E&S offers its clients the opportunity to be assisted in protecting all their Intellectual Property, both on a national level as well as a European and Global level.
Whether it is to protect Copyrights, Trademarks, Patents or trade secrets, at E&S we can not only aid in the registration process, but even more, through our dedicated team we cater for on-going monitoring and reporting.
REGISTRATION OF A PATENT IN MALTA
- Patentable Inventions
An invention shall be patentable if it is novel, involves an inventive step and is susceptible of industrial application. Biological inventions may also be patentable subject to certain ethical and moral exceptions.
- What may not be Patented?
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;
(d) presentations of information;
(e) a method for the treatment of the human or animal body by surgery or therapy and a diagnostic method practised on the human or animal body;
(f) an invention the exploitation of which would be contrary to public order or morality.
- Requirements of Application
An application for a patent shall be accompanied by:
(a) a request for the grant of a patent;
(b) a description of the invention;
(c) one or more claims;
(d) any drawings referred to in the description or the claims;
(e) an abstract of the invention.
- Disclosure of the Invention
The application shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the area.
- Inspection of Files
After a patent application or the patent granted thereon has been published, any person may inspect the files of the application.
- Rights of Priority
The application may contain a declaration claiming priority pursuant to the Paris Convention for the Protection of Industrial Property, of one or more earlier national, regional or international applications filed by the applicant in any State party to the said Convention or the World Trade Organisation or for any State with which Malta has made an international arrangement for mutual protection of inventions. The term for filing a patent application with a claim of priority is of one (1) year from the date of the first filing.
- Examination and Grant or Refusal
The application shall be examined in order to determine whether the application complies with the requirements laid down in the Act and in the regulations. The applicant shall be given the opportunity to amend the application in order to comply with the requirements. If the applicant fails to make such amendments the Comptroller may refuse the application.
If the application as originally filed or as amended complies with all the formal requirements the Comptroller shall grant a patent on the application.
- Terms of Patents
The term of a patent shall be 20 years from the filing date of the application. The maintenance of a patent shall be subject to the payment of the prescribed fee in respect of the beginning of the third year and each subsequent year thereafter; calculated from the filing date of the application.
- Rights Conferred by a Patent
The proprietor of the Patent shall have the right to prevent third parties from performing without his authorisation:
a) the making of a product or the use of a process, which is the subject-matter of the patent;
b) the offering on the market of a product incorporating the subject-matter of a patent; and
c) the inducing of third parties to perform any of these acts.
A patent application, which has been published shall provisionally confer upon the applicant the same rights as mentioned above.
- Assignment of Patents
Any change in the ownership of a patent application or a patent shall be recorded in the patent register on payment of the prescribed fee. The new proprietor of the application or patent shall be entitled to institute any legal proceedings concerning the patent only if he has been recorded in the patent register as the new proprietor.
REGISTRATION OF A TRADEMARK IN MALTA
We recommend that a pre-application check is carried out initially prior to starting the registration process. This is done in order to check with the national database and the Community Trademark database; if there is a similar or identical registered mark. The search request would include:
- The words you wish the search to be conducted on;
- The class or classes you wish the search to be carried out in;
- The databases to be searched, i.e. whether the National database, the Community database or both.
The next step after the pre-application check would be the registration itself, conducted as follows:
- Application is received by the Commerce Department Office.
- The application is given a Reference Number, and a receipt of payment is issued and sent/given to the client.
- A Formalities Check of the application is conducted to ensure that all fields in the application form are in order.
- The application details are entered into the National Trademark Register (database) and an official file is opened.
- Verification of the content between the database and the original application is made.
- The file is then entered into the queue for the commencement of examination procedures.
- The appliaction is examinied on Absolute Grounds of refusal (against the National Law).
- If a difficulty arises at this stage the client is informed accordingly and asked to ammend the application so that the examination process may continue.
- If the requested changes are not met within 90 working days, the application is refused.
- The appliaction is then examinied on Relative Grounds of refusal (with the National Trademark Register and the Community Trademark Register) which means it is performed on both a national level and EU level.
- If a difficulty arises at this stage the client is informed accordingly and is informed of the difficulties found in order to register the mark.
- If the requested changes are not met within the stipulated time frame (either 60 or 90 working days – according to the case), the application is refused.
- If the Application passes through the examination proceedure, the Notification of Registration is issued and sent to the applicant.
- The registration is then sent for publication in the Government Gazzette. On the day of publication, the Registration procedure is completed.
From the day of publication, a 5 year period commences in which any interested party may oppose the Registered Trademark through the local courts
This procedure takes between 8 months to 1 year to conclude.