IP/N/1/MNE/P/1  
 
8 April 2013  
(13-1785)  Page: 1/31  
Council for Trade-Related Aspects 
of Intellectual Property Rights  Original: English/anglais/inglés  
 
MAIN DEDICATED INTELLECTUAL PROPERTY LAWS AND 
REGULATIONS NOTIFIED UNDER ARTICLE 63.2 
OF THE AGREEMENT 
MONTENEGRO  
This document reproduces the consolidated text1 of the Patent Law, as notified by Montenegro on 
21 February 2013 under Article 63.2 of the Agreement (see document IP/N/1/MNE/1). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
M
ONTÉNÉGRO  
Le présent document contient le texte1 consolidé de la Loi sur les brevets, notifiée par le 
Monténégro le 21 février 2013 au titre de l'article 63:2 de l'Accord  (voir le document 
IP/N/1/MNE/1).  
Consejo de los Aspectos de los Derechos de Propiedad Intelectual relacionados con el Comercio 
  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
M
ONTENEGRO  
En el presente documento se reproduce el texto1 refundido de la Ley de Patentes, notificado por 
Montenegro el 21 de febrero de 2013 en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento IP/N/1/MNE/1).  
 
                                               
1 In English only./En anglais seulement./En inglés solamente. IP/N/1/MNE/P/1 
 
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  THE PATENT LAW 
("Official Gazette of Montenegro", No. 66/08, 40/10 and 40/11) 
 
(consolidated text)  
  
1.   GENERAL PROVISIONS  
 
Article 1 
 
This Law shall regulate the legal protection of inventions by means of patents.   
Article 2 
 
This Law shall also apply to the sea and submarine areas adjacent to the territory of Montenegro in 
which Montenegro exercises sovereign rights or jurisdiction in accordance with international law.  
 
Article 3 
 
Foreign natural and legal persons shall, in relation to the protection of inventions in Montenegro, enjoy the same rights as domestic natural and legal persons, where such treatment derives from international agreements or from the principle of reciprocity.  The reciprocity shall be proved by 
the person who claims that it exists. 
 
Article 4 
 
In the proceedings before the administrative authority responsible for intellectual property affairs (hereinafter: responsible authority), a foreign natu ral or legal person must be represented by a 
representative listed in the Register of Representatives  kept by the responsible authority, or by a 
domestic attorney.   
2.   SUBJECT MATTER OF PATENT PROTECTION 
 
Patentable Inventions 
Article 5 
 
(1) A patent shall be granted for an invention, in any field of technology, provided it is new, 
involves an inventive step and is susceptible of industrial application. 
 
(2) The subject matter of an invention protected by a patent may be a product (e.g. a device, 
substance, composition) or a process. The subject matter protected by a patent may also be related to: 
 
1) a product consisting of or containing biological material; 
2) a process by means of which biological material is produced, processed or used; 
3) a biological material isolated from its natural environment or produced by means of a 
technical process, even if it previously occurred in nature.   
 
(3) For the purpose of this Law, biological material shall mean any material containing genetic 
information and capable of reproducing itself or being reproduced in a biological system (e.g. 
micro-organisms, plant and animal cell cultures, sequence of genes). 
 
(4) The following, in particular, shall not be regarded as inventions, within the meaning of this 
Law: 
 
1) discoveries, scientific theories and mathematical methods; 
2) aesthetic creations; 
3) schemes, rules and methods for performing mental acts, playing games or doing business; 
4) computer programs, and 
5) presentations of information. IP/N/1/MNE/P/1 
 
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(5) The provisions of paragraph 4 of this Article sh all exclude patentability of subject matter or 
activities only to the extent to which the application for a patent or a patent relate to the subject matter or activity as such. 
 
Article 6 
 
(1) The human body, at any stage of its formation and development, and the discovery of one of 
its elements, including sequences or partial se quences of genes, shall not be regarded as 
invention.   
 
(2) An element isolated from the human body or produced by means of a technical process, 
including the sequences or partial sequences of genes, may be patentable, even where the structure of that element is identical to that of a natural element.    
 
(3) The industrial application of a sequence or partia l sequence of a gene must be disclosed in the 
patent application on the day of its filing.   
 
Exceptions to Patentability 
Article 7 
 
(1) Patent protection shall not be granted in respect of:   
 
1) inventions the commercial use of which would be contrary to ordre public  or morality 
(providing that the use shall not be considered contrary to ordre public  or morality merely 
because it is prohibited by law or any other regulation), particularly in respect of: - processes for cloning human beings;   
- processes for modifying of the germ line genetic identity of human beings; 
- uses of human embryos for industrial or commercial purposes; 
- processes for modifying the genetic identity of animals which are likely to cause them 
suffering without any substantial medical benefit to man or animal, and also animals 
resulting from such processes;  
2) inventions concerning methods for treatment by surgery or diagnostic methods or therapy 
practiced directly on the human or animal body , except products, in particular substances  
or compositions, for use in any of these methods;  
3) a plant or animal variety or an essentially biological process for the production of a plant or 
animal, except:   
- a biotechnological invention concerning a plant or animal, if the technical feasibility of 
the invention is not confined to a particular plant or animal variety;  
- a microbiological or other technical process, or a product obtained by means of such 
process other than a plant or animal variety.  
 
(2) For the purposes of this Law: 
  
1) "plant variety" shall have the meaning laid down in the law governing the protection of 
new plant varieties; 
2) an "essentially biological process" for the produc tion of plants or animals shall be a process 
consisting entirely of natural phenomena such as crossing or selection;   
3) a "microbiological process" shall be a process involving or performed upon or resulting  in 
microbiological material; 
4) "biotechnological inventions" are inventions that concern a product consisting of or 
containing biological material or a process by means of which a biological material is 
produced, processed or used.   
 
 
3.   CONDITIONS FO R PATENT PROTECTION 
 
Novelty of an Invention  
Article 8 
 (1) An invention shall be deemed to be new if it does not form part of the state of the art.  
 IP/N/1/MNE/P/1 
 
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  (2) For the purposes of this Law the state of the art shall comprise: 
 
1) everything made available to the public by me ans of written or oral description, by use or 
in any other way, prior to the date of th e filing of an  application for a patent; 
2) the content of all applications in Montenegro as filed, with the filing date preceding the 
date referred to in the previous item and pu blished on or after that date, in the manner 
prescribed by this Law.   
 
 (3) The provisions of paragraphs 1 and 2 of this Article shall not exclude the patentability of 
substances or compositions included in the state of the art, which are used for treatment by 
surgical or diagnostic or therapeutic methods, provided their use for these methods is not 
comprised in the state of the art. 
 
(4) Paragraphs 1 and 2 shall also not exclude the patentability of any substance or composition 
referred to in paragraph 3 of this Article for any specific use in a surgical, diagnostic or therapeutic method, provided that such use is not comprised in the state of the art. 
 
Non-Prejudicial Disclosure of Invention 
Article 9 
 
An invention which was already part of the state of the art for a period of up to six months before 
the filing of a patent application shall also be deem ed to be new, if its disclosure was due to or was 
a consequence of:  
 
1) evident abuse in relation to the applicant or his legal predecessor, or 
2) the invention being displayed by the applicant or his legal predecessor at an official, or 
officially recognized, international exhibition falling within the terms of the Convention on 
International Exhibitions , concluded in Paris on 22 November 1928, with all subsequent 
revisions, provided that the applicant states, on filing the application, that the invention  has been so exhibited and that he provides an appropriate certificate to support this 
statement within a period of four months fr om the filing date of the application.  
 
Inventive Step  
Article 10 
 
(1) An invention shall be deemed to involve an invent ive step if, having regard to the state of the 
art, it is not obvious to a person skilled in the appropriate art.  
 (2) In examining whether an invention involves an inventive step, the content of applications 
referred to in Article 8, paragraph 2, item 2 of this Law shall not be taken into account. 
 
Industrial Applicability 
Article 11 
 
An invention shall be considered to be susceptible of industrial application if its subject matter can be made or used in any kind of industry, including agriculture.   
 
 
4.   RIGHT TO OBTAIN A PATENT 
 
Entitlement to Protection 
Article 12 
 
(1) The right to obtain a patent shall belong to the inventor or his successor in rights, or in cases 
provided for by this Law, to the employer or his successor in rights.    
(2) If an invention is the result of the joint effort  of a number of inventors, the right to a patent 
shall belong to such inventors jointly. A person rendering technical assistance to an inventor shall not be considered to be an inventor.    IP/N/1/MNE/P/1 
 
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  Rights of the Inventor  
Article 13 
 
(1) The inventor shall have the right to be designated as such in the patent application, 
specifications , registers, certificates and publications related to his invention, in the manner 
stipulated by this Law.  
 
(2) The rights of an inventor who has come up with an invention within the course of employment 
and the rights of the organisation in which such invention has been made, shall be governed by this Law, by general legal acts and by contract concluded between the employer and 
employee or between their representatives, as the case may be.   
 
