PATENTS AND DESIGNS ACT
To make provision for the registration and regulation of patents and designs.
1st June, 2002
ACT XVII of 2000, as amended by Acts IX of 2003 and XVIII of 2005; and Legal Notices 181 and 186 of 2006, and 426 of 2007.
PART I
DESIGNATION
1. The short title of this Act is the Patents and Designs Act.
PART II
DEFINITIONS
2. In Parts II to XVII of this Act unless the context otherwise requires:
“biological material” means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system;
“Budapest Treaty” means the Treaty for the International Recognition of the Deposit of Micro-organisms for the Purpose of Patent Procedure done at Budapest on the 28th April 1977;
“the Comptroller” means the Comptroller of Industrial Property and includes any other person delegated by the Comptroller or appointed by the Minister to exercise all or any of the powers and to perform all or any of the duties of the Comptroller;
“essential biological process for the production of plants and animals” means any process consisting entirely of natural phenomena such as crossing or selection;
“European Union means the European Union referred on the Treaty;
“microbiological process” means any process involving, or performed upon, or resulting in, microbiological material;
“Member State” means a state which is a member of the European Union;
“Minister” means the Minister responsible for the protection of industrial property and “Ministry” shall be construed accordingly;
“patent” means the exclusive right granted by the Comptroller in terms of the provisions of this Act;
“plant varieties” refers to all botanical genera and species, including, inter alia, hybrids between genera or species;
“prescribed” means prescribed by Parts of this Act;
Short title.
Amended by:
IX. 2003.106.
Interpretation.
Substituted by:
IX. 2003.107.
Cap. 29.
Cap. 460.
Appointment and duties of Comptroller.
Patentable inventions.
Amended by:
IX. 2003.108.
“the register” means the register of patents kept under this Act and includes the register of patents kept under the Industrial Property (Protection) Ordinance, parts of which have been repealed by this Act;
“the Treaty” has the same meaning assigned to it by the European Union Act;
“variety” means a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a plant variety right or patent are fully met, can be:
-defined by the expression of the characteristics that results from a given genotype or combination of genotypes,
-distinguished from any other plants grouping by the expression of at least one of the said characteristics, and
-considered as a unit with regard to its suitability for being propagated unchanged,
where a plant grouping consists of entire plants or parts of plants as far as such parts are capable of producing entire plants.
PART III
THE OFFICE OF THE COMPTROLLER
3. (1) The administration of this Act shall be entrusted to the Comptroller of Industrial Property, hereinafter referred to as "the Comptroller".
(2) The Comptroller shall be appointed by the Minister.
PART IV
PATENTABILITY
4. (1) Inventions which are new, involve an inventive step and are susceptible of industrial applications, shall be patentable:
Provided that such inventions shall also be patentable even if they concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used:
Provided further that biological material which is isolated from its natural environment or produced by means of a technical process may be subject of an invention if it previously occurred in nature.
(2) The following, in particular, shall not be regarded as inventions within the meaning of subarticle (1): - (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. - (3)
- The provisions of subarticle (2) shall exclude the patentability of the subject matter or activities referred to in that subarticle only to the extent to which a patent application or patent relates to such subject matter or activities as such.
- (4)
- 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 shall not be regarded as an invention capable of industrial application for the purposes of subarticle (1):
Provided that this subarticle shall not apply to products, in
particular substances or compositions, for use in any of these
methods.
(5) A patent shall not be granted in respect of: - (a)
- an invention the exploitation of which would be contrary to public order or morality:
Provided that exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation;
- (b)
- the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene:
Provided that an element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that element is identical to that of a natural element;
- (c)
- processes for cloning the human body, processes for modifying the germ line genetic 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:
Provided that patents shall not be granted for plant varieties only after a new form of plant variety protection is introduced in such form as may be prescribed:
Provided further that a patent may still be granted for a plant variety in respect of which a patent application is still pending on the date that a new form of plant variety protection is prescribed;
(f) essentially biological process of the production of plants or animals:
Novelty.
Inventive step.
Industrial applicability.
Disclosure of the invention.
Provided that this is without prejudice to the patentability of inventions which concern a microbiological or other technical process or a product obtained by means of such a process;
(g) DNA sequence not containing any technical information and in particular any indication of its function. - (6)
- Inventions which concern plants or animals shall be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
- (7)
- The Minister may make regulations to modify any of the provisions of this article other than article (5)(a), (b), (c) and (d) for the purpose of maintaining them in conformity with developments in science and technology.
5. (1) An invention shall be considered novel if it does not form part of the prior art. - (2)
- The prior art means everything which, before the filing date or, where priority is claimed, before the priority date of the application claiming the invention, 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.
- (3)
- The prior art includes also the content of any patent application as filed in, or with effect for, Malta to the extent that such application or the patent granted thereon is published subsequently by or for the Office of the Comptroller:
Provided that the filing date or, where priority is claimed, the priority date of such application is earlier than the date referred to in subarticle (2).
- (4)
- The provisions of subarticles (1) to (3) shall not exclude the patentability of any substance or composition, comprised in the prior art, for use in a method referred to in article 4(4) provided that its use for any method referred to in the said subarticle (4) is not comprised in the prior art.
- An invention shall be considered to involve an inventive step if, having regard to the prior art as defined in article 5(2), it is not obvious to a person skilled in the art:
- Provided that if the prior art also includes any of the documents referred to in article 5(3) of this Act, these documents are not to be considered in deciding whether there has been an inventive step.
