The term Industrial Property refers to both the San Marino exclusive rights established through patenting (patents, utility models, plant varieties) or through registration (trademarks, designs and models), as well as the rights related to commercial names, indications of provenance, denominations of origin, distinctive signs other than the registered trademark, confidential company information.
Protection against acts of unfair competition is also regulated.
In addition to the substantial part, the specific discipline to be followed in order to manage the precautionary procedures for the protection of the rights indicated above is determined.

Definitions

“invention”: a teaching of a technical nature, the content of which, regardless of the way in which it is expressed, satisfies the requirements and conditions set out in the regulations; an invention may be or may relate to a product, a new use of a product or a process or method;
“patent”: the title granted which confers exclusive rights.

Subject matter of the patent and exclusions from patentability

An invention is patentable if it is new, involves an inventive step and is susceptible of industrial application.

The following in particular are not considered to be inventions:

a) discoveries, scientific theories and mathematical methods,
b) aesthetic creations,
c) plans, principles and methods for intellectual activities, for play or for commercial activities and
computer programs,
d) presentations of information.
The provisions of the preceding paragraph exclude the patentability of the objects and activities named therein only to the extent that the patent application or the patent relates to such objects or activities considered as such.

The following inventions are not patentable:
a) relating to methods for the surgical or therapeutic treatment of the human or animal body and diagnostic methods applied to the human or animal body. This provision does not apply to products, in particular substances or mixtures of substances, for the implementation of one of the methods named;
b) the implementation of which would be contrary to public order or morality; the implementation of an invention cannot be considered contrary to public order or morality merely because it is prohibited by a legal or administrative provision; to this end, the following are considered unpatentable in particular:
I) processes for cloning human beings;
II) processes for modifying the germinal genetic identity of human beings;
III) uses of human embryos for industrial or commercial purposes;
IV) processes for modifying the genetic identity of animals capable of causing them suffering without substantial medical benefit to humans or animals, as well as animals resulting from such processes.
c) relating to animal breeds and essentially biological processes for obtaining them; this provision does not apply to microbiological processes and products obtained by means of these processes;
d) concerning the human body, in the various stages of its constitution and development, as well as the mere discovery of one of its elements, including the sequence or partial sequence of a gene.

A process for the production of plants or animals is essentially biological when it consists entirely of natural phenomena such as crossing or selection.
Biological material that is isolated from its natural environment or is produced by means of a technical process may be the subject of an invention, even if it pre-existed in the natural state.
means:

a) “biological material”, a material containing genetic information, self-reproducing or capable of reproducing in a biological system;
b) “microbiological process”, any process in which microbiological material is used, which involves an intervention on microbiological material, or which produces microbiological material.

Novelty

An invention is new if it is not included in the state of the art.

The state of the art consists of everything that is disclosed to the public anywhere in the world by publication or by oral disclosure or use, before the filing date of the application claiming the invention or, if applicable, before the priority date.

The disclosure is considered relevant only if it is suitable for making an indeterminate number of people understand the content of the inventive teaching.

Any disclosure to the public of the invention is not taken into consideration if it occurred in the six months preceding the filing date or, if applicable, the priority date of the application and if this occurred because of or as a result of actslica to which the inventor is assigned, the employer has the right of pre-emption for the exclusive or non-exclusive use of the invention, or for the purchase of the patent, as well as for the right to request, or purchase, for the same invention, patents abroad, against payment of the fee or price, to be set with the deduction of a sum corresponding to the aid and/or opportunities that the inventor has in any case received from the employer to achieve the invention.
In this case, the inventor has the obligation to communicate to the employer the realization of the invention, the filing of the same as a patent application and finally the achievement of the concession. The employer may exercise the right of pre-emption within three months of receiving communication from the employee inventor of the granting of the patent.
The relationships established with the exercise of pre-emption are automatically terminated if the compensation due is not paid in full by the due date.
In the cases provided for, if no agreement is reached on the premium, the fee or the price, or on the respective methods, a Board of arbitrators shall provide for this, composed of three members, one appointed by each of the parties, and the third appointed by the first two, or, in the event of disagreement, by the Single Court of the Republic of San Marino.
For purposes of this article, the industrial invention for which a patent application has been filed within one year of the inventor leaving the private company or the Public Administration, in whose field of activity the invention falls, shall be considered to have been made during the execution of the contract or employment relationship.
By way of derogation, when the employment relationship exists with a Public Research Organization (PRO), which has research purposes among its institutional tasks, the inventor shall communicate his invention to the PRO, according to the methods established by the latter, so that the latter may express, within two months of such communication, its interest in exercising the right to request the relevant patent.
The OPRs with research purposes shall equip themselves, within their financial resources, with structures suitable for ensuring the valorization of the inventions made by researchers.
The inventor has the right to be recognized as the author as well as the right to receive at least 30% of the amount obtained from the economic exploitation of the patent requested by the OPR.
After the deadline has elapsed without the OPR having expressed its interest in exercising the right to request the patent, or in any case without having proceeded with said filing within the four months following such manifestation, the right to the filing shall be granted to the inventor. If the OPR has exercised the right to request the patent but has not begun to exploit it within two years of its issue, the inventor automatically acquires the right to exploit the invention free of charge and to exercise the patrimonial rights connected to it.
In assessing the extension of the territorial scope of protection, the OPR has the right to decide in which countries to extend the effectiveness of the priority application. However, the inventor must have the possibility (at his own expense) to decide whether the extension should be carried out in the territories excluded from the OPR. Similarly, during the annual renewal phase, the OPR is not obliged to maintain the payment of annuities in countries of no interest to it. The inventor has the right to maintain (at his own expense) the payment of such annuities. In the cases provided for in this paragraph, the inventor will be entitled to 70% of the economic benefits deriving from the exploitation carried out in the countries chosen by the latter or in any case renewed in maintenance fees, while the remaining 30% will in any case be devolved to the OPR.
The inventor has the right of pre-emption for the purchase of the patent if the OPR decides, once the patent has been filed, to offer it for sale on the market.
In the case of multiple inventors, all have the right to be recognized as authors; in this case the right to receive at least 30% of the amount obtained from the exploitation of the patent is to be divided equally between the authors, unless a different participation in the realization of the invention is agreed or ascertained, in which case the division occurs in proportion to the contribution of each. The determination of such amounts is devolved to the competence of the Law Commissioner.

Right to the patent

If a final judgment establishes that the right to the patent belongs to a person other than the person who filed the application, that person may, if the patent has not yet been granted and within three months of the final judgment, at his choice:
a) assume the patent application in his own name, assuming for all purposes the quality of applicant;
b) file a new patent application whose derrence, to the extent that its content does not exceed that of the first application, dates back to the filing or priority date of the initial application which in any case ceases to have effect;
c) obtain the rejection of the application.
If the patent has been granted in the name of a person other than the entitled party, the latter may at his discretion:
d) obtain, by judgment, with retroactive effect, the transfer of the patent to his name;
e) assert the nullity of the patent granted to a person who was not entitled to it.
After the expiry of a period of two years from publication, without the entitled party having availed itself of one of the options referred to in the preceding paragraphs, the nullity of the patent granted to a person who is not entitled to it may be asserted by anyone who has an interest in it.

Designation of the inventor

The inventor has the right, with respect to the applicant of the patent application or the patent, to be mentioned before the State Patent and Trademark Office.
Each designated inventor shall be mentioned on the patent application or on the patent file itself, unless he or she expressly waives this right in a written request addressed to the Patent and Trademark State Office.
The Patent and Trademark State Office does not verify the accuracy of the designation of the inventor. An incomplete or incorrect designation of the inventor may be rectified only upon request accompanied by a declaration of consent from the person previously designated and, if the request is not submitted by the applicant or the patent holder, also by a declaration of consent from the latter.
If a third party submits to the Patent and Trademark State Office a final judgment according to which the applicant or the patent holder is required to designate him or her as the inventor, the Patent and Trademark State Office shall record this in the Patent Register and publish notice thereof in the Official Bulletin.
The inventor whose request to include his name in the Patent Register and in the patent has been rejected by the Patent and Trademark Office may appeal.
The appeal does not suspend the granting of the patent, except for the subsequent insertion of the inventor’s name in the Patent Register.

Patent application

The patent application is filed with the Patent and Trademark Office and must contain a request, a description and an abstract. The application must be filed by the inventor or his successor in title, or by his agent.
The application is accompanied by the payment of the prescribed fee.
The application must contain:
a) an application for the granting of the patent containing the surname, name, nationality and domicile of the applicant, the surname, name of the inventor and the surname, name of the agent, if there is one, and the title of the invention, which briefly but precisely expresses its characteristics and purpose.
b) a statement justifying the applicant’s right to the patent, if the applicant is not the inventor.
The following must be attached to the application:
c) the description of the invention containing the drawings of the invention, where necessary;
d) the document proving payment of the required fees;
e) the designation of the inventor.
When there is an agent, the application must also be accompanied by the power of attorney, or the letter of assignment.
If the applicant does not submit the designation of the inventor or the letter of assignment at the time of the application, the right to submit these documents is granted within two months of filing the application.

Publications

The Patent and Trademark State Office maintains separate registers for patents, industrial models and designs and trademarks.
The Patent and Trademark State Office carries out all the publications provided for in a special section of the Official Bulletin.
The Register of Patents, Trademarks and Industrial Models and Designs, applications for patent rights and related documents are public. The Patent and Trademark State Office keeps a copy of the documents filed during the procedures available to the public free of charge for consultation.
Except as otherwise provided, anyone may view and obtain, by certificate or extract, notice of the registrations, transcriptions and annotations contained in the registers, as well as a copy of the applications and related documents, such as tables with the graphic reproduction of the models, or products, or samples of the products themselves, and any descriptions, attached to the files. The Director of the Patent and Trademark State Office may allow copies of the applications, descriptions and drawings, as well as other documents that may be viewed by the public, to be extracted by anyone who requests them.
Such certificates or extracts, as well as the authentication of copies of deeds and documents, are subject to the payment of the prescribed fees or viewing rights.
The public may alsoconsult, in the same way and upon payment to the Patent and Trademark State Office of the viewing fees, the documents relating to foreign certificates, attached to the applications, where the priority of filings made abroad has been claimed, and also the documents of other priorities.
Copies and extracts from the various Registers and certificates relating to information to be extracted from other registers, as well as duplicates of the originals of documents relating to patents, trademarks, models or industrial designs, are made exclusively by the Patent and Trademark State Office, following a request.
The Director of the Patent and Trademark State Office, in the same way, determines the fees for copying and photographic reproduction work, to be carried out by the Patent and Trademark State Office and for secretarial fees for services offered to the public.
The publications provided for in this decree are made in the Official Bulletin, edited by the Patent and Trademark State Office.
The patents filed and granted are published in the Official Bulletin. The Bulletin itself may also provide information on the details of internationally registered trademarks, by reference to the files of the Bulletin of the World Intellectual Property Organization of Geneva “Les Marques Internationales”, containing the information regarding such trademarks, as and when the files themselves arrive.
The publication will contain the fundamental information included in the patents and, respectively, in the requests for transcription.
The Director of the State Patent and Trademark Office has the right to have the analytical and class indexes of the respective classifications of the patent titles applied for and/or granted, the alphabetical indexes of the owners of the patents granted, and possibly the summaries of the descriptions and transcriptions made, published in the Official Bulletin.
The provisions for free distribution to Industrial Property Offices of other States also apply to the aforementioned Bulletin.
The Director of the Patent and Trademark State Office may decide to publish in any other form, such as electronic, depending on the availability offered by technical progress. He has the power to determine which information or personal data, in addition to those specified, are to be included in the publication of the Registers and the Official Bulletin, depending on the public interest.

Jurisdictional system

All legal actions concerning San Marino patent rights are brought before the judicial authorities of the Republic, regardless of the citizenship, domicile or residence of the parties, without prejudice to the provisions of article 43 of the Convention of friendship and good neighborliness between San Marino and Italy of 31 March 1939.
The indication of the domicile noted in the relevant register is valid as an election of domicile for the purposes of determining jurisdiction and of any administrative and judicial notification.
The burden of proving the nullity or forfeiture of a patent falls in any case on the person challenging the title.
The burden of proving the violation of the patent title falls on the owner who brings the action for counterfeiting or usurpation.
Even partial forfeitures or nullities of a patent are effective against everyone when they are declared by a final judgment. Such judgments must be transcribed in the respective Register by the State Patent and Trademark Office.
The right to act in defense of Industrial Property rights belongs to the owners of the same and their licensees, expressly provided with the necessary powers based on the license contract.
The right to act aimed at obtaining a declaration of forfeiture or nullity belongs to anyone who has a concrete and current interest.
The action aimed at obtaining a declaration of invalidity of a design or model due to the existence of prior rights or because the registration was made in the name of a non-right holder or because the design or model constitutes an improper use of one of the elements listed in Article 6-ter of the Paris Convention for the Protection of Industrial Property, or of designs, emblems and coats of arms that are of particular public interest in the State, may be exercised respectively only by the owner of the prior rights and by his successor in title or by the right holder or by anyone with an interest in the use.
The action aimed at obtaining a declaration of invalidity of a registered trademark due to the existence of prior rights, or because the use of the trademark would constitute a violation of another’s copyright, industrial property rights, or other exclusive rights of third parties, or because the trademark constitutes a violation of the right to a name or portrait,or because the trademark registration was made in the name of the non-entitled person, may be exercised only by the owner of the prior rights and his successor in title or by the entitled person.

Jurisdiction for administrative actions

Each party to a proceeding before the Patent and Trademark Office, which has concluded with a decision, may appeal against this decision pursuant to Law no. 68 of 28 June 1989 “On administrative jurisdiction, control of legitimacy and administrative sanctions” before the first-instance administrative judge.

Jurisdiction for civil actions

Actions concerning industrial property and for the protection of acts of unfair competition are brought before the Law Commissioner, with the burden on the plaintiff to communicate a copy of the introductory act of the proceeding to the Patent and Trademark Office.

Action promoted ex officio

The action aimed at obtaining the declaration of forfeiture or nullity of a patent title may also be promoted ex officio by the Law Commissioner, due to supervening conflict of the patent with the law, public order or morality and due to supervening deceptiveness of the trademarks or essential characteristics of the product or service related to them.
The action referred to in the previous paragraph must be exercised in adversarial proceedings with all those who are registered in the relevant Register as having rights to the patent.

Jurisdiction for criminal actions

Criminal actions for the protection of Industrial Property are brought before the Law Commissioner.

Various measures

The removal or destruction of things constituting a violation of patent rights cannot be ordered, nor can their use be prohibited when they belong to someone who in good faith makes personal or domestic use of them.
The application of the provisions of the international conventions enforceable in the Republic of San Marino and of the laws enacted for their enforcement remains unchanged.