Montenegro joins the EPC

Montenegro will become the 39th member state of the EPO after having ratified the EPC and deposited its instrument of accession this July. The accession took effect on 1 October 2022 and has been described by the EPO as a “landmark occasion”.    

 

 

The background

Montenegro first applied to become an extension state in 2007 and signed the relevant agreement in 2009. This agreement came into effect on 1 March 2010, making Montenegro an extension state and allowing them observer status at the EPO's Administrative Council.

Almost a decade later, in July 2018, Montenegro formally requested to join the EPC as a full member. The Administrative Council then officially invited Montenegro to join a few months later and discussions began over the legislative changes required for full membership. The accession was finally approved by the parliament of Montenegro on 29 December 2021.

This leaves Bosnia and Herzegovina as the only remaining extension state of the EPC (although there are four other non-member validating states as well).  

The practical impact

The main consequence is that, for those seeking protection in Montenegro via a European patent application, there will be no need to select Montenegro as an extension state and no additional extension fee will need to be paid. Up until 30 September 2022, applicants had to pay an additional €102 to designate Montenegro on top of the €630 EPO designation fee. Going forward, Montenegro will be automatically designated by payment of the EPO’s single designation fee.

Looking ahead

Twenty-one patents were filed in Montenegro in 2020 according to WIPO data, and six European patents have originated from there since 2017. As such, Montenegro’s joining is unlikely to have a significant impact on the EPO as a whole. Although, following their accession, we may now see the number of patents in force in Montenegro increasing

Montenegro already encouraged filing patent applications at the EPO, instead of their national office. It is now possible that, as a full member, they will opt to go the way of countries such as France and remove a direct national phase option for PCT applications entirely – instead relying solely on the EPO.

Montenegro is not an EU state and so cannot join the UP/UPC system at present. However, Montenegro is currently an EU candidate state and it is considered possible that they could become an EU member as soon as 2025, so this could change in the near future.