E-Pat Newsletter Summer 2008

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It is never small news when a new territory becomes part of the PCT, but it is even bigger news when a completely new country opens its Patent Office. Following are two major happenings in the Patent Sector during the 2nd quarter of 2008.

Also, our last update mentioned the new rules of The Netherlands with regards to renewal fees. These changes went into effect on June 5, 2008.

Sao Tome & Principe

Sao Tome & Principe has become a member of the Patent Cooperation Treaty from July 3, 2008. This means that in any international application filed on or after July 3, 2008, Sao Tome and Principe will automatically be designated and nationals and

residents of Sao Tome and Principe will themselves be able to file PCT applications.
Sao Tome & Principe were already members of the Paris Convention from May 12, 1998.

Montenegro

Since 3 June 2006, the Federation of Serbia and Montenegro ended to exist further to the declaration of Independence of the Republic of Montenegro.

On October 12, 2007, a Decree regulating the recognition of IP rights obtained in the Predecessor State of Serbia and Montenegro has been published.

This Decree came into force on October 20, 2007 and the Montenegro IP Office was officially inaugurated on May 28, 2008.

Holders of patent / trademark / design applications which are pending in Serbia on May 28, 2008, will be able to revalidate them in Montenegro and retain the priority date of the Serbian filing. If not revalidated within six months, these applications will not be recognized in Montenegro.

The same applies to international registrations designating Serbia, which were filed with WIPO in the period from June 3, 2006 to December 4, 2006. Their holders will have six months to revalidate them in Montenegro (by filing a request with the Montenegro IP Office) and retain the priority date of the Serbian designation.

Serbian national rights registered before May 28, 2008, will automatically be recognized in Montenegro.

However, in order to receive a Montenegrin Certificate of Registration, the owner will formally have to request its issuance and prove that their trademark, patent, or design was valid in Serbia on May 28, 2008.

As of May 28, 2008, all national rights have to be maintained locally in Montenegro, by paying patent annuities and trademark renewal fees there.

International trademarks designating Serbia and Montenegro registered before June 3, 2006, will be valid in Montenegro provided that trademark owners file a request for the continuation of effect with WIPO, as provided for by article 39 of the Common Regulations. The deadline is six months from the date the trademark owners receive the notification from WIPO.

International trademarks designating Serbia registered between June 3, 2006 and December 4, 2006 will have to be revalidated in Montenegro within 6 months from the date the Montenegro IP Office starts operating. The request for revalidation will have to be filed with the Montenegro IP Office, and it will have to be supported by evidence that the international trademark was registered for Serbia in the relevant period.

The trademark legislation of Montenegro will be the same as in the former State Union, at least for the time being.