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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

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

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 interested party and mentioned in the Register of Trademarks and in the registration after their verification by the San Marino Patent & Trademark Office.

Article 53

Renunciation of the trademark, limitation and amendment

1) The trademark owner can at any time withdraw his/her trademark application or limit the list of goods or services therein contained.

2) The trademark owner or his/her assignee can, at any time before the end of the ten-year period from the application date of the first registration or subsequent renewal application, renounce the trademark through a relevant written declaration sent to the San Marino Patent & Trademark Office.

3) Renunciation and limitation becomes effective from the day on which they are recorded in the Register of Trademarks and a relevant notice must be published in the Official Bulletin.

4) No amendment to the trademark in the Register of Trademarks is admitted during the life of the trademark registration, nor on renewal, subject to the provisions under Article 54, paragraph 1).

Article 54

Requirements for renewal of a trademark registration

1) A trademark registration may be renewed either for the same previous trademark or for the previous trademark amended only in respect of its non-distinctive features which do not substantially alter the identity of the originally registered trademark, and with regard to the same kind of products or goods or the like, included in the same class, according to the classification established by the Nice Agreement of 15 June 1957, and subsequent amendments.

2) Renewal is made for ten-year periods by means of an application to be filed within the last twelve months of the expiry date of the ten years concerned, on the expiry of which the registration can be renewed in the six months subsequent to the month of the said expiry date by payment of an additional fine.

3) The renewal of a trademark registration that has been assigned for a part of the goods or services, will be effected separately by the respective owners.

Article 55

Assignment of a trademark and license

1) A trademark may be assigned, independently of the assignment of the firm or of a particular branch of it, either for all or part of the products and services for which it has been registered.

2) Exclusive or non-exclusive licenses under a registered trademark may be granted for all or part of the products or services for which it has been registered and for the whole State or part thereof, provided that in case of non-exclusive license, the licensee expressly undertakes to use the trademark to distinguish goods or services identical to those marketed or licensed in the territory of the State under the same trademark by the owner or other licensees.

3) The trademark owner can enforce his/her rights to the exclusive use of a trademark against a licensee who violates the provisions of the license contract as regards the duration, the way the trademark is used, the nature of the products or services the license is granted for, the territory in which the trademark can be used, or the quality of the products manufactured or services rendered by the licensee.

4) In any case, the assignment and the license of the trademark must not lead to deception in those features of the products or goods that are essential for the public's appreciation.

Article 56

Registrable trademarks

1) In accordance with Article 13 of the Trademarks and Patents Framework Act, any new sign that can be graphically represented may be registered as a mark, particularly words, including personal names, drawings, letters and sounds, numbers, product or package shape and the combination of colors or color shades, subject to the provisions under Article 57.

2) According to the preceding paragraph, the following signs are not deemed to be new when, on the application filing date:

a) they exclusively consist of signs that have become customary in current language or in established business practices;

b) they are identical or similar to a sign that is already known as a trademark or distinctive sign of goods or services manufactured, marketed or licensed by others for identical or similar goods or services if - due to the identity of or similarity between signs or the identity of or similarity between goods and services - there is a risk of confusion among the public, including the risk of association between the two signs. A "notoriously known" trademark is also deemed to be well-known according to article 6-suppl. of the Paris Convention. The prior use of the sign, if it does not involve notoriety, or involves only local notoriety, does not deprive the mark of novelty. The prior use of a sign by the applicant or his assignee is not barred by registration;

c) they are identical or similar to a sign which is already known as a company, company name or sign adopted by others if - due to the identity of or similarity between the activity of the company carried out by the latter and the products or services for which the trademark is registered - there is a risk of confusion for the public which can also consist of a risk of association between the two signs. The previous use of a sign, when it does not involve notoriety or involves only local notoriety, does not prejudice its novelty;

d) they are identical or similar to a trademark already registered by another party in the Republic of San Marino or effective in it, following an application filed at an earlier date or taking effect from an earlier date according to a right of priority for identical or similar products or services if - due to the identity of or similarity between the signs and the identity of or similarity between the products or services - there is a risk of confusion for the public which can also consist of a risk of association between the two signs. An earlier trademark that lapsed more than two years before, or three years before in case of a collective trademark, or which can be deemed to be lapsed by non-use according to Article 28 paragraph B) of the Trademarks and Patents Framework Act and Article 68 of the present Regulation, at the filing date of the main application or reapplication for nullity, does not deprive the trademark of novelty.

e) they are identical or similar to a trademark that has already been registered by another party in the Republic of San Marino or effective in it, following the filing of an earlier application or effective from a prior date according to a priority right for goods or services that are not similar, if the earlier trademark is reputed in the Republic of San Marino or in Italy and when the use of the later trademark would take unjustified advantage of the distinctive feature or reputation of the earlier mark or would be detrimental to the same.

3) For the purposes established in the preceding paragraph 2, points d) and e), the earlier applications are comparable with earlier registered trademarks, under reservation of the consequent registration.

4) For the evaluation of the provisions under the preceding paragraphs of this Article, the trademarks filed or registered in Italy are comparable with those of the Republic of San Marino, subject to the provisions of Article 43 of the Friendship and Good Neighborly Relations Agreement between San Marino and Italy of 31 March 1939.

Article 57

Non-registrable trademarks

1) In addition to the signs listed under Article 14 of the Trademarks and Patents Framework Act, the following are also non-registrable:

a) signs exclusively consisting of general names of products or services or of descriptive indications referring to them, such as signs used in business to designate the type, quantity, quality, destination, value, geographic origin, product manufacturing period or service rendering period, or other features of the product or service;

b) signs exclusively consisting of the shape established by the very nature of the product itself, the shape of the product that is necessary for achieving a technical aim, or the shape conferring a substantial value to the goods;

c) signs whose use would constitute a violation of the copyright, industrial property right or any other exclusive right of third parties.

2) In derogation to the provisions under Article 56 paragraph 2 point a) and paragraph 1) point a) of the present Article, it is possible to register as trademarks those signs that, prior to the application for registration, have acquired a distinctive feature due to the use that has been made since.

3) A person's portrait cannot be registered as a trademark without that person's consent or, after his/her death, without the consent of the spouse or - in the absence of such - the person's children; or failing this, the parents or grandparents of the deceased; or, should these be deceased, the consent of relatives up to the fourth degree of kinship.

4) Personal names, other than the name of the applicant, may be registered as trademarks provided that their use does not harm the reputation, credit or dignity of the person entitled to bear such names. However, the San Marino Patent and Trademark Office has the right to subordinate the registration of a trademark application, also in this case, to the obtaining of the consent, as established under paragraph 3) of the present Article.

In any event, trademark registration will not prevent a person entitled to that name from also using it in his/her chosen business.

5) Well-known personal names, well-known signs used in the art, literary, scientific, political or sporting fields, well-known names and abbreviations of events and of non-profit organizations, and the characteristic emblems of the same may be registered as trademarks only by the person entitled thereto, or with the consent of the latter or of the persons referred to under paragraph 3).

Article 58

Trademark ownership

1) A trademark registration may be obtained by a person who makes use of it or intends to use it in the manufacture or trade of goods or in the performance of services of his/her own enterprise or enterprises controlled by him/her or which make use of it with his/her consent.

2) A trademark registration cannot be obtained by a person who has applied for it in bad faith.

3) A trademark registration may also be applied for by national, provincial and municipal public administrations.

4) Foreigners who do not have an enterprise, in the territory of the Republic of San Marino, from which the products or goods distinguished by the trademark originate, may only apply for trademark registration if the States to which the applicants belong reserve mutual treatment to the citizens of San Marino.

5) All benefits that have been or will be recognized by international agreements to foreigners in the territory of the Republic of San Marino in the matter of trademarks, are deemed to be extended to the citizens of San Marino.

