Patents

Revision No. 60  -  Last Updated : 09-10-2002

 

Inventions have been protected in Malta since 1899.  Though the laws that enabled such protection were amended several times over the years, it was nonetheless felt that the varying needs of inventors as well as the requirements of the business and science community – particularly as a result of modern-day technology – necessitated an overhaul of the relevant legislation.  As a result, new legislation – the Patents Act (Act XVII of 2000) -- was enacted in July, 2000, and which has come into force on the 1^st June, 2002#.

 

In line with Malta’s present commitment to proceed with EU accession, the new patent legislation is not only TRIPS-compliant but is also in line with the Acquis Communautaire*.

 

Malta is a member of the World Intellectual Property Organisation, the Patent Convention, the Berne Convention, the Paris Convention for the Protection of Industrial Property and the Universal Copyright Convention.  Moreover, in 1995, Malta signed the World Trade Agreement that incorporated the TRIPS Agreement.

Requirements for patentability

Inventions shall only be patentable provided they:

·         are novel;

·         involve an inventive step (i.e. they are not obvious to a person skilled in the subject-matter of the invention); and

·         are industrially applicable (i.e. they can be made or used in any kind of industry which term shall be understood in its broadest sense possible to include, inter alia, also handicraft, agriculture and fishery).

 

 

What is not patentable?

The following are not patentable:

 

·         discoveries, scientific theories and mathematical methods;

·         aesthetic creations;

·         schemes, rules and methods for performing mental acts, playing games or for doing business and programs for computers;

·         methods for the treatment of the human or animal body by surgery or therapy and a diagnostic method practiced on the human or animal body;

·         inventions the exploitation of which would be contrary to public order or morality (provided that exploitation shall not be deemed to be contrary to public order or morality merely by virtue of the fact that it is prohibited by law or regulation); and

·         presentations of information.

 

 

Who may apply for a patent?

Any natural person or legal entity may apply for a patent.

 

The general rule is that the patent shall belong to the inventor.  Where a patentable invention is made by 2 or more inventors jointly, a patent may be granted to them jointly.

 

However, when an invention is made in execution of a commission or a contract of employment, the right to the patent for that invention shall belong, in the absence of agreement between the parties, to the person who commissioned the invention or to the employer, as the case may be.

 

The inventor shall be mentioned by name in the patent unless he indicates that he does not wish to be so mentioned.

 

 

Requirements of a patent application

Applications must be made on the prescribed form in duplicate and must contain the information and documentation detailed in Appendix I.

 

Where applicable, the above documentation/information must be accompanied by translations into English certified by an official translator^.

 

An application shall relate to 1 invention only or to a group of inventions so linked as to form a single general inventive concept.

 

 

Right of Priority

A patent application may contain a declaration claiming priority for a patent pursuant to the Paris Convention for the Protection of Industrial Property in respect of a patent for an invention for which protection has been applied for in a Convention country or in any State party to the World Trade Organisation or in any State with which Malta has made an international agreement for mutual protection of inventions.

 

For priority to be validly claimed, a copy of the earlier application filed abroad duly certified as correct by the Patent Office (if applicable, with English translations certified by an official translator) must be attached to the prescribed application within 16 months from the filing date of such earlier application filed abroad.

 

 

Examination of applications

All applications are to be referred to an examiner who shall determine whether all the formal requirements have been complied with.

 

If the examiner reports to the Comptroller of Industrial Property that all the formal requirements have been observed, the Comptroller shall, on payment of the prescribed fee, grant the applicant a patent.  The Comptroller shall, as soon as practicable, publish a notification that the patent has been granted.

 

In default, the applicant shall be given an opportunity to make observations and, if necessary, to amend, within a prescribed period, the application so as to comply with the formal requirements.  If the applicant fails to make such amendments, the Comptroller may refuse the application.  An appeal shall lie from any decision of the Comptroller refusing the grant of a patent.

 

 

Publication of applications or patents

If the applicant presents a written request to the Comptroller that his application be published, such application shall be published forthwith [please refer to Appendix III for a draft copy of this request].

 

In default, the Comptroller shall publish such application after the expiration of 18 months from the filing date or, where priority is claimed, from the priority date of the application.

 

Publication of such application shall provisionally confer upon the applicant, from the date of such publication, the same rights as those of a patent owner.

 

If before the application is published as provided above, a patent shall have been granted, the Comptroller shall publish the patent.

 

After a patent application or the patent granted thereon has been published, any person may inspect the files relative to the application.

 

Duration of patents

The term of a patent shall be 20 years from the filing date of the application.

 

A maintenance fee shall be due from the third year and each subsequent year thereafter to be paid on or before the prescribed due date which is calculated from the filing date.

 

A maintenance fee may still validly be paid within 6 months of the prescribed due date on payment of a surcharge.

 

Rights conferred by a patent

à     Product

Where the patent concerns a product, the patent owner has the right to prevent third parties from performing, without his authorisation, the following acts:

·      the making, offering or putting on the market of a product incorporating the subject-matter of the patent;

·      the use of such product;

·      the importation or stocking of such product for such offering, or putting on the market or for such use; and

·      the inducing of third parties to perform any of the above acts.

