EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 20 November 2019 concerning changes to the filing options available in San Marino for European patent applications and international applications
I. Background
1. By letter dated 23 September 2019, the State Office for Patents and Trade Marks of the Republic of San Marino (USBM) informed the European Patent Office (EPO) of changes to the country's patent legislation which will enter into force on 1 January 2020. As from that date, the USBM will cease both to accept European patent applications under Article 75(1)(b) EPC and to act as a receiving Office under the PCT. Given the latter change, the USBM, on behalf of the Republic of San Marino, asked the EPO whether it would agree in accordance with Rule 19.1(b) PCT to act, for all purposes, instead of the USBM as a PCT receiving Office for all international applications filed as from 1 January 2020 by applicants who are residents or nationals of the Republic of San Marino. By letter dated 20 November 2019, the EPO agreed to do so.
2. Moreover, on 1 January 2020, the Republic of San Marino will close its national route to obtaining patent protection there on the basis of an international application.
II. Filing of European patent applications
3. At present, in accordance with Article 75(1)(a) and (b) EPC and Article 3 of San Marinese Decree Law No. 76 of 22 June 2009, applicants may choose to file a European patent application with either the EPO or the USBM.
4. However, with effect from 1 January 2020, Article 3 of San Marinese Decree Law No. 76 of 22 June 2009 will be repealed and San Marinese Decree Law No. 141 of 16 September 2019 will enter into force. As provided in Articles 4 and 5 of the latter Decree Law, the USBM will then cease to accept European patent applications under Article 75(1)(b) EPC. Hence, as from 1 January 2020, applicants will only be able to file European patent applications directly with the EPO. The Republic of San Marino will not adopt or apply any legislative or regulatory provisions within the meaning of Article 75(2) EPC.
III. Filing of international applications
5. At present, in accordance with Rule 19.1 PCT, Article 1 of San Marinese Decree No. 153 of 5 November 2004 and Article 151 and Rule 157 EPC, applicants who are residents or nationals of the Republic of San Marino may choose to file an international application with the USBM, the EPO or the International Bureau of the World Intellectual Property Organization (WIPO).
6. However, with effect from 1 January 2020, San Marinese Decree No. 153 of 5 November 2004 will be repealed and San Marinese Decree Law No. 141 of 16 September 2019 will enter into force. As provided in Articles 1 and 5 of the latter Decree Law, the USBM will then cease to act as a PCT receiving Office. This change, together with the USBM's above-mentioned delegation of its duties as a PCT receiving Office to the EPO, means that, as from 1 January 2020, only the EPO and the International Bureau of the WIPO will act as PCT receiving Offices for applicants who are residents or nationals of the Republic of San Marino.
7. The EPO as receiving Office only accepts international applications filed in English, French or German (Rule 157(2) EPC). Therefore, applicants who are residents or nationals of the Republic of San Marino and wish to file an international application in Italian are advised to file it directly with the International Bureau of WIPO under Rule 19.1(a)(iii) PCT. If they nevertheless file an international application in Italian with the EPO, the EPO will promptly transmit it to the International Bureau of WIPO under Rule 19.4(b) PCT and it will be considered in accordance with Rule 19.4(a) PCT to have been received by the EPO on behalf of the International Bureau of WIPO as receiving Office under Rule 19.1(a)(iii) PCT.
IV. Designation of San Marino in an international application
8. At present, in accordance with Article 1 of San Marinese Decree No. 153 of 5 November 2004, the USBM acts as a designated or elected Office for international applications in which the Republic of San Marino is designated or elected.
9. However, with effect from 1 January 2020, San Marinese Decree No. 153 of 5 November 2004 will be repealed and San Marinese Decree Law No. 141 of 16 September 2019 will enter into force. As provided in Articles 3 and 5 of the latter Decree Law, the USBM will then cease to act as a designated Office for international applications in which the Republic of San Marino is designated. Any designation of the Republic of San Marino in an international application filed as from 1 January 2020 will have the effect of an indication of the wish to obtain a European patent for the Republic of San Marino.