News Patents and designs 1999

Decree of 29 June 1999 No. 74.

THE REPUBLIC OF SAN MARINO

We, the Captains-Regent

of the Most Serene Republic of San Marino

Given article 34 of the Law of 24 June 1997 No. 64;

Given the resolution of the State Congress dated 28 June 1999 No. 17;

Making use of our faculties;

We decree, promulgate and order the publication of:

Title 1 – PATENTS OF INVENTION

Article 1

Patentable inventions

1) The following are not deemed to be patentable according to Article 1 of the Trademarks and Patents Framework Act:

a) discoveries, scientific theories and mathematical methods,

b) aesthetic creations

c) schemes, principles and methods for intellectual activities, games or business activities and computer programs,

d) presentation of information.

2) The provisions under the preceding paragraph 1 exclude the patentability of the articles or activities therein cited only to the extent to which the patent application or the patent relates to said articles or activities considered as such.

3) The protection of special names or signs, intended for distinguishing the invention, can only be obtained by means of a separate application, according to TM law.

Article 2

Novelty

1) In order to determine the novelty of an invention, the elements of the state of the art can only be considered individually.

2) The state of the art also comprises the contents of the patent applications filed in the Republic of San Marino, or of other patent applications that are in force in the same State, in particular Italian patent applications, protected according to Article 43 of the Agreement of Friendship and Good Neighborly Relations between San Marino and Italy of 31 March 1939, as they have been filed, which bear a filing date prior to the one mentioned under paragraph 2 letter b) of Article 2 of the Trademarks and Patents Framework Act and that have been published or made available to the public on this date or later.

3) The provisions under the preceding paragraphs and under article 2 paragraph 2) of the Trademarks and Patents Framework Act do not exclude the patentability for the implementation of one of the methods under Article 2 paragraph 5), 1st paragraph of the Trademarks and Patents Framework Act, of a substance or a composition of substances that has already been considered by the state of the art, provided that its use in any of these methods is not comprised in the state of the art.

4) The disclosure at official or officially recognized exhibitions, held according to the convention on international exhibitions signed in Paris on 22 November 1928 and subsequent revisions, is not taken into account provided that it did not take place before six months of the filing date.

Article 3

Inventive activity

In order to determine inventive activity, the documents of the state of the art referred to under Article 2, paragraph 2) of the present Regulation are not taken into account.

Article 4

Patent Owner

1) The right to the patent belongs to the inventor or his assignees. If the invention is made by more inventors, the rights deriving from the patent are governed by the law, unless agreements to the contrary have been made.

2) In the case where two or more inventors have made an invention, each of them per se, the right to the patent on such an invention will belong to the party whose patent application bears the earliest filing date or, if applicable, earlier priority date, provided that the patent application has been published.

3) For the purposes of the procedures before the Patents and Trademarks Office, the applicant is supposed to be entitled to the patent and legitimated to exploit it.

4) The patent applicant can designate in the application one or more persons on whom to confer rights on the patent, and specifying the nature of such rights.

5) This designation must be recorded in the Register of Patents and in the patent itself, provided that the acceptance of the designated person is notified to the Patents and Trademarks Office prior to granting the patent.

6) If the invention has been made by several inventors, the rights deriving from the patent, unless agreed otherwise, are governed by the provisions of the laws relative to shared ownership.

7) Unless agreed otherwise, the assignment of the rights deriving from the patent implies for the buyer the duty to pay the relevant fees; and if the transfer is made in favor of several persons, jointly or by shares, they must all jointly pay the said fees.

8) All benefits that are recognized or will be recognized to foreigners in the territory of the Republic of San Marino, in relation to patents, are extended to the citizens of San Marino.

9) The employees of the Patents and Trademarks Office can apply for patents, or become assignees or in any case be a party to patents, either directly or through an intermediary, only after two years from the date they have ceased to be employed in the said office.

Article 5

Inventions made by employees

1) In the absence of the conditions provided for under paragraphs 6) and 7) of Section 5 of the Trademarks and Patents Framework Act and if the industrial invention in question pertains to the activity field of a private company or the public Administration in which the inventor is employed, the employer has a right of pre-emption for the exclusive or non-exclusive use of the invention or for the acquisition of the patent, as well as the faculty to apply, or to buy, for the same invention, patents abroad, upon payment of a royalty or a price to be fixed by deducting an amount corresponding to the support and/or opportunities received by the inventor from the employer to bring about the invention.

2) In the case referred to under the preceding paragraph, the inventor has the duty to inform the employer of the realization of the invention, its filing as patent application and finally the obtaining of the grant. The employer will be entitled to exert the pre-emption right within three months from receipt of the notification of the granted patent by the employed inventor.

3) The relations set up according to the pre-emption right referred to under paragraphs 1) and 2) are deemed terminated in case the due sum is not totally paid on the expiry date.

4) In the cases provided for under the preceding paragraphs 1) to 3) of this Article, if an agreement has not been reached in relation to the remuneration, royalty or price, or to the respective terms, then a committee of arbitrators will be set up, composed of three members: one appointed by each party and the third appointed by the first two members, or - in case of disagreement - by the Commissionary Court of the Republic of San Marino.

5) To the effect of the preceding paragraphs, an industrial invention for which a patent has been applied within a year since the inventor has left the private company or the public administration, in the activity field in which the invention itself is comprised, is considered to be made during the contract period or while still in employment.

Article 6

Designation of inventor

1) With regard to the applicant of the patent application or the patent, the inventor is entitled to be mentioned before the Patents & Trademarks Office.

2) Each designated inventor will be mentioned in the patent application or in the file of the patent, unless he expressly renounces it by means of a written request addressed to the Patent and Trademark Office.

3) The Patent and Trademark Office does not verify whether or not the designation of the inventor is correct. An incomplete or wrong designation of the inventor can be rectified only by means of a petition accompanied by a declaration of consent of the previously designated person and, in case the petition has not been filed by the applicant or the owner of the patent, also by means of the latter's declaration of consensus.

4) If a third party submits a final judgment to the Patent and Trademark Office, according to which the applicant or the owner of a patent has the duty to designate him as inventor, the Patent and Trademark Office records him in the Register of Patents and publishes the relevant notice in the Official Bulletin.

5) The inventor who has been denied the recording of his name in the Register of Patents and in the patent may file an appeal.

6) According to the preceding paragraph, the appeal does not interrupt the granting procedure of the patent, provided that the inventor's name is subsequently recorded in the Register of Patents.

Article 7

Filing Date

1) Subject to the provisions of Article 9 and Article 10 of the present Regulation, the filing date of an application is the date on which at least the following documents have been filed:

a) an application for a San Marino patent of invention,

b) sufficient information to identify the applicant,

c) a description of the invention.

2) If upon receipt of the patent application, the San Marino Patent and Trademark Office deems that the provisions under paragraph 1 have not been accomplished, the applicant will be asked to comply with the provisions of the present Regulation. If the applicant complies with the provisions, the filing date will be the date of receipt of all missing documents. Otherwise, the application will not be considered as filed.

3) If, in the description of the patent, reference is made to the drawings, the San Marino Patent and Trademark Office will ask the applicant to produce the missing drawings. If the applicant complies with such a request, the filing date will be the date of receipt of the missing drawings. If the applicant does not comply with such a request, the filing date will be the date of receipt of the description and any reference to the drawings will be deleted.