 
5.   PATENT GRANT PROCEDURE 
 
1.
 COMMON PROCEDURAL PROVISIONS  
 
Article 14  
 (1) The legal protection of an invention shall be attained within the course of an administrative 
procedure conducted by the responsible authority, which shall also perform other 
administrative and professional tasks concerning the protection of inventions. 
 (2) Administrative decisions taken within the course of the administrative procedure referred to in 
paragraph 1 of this Article shall be final and may be contested within the administrative 
dispute proceedings before the competent court. 
 
Article 15 
 During the patent grant procedure, the responsible authority shall not make an application available for inspection to any person or body, be fore the application has been published, except 
on request or with the consent of the applicant.  
 
Article 16 
 
The administrative procedure before the responsibl e authority shall be subject to payment of fees 
and procedural costs, in accordance with special regulations on administrative fees, procedural 
costs and information service fees.  
 
Article 17 
 
(1) The responsible authority shall keep a Patent App lications Register, a Register of Patents and a 
Register of Supplementary Protection Certificates.   
 
(2) The content and manner of keeping public register s referred to in paragraph 1 of this Article 
shall be governed by a regulation issued by th e Ministry responsible for industrial property 
(hereinafter referred as: the Ministry).  
 
Article 18 
 
Any information prescribed by this Law and by implementing regulations for this Law shall be 
published in the Official Bulletin issued by the responsible authority.   
 
Article 19 
 
The responsible authority shall make its documentat ion and information on the state of the art and 
on rights concerning the protection of inventions available to commercial entities and other legal 
and natural persons.   
 
 IP/N/1/MNE/P/1 
 
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  2.  PATENT APPLICATION  
 
Instigation of Patent Grant Procedure  
Article 20 
 
(1) The patent grant procedure shall be instigated  by the filing of an application with the 
responsible authority. 
 
(2) Applications for the protection of inventions abroad shall also be filed with the responsible 
authority, if so provided by international agreements.    
 
(3) Legal protection of inventions in Montenegro shall also be granted in respect of applications 
filed abroad, if so provided by international agreements. An application filed in this manner shall have the same effects as a national application, unless otherwise provided for by relevant 
international agreements.  
 
Unity of Invention  
Article 21  
 
(1) As a rule, a separate patent application shall be filed for each individual invention. 
 
(2) A single application may be filed for a number of inventions only if the inventions are mutually 
so linked as to form a single general inventive concept.  
 
Content of a Patent Application  
Article 22 
 
A patent application must contain: 
 
1) a request for the grant of a patent; 
2) a description of the invention; 
3) one or more claims for the protection of an invention by a patent (hereinafter: patent 
claims), 
4) a drawing referred to in the description or claims, when appropriate; 
5) an abstract.  
 
Request for the Grant of a Patent  
Article 23 
 
(1) A request for the grant of a patent shall contain an explicit indication that a patent is being 
sought, details concerning the applicant, details concerning the inventor or a statement to the 
effect that the inventor does not wish to be mentioned in the application, and the title of the 
invention clearly reflecting its essence.    
(2) The responsible authority shall not investigate whether the applicant is entitled to protection.  
 (3) If the inventor does not wish his name mentioned in the request for the grant of a patent and 
in other documents under this Law, the applicant shall be required to furnish the responsible 
authority with the inventor's written statement to that effect, within a period of three months from the date of the filing of the application at the latest.   
 
Description of the Invention 
Article 24 
 
(1) An invention shall be described in a manner that is clear and complete enough for the 
invention to be carried out by a person skilled in the art. 
 
(2) If the invention concerns a biological material and cannot be carried out on the basis of the 
description of the invention, the description shall be deemed to fulfil the conditions laid down in paragraph 1 of this Article if a sample of the naturally reproducible biological material is deposited with a relevant depository institution no t later than the filing date of the application.  
 IP/N/1/MNE/P/1 
 
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  (3) The term "relevant depository institution" referred to in paragraph 2 of this Article shall mean 
an institution designated in accordance with the provisions of the Budapest Treaty on the International Recognition of the Deposits of Microorganisms for the Purpose of Patent Procedure concluded on 28 April 1977 with all subsequent revisions.   
 
Patent Claims 
Article 25 
 
Patent claims shall define the subject matter for wh ich protection is sought.  They shall be clear, 
concise and fully supported by the description of the invention.    
Abstract 
Article 26 
 
An abstract shall briefly set out the essential content of the invention and shall serve exclusively to 
provide technical information.    
Content of a Patent Application Necessary to Be 
Accorded a Filing Date  
Article 27  
 
In order to be accorded a filing date, an app lication filed with the responsible authority must 
contain, on that date:  
1) an indication that a patent is being sought; 
2) the given and family name or busine ss name and address of the applicant; 
3) a description of the invention, even if it does not fulfil the prescribed requirements.  
 
Division of a Patent Application 
Article 28 
 
(1) The applicant may divide the subject matter of an application which has already been accorded 
a date of filing (original application) into two or more independent applications (divisional application) at his own discretion or at the request of the responsible authority.   
 
(2) The division of applications shall be allowed only until the completion of preparation for 
publication of the application. 
 
(3) The subject matter of the divisional application may not extend beyond the content of the 
original application, as filed.  It shall retain the filing date of the original application and, where appropriate, shall enjoy the benefit of the priority of that application. 
 
Amendments to Pending Applications 
Article 29 
 
(1) A patent application which has been accorded a filing date cannot subsequently be amended in 
a manner that would extend the subject matter for which protection is being sought.  
 
(2) Any amendments to the particulars of the application that do not extend its subject matter 
may take place prior to the taking of a decision on the application.   
 
3.
  PRIORITY RIGHT 
 
Article 30 
 
(1) If two or more inventors come up with the sa me invention independently of each other, the 
applicant with an earlier application filing date shall have the priority right with respect to the 
granting of the patent.   
 (2) The priority shall count from the filing date of  the application with the responsible authority, 
except where conditions for the granting the prio rity right pursuant to Article 31 of this Law 
have been fulfilled.  IP/N/1/MNE/P/1 
 
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International Priority Right 
Article 31 
 
(1) A legal or natural person who has duly filed an application for any form of protection of an 
invention in or for any State  party to the Paris Convention for the Protection of Industrial Property or any Member of the World Trade Organisation, or his successor in right, shall be 
granted priority in  Montenegro from the date of  the filing of such application, provided that: 
 
1) Such person files a claim to that effect with the responsible authority when filing an 
application for the protection of the same invention or not later than three months form 
the application filing date; and  
2) that not more than twelve months have elapsed since the date of filing of the first 
application in or for the State party to the Paris Convention or the Member of the World 
Trade Organisation.    
 (2)  A claim for priority referred to in paragraph 1 of this Article shall include information of the 
filing date of the application that is the basis for the grant of priority right, number of the 
application and the State party to the Paris Convention or the Member of the World Trade Organization in or for which it was made and international organization where it has been filed. 
 
(3) A duly filed application referred to in paragraph 1 of this Article shall be considered to be any 
application that has been accorded a filing date under the national legislation of a State party to the Paris Convention or a Member of the Wo rld Trade Organisation, or under international 
agreements, regardless of the eventual legal outcome of the application. 
 
Article 32 
 
An applicant who intends to take advantage of the priority right under Article 31 of this Law shall be required to submit to the responsible authorit y copy of the prior application certified by the 
responsible authority with which the application has been filed. 
 
Multiple Priority Right  
Article 33 
 
(1) Subject to the requirements of Article 32 of this Law, an applicant may claim multiple priority 
rights in respect of a number of prior applications filed in or for one or more States parties to 
the Paris Convention or Members of the World Trade Organisation.   
 (2) Where multiple priority right has been granted, any time limits running from the priority date 
under this Law shall run from the earliest date applicable to multiple priority rights.   
 
Elements of the Invention for Which Priority Right is Claimed  
Article 34 
 
(1) A claim for one or more priority rights can only  refer to those elements of the invention that 
have been clearly disclosed in any part of the application or applications for which priority is 
claimed.  
 (2) If certain elements of the invention for which priority is claimed do not appear among the 
claims formulated in the previous application, the fact that the constituent parts of the 
application as a whole clearly bring out such elements shall be sufficient for the grant of 
priority right. 
 
Effect of Priority Right 
Article 35 
 
The right of priority shall have the effect that the date of priority shall count as the date of filing 
for the purpose of Articles 8 and 30 of this Law.    IP/N/1/MNE/P/1 
 
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  4.  PROCEDURE FROM THE RECEIPT TO THE PUBLICATION OF A  
PATENT APPLICATION  
 
Recognition of the Filing Date  
Article 36 
 
(1) Upon receipt of a patent application, the responsible authority shall examine whether it meets 
the requirements laid down in Article 27 of this Law for accordance of its date of filing.  
 (2) If it establishes that the requirements under Arti cle 27 of this Law have not been fulfilled, the 
responsible authority shall invite the applicant to rectify the deficiencies identified, within three 
months from the date of receipt of the notification, together with a warning on the legal 
consequences of failure to respond within the prescribed time limit.  
 
(3) If the applicant rectifies the deficiencies within the period provided for in paragraph 2 of this 
Article, the responsible authority shall recognize the date on which the applicant rectified the deficiencies observed as the application filing date.   
 
