This page is designed to provide our clients and professional contacts with a brief overview of recent developments in the field of intellectual property and with information about recent activities of our firm. If you are interested in more detailed information, please contact us directly.

Extension of European patents to Montenegro (ME)

The Agreement on the extension of European patents to Montenegro enters into force on 1 March 2010. From that date it will be possible to extend to Montenegro the protection conferred by European patent applications and patents. Extension to Montenegro is available for any European and international patent application filed on or after 1 March 2010.

New EPO Fees Structure as of 1 April 2009 (.doc format or .pdf format)

New EPO fees April 2009.doc

New EPO fees April 2009.pdf

Macedonia and Montenegro join the EPO

Macedonia acceded to the European Patent Convention (EPC) on 1 January 2009, and Montenegro signed the documents acceding to the EPO on 13 February 2009.

Armenia

New Patent Law entered into force on January 1, 2009.

Trademarks : The grace period for non-use of a registered trademark has been extended to five-year period (was three-year period) as of the registration or the last use date.

Turkmenistan

New National Laws on Patents (14 November 2008) and on Trade and Service Marks (15 November 2008) finally entered into force in Turkmenistan.

Trademarks : Use of registered trademarks is now compulsory, and the grace period for non-use of a registered trademark is a three-year period as of the registration or the last use date.

IP Protection in Montenegro (ME)

Further to the declaration of independence of the Republic of Montenegro on May 21, 2006, the Union of Serbia and Montenegro ceased to exist on June 3, 2006, and the Republic of Montenegro was recognized as an independent country. The Industrial Property Laws of the former Union of Serbia and Montenegro, i.e. Patent Law, Trademark Law, Law on the Protection of Models and Designs, and Law on the Protection of Geographic Indications of Origin of July 2004, with the amendments of January 1, 2005, have been taken over for the territory of Montenegro, as a temporary solution until the appropriate national laws are drafted. A new national Patent Law entered into force on November 8, 2008, and the remaining IP Laws are in preparation. The Republic of Montenegro has become a member of WIPO, joined the Paris Convention, the Madrid Agreement and Madrid Protocol, PCT, as well as other international conventions and treaties previously signed by former Yugoslavia and/or Serbia and Montenegro (all as of June 3, 2006).

While designating Montenegro in International Registrations, as well as the continuation of effect to Montenegro for International Registrations previously designating Serbia and Montenegro was provided for after the country acceded the Madrid System, a document regulating re-validation of the IP rights applied for in Serbia and Montenegro before June 3, 2006 was finally adopted by the government of Montenegro only on September 20, 2007. The IP Office of Montenegro started to operate on May 28, 2008.

Patents, petty patents and designs registered and entered into the corresponding registers at the IP Office of former Serbia and Montenegro until June 3, 2006, or in the IP Office of Serbia before the opening of the IP Office of Montenegro, are valid in Montenegro until their expiration, i.e. until the date the corresponding maintenance fees are paid at the IP Office of Serbia and Montenegro, i.e. at the IP Office of Serbia, without any need for re-revalidation or payment of an additional fee in Montenegro.

Rights to pending patent, petty patent or design applications, applied for at the IP Office of Serbia and Montenegro, i.e. at the IP Office of Serbia before May 28, 2008, or national phases of PCT applications could be recognized in Montenegro provided that an application for recognition of the rights (along with a copy of the corresponding application previously filed at the Office of Serbia and Montenegro or at the Office of Serbia, and payment of the corresponding official fee) is filed at the IP Office of Montenegro by May 28, 2009.

Trademarks registered and entered into the corresponding register at the IP Office of former Serbia and Montenegro until June 3, 2006, or at the IP Office of Serbia before the opening of the IP Office of Montenegro, are valid in Montenegro until their expiration, i.e. until the date the corresponding maintenance fees are paid at the IP Office of Serbia and Montenegro, i.e. at the IP Office of Serbia, without any need for re-validation or payment of an additional fee in Montenegro. The same applies to trademark registrations where renewal requests were filed at the IP Office of former Serbia and Montenegro until June 3, 2006, or at the IP Office of Serbia before the opening of the IP Office of Montenegro (May 28, 2008). Regarding the pending applications, the procedure is similar to the one mentioned above for pending patent applications, i.e. the term for re-filing the same on the basis of the corresponding Serbian applications expires on May 28, 2009.

IP Protection in Kosovo (KS)

This province, which was under United Nations’ administration (UNMIK), declared its independence on February 17, 2008. Kosovo has not yet been recognized as an independent country by the UN and has not yet joined WIPO or any of the international IP treaties. However, local government bodies operate independently from the Serbian authorities and a number of laws, among which are the industrial property laws, have entered into force. The local IP Office was established and started to operate on November 19, 2007.

Apart from filing of new patent and trademark applications , the regulations of October 1, 2007 provided re-validation (re-registration or re-filing of pending applications) of the former Yugoslavia, former Serbia and Montenegro and finally Serbia IP rights, applied for before this date. It was foreseen that the corresponding requests for re-validation could be filed within a one-year period, as of the opening of the local IP Office, i.e. until November 18, 2008 (expired!).

The extension to Kosovo, or continuation of effect regarding International Registrations valid in Serbia (previously designating former Yugoslavia or former Serbia and Montenegro), has not yet been regulated. Therefore, it is recommended to file the corresponding national applications.

Language agreement enters into force in the European patent system

The language agreement (“London Agreement”) entered into force on 1 May 2008 and made patenting in Europe cheaper by reducing post-grant translation costs.

The consequence of the implementation of the agreement in Switzerland is that a patent assigned by the European Patent Office in English with effect in Switzerland now occurs without the document being translated into one of the official national languages. After the language agreement took effect (i.e. for EP patents for which a decision to grant has been published after 1 February 2008), however, the patent claims (which define the scope of protection for a patent) are still published in all three of the official EPO languages and are thus available in German and French. The right to demand that a patent owner provide translations in an official national language for a conflicting patent in case of a legal litigation remains unchanged by the agreement. (source: http://www.ige.ch/e/jurinfo/j10008.shtm)