4) In case a filing date has been attributed, the San Marino Patent and Trademark Office will inform the applicant in writing or will forward him a receipt.

Article 8

Filing a patent application

1) If, by means of a final judgment, it is established that the right to the patent belongs to a person other than the one who filed the application, then the latter may, if the patent has not been granted yet and within three months from the final judgment of the sentence, avail himself of the following options:

a) take over the patent application in his name as applicant to all intents and purposes;

b) file a new patent application whose validity, to the extent that the contents of the same do not go beyond the contents of the first application, dates back to the filing or priority date of the first application which, in any case, becomes ineffective;

c) obtain the rejection of the application.

2) If the patent has been granted in the name of a person other than the assignee, then the latter will have the following options:

a) obtain, through a retroactively effective decision, the assignment of the patent to his name;

b) have the patent granted to persons not entitled to it annulled.

3) If, on the expiry date of two years from the publication referred to under Article 23 of paragraph 1) of this Regulation, the assignee has not availed himself of the faculties referred to under the preceding paragraph 2) b), the nullity of the patent granted to a person not entitled to it can be requested by any person who has an interest in it.

Article 9

Documents required for filing a patent application

1) The application must be filed by the inventor or by his assignee, that is to say through his patent agent.

2) The application must contain:

a) the applicant's surname, first name, nationality and address, as well as those of his agent, if any;

b) the indication of the invention, in form of a title, briefly but accurately expressing its characteristics and purposes.

3) The application must be accompanied by:

a) a description of the invention containing the drawings of the invention, if required;

b) a document attesting the payment of the prescribed fees;

c) the designation of the inventor.

4) If an attorney has been appointed, the application must be accompanied by a power of attorney.

5) If the applicant does not submit the designation of the inventor or the power of attorney upon filing the application, it will be possible to file these documents within two months from the filing date of the application.

6) Should priority be claimed, the application must also be accompanied by the documents referred to under the following Article 10.

Article 10

Documents required for claiming priority

1) If the priority resulting from the filing of an earlier application is to be filed, the applicant will submit to the San Marino Patent & Trademark Office the documents and the information attesting the priority as specified in the following paragraphs.

2) Any application that is valid as a regular national application according to the laws of the State in which it has been filed or according to bilateral or multilateral agreements is deemed to be suitable for claiming the right of priority. By a regular national application is meant any application suitable to establish the date the application has been filed, whatever the later developments of the said application.

3) The application must be accompanied by a document containing the name of the applicant, the title of the invention, the description and the drawings of the invention constituting the subject-matter of that application, as well as the filing date of the application.

4) If the application has been filed by third parties, the applicant must also prove that s/he is the successor or assignee of the first applicant.

5) The documents referred to under the preceding paragraphs 3 and 4 must be accompanied by a translation in Italian language and, as regards quantity specification, must contain equivalent measures expressed using the metric system in addition to the original measures.

6) The San Marino Patent & Trademark Office is entitled to require that the application be sworn and certified before the authorities of San Marino.

7) The certificates, which are also translated into Italian, granted by the directors or presidents of industrial property offices of states belonging to the World Intellectual Property Organization are exempt from being legalized and can be substituted by official publications bearing the stamp or seal of approval of the office they come from.

8) The applicant is responsible for the exact correspondence of the above-cited translations with the originals.

9) Multiple priorities can be claimed for a patent application even though they come from different States. Multiple priorities can be claimed, if necessary, for the same application. In case of multiple priorities, the terms which start with the priority date start from the date of the earliest priority.

10) If one or more priorities are claimed for the patent application, the priority right only covers the elements of the patent application contained in the application or applications whose priority is claimed. The priority right can be claimed with a single application if there is unity of invention.

11) If some elements of the invention for which the priority is claimed do not appear in the claims formulated in the earlier application, then in order for priority to be recognized it is sufficient that all documents of the earlier application precisely reveal the said elements.

12) In accordance with the priority right, the priority date is considered as the filing date of the application. The right to claim priority must be stated in the patent application.

13) The patent is granted without mentioning priority if within six months from the filing of the application the above-cited documents are not submitted in the prescribed terms. If the priority of an application filed according to the international conventions in force is rejected, then notice of this rejection must be mentioned in the patent.

Article 11

Documents constituting the description

1) The description must contain:

a) an extract only for technical information purposes,

b) the technical description of the invention,

c) one or more claims specifically indicating what is meant to form the subject-matter of the patent,

d) the drawings, if any.

2) The description must be clearly written and printed with indelible ink on ISO A4 paper. The minimum margins are 1.5 cm on all sides of the sheet.

3) The application must be accompanied by four copies of the description and the applicant is responsible for their identity. The four copies must be signed by the applicant or by his attorney.

Article 12

Contents of the extract

1) The extract must contain the title of the invention.

2) The extract must include a brief summary of the technical description, the claims and the drawings; the extract must indicate the branch of the art to which the invention belongs and must be drawn up so as to allow a clear understanding of the technical problem, the essence of the solution of this problem by means of the invention and the main use(s) of the invention. The extract may also contain the chemical formula which, among those contained in the patent application, best characterizes the invention. It must not contain any declaration as to the merits and values attributed to the invention or its hypothetical applications.

3) The extract must preferably contain not more than one hundred and fifty words.

4) If the patent application includes any drawings, then the applicant must indicate the figure of the drawing or, exceptionally, the figures of drawings that s/he wishes to be published together with the extract. The San Marino Patent and Trademark Office may decide to publish another figure or other figures should it deem that it or they better characterize the invention. Each of the main features mentioned in the extract and illustrated by the drawings must be followed by a reference mark in brackets.

5) The extract must be drawn up in such a way as to serve as an instrument of selection in the field of the art and particularly to enable the establishing of whether or not it may be necessary to refer to the patent application itself.

Article 13

Contents of the technical description

1) The technical description must:

a) start with the title of the invention in the exact same wording used in patent application;

b) specify the field of the art to which the invention refers;

c) indicate the prior state of the art to the extent to which, to the applicant's knowledge, it may be considered useful for understanding the invention and preferably also citing the sources describing this prior state of the art;

d) describe the invention, as it is characterized in the claims, so that the technical problem can be understood, even though it is not explicitly designated as such, together with its solution; also indicating any advantages gained by using the invention with respect to the prior state of the art;

e) briefly describe the figures contained in the drawings, if any; f) indicate in detail at least one way to work the invention for which protection is sought; such an indication must cite examples, if any, and any references to drawings;

g) explicitly indicate, if it is not already evident from the description or the nature of the invention, how the latter may have industrial application.

2) The technical description must be submitted in the manner and order mentioned in paragraph 1, unless, due to the nature of the invention itself, a different manner or order makes the invention easier to understand or makes for a shorter presentation.

Article 14

Form and content of the claims

1) The claims must define, by indicating the technical features of the invention, the subject of the application for which protection is requested. If justified, the claims must contain:

a) an introduction containing the designation of the subject-matter of the invention and the technical features necessary to define the claimed elements which, taken as a whole, belong to the state of the art;

b) a characterizing section, preceded by the wording "characterized in that" or "characterized by" which describes the technical features for which, together with the features referred to under letter a) the protection is requested.