(4) Where reference is made in the application to drawings that were not attached to the 
application, the responsible authority shall invite the applicant to file the drawings within a period of three months from the date of receip t of its notification. If the applicant responds 
accordingly, the date on which the drawings have been filed shall be treated as the filing date 
of the application.  
 
(5) If the drawings are not filed, any reference to them in the application shall be deemed not to 
have been made. 
 
(6) An application for which a filing date has been recognized shall be entered into the Register of 
Patent Applications. 
 (7) If the applicant fails to act upon the invitation referred to in paragraph 3 of this Article within 
the prescribed time period, the responsible authority shall take the decision to reject the 
application.   
 
Certificate of Priority 
Article 37 
  
(1) At the request of the applicant, the responsible authority shall issue a certificate of priority, 
such priority having been obtained with the re cognition of the filing date of the application 
pursuant to Article 36 of this Law.  
 
(2) The content of the certificate of priority sh all be governed by a specific regulation.   
 
Formal Examination 
Article 38 
 (1) Once the application has been recognized a filing date, the responsible authority shall examine 
whether it meets all the requirements for publication, notably: 
 
1) Has the application filing fee been paid; 
2) Has valid authorisation for the representative or a statement on the appointment of a 
common representative been filed, where appropriate; 
3) Does the application contain designation of the inventor or a statement to the effect that 
he does not wish to be mentioned in the application; 
4) If the applicant is a foreign national, has the application been filed through a 
representative, pursuant to Article 4 of this Law;  
5) the application contains all documents prescribed by Article 22 of this Law and they satisfy 
all formal requirements; 
6) does the claim for priority, satisfy requirements  under Article 31 of this Law, if a priority 
right is claimed. 
 IP/N/1/MNE/P/1 
 
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  (2) If the examination referred to in paragraph 1 of this Article shows that the application is not in 
conformity with the provisions of that paragr aph, the responsible authority shall invite the 
applicant to correct the deficiencies within an appropriate time limit, providing reasons. Such 
time limit shall not be less than 60 or more than 90 days. 
 
(3) Upon substantiated request by the applicant, the responsible authority may extend the time 
limit referred to in paragraph 2 of this Articl e, for a period it deems appropriate, but not 
exceeding 90 days. 
 (4) If the applicant fails to remedy the deficiencies referred to in paragraph 2 in conjunction with 
paragraph 1 items 1)-5) of this Article, the responsible authority shall take a decision to reject 
the application. 
 (5) If the applicant fails to remedy the deficiencies with respect to the priority claim referred to in 
paragraph 2 in conjunction with paragraph 1 item  6), the responsible authority shall not grant 
the priority right. 
 
Publication of Patent Application 
Article 39 
 (1) A patent application that satisfies all the requirements laid down in Article 38, paragraph 1 of 
this Law shall be published in the Official Bulletin  of the responsible authority, as soon as 
possible upon the expiry of eighteen months from the filing date of the application or from the 
claimed date of priority.   
 
(2) At the request of the applicant, the patent application may be published earlier, but not before 
the expiry of three months from the filing date.  
 
(3) The content of the publication shall be regulated by a specific regulation. 
 
5.
  GRANTING OF A PATENT  
 
Article 40 
 
(1) By the act of publication of the patent applicat ion referred to in Article 39 of this Law, the 
patent shall be granted. 
 
(2) The date of publication of the patent applic ation shall be the date of patent grant. 
 (3) Responsible authority shall publish the informat ion on the patent granted in the Official 
Bulletin.  
 
(4) The publication referred to in paragraph 3 of this article shall be deemed as the publications of 
the patent application referred in Article 22 in accordance with 39.1 and publication of granted 
patent in accordance with 1 of this article.  
 
(5) Prescribed information on the granted patent sh all be entered in the Register of Patents. 
 
(6) The patent holder shall be issued a certificate and the specification for the granted patent, 
having the prescribed content. 
 
 
6.  CONTENT, ACQUISITION AND SCOPE OF RIGHTS 
 
Content of Rights  
Article 41 
 
The patent holder shall have the exclusive right to prevent third parties not having the owner's 
consent from the acts of:  
1) making, using, offering for sale, placing into circulation, exporting or importing and storing 
for these purposes the product made by means of the protected invention; IP/N/1/MNE/P/1 
 
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  2) using the patented process; 
3) offering the patented process for sale; 
4) producing, offering for sale, placing into circulation, using, exporting or importing and 
storing for such purposes a product directly obtained by the patented process; 
5) offering for sale or supplying products that constitute essential elements of an invention to 
parties unauthorized to use such invention, if the offeror or supplier knows or has demonstrable grounds to know  that such products are intended for the use of an invention 
owned by someone else. 
 
Content of Rights Conferred by Patents in the Field of Biotechnology  
Article 42 
 
(1) If the patent concerns biological material possessing specific characteristics which are the 
result of a biotechnological invention, the rights laid down in Article 51 of this Law, shall 
extend to any biological material derived from that biological material through propagation or 
multiplication, in an identical or divergent form and possessing those same characteristics.   
 
(2) If the patent concerns a product containing or consisting of genetic information, the rights laid 
down in Article 41 of this Law shall extend to all other material in which the product is incorporated, provided it contains genetic information that performs its function, except the human body at the various stages of its format ion and development, and the simple discovery 
of one of its elements, including the sequence or partial sequence of a gene in which the 
product is incorporated, provided it contains genetic information that performs its function.  
 
(3) If the patent concerns a process that enables a production of biological material possessing 
specific characteristics as a result of the biotechnological invention, the rights laid down in Article 41, item 2 of this Law shall also extend to biological material directly obtained through 
the process and to any other biological material derived from the directly obtained biological 
material through propagation or multiplication, in an identical or divergent form and possessing those same characteristics.  
 
Article 43 
 The protection referred to in Article 42 of this Law shall not extend to biological material obtained 
from the propagation or multiplication of biological material placed on the market by the owner of 
the patent or with his consent, where the propagation or multiplication necessarily results from the application for which the biological material has been marketed, provided that the material 
obtained is not subsequently used for other propagation or multiplication.  
 
Scope of Protection 
Article 44 
 
(1) The scope of protection acquired by a patent sh all be determined by the content of the claims, 
whereby the description and drawings shall be used to interpret the claims.  
 
(2) If the subject matter of a patent is a process, the rights conferred by the patent shall extend 
to the products directly obtained by such process.   
 
 
7.  LIMITATION OF RIGHTS 
 
Exceptions to Exclusive Rights 
Article 45 
 
The exclusive rights of a patent holder referred to  in Articles 41 and 42 of this Law shall not apply 
to: 
 
1) the use of an invention or the use of products made by means of the invention for personal 
and non-commercial purposes; 
2) research and development activities relating to the subject matter of a protected invention, 
including activities that are necessary for obtaining an authorisation for placing into the IP/N/1/MNE/P/1 
 
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  circulation of a product, which is a drug intended for use on humans or animals, or a 
medicinal product; 
3) the direct, individual preparation of a drug in  a pharmacy based on a single prescription, 
and to the placement of such drug into the circulation.   
 
Exhaustion of Patent Holder's Rights 
Article 46 
 
The rights conferred by a patent shall not extend to acts committed in the Montenegro with regard 
to a product protected by the patent after the said product has been put on the market in Montenegro by the patent owner or with his consent. 
 
Right of Prior User 
Article 47 
 
(1) A patent shall have no effect against a person ac ting in good faith who has, before the date of 
priority, already started exploiting a protected invention in production in the territory of 
Montenegro, or has made all necessary preparations to initiate such use .  
 
(2) The person referred to in paragraph 1 of this Article shall be entitled to continue exploiting the 
invention exclusively for production purposes, in his own plant or in the plant of another 
person for his own needs.   
 (3) The person referred to in paragraph 1 of this Ar ticle cannot assign his right to exploitation of 
the invention to another person, except together with the company or part thereof, where the 
preparation for use or the use of the invention has taken place.  
 
Limitation of Rights to Facilitate International Traffic 
Article 48 
 
A patent shall have no effect against a person who uses devices made on the basis of a protected 
invention where such devices constitute an element in the structure or equipment of a vessel, 
aircraft or land vehicle or serve exclusively for the operation of such vessel, aircraft or land vehicle belonging to a state that is a party to the Paris Convention or member of the World Trade 
Organisation, when it enters the territory of Montenegro temporarily or accidentally.  
 
Compulsory Licences  
Article 49 
 
(1) If an owner of a patent refuses to license the right of commercial use of a protected invention 
to other persons or sets unreasonable conditions for such licensing, the state administrative 
authority responsible for the field in which the invention shall be employed may, after 
considering the merits of each individual case, grant a compulsory licence upon application of the interested person if:   
 
1) patent holder himself or a person authorised by him does not use the protected invention 
or uses it insufficiently in  Montenegro; 
2) the commercial use of an invention that has b een subsequently protected in the name of 
another person is not possible, without the us e of the protected invention in whole or in 
part.    
(2) The interested person shall be required to prove that he has made efforts, before filing the 
application referred to in paragraph 1 of this Article, to obtain authorisation from the right holder to use the protected invention on reasonable commercial terms and conditions and that 
he has not received such authorisation within a reasonable period of time.  
 (3) The interested person, referred to in paragraph 1, item 1 of this Article, may only be a person 
who proves that he has the appropriate technological capacity and production facilities for the 
commercial use of the protected invention.  
 (4) In the case referred to in paragraph 1, item 2 of this Article, an interested person may only be 
the holder of the subsequent invention, provided that:  IP/N/1/MNE/P/1 
 
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1) the subsequent invention involves a technical advancement of special economic 
significance in relation to the invention protected by the first patent; and that 
2) the owner of the first patent is entitled, on reasonable terms, to a cross-licence to use the 
subsequent invention.   
 
