing the instrument of ratification with the German Ministry of Foreign Affairs, which is expected in the near future. The ratification will take effect on the first day of the third month after the instrument of ratification is deposited.

It has been possible to extend European patents to Montenegro since March 1, 2010, after Montenegro signed the Co-operation and Extension Agreement with the EPO.

Patent Law Amendments

While the previous Patent Law was already harmonized with the EPC, the relevant provisions referred to the Co-operation and Extension Agreement signed with the EPO. In the amended Patent Law, these provisions refer directly to the EPC and in essence remain the same, the most important of which are:

• A published European patent application gives preliminary protection to the subject of the patent application from the moment the applicant delivers the translation of the patent claims in the Montenegrin language to the person exploiting the invention;
• Once a patent is granted before the EPO, the patent holder must file, within three months from the date of grant, a request for entry of the European patent into the Montenegrin patent register, along with a translation of the patent claims and drawings (if the drawings are cited within the patent claims) in Montenegrin, and pay the necessary publication fees. Otherwise, the European patent will not be considered valid in Montenegro.

The Patent Law amendments also entered into force on January 8, 2022, but they will become applicable once the EPC ratification process is completed.

Copyright Law Amendments

The copyright law amendments, which entered into force on January 8, 2022, complete the harmonization of Montenegrin legislation with Directive (EU) 2014/29, as previous amendments only implemented a part of the provisions from the EU legislation.

Clear procedures for the establishment of Collective Management Organizations (CMOs) have been adopted. They outline the rights and responsibilities of the CMOs, right holders and users during the process of establishing a CMO, becoming its member, registering it before the Ministry of Economy and regarding every other aspect of its functioning. The amendments also precisely determine how CMOs and user associations can create tariff agreements and introduce out-of-court dispute resolution (mediation) for disputes arising between parties taking part in the collective management of rights.

The Ministry of Economy will perform regular yearly supervisions of CMOs, while extraordinary supervisions will be conducted if requested by the CMO, a right holder, a user, or by any intrested third party. The amendments also define what constitutes an offense committed by a CMO, members of its supervision board as well as its users.

The Market Inspectorate, Tourism Inspectorate, Tax Inspectorate and the Agency for Electronic Media are supervising the implementation of the law. Supervision can now be triggered ex officio or upon the request of a right holder or a person authorized by the right holder. Once the relevant Inspectorate or the Agency officially notifies the right holder on the measures taken upon their request, the right holder has 15 days to initiate legal action against the infringer or deliver a preliminary injunction issued by the competent court.

Inspectors may also temporarily prohibit the production of goods, confiscate them, or prohibit the performance of a service or any action which infringes copyright or related rights.

The Agency for Electronic Media, on the other hand, is authorized to:

• Temporarily prohibit an audiovisual media service provider from unauthorized broadcasting, rebroadcasting and cable retransmission of content; and
• Temporarily prohibit an electronic communications network operator from unauthorized retransmission of a certain media service provider’s content.

The relevant Inspectorate or the Agency for Electronic Media may require the right holder to compensate them for the costs of temporary storage of detained goods until the court procedure is finalized or for the damage caused by an unjustified confiscation.

By: Mladen Čolović

For more information, please contact Mladen Čolović at our Montenegro office.