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We, the Captains-Regent of the Most Serene Republic of San Marino hereby promulgate and order the publication of the following Law enacted by the Grand Council on June 24th 1997: TITLE I - PATENTS Section 1 - Definition of "Patent" and "Invention" For the purposes of this Act the following terms shall have the following meanings: 1) "invention" - the idea of an inventor which provides a practical solution to a specific technological problem; the invention may be or may relate to a product or a process; 2) "patent" - the title granted to protect the invention.
1) An invention is patentable if it is new, involves an inventive step and is susceptible of immediate industrial application. 2 a) An invention shall be taken to be new if it does not form part of the state of the art. b) The state of the art shall be taken to comprise all matter which has been made available to the public anywhere in the world by publication in tangible form, or, in the Republic of San Marino, by oral description or use, before the date on which the application claiming the invention is filed, or where applicable, before the priority date of that invention. c) For the purposes of Subsection b) above, any disclosure of the invention to the public shall be disregarded if occurring in the six months preceding the date of filing or, where applicable, the priority date of the application and if this disclosure was due to or made in consequence of acts committed by the applicant or his successor in title or was obtained by a breach of confidence by a third party from the applicant or his successor in title. 3 a) An invention shall be taken to involve an inventive step if, in relation to the state of the art of relevance to the application claiming the invention, it is not obvious to a person skilled in the art. b) An invention shall be taken to be such only if it introduces an innovation or novel elements which were not accessible to the public prior to the date on which the application was filed. 4) An invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry. The term "industry" shall be taken in the broadest sense, including crafts, agriculture, fisheries, and services. 5) A patent shall not be granted for inventions: - for a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body. This provision does not apply to a product, particularly substances or compositions of substances, invented for use in any such method; - whose exploitation would be contrary to 'ordre public' or morality; the working of an invention shall not be regarded as contrary to 'order public' or morality only because it is prohibited by a law or a regulation; - for animal breeds and any essentially biological processes for the production of animals; this does not apply to microbiological procedures or products obtained by the use of these processes.
1) Every application for a patent shall be filed with the "Trade Marks and Patents" Office of the Republic of San Marino referred to in Section 30 below and shall contain a request, a description, a claim or claims, one or more drawings, where required, and an abstract. The application shall also be accompanied by the payment of the prescribed fee. 2 a) Every application shall contain a request for the grant of the patent, the name and all the other prescribed information regarding the applicant, the inventor and his representative, if any, and the ownership of the invention. b) If the applicant is not the inventor, the application must be accompanied by a declaration justifying the right of the applicant to the patent. 3) The description shall disclose the invention in a manner which is clear enough and complete enough for the invention to be worked by a person skilled in the art, and must specifically indicate the best way of working the invention known to the applicant. 4 a) The claim or claims shall define the matter for which the applicant seeks protection. The specification and the drawings may be used to interpret the claims. b) The claim or claims must be clear and concise. They must be wholly based by the description. 5) The drawings must be supplied when they are necessary in order to understand the invention. 6) The abstract is only used for the purposes of providing technical information. It is not taken into account for the interpretation of the claims. 7) The application must relate to one single invention or to a group of inventions which are linked so as to form one general single inventive concept. At the request of the "Trade Marks and Patents" Office, the applicant must supply a copy of any communication which the applicant has received regarding the results of research or tests performed in relation to the patent application or any other form of protection filed by the applicant abroad for the same, or substantially the same invention, claimed in the application filed with the Office.
