MALTA Law and Practice Contributed by: Deo Falzon, Fenech & Fenech Advocates
1. Patents 1.1 Legal Framework and Patentable Subject Matter The main source of patent law in Malta is the Patents and Designs Act, Chapter 417 of the Laws of Malta, which governs patentable subject matter, conditions for patentability, application, examination, grant and duration of patents, as well as the rights conferred by a patent and remedies for infringement. It is sup- plemented by subsidiary legislation, which regulates filing procedures and other administrative matters, as well as PCT and EPC interactions with the local pro- cedures. An invention is patentable if it is novel, involves an inventive step and is susceptible to industrial applica- tion. Both products and processes may be patentable, including biotechnological inventions. In a manner which largely mirrors the EPC, there are some statu- tory exclusions from patentability only to the extent to which a patent application or patent relates to such subject matter or activities as such, namely: • discoveries, scientific theories and mathematical methods; • aesthetic creations; • schemes, rules and methods for performing mental acts, playing games or doing business; • computer programs; and • presentations of information. In addition, methods for treatment of the human or animal body by surgery or therapy, as well as diagnos- tic methods practised on the human or animal body, are not patentable. 1.2 Patent Granting Procedure The Comptroller of Industrial Property under the Indus- trial Property Registrations Directorate (IPRD) within the Commerce Department is responsible for receiv- ing applications, conducting formal examinations and granting national patents. Compliant applications are published 18 months after the filing or priority date and proceed to grant once all requirements are met; however, a request can be made for the patent appli- cation to proceed directly to grant.
The routes available for national patent protection in Malta are: • direct filing in Malta; • EP validated in Malta after the EPO grant; and • PCT application designating an EP and enter- ing the national phase thereafter (it is not cur- rently possible to enter the national phase directly through PCT). 1.3 Scope, Term and Maintenance of Patent Rights A patent granted under the Patents and Designs Act confers on the proprietor the exclusive right to exploit the invention in Malta and prevent third parties from carrying out a number of acts, namely as outlined below. • The making, offering, putting on the market, using, importing or stocking the product or directly obtained by the process for the preceding pur- poses. • The rights can be assigned, licensed and enforced; however, there are some limitations on private and non-commercial use, experimental research and regulatory and Bolar-type exemptions in the phar- maceutical field. • The standard term of a patent is 20 years, cal- culated from the filing date; however, SPCs for medicinal products and plant protection products are available for up to five years, with a further six- month paediatric extension. • A patent lapses if renewal fees payable from the third year onwards are not paid by the due date. There is a six-month grace period for late renewals, subject to a surcharge. 1.4 Ownership, Assignment and Licensing A patent’s ownership vests in the applicant/proprietor recorded in the register and entitlement to apply for a patent lies with the inventor, any successor in title and joint inventors. In the case of inventions made by employees during their normal or specifically assigned duties, this inven- tion would belong to the employer unless otherwise contracted and the employee remains designated as the employee. An employee may also be entitled to
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