Patents of Invention
– Patents and Designs Act XVII of 2000, as amended.
– Patents and Designs (Amendment) Act No. XXX of 2014, in force since December 14, 2015.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Lisbon Act (Articles 1-12), Stockholm Act (except Articles 1-12), since October 20, 1967.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 3, 1968.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 7, 1977.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Patent Cooperation Treaty (PCT), since March 1, 2007.
– European Patent Convention, since March 1, 2007.
Applicant: the inventor alone or jointly with others. Foreigners and nationals not living in the country: must appoint an attorney. Notion of invention: a new invention must be novel, involve an inventive step and must lend itself to industrial applications. Exceptions to protection: (a) an invention the exploitation of which would be contrary to public order or morality; (b) the human body, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene; (c) processes for cloning the human body, processes for modifying the germ line identity of the human body and uses of the human embryo for industrial or commercial purposes; (d) processes and products for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefits to man or animal; (e) plant and animal varieties; (f) essentially biological process of the production of plants or animals; (g) DNA sequence not containing any technical information and in particular any indication of its function. New plant varieties: can be protected through the European Community Plant Variety system. Topographies of semiconductor products: rights covered by the Copyright Act (Cap. 415). Computer program: protected as a literary work under the Copyright Act (Cap 415). Novelty: required. Priority: international priority may be claimed, twelve months from the date of filing of the foreign application. Claim should be accompanied by a supporting document, which document would have to be certified by the pertinent authorities of the place for the authentication of the signature or signatures.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, notarized and legalized by Malta diplomatic or consular representative, or by Apostille;
2. 2 copies of specification, abstract and drawings;
3. Application form in duplicate;
4. Priority document (if any).
Terms for filing missing documents: power of attorney: after the application is filed, a letter is received from the Patent Office requesting the power of attorney to be filed within two months (an extension of time may be applied for, for a further two months); priority document: must be filed within sixteen months of the first priority date claimed. Electronic filing: not available for national filings.
PCT applications: national route has been closed. For international applications filed on or after March 1, 2007, Malta can only be entered via the European patent. Time limit for entering the regional phase under Chapters I and II: 31 months.
Procedure: the Patent Office strictly follows and abides by the Malta Law only. No rules of practice are published. The Comptroller of Industrial Property is not bound to follow or be influenced by the law, rules or practices of other countries. Complete specification: it must commence with an indication of the title of the invention claimed and must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed. A complete specification must contain a detailed statement of the nature of the invention and must end with a list of claims of the invention. Accelerated examination: not available. Secrecy: an application is kept confidential until publication. Divisions: possible until such time as a grant is made pursuant to a pending application. Refusal and appeal: an application for a patent may be refused if the Comptroller is of opinion that not all the formal requirements of the Act and of any regulations are complied with. Any decision of the Comptroller, such as refusing the grant of a patent, refusing an application for reestablishment of rights or any other request of the applicant for, or proprietor of, a patent can be appealed. Advertisement: after the patent has been granted, the Comptroller shall publish a notification that the patent has been granted. Opposition: it is not possible to oppose any patent application in front of the Comptroller. Any third party may object to a patent grant by initiating court action.
Duration: twenty years. Annuities: calculated from the filing date, at the expiration of the second year and each succeeding year during the term of the patent. Annuity grace period: six months. Extension of patent: in certain cases a patentee may apply in writing to the Comptroller, at least six months before the time limit for the expiration of the patent, for an extension of the patent for a further term (up to a maximum extension of five years). Paediatric extension: available. Provisions regarding exhibitions: an inventor shall not forfeit his right to obtain a patent. Inventions which have received publicity: an invention shall be considered as novel and therefore patentable if it does not form part of the prior art. The time frame and circumstances in which disclosure of the invention will not be considered as going against the novelty requirement, i.e. if the disclosure of the invention occurred no earlier than six months before the filing of the patent and if the disclosure occurred either as a result of an evident abuse in relation to the applicant or his legal predecessor, or because of the fact that the applicant or his legal predecessor has displayed the invention at an official or officially recognized international exhibition. Amendment of issued patents: the proprietor of a patent shall, in accordance with the Regulations, have the right to request the Comptroller to make changes to the patent in order to limit the extent of the protection conferred by it, and also to correct mistakes or clerical errors, made in good faith. No such change in the patent may go beyond what has been disclosed in the application as filed. Opposition to granted patents: it is possible to revocate a patent before the Patent Tribunal or the Comptroller, according to the complexity of a case. Restoration: when a patent has become void owing to the non-payment of a prescribed renewal fee the patentee may apply within a time limit to the Comptroller for the restoration of the patent. An application for the restoration of a patent shall be accompanied by (1) the prescribed fee and all outstanding unpaid annual fees; (2) a statement of the circumstances which have led to the omission of the payment of the fees. Assignments and licenses:provided for. Compulsory licenses: if a patent is not worked in Malta or working is insufficient, any person able to demonstrate his ability to work the patented invention may make application to the Comptroller for a compulsory license after the expiration of a period of four years from the date of filing or three years from the date of grant of the patent; compulsory licenses are non-exclusive, non-transferable, and for supplying the domestic market only. Infringement and penalties: whoever puts into circulation, or sells any article, falsely representing that it is a patented article shall, on conviction, be liable to a fine. Enforcement: is undertaken by the National Enforcement Authorities, Customs and Police.
Supplementary Protection Certificates
Extent of protection: Supplementary Protection Certificates (SPCs) for medicinal and plant protection products may be granted to a patent owner for a period not exceeding five years where the patent includes the active ingredient or combination of active ingredients of a medicinal product or of a plant protection product, and includes the process to obtain such product or an application of such product. Filing: an application for an SPC must be lodged before the patent expires, but not later than six months from the date on which the market authorization has been granted, or within six months of the date on which the patent was granted, if the patent was granted later than the authorization. Publication: on receipt of an application for an SPC, a notice is published in the Government Gazette. Duration: the granted certificate shall take effect at the expiry of the term of the patent for a period equal to the period which elapsed between the first day of the sixth year following the date of application for a patent and the date of the first authorization to place the product on the market in Malta or in any other country with whom Malta has reciprocal or international agreements on SPCs, provided that this period shall not exceed five years. Annuities: payable before the expiration of the first year of the SPC extension in respect of the second year and each succeeding year according to the duration of the SPC.
Validation of European Patents
European patent (EP) which has not been granted in the English language: a European patent, which is not granted in the English language, is validated by filing a copy of the granted patent (including the specification, abstract and drawings), together with the English translation. If the English translation is not available, an extension of time of two months for submitting the English version may be requested, together with a fee. A power of attorney is required. The submission of the copy of the granted patent to the Patent Office in Malta is to be accompanied by an application form for the validation of a European Patent. Validation period: the period for validation is three months from the date on which the European Patent Office (EPO) granted the patent. All EP applications with a filing date before March 1, 2007 cannot be validated in Malta. Renewals: once a European Patent is validated in Malta, the next due renewal is to be filed with the Malta Patent Office.
European patent (EP) which has been granted in the English language: a copy of the Decision to Grant issued by the EPO or a copy of the page of the EPO Bulletin containing the grant is to be submitted to the Patent Office in Malta, and power of attorney document (if applicable), together with a renewal application form when the European patent is due for its first renewal in Malta.