(5) Authorisation for the use of the invention protected by the first patent shall be non-
transferable except in the case of simultaneous transfer of the subsequent patent.  
 
Article 50 
 
The holder of a compulsory licence shall be required to pay the patent holder a mutually agreed 
remuneration. In the absence of an agreement on  the amount and method of payment of such 
remuneration, the competent court shall decide, taking into account the merits of each individual 
case and the economic value of the compulsory licence.  
 
Article 51 
 
(1) The scope and duration of a compulsory licence shall be limited to the purpose for which it has 
been granted. 
 
(2) In the case of semi-conductor technology, compulsory licence shall only be granted for public 
non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. 
 
(3) A compulsory licence shall not be exclusive.   
 
(4) A compulsory licence may be assigned only with the company or a part thereof, where it is 
used.   
 (5) A compulsory licence shall predominantly be granted for the supply of the domestic market.  
 
(6) A compulsory licence may be terminated, subject to adequate protection of the legitimate 
interest of the persons so authorized, if and when circumstances that have led to its grant 
cease to exist and are unlikely to recur. Upon substantiated request, the state administrative 
authority referred to Article 62, paragraph 1 of this Law shall re-examine the further existence of such circumstances.   
 
(7) An application for the grant of a compulsory li cence cannot be filed before the expiry of a 
period of four years from the filing date of the patent application or three years from the date 
of the grant of a patent, whichever of the two time limits expires later.  
 
(8) A compulsory licence shall not be granted if the patent holder provides valid reasons for non-
use or for insufficient use of a protected invention.  
 
Compulsory Licence in the Public Interest 
Article 52 
 
(1) The compulsory licence under Article 49 of this La w may also be granted prior to the expiry of 
the time limit specified in Article 51, paragraph 7,  if the exploitation  of the protected invention 
is necessary for the fulfilment of national or other exceptional needs (the protection of public 
health and providing food, and the protection of public interests in the fields of vital 
significance for socio-economic and technological development) or if the protected invention is used in a manner considered to be contrary  to the principles of free competition.   
 
(2) In the event of national or any other exce ptional need, the provisions of Article 49, 
paragraph 2 of this Law shall not apply. Nevertheless, the right holder shall be notified of the 
compulsory licence grant proceedings as soon as possible.    
 (3) The decision on the application of an interested person for the grant of a compulsory licence in 
the public interest shall be taken by the Govern ment of Montenegro (hereinafter referred to 
as: the Government), after it reviews th e merits of each individual case.  
 IP/N/1/MNE/P/1 
 
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(4) A compulsory licence may be terminated if and when circumstances that have led to its grant 
cease to exist and are unlikely to recur. Upon substantiated request, the Government shall re-
examine the further existence of such circumstances.  
 
(5) In order to rectify an anti-competitive practice, the Government may refuse the termination of 
a compulsory licence in the public interest, if and when circumstances which have led to its 
grant are likely to recur.    
 
Article 53 
 
(1) The holder of a compulsory licence in the public interest shall be required to pay the patent 
owner remuneration referred to in Article 50.  However, in the event that such licence has been granted in order to rectify anti-competitive practice, when determining the total amount 
of remuneration, the need to remedy such practice shall be taken into account.   
 
(2) The compulsory licence in the public interest sh all be subject to the provisions of Article 51, 
paragraphs 1, 2, 3, 4, 5 and 6 and Article 52, paragraph 4 of this Law. However, the 
Government may choose not to apply the provisions of Article 51, paragraph 4, if the compulsory licence in the public interest has been granted in order to remedy an anti-competitive practice.     
 
Compulsory Licence Granted to Plant Breeders 
Article 54 
 
(1) Where a plant breeder cannot obtain or exploit a right of protection of plant variety without 
infringing a prior patent concerning a biotechnological invention, he may file an application 
with the responsible authority for a non-excl usive compulsory licence for the use of the 
invention protected by the patent insofar as the licence is necessary for the exploitation of the protected plant variety, subject to payment of an appropriate royalty. If such a licence is granted, the holder of the patent shall be entitled to a compulsory cross-licence to use the 
protected plant variety on reasonable terms.   
 (2) Where the holder of a patent concerning a biotechnological invention cannot exploit it without 
infringing a prior right of protection of plant variety, he may file an application with the 
responsible authority for a non-exclusive compulsory licence for the use of the plant variety protected by that right, subject to payment of an appropriate royalty. If such a licence is 
granted, the holder of the variety right shall be  entitled to a compulsory cross-licence to use 
the protected biotechnological invention on reasonable terms.  
 
(3) The compulsory licence referred to in paragraphs 1 and 2 of this Article can not be exclusive. 
 
(4) An applicant for the compulsory licence referred to  in paragraphs 1 and 2 of this Article must 
prove that: 
 
1) he has unsuccessfully made efforts to obtain a contractual licence; 
2) the plant variety or the biotechnological invention constitutes significant technical advance 
of considerable economic interest relative to the invention claimed in the patent or the 
protected plant variety. 
 (5) The compulsory licence referred to in paragraphs 1 and 2 of this Article may only be assigned 
with the company or the part thereof, where it is used. 
 
Limitation of Rights Concerning Biotechnological Material 
Article 55 
 (1) The sale or other form of commercialisation of plant propagating material to a farmer by the 
owner of the patent or with his consent for agricultural use implies authorisation for the farmer 
to use the product of his harvest for further propagation or multiplication by him on his own farm, under conditions prescribed by the law on  the protection of plant varieties, whereas 
products obtained thereby may not be used for commercial purposes.  
 IP/N/1/MNE/P/1 
 
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  (2)  The sale or other form of commercialisation of breeding stock or other animal reproductive 
material to a farmer by the owner of the patent or with his consent implies authorisation for the farmer to use the protected livestock for an agricultural purpose.  This includes making the animal or other animal reproductive material available for the purposes of pursuing his 
agricultural activity but not sale within th e framework or for the purpose of commercial 
reproduction activity.  
 
Article 56 
 
Administrative acts effected by the responsible authorities pursuant to the provisions of Articles 49, 52 and 54 of this Law, shall be final. An administrative dispute against such acts may 
be instituted before the competent court .   
  
8. DURATION AND TERMINATION OF A PATENT 
 
1.
  DURATION OF RIGHT 
 
Patent Term 
Article 57 
 
The term of a patent shall be 20 years from the filing date of the application. 
 
Maintenance of Rights Conferred by  a Patent Application and a Patent  
Article 58 
 
(1) Prescribed fees shall be payable for the maintenance of rights conferred by the application for 
a patent and by the patent granted .  
 (2) The fees under paragraph 1 of this Article shall be paid for the third year and each subsequent 
year. They shall be due on the anniversary of  the date of filing of the application. 
 
(3) Where an applicant or a patent holder fails to pay the fee referred to in paragraph 1 of this 
Article, the fee may be validly paid within an a dditional time period of six months, provided a 
prescribed additional fee is paid at the same time .  
 
2.
  TERMINATION OF RIGHTS  
 
Non-Payment of Fee 
Article 59  
 
Where an applicant or a patent holder fails to pa y the prescribed fee for the maintenance of rights, 
such rights shall terminate on the day following the due date referred to in Article 58.   
 
Renounce of Patent Rights  
Article 60 
 
(1) If an owner of a patent files a declaration in writing with the responsible authority renouncing 
his right to a patent, such right shall lapse on the day following the filing of the declaration. 
 (2) If any right of a third party with respect to the patent has been entered in the Register, the 
holder of the patent cannot renounce his right without prior written consent from the party in 
whose name a licence, pledge or any other right has been entered.     
Death or Dissolution of a Right Holder 
Article 61 
 
(1) A right shall cease to exist on the day of the death of a natural person or on the day of 
dissolution of a legal person who is the holder of the patent, unless it has been transferred to 
heirs or successors in rights.  
 
(2) Paragraph 1 of this Article shall apply mutatis mutandis  to patent applicants as well.  IP/N/1/MNE/P/1 
 
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3.  RESTITUTION OF RIGHTS  
 
Article 62  
 
(1) If, in spite of having taken all due care requir ed by given circumstances, the applicant or the 
holder of a patent fails to perform any procedural step within the prescribed time limit, 
resulting in the loss of rights conferred by the patent application or granted patent, the 
responsible authority shall allow the restitution of such rights if the applicant or the holder of the patent:  
 
1) files an application for the reestablishment of  rights and completes the omitted act within 
the prescribed time limit; 
2) states the reasons that have impeded the pe rformance of the omitted act in due time. 
 