6) According to international agreements, the right to obtain registration of a trademark that has been previously registered abroad, and to which reference is made in the application, belongs to the foreign owner of the trademark or to his/her assignee.

Article 59

Trademark use

1) In case of prior use by any third party of a non-registered trademark which does not involve notoriety, or involves only local notoriety, the same third party is entitled to continue using the trademark, even in advertising, within local limits, notwithstanding trademark registration itself.

2) Nobody is entitled to use a trademark which is already registered or in use if its registration has been declared null, when nullity action implies the unlawful use of the trademark.

3) It is prohibited to use a mark in a way contrary to the law or in such a way as to cause the risk of confusion in the market with other signs known as distinctive signs for enterprises, goods or services of third parties, or to mislead the public in particular with regard to the kind, quality or origin of the goods or services due to the way or situation in which it is used or in such a way as to infringe a copyright, an industrial property right or another exclusive right of a third party.

4) The trader may affix his/her own trademark to the goods that s/he places on sale but may not destroy the trademark of the manufacturer and/or the trader from whom s/he has obtained the products or goods.

5) It is prohibited to adopt as a trade name, company name or signboard, a sign identical or similar to the mark of another party if, due to the identity or similarity of the business activities of the owners of those marks and the products or services for which the trademark has been adopted, a risk of association between the two signs may arise.

6) The prohibition referred to under the preceding paragraph is also applied to the adoption as a trade name, company name or signboard of a sign identical or similar to a trademark registered for goods or services that are not similar, when that mark is reputed in the Republic of San Marino or in Italy, if the use of the sign without due cause would allow unfair advantage of, or would be detrimental, to the distinctive character or reputation of the mark.

7) The provisions under the preceding paragraphs apply, when applicable, also if the acts therein described are carried out in Italy, subject to the provisions of Article 43 of the Friendship and Good Neighborly Relations Agreement between San Marino and Italy of 31 March 1939.

Article 60

Rights to the trademark

1) A trademark registration may be applied for by the person who is entitled to it, or by his/her assignee, according to the Trademarks and Patents Framework Act, the present Regulation and international agreements.

2) If, by means of a final decision, it is established that the right to trademark registration belongs to a person other than the applicant, such a person, if the registration has not been effected yet and within three months from the issue of the final judgment, has the following options:

a) take over the trademark application in his/her own name thus becoming the applicant to all intents and purposes;

b) file a new trademark application whose validity, to the extent to which the trademark therein contained is substantially identical with the one of the first application, dates back to the filing or priority date of the first application which ceases in any case to be effective;

c) obtain the rejection of the application.

3) if trademark registration has been effected in the name of a person other than the one entitled thereto, the latter has the right to, at his/her discretion:

a) obtain, by means of a decision that is retroactively effective, the transfer of the registration certificate to his/her name;

b) request nullification of the registration carried out by the non-entitled person.

4) For collective trademarks, the application must be filed by a person representing the organization concerned.

Article 61

Requirements for filing a trademark application and its renewal

1) A single application may not comprise either the request for the registration of more than one trademark or the request for a single registration for more than one trademark. If the application concerns more than one trademark, the San Marino Patent & Trademark Office will invite the interested party, by establishing a deadline, to limit such an application to one trademark only, with the right to file, for the remaining trademarks, respective applications that will be effective from the date of the original application.

2) The application for trademark registration, drawn up in three copies and signed by the applicant or his/her agent, must be clearly written or printed in indelible ink on ISO A4 paper.

3) The application must contain:

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

b) the indication of the kind of products, goods or services to be covered by the trademark;

c) the indication of how to apply the trademark to such products, goods or services, either as a label, engraving or relief, or by other means;

d) the description of the trademark, highlighting the features of its different parts;

e) the sample reproduction of the trademark, to be affixed or attached to the application and obtained through appropriate typographic reproduction means on ordinary white paper, must have dimensions not exceeding those of ISO A4 paper, including margins;

f) the prescribed receipt showing payment of the due fees.

4) When registering a graphic trademark, the copies must have the same colors as those of the trademark that is applied for and reproduced through appropriate typographic reproduction means of such quality as to allow their reproduction and printing by modern reproduction means available to the San Marino Patent & Trademark Office, and thereby assuring the original quality. The San Marino Patent & Trademark Office has the right to decide which reproduction means are to be used and which to be excluded to safeguard the quality of the reproduction.

5) The trademark description must contain an indication of the color or colors, including white and black, if such colors represent a feature of the trademark.

6) The copy of the trademark reproduction must not contain any reference to any patent for invention or industrial models and designs, even though they may relate to the products or goods that are intended to be covered by the trademark.

7) In addition to the documents indicated in the preceding paragraphs, the application for collective trademarks must be accompanied by a copy of the statutory provisions referred to under Article 1, paragraph 2) of the Trademarks and Patents Framework Act concerning the use of collective trademarks and the relevant sanctions; statutory modifications must notified by the legal representatives of the organizations owning collective trademarks to the San Marino Patent and Trademark Office so as to be enclosed together with the documents attached to the application.

8) In case of a priority claim originating from the filing of a foreign application or from the exhibition of the products or goods, the applicant must supply the Office with the documents and information attesting to the existence of priority as specified under Article 62.

9) The application for trademark renewal must be filed by the trademark owner or by his/her assignee, in the manner prescribed for first trademark registration applications.

10) The application must contain the specific number and date from which the originally registered trademark takes effect as well as details of any renewal registrations.

11) The renewal application must be accompanied by the documents required under the preceding paragraphs 3 and 4. If no document has been modified with respect to the originally registered trademark, the trademark owner or his/her assignee may file a written declaration, under his/her own responsibility, attesting that all required documents or part thereof have remained unchanged. In any case, the renewal application must be accompanied by the prescribed receipt showing payment of the due fees.

12) If the earlier registration belongs to more than one person, the renewal application may be filed by one person only on behalf of all parties.

13) If renewal registration is requested for a trademark which has seen any modification of the distinctive features of an earlier trademark, the Office will request the interested party, by establishing a deadline, to convert the renewal application into a trademark application of first filing which will be effective from the date of such renewal application. The applicant may file appeal against the decision of the San Marino Patent and Trademark Office.

14) If any document is missing when filing the application, it may be filed separately within two months of the filing date.

Article 62

Documents required for claiming priority

1) Anyone who makes reference to a prior registration obtained for the same trademark in another State by him/herself or his/her assignee, must attach a document bearing the date and filing number of the foreign registration to the declaration of protection.

2) If the foreign registration was in favor of another party, the applicant must produce title of acquisition for which the trademark transfer is allowed.

3) When priority of a trademark originally registered in another State is claimed, according to international conventions in force, the application must be accompanied by a document containing the reproduction of the trademark forming the subject-matter of that application, together with the list of the goods to which the trademark refers and containing the applicant's name, the filing date as well as the registration date and number of the trademark, if it has already been registered.

4) If the foreign application was filed by another party, the applicant must also produce title of acquisition allowing trademark transfer.

5) The documents referred to under the preceding paragraphs must be accompanied by an Italian translation thereof.

6) The San Marino Patent & Trademark Office reserves the right to request an accurate translation of the text duly certified by the diplomatic or consular authorities of the State in which the document was drawn, or by an official translator.

7) The certificates, also translated, granted by the directors or presidents of offices of States belonging to the World Intellectual Property Organization do not need to be legalized and may be substituted by official publications bearing a stamp or endorsement of the issuing office.

8) The applicant is responsible for the perfect correspondence of the aforesaid translations with the originals.

9) The claim of priority rights must refer to the first application originally filed in one of the member States of the World Intellectual Property Organization.

10) When foreign applications have been filed separately on different dates for various parts of the same trademark, and the applicant wishes to claim the priority rights deriving therefrom, then a separate application must be filed for each despite the fact that they constitute a single application.