1 a) The "Trade Marks and Patents" Office shall grant the date of filing and ensure compliance with the conditions in the implementing Regulation and ascertain that the application meets the conditions of Section 3 and the provisions of the relevant implementing Regulation. b) The "Trade Marks and Patents" Office shall ascertain that the invention is in compliance with Sections 1 and 2, and ascertain compliance with the provisions of Section 2 2) and 3) only in so far as the implementing Regulation so prescribes, and only to that extent. c) In order to implement the provisions of Subsection 1 b) the implementing Regulation may require the "Trade Marks and Patents" Office to use research reports or reports of substantive examination prepared by another authority. 2 a) Whenever the "Trade Marks and Patents" Office ascertains that the application complies with Subsection 1) above, it shall grant the patent. Otherwise the patent shall be refused. b) When granting the patent, the "Trade Marks and Patents" Office: I) shall publish a notice that it has been granted; II) issue to the proprietor of the patent a certificate that the patent has been granted, and a copy of the patent; III) register the patent; IV) publish a copy of the patent against payment of the prescribed fee.
1) The rights accruing to industrial inventions, save the right to be recognized as the author, may be assigned and transferred. The right to be recognized as the author can be claimed, after the death of the author, by the person designated by the author to this effect; when no such designation has been made, or if after the death of the designated person, the aforementioned right may be claimed by the spouse or the descendants to the second generation; in their absence or after their death, by the parents and other ascendants, and in their absence or after their death, by relatives to the fourth degree of affinity inclusive. 2) The working of a patented invention in the Republic of San Marino by persons who are not the patentees, requires the permission of the patentee. 3) For the purposes of this Act, the "working" of the patented invention means any one of the following actions: a) when the patent has been granted for a product: I) the manufacture, import, offer for sale, sale and use of the product; II) the storage of this product for the purposes of offering it for sale, sale and use. b) When the patent is granted for a process: I) the use of the process; II) the performance of any of the actions referred to in Subsection a) above in relation to any product directly obtained as a result of that process. 4) The patentee is also entitled, in addition to any right, remedy or action at his disposal, and without prejudice to Section 7 5) below, to sue any person for infringement of the patent by performing, without his consent, any action referred to in Subsection 3) above or performing any act which makes it likely that such an infringement may occur. 5) The rights vested in the patent do not extend to: I) acts relating to items placed on sale in the Republic of San Marino by the patentee or with his consent; II) the use of articles on board of airplanes or land vehicles or ships of other countries which temporarily or accidentally enter the airspace, territory or waters of the Republic of San Marino. 6) In the case of an invention made in the performance of a commissioned work or by an employee of another, the right to the patent for the invention shall, unless otherwise specified in a contractual agreement, be owned by the person commissioning the work or by the employer. 7) The employee is entitled to fair remuneration, taking account of his salary, in consideration of the economic value of the invention and all the benefits accruing to the employer as a result of that invention.
1) A patent shall remain effective for twenty years from the date of deposit. 2) An annual fee to maintain the patent is payable to the "Trade Marks and Patents" Office each year from the year in which the application is filed. A grace period of six months is allowed for the payment of the annual fee, against payment of the prescribed surcharge.
1) At the request of any person who is able to demonstrate his capacity to work the invention patented in the Republic of San Marino and filed with the "Trade Marks and Patents" Office after the expiration of four years from the date of filing of the patent application, or three years from the date of the grant of a patent, whichever is the later, the "Trade Marks and Patents" Office may grant a compulsory license if the patented invention is not being worked or is not being worked sufficiently in the Republic of San Marino. 2) Notwithstanding the provisions of Subsection 1) above a compulsory license shall not be granted if the patentee is able to demonstrate to the "Trade Marks and Patents" Office that circumstances exist to justify the insufficient working of or the failure to work the invention patented in the Republic of San Marino, and if the applicant is unable to show that he has tried to obtain authorization to use the invention from the lawful owner under favorable commercial terms and conditions, and that these attempts have not been successful within a reasonable period of time. 3) The holder of a compulsory license is entitled to work the patented invention according to the terms set out in the decision to grant the license, and must begin working the patented invention by the deadline set down in that decision, and must subsequently work the invention sufficiently on condition that an adequate compensation is paid to the patentee, as stipulated in that decision. 4) The grant of a compulsory license does not prevent the patentee from granting other license agreements, and does not prevent the grant of other compulsory licenses.