(2) The application for the restitution of rights shall be filed within three months from the date on 
which grounds for the omission ceased to exist or, if the applicant learned about the omission 
subsequently, from the date on which he found out about the omission, but not later than 12 
months from the date of non-observance of the time limit.  
 (3) The responsible authority cannot refuse the application referred to in paragraph 1 of this 
Article, fully or partially, without prior notification to the applicant specifying grounds for 
refusal and inviting him to comment in writing, within a period of 2 months.  
 
(4) An application for the restitution of rights cannot be filed for non-observance of time limits for 
the performance of the following procedural acts:  
 
1) the filing of the application under paragraph 1 of this Article; 
2) the filing of a request for the extension of a time limit;   
3) the payment of fees and expenses pursuant to Article 16 of this Law; 
4) any procedural steps involving several parties in the proceedings before the responsible 
authority.  
 
(5) Any person acting in good faith, who has, in the course of production, started exploiting an 
invention which is the subject matter of a published application, or has made all necessary 
preparations to initiate such exploitation within the period between the loss of rights and the publication of the notification on the restitution of rights, shall be entitled to continue 
exploiting the invention for production purposes only in his own production plant or in the 
plant of any other person for his own needs.  
 (6) The content of the application, conditions and procedures concerning the application under 
paragraph 1 of this Article shall be regulated by a specific regulation.  
 
9.  SUPPLEMENTARY PROTECTION CERTIFICATE 
 
Article 63 
 
Any medicine for human or animal use or a plant protection product, whose placing into circulation 
is subject to a permit, may, under the conditions pr ovided for by this Law, be subject to protection 
by the Certificate on Supplementary Protection (hereinafter referred to as: the certificate).  
Subject Matter of Protection and Legal Effects  
Article 64 
 
(1) The subject matter of protection conferred by a ce rtificate shall extend only to the medicine for 
human or animal use and plant protection prod uct covered by the permit for placing such 
products into circulation as medicine for human or animal use or plant protection product 
(hereinafter referred to as: the permit), for each and any use of the product that has been 
authorised before the expiry of the certificate.  
 (2) The certificate shall confer upon the holder th e rights identical to those conferred by the 
patent.  These rights shall be subject to the same limitations.   IP/N/1/MNE/P/1 
 
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Entitlement to a Certificate  
Article 65 
 
(1) A Certificate shall be granted to the holder of the patent covering the product or to his 
successor in right.   
 
(2) The holder of two or more patents covering the same product may be granted only one 
certificate for that product.  Where there are two or more applications for a certificate filed by different persons who are holders of different patents covering the same product, the same certificate for the product may be granted to each of these persons individually. 
 
Conditions for Obtaining a Certificate  
Article 66 
 
Upon the application of the patent holder, a certificate shall be granted if the following conditions are fulfilled on the filing date of the application: 
 
1) the medicine for human or animal use or plant protection product is protected by the 
patent in force;   
2) a valid permit has been issued in Montenegro, whereas this is the first effective permit of 
this kind  for the product; 
3) the medicine for human or animal use or plant protection product has not already been the 
subject of a certificate; 
4) the patent application covering the medicine for product for human or animal use or plant 
protection product  has been filed on or be fore the date determined in the Accession 
Treaty, which shall be concluded between the Government of Montenegro and the 
European Union; 
5) the first authorisation to place the medicine for human or animal use or plant protection 
product into circulation is granted  on or before the date determined in the Accession Treaty, which shall be concluded between th e Government of Montenegro and European 
Union. 
 
Time Limit for the Filing an Application for a Certificate  
Article 67 
 (1) The application for a certificate shall be filed with the responsible authority within 6 months 
from the date on which a permit has been granted.  Where the permit has been granted before 
the grant of the patent, the application for a certificate shall be filed within six months from the date on which the information on granted patent has been published within the meaning 
Article 40, paragraph 3 of this Law. 
 
(2) Information on the application for a certificate shall be entered in the Register referred to in 
Article 17 of this Law and published in the Official Bulletin within six months from the filing 
date of the application.  
 (3) The content of the application and of the published information thereof shall be regulated by a 
specific regulation.   
 
Term of Protection  
Article 68 
 
(1) The certificate shall take effect immediately at the end of the lawful term of the basic patent 
for a period equal to the period which elapsed between the date on which the application for a 
basic patent was lodged filed and the date of the fi rst permit reduced by a period of five years.  
 (2) Notwithstanding paragraph 1 of this Article, the duration of the certificate may not exceed five 
years from the date on which it takes effect. 
 IP/N/1/MNE/P/1 
 
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  Termination of the Certificate  
Article 69 
 The certificate shall terminate: 
 
1) upon expiry of its term; 
2) by renouncing by the certificate holder; 
3) by failure to pay the annual fee for its maintenance; 
4) upon the termination of the permit, for whatever reason.   
 
Maintenance of the Certificate 
Article 70 
 The certificate shall be subject to payment of an appropriate annual fee, which shall be due at the 
beginning of each year of its term. 
 
Publication  
Article 71 
 (1) The responsible authority shall publish in its Official Bulletin information on the grant of a 
certificate, on the refusal of an application for a certificate, and on the duration or termination 
of a certificate.   
 
(2) The particulars referred to in paragraph 1 of this Article shall be regulated by a specific 
regulation.  
 
Article 72 
 
The procedural provisions concerning the grant and termination of a patent shall apply mutatis 
mutandis  to the grant and termination of the certificat e, unless otherwise provided for by this Law. 
 
10.  NULLIFICATION 
 
1.
  NULLIFICATION OF DECISION TO GRANT A PATENT  
 
Grounds for Nullification 
Article 73 
 
(1) At any time during the term of a patent, upon request of an interested person, the competent 
court shall annul a patent, if it establishes that: 
 
1) the subject matter of protection is not an invention within the meaning of Articles 5 and 6 
of this Law; 
2) the invention falls under the category of invent ions excluded from protection as defined in 
Article 7 of this Law; 
3) the invention was not new within the meaning of Articles 8 and 9 on the date of the filing 
of the patent application or on the date of priority, or did not involve an inventive step 
pursuant Article 10 or was not industrially applicable pursuant Article 11 of this Law; 
4) the invention is not described in a manner sufficiently clear and complete as defined in 
Article 24 of this Law; 
5) the subject-matter of the patent as publis hed, extends beyond the content of the 
application as filed, or if patent was granted on a divisional application, the subject matter 
of which extends beyond the basic application as filed, in which case only the specific part of the decision granting protection that extends beyond the permissible scope shall be 
annulled. 
 
(2) If the grounds for nullification affect the patent only in part, the patent shall be limited by a 
corresponding amendment of the claims and annulled in part. 
 
(3) In proceedings before the competent court relating to the validity of the patent, the holder of 
the patent shall have the right to limit the patent by amending the claims. The patent thus 
limited shall form the basis for the proceedings IP/N/1/MNE/P/1 
 
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Request for Nullification of a Patent 
Article 74 
 
Any interested person may instigate a litigation before the competent court against the patent 
holder and request the nullification of a patent.  
2.
  NULLIFICATION OF THE SUPPLEMENTARY PROTECTION CERTIFICATE  
 
Article 75  
 
(1) A supplementary protection certificate shall be nullified: 
 
1) if it was  granted contrary to the conditions set out by this Law; 
2) if the patent covering the subject matter protected by the certificate terminates within the 
meaning  of Articles 59, 60 and 61 of this Law; 
3) if the patent covering the subject matter prot ected by the certificate has been annulled, in 
whole or partially, to the extent that the product for which the certificate was granted is no 
longer protected by the patent claims or, af ter the patent has expired, if justifiable 
grounds for nullification exist.   
 
(2) Provisions of this Law applicable to nullification a patent shall apply mutatis mutandis  to the 
nullification of a supplementary protection certificate. 
 
11.  PROTECTION OF RIGHTS UNDER THE CIVIL LAW 
 
1. INFRINGEMENT PROCEEDINGS  
 
Article 76  
 
The patent holder, or a holder of an exclusive licence for such a patent shall be entitled to instigate 
a litigation against any person infringing his righ t by any unauthorized act referred to in Articles 41 
and 42 of this Law.  
Claims  
Article 77 
    
(1) An action instigating a litigation may include the following claims: 
 1) establishment of  the fact that a patent infringement exists; 
2) prohibition of  acts constituting  patent infringement; 
3) compensation for damages caused by infringement; 
4) publication of the court decision at the expense of the defendant;  
5) seizure and/or destruction, without compensation of any sort, of products made or 
obtained by means of  patent infringement; 
6) seizure and/or destruction, without compensation of any sort, of material or articles 
(equipment, tools) predominantly used in the creation of infringing products.  
 
(2) If an infringement of rights was committed intentionally or out of gross negligence, the plaintiff 
may claim an amount up to triple the amount of the direct damages and lost profits. 
 
(3) In considering the claims referred to in paragraph 1, items 5 and 6 of this Article, the court 
shall take into account the need to maintain proportionality between the gravity of the infringement and the measures ordered, as we ll as the interests of any third parties. 
 