11) If, by means of a single application, more than one registration or application of the said parts for the same trademark have been applied for, then Article 60, paragraphs 6, 7 and 8 will apply to the new separate applications.

12) In case of a provision issued by the Secretary of State for Industry for the provisional protection of new trademarks affixed to products or goods that have been exhibited at an exhibition and when priority rights are claimed for such provisional protection, in accordance with Article 52, paragraph 1) and 2), the applicant must attach to the trademark application a duly legalized document issued by the executive committee or by the president of the exhibition.

13) The document must contain:

a) the surname, name and domicile of the exhibitor;

b) the date on which the product or goods bearing the trademark have been delivered to the exhibition;

c) a brief description of the trademark specifying whether the trademark consists of a word, figure or sign and which one, and also highlighting the trademark features to allow identification.

14) This document must be accompanied by, especially in case of a graphic trademark, a copy of the trademark reproduction.

15) In case of an exhibition held in a foreign State, the aforesaid document issued by the authorities referred to under paragraph 12, must be provided with the stamp of the relevant consular authorities.

16) Once the special deadline established for exhibitions in foreign States expires, then it is still possible to claim the filing date of the foreign trademark registration for the purposes of priority.

17) If the trademark applicant is not the exhibitor, the applicant must provide title of acquisition to allow trademark transfer.

18) The claim of priority rights must be mentioned in the trademark application.

19) The trademark is granted in any case with no mention of priority if, within six months of the application filing date, the documents required according to the present Regulation are not produced in the prescribed form.

Article 63

Examination of the application and observations

1) The examination of the application which has been formally deemed valid is carried out to ascertain:

a) whether Article 50 of the present Regulation and Article 19 of the Trademarks and Patents Framework Act are also applicable in respect of collective trademarks;

b) whether a word, figure or sign may be registered as a trademark according to articles 13 and 14 of the Trademarks and Patents Framework Act, Article 56 paragraphs 1) and 2), point a) and Article 57 paragraph 2), points a), b) c) and paragraphs 3), 4) and 5) of the present Regulation;

c) whether, in the hypothesis referred to under Article 58, paragraphs 4, 5 and 6, the conditions provided for by international agreements are present.

2) If the aforesaid conditions are not present, the San Marino Patent & Trademark Office will reject the application.

3) In case of a trademark containing words, figures or signs having a political or religious meaning, or with a high symbolic value, or containing heraldic elements, then - before granting registration - the San Marino Patent & Trademark Office will forward a copy of the trademark and whatever else might be necessary to the relevant public administration offices concerned in order to have their opinion, in accordance with the provisions of paragraph 5 below.

4) The San Marino Patent and Trademark Office has the right to take action, pursuant to the preceding paragraph 3, whenever there is any doubt that the trademark is contrary to the public order or public morality.

5) If the relevant authority referred to in the preceding paragraph 3 expresses a contrary opinion to the trademark registration, the San Marino Patent & Trademark Office will then reject the application.

6) The decision of the San Marino Patent & Trademark Office to reject the application, or not to accept it completely, must be notified in writing to the applicant, who then has the right to file appeal.

7) The applicant may withdraw the application at any time during the examination procedure, before the Office has provided for trademark registration.

8) Before the Office has provided for registration, the applicant has the right to formally correct the declaration of protection, as originally filed. The request for correction of the aforesaid document must have proven grounds.

9) Upon invitation of the San Marino Patent & Trademark Office, the applicant must complete or rectify the application or the documents, if necessary, in order to better determine the scope of the required protection.

10) If the applicant of a trademark registration renewal is the assignee of the owner of the originally registered trademark, s/he must then prove to be entitled thereto.

Article 64

Observations of third parties

1) For a period of twelve months starting from the publication date of a trademark registration application, any third party, including groups representing manufacturers, producers, service providers, traders or consumers, may file observations against the registration of the trademark forming the subject-matter of the application.

2) Observations must be filed in writing by specifying the grounds on which the trademark should be excluded from registration. In this case, they are to be enclosed with the file of the trademark application and notified to the applicant who may file his/her own observations. Third parties may not participate in proceedings before the San Marino Patent & Trademark Office.

Article 65

Granting of a trademark

1) Trademark registration is not an impediment to judicial action with respect to trademark validity or ownership.

2) The San Marino Patent & Trademark Office publishes the granting of registrations and trademark specimens in the Official Bulletin and takes note thereof in the Register of Trademarks.

3) After registration, the trademark specimen and the overall documents of each registration are made available for public inspection.

Article 66

The Register of Trademarks

1) The register must contain at least the following indications for each accepted application:

a) the application filing number and date

b) the applicant's surname, name, residence and domicile or the company name and head office, in the case of a company, association or non-profit organization, and also of the agent, if any;

c) a specimen of the trademark;

d) the indication of the products or goods to be covered by the trademark;

e) the data of the earlier trademark registration applied for in the country of origin, or the earlier foreign application; the indications provided for by Article 52 of the present Regulation, if priority is claimed for provisional protection at an exhibition;

f) the registration granting date.

2) The Register must also contain information on the payment of fees.

3) The San Marino Patent & Trademark Office makes note of the application outcome in the same register. The Register must also contain any other data provided for by the Trademarks and Patents Framework Act or by the present Regulation.

4) In the same register and for each registration, due note must be made of the documents listed under Article 80 and of any modifications referred to under Article 89.

5) For renewal registrations, the register must contain the first registration data together with the filing number of the renewal.

6) The first filing registration must also contain the data referred to under the preceding paragraph 1.

7) The renewal registration must also contain the data referred to under the preceding paragraph 5.

8) The first filing or renewal registration must also be accompanied by a copy of the protection declaration.

Article 67

International trademarks

1) As for the registration of trademarks at the World Intellectual Property Organization of Geneva, the provisions in force according to international Conventions are deemed to be valid.

2) Non-recognition of the said trademarks in the Republic of San Marino may be declared within one year of the publication date of the trademark in the Bulletin of the World Intellectual Property Organization of Geneva, "Les Marques Internationales".

Article 68

Lapse of trademark registration

1) Subject to the provisions under Article 28 of the Trademarks and Patents Framework Act, a trademark registration also lapses in the following cases:

a) if the trademark has become in the trade, due to the activity or inactivity of its owner, a generic name of the product or service for which it is registered;

b) if the trademark should become misleading for the public, in particular with regard to the nature, quality or origin of the products or services, due to the manner and context in which it is used by the owner or with his/her consent, for the goods or services for which it is registered;

c) if the trademark has become contrary to law, public order or morality.

2) For the purposes of Article 28 paragraph B) of the Trademarks and Patents Framework Act, the use of the trademark may be comparable with its use in a modified form that does not alter its distinctive features, and also with its affixing - in the Republic of San Marino or in Italy - on products or their packaging in order to export them.

3) Furthermore, lapse of a trademark registration will not occur if the owner of an unused trademark at the same time owns one or more similar trademarks, still in force, of which at least one is actually used for distinguishing the same goods or services.

4) Apart from the case of trademark rights acquired by a third party by filing the application or through its use, the lapse cannot be enforced if, between the expiry of the five-year period of non-use and the filing of the claim or counterclaim to declare the lapse of registration, the actual use of the trademark has been started or taken up again. However, if the owner conducts technical preparations to start or re-start use of the trademark only after s/he has become aware that a claim or counterclaim to declare the lapse has been filed, the date the use has been started or re-started will not be taken into consideration, unless it dates back to three months prior to the filing of the said claim or counterclaim to declare a lapse; this period becomes significant only if it lapses after the expiry of the five-year period of non-use.

5) Registration also lapses if the trademark owner has omitted to attend to the monitoring provided for by the Regulation on the use of collective trademarks.

6) Evidence of a lapse for non-use can be furnished with any means including presumption of fact.

Article 69

Lapse for non-payment of the renewal fee

The same procedure as described under Article 34 is applicable mutatis mutandi.