2) A patent application may contain more independent claims of the same category (product, process, device or use) if the subject-matter of the invention cannot be properly covered by a single claim.

3) Each claim mentioning the essential characteristics of the invention can be followed by one or more claims concerning particular ways of implementing this invention.

4) Each claim that contains all the features of another claim (dependent claim) must contain, if possible in the introduction section, a reference to the other claim and must specify any additional feature for which protection is requested. A dependent claim is also admitted when the claim to which it directly refers is a dependent claim as well. All dependent claims that refer to a single prior claim or to several prior claims must, as far as possible, be grouped in the most appropriate way.

5) The number of claims must be reasonable, taking account of the nature of the invention for which protection is requested. In case of several claims, they must be numbered progressively using Arabic numerals.

6) The claims, unless there is an absolute necessity to do so, must not be based, as regards technical features of the invention, on references to the description or to the drawings; in particular, they must not be based on references such as "as described in the description section" or "as illustrated in the figure of the drawings".

7) If the patent application contains any drawings, then the technical features mentioned in the claims must as a rule, in order to clarify the claim, be followed by reference marks - given in brackets - relating to these features. The reference marks cannot be considered as a limitation of the claim.

Article 15

Form of the drawings

1) The usable surface of the sheets containing the drawings must not exceed 26.2 cm x 17 cm. The usable or used surface of these sheets must not be framed. The minimum margins are the following.

a) upper margin: 2.5 cm

b) left margin: 2.5 cm

c) right margin: 1.5 cm

d) lower margin: 1.5 cm

2) The drawings must be executed as follows:

a) The drawings must be made with continuous black or blue lines that are sufficiently thick and dark with a uniform width and well-defined edges, and with no colors or shading used.

b) The sections must be shown using dashes which must not hinder the reading of reference marks or arrows.

c) The scale of the drawings and the clarity of their graphics must be such that a photographic reproduction with linear reduction to two thirds still enables all the details to be distinguished without effort. In exceptional cases where the scale is given in the drawing, then this scale must be represented graphically.

d) The numbers, letters and reference marks appearing in the drawings must be simple and clear with no exception. The use of brackets, circlings or commas together with numbers and letters is not allowed.

e) All lines in drawings must normally be made by using drawing instruments.

f) The elements in the same figure must be properly in proportion to each other unless differences in proportions are necessary for figure clarity.

g) The height of numbers and letters must not be lower than 0.32 cm. The Latin alphabet and, where necessary, the Greek alphabet must be used for letters shown in drawings.

h) A drawing sheet can contain more than one figure. When figures drawn on more than one sheet are part of a complete figure, they must be presented in such a way that the figure be completely represented and so that no part of the figures on the other sheets be hidden. Figures must preferably be arranged vertically, on one or more sheets, clearly separated from each other and without wasting space; they must be numbered consecutively using Arabic numerals, independently of sheet numbering.

i) Reference marks may be used in drawings only if they appear in the description and claims, and vice-versa. Reference marks referring to the same elements must be identical throughout the application.

j) Drawings must not contain explanations except for any necessary short labels such as "water", "steam", "open", "closed", "section AB" and any short keywords necessary for understanding electrical plans, system diagrams and process flow charts.

3) Process flow charts and diagrams are considered to be drawings.

4) If the applicant files only one copy of the description or of the drawings, the remaining two copies may be submitted within two months of the filing date of the application.

Article 16

How to file microbiological material

1) If an invention concerns a microbiological method or a product obtained by means of such a method and makes use of a microorganism which is not accessible to the public and which cannot be described in such a manner to allow any expert in the field to work the invention, then the following provisions must be complied with in the patent application for the description to have any validity:

a) a culture of the microorganism must be filed at the latest when filing the patent application in a center authorized for the collection of such cultures;

b) the filed application must contain all the relevant information available to the applicant on the microorganism characteristics;

c) the application must contain the indication of an authorized collection center for said cultures at which a culture of the microorganism has been filed as well as the filing number and filing date of said culture; the San Marino Patent & Trademark Office has the right to require a copy of the filing receipt. Centers that are recognized for the purposes of obtaining a European patent or an international authority recognized by virtue of a convention ratified by the Republic of San Marino are considered as authorized.

2) The indications referred to under letter c) of the preceding paragraph may be notified within two months starting from the filing date of the patent application. The notification of these indications is considered as an irrevocable consent and without reservation of the owner of the application to give access to the culture to any person who, from the date on which the patent application is accessible to the public, makes a formal request at the collection center in which the microorganism has been filed.

3) Such a request must be notified to the owner of the application or of the patent and must contain the following indications:

a) the name and address of the person filing such a request:

b) a commitment on the part of the person submitting such a request with respect to the owner of the patent or of the patent application to give no access to any third party to the culture concerned;

c) a commitment to make use of such a culture through a qualified expert, identified by name, exclusively for experimental purposes up to the date on which the patent application is rejected or withdrawn or the patent is definitively lapsed or declared null and it is no longer possible to reinstate it in the name of the applicant or the patent owner.

4) The expert appointed for such a use is jointly responsible for any abuse committed by the person filing the request.

Article 17

Unity of invention

1) Each application must refer to one invention only.

2) If the application contains more than one invention, the San Marino Patent & Trademark Office will invite the applicant, by establishing a deadline, to limit such an application to only one invention, leaving the applicant free to decide whether - for the remaining inventions - to file respective divisional applications which will be effective from the filing date or, if relevant, from the priority date of the originally filed application.

3) If an appeal is filed against this decision, then the deadline established by the San Marino Patent & Trademark Office will be suspended.

4) The applicant may also, of his/her own free will, divide a pending application into two or more divisional applications until the San Marino Patent & Trademark Office issues a decision as to the grant of the patent.

5) The content of divisional applications must not go beyond the content described in the original filed application.

6) The priority documents and any necessary translations of them that have been filed with the San Marino Patent & Trademark Office with respect to the original application are considered to be filed with respect to each divisional application.

7) If on confirmation, according to Article 22 of the present Regulation, it is clear that the granted patent lacks unity of invention, the patent may be appropriately divided in accordance with the provisions established by the present Regulation.

8)The applicant must pay the prescribed fees for each divisional application.

Article 18

Amendment, correction and withdrawal of an application

1) During the examination procedure and even after publication of the application referred to under Article 19 of this Regulation, but in any case before the San Marino Patent and Trademark Office has delivered a decision as regards granting the patent, the applicant has the right to timely amend, supplement, also by means of new examples, or to limit the description, the claims or the originally filed drawings, by means of a footnote in the description or corrections of the drawings, subscribed either by the applicant or by his attorney.

2) The San Marino Patent & Trademark Office must keep the documentation relating to the original application, enter the date the amendments were received and adopt any other appropriate precautionary measure.

3) No amendment or correction can extend the content of the application beyond the content of the application as filed.

4) The applicant can always withdraw his/her application, provided that his/her request reaches the San Marino Patent and Trademark Office in good time during the patent granting procedure, and in any case before the San Marino Patent & Trademark Office has issued a decision as regards patent granting.

Article 19

Publication of the application and provisional protection

1) Subject to the provisions under the subsequent paragraphs 4) and 5) of this Article, the San Marino Patent & Trademark Office publishes in the prescribed form any application filed in the shortest time possible 18 months after the filing date or, if priority is claimed, from the date of the latter.