Section 8 - The Meaning of "Industrial Design" 1) For the purposes of this Act, any composition of lines or colors or any three-dimensional shape, whether or not associated with lines or colors, is considered to be an industrial design provided that the composition or shape gives a special aspect to a product of the industry or craft and can be used as a model for a product of an industry or craft. 2) The protection afforded by this Act does not extend to any element in an industrial design which is only used in order to produce a technical result.
1) An industrial design is registrable if it is new. 2) An industrial design is new if it has not been divulged to the public anywhere in the world by being published in tangible form or, in the Republic of San Marino, by use or in any other manner, before the priority date of the registration application. Section 2 2 c) shall apply mutatis mutandis. 3) Industrial designs which are contrary to 'ordre public' may not be worked.
The application to register an industrial design shall be filed with the "Trade Marks and Patents" Office of the Republic of San Marino and must contain a request, a sample of the article embodying the industrial design or a graphic representation of it, and an indication of the type of products for which the industrial design is to be used. The application must be accompanied by the prescribed fee. Section 11 - Examination, Registration of the Industrial Design or Rejection of the Application 1) The "Trade Marks and Patents" Office of the Republic of San Marino shall agree on the date of filing and ensure compliance with the conditions of the implementing Regulation and ensure that the application is compliant with the terms of Section 10 and the relevant provisions of the implementing Regulation. 2) The "Trade Marks and Patents" Office shall examine the industrial design to ensure compliance with Sections 8 and 9 3). 3) If the "Trade Marks and Patents" Office ascertains compliance with the requisites referred to in Subsection 1) it shall register the industrial design, publish a notice of the patent and issue a patent certificate to the applicant. Otherwise it shall reject the application.
1) The working of an industrial design registered in the Republic of San Marino by persons who do not own it requires the owner's consent. 2) For the purposes of this Act, the "working" of a registered industrial design means the manufacture, sale or import of articles embodying that industrial design. 3) Section 5 5 I) applies mutatis mutandis. The owner of the registered industrial design has, in addition to any other right, remedy or action available to him, the right to sue any person infringing the industrial design by performing, without his consent, any of the acts referred to in Subsection 2) above, or performing any acts which make it likely that such an infringement may occur. 4) The registration of an industrial design has a term of five years dating from the date on which the registration application is filed. Registration may be renewed for two consecutive five-year terms, against payment of the prescribed fee.
Section 13 - The Meaning of "Trade Mark" and "Collective Mark" For the purposes of this Act: - by "trade mark" is intended any sign or combination of signs that are capable of being represented graphically and are capable of distinguishing the goods or services of one company from those of other companies; - by "collective mark" is intended any sign or combination of signs that are capable of being represented graphically and are capable of distinguishing the origin or any other common characteristic, including the quality, of the goods or services of different companies which use this sign with the consent of the owner of the registered collective mark.
For the purposes of this Act, the following may not be registered as trade marks: - signs which are illegal, or contrary to 'ordre public' or morality; - signs which are unable to distinguish the goods or services of a company; - signs which are likely to mislead the public or persons in the trade, particularly with relation to the geographic origin, nature or characteristics of the goods or services; - signs composed of coats of arms, emblems or other signs of public interest or those indicated in current international conventions, in the cases and under the conditions indicated in those conventions, unless the competent authority has authorized their registration; - signs which are devoid of novelty, or are identical or similar to another trade mark registered for similar products or services, or which are identical or similar to a trade mark which is well known or has a distinctive character.
1) Applications for the registration of a trade mark are filed with the "Trade Marks and Patents" Office after payment of the prescribed fee, and must be accompanied by a reproduction of the trade mark and a list of products or services for which the registration of the mark is being requested; 2) The Office shall examine the application in order to ascertain: - the formal regularity of the application and compliance with the conditions set forth in Subsection 1) above; - the absence of any of the grounds for excluding protection provided in Sections 14 a), b), c) and d) of this Act. 3) Whenever these conditions are met, the Office shall register the mark, and publish a notice of registration, and issue to the applicant a registration certificate. Otherwise, the application shall be refused.