(4) Where a plaintiff has presented reasonably available evidence sufficient to support its claims and 
has specified evidence relevant to substantiation of its claims which lies in the control of the 
defendant, the court may order that this evidence be produced by defendant, subject in 
appropriate cases to conditions which ensure the protection of confidential information.  
 (5) Appropriate provisions of the law that regulates contracts and torts shall apply to those issues 
concerning damages for infringement of rights  that are not provided for by this Law. IP/N/1/MNE/P/1 
 
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Provisional Measures 
Article 78 
 
(1) Upon the request of the plaintiff referred to in Article 76 of this Law, who makes it credible 
that his right is or will be infringed, the court may, pending a final decision, order the provisional measure of:   
 
1) seizure and/or withdrawal from the market of products made or obtained by patent 
infringement; 
2) seizure and/or withdrawal from the mark et of implements (equipment, tools) 
predominantly used in the production of infringing products; 
3) prohibition of the further performance of infringing acts. 
 
(2) A request for the grant of a provisional measure may be filed even before the instigation of the 
litigation, provided the litigation is subsequently instigated within thirty days from the execution of the provisional measure.  
 
(3) Where irreparable harm is likely to occur, or where it is imminent that that the evidence will be 
destroyed, the court may order a provisional measure without giving prior notice to or hearing the defendant, however the defendant must be notified of the execution of the provisional 
measure without delay, but not later than five days from the execution of the provisional 
measure.  
 
(4) The court may instruct the applicant to furnish additional evidence of the patent infringement 
committed or of the demonstrable risk of patent infringement, and order him to provide a security in order to prevent any abuse.  
 
(5) An appeal against the court decision on the provisional measure referred to in paragraph 1 of 
this Article shall not stay the execution of the decision.  
 
(6) Appropriate provisions of the Law on Enforcem ent Procedures shall apply to those issues 
concerning the provisional measures that are not provided for by this Law.  
 
Securing the Evidence 
Article 79 
 
(1) Upon request of the plaintiff referred to in Article 76 of this Law who makes it credible that his 
right has been infringed on or will be infringed on, or that such infringement is imminent or 
that irreparable harm is likely to occur, as well as that there is a reasonable  risk that the evidence of that will be destroyed or that it will not be possible to obtain it later on, the court 
may order a measure to secure evidence without giving prior notice to or hearing the person 
from which evidence is to be collected. 
 
(2) For the purposes of Paragraph 1 of this Articl e, the securing of evidence shall mean the 
inspection of premises, books, documents, databases, etc., as well as the seizure of documents and infringing goods, and taking de positions of witnesses and expert witnesses. 
 
(3) The court order for measures to secure evidence shall be served to the person from which 
evidence is to be collected, on the occasion of the collection of evidence, and to an absent person, as soon as that becomes possible. 
 
(4) The order to secure of evidence may be requeste d even before the instigation of the litigation, 
provided the litigation is subsequently instigated within thirty days from the execution of the 
provisional measure.    
 
Statute of Limitations 
Article 80 
 An action instigating patent infringement litigation may be filed within a period of three years from the date of obtaining the information of the infrin gement and of the infringer, but not later than 
five years from the date on which the infringement has taken place.  IP/N/1/MNE/P/1 
 
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Burden of Proof  
Article 81 
 
(1) If the subject matter of a patent infringement is a process for obtaining a new product, any 
identical product shall be deemed to have been  obtained by means of the protected process, 
until proven otherwise. 
 
(2) The burden of proof shall rest with the defe ndant who manufactures such product, whereby 
the legitimate interests of such defendant in protecting his manufacturing and commercial secrets shall be taken into account.  
 
Obligation to Provide Information 
Article 82 
 
(1) A court may order a person responsible for an  infringement of the patent to provide 
information about any third parties who have participated in the infringement of the patent 
and about their distribution channels. 
 
(2) Person referred to in paragraph 1 of this Article who does not provide information shall be held 
liable for any damages arising therefrom.  
 
2.
  AN ACTION TO ESTABLISH THE RIGHT TO PROTECTION  
 
Article 83  
 (1) The inventor, his successor in rights or employer within the meaning of Article 93 of this Law, 
shall be entitled to file and action and instigate a litigation requesting the court to establish his 
right to the protection of a given invention in place of or, as joint holder, together with the person who has already filed an application for the invention.  
 
(2) If the inventor has already been granted a patent, his successor in rights or employer referred 
to in paragraph 1 of this Article may request the court to establish that he holds the right to the patent in place of or, as joint holder, together with the person registered as the holder of 
the patent.   
  
(3) The final court decision upholding the claims  referred to in paragraphs 1 and 2 of this Article 
shall be communicated to the responsible authority, which shall enter changes concerning the applicant for or the holder  of the patent in the appropriate register. 
 
3.
  AN ACTON TO PROTECT RIGHTS OF EMPLOYER OR EMPLOYEE  
 
Article 84  
 
(1) An employer or an employee,  who is entitled  under the provisions of this Law, to the 
protection or commercial use of an invention made in the course of employment may file and 
action and request the court to establish and prot ect his rights under Articles 92 to  103 of this 
Law. 
 (2) A action referred to in paragraph 1 of this Article, for the establishment of rights of an 
employee or an employer pursuant to Articles 93 and 95 of this Law, may be filed within two 
years from the date of the publication of the pa tent application, however not after the expiry 
of two years from the date of termination of employment during which the invention has been 
made.   
 (3) The final court decision upholding the claims refe rred to in paragraphs 1 and 2 of this Article 
shall be communicated to the responsible authority, which shall enter the changes of 
ownership in the appropriate register . 
 IP/N/1/MNE/P/1 
 
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  4.   AN ACTON TO BE RECOGNIZED AS AN INVENTOR  
 
Article 85  
 
(1) An inventor shall have the right to file an action and request the court to establish his 
inventorship and order the entry of his name in the patent application and in other relevant documents and registers kept by the responsible authority in accordance with the provisions of 
this Law, if any other person has been designated as the inventor in the application for a 
patent or in any other document provided for by this Law.  
 (2) There shall be no time limit for filing the action under paragraph 1 of this Article. 
 
(3) In the event of the death of the inventor, his heirs shall be entitled to file an action referred to 
in paragraph 1 of this Article. 
 
 
12. TRANSFER OF RIGHTS 
 
Licence Agreement and Assignment of Rights  
Article 86  
 
(1) The right to file an application, rights conferred by an application or a patent may be 
transferred, in whole or in part, by means of an agreement  on transfer of rights or by 
inheritance. 
 
(2) Certain or all rights conferred by  an application or a patent may be transferred by means of a 
licence agreement, with or without limitations.   
 
(3) The agreements referred to in paragraphs 1 and 2 of  this Article shall have effect only if they 
are made in writing. 
 
(4) The agreements under paragraphs 1 and 2 of this  Article shall be entered in the appropriate 
register, at the request of a party to the agreement.   
 
(5) Agreements referred to in paragraphs 1 and 2 of this Article, which have not been entered in 
the appropriate register, shall not have legal effect with respect to third parties.  
 
(6) Appropriate provisions of the law that regulates contracts and torts shall apply to those issues 
concerning licence agreements that that are not provided for by this Law.   
 
13. SECRET INVENTIONS 
 
Secret Patent Application  
Article 87 
 
(1) An application filed by a national of Montenegro  shall be considered to be secret if it concerns 
an invention of significance for the defence and security of Montenegro.  
 
(2) Applications referred to in paragraph 1 of this Article shall be filed with the authority 
responsible in nati onal defence.   
 
Procedure in Respect of the Application  
Article 88 
 
If the state administrative authority responsible for defence establishes in its examination of an 
application filed that it has ceased to have elements of secrecy, it shall forward the application to the responsible authority.  Such application shall re tain the filing date accorded to it by the state 
administrative authority responsible for national defence.  
 IP/N/1/MNE/P/1 
 
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  Procedure Following the Grant of a Patent  
Article 89 
 If the state administrative authority responsible for defence establishes, subsequent to the grant 
of a patent for a secret invention, that the invention has ceased to be secret, it shall forward the 
file concerning the invention to the responsible authority, which shall enter the patent in the appropriate Register, publish the information on the granted right and issue an appropriate 
certificate to the right holder, in accordance with the provisions of this Law.  
 
Right to Exploitation  
Article 90 
 
(1) The state administrative authority responsible for defence or state administrative authority 
responsible for internal affairs shall have the exclusive right to use and dispose of a secret 
invention. 
 (2) The inventor shall be entitled to a single lump sum compensation for the protected secret 
invention, regardless of whether or not the invention is used.  
 
Publication of a Secret Invention and Its Protection Abroad  
Article 91 
 
(1) A secret invention shall not be published.  
 
(2) A national of Montenegro may claim protection for a secret invention abroad only subject to 
approval of the state administrative authority responsible for national defence.  
 
 
14.  INVENTIONS MADE IN THE COURSE OF EMPLOYMENT 
 
Article 92 
 
An invention shall be deemed to have been ma de in the course of employment if it is: 
 
1) an invention made by an employee in the course of his regular duties or specially assigned 
tasks concerning scientific and technical research and development, or an invention made under a research contract concluded with the employer;  
2) an invention which does not fall under the provisions of item 1 of this Article, but is made 
by an employee in connection with the activities of his employer or with the use of material 
and technical facilities, information and other working conditions provided by the employer; 
3) an invention made by an employee within a period of one year from the termination of his 
employment, which would have constituted an invention under items 1 and 2 of this Article had it been made in the course of employment. 
 