2) The printed files of the description and drawings of each single patent application are put on sale by the San Marino Patent & Trademark Office.

3) The said files are forwarded free of charge, in exchange, to the industrial property offices of other States that have requested them.

4) Applications that have been withdrawn or definitely rejected before completion of the technical preparations for publication will not be published.

5) If the applicant makes a written request to publish the application before the lapse of 18 months referred to under paragraph 1) of this Article, then the San Marino Patent & Trademark Office will publish the application in the shortest possible time after receipt of this request.

6) After the publication date of the patent application, anyone may have access to the files of the application.

7) The patent application, starting from its publication, confers to the applicant the same rights conferred to him/her by a patent. In respect of the persons to whom the application has been notified with the description and the drawings, if any, by the applicant, then the patent application, from the date of this notification, confers to the applicant the same rights conferred by the patent. The application is deemed to have no effect, right from the start, if it is subsequently withdrawn or if the granting of the patent has been rejected.

Article 20

Research reports and observations by third parties

1) After publication of the patent application, any third party may submit observations or explanations against the patentability of the invention on which the application is based. Observations must be submitted in writing and must specify the grounds for complaint. In this case, they will be added to the patent application file. Third parties cannot participate in the proceedings before the San Marino Patent & Trademark Office.

2) Research reports - in respect of patent applications corresponding to the San Marino patent application - produced by authorities or organizations conducting documentary research are enclosed with the patent application file.

3) The observations, research reports and complaints referred to in paragraphs 1 and 2 are notified to the applicant or the patent owner who then have the right to submit a reply.

4) The San Marino Patent & Trademark Office may also ask the applicant to give a written opinion on these research reports and observations referred to in the preceding paragraphs and on any other statements on the state of the art that have been produced during the granting procedure and that may constitute valid elements in order to oppose the patentability requirements of the invention on which the patent application is based.

5) The applicant may, upon payment of the prescribed fees, request that documentary research be carried out at an authority or a national or international organization, either public or private, associated with the San Marino Patent & Trademark Office so as to establish whether the aim of the subject-matter of the application meets the requirements as to patentability provided by the Trademarks and Patents Framework Act and by the present Regulation. Such a request may be filed at any time up to the date of the decision regarding patent granting. In this case, the San Marino Patent & Trademark Office may ask the applicant to produce a translation in a language other than the one of the claims and/or of the whole description if necessary to be supplied to the research authority.

6) The granting procedure will be suspended by the San Marino Patent & Trademark Office until such time as the requested research report has been produced.

7) The Director of the San Marino Patent and Trademark Office will publish information concerning any offices or organizations that have undersigned an agreement to carry out novelty research for patent applications in San Marino, and also the relevant fees and procedures to be followed.

Article 21

Examination of the application, remarks and patent granting

1) The examination of the application is directed to ascertain whether the invention complies with the requirements provided by the Patents and Trademarks Framework Act and the present Regulation. It is directed to ascertain, first of all, that the patent application complies with the formal requirements and does not in any case concern the technical or economical value of the invention.

2) The San Marino Patent & Trademark Office does not assess whether the invention complies with the requirements under Articles 1, 2 and 3, and paragraphs 3 to 7, of the Patents and Trademarks Framework Act and Articles 1, 2, 3 and 17 of the present Regulation.

3) Subject to the provisions in the preceding paragraphs 1 and 2, if the San Marino Patent & Trademark Office finds that the application does not meet requirements provided for by the Trademarks and Patents Framework Act and by the present Regulation, the remarks resulting from the examination of the application must be notified in written to the applicant together with a deadline, which may be extended should there be proven grounds, according to the present Regulation. If the applicant does not reply to the remarks or objections raised by the San Marino Patent & Trademark Office within the established deadline, then the application will be rejected.

4) The decision by which the San Marino Patent & Trademark Office rejects the patent application, or does not accept it completely, must be notified in writing to the applicant, who then has the right to file an appeal.

5) If the San Marino Patent & Trademark Office finds that all requirements provided for by the Trademarks and Patents Framework Act and by the present Regulation are met by the application, it will grant the patent, upon payment of the relevant fees.

6) The granting of the patent does not constitute a bar to judicial actions concerning its validity and rights deriving from the invention.

Article 22

Confirmation of patent granting

1) Subject to the provisions under Article 20 and Article 21 of the present Regulation, the applicant or the owner of the patent or the holder of an exclusive license must submit to the San Marino Patent & Trademark Office, before the expiry date of a nine-year period from the filing date of the application, written declarations attesting that the invention meets the patentability requirements referred to under Articles 1, 2 and 3, paragraphs 3 to 7, of the Trademarks and Patents Framework Act and Articles 1 to 3 and 17 of the present Regulation, otherwise the patent lapses at the end of the ninth year.

2) Any patent granted for the same invention by the European Patent Office or by another organization or authority acting as an international authority according to the Patents Cooperation Treaty (PCT) subsequent to an examination based on the same or corresponding patentability criteria, as provided for by Articles 1, 2 3, and paragraphs 3 to 7, of the Trademarks and Patents Framework Act and Articles 1 to 3 and 17 of the present Regulation may be considered to be a suitable declaration.

3) The scope of the protection conferred by a San Marino patent cannot go beyond the scope of protection conferred by any foreign patent that has been submitted in accordance with the preceding paragraph. The description, the claims and the drawings must be amended so as to comply with such declarations.

4) The Director of the San Marino Patent & Trademark Office will publish information on the offices or organizations and relevant declarations acceptable by the San Marino Patent & Trademark Office for the purposes established by this Article.

Article 23

Patent Publication

1) The San Marino Patent & Trademark Office publishes notice of granted patents and confirmed patents in the Official Bulletin.

2) After a patent has been granted, the description and drawings will be made available for public inspection. The inventor's name and other necessary data for describing the patent will be published in the Official Bulletin.

3) The Letters Patent must be accompanied by a copy of the description, claims and drawings of the invention in the form in which the patent is granted.

4) The San Marino Patent & Trademark Office decides whether or not to make the patent file available for public inspection.

Article 4

Register of Patents

1) The Register of Patents must contain at least the following information for each filed application, for each granted or confirmed patent:

a) filing number of the patent application;

b) filing date of the patent application;

c) surname, name and residence or domicile of the applicant, or company name and registered office in case of companies, organizations or non-profit associations;

d) the inventor's or inventors' name(s) and surname(s);

e) title of the invention;

f) data of any prior foreign application, if priority is claimed with the date, the applicant's name and the patent number if the latter has been obtained;

g) case data when priority is claimed for provisional protection at exhibitions;

h) patent granting date;

i) patent filing number if it differs from the application one;

2) In the same Register and for each patent, due note must be made of payments of fees as well as of deeds listed under Article 80.

3) The above data will be recorded as they are defined during the granting or confirmation process and during the life of the patent.

Article 25

Rights conferred by the patent

1) In accordance with Article 5 of the Trademark and Patent Framework Act, the patent owner also has the right to prevent third parties - without his/her consent - from supplying to a person who is not entitled to work such an invention, information concerning an essential element of the invention, in order to implement it, when it is known to third parties, or the circumstances make it obvious, that such information is suitable for working the invention. This provision does not apply when the said information consists of main commercial products, unless the said third parties lead the said person to work the invention. The persons referred to under paragraph 8) of the present Article are not considered to be entitled to work the invention.

