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Patent protection under Maltese law is regulated by the Patent and Designs Act, Chapter 417 of the laws of Malta, and the supplementing subsidiary legislation thereunder.
Introduction to Patent Protection in Malta
Malta is a member of the Patent Cooperation Treaty and the European Patent Office (EPO) which are aimed at protecting patents at an international and regional level. The EPO provides the possibility of ensuring the protection of patents throughout the 36 Member States of the European Union. Malta is duly represented in the Administrative Council of the EPO as well as the General Assemblies of the World Intellectual Property Organization (WIPO) (which deals with the Patent Cooperation Treaty amongst other matters). WIPO allows protection at an international level to owners of intellectual property worldwide.
Registering a New Patent in Malta
It is possible to register a new patent through the Malta Intellectual Property Office (the “Office”), for the purposes of ensuring the protection of an invention. For an invention to receive protection, it must be novel and involve an inventive step and have industrial applicability. Subject to certain ethical and moral considerations it is also possible to patent biological inventions.
Our legal professionals may assist you with the process of filing an application to protect your patent.
For the purposes of filing an application to register a new patent, we would require the title and details of the invention and the inventor, and any drawings relating thereto, any claims made and an abstract of the invention. The description of the invention must be clear and complete. We would also need the full details of the applicant including the full name, nationality, address, contact number and email address.
Any such patent application or registration may be subsequently amended as may be necessary in the sense that a change of name, address, or patent specification or otherwise an amendment due to a clerical error may be made.
When filing a patent application, one may claim rights of priority relating to earlier applications filed by the owner either nationally, regionally, or internationally and this in line with the Paris Convention for the Protection of Industrial Property. The term to file an application for a patent registration claiming priority is that of one year from the date of the first application filing.
Once an application is filed the Office would examine it for the purposes of assessing whether it complies with the relevant rules and regulations, and should it be found in compliance a patent would be granted. Once granted the term of a patent would be twenty (20) years from the date of filing. At the beginning of the third anniversary, an annual renewal payment would need to be made for the purposes of maintaining the patent.
Once a patent is granted would the owner have the right to prevent any third-party from doing any of the following without prior authorisation:
- Making a product or using a process which is the subject of a patent;
- Offering on the market any product which is the subject of a patent; and
- Inducing third parties to do any of the above two actions.
Validating a European Patent in Malta
Malta also allows for the validations of European patents granted by the EPO. When a European Patent is drawn up in the French or German language, the applicant would be required to file a patent validation and provide an English translation of all the relevant patent documents. By means of a valid validation application, the patent proprietor would acquire protection in Malta.
To be eligible to file such a validation application, the owner must possess the Grant of the European patent duly issued by the EPO. European Patents filed in the English language, are now deemed automatically valid in Malta; however, for them to be assigned with a Maltese patent number and appear on the Maltese Patent Registry, the respective renewal fees would need to be duly paid through the Office. A validation application will take approximately one month to be processed by the Office.
Our legal professionals may assist you with the process of filing an application for a validation of a European patent.
Transferring a Patent
It is also possible to file an application for the purposes of transferring the ownership of a patent to a new owner, either through an assignment, merger, a testamentary disposition or pursuant to a court order. The application of any such transfer must necessarily be filed on the request of the owner of a filed or granted patent.
Any such request would take approximately one month to be processed by the Office. Once a request is duly processed the necessary change would be recorded in the patent register showing the new proprietor.
Registering or Cancelling a Licence for a Patent
We may assist client with the registration or cancellation of a licence for a patent. The licencing of a patent may be made in whole or in part; and such licence may be exclusive or non-exclusive. The aim of registering a licence for a patent is for the owner to be allowed to issue licences to third parties to use their patent. Only owners of the patent in question can file applications to register or cancel a licence for a patent.
The process for registering or cancelling a licence for a patent would normally take one month.
The Issuance of Supplementary Protection Certificates
We assist clients with the filing for requests with the Office, for the issuance of Supplementary Protection Certificates (SPCs), in relation to plant protection products or medicinal products. Through the issuance of an SPC, the patent owner would have the possibility of extending the duration of a patent granted for a plant protection product or a medicinal product. The request of any such SPC must necessarily be filed on behalf of the owner of a filed or granted patent.
When it comes to Supplementary Protection Certificates of paediatric products it is also possible to file for extensions to the said SPC, thereby extending the duration of the protection granted to a patent relating to a paediatric product.
Any such request would take approximately one month to be processed by the Office.
Renewal or Restoration of Registered Patents or Supplementary Protection Certificates
We assist clients with the filing of requests for the purposes of renewing registered patents or supplementary protection certificates. Any such application may only be filed for and on behalf of the owner of the granted patent. Any such renewal or restoration would take approximately one month to be processed by the Office.
Converting a European Patent application to a National (Malta) Patent
We may also assist clients with filing an application for the purposes of converting a European patent application to a national patent. For any such application to be successful, the conversion application must be based on a European patent application.
For us to proceed with the application we would require the owner to issue a power of attorney in our favour appointing us as their representative. In this respect we would be in a position to file the application once we have the relative documentation showing that the European patent application is refused or withdrawn or otherwise revoked (in terms of the European Patent Convention).
Any conversion application would take approximately one month to be processed by the Office.