Pierluigi Carangelo, Guido Jacobacci
The Republic of San Marino is an independent parliamentary republic and a member of the most important international organisations (eg, the United Nations, the World Intellectual Property Organisation (WIPO)). San Marino is a party to WIPO’s administered treaties, including the Patent Cooperation Treaty.
On 21st April 2009 the San Marino government deposited its instrument of accession to the European Patent Convention. The new European Patent Office fee structure (in force from 1st April 2009) provides for the automatic designation of all European Patent Convention contracting states upon filing the application and paying a flat designation fee. Thus, European patent applications filed on or after 1st July 2009 will automatically designate San Marino, unless the applicant expressly withdraws that designation. Retroactive designations in connection with applications filed before that date will not be possible. Moreover, nationals and residents of San Marino will be entitled to file applications under the Patent Cooperation Treaty with the European Patent Office as receiving office from the date of accession.
According to the 1939 agreement on reciprocity between Italy and San Marino, as acknowledged in some provisions of the San Marino IP Code (Law 79, 25th May 2005), all registrations of IP rights (ie, patents, designs and trademarks) made in Italy are valid in San Marino, and vice versa. Therefore, non-San Marino companies are unlikely to seek patent, design or trademark protection in San Marino if protection has been or is being sought in Italy.
Law 102/2005 provides tax reductions and tax benefits for San Marino companies receiving royalties from the exploitation of a trademark, design or patent registered in San Marino. In such cases 95% of the profit is exempt from tax provided that the company does not distribute dividends; if it does, tax is paid on only 30% of the profits at a rate of 5.85%. Thus, it is clear that the final tax on royalties applicable in such cases is much lower than the tax due in Italy and other significant European countries (eg, France, Germany and Spain).
Therefore, although the registration of IP rights in San Marino involves no additional benefits in terms of protection provided that protection has been or is being sought in Italy, a San Marino company may receive tax and fiscal advantages in regard to royalties received from the exploitation of IP rights registered in its name.