2) If the patent concerns a process or method and the product thus obtained is new, any identical product is then supposed to have been obtained, unless the contrary is proved, by means of the method or process which is the subject-matter of the invention.

3) When the owner of a patent concerning a new method or industrial process furnishes to third parties the information necessary for working the patent, it is supposed that s/he has also given a license to make use of such method or process unless agreements to the contrary have been reached.

4) Subject to the provisions under article 5 paragraph 5) of the Trademarks and Patents Framework Act, the exclusive rights conferred by a San Marino patent lapse after the product has been marketed by the owner of the patent or with his/her consent in the Republic of San Marino.

5) The exclusive rights considered by the present Regulation and by the Trademarks and Patents Framework Act are conferred by granting the patent. The patent effects start from the date the application was made available to the public together with the description and drawings, if any.

6) A patent cannot be renewed after twenty years, nor can its duration be extended for more than that time.

7) A patent for industrial invention, whose implementation implies the working of inventions protected by prior patents for industrial invention that are still in force, cannot be worked or used without the consent of the owners of such patents.

8) Whatever the subject-matter of the invention, the rights conferred by the patent cannot be extended to

a) acts carried out privately and for non-commercial purposes, or experimentally,

b) the extemporaneous preparation for individual cases of a medicine in a pharmacy according to a medical prescription, and to medicines thus prepared.

Article 26

Interference of rights deriving from San Marino and Italian patents

In accordance with Article 43 of the Friendship and Good Neighborly Relations Agreement between San Marino and Italy of 31 March 1939, the following provisions will apply:

1) if the same invention is simultaneously protected by an Italian and San Marino patent application or patent that are equally valid and have the same applicant, owner or assignee:

a) the working of an invention made by any third party in the territory of the Republic of San Marino, but not in Italy, constitutes an act of infringement or usurpation of the San Marino application or patent but not of the Italian application or patent, and the applicant, owner or assignee may start a legal action before the court against the infringers or usurpers in San Marino;

b) the working, by any third party, of the invention in Italy, but not in San Marino, constitutes an act of infringement or usurpation of the Italian application or patent but not of the San Marino application or patent, and the applicant, owner or assignee can start a legal action against the infringers or usurpers in Italy.

2) If an invention is protected by a valid Italian patent application or patent, but not by a San Marino patent application or patent, the working, by any third party, of the invention in the territory of San Marino constitutes an act of infringement or usurpation of the patent rights in Italy and the owner or assignee can bring judicial actions according to the provisions of the present Regulation and of the Trademarks and Patents Framework Act.

3) If an invention is protected by a San Marino patent application or patent, the working, by any third party, of the invention in the Italian territory constitutes an act of infringement or usurpation of the patent rights in San Marino and judicial actions can be brought according to Italian law.

4) In accordance with Article 2, paragraph 2) of the Trademarks and Patents Framework Act and subject to the provisions of the present Regulation, if for an identical invention there is a simultaneous Italian patent application or patent and a San Marino patent application or patent, both of them valid and with different applicants, owners or assignees, having no legal or economic relationship with each other:

a) the working, only in the Republic of San Marino, but not in Italy, by the owner him/herself or by his/her assignee, of the invention subject-matter of the patent application or patent in San Marino does not constitute an act of infringement or usurpation of the Italian patent application or patent and no judicial action can be brought against it;

b) and the working only in Italy, by the owner him/herself or by his/her assignee, of the invention subject-matter of the Italian patent application or patent does not constitute an act of infringement or usurpation of the Italian patent application or patent and no judicial action can be brought against it.

Article 27

Rights of prior use

1) Anyone who, in good faith, during the twelve months prior to the filing date of the patent application or the priority date, has made use of the invention in his/her own firm can continue to make use of it free of charge within the limits of prior use.

2) Such a right can only be transferred along with the firm in which the invention is being used. Providing evidence of prior use and its extension is the prior user's responsibility.

Article 28

Scope of the invention and interpretation of the claims

1) The scope of protection conferred by the patent is defined by the claims, which must be interpreted in the light of the description and drawings so as to combine the right protection for the patent owner with a reasonable level of certainty for any third party.

2) For the purposes of determining the scope of protection it is necessary to take account of those elements which at the moment of an alleged infringement are equivalent to the elements to which reference is made in the claims.

3) When determining the scope of protection, it is necessary to adequately take account of any declaration that may in a non-ambiguous manner limit the scope of the claims, delivered by the patent applicant or owner during the granting procedure of the patent or on the validity of the patent.

4) If the patent contains examples of embodiments, functions or results of the invention, the claims must not be interpreted as being limited to such examples.

5) In the period leading up to patent granting, the scope of protection conferred by the patent application is determined by the claims stated in the patent application according to Article 19 of the present Regulation. However, the patent as granted or amended during the procedures of confirmation, in accordance with Article 22, of limitation, in accordance with Article 3, or of annulment, in accordance with Article 3 of the present Regulation, retroactively determine the protection conferred by the patent application, provided that the scope of protection is not in this way extended.

Article 29

Working of the invention

1) The industrial invention that is the object of a San Marino patent must be worked in the territory of the Republic of San Marino and the Italian State but to an extent that is not severely disproportionate to the needs of the Republic of San Marino;

2) The introduction or sale in the territory of San Marino of any objects manufactured abroad constitutes working the invention.

3) Inventions relating to articles displayed for the first time at an official or officially recognized exhibition, in the territory of San Marino or of the Italian State, are considered to be worked as of the day the articles were displayed up to the closing date of the exhibition, provided they have been exhibited for at least 10 days or, in case of an exhibition of shorter duration, for the whole period thereof.

Article 30

Compulsory licenses

1) The compulsory license referred to under article 7 of the Trademarks and Patents Framework Act may also be granted:

a) if the working of the invention has been interrupted or reduced, for over three years, to such an extent that it is severely disproportionate to the needs of the Republic of San Marino;

b) if the invention protected by an Italian or San Marino patent cannot be worked without prejudice to the rights conferred by a San Marino patent granted on the basis of an earlier application. In this case, a license can be granted to the owner of the later patent to an extent necessary to exploit the invention, provided that the latter represents a considerable technical progress with respect to the subject-matter of the earlier patent. If both inventions have the same industrial purposes, a compulsory license is granted only under the condition that a license for the later patent be granted in favor of the owner of the earlier patent should the latter file a request in this sense.

2) For the purposes of implementing the provisions under article 7 of the Trademarks and Patents Framework Act, the working of the invention patented in the Italian State to an extent to sufficiently comply with the needs of the Republic of San Marino is to be considered as a sufficient reason for not granting a compulsory license.

3) For the purposes of implementing the provisions of article 7, paragraph 2, of the Trademarks and Patents Framework Act, the causes that are independent of the will of the patent owner or of his assignees do not include the lack of financial means and, if the product itself is marketed abroad, do not include the lack of demand in the domestic market for the patented article or article obtained using the patented process.

4) A compulsory license may be granted to a licensee who works the invention in Italy, provided that it meets the needs of the Republic of San Marino, subject to the rights of any Italian patents relating to the same invention.

5) A compulsory license is revoked if the conditions that led to its granting cease to exist permanently and taking into account the interests of the patent owner and licensee. The patent owner may ask to check whether such conditions continue to be permanent.

