New Montenegrin Design Law

On 22 December 2010, the Parliament of Montenegro adopted the new Law on the Protection of Industrial Design, which entered into force on 8 January 2011. The law prescribes re-registration of designs registered before the Serbian IPO prior to 28 May 2008 (opening date of the IPO of Montenegro). The final deadline to request re-registration is 8 January 2012, which means 12 months from when the law entered into force.

New Montenegrin Trademark Law

On 30 November 2010, the Parliament of Montenegro adopted a new Trademark Law, which entered into force on 16 December 2010.

The law brings an important novelty, affecting the owners of trademarks registered before the Serbian Intellectual Property Office before 28 May 2008 (opening date of the IPO of Montenegro). The new Law, in Article 65, obligates trademark owners to request entrance of their rights into the Montenegrin trademarks register within 12 months from the coming into force of this law.

This rule does not apply to trademark owners who:

Filed the renewal request,
Filed the request for Montenegrin Certificate of Registration,
Filed the request for change of name/address, or
Requested recordal of the assignment of rights before the IPO of Montenegro after the beginning of its operations.

The above requests are regarded as requests for entrance into the trademarks register.

Article 65 does not relate to International registrations registered before the WIPO.

Under the new Law, a trademark application will be examined on absolute grounds only and if it meets the requirements for registration, it will be published in the Official Gazette of the IPO of Montenegro. Third parties will have three months from the date of publication to file a written opposition.

Another novelty will be the possibility to appeal IPO decisions before the competent ministry. Furthermore, the cancellation of a registered trademark will be argued before the competent court as opposed to a proceeding before the IPO as prescribed by the current legislation.

"Serbia" - 1 October 2010

Serbia joins the EPO

Serbia's parliament has approved the country's accession to the European Patent Convention and the Republic of Serbia became a member of the European Patent Organization on 1 October 2010.

The other contracting states of the European Patent Organization are all of the 27 EU member states + Albania, Croatia, Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Switzerland and Turkey.

Apart from the Organization’s members, Bosnia and Herzegovina and Montenegro also recognize European patent applications and patents on their territory on the basis of bilateral extension agreements with the European Patent Organization.

"Albania" - 1 march 2010

On 11. February 2010, the Government of the Republic of Albania (AL) deposited its instrument of accession to the European Patent Convention (EPC).

The EPC will accordingly enter into force for Albania on 1 May 2010.

European patent applications filed on or after 1 May 2010 will include the designation of the new contracting state. It will not be possible to designate Albania retroactively in applications filed before that date.

To allow the new contracting state to be designated, the EPO will accord European patent applications filed in April 2010 the filing date of 1 May 2010 if the applicant expressly requests that filing date when filing the application.

No European patents for Albania can be granted on the basis of international applications with a filing date prior to 1 May 2010. However, a national patent can be granted, assuming that Albania has been designated in the international application. The designation of Albania at the time an international application with a filing date prior to 1 May 2010 enters the European phase is legally invalid. The extension agreement between Albania and the European Patent Organisation will terminate with the entry into force of the EPC in Albania on 1 May 2010. It will therefore no longer be possible to extend European patent applications and patents to Albania. The extension system will, however, continue to apply to all European and international applications filed prior to 1 May 2010, as well as to all European patents granted in respect of such applications.

"Montenegro" - 25 february 2010

On 10 February 2010, the IPO of Montenegro began issuing certificates of registration for trademark applications filed after its opening in May of 2008.

The first certificates of registration are expected for trademark -applications filed in June - July 2008.

On10 February 2010, the IPO of Montenegro launched its first Intellectual Property Gazette. The Official Gazette of the IPO of Montenegro is available in a PDF format on the official website of IPO

On 1 March 2010, the Co-operation and Extension Agreement between Montenegro and the European Patent Organization enter into force. Under this agreement, it is possible to extend the protection conferred by European patent applications and European patents to Montenegro. European patents extended to Montenegro will have the same effect as national patents granted for the territory of Montenegro. Extensions to Montenegro is available only for European patent applications and international patent applications (PCT), entering European regional phase, filed on or after March 1, 2010 and for which the extension fee has been paid to the European Patent Office. The extension fee is EUR 102.

"Serbia - IP 2009 overview" - 10 february 2010

IP Overview
In 2009, Serbian Intellectual Property Office received 538 patent applications (320 national patent application and 218 European patent application extended to Serbia), and 105 petty patent applications. Also, in 2009, Serbian IPO granted 403 patents and 86 petty patents. In same period, Serbian Intellectual Property Office received 2087 trademark application (in 2008 – 3178), and registered 3340 trademarks. On 31 December 2009 there were 1229 patents in force, 253 petty patents and 3178 trademarks

Patents
Patent Law of Republic of Serbia was adopted on 2 July 2004, and entered into force on 10 July 2004. With this Patent Law, patent law of Serbia is fully harmonized with E.U Laws, as well as with TRIPS Agreement, and relevant provisions of the WIPO Patent Law Treaty, and Patent Cooperation Treaty.

In accordance with Patent Law, the 20-month term for filing PCT applications in Serbia under Chapter 1 was extended to 30 months. The time limit for entering the national phase of an international patent application under Chapter II (PCT Article 39 (1)) remains at 30 months. However, it can be extended by one month upon payment of additional fees. In addition, it is now possible to file request for re-establishment of right under condition prescribed by PCT.