Article 70

Nullification of trademark registration

1) The registration of the trademark is deemed to be null, except for the provisions of paragraph 2) of the present Article:

a) in the absence of one of the requirements under Article 13 of the Trademarks and Patents Framework Act and the preceding Article 56 paragraph 2) of the present Regulation;

b) if it is in contrast with the provisions under Article 57, paragraphs 1), 3), 4) and 5) of the present Regulation;

c) if it is in contrast with the provisions under Article 58 paragraph 2) of the present Regulation;

d) in case of Article 60 paragraph 4) point b).

2) In derogation of paragraph 1) points a) and b), in relation to Article 5 paragraph 2), point a) and Article 57 paragraph 1), point a), a trademark may not be deemed to be null if the mark acquired a distinctive feature through its use before the filing of the said claim or counterclaim for nullification.

3) If the grounds for lapse or nullity of a trademark only apply for a part of the products or services for which the trademark has been registered, the lapse or nullity only concerns this part of the products or services.

4) The owner of an earlier trademark, according to Article 56 paragraph 2, points d) and e), and the owner of a right of pre-use that involves not merely local notoriety, who have for five consecutive years tolerated, being aware of it, the use of an identical or similar trademark registered later, cannot ask for the declaration of nullity of the trademark registered later or oppose its use for products or services in relation to which the said trademark has been used on the basis of their own prior trademark or their own prior use, except for the case in which the later trademark has been applied for in bad faith. The owner of a later trademark cannot oppose the use of the earlier trademark or the continuation of prior use.

5) The impediment to the action referred to under the preceding paragraph also applies to third parties.

6) The rules under paragraph 4) also apply to a registered trademark infringing Article 57, paragraph 1), point c) and paragraphs 2), 4) and 5).

7) The responsibility for proving the nullity or lapse of a registered trademark lies with the party opposing it. The lapse or nullity of a trademark is effective against third parties provided that it is declared by means of a final court decision.

Article 71

Existence of a prior trademark registered in Italy

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 are applicable to trademarks:

1) If an identical trademark is simultaneously protected by an Italian or San Marino registration application or registration having the same applicant, owner or assignee, the illicit use by a third party of the trademark in the territory of the Republic of San Marino does not constitute an act of infringement or usurpation of the Italian trademark and the illicit use of the trademark in Italy does not constitute an act of infringement or usurpation of the trademark in San Marino. In these cases, the applicant of the trademark registration or the trademark owner may turn to the Italian Court subject to the provisions of the rights conferred to him/her by the Italian trademark application or Italian trademark and to the judicial authorities in San Marino exclusively by virtue of the rights conferred to him/her by the San Marino registration application or San Marino trademark.

2) If a mark is protected by a trademark application or registration in Italy, but not in San Marino, the use made by a third party of a trademark in the territory of the Republic of San Marino constitutes an act of infringement or usurpation of the Italian property right and the provisions of this Regulation and of the Trademarks and Patents Framework Act will apply.

3) If a mark is protected by a trademark application or registration in San Marino, but not in Italy, the illegal use made by a third party of a trademark in the territory of the Italian State constitutes an act of infringement or usurpation of the San Marino property right and Italian law will apply.

Title IV – Trade names, geographical indications, denominations of origin and acts of unfair competition

Article 72

Rules as to geographical indications and denominations of origin.

The protection conferred by Articles 22 and 24 of the Trademarks and Patents Framework Act does not allow the prohibition of third parties from the business use of their own name or the name of their own predecessors in title in the same trade, except if the name is used in such a way as to mislead or deceive the public.

Article 73

Acts of unfair competition

1) Subject to the remaining provisions of the Trademarks and Patents Framework Act and the present Regulation, a person is deemed to be performing acts of unfair competition when s/he:

a) uses names and distinctive signs capable of causing confusion with the names or the distinctive signs legitimately used by other parties, or precisely imitates the products of a competitor, or carries out by any other means acts capable of creating confusion with the products and the activity of a competitor;

b) circulates news or opinions on the products and the activity of a competitor that may lead to the latter's discredit, or takes possession of the qualities of the products or enterprise of a competitor;

c) directly or indirectly takes advantage of any other means that is not in accordance with the principles of professional conduct and that might be detrimental to the enterprise of another party;

d) discloses to third parties in a way contrary to the professional conduct information pertaining to the business including commercial information subject to the legitimate control of a competitor in case such information is secret, in the sense that taken as a whole or in the precise configuration or combination of their elements, they are not generally known or easily accessible to experts and operators of the sector; if the said information has an economic value in view of the fact that it is secret; it is subjected, by the persons who are responsible for its legitimate control, to measures that are to be deemed reasonably suitable to keep it secret.

2) The disclosure to third parties or the acquisition or use by third parties in a way contrary to professional conduct of data relating to tests or other secret data whose processing implies a considerable effort and the presentation of which requires an authorization to market chemical, pharmaceutical or agricultural products requiring the use of new substances are also deemed to be acts of infringements.

Article 74

Penalties

1) The decision establishing acts of unfair competition prohibits their continuation and furnishes appropriate measures for eliminating their effects.

2) If the acts of unfair competition are committed deliberately or negligently, the infringer is obliged to provide compensation for damages. In this case, the publication of the decision may be ordered. Once the acts of unfair competition have been ascertained, negligence is alleged.

3) If the acts of unfair competition are detrimental to the interests of a professional category, an action for suppressing the unfair competition can also be instituted by the professional associations or the bodies representing the category.

Title V – General provisions

Article 75

Requirements for applying for a title of protection

1) An application for a patent for industrial invention, for registration of an industrial design and model, for a trademark or a collective trademark, may be made both by citizens of San Marino and by foreigners, be they individuals, companies, associations or non-profit organizations, or even by several individuals collectively.

2) If the application is filed by a company, association or non-profit organization, it must contain the name and head office of the company or organization.

3) The application for granting a patent, for registering an industrial design or model, or for a trademark or collective trademark must be filed by the author or his/her assignee, or by his/her agent.

Article 76

Restoration of rights

1) The owner or the applicant of a title of protection according to the Trademarks and Patents Framework Act, who has not been able to comply with a deadline prescribed by the same law or by the present Regulation, or established by the San Marino Patent & Trademark Office for an action regarding this Office, is restored his/her rights if non-compliance of a deadline has as a direct consequence the rejection of an application for granting a patent, for registration of a trademark or an industrial model or design, or a petition relating thereto, or the loss of any other right, or the right of appeal.

2) Within two months of receipt of a notification from the San Marino Patent & Trademark Office informing the entitled person of the non-compliance of a deadline, a petition for restoration must be filed by the assignee. The petition cannot be accepted if six months have passed from the deadline not complied with. The petition is deemed to be valid only upon payment of the prescribed fee.

3) Acceptance of the petition annuls the legal consequences that non-compliance of the deadline would involve or determines their revocation if, in the meantime, such legal consequences have produced their effects.

4) The provisions under this Article do not apply for prescribed deadlines in:

a) paragraph 2 of this Article,

b) the condition for claiming priority rights,

c) the condition prescribed for splitting registration applications and for filing divisional applications,

d) Article 6 of the Trademarks and Patents Framework Act.

5) Anyone who has made serious and real preparations or has started working the invention in the period comprised within the loss of the exclusive rights or the right to acquire them and the restoration pursuant to the present Article is entitled to use the invention gratuitously within the limits of the prior use or within the limits resulting from the preparations.

Article 77

Language of the procedure

1) The applications and documents required according to the Trademarks and Patents Framework Act as well as any enclosures must be drawn up in the Italian language. All documents drawn up in a language other than Italian are to be accompanied by a translation in the Italian language.

2) Unless otherwise prescribed by the present Regulation, the assignee certifies that the Italian translation is true with the original.