6) A compulsory license cannot be granted to an infringer of an invention.

7) The compulsory license is granted for a period of time that does not exceed the remaining duration of the patent and, unless the owner of the patent or his assignee have given their consent, it can only be transferred with the business of the licensee or with the particular branch thereof in which the license itself is used.

8) The grant of a compulsory license does not exclude the possibility, also for the licensee, to start a judicial action concerning the validity of the patent or the rights originating therefrom.

9) The granting of a compulsory license does not exonerate the patent owner or his assignee from the duty of working the invention.

10) The patent lapses if the invention has not been worked within two years from the granting of the first compulsory license or if it has been worked to a severely disproportionate extent for the needs of the state.

11) Anyone wishing to obtain a license according to Article 7 of the Trademarks and Patents Framework Act must file a petition at the San Marino Patent & Trademark Office specifying the amount of the remuneration and the payment conditions. The San Marino Patent & Trademark Office, by registered letter with return receipt, will promptly inform the patent owner and any other party who has acquired any right on the patent on the basis of registered or recorded deeds.

12) Within sixty days from receipt of the registered letter, the patent owner and anyone entitled to it on the basis of registered or recorded deeds may appeal against the acceptance of the petition; that is to say, they have the right to declare they do not wish to accept the amount of the remuneration and the payment conditions. The appeal must have solid grounds for it to be made.

13) The San Marino Patent & Trademark Office will promptly notify the petitioner, by registered letter with return receipt, of the appeal filed in accordance with the provisions under the preceding paragraph 12 and the relevant grounds therefor.

14) Within sixty days from the receipt of the registered letter, the petitioner must submit his observations to the San Marino Patent & Trademark Office.

15) The license is granted or denied by a decision issued by the San Marino Patent & Trademark Office.

16) The decision issued to grant the compulsory license will also state the duration, working manner, guarantees and any other condition on which the grant is dependent. The amount of the remuneration and the payment terms, if an appeal is filed in accordance with paragraph 12 of the present article, are determined according to paragraph 2) of Article 98 of the present Regulation.

17) The terms and conditions of a license may be amended, through a decree issued by the San Marino Patent & Trademark Office, upon request of either interested party, if there are good reasons therefor.

18) As to modification of the remuneration, paragraph 3) of Article 98 will apply.

19) The license is revoked by a decree of the San Marino Patent & Trademark Office if the conditions established for working the invention have not been complied with or the owner of the license has not attended to the payment of the remuneration in the prescribed amount and conditions. If the owner of the patent under which a compulsory license has been granted, or his assignee, grant permission to use the same patent on more favorable conditions than the ones established for the compulsory license, the same conditions will be extended to the compulsory license upon request of the licensee. The notification to the interested parties of the adopted decrees is effected by the San Marino Patent & Trademark Office.

20) The decree issued to grant the license, to amend the relevant conditions, to revoke and determine or amend the remuneration are published in the Official Bulletin and recorded in the Register of Patents.

Article 31

Modifications and amendments of the patent

1) The applicant may ask the San Marino Patent & Trademark Office to amend or make corrections to the text of the patent to limit the scope of protection.

2) The scope of protection conferred by the patent may not be modified to such an extent to go beyond the one of the original application.

3) The owner of a patent may ask the San Marino Patent & Trademark Office to make corrections in order to eliminate registration errors committed in good faith.

4) If the San Marino Patent & Trademark Office brings some amendments to the patents, they will be published or made available to the public and due note will be taken in the Register of Patents.

Article 32

Renunciation and limitation of the patent

1) The owner of a patent can renounce the patent by a deed filed with the San Marino Patent & Trademark Office to be recorded in the Register of Patents.

2) If deeds or decisions attributing or establishing property rights of any third party on the patent, or judicial petitions by which the attribution or ascertainment of such rights has been requested, the renunciation is ineffective if it is not accompanied by the written consent of the third party itself.

3) The patent can be limited as regards the scope of protection requested on petition of the owner and must be accompanied by the description and drawings as modified.

4) If the San Marino Patent & Trademark Office accepts the petition, the applicant must provide for a new payment of the printing fee in case the originally granted patent has already been printed.

5) A request for limitation cannot be accepted if a nullity action is pending in respect of the patent and until the relevant final judgment has been issued. Likewise it cannot be accepted without the consent of the parties indicated under paragraph 2 of the present Article.

6)The San Marino Patent & Trademark Office will publish the notice of patent limitation in the Official Bulletin.

Article 33

Lapse

1) The patent lapses:

a) on expiry of the deadline established under Article 6, paragraph 1, of the Trademarks and Patents Framework Act;

b) if the owner has renounced the patent, as from the date on which such a renunciation is effective;

c) by non-payment, at the expiry date, of the annual fee due according to Article 6, paragraph 2, of the Trademarks and Patents Framework Act and if, within six months from the said expiry date, the patent owner or his assignee has not attended to the payment of the due annual fee and of the fine due for the delay. In this case the provisions of Article 4 must be complied with.

2) As far as the scope of protection has been limited according to Articles 22, 31 and 32 and to the date on which the limitation has been published in the Register of Patents, for the part of the patent that has not been maintained.

3) The San Marino Patent & Trademark Office takes note in the Register of Patents of the reasons for the lapse of the patent.

Article 34

Lapse by non-payment of the renewal fee

1) On expiry of the month on which the annual fee is due and on expiry of the subsequent six months' grace, as provided by Article 6 of the Trademarks and Patents Framework Act for the payment of the fine, the San Marino Patent & Trademark Office will notify the interested party that the payment of the due fee and fine has not been effected within the prescribed term and will provide for recording the lapse of the patent by non-payment of the annual fee in the Register of Patents and for publishing the notice of its lapse in the Official Bulletin.

2) If the patent owner can prove that payment was effected on time, s/he can file an appeal according to the terms prescribed by the present Regulation, within three months from the date of publication of the Official Bulletin, in order to request the annulment of the aforesaid notice of lapse and the rectification of the publication.

3) The patent is considered as lapsed, in respect of any third party, as of the expiry of the last year in which the fee has been paid.

Article 35

Nullification of a patent

1) In accordance with Article 28 of the Trademarks and Patents Framework Act, the judicial authority of the Republic of San Marino, on request of any third party, can declare a patent to be null totally or partially under the following circumstances:

a) if the subject-matter of the patent is not patentable according to Articles 1 and 2 of the Trademarks and Patents Framework Act and Article 1, 2 and 3 of the present Regulation;

b) if the invention is not described in a sufficiently clear and complete way so as to enable a man skilled in the art to work it (Article 3, paragraphs 3 and 5 of the Trademarks and Patents Framework Act);

c) if the subject-matter of the patent goes beyond the contents of the original application or, if the patent has been granted on the basis of a divisional application, beyond the original application from which the divisional application originates.

d) if the scope of protection conferred by the patent has been broadened;

e) if the patentee is not entitled to it according to Article 4 and Article 5 of the present Regulation.

2) Nullification may be requested of the judicial authority also after the patent expiry date.

3) If nullification actions only partially affect the patent, the relevant decision of partial nullification implies a corresponding limitation of the same patent.