Also, from 1 November 2004 it is possible to extend the protection conferred by European patent applications and patents to Serbia without any additional examination. Extended European patent applications and patents will enjoy essentially the same protection in Serbia as the patents granted by the European Patent Office for the member states of the European Patent Organization.

Trademarks
Trademark Law of Republic of Serbia was adopted on 11 December 2009, and entered into force on 19 December 2009. The main objective of the new Law is harmonization of the provisions regulating the legal protection of the trademarks with the Trademark Law Treaty (TLT) of 1994, the WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 1995, which means that goal of the new Law is the improvement and strengthening of the legal protection of the trademarks by means of introducing the legal solutions from the above mentioned international regulations.

Copyright
The Copyright Law of Republic of Serbia was adopted on 11 December 2009, and entered into force on 19 December 2009. It regulates the rights of the authors of literary, scientific and artistic works, right of performers, right of the first publisher of a free work, rights of producers of phonograms, videograms, broadcasts and databases, as rights related to the copyright..., and the way of exercising the copyright and related rights and the judicial protection of such rights. In same time, Copyright Law increased the rules for collective organizations in Serbia.

"EPO and Montenegro sign extension agreement" - 16 February 2009

*The European Patent Organisation and Montenegro* have signed an agreement on the extension of European patents to Montenegro. The date of entry into force of the Agreement will be determined by a mutual exchange of notes between the Government of Montenegro and the Organisation later this year.

"Macedonia accedes to the European Patent Convention" - december 2008

On 28 October 2008, the Government of the former Yugoslav Republic of Macedonia (MK) deposited its instrument of accession to the European Patent Convention (EPC).

The EPC will accordingly enter into force for the former Yugoslav Republic of Macedonia on 1 January 2009.

The European Patent Organisation will thus comprise the following 35 member states as from 1 January 2009:

Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland,Macedonia, Turkey and the United Kingdom.

European patent applications filed on or after 1 January 2009 will include the designation of the Macedonia.

Any PCT request filed on or after 1 January 2009 will automatically designate the Macedonia, as new EPC contracting state, for the purpose of obtaining a European patent.

The extension system will, however, continue to apply to all European and international applications filed prior to 1 January 2009, as well as to all European patents granted in respect of such applications.

"London Agreement" - december 2008

The London Agreement enters into force in all participating member states of the European Patent Convention (EPC) on 1 May 2008. It will reduce the post-grant translation costs for European patents considerably and make patenting in Europe less expensive.

With the ratification of the London Agreement the participating states agree to largely or entirely waive the requirement for translations of granted European patents into their national languages.

As yet, the parties to the London Agreement are:

Croatia, Denmark, France, Germany, Iceland, Latvia, Liechtenstein, Luxembourg, Monaco, Netherlands, Slovenia, Switzerland, Sweden and the United Kingdom.

The majority of EPC-member states have not yet ratified the Agreement, but it is expected that some of the remaining states will sign up as soon as it comes into force. Austria opposes the Agreement and is not very likely to sign up it in the near future.

The current system

European patents are filed in one of the official languages of the European Patent Office (EPO) - English, French or German. For grant to occur, translations of the allowed claims into the other two languages are required.

After grant, the patent holder decides whether to validate the patent in one, several or all of the EPC-member states. Where the language of the proceedings is different from the official language of the state in which the patent is to be validated, currently a translation of the granted text must be filed for the patent to take effect. This step can be very expensive.

The "London Agreement" (2000)

With the London Agreement entering into force on 1 May 2008, post-grant translation costs for European patents will be reduced considerably. The London Agreement distinguishes between two groups of participating states:

(1) States having an official language in common with one of the official languages of the EPO dispense with translation requirements. No translation has to be filed in these states. Thus, no national publication fees and related attorney's fees have to be paid. Members of this group are France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland and the United Kingdom.

(2) All the other states require that a translation of the European patent claims into one of their official languages be supplied. In addition, these states may require that the description of the European patent be supplied in one of the official languages of the EPO.

2aThe following states require that the claims be supplied in their official language: Croatia, Denmark, Iceland, Latvia, Netherlands, Sweden and Slovenia.

2b The following states ask for an English description: Croatia, Denmark, Iceland, Netherlands and Sweden.

-In Denmark, Iceland, the Netherlands and Sweden, the European patent may also be supplied in the national language.

-The Latvia have not prescribed any language under Article 1(2) of the London Agreement

The translation of the claims as granted in the other two official languages of the EPO still has to be filed. In case of a dispute under a patent, all participating states reserve the right to demand a translation of the patent in the local official language of that state.

The Agreement will apply to all European patents for which the mention of the grant is published in the European Patent Bulletin after the agreement enters into force in the state concerned.

Effects for applicants

Patenting strategies should be revised taking into consideration the effects of the London Agreement. It might be advantageous to designate more contracting states that have dispensed with translation requirements in order to extend the scope of protection. However, the need to pay annuities in these states has to be kept in mind.

Since the status of the London Agreement will change frequently in the near future due to the possibility for member states of the EPC to opt into it at any time, it is advisable to check for changes before applying for a European patent and designating contracting states.

VLAHOVIC IP office will gladly provide you with further information on the latest developments in this matter.

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