Right to Protection 
Article 93 
 
(1) The right to protection of an invention pursuant  to Article 92, paragraph 1 shall belong to the 
employer, unless otherwise provided by cont ract between the inventor and employer. 
 
(2) If an invention made in the course of employment has been protected in the name of the 
employer, the inventor shall have moral rights in the invention and shall be entitled to remuneration subject to the results of the commercial use of the invention.   
 
(3) The right to remuneration referred to in paragraph 2 of this Article shall belong to the inventor 
even if the employer assigns his rights or gran ts a licence for the use of the invention to a 
third party. 
 IP/N/1/MNE/P/1 
 
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  Article 94 
 (1) The right to protection of an invention under Article 92, paragraph 2, shall belong to the 
employee, whereas the employer shall be entitled  to commercial use of the invention and shall 
be obliged to pay remuneration to the employee in accordance with a contract concluded with 
respect to specific invention. 
 
(2) Notwithstanding paragraph 1 of this Article, if the invention includes any trade secret of the 
employer, such employer shall be entitled to pr ohibit the disclosure of the invention, but shall 
be required to pay remuneration to the employ ee. The employee shall not be entitled to apply 
for the protection of such invention.  
 
Remuneration to an Employee  
Article 95 
 
(1) Criteria for determining the amount of remuneration and the method and time of payment 
thereof shall be established by a general act or  a labour agreement between the employer and 
the employee or by a special agreement conclu ded between the employer and employee with 
respect to specific invention. 
 (2) In case of a dispute regarding the amount, meth od and time of payment of the remuneration, 
the court shall decide, upon request of the inventor or employer, taking into account the 
extent to which the invention contributed to the increase of profits or savings within the company.  
 
(3) The employee may not renounce his right to remuneration in advance. 
 
Procedure  
Article 96 
 (1) An inventor who comes up with an invention in the course of employment shall be required to 
submit a written report to the employer imme diately upon the creation of the invention, 
informing him thereof. 
 
(2) The content of the report referred to in paragrap h 1 of this Law shall be regulated by specific 
regulation. 
 
(3) If the report does not contain the prescribed elements, the employer shall set an appropriate 
time limit for the inventor to remedy deficiencies therein.  
 
Article 97 
 
(1) Within a period of two months from the receipt of the valid report referred to in Article 96 of 
this Law, the employer shall be required to communicate to the employee in writing whether 
he considers the invention to be an invention within the meaning of Article 92, items 1 and 2 
of this Law. 
 
(2) If the employee fails to deliver the report within  the meaning of Article 96 of this Law to the 
employer, the time limit under paragraph 1 of this Article shall run from the date on which the employer has obtained information of the invention.   
 
Article 98 
 (1) When dealing with an invention referred to in Arti cle 92, item 1 of this Law, the employer shall 
be required to inform the employee in the comm unication referred to in Article 97 of this Law 
whether he shall file an application.   
 
(2) If the employer states, pursuant to paragraph 1 of this Article, that he shall file an application, 
he shall be required to inform the inventor of the content of the application prior to its filing, of all the actions taken by the responsible authorit y in the proceedings upon the application and 
of the content of all documents filed with the re sponsible authority prior to their filing.  The IP/N/1/MNE/P/1 
 
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  inventor shall be required to provide the employ er with all information needed in the procedure 
for the protection of the invention.  
 (3) If the employer does not wish to file an application for a patent and finds that the invention 
contains no trade secrets within the meaning of Article 94 of this Law, he shall communicate 
this in writing, within the time limit referred to Article 97 of this Law, to the inventor who shall 
be entitled to protect such invention in his own name.   
 
(4) If the employer decides to withdraw a filed a pplication, he shall communicate this to the 
inventor in writing and shall assign to him rights conferred by the application.   
 
(5) In the event of commercial use of the inventio n under paragraphs 3 and 4 of this Article, 
articles 94 and 101 of this Law shall apply mutatis mutandis .  
 
Article 99 
 In the event of failure to observe the time limit re ferred to in Article 97 of this Law, the inventor 
shall be entitled to protect the invention in his own name.  
 
Article 100 
 
(1) An employee who creates an invention referred to Article 92, item 2 of this Law cannot file an 
application with the responsible authority before he receives the communication referred to in Article 97 of this Law from the employer or be fore the expiry of the time limit for such 
communication.  
 (2) If the employee referred to in paragraph 1 of th is Article decides to withdraw an application 
filed, he shall communicate this to the employer in writing and shall assign to him rights 
conferred by the application.   
 
Article 101 
 
(1) With regard to the use of an invention protected in the name of the inventor, the employer 
shall be required to state, within a period of six months from the receipt of the valid report on 
the invention under Article 97 of this Law, whether he is interested in obtaining an exclusive 
licence from the inventor.    
 
(2) Until the expiry of the time limit referred to in paragraph 1 of this Article, the inventor shall not 
be entitled to assign the right to the invention to any third party or to grant a licence for the use of the invention.  
 
Article 102 
 The use of an invention made in the course of employment cannot start before the issue of 
remuneration under Article 95 of this Law is settled or before the court takes a final decision. 
 
Confidentiality Requirement 
Article 103 
 (1) The employer and inventor shall maintain the confidentiality of an invention made within the 
course of employment until the publication of the patent application or until the invention 
becomes available for public in some other manner.  
 (2) If the employer displays justifiable interest for the invention not being published, the obligation 
of the employee to keep it confidential shall co ntinue upon the termination of his employment 
with that employer. 
 
 
 IP/N/1/MNE/P/1 
 
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  15.  THE EUROPEAN PATENT APPLIC ATION AND THE EUROPEAN PATENT 
 
Extension of the Effect of the European Patent 
Article 104 
 
(1) European patent application and a European patent extended to Montenegro shall, under the 
conditions established by this Law, have the same effect and be subject to the same 
conditions as a national application and a national patent under this Law. 
 
(2) For the purposes of this Law: 
 
1) "European patent application"  shall mean an application for a European patent filed under 
the European Patent Convention, (hereinafter referred to as the EPC), as well as an international application filed under the Patent Cooperation Treaty (hereinafter referred to 
as the PCT), for which the European Patent Office (hereinafter referred to as the EPO) acts 
as a designated or elected office and in which  Montenegro is designated;  
 
2) "Extended European patent" shall mean a patent granted by the EPO upon European 
patent application for which extension to  Montenegro has been requested; 
 
3) "National patent application" shall mean a patent application filed under this Law with the 
responsible authority;  
 
4) "National patent" shall mean a patent granted upon a national patent application.  
 
Request for Extension 
Article 105 
 
(1) European patent application and European pate nt granted upon such application shall be 
extended to Montenegro at the request of the applicant. The request for extension shall be 
deemed to be filed with any European patent application filed on or after the date on which 
the Agreement between the Government of Montenegro and the European Patent 
Organisation on Extension of European Patents (hereinafter: "Extension Agreement") enters into force.  
 
(2) Every request for extension shall be published in the Official Bulletin by the responsible 
authority, as soon as possible after receiving notification from the EPO on the payment of the 
prescribed extension fee, but not before the expi ry of 18 months from the filing date or, if 
priority has been claimed, from the earliest priority date.  
 (3) A request for extension may be withdrawn at any time. The request shall be deemed to be 
withdrawn if the prescribed extension fee has no t been paid in due time or if the European 
patent application has been ultimately refused,  withdrawn or deemed to be withdrawn. The 
responsible authority shall publish a notice concerning these changes, as soon as possible, if 
the request for extension has already been published in accordance with paragraph 2 of this 
Article. 
 
(4) The content of the notice under paragraphs 2 and 3 of this Article shall be regulated by a 
specific regulation. 
 
Extension Fee  
Article 106 
 (1) The extension fee under Article 105 of this Law shall be paid to the EPO within six months of 
the date on which the European Patent Bulletin mentions the publication of the European 
search report.  
 
(2) The extension fee may also be validly paid within an additional period of two months of expiry 
of the period referred to in paragraph 1, provided that a 50% surcharge is paid within this additional period.  
 IP/N/1/MNE/P/1 
 
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  (3) EPO Rules relating to fees shall apply mutatis mutandis  to the payment of extension fees. 
Validly paid extension fees cannot be refunded.  
 
Effects of European Patent Applications 
Article 107 
 (1) European patent application, which has been recognized a filing date, shall be equivalent to a 
regular national patent application, with priority claimed for a European patent application, if 
such claim has been made, whatever the outcome of proceedings relating to the application may be. 
 
(2) A published European patent application shall confer upon the applicant the same provisional 
protection under this Law as the one conferred by a national patent application, from the date on which a translation of the claims of the published European patent application into the 
language officially used in Montenegro is communicated by the applicant to the person using 
the invention in Montenegro.  
 
(3) European patent application shall be deemed not to have had the effect referred to in 
paragraph 2 of this Article ab initio , if the request for extension has been withdrawn or is 
deemed to have been withdrawn.  
 
Effects of European Patents  
Article 108 
 
(1) Subject to paragraphs 2 to 6 of this Article, an  extended European patent shall, from the date 
of publication of the mention of the grant of the European patent by the EPO, confer the rights 
identical to those conferred by a national patent under this Law.  
 