Article 36

Effects of a decision of nullification

1) Nullification works retroactively, but does not affect:

a) decisions in infringement procedures, which have already become final and have been executed before nullification;

b) agreements concerning the invention concluded and executed before the final decision of nullification. In this case, however, having taken account of the circumstances, the judge may order an adequate remuneration for the amounts already paid for the execution of the agreement.

2) The validity of the patent referred to under Article 19 paragraph 7 and Article 25 of the present Regulation expires retroactively with respect to that part of the patent which is nullified.

3) When the nullification issued by the judicial authority becomes final, it will be published in the Register of Patents and any amendment brought to the patent will be published by the San Marino Patent & Trademark Office.

Title II – Designs and industrial models

Article 37

Registration owner

The right to registration belongs to the author of the new model or ornamental design and to his assignees. Unless agreed to the contrary, the right to registration of models and ornamental designs that have been made by employees, if this activity is comprised within the field of their activities, belongs to the employer, but the employee will reserve the right to be recognized as the author of the model or design and s/he will be entitled to enter his/her name in the register of designs and industrial models as well as in the publication. In this case, the provisions of Article 5 of the present Regulation will apply mutatis mutandi.

Article 38

Protection accumulation through patent for invention

If the form or the design of a product confers to it a new ornamental character and at the same time makes it more useful, according to Article 1 of the Trademarks and Patents Framework Act, it is possible to simultaneously apply both for the registration of a model or industrial design and for the granting of a patent for invention, but these two forms of protection cannot be grouped together in a single patent or registration. If the application for registration concerns an article whose form or design confers to it a new ornamental character and at the same time makes it more useful, Article 17 of the present Regulation will be applicable.

Article 39

Application for registration

1) By means of a single application it is possible to apply for the registration of up to 100 ornamental models and designs provided that they are intended to be incorporated in articles belonging to the same class of the international classification of designs and models, established in accordance with the provisions under the Agreement of Locarno of 8 October 1968, and subsequent modifications.

2) Subject to the provisions of the preceding paragraph and Article 3, it is not possible to file an application for more registrations or concerning a single registration for more models or designs. If the application is not accepted, the San Marino Patent & Trademark Office will invite the applicant, in accordance with the provisions under Article 17 of the present Regulation, to limit the application to the acceptable part.

Article 40

Requirements for applying for a registration

1) The application must contain:

a) the surname, name, nationality and domicile of the applicant, and also of his agent, if any;

b) the indication of the model, in the form of a title, specifying the industrial products whose manufacture must form the object of the exclusive right, the features of the products that are to be claimed and, if necessary for the intelligence of the design and model, the aims to be achieved by the said features.

2) The application must be accompanied by:

a) the graphic reproduction of the model or the graphic reproduction of the industrial products whose manufacture must form the object of the exclusive right, or a sample of the products themselves, according to the provisions under the subsequent paragraphs;

b) the description of the model, if necessary for the intelligence of the model itself;

c) the prescribed document attesting to the payment of the due fees;

d) in case a patent attorney has been appointed, the application must also include the power of attorney;

e) if priority is claimed, the documents referred to under the subsequent Article 41 must also be attached thereto.

3) The protection of special names and markings for distinguishing the products can only be obtained with a separate application for the registration of a trademark, in accordance with the Trademarks and Patents Framework Act, and in no circumstances must the model contain similar names or markings.

4) The part of the documentation consisting either of the graphic reproduction of the model or of the graphic reproduction of the products, or the sample of the products themselves, referred to under the preceding paragraph 1, must furnish a complete and clear idea of the model. As far as possible, any feature that is desired to be claimed must be contained in the above-cited documents. The documentation itself must be such to allow any person skilled in the art to utilize the model with the aid of the indications contained in the title and in the description, if any.

5) The graphic or photographic reproduction of the model or of the products referred to above must contain specific indications on the dimensions of the products as well as on the relation between their parts, when the dimensions and said relation have a considerable influence on the functional utility or on the aesthetic aspect of the said products. If the color or colors constitute a characteristic of the model, then the reproduction must be in the color or colors that have been claimed.

6) The graphic reproduction of the model or of the products can be performed either by hand or obtained by photography, printing, photocopying, lithography or by a similar process made possible by technological progress, provided that it allows a proper quality reproduction of the model.

7) Since models for industrial products fundamentally have only two dimensions, then in place of the graphic reproduction referred to under the preceding paragraph, it is possible to submit a table upon which a sample of the product is affixed, whose manufacture must be the object of the exclusive right. This provision particularly applies to models concerning, for example, fabrics, lace, wallpaper or other similar products.

8) Since, as in the preceding paragraph, designs and industrial models for industrial products fundamentally have only two dimensions and in case registration is requested for a multiple model according to Article 39, then each individual model must be identified either by corresponding graphic or photographic reproductions referred to under the preceding paragraphs or by other corresponding sheets upon which the respective samples are affixed, as provided for in the preceding paragraph.

9) The graphic reproduction of the model or the graphic reproduction of the products, or the samples of the products themselves, if comprised in more than one sheet, must be numbered consecutively and the numbers of reproductions or samples, as well as the numbers and letters identifying the various parts, must be cited in the description if required, or, in any case, if filed. The drawings must be executed in indelible black ink on card, paper or drawing canvas. Sample sheets must be of ISO A4 standard and a margin of at least 2 cm must be left. The application must contain three sample sheets and the applicant of the registration is responsible for their identity. The three copies must be signed by the applicant or by his/her agent. However, the San Marino Patent & Trademark Office may accept graphic reproductions or samples that are of a smaller size than the sheet margin allowed in the preceding paragraph, subject to all the other provisions.

10) The description, if required, or, in any case, if filed, must be written or printed in indelible and clear ink on ISO A4 paper. The application must be accompanied by three copies of the said description and the applicant is responsible for the identity of the said copies. The three copies must be signed by the applicant or by his/her agent.

11) If the applicant only files one sample sheet containing either a graphic reproduction of the model or a graphic reproduction of the products, or a sample of the products themselves, or only one copy of the description, then the remaining copies may be submitted within two months of the filing date of the application.

Article 41

Documents required for claiming priority

1) If priority of an application filed in accordance with the international agreement in force is claimed, then the application must be accompanied by a document bearing the name of the applicant, the title of the model on which the application is based, a graphic reproduction of the model itself and a description thereof, if any, as well as the filing date of the application. If the application has been filed by another party, the applicant must also prove to be the successor or assignee of the first applicant.

2) The documents referred to under the preceding paragraph must be accompanied by an Italian language translation containing the metric system equivalents of any quantities cited in addition to the original measures. The San Marino Patent & Trademark Office reserves the right to require that the translation be sworn and certified before the authorities of San Marino. The certificates, which must also be translated, issued by directors or presidents of offices of States that are members of the World Organization for Industrial Property are exempted from legalization and may be substituted by official publications bearing the stamp or endorsement of the office they come from. The applicant is responsible for the perfect correspondence of the aforesaid translations with the originals.

3) The claim for priority rights must refer to the application considered as being first, according to the international agreements in force.

4) The priority of several foreign applications can be claimed by means of a single filing for a multiple application in accordance with Article 39.

5) The claim of priority rights must be mentioned in the application for registration. The registration is in any event granted without mentioning priority if, within six months of the filing date of the application, the documents cited in the first paragraph of the present Article are not presented in the due form. If the priority of an application filed in accordance with international agreements in force is in any case rejected, then this rejection must be cited in the registration.