 

à     Process

Where the patent concerns a process, the patent owner has the right to prevent third parties from performing, without his authorisation, the following acts:

·      the use of the process which is the subject-matter of the patent;

·      the offering, putting on the market or use of any product directly obtained by the process (even where a patent cannot be obtained for the said product);

·      the importation or stocking of such a product for such offering, putting on the market or for such use; and

·      the inducing of third parties to perform any of the above acts.

 

A patent owner shall, additionally, also have the right to prevent third parties from supplying or offering to supply a person, other than a party entitled to exploit the invention, with means relating to an element of the invention essential for carrying out such invention when the supplier knows (or ought to know in the circumstances) that those means are suitable and intended for carrying out that invention.  This right shall not apply where the means are staple commercial products and the circumstances of the supply do not constitute inducement to infringe the patent.

 

There are a number of justifiable exceptions to these rights as, for example, in the case of purely experimental purposes or for scientific research; where the act is done privately and for non-commercial purposes provided it does not significantly prejudice the economic interests of the patent owner etc..

 

 

Civil remedies in case of infringement of a patent

Any person who infringes the rights of a patent owner or licensee shall be liable in damages towards such owner or licensee.

 

Furthermore, the Court may order that

·   the machinery or other industrial means used in contravention of the patent;

·   the infringing articles; and

·   the apparatus destined for their production,

be delivered, in whole or in part, to the patent owner or licensee.

 

Any such judicial proceedings are time barred by the lapse of 5 years from the date when the patent owner or licensee discovers the infringement and the identity of the infringer.

 

Any interested party shall have the right to institute civil judicial proceedings against the patent owner requesting the Courts to declare that the performance of a specific act does not constitute an infringement of a patent.

 

 

Criminal remedies in case of infringement of a patent

Whosoever puts into circulation or sells any article falsely claiming that it is a patented article, shall, on conviction, be liable to a fine of not less than one hundred Malta liri (Lm100) and not more than five thousand Malta liri (Lm5,000).

 

The Courts may order the forfeiture of such goods.  In addition, the Courts may order that the forfeited goods either be destroyed altogether or, alternatively, that they be disposed of.  In the latter case, the Courts may direct that out of the proceeds which may be realised by their disposal any injured party be awarded compensation.

 

 

Assignment of patents

Any assignment of a patent has to be executed in writing.

 

In the case of joint applicants of a patent or joint owners of a patent, each applicant or owner may, without authorization from the other, separately assign his share of the application or patent.  However, the applicant or patent owner may only act jointly to withdraw the application or surrender the patent and to conclude licence contracts with third parties.

 

Any new owner of a patent shall only be entitled to institute the legal proceedings detailed above to safeguard his interests on being recorded in the patent register and on paying the prescribed fee.

 

Any such assignment shall only have effect vis-à-vis third parties after entry thereof in the register.

 

The patent register in which are recorded all matters relating to patents as may be prescribed, including entries of all corrections, amendments, changes in ownership etc., shall be prima facie evidence of the matters entered therein.  The register is open to public inspection at all times.

 

 

Judicial assignment of a patent

If a patent is assigned to a person who is not entitled to it, the person entitled to such patent may, within 2 years of publication of the relative patent application or patent, as the case may be, request the Civil Courts to order the assignment of the patent to him.

 

If the person who was not entitled to the patent knew that he was not so entitled, the 2 year period shall not apply.

 

 

 

Non-voluntary licences

Any person may institute civil proceedings requesting the Court to direct the Comptroller of Industrial Property to grant him a non-exclusive, non-voluntary and non-assignable licence to exploit a patent provided:

q             such person proves to the Court’s satisfaction that, prior to the institution of such proceedings, he made efforts to obtain authorisation from the rightholder on reasonable commercial terms and conditions and that such efforts were unsuccessful;

q             such judicial proceedings are instituted after the expiration of 4 years from the date of filing of the patent application or 3 years from the grant of the patent whichever is the later;

q             such person proves his ability to work the patented invention in Malta; and

q             such person proves that the patented invention is not worked or is insufficiently worked in Malta.

 

The grant, if any, of such licence shall be subject to the payment of such equitable remuneration as may be determined by the Courts to be paid to the patent proprietor.

 

Any such licence shall be revoked when the circumstances which led to its granting cease to exist.

 

Any such licence shall be predominantly for the supply of the domestic market.

 

 

Transition from old to new law

Any patent registered under the old law before the coming into force of the new Act, the term of which has not yet elapsed upon the coming into force of the new Act, shall enjoy the term of protection (duration) stipulated under the new Act and also benefit from any rights granted under the new Act.

 

A patent registered under the old law and which has been granted an extension of not more than 5 years under the provisions of Title II of Part I of the old law shall also enjoy, from the filing date of the application, the term of protection (duration) stipulated under the new Act and benefit from any rights granted under the new Act.

 

Finally, a patent registered under the old law which has been granted an extension of not less than 7 years but not more than 14 years in accordance with the provisions of Title II of Part I of the old law shall continue to benefit from the extension granted and from any rights granted under the new Act. 

 

 Downloads:

·                     This Document in PDF Format.

·                     Appendix I       : Detailed Requirements for Registration of a Patent

·                     Appendix II      : Power of Attorney

·                     Appendix III     : Application to advertise Patent application

·                     Appendix IV     : Schedule of Fees