Article 78

Requirements for filing applications

1) Applications and relevant documents may be forwarded by mail or by an equivalent mailing service, by registered letter with return receipt, addressed to the San Marino Patent & Trademark Office. In this case the date of receipt of the San Marino Patent & Trademark Office is considered as the filing date.

2) Applications and relevant documents may be forwarded via facsimile, observing the provisions under Article 86 of the present Regulation.

Article 79

Representation

1) The applicant or his/her agent, if any, must - for each application - indicate or elect his/her domicile in the Republic of San Marino for all communications and notifications to be effected according to the present Regulation and to the Trademarks and Patents Framework Act.

2) The appointment of one or more agents, if not already provided for by a separate original or certified deed, can be done by means of an appropriate power of attorney. The power of attorney must be signed by the applicant and countersigned by the agent. The power of attorney is considered as a private deed. The mandate conferred by it is only valid for the purposes therein specified and it is limited to the relationship with the San Marino Patent & Trademark Office.

3) The agent who has filed a general proxy has the right, in each subsequent application in the name of the same applicant, to make reference to the said power of attorney.

4) No applicant residing in San Marino is obliged to be represented by a patent attorney in the procedures before the San Marino Patent & Trademark Office; natural persons and corporate bodies of San Marino can act through any of the employees of this office even though they are not patent attorneys.

5) The mandate can be conferred only to patent attorneys enrolled in the Register kept by the San Marino Patent & Trademark Office. The mandate can also be conferred to a lawyer or a legal attorney enrolled in the respective professional register.

Article 80

Recording of transfer deeds in respect of intellectual property rights

1) The following are to be made available to the public through recordings at the San Marino Patent & Trademark Office, subject in any case to the provisions under Article 55:

a) deeds among living persons who onerously or gratuitously, totally or partially, transfer intellectual property rights in San Marino;

b) deeds among living persons which onerously or gratuitously constitute, modify or transfer personal rights or properties, or security rights, constituted in accordance with the subsequent paragraph 10) of Article 81 concerning the aforesaid rights;

c) deeds of division, company deeds, transfer deeds, renunciation deeds relating to the rights cited in the two preceding paragraphs;

d) the record of the seizure of property;

e) the award record in view of a forced sale of patent rights;

f) the record ordering the suspension of the sale of a part of rights seized in order to be returned to the debtor as provided for by law;

g) the decisions that declare the existence of the deeds indicated under the preceding points a), b) and c), if such deeds have not been previously recorded.

h) the decisions ordering nullity, annulment, resolution, rescission or revocation of a registered deed must be recorded;

i) any judicial action directed to obtain the decisions referred to under the present Article may be recorded, too. In this case, the effects of the recording of the decision date back to the recording of the judicial actions;

j) wills and deeds proving legitimate assignment and relevant decisions;

k) the decisions to nullify patent rights and the relevant judicial actions.

2) The recording of deed of transfer is subject to the payment of the prescribed fee.

Article 81

Recording requirements

1) In order to obtain the recording of a deed relating to intellectual property rights in the relevant Register kept by the San Marino Patent & Trademark Office, the applicant must file an appropriate application for recording drawn up in two copies. Applications must be filed at the San Marino Patent & Trademark Office by attaching a certified copy of the public deed or the original, or a certified copy of the certified private deed. If certification is not possible, the San Marino Patent & Trademark Office has the right to accept an uncertified private deed for recording purposes. The latter must contain:

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

b) the surname and name of the owner of the intellectual property rights and the indication of the number and the date thereof;

c) the date and the nature of the property right that is to be recorded and, in case of a public document, the indication of the notary who has received it;

d) the indication of the type of deed that is to be recorded;.

2) The recording application, referred to under Article 80, must be accompanied by:

a) the legal title that is to be recorded;

b) the document attesting the payment of the prescribed fee, as prescribed in the present Regulation;

c) the title drawn up in a different language must be accompanied by a certified Italian translation thereof.

3) If an agent has been appointed, then the power of attorney in the prescribed form must be attached.

4) The applicant may file appeal against the refusal of the San Marino Patent & Trademark Office to effect a recording.

5) The order of recordings is determined by the order according to which applications are filed.

6) Any omissions or errors that do not cause absolute uncertainty about the deed that is to be recorded, or about the intellectual property rights to which the deeds refers, are not detrimental to the validity of the recording.

7) The deeds and decisions referred to under the preceding paragraphs, except for the wills and other documents and decisions indicated under points d) j) and k) of Article 80 until they are recorded, are ineffective towards third parties who have acquired or legally maintained rights on that patent.

8) In case of more than one acquirer of the same patent rights from the same owner, preference is given to the person who has recorded the title of acquisition first.

9) The recording of seizure records, until such time as it is effective, suspends the effects of any further recording of the above deeds and decisions; the said recordings become ineffective after the recording of the award records, provided that it occurs within three months of the date of the said award.

10) Wills and documents attesting legitimate succession, and the relevant decisions, are recorded only to establish the continuity of transfers.

11) Security rights on patent rights for industrial inventions must be constituted for money credits. In the recording, the amount of the credit, when not expressed in the national currency, must be converted into an equivalent sum in national currency.

12) In case of more than one security right, the respective degree is determined by the order of the recordings.

13) The cancellation of recordings of security rights is effected upon production of the deed of consent of the creditor whose signature is certified, or when the cancellation is ordered by a decision that has become final, or following the satisfaction of rights supported by guarantee.

14) The same fee prescribed for recordings is necessary for cancellation.

15) The decisions and documents received by the San Marino Patent & Trademark Office in accordance with the present Regulation must be recorded in the relevant Register and notification thereof must be given in the Official Bulletin. For each recording of a deed or decision, the following must be given:

a) the application filing date, which is the recording date;

b) the surname, name and domicile of the assignee, or the corporate name and head office, in case of a company or non-profit organization, as well as the surname, name and domicile of the agent, if any;

c) the nature of the rights which the recording refers to.

16) The San Marino Patent & Trademark Office returns a copy of the application to the applicant, together with a declaration attesting the recording. The deeds and decisions submitted for recording purposes are kept by the San Marino Patent & Trademark Office.

17) The petitions for the cancellation of recordings are to be drafted in the same way as prescribed for recording applications and recorded in the relevant Register.

18) If, for the recording of security rights, it is necessary to convert the amount of the credit into the national currency, such conversion will be done according to the exchange rate of the day the security has been granted.

19) Transactions for industrial property rights are considered as commercial operations in respect of personal properties.

Article 82

Enforcement procedure

1) Property rights as regards industrial property are subject to enforcement. The same provisions prescribed by the law for enforcement of movables are applicable to the said enforcement.

2) The seizure deed must contain:

a) the declaration of seizure of the property right, with the indication of the elements suitable to identify it, corresponding to the entries of the respective Register;

b) the date of the title and its exposition in executive form;

c) the amount for which enforcement is effected;

d) the surname, name and domicile or residence of the creditor and debtor;

e) the surname and name of the bailiff.

3) If the person to whom the deed of seizure is to be notified does not have his/her domicile or residence in the Republic of San Marino or in Italy, or an elected domicile, then notification is made to the San Marino Patent and Trademark Office. In the latter case, a copy of the deed is entered in the Register of the San Marino Patent & Trademark Office and inserted in the Official Bulletin.

4) Intellectual property rights whose granting is still pending may be seized.

5) Any controversies regarding enforcement and seizure of property rights are to be started before the judicial Authority of the Republic of San Marino.

Article 83

Appeals

In accordance with Article 32 of the Trademarks and Patents Framework Act, each party in a proceeding, before the San Marino Patent & Trademark Office, ending with a decision may file appeal against this decision only if this decision has not accepted his/her requests.

Title VI – Administrative provisions

Article 84

Administrative directives

1) The San Marino Patent & Trademark Office provides for the services pertaining to the subject-matter governed by the present Regulation.

