Article 82

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 19 July 2022 concerning delegation to the European Patent Office of the PCT receiving Office functions of the Montenegrin Ministry of Economic Development and Tourism and closure by Montenegro of the national route under Article 45(2) PCT

I. Background

1. By letter dated 19 July 2022, the Montenegrin Ministry of Economic Development and Tourism informed the European Patent Office (EPO) of changes to the country's patent legislation which will become applicable on 1 October 2022. As from that date, the Directorate for Internal Market and Competition of the Ministry of Economic Development and Tourism (DIMC) will cease to act as a receiving Office under the PCT. In the same letter, the Ministry asked the EPO whether it would agree in accordance with Rule 19.1(b) PCT to act, for all purposes, instead of the DIMC as a PCT receiving Office for all international applications filed as from 1 October 2022 by applicants who are nationals or residents of Montenegro. The EPO agreed to this.

2. Moreover, on 1 October 2022, Montenegro will formally, under Article 45(2) PCT, close its national route to obtaining patent protection there on the basis of an international application.

II. Filing of international applications

3. At present, in accordance with Rule 19.1 PCT and Article 152 of Montenegrin Patent Law of 16 July 2015 as amended, applicants who are nationals or residents of Montenegro may choose to file an international application with the DIMC or the International Bureau of the World Intellectual Property Organization (WIPO).

4. However, with effect from 1 October 2022, Article 152 of Montenegrin Patent Law becomes obsolete due to the entry into force of the EPC in Montenegro. Instead, Article 152a of Montenegrin Patent Law will apply to all international applications filed as of the entry into force of the EPC in Montenegro. Under Article 152a of Montenegrin Patent Law, nationals or residents of Montenegro1 will have the choice to file an international application with either the EPO or the International Bureau of WIPO. This option does not apply to applications which are subject to compulsory filing with the Ministry of Defence for national defence or security reasons, as detailed below.

5. The EPO as receiving Office only accepts international applications filed in English, French or German (Rule 157(2) EPC). Therefore, applicants that are nationals or residents of Montenegro wishing to file an international application in Montenegrin 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 Montenegrin 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.

III. Compulsory filing with the Ministry of Defence

6. The existing filing exception under Article 124 ff. of Montenegrin Patent Law with regard to Montenegrin defence and security will remain unchanged. Any international application where the applicant is a national or resident of Montenegro and which concerns an invention of significance for the defence and security of Montenegro will still be subject to compulsory filing with the Ministry of Defence in accordance with Articles 124-125 of Montenegrin Patent Law and Article 27(8) PCT as well as Articles 151 and 75(2) EPC. Montenegrin nationals and residents wishing to choose the EPO as receiving Office will thus have to initially submit their international application with the Ministry of Defence under Article 124(2) of Montenegrin Patent Law.

7. If the Ministry of Defence establishes in its screening of an international application that it has ceased to have elements of secrecy, it will forward the application to the DIMC under Article 125(1) of Montenegrin Patent Law.

8. Since the DIMC will have ceased to act as a receiving Office (see paragraph 1), after having received such an international application, it will forward it to the EPO as receiving Office, in accordance with Rule 157(3) EPC. The date on which the Ministry of Defence receives the international application on behalf of the EPO will be acknowledged as the date of receipt by the EPO.

9. An international application filed in Montenegrin which is forwarded by the DIMC to the EPO after the above-mentioned screening will be promptly transmitted by the EPO to the International Bureau of WIPO under Rule 19.4(b) PCT and 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 Montenegro in an international application filed after the entry into force of the EPC in Montenegro

10. At present, in accordance with Article 153 of Montenegrin Patent Law, any international application in which neither the designation of Montenegro nor the designations of the EPC contracting states are withdrawn is deemed to be a request for extension of the European patent to Montenegro. As there is currently no national phase before the DIMC, applicants wishing to obtain patent protection in Montenegro upon filing of an international application have thus to enter the regional phase before the EPO and seek the extension of the European patent application and the granted European patent to Montenegro.

11. With effect from 1 October 2022, the EPC enters into force in Montenegro and Article 153a of Montenegrin Patent Law will apply to all international applications filed as of that date. Under this article, any designation or election of Montenegro in an international application filed as of the date of entry into force of the EPC in Montenegro will have the effect of a request for grant of a European patent for Montenegro.