Protection may be denied to a registered trade mark which is identical or similar to a trade mark registered for products or services which are similar or identical and which has been filed previously or which has a priority date, and its registration may be canceled by order of the Courts.
1) The proprietor of the trade mark is entitled to make exclusive use of that mark for any product or service for which it is registered, and to prevent all third parties not having his consent from using a mark identical or similar to the registered mark for identical or similar goods or services in a way to cause confusion on the part of the public. 2) The proprietor of a registered mark, in addition to any other right, remedy or action available to him, may sue any person infringing the mark by using the mark without his consent in connection with any product or service for which it has been registered, and any person who acts in such a way as to make that infringement likely to occur. Whenever this is likely to cause confusion on the part of the public, this right is extended to the use of a sign similar to the registered mark and used in connection with goods or services similar to those for which the mark has been registered. 3) Whenever the registered mark is well-known in the country, the proprietor of the mark is also entitled to prohibit third parties from using a similar or identical sign to the registered mark for goods or services which are not similar to those for which the mark is registered, where the latter is of good repute in the country and where the use of the later trade mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the mark. 4) The rights conferred by the registration of a trade mark do not extend to actions relating to articles that have been placed on sale in the Republic of San Marino by the proprietor of the registered mark or with his consent.
1) The registration of a trade mark remains valid for ten years from the date on which the application for registration is filed. 2) Registration may be renewed for consecutive ten-year periods upon payment of the prescribed fee. The effects of renewal count from the expiry date of the previous registration.
1) Save where otherwise provided by Subsection 2) below, Sections 14, 15, 16, 17 and 18 also apply to collective marks. 2) The application for the registration of a collective mark must designate the mark as a collective mark and must be accompanied by a set of regulations governing its use, as well as controls and penalties. 3) The proprietor of a registered collective mark must notify the "Trade Marks and Patents" Office of any change made to the regulations governing that mark.
1) Every license agreement relating to the registration of a trade mark or its application must make provision for the grantor to exercise effective control of the quality of the products or services supplied by the licensee in relation to which the mark is used. If the license agreement does not make provision for quality control of this kind or if the control is not effectively exercised, the license agreement is invalid and the exclusive rights referred to in Section 17 1) and 3) may not be exercised. 2) The registration of or application for a collective mark may not constitute the subject-matter of a license agreement.
Section 21 - The Meaning of "Trade Name", "Indication of Origin" and "Denomination of Origin" For the purposes of this Act: - "trade name" means the name or designation identifying the company; - "indication of origin" means any indication or sign used to indicate that a particular product or service originates in a given country, region or other geographic entity; - "denomination of origin" signifies the name of the country, region or other geographic entity which serves to designate a product from which it originates, whose typical qualities are due exclusively or essentially to the geographical environment, including the natural and human factors, or both; any name which is not the name of a country, region or other geographic entity shall be considered to be the name of a geographic entity if it refers to a specific geographic area and is used in relation to specific products.
Notwithstanding the statutory or regulatory obligation to register trade names, such names are at all events protected against all unlawful acts committed by third parties even before they are registered, or even if they are unregistered. In particular, it is considered unlawful for third parties subsequently to use a trade name, whether as a trade name or as a trade mark, service mark or collective mark, or use any similar trade name or mark in a manner likely to mislead the public.
It is unlawful to make direct or indirect use of an indication of origin which is false or misleading in relation to the origin of the products or services or the identity of their producers, manufacturers or suppliers.
It is unlawful to make direct or indirect use of a denomination of origin which is false or misleading or to imitate a denomination of origin even if the true origin of the product is indicated or if the denomination is used in the form of a translation or is accompanied by such terms as "kind", "type", "imitation" or any similar wording.
Any act of competition which is contrary to fair industrial and commercial practice is unlawful.
Section 26 - Right of Priority Every application for the grant of a patent or the registration of an industrial design or a trade mark may, in compliance with the provisions of the Paris Convention of March 20th 1883, as subsequently amended, for the protection of industrial property may contain a statement claiming the priority of a previous application for the same, and the effect of such a declaration is the one provided by that Convention.
1) Any change in the ownership of the patent, the registration of a trade mark or a collective mark, or the ownership of the relevant application, is recorded at the request of every party concerned and, except in the case of the application, it is published by the "Trade Marks and Patents" Office. This change is ineffective in relation to third parties until it is recorded. 2) Every change in the ownership of the registration of a collective mark or the ownership of a relevant application therefor, requires the prior approval of the Congress of State.
1) A patent is null and void if the invention does not meet the requirements given in Section 2. 2) Industrial models and designs are null and void if they do not meet the requirements referred to in Sections 8 and 9. 3) The mark is null and void if it does not meet the requirements of Section 14. A) The patent for an invention lapses: a) if the holder fails to pay the annual renewal fee within the terms specified in Section 6; b) if the invention has not been worked within two years from the date on which the compulsory license referred to in Section 7 is issued; c) in the event that a right of priority is vested in another person who has filed an application for a patent for the same invention in another State signatory to the Paris Convention of March 20th 1883, pursuant to the provisions of that Convention. B) The mark lapses for failure to use it or if use is suspended for an uninterrupted period of five years, save where the failure to use it is lawfully justified.
Whenever the applicant is ordinarily resident or has his main place of activity outside the Republic of San Marino he must be represented by an attorney who is authorized to deal with the "Trade Marks and Patents" Office of the Republic of San Marino.
1) For the purposes of enforcing this Act, the "Trade Marks and Patents" Office of the Republic of San Marino is hereby instituted. 2) A Regental Decree shall subsequently be issued indicating powers and the remit of this Office. The same decree shall also establish the registration fees and any other matter relating to the applications required by this Act.
1) The "Trade Marks and Patents" Office shall keep separate Registers for patents, industrial designs and trade marks. Collective marks shall be recorded in a special section of the Trade Marks Register. All the records provided by this law shall be entered into these Registers. 2) The "Trade Marks and Patents" Office shall publish all the notices provided by this law in a special section of the 'Bollettino Ufficiale'.
2) Without prejudice to the foregoing, remedy in respect of trade marks, patents or industrial designs already registered or in the course of registration may be sought before the ordinary Courts, the plaintiff being required to submit a copy of the originating complaint to the "Trade Marks and Patents" Office. 3) The owner of a registered trade mark, patent or industrial design may, in the course of civil proceedings, request the Court to seize some or all the objects which infringe that right, or to issue an injunction to prevent any further infringements. 4) Notwithstanding Sections 5 5), 12 3) and 17 4), infringement consists of the commission in the Republic of San Marino of any of the acts indicated in Sections 5, 12, 17 and 21 by any person who is not the holder of the right, and without the right-holder's consent.
1) All previously acquired rights in trade marks, patents, industrial models and designs already registered on the date of entry into effect of this Act on the basis of the system then existing are saved, notwithstanding the obligation on the right-holders to request registration with the "Trade Marks and Patents" Office within six months of the date of entry into force of this Act. Said request must be accompanied by documentation giving evidence of the original registration. 2) Sections 5 c), 12, 13, and 41, and the insert on "Models and Designs" in Section 77 of the "Copyright Protection" Act, Law No. 8 of January 25th 1991, are repealed on the day the "Trade Marks and Patents" Office begins operating.
By Regental Decree, an implementing regulation will be issued governing the implementation of this Act, including transitional provisions for cases outstanding on the date of entry into force of this Act and the registrations effective at that date.
This Act shall come into force on the fifteenth day following the date of its official publication.
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