Malta Patent Law Reform: A Revised Act
Major patent law reforms have been promulgated under Maltese law through the Bill entitled Patents and Designs (Amendment) Act.[1] Said Bill has been brought into effect on the 24th December 2015 through Legal Notice 424[2] and the changes are applicable retrospectively as from the 14th December 2014.
Hereunder is a non-exhaustive summary of the most notable reforms.
1. Malta Patent Law Reform: A Revised Act - Patents Tribunal
The Patents Tribunal has been set up. The Patents Tribunal is a specialized court having jurisdiction to hear and determine claims relating to the revocation of a patent, civil claims for infringement, applications for declarations of non-infringement and precautionary actions related thereto.[3]
Previously, such claims fell under the remit of the First Hall, Civil Court.
It should be noted that a claim for damages arising from patent infringement will continue to be determined by the First Hall, Civil Court.[4]
2. Malta Patent Law Reform: A Revised Act - Search Reports
The Malta Industrial Property Registrations Directorate (hereinafter “Malta IPRD”)[5] has been granted the power (and discretion) to request submission of a search report accompanied by a reasoned opinion from the patent applicant.[6]
Said search report and opinion must be issued by an international search authority recognized by the World Intellectual Property Organisation[7] and all costs relating to the provision thereof are to be borne by the applicant.[8]
3. Malta Patent Law Reform: A Revised Act - Prior Art
The definition of “prior art” has changed to everything which was available to the public in writing or in other graphic form by an oral description, by use or in any other way anywhere in the world before the filing date or, where priority is claimed, before the priority date of the application: provided that only the filing date shall be taken into consideration for the purpose of determining prior art, when the claim for priority had been withdrawn or refused or revoked.[9]
Previously, prior art meant everything which, before the filing date or, where priority is claimed, before the priority date, was available to the public in a written or other graphic form, by an oral description, by use or in any other way anywhere in the world.[10]
In view of the above, essentially, it has been clarified that if a claim of priority is made and said claim for priority is withdrawn, refused or revoked, the prior art which is to be taken into consideration by the Malta IPRD in examining whether to grant or otherwise a patent application shall be up to the filing date, not priority date, and therefore covering a longer period of time and more potentially conflicting inventions than if the date of examination was frozen at priority date.
4. Malta Patent Law Reform: A Revised Act - Patent Revocation
Any person who wishes that a patent is revoked may, after publication of the grant, file a revocation notice either with the Malta IPRD or the Patents Tribunal.[11]
Previously, revocation of a patent fell under the remit of the First Hall, Civil Court whereas nowadays, a party having interest to oppose a patent application has the choice of requesting revocation by the Malta IPRD or by the Patents Tribunal. However, a notice for revocation filed at the Malta IPRD may only be made:[12]
- where the patent concerns an invention in respect of which (before filing or priority date if priority is claimed) there already exists a published patent; or
- in respect of a patent where there is a priority claim, on the grounds that
- the application for a patent on the basis of which priority is claimed was originally filed at another Patent Office more than one year before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Malta IPRD; and
- the application on the basis of which priority is claimed or the resulting patent were published by the other Patent Office before the filing date of the application of the patent in respect of which a notice for revocation has been filed with the Malta IPRD.
It should be noted that a notice for revocation on the above grounds may not be filed with the Patents Tribunal if it has already been filed before the Malta IPRD and vice-versa.[13]
On the other hand, a notice for revocation filed directly before the Patents Tribunal may only be based on the grounds that:[14]
- the subject-matter covered is not patentable;
- the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
- the right to the patent does not belong to the person to whom the patent was granted;
- the subject-matter of the patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application, beyond the content of the earlier application; and
- the protection conferred has been extended by an amendment which should not have been allowed.
Therefore, substantive and technical aspects fall within the remit of the Patents Tribunal and effectively, this means that the authority vested in the Malta IPRD to revoke patents is very restricted in comparison to that granted to the Patents Tribunal.
5. Malta Patent Law Reform: A Revised Act - Priority Revocation
Any person who wishes to challenge a priority claim may after publication of the grant file a notice for revocation with the Malta IPRD.[15] Such notice of revocation may only be filed on the ground that the application on the basis of which priority is claimed, has been originally filed more than one year before the filing date.[16] Furthermore, such priority revocation notice may only be filed before the Malta IPRD.[17]
Previously, Maltese law did not cater for such an opposition.
6. Malta Patent Law Reform: A Revised Act - Title of the Invention
Stating clearly and concisely the technical designation of an invention has become a formal patent application requirement.[18]
Previously, the only references to the requirements of a patent’s title were found under the Patents Regulations which provides that the title of an invention is to be short and indicate the matter to which the invention relates.[19]
The new “technical designation” added requirement is expected to prevent the acceptance for registration of patents having a generic title.
7. Malta Patent Law Reform: A Revised Act - Scheduled Inventions
“Scheduled inventions” have been introduced. A scheduled invention is an invention of a type listed in regulations which the Minister may prescribe from time to time[20] and in regards to which application, examination, grant or refusal provisions do not apply.[21]
Patent protection in Malta of scheduled invention is only possible through a patent granted following an application filed under the Patent Co-operation Treaty or under the European Patent Convention.[22]
It should be noted that despite the coming into force of this provision, a list of scheduled inventions is to date not in force.
[1] Act XXX of 2014, Chapter 417 of the Laws of Malta.
[2] Government Gazette of Malta No. 19,516 – 24.12.2015.
[3] The Patents and Designs Act, Chapter 417 of the Laws of Malta (hereinafter the “Act”), article 58(A)(1).
[4] Ibid.
[5] Commonly referred to as the Malta IP Office.
[6] The Act, article 23(A)(1).
[7] Ibid.
[8] Ibid. article 23(A)(2).
[9] Ibid. Article 5(2).
[10] The Patents and Designs Act, Chapter 417 of the Laws of Malta, as it stood prior to the entry into force of the Patents and Designs (Amendment) Act (hereinafter referred to as “Previous Act”), article 5(2).
[11] The Act, article 44(1).
[12] Ibid. article 44(2).
[13] Ibid. article 44(3).
[14] Ibid. article 44(4).
[15] Ibid. artilce 44C(1).
[16] Ibid. article 44C(2).
[17] Ibid.
[18] Ibid. article 13(1)(f).
[19] Subsidiary Legislation 417.01 of the Laws of Malta, regulation 12(2).
[20] The Act, article 2.
[21] Ibid. article 25A.
[22] Ibid. article 25B.
