EUROPEAN PATENT ORGANISATION
Montenegro accedes to the European Patent Convention
1. Accession to the EPC
On 15 July 2022, the Government of Montenegro (ME) deposited its instrument of accession to the European Patent Convention (EPC).
The EPC will accordingly enter into force for Montenegro on 1 October 2022.
The European Patent Organisation will thus comprise the following 39 member states as from 1 October 2022:
Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom.
2. Important information
European patent applications filed on or after 1 October 2022 will include the designation of the new contracting state.1 It will not be possible to designate Montenegro retroactively in applications filed before that date.
However, to allow the new contracting state to be designated, the European Patent Office (EPO) will accord European patent applications filed in September 2022 the filing date of 1 October 2022 if the applicant expressly requests that filing date when filing the application.
3. PCT
Nationals of Montenegro and persons having their principal place of business or residence in Montenegro will also be entitled, as from 1 October 2022, to file international applications with the EPO as receiving Office.
Any PCT request (PCT/RO/101) filed on or after 1 October 2022 will automatically designate the new EPC contracting state for the purpose of obtaining a European patent (Rule 4.9(a)(iii) PCT).
No European patents for Montenegro can be granted on the basis of international applications with a filing date prior to 1 October 2022. Euro-PCT applications entering the European phase with an international filing date prior to 1 October 2022 will therefore not include the designation of Montenegro as an EPC contracting state.2
4. Effect of accession to the EPC on the ME EPO extension agreement
The extension agreement between Montenegro and the European Patent Organisation will terminate on the entry into force of the EPC in Montenegro on 1 October 2022. From that date it will therefore no longer be possible to extend European patent applications and patents to Montenegro.3 The extension system will, however, continue to apply to all European and international applications with a filing date prior to 1 October 2022, to divisional applications derived from earlier applications with a filing date prior to 1 October 2022 (Article 76(1) EPC) and to all European patents granted in respect of such applications.
1 See Article 79(1) EPC.
To obtain a reduction in the examination fee under Rule 6(3) EPC and Article 14(1) RFees, the request for examination may be submitted in Montenegrin at any time before the examination fee is paid (see decision of the Legal Board of Appeal J 21/98, published in OJ EPO 2000, 406). The request for examination may be worded as follows in Montenegrin: "Zahtijeva se ovdje ispitivanje prijave na osnovu Člana 94 Konvencije o evropskom patentu".
2 See section 10 of EPA/EPO/OEB Form 1200 and the "States" tab in Form 1200E in the EPO's online filing tools.
3 European patent applications filed on or after 1 October 2022 will no longer be deemed to be a request to extend the European patent application or the European patent granted in respect thereof to Montenegro. Updated versions of EPA/EPO/OEB Form 1001 and of Form 1001E in the EPO's online filing tools will be available to users as from 1 October 2022. Checking the box for Montenegro in Section 33.1 of earlier (software) versions of EPA/EPO/OEB Form 1001 or Form 1001E for applications filed on or after 1 October 2022 will have no legal effect.