Pages 124-130

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

MC Monaco

Impact of the European Patent Convention on national law

On 1 December 1991, the Principality of Monaco became a party to the EPC.

A. NATIONAL LEGAL BASES

1. Law No. 606 of 20 June 1955 on Patents of Invention, as amended by Law No. 625 of 5 November 1956

2. Sovereign Ordinance No. 1 476 of 30 January 1957

3. Sovereign Ordinance No. 10 957 of 27 July 1993 setting the fees payable for the formalities required under the legislation governing the protection of industrial property

4. Sovereign Ordinance No. 10 427 of 9 January 1992 concerning European patents

5. Ministerial Decree No. 93-553 of 21 October 1993 concerning arrangements for the grant of European patents

B. APPLICATION OF THE EPC IN MONACO

The main provisions relating to application of the EPC in Monaco are summarised below. The information is structured in the same way as in the EPO brochure "National law relating to the EPC". The 1993 edition of the brochure already gives details of Monegasque legislation implementing the EPC.

Appointment of a national representative to act in respect of European applications and patents is not required under Monegasque law. However, applicants are strongly advised to give the Industrial Property Department (IPD) an address for correspondence in one of the EPC Contracting States. Any professional representative from a Contracting State may act before the IPD, but only in French.

I. Filing of European patent applications (Article 75 EPC - Article 1 of Ordinance No. 10 427; Article 1 of Ministerial Decree No. 93-553)

European patent applications may be filed either with the EPO or with the IPD1 at the following address:

Service de la Propriété Industrielle

BP 665

2a, avenue du Prince Héréditaire Albert

MC - 98014 Monaco Cedex

Fax number for filing applications: (33)92057520

Monegasque legislation does not require applications which might contain Monegasque state secrets to be filed with the IPD.

European patent applications may be filed with the IPD in any of the languages referred to in Article 14(1) and (2) EPC. They may be filed in person, by post, or by facsimile.

II. A. Rights conferred by a European patent application after publication (Articles 67 EPC - Article 2(1) of Ordinance No. 10 427; Article 49 of Law No. 606)

Subject to the provisions under B below, a European patent application designating Monaco produces, as from the date of its publication by the EPO, the effects of the notification referred to in Article 49 of Law No. 606. Any person who thereafter makes unauthorised use of the application can be prosecuted under civil and criminal law.

B. Filing a translation of the claims (Article 67(3) EPC - Articles 2(2) and 3 of Ordinance No. 10 427)

If the European patent application was not published in French, the applicant does not enjoy the above protection until a French translation of the claims is notified to the alleged infringer. Article 3 of Ordinance No. 10 427 contains provisions corresponding to those of Article 70(3) and (4) EPC.

III. Filing a translation of the patent specification (Article 65 EPC)

Monegasque law does not require the filing of a French translation where the European patent specification is drawn up in German or English. Irrespective of the language in which the patent is drawn up, the proprietor of a European patent designating Monaco thus enjoys definitive protection there as from the date of publication of the mention of grant by the EPO.

IV. Payment of renewal fees for European patents (Article 141 EPC - Article 5 of Ordinance No. 10 427; Article 4 of Law No. 606; Article 4 of Ministerial Decree No. 93-553; Ordinance No. 10 957)

Renewal fees are payable to the IPD for the years following that in which the grant of the European patent is mentioned in the European Patent Bulletin.

Renewal fees fall due on the last day of the month containing the anniversary of the date of filing. The first renewal fee is not payable until two months after the date of grant of the patent (cf. Article 141(2) EPC). Renewal fees cannot be validly paid more than one year before they fall due. If a renewal fee is not paid by the due date, the IPD sends the patentee a reminder that the fee may still be validly paid within six months as from the due date, subject to a surcharge equal to 20% of the renewal fee. The IPD cannot be held responsible if no reminder is received. N.B.: There are no arrangements for re-establishment of rights under Monegasque law.

It is not necessary to appoint a national representative to pay renewal fees and receive notifications of reminders.

The lapse of a patent as a result of non-payment of renewal fees takes effect on the date on which the unpaid renewal fee fell due.

Renewal fee rates are currently as follows:

V. Conversion of European patent applications into national patent applications (Articles 135 to 137 EPC - Article 6 of Ordinance No. 10 427; Article 3 of Ministerial Decree

No. 93-553)

Monegasque law makes provision for conversion in the case of deemed withdrawal under Article 77(5) EPC.

In case of conversion (cf. Articles 135(2) and 136(2) EPC), the applicant must pay, within three months of notification by the IPD, a filing fee (FRF 230), plus a priority fee (FRF 90) for each priority claimed in excess of the first, and - where applicable - a French translation of the application. If he fails to comply, the IPD notifies him that he can still validly do so within a period of one month as from this notification, subject to payment of a surcharge of 20% of the amounts due.

The above-mentioned procedural acts may be performed by either the applicant or his professional representative before the EPO. Monegasque law does not require appointment of a national representative for subsequent procedural acts.

Renewal fees for a patent application following conversion are payable only in respect of the years following that in which conversion occurred.

VI. Payment of fees (Articles 22 and 40 of Ordinance No. 1 476)

Payments to the IPD must be made in cash or by bank transfer or bank or giro cheque to the account-holder:

Trésorerie Générale des Finances (TGF)

(Reference: 012104 DCIPI, Service de la Propriété Industrielle) with the

Crédit Foncier de Monaco

11, Boulevard Albert 1^er

MC-98000 Monaco

Account No. 00 412 05 402 Y

Clé rib 78

code banque 12739 - code guichet 00070

The date on which payment is deemed to have been made is the date of receipt by the IPD in the case of payments by cash or cheque (in the latter case, the date marked by postal date stamp will be considered as proof) and, in the case of bank transfers, the date the payment is credited to the IPD's account.

VII. Simultaneous protection (Article 139(3) EPC - Article 9 of Ordinance No. 10 427)

Where a national and a European patent cover the same invention, the national patent ceases to have effect either on expiry of the European patent's opposition period with no opposition filed or on the date any opposition proceedings definitively end with the European patent being maintained. A national patent granted after the above dates has no effect.

C. NATIONAL PATENT LAW

The substantive patent law of the Principality of Monaco has not yet been harmonised with the EPC. Its main provisions are outlined below.

1. Patentability

The principles governing patentability and revocation are laid down in Articles 1 to 3, 24 and 25 of Law No. 606. To be patentable, an invention has to be novel. Pharmaceutical compositions and treatments are excluded, but not processes for obtaining them. Patents are otherwise available for all technical fields.

Under Article 8 of Ordinance No. 10 427, a European patent with effect in Monaco can only be revoked on the grounds given in Article 138(1) EPC.

2. Patent term

This is twenty years as from the application's date of filing (Article 4 of Law No. 606).

3. Rights conferred by the patent

Under Article 1 of Law No. 606, the patent gives its proprietor an exclusive right to use the invention (cf. also Articles 44 to 52 of the Law).

D. OTHER INTERNATIONAL TREATIES

The Patent Cooperation Treaty (PCT) entered into force for Monaco on 26 June 1979. Since the EPC's own entry into force there, it is now also possible to obtain a European patent for Monaco by filing a Euro-PCT application. Monaco has made use of Article 45(2) PCT. Consequently, any designation or election of that State in the international application has the effect of an indication of the wish to obtain for Monaco a European patent.

Monaco is not a party to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms.