Montenegro becomes the 39th member state of the European Patent Convention
Filing a European patent application allows an applicant to obtain patent protection in all member states of the European Patent Convention (EPC). All member states of the EPC are designated by the payment of a single designation fee.
The European Patent Organisation also has extension and validation agreements with countries that are not party to the EPC meaning that it is possible to designate these countries in a European patent application to obtain patent protection in these countries. Designating any of the extension or validation states involves the payment of an additional fee per state that an applicant wishes to designate.
Along with Bosnia and Herzegovina, Montenegro was a country with an extension agreement meaning that an additional fee was required if patent protection in Montenegro was desired. However, on 15 July 2022, the Government of Montenegro deposited its instrument of accession to the EPC and the EPC entered into force in Montenegro on 1 October 2022 meaning that Montenegro has become the 39th member state of the EPC.
What this means
European patent applications filed on or after 1 October 2022 will now no longer have to pay a separate extension state fee to designate Montenegro. This designation will be covered by the single designation fee that will now designate 39 member states of the EPC (including Montenegro).
The above also applies to PCT applications filed on or after 1 October 2022 that enter the European regional phase. Please note that it is the filing date of the PCT application that dictates the number of states that are covered by the singe designation fee, not the date on which regional phase entry is requested. For PCT applications with a filing date before 1 October 2022 that enter the European regional phase after 1 October 2022, applicants must still pay an additional extension state fee if they wish to designate Montenegro.
Please note that an additional fee is still payable if an applicant wishes to designate the extension state Bosnia and Herzegovina or any of the validation states (Morocco, the Republic of Moldova, Tunisia and Cambodia).
Montenegro joining the EPC also means that nationals of Montenegro and persons having their principal place of business or residence in Montenegro can now file PCT applications using the European Patent Office as Receiving Office.
Montenegro becoming the 39th member state of the EPC means that applicants of European patent applications filed on or after 1 October 2022 have the potential to obtain patent protection in Montenegro without payment of an additional fee. This will likely be well received by applicants that regularly obtain patent protection in Montenegro via a European patent application.
Please contact your Forresters attorney if you have any questions.
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