Issues arising from patent and trademark protection
European microstate San Marino has an estimated population of around 30,000 - the smallest population of all the Council of Europe countries. Following San Marino's accession to the European Patent Convention on 21st April 2009, a key issue is whether, and if so to what extent, there is an interest in validating granted European patents in San Marino.
In addition to economic interests, which are limited in view of the country's size, the following facts should be considered.
Under the Convention of Friendship and Good Neighbourhood entered into between Italy and San Marino on 31st March 1939, patents granted in Italy (either via a national application or as a result of validation in Italy of a granted European patent) automatically enjoy protection in San Marino, without additional formality. Such protection is afforded for as long as the Italian patent rights are maintained in force through the payment of annuities. The same applies to protection enjoyed in Italy by patents granted by the San Marino Patent Office.
Article 43 of the 1939 convention is still in force, as confirmed by Article 26 of the San Marino Regulation Implementing the Patent and Trademark Law (1997/64). This regulation became applicable as a result of Decree 1999/74. The relevant parts of Article 26 read as follows:
In compliance with Article 43 of the Convention of Friendship and Good Neighborhood between San Marino and Italy of March 31, 1939, the following rules shall apply:...
2. If an invention is protected by an Italian valid patent application or patent, rather than a patent application or patent in San Marino, exploitation by any third party of the invention within the territory of SM amounts to infringement or usurpation of the Italian patent right and the owner or his assignee may judicially enforce same in compliance with the provisions of this regulation and the Law on Patents and Trademarks.
Italy and San Marino subsequently entered into the Economic Cooperation Treaty (31st March 2009), whereby the provisions mentioned above were confirmed. Article 4 reads as follows:
Article 4 – Cooperation in the field of IP
Without prejudice to the provisions of the Convention of Friendship and Good Neighborhood of 1939, Articles 42 and 43, and without prejudice to the international multilateral agreements of which Italy and the Republic of San Marino are partners, the two Governments agree to enhance the cooperation particularly with reference to the fight against counterfeiters and the protection of IP rights.
The parties moreover agree to start practical forms of assistance and cooperation between specialized agencies of the two countries, also resorting to direct exchanges of experiences and visits for study and counseling by judges and Governmental experts of the relevant field.
Italy shall favor the entry of San Marino in multilateral protection systems and agreements for the protection of IP rights.
In light of the above, once a European patent has been validated in Italy, it automatically covers San Marino, as set out by Article 43 of the 1939 convention.
However, San Marino is not a member of the European Union and Community trademark registrations do not cover San Marino. Trademarks for the territory of San Marino may be obtained by:
- Filing a national application locally.
- Designating San Marino in an international trademark registration.
- Filing a national trademark registration in Italy which enjoys automatic protection in San Marino under the 1939 Convention.
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