2) The Director of the San Marino Patent & Trademark Office may establish administrative directives for the employees of the San Marino Patent & Trademark Office and for applicants in order to simplify and speed up filing, registration and granting procedures of intellectual property rights, subject to the provisions of the Trademarks and Patents Framework Act and the present Regulation.

4) If deadlines established by the present Regulation and by the Trademarks and Patents Framework Act fall on holidays, the expiry date will be extended to the next working day. The filing of an intellectual property right with the San Marino Patent & Trademark Office will be acknowledged by means of a receipt issued to the concerned party.

Article 85

Notifications sent to the Office

Applications for intellectual property rights and any relevant communications may be submitted to the San Marino Patent & Trademark Office, together with the required copies of the document:

a) by mail, or by registered letter in the case of an application for intellectual property rights;

b) by hand delivery,

c) by other equivalent means admitted by the San Marino Patent & Trademark Office,

d) by telefaxing a signed original, under the provisions of Article 86 below,

e) by transmission of the contents of the communication by electronic means, under the provisions of Article 87 below.

Article 86

Communications via facsimile

1) An application for filing or registration of an intellectual property right in San Marino filed before the San Marino Patent Office and any other communication sent via facsimile must meet the necessary requirements as to readability.

2) If the document is incomplete and/or partially or totally illegible, or if there are real doubts as to the precision of the transmission, the San Marino Patent & Trademark Office will inform the transmitting person who can then re-transmit the document for purposes of completion.

3) The San Marino Patent & Trademark Office will assign a provisional date of receipt to the document thus received, corresponding to the reception date of the last page of the document. If the original document reaches the San Marino Patent & Trademark Office within one month of the date of receipt of the facsimile and is identical with the facsimile already received, the San Marino Patent & Trademark Office will confirm to the applicant or to his/her assignee the date of the facsimile as the official date of receipt; otherwise, the document received by the San Marino Patent & Trademark Office is attributed the date of receipt of the original documentation.

4) If the original is not sent, then communication is deemed not to have taken place.

5) In any case, the facsimile is put on record.

6) The Director of the San Marino Patent & Trademark Office may establish additional deadlines for transmitting communications by facsimile, in particular for the material to be used, the technical data of the communication and the methods of indication of the sender.

Article 87

Communications by electronics means

1) The application for filing or for registration of an intellectual property right filed with the San Marino Patent & Trademark Office as well as any other communication sent by electronic means must meet the necessary requirements as to readability.

2) The selected electronic means must be among the ones indicated by the Director of the San Marino Patent & Trademark Office and must guarantee safety of forwarding and compatibility with the receiving and reading means of the San Marino Patent & Trademark Office.

3) The San Marino Patent & Trademark Office assigns a date of receipt to the document thus received, which is the date on which the communication is received by the San Marino Patent & Trademark Office.

4) The Director of the San Marino Patent & Trademark Office may establish additional terms as to the forwarding of communications by electronic means in particular for the material to be used, the technical data of the communication and the identification methods of the sender, for the type of documents that are to be excluded from this kind of transmission. The Director will establish in the directives whether the selected electronic means may require the forwarding of the original document as confirmation or whether the document electronically sent constitutes per se valid forwarding according to the procedure established in the present Regulation.

Article 88

Communications of the San Marino Patent & Trademark Office

1) Any communication, observation or decision sent to the applicant or to his/her agent during the procedures before the San Marino Patent & Trademark Office is effected by registered letter and establishes a deadline for a reply.

2) The deadline may vary from a minimum of one month to a maximum of three months and may be extended to a maximum of six months.

3) The request for an extension must have valid grounds. The San Marino Patent & Trademark Office will not take account of any replies received after the deadline granted or extended.

4) If technological progress allows a guarantee of the safety or privacy of telefax communications with users, the Director of the San Marino Patent & Trademark Office may issue some directives that allow the exchange of correspondence by e-mail or by other means which may be established in future by taking account of the need for safety and confidentiality of documents and exchanged information.

Article 89

Domicile and changes

1) The applicant or his/her assignee must, in each application, indicate or elect domicile in the Republic of San Marino for all communications and notifications to be made according to the present Regulation. Any change of domicile must be brought to the knowledge of the San Marino Patent & Trademark Office that will take note thereof in the respective Register.

2) Where the indication or election of domicile is missing, or in case the San Marino Patent & Trademark Office is informed of the cessation of the domicile elected according to the preceding paragraph, and until a new election of domicile in the Republic of San Marino has been communicated, the aforesaid communications and notifications are to be effected by affixing a copy of the deed, or by means of notice of the content thereof, in the Register of the San Marino Patent & Trademark Office.

3) Any change in the agent's domicile must be brought to the knowledge of the San Marino Patent & Trademark Office, which will take note thereof in the register of the agents of San Marino.

4) Any changes in the patent owner's name or in the registration of the trademark, industrial design or model must be brought to the knowledge of the San Marino Patent & Trademark Office, together with the supporting documentation in order to be noted in the relevant Register.

5) The indication of domicile noted in the Register of Patents is valid as election of domicile for the purposes of determining the competence and any administrative or judicial notification.

Article 90

Requirements for publication

1) The Register of patents, the one for trademarks and the one for industrial models and designs, the exclusive intellectual rights and the relevant documents are public. The San Marino Patent & Trademark Office gratuitously makes a copy of the documents as filed during the procedures available for public inspection and consultation.

2) Unless otherwise provided for in the present Regulation, anyone may inspect and obtain, as certificate or extract thereof, information on the registrations or recordings contained in the Registers, as well as a copy of the applications and relevant documents such as sheets with the graphic reproduction of designs, products or product samples, and the relevant description enclosed with the files. The Director of the San Marino Patent and Trademark Office may allow anyone who applies to extract a copy of the applications, descriptions and drawings as well as of other documents that may be inspected by the public.

3) The said certificates or extracts, as well as the certification of copies of deeds and documents, are subject to the payment of the prescribed fees or inspection fees.

4) In the same way and upon payment to the San Marino Patent & Trademark Office of the fees due for inspection, the public may also consult any document relating to foreign certificates enclosed with applications if priority from foreign applications has been claimed, as well as documents resulting from other prior references.

5) The copies and extracts of the various Registers and of certificates relating to news to be extracted from other registers, as well as any copy of the original documents relating to patents, trademarks, industrial models or designs, are made exclusively by the San Marino Patent & Trademark Office on request.

6) Likewise, the Director of the San Marino Patent & Trademark Office establishes the rates for photocopying and for photographic reproduction effected by the San Marino Patent & Trademark Office as well as the rates for administrative fees for services offered to the public.

7) The publications provided for in this decree are effected in the Official Bulletin published by the San Marino Patent & Trademark Office.

8) All filed and granted applications are published in the Official Bulletin. The same Bulletin will also include data on international trademark registrations by referring to the files of the Bulletin of the World Intellectual Property Organization of Geneva "Les Marques Internationales", containing indications on such trademarks as the files are received.

9) The publication will contain the fundamental indications contained in applications and in recording applications, respectively.

10) The Director of the San Marino Patent and Trademark Office has the right to request publication in the Official Bulletin of the analytical indexes and class indexes of the respective classifications of applied and/or granted rights, the alphabetical indexes of patent right holders and possible briefs of descriptions and recordings made.

11) The provisions are also applied to the aforesaid Bulletin, for the gratuitous distribution to industrial property offices of other States.

12) The Director of the San Marino Patent & Trademark Office may decide to provide for the publication in any other form, such as by electronic means, according to the means offered by technological progress. The Director has the right to determine which information or data of the registry office, in addition to the ones specified in the present Regulation, are to be included in the publication of the Registers and the Official Bulletin so as to meet the public's interests.

Article 91

Forms

1) The Director of the San Marino Patent & Trademark Office has the right to personally establish the samples according to which applications and any other document pertaining to property right applications registered or granted by the San Marino Patent & Trademark Office are to be drawn up and whether they can be distributed or filed electronically.