Article 42

Publication of industrial designs and models

1) The San Marino Patent & Trademark Office will provide for public inspection of the industrial model and design application with the reproductions or samples and any description as amended after filing, provided that the applicant has not excluded accessibility in the application for a period not exceeding twelve months from the filing or priority date.

2) The San Marino Trademarks and Patent Office reserves the right to provide for the publication, by printing or other means, of the industrial designs and models if the technical resources of the said Office allow this and if the quality of the reproduction means available allow for proper reproduction of the samples, drawing or sample sheets and of any colors therein. The publication of registration will at least contain those indications referred to under the first paragraph of Article 40. The publication of registrations must be accompanied by one copy of the sample sheets containing either a graphic reproduction of the model or a graphic reproduction of the products, or a sample of the products themselves, as well as a copy of the description, if any.

Article 43

Renunciation or limitation of the registration application

1) The applicant may withdraw the industrial model or design registration at any time provided that his/her request reaches the San Marino Patent & Trademark Office in good time during the examination procedure and, in any case, before the San Marino Patent & Trademark Office has provided for registration.

2) Registration concerning several industrial models or designs according to Article 39 can be limited, mutatis mutandis, upon request of the owner in accordance with and to the effects referred to under Articles 18 and 32 of the present Regulation.

Article 44

Amendment and correction of the registration application.

1) The applicant, in due course during the registration procedure or appeal proceedings, if an appeal has been filed, has the right, in compliance with formal requirements and with good reason, to amend the sheets containing the graphic reproduction of the model or products and the originally filed description by means of corrections with footnotes in the description that are signed by the applicant or by his/her agent.

2) The San Marino Patent & Trademark Office must keep the documents relating to the original application for registration, bearing the date of receipt of the corrections, and take due care thereof.

3) No amendment or correction can extend the contents of the application for registration beyond the contents described in the filing application.

Article 45

Examination of applications and observations

1) The applicant, upon invitation of the San Marino Patent & Trademark Office, must complete the documents by filing a suitable description - either a new or another description - if necessary for model intelligence.

2) The provision under the preceding paragraph also applies in case of documentation deficiencies according to Article 40, paragraph 2, letter a) and also in case of deficiencies in the title of the model, above all in respect of the claimed features.

Article 46

Register of industrial models and designs

1) The register of industrial models and designs must contain at least the following indications for each accepted application:

a) the registration filing number;

b) the application filing date and filing number;

c) the applicant's surname, name and residence or domicile, or business name and head office for companies, associations or non-profit organizations;

d) the title of the model;

e) data regarding the previous application filed abroad, if priority is to be claimed, together with the date, applicant's name and registration number, if the latter is available;

f) the date of registration granting;

g) the registration expiry date.

2) For each registration, due note must be made in the above register as regards payments of fees as well as of any deed relating to the registration of industrial designs and models listed under Article 80 of the present Regulation.

Article 47

Lapse of the registration

1) The registration of industrial designs and models lapses:

a) on expiry of the deadline established under Article 12, paragraph 4 of the Trademarks and Patents Framework Act;

b) if the owner has renounced registration according to Article 43, from the date on which such renunciation comes into force;

c) for non-payment, on the expiry date, of the five-year fee due according to Article 12, paragraph 4, of the Trademarks and Patents Framework Act and if, within six months of the said expiry date, the owner of the patent or his/her assignee has not provided for payment of the due five-year fee, together with the relative fine for the delay. In this case, the provisions under Article 34 of the present Regulation must be complied with.

2) The San Marino Patent & Trademark Office will take note in the Register of industrial designs and models of the grounds for the lapse of the registration.

Title III – Trade Marks and collective trade marks

Article 48

Rights conferred by a trademark registration

1) In accordance with Article 17 of the Trademarks and Patents Framework Act, the owner of a trademark can in particular prevent any third party from affixing the owner's mark on products and their packages, selling the products, launching them on the market or holding them for these purposes, or from offering or furnishing services distinguished by the mark, from importing or exporting products distinguished by the mark, and from using the mark in business correspondence and in advertising.

2) The exclusive rights provided for the present Regulation and in the Trademarks and Patents Framework Act are conferred upon registration, subject to the provisions under Article 59 below.

These rights expire if the products or services are marketed by the trademark owner or with his/her consent in the Republic of San Marino.

Article 49

Restriction of the rights conferred by a trademark

1) The rights conferred by a trademark do not entitle the trademark owner to prevent third parties from using the following in business activities:

a) their own name and address;

b) any indication relating to the type, quantity, quality, destination, value, geographic origin, product manufacturing date or service rendering date or to any other feature of the product or service;

c) the trademark, if this is necessary to indicate the destination of a product or service, in particular as accessories or spare parts, provided that it is used according to the principles of professional conduct, and therefore not as a trademark but only for descriptive purposes.

2) The restriction of rights conferred by the registration of a trademark referred to under Article 17, paragraph 4), of the Trademarks and Patents Framework Act, however, does not apply if the owner him/herself on legitimate grounds opposes the further marketing of the products, in particular when the state of these products is modified or altered after their market launch.

Article 50

Collective trademarks

1) The provisions under Article 19 of the Trademarks and Patents Framework Act can also be applied to foreign collective trademarks registered in their country of origin, provided that the country concerned affords mutual treatment to San Marino.

2) Collective trademarks are subject to all the other provisions of the present Regulation as far as they do not contrast with their nature.

3) In derogation to Article 57, paragraph 1) point a), of the present Regulation, a collective trademark may consist of signs or indications which may be useful in trade to designate the geographic origin of the goods or services. In this case the San Marino Patent & Trademark Office may reject the registration, on solid grounds, when the trademarks applied for may give rise to situations of unjustified privilege or may in any case be detrimental to the development of other similar initiatives in the region. The San Marino Patent & Trademark Office has the right to request the opinion of public administrations, particularly of San Marino and Italian public administrations, and of any interested or appropriate organizations concerned.

4) The registration of a collective trademark consisting of a geographic name does not authorize the owner to prevent any third party from using the name itself in business, provided that it is used in accordance with the principles of professional conduct and therefore limited to the indication of origin.

Article 51

Duration of the protection conferred by a trademark registration

The renewal of an application for first registration of an earlier registration belonging to the same owner or to his/her assignee is carried out by granting a renewal registration.

Article 52

Provisional protection

1) Within the limits and conditions indicated in the following paragraphs, provisional protection may be accorded by means of a decision issued by the Secretary of State for Industry, for new trademarks affixed onto products or goods exhibited in occasion of either national or international, official or officially recognized, exhibitions held in the territory of the Republic of San Marino, or in a foreign State affording reciprocal treatment, and particularly Italy.

2) Provisional protection makes the priority of registration, in favor of the owner or his assignee, date back to the delivery date of the product or goods for exhibition and is always effective provided that the registration application has been filed within six months of the delivery date and in any case within six months of the opening of the exhibition.

3) In case of an exhibition held in a foreign State, if a shorter period is established in that State, then the registration application must be filed within this period.

4) In case of several trademarks for products or goods delivered for exhibition on the same day, priority is accorded to the trademark with the earliest registration application.

5) The above-cited dates must be indicated by the inter