(2) Within 3 months from the date on which the mention of the grant of the European patent has 
been published, the holder of the patent sh all furnish the responsible authority with a 
translation of the claims of the European patent into Montenegrin language and shall pay the 
prescribed publication fee.  
 (3) Where, as a result of an opposition or reques t for limitation filed with the EPO, a European 
patent is maintained with amended claims, the holder of the patent shall furnish the 
responsible authority with a translation of the amended claims into Montenegrin language in Montenegro and shall pay the prescribed publication fee, within three months from the date 
on which notice on the decision to maintain the amended European patent or to limit it has 
been published.  
 (4) Where the text of claims contains reference si gns used in the drawings, such drawings shall 
be attached to the translation referred to in paragraph 2 and 3.   
 (5) The responsible authority shall publish any translation filed in a timely manner under 
paragraphs 2 and 3 of this Article.  
 (6) If the translation specified in paragraphs 2 and 3 of this Article is not filed in a timely manner 
or if the prescribed fee has not been paid in due time, the extended European patent shall be 
deemed void ab initio .  
 (7) An extended European patent and the European patent application on which it is based shall 
be deemed not to have had ab initio  effects referred to in paragraph 1 of this Article and in 
Article 107, paragraph 2 of this Law, to the extent that the patent has been revoked in opposition or in central revocation proceedings or limited in limitation proceedings before the 
EPO.  
 (8) A decision to enter the extended European patent in the Register of Patents shall be taken by 
the responsible authority.  
 IP/N/1/MNE/P/1 
 
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  Authentic Text of European Patent Applications or European Patents 
Article 109 
 (1) The text of the European patent application or the European patent in the language of the 
proceedings before the EPO shall be the authentic text in any proceedings conducted in 
Montenegro.  
 
(2) However, a translation furnished in accordance with Article 107, paragraph 2 or Article 108, 
paragraph 2 and 3 of this Law, shall be rega rded as authentic, except in revocation 
proceedings, where the application or the patent  in the language of the translation confers 
narrower protection than that conferred by it in the language of the proceedings.  
 
(3) The applicant for or owner of an extended Euro pean patent may file at any time a corrected 
translation. The corrected translation of the claims of a published European patent application 
shall have no legal effect until it has been communicated to the person using the invention in 
Montenegro.  The corrected translation of the specification of an extended European patent shall not have any legal effects until mention of it has been published by the responsible 
authority as soon as possible after payment of  the prescribed fee for the publication.  
 (4) Any person who, in good faith, uses or has made effective and serious preparations for the 
use of an invention, where such use does not constitute an infringement of the rights deriving 
from the application or the patent in the original translation, may, after the corrected 
translation takes effect, continue such use in the course of his business or for the needs thereof, without payment of any remuneration.  
 
Rights of Prior Date 
Article 110 
 
(1) With respect to national patent application and a national patent, a European patent 
application, for which the extension fee has been paid, and an extended European patent shall have the same effect on the state of art, as the national patent application and the national 
patent.    
 (2) A national patent application and a national patent shall have, with respect to an extended 
European patent, the same effect on the state of art as they have with respect to a national 
patent.    
Simultaneous Protection 
Article 111 
 Where an extended European patent and a national patent have the same filing date or, where 
priority has been claimed, have the same priority date, and have been granted to the same person 
or his successor in rights, the national patent shall have no effect to the extent that it covers the same invention as the extended European patent, as from the date on which the time limit for 
filing an opposition to the European patent has ex pired without an opposition having been filed, or 
as from the date on which the opposition procedure has resulted in a final decision to maintain the European patent.   
 
Renewal Fees for Extended European Patents 
Article 112 
 
(1) Renewal fees for an extended European patent shall be paid to the responsible authority for 
the years following the year in which the mention of the grant of the European patent has been published.  
(2) Article 141, paragraph 2, EPC shall apply mutatis mutandis . 
 
Application of the EPC  
Article 113 
 The provisions of the EPC and its Implementing Regulations shall not apply unless otherwise provided under the provisions of this Law.  
 IP/N/1/MNE/P/1 
 
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16.   INTERNATIONAL PATENT APPLICATIONS 
UNDER THE PATENT COOPERATION TREATY  
 
Application of the Patent Cooperation Treaty 
 
Article 114 
 
(1) An "international application" shall mean a patent application filed under the Patent 
Cooperation Treaty (hereinafter referred to as "the PCT").  Any reference to the PCT in this Law shall also be construed as a reference to the Regulations under the PCT.   
 
(2) The PCT shall be applied in accordance with the provisions of this Law.  
 
The Responsible Authority as the Receiving Office  
Article 115 
 
International applications may be filed with the responsible authority acting as receiving office 
under the PCT. In these proceedings, the provisions  of the PCT shall be applied, supplemented by 
the provisions of this Law and the regulations under this Law. In case of conflict, the provisions of the PCT shall prevail. 
 
The European Patent Office as 
Designated or Elected Office 
Article 116 
 Any international application in which Montenegro has, pursuant to the provisions of the PCT, been 
designated or elected for the granting of a nation al patent, shall be deemed to be an application 
for extension of the European patent to Montenegro, within the meaning of this law, and the European Patent Office shall act as design ated or elected Office under the PCT.  
 
The European Patent Office as In ternational Searching Authority and 
International Preliminar y Examination Authority 
Article 117 
  
The European Patent Office shall act as the comp etent authority for the searching and international 
preliminary examination of international applications filed with the responsible authority acting as 
receiving office under the PCT.  
  
17.  CONDITIONS FOR THE ENTRY INTO THE REGISTER OF REPRESENTATIVES 
 
Article 118 
 
(1) Natural persons who are nationals and residents of  Montenegro, who have command of one 
language of international communication and who represent clients as their profession, may be entered into the Register of Representa tives if they meet one of the following 
requirements: 
 1) they are law faculty graduates having passed a special expert examination with the 
responsible authority; 
2) they are graduates of any technical faculty, having passed a special expert examination 
with the responsible authority; 
3) they are graduates of any technical faculty or law faculty, having at least five years of 
experience of working in the field of intellectual property with the responsible authority. 
 (2) Legal persons having corporate headquarters in Montenegro and employing at least one law 
faculty graduate and one graduate of any technical faculty, meeting conditions referred to in 
paragraph 1 of this Article, may also be en tered into the Register of Representatives. 
 
 IP/N/1/MNE/P/1 
 
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  18. PENAL PROVISIONS 
 
Article 119 
 
(1) Any legal entity that engages in representation in realization of rights under this Law, and 
that is not registered in the Register of Repres entatives maintained by the responsible authority 
shall be fined € 1,300 – € 15,000 (Article 4). 
 
(2) Any responsible person in the legal entity or a natural person shall be fined € 60 – € 650 for 
misdemeanour referred to in paragraph 1 of this Article.  
(3) Any entrepreneur shall be fined € 1,300 – € 6,000 for the misdemeanour referred to in 
paragraph 1 of this Article.  
 
19.  FINAL AND TRANSITIONAL PROVISIONS 
 
Article 120  
 
(1) Registered patents and petty patents granted under the Law on Patents ("Official Gazette of 
Serbia and Montenegro" No.32/04 an 35/04) that are valid on the day this Law enters into 
force shall remain valid and shall be subject to the provisions of this Law. 
 (2) The provisions of this Law shall also apply to those applications for patents and petty patents 
that have been filed and pending prior to the date on which this Law enters into force.  
 
(3) The provisions of Part 15 of this Law shall apply to European patent applications which have 
been filed as of entry into force of the Extension Agreement and for which extension to 
Montenegro has been requested, and to European patents granted by the EPO upon such applications. The provisions of Part 15 of this Law shall apply mutatis mutandis  to European 
patent applications and European patents which are recognised under the Regulation on 
Providing the Application of Intellectual Property  Rights (Official Gazette of the Republic of 
Montenegro No. 61/07).  
(4) The applicability of the said Regulation on the recognised European patent applications filed 
before the entry into force of the Extension Agreement and European patents granted upon 
such applications shall remain unaffected. 
 
Article 121 
 Provisions of this Law regulating Supplementary Pr otection Certificate shall be enforced from the 
date Montenegro becomes member of the European Union.   
 
Article 122 
 
On the day this Law comes into effect, the provisions of the Law on Patents ("Official Gazette of Serbia and Montenegro" No. 32/04 and 35/04) shall cease to be effective.  
 
(1) Implementing regulations for this Law shall be adopted within three months as of the day it 
enters into force 
 
(2) Until the regulations referred to paragraph 1 of this Article are issued, regulations issued 
under the Law on Patents ("Official Gazette of Serbia and Montenegro" No. 32/04) shall apply, if they do not contravene this Law.  
 
Article 123 
 
On the day this Law comes into effect, the provisions of the Law on Patents ("Official Gazette of 
Serbia and Montenegro" No. 32/04) shall cease to be effective.   IP/N/1/MNE/P/1 
 
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  Article 124 
 This Law shall enter into force on the eighth day from the day of publication in the "Official Gazette of Montenegro". 
 
 
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