2) In case of applications or other documents that are not consistent with the samples referred to under the preceding paragraph, the interested parties must provide for the necessary completion or clarification of the applications and the said documents.

Title VII – Fees

Article 92

Fees for patent of invention

1) In accordance with the Trademark and Patent Framework Act, a patent for industrial invention is subject to the following fees:

a) a filing fee including a renewal fee for the first three years and a printing fee for the patent application file;

b) an additional printing fee for patent files exceeding 20 pages;

c) an annual renewal fee, starting from the fourth year of the filing date;

d) a fee for recordings;

e) a research fee, if requested by the applicant.

2) The filing fee and printing fee must be paid when filing the application. If the application is renounced before its publication, half the amount paid for the publication will be refunded.

Article 93

Fees for industrial models and designs

1) In accordance with the Trademark and Patent Framework Act, the registration of industrial models and designs is subject to the following fees:

a) a filing fee including a registration fee for the first five-year period and a printing fee for the design or model;

b) a five-year renewal fee starting from the second five-year period;

c) a fee for recording.

2) The filing fee and fee for first registration must be paid when filing the application. If the application is rejected or if it is renounced before the granting of registration, all paid sums except for non-refundable filing fees must be refunded.

Article 94

Trademark registration fees

1) In accordance with the Trademark and Patent Framework Act, the registration of a trademark and collective trademark is subject to the following fees:

a) a filing fee and first registration fee including a fee for an application for first registration, including the designation of three classes and a printing fee for the trademark;

b) a fee is due for each additional class of the classification referred to under article 1 of the Nice Agreement for the international classification of goods and services for registration of trademarks, of 15 June 1957, as revised and amended.

c) a renewal fee starting from the second ten-year period, to be calculated according to the classes referred to under the preceding point.

d) a fee for the recording.

2) For international registration of a trademark, a San Marino filing fee must be paid in addition to the fees prescribed by international agreements.

3) The filing fee and first registration fee must be paid when filing the application.

4) Likewise, the renewal fee must be paid before filing the relevant renewal application.

5) If the application is rejected or renounced before the granting of registration, then all paid sums except for non-refundable filing fees must be refunded.

Article 95

Requirements for payment

1) The Director of the San Marino Patent & Trademark Office publishes all information relating to the various post or bank accounts to which payments may be effected according to the prescribed payment requirements.

2) When paying, the reason must be clearly stated by specifying the number of the patent or application, or registration, of the owner and the annuities for which the payment is effected, in case of annuity payments, followed by the sender's signature and domicile.

3) If the indications supplied with the payment do not allow tracing the payment to a given patent application or patent, or a registration application or registration, then payment is deemed not to have been effected and the sum is refunded to the payer, provided that s/he be known or identifiable.

4) The reimbursement of paid fees in those cases provided for by the law provisions is effected upon request of the entitled person. Refunds do not refer in any case to the filing fee or application fee, which are not refundable.

5) All payments effected through postal current accounts or banking operations become effective:

a) from the day of payment if the payment of the due sum has directly been effected at post offices or banks;

b) from the debiting date on the drawing current account if payment has been effected by post or bank transfer drawn for the due sum to another postal or bank current account.

6) The Director of the San Marino Patent & Trademark Office has the right to accept other payment means if s/he deems them to be appropriate.

Article 96

Evidence of payment

1) A request aimed at obtaining a provision that is subject to the payment of a fee cannot be accepted if it is not accompanied by the document bearing proof of the effected payment.

2) The sender must ensure that any receipt or copy of receipt attesting the payment, whichever the means used, be sent to the San Marino Patent & Trademark Office by registered letter or any other equivalent means or delivered by hand to the San Marino Patent & Trademark Office.

3) Payments can also be effected by a person other than the owner of the intellectual property right.

Article 97

Payment errors

1) If, due to an evident error or due to other excusable reasons, a fee among the ones taken into consideration in the preceding articles is not totally paid or is in any case paid in an irregular manner, the San Marino Patent & Trademark Office, on request of the interested party, may still allow for the supplementing or settlement, even if belated, but no later than one year from the payment deadline, and upon payment of a fine; otherwise, the payment is deemed not to have been effected.

2) Requests aimed at obtaining registration or belated settlement of fees that have not been completely paid, or that in any case have been paid in an irregular manner due to an evident error, or for other excusable reasons, may be filed at the San Marino Patent & Trademark Office or may be directly forwarded by registered mail or by any other equivalent means, to the said Office.

3) If the Office rejects the request, the interested party may file appeal.

Article 98

Reduction or exemption of the fees due for the patent

1) The applicant or patent owner, in the application or written communication that is received by the San Marino Patent & Trademark Office, if an exclusive license has not been recorded, may offer a license to the public for the non-exclusive use of the invention.

2) The effects of the license start from the notification to the owner of the acceptance of the offer, even if the remuneration is not accepted. In the latter case, a committee of arbitrators composed of three members, one appointed by each party and the third by the first two appointed members or, in case of disagreement, by the Law Commissioner, will provide for the determination of the extent and the terms of payment of the remuneration. The committee of the arbitrators must proceed to an adequate evaluation. If the said evaluation is clearly inadequate or wrong, or if one of the parties refuses to appoint its own arbitrator, the evaluation is effected by the Law Commissioner.

3) The remuneration may be modified in the same way as prescribed for the evaluation of the original one if circumstances have arisen in view of which the already arranged remuneration clearly appears to be inadequate.

4) The applicant or patent owner who has offered to the public a license on the patent is entitled to a 50% reduction on the annual fees. The reduction is granted by the San Marino Patent & Trademark Office. The declaration of offer is recorded in the Register of Patent, published in the Official Bulletin, and will be effective until revoked.

5) If the offer to the public of a license is subsequent to the filing date of the patent application, the reduction will only concern annual fees subsequent to the communication of the offer.

TITLE VIII Jurisdiction

Article 99

Jurisdiction

1) All judicial actions concerning intellectual property rights in San Marino are to be instituted before the judicial authority of the Republic, irrespective of citizenship, domicile or residence of the parties, subject to the provisions of Article 43 of Friendship and Good Neighborly Relations Agreement between San Marino and Italy, of 31 March 1939.

2) The indication of domicile recorded in the relevant register is valid as election of domicile for the purposes of determining jurisdiction and any administrative or judicial notification.

3) In any case, the burden to prove the nullity or lapse of an intellectual property right is upon the plaintiff.

4) The burden to prove the validity of the intellectual property right is upon the owner who promotes the judicial action for infringement or usurpation.

5) The lapse or nullity, even if partial, of a property intellectual right is effective towards anyone when declared by means of a final decision. These decisions must be recorded in the respective Register by the San Marino Patent & Trademark Office.

Article 100

Actions promoted ex officio

1) Actions aimed at obtaining the declaration of lapse or nullity of an intellectual property right can also be promoted ex officio by the Director of the Revenue Office if the intellectual property right enters into conflict with the law, public order or morality.

2) The actions referred to under the preceding paragraph must be effected in opposition of all those who are recorded as assignees in the relevant Register.

Article 101

Recording of the introductory deed of the proceedings

A copy of the introductory deed of any civil proceeding in the matter of patents, trademarks, industrial models or designs must be transmitted to the San Marino Patent & Trademark Office by the person who started the proceedings. If such a copy is not transmitted, the judicial authority may order at any stage of the proceedings, before deciding on the merits, to proceed accordingly. The clerk of the court must transmit to the San Marino Patent & Trademark Office a copy of the decisions declaring the nullity or lapse of the patents, trademarks, industrial designs or models.

Article 102

Description, seizure and injunction

1) In accordance with Article 32, paragraph 3) of the Trademarks and Patents Framework Act, the owner of the intellectual property right may ask the Law Commissioner to order a judicial inspection for the description of the articles and their relevant seizure, irrespective of whether or not they are products or goods, or packages infringing or representing an infringement of such rights and of the means necessary for producing them.

2) The Law Commissioner will gather summary information and, if s/he deems it necessary after hearing the person against whom the action is started and if s/he finds the existence of serious grounds, will issue an interim injunction and may ask for a seizure bond.

3) The description and seizure are carried out through a bailiff with the assistance, if necessary, of one or more experts as well as the technical means of verification, photographic means or the like. All interested parties may be authorized to be present at the operations, also through their representatives, or they may be assisted by reliable technical assistants.

4) The description may also concern articles belonging to third parties provided that they are not intended for personal use. The seizure may also relate to articles belonging to third parties provided that they do not market them.

5) The description and seizure that have not been ordered during the proceedings become ineffective if within eight days of their execution:

a) a copy of the appeal and decree ordering them has not been notified to the persons against whom the decree is issued;

b) the trial proceedings have not been started;

c) the persons against whom the decree is issued have not been summoned in the trial proceedings and for confirmation of the seizure.

6) The party against whom the description or seizure has been ordered, which have become ineffective according to the preceding paragraph, or deemed to be without cause and therefore revoked, is entitled to compensation for damages in respect of the party who obtained the description or seizure if this party is deemed to have been negligent.

7) During the proceedings for infringement of intellectual property rights, upon request of the interested party by means of an enforceable provisional order, with or without a bond, there may be ordered the interdiction to manufacture or use the patent until the decision becomes final. This interdiction may be revoked by means of a decision issued on the merit.

8) Anyone who intends to start any of the actions provided under the preceding paragraphs may, by filing appeal, request the Law Commissioner to order the provisional enforcement of interdicting, provisional and conservative measures necessary to safeguard the right to compensation for damages. After hearing without delay the party to which the measure is to be enforced, in order to obtain summary information, the Law Commissioner will take relevant action by means of a decree.

9) In particularly serious or urgent cases, or if the party in respect of whom the measure is to be enforced does not have his/her residence or usual domicile in the territory of the Republic or a representative authorized to appear before the court, the Law Commissioner may put off the hearing of the counterpart and order the enforcement of the provision, obliging the plaintiff, if necessary, to pay a bond according to his/her financial possibilities and to the seriousness of the requested measure.

10) The order must be notified to the party in respect of whom it should be enforced, prior to its enforcement or at least simultaneously with it. Enforcement may occur with no limitation as to time and day.

11) The provisions under the preceding paragraphs may be requested by the patent applicant from the date the patent application is made accessible to the public.

12) In derogation to the provisions under the preceding paragraphs and subject to the requirements of criminal law, infringing articles exhibited at an official or officially recognized exhibition held in the territory of the Republic of San Marino or the Italian State or that are in transit to or from such exhibitions cannot be seized but only described.

13) In case of articles coming from States other than San Marino or Italy, the plaintiff, in order to obtain the description, must prove to be the owner of the intellectual property right in the Republic of San Marino or in Italy and in the country from which those articles originate.

14) The judicial authority may order that the decision issued on account of infringement of intellectual property rights be published, totally or summarily, or only with regard to the ordering part of the judgment, in one or more newspapers, also abroad, that it chooses at the cost of the losing party.

Article 103

Compensation for damages

1) The decision establishing violation of intellectual property rights may order that the articles thus produced, imported or sold, and the specific means that served to produce them, or work the protected method or process, be assigned to the patent owner him/herself, subject to the provisions relating to compensation for damages.

2) Moreover, the Law Commissioner has the right, on request of the owner of such articles or production means and taking account of the remaining duration of the patent or trademark or the particular circumstances of the case, to order seizure of the articles and production means, at the cost of the infringer up to the lapse of the patent, if applicable. In the latter case, the patent owner may request that the seized articles be assigned to him/her at a price which, in the absence of an agreement between the parties, will be established according to law after consulting an expert.

3) The decision establishing the counterfeiting of the trademark or the violation of rights originating therefrom may order the destruction of the denominative, figurative or graphic elements by means of which such infringement or violation has been made. The destruction may include packages and, when the judicial authority deems it advisable, also the product or goods if it is necessary to destroy the counterfeit trademark.

4) The decision ordering compensation for damages, on request of the party, may provide for settlement of a total amount established according to the documents of the trial and the presumptions originating therefrom. It can also establish a sum due for each infringement or non-compliance subsequently established and for any delay incurred in enforcing the measures contained in the decision.

5) In the course of the same proceedings, the Law Commissioner will also establish the amount of the refund due to the owner of the intellectual property right by the infringer.

Article 104

Miscellaneous

1) The removal or destruction of articles infringing intellectual property rights cannot be ordered nor can their use be prohibited when they belong to a party who, in good faith, makes personal or domestic use of them.

2) The Law Commissioner will, after hearing the parties and having gathered summary information, decide by means of a non-appealable judgment on any controversy resulting from the enforcement of the measures mentioned under this article and the preceding one.

TITLE IX – Transitional and final provisions

Article 105

Transitional provisions for trademarks

1) Trademarks that are already registered when the present Regulation comes into force, are subject, with regard to the lapse by non-use and nullity, to the provisions under the present Regulation and under the Trademarks and Patents Framework Act.

2) The provisions of the present Regulation governing the transfer and the license of trademarks are applicable also to already registered trademarks but not to agreements concluded before the coming into force of the present Regulation.

3) Subject to stated deadlines, the provisions under the preceding Article 54 are also applicable for the granting of trademark renewals.

4) Trademarks legitimately used on the day the present Regulation comes into force may be registered within six months of the said date after having checked the criteria required by the present Regulation; the obligation to apply for registration within six months from the coming into force of the present Regulation is deemed to be as already complied with for the trademarks filed by virtue of the Madrid Agreement.

5) In this case, the application fee and first registration fee are not due. For the purposes of renewal application, the ten-year periods are calculated as from the filing date of the application for first registration.

6) The existence of requirements provided for by Article 56 and the impediments referred to under Article 14 of the Trademarks and Patents Framework Act, and under Article 57 of the present Regulation, must be ascertained in this case with reference to the date the actual use of the trademarks refers to.

6) The applications for trademark registration and the application for the recording of the relevant deeds that have already been registered up to the coming into force of the present Regulation, are dealt with according to the provisions therein contained.

7) Furthermore, any other law provision or rule that may be in contrast with the present Regulation is deemed to be repealed as from the aforesaid date.

8) However, the provisions of executive international agreements in the Republic of San Marino and of the laws issued in support of their enforcement are to be applied.

9) In accordance with Article 43 of the Friendship and Good Neighborly Relations Agreement between the Republic of San Marino and Italy, of 31 March 1939, if in the first two years starting from the date of coming into force of the present Regulation the owner of a San Marino trademark registered before the coming into force of the present Regulation comes to know or is informed that his/her trademark in the Republic of San Marino is identical or similar - to such an extent that it may deceive the public - with a trademark registered in Italy bearing an earlier registration date and belonging to another owner, then the owner of the trademark in San Marino will be allowed, in the 6 months from the date s/he has become aware or has been informed of the fact, to modify the trademark as regards its distinctive features in such a way as to make it unlikely to be confused with the earlier trademark so that the public cannot be deceived and in order to eliminate a risk of association between the two marks. If the San Marino Patent & Trademark Office is informed of the existence of such an earlier trademark registered in Italy, it will invite the interested party, by establishing a period of six months, to modify the trademark. In this case, the new trademark will maintain the same filing date as the original trademark applied for in San Marino.

10) After the established two-year transitional period, the provisions under the Trademarks and Patents Framework Act and under the present Regulation will apply.

Article 106

Coming into force

The present Regulation will be effective as of 1 July 1999.

News Patents and designs 1999