- An invention shall be considered industrially applicable if it can be made or used in any kind of industry. For the purposes of this article the term “industry” shall be understood in its broadest sense and shall without prejudice to the foregoing include handicraft, agriculture and fishery.
- For the purposes of article 5 of this Act, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the patent
application and if it was due to, or in consequence of - (a)
- an evident abuse in relation to the applicant or his legal predecessor, or
- (b)
- the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, international exhibition.
PART V
RIGHT TO APPLY FOR AND OBTAIN A PATENT AND BE
MENTIONED AS INVENTOR
- Any natural person or legal entity may file an application for a patent either alone or jointly with another.
- (1) The right to a patent shall belong to the inventor or his successor in title. Joint inventors shall, unless they agree otherwise, have equal rights and where the application for a patent is made by two or more persons jointly, a patent may be granted to them jointly.
- (2)
- Where two or more applications have been filed by different persons in respect of the same invention and the inventors concerned made the invention independently of each other, the right to a patent for that invention shall belong to the applicant whose application has the earliest filing date or, where priority is claimed, the earliest priority date, provided that his application has been published.
- (3)
- For the purpose of proceedings before a Court the applicant shall be deemed to be entitled to exercise the right to a patent.
11. (1) Notwithstanding the provisions of article 10, when an invention is made in execution of a commission or a contract of employment, the right to a patent for that invention shall belong, in the absence of contractual provisions to the contrary, to the person having commissioned the work or to the employer.
(2) The employee shall have a right to equitable remuneration taking into account his salary, the economic value of the invention and any benefit derived from the invention by the employer. In the absence of agreement between the parties, the remuneration shall be fixed by the Civil Court, First Hall.
12. The inventor shall be mentioned as such in the patent, unless in a special written declaration addressed to the Comptroller he indicates that he wishes not to be named.
PART VI
APPLICATIONS
13. (1) An application for a patent shall be made in the prescribed form and shall be filed at the Office of the Comptroller and shall contain - (a)
- a request for the grant of a patent;
- (b)
- a description of the invention;
Entitlement to file an application.
Right to a patent.
Invention made in execution of a commission or an employment contract.
Mention of inventor.
Requirements of application.
Amended by:
IX. 2003.109. - (c)
- one or more claims;
- (d)
- any drawings referred to in the description or the claims;
- (e)
- an abstract of the invention.
- (2)
- The application shall designate the inventor or, where there are several inventors, all of them. If the applicant is not the inventor, or is not the sole inventor, the applicant shall indicate the legal grounds for his entitlement to file the application.
- (3)
- The application shall be subject to the payment of a filing fee as may be prescribed.
- (4)
- The application shall be drafted in the prescribed language and shall satisfy any conditions that may be prescribed.
Date of filing. 14. (1) The filing date of an application shall be the date of receipt by the Office of the Comptroller of the documents that contain: - (a)
- an express or implicit indication that the granting of a patent is sought;
- (b)
- indications allowing the identity of the applicant to be established;
- (c)
- a description of the invention for which a patent is applied for;
- (2)
- (a) If the Comptroller finds that, at the time of receipt of an application, the requirements referred to in subarticle (1) have not been fulfilled, he shall invite the applicant to comply with any requirement that has not been satisfied within such time as may be prescribed.
- (b)
- If the applicant complies with the invitation referred to in paragraph (a), the filing date of the application shall be the date of receipt of all missing requirements. If the applicant fails to comply with such an invitation, the application shall be treated as if it had not been filed.
- (c)
- Where the description refers to drawings which are not included in the application, the Comptroller shall invite the applicant to furnish the missing drawings within such period as may be prescribed. If the applicant complies with the said invitation, the filing date of the application shall be the date of receipt of the missing drawings. If the applicant fails to comply with the invitation, the filing date shall be the date of receipt of the application and any reference to the drawings shall be deemed as not having been made.
- (3)
- (a) The indications referred to in subarticle (1)(a) and (b) must be submitted in such language or languages as may be prescribed, hereinafter referred to as the official languages of the Office.
(b) If any of the description referred to in subarticle (1)(c) or any text contained in any drawings is in a language other than the official languages of the Office, a translation thereof in one of the official languages of the Office shall be deposited at the Industrial Property Office within such time limit as may be prescribed.
15. (1) 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 art.
(2) (a) Where an application refers to an element isolated from the human body or otherwise produced by means of a technical process including the sequence or partial sequence of a gene, the industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application.
(b) When the application concerns a sequence or a partial sequence of a gene used to produce a protein or part of a protein, it is necessary to specify which protein or part of protein is produced or function or sequence it performs. - (3)
- Where an invention involves the use of or concerns biological material which is not available to the public and which cannot be described in a patent application in such a manner as to enable the invention to be reproduced by a person skilled in the art, the description shall be considered inadequate for the purpose of this Act unless:
- (a)
- it is supplemented by a deposit of such material with a depository institution as may be prescribed; and
- (b)
- the application as filed contains such relevant information as is available to the applicant on the characteristics of the biological material deposited.
- (4)
- Access to the deposited biological material shall be provided through the supply of a sample:
- (a)
- up to the first publication of the patent application, only to those persons who are authorised under this Act;
- (b)
- between the first publication of the application and the granting of the patent, to anyone requesting it or, if the applicant so requests, only to an independent expert;
- (c)
- after the patent has been granted, and notwithstanding revocation or cancellation of the patent, to anyone requesting it.
- (5)
- The sample shall be supplied only if the person requesting it undertakes, for the term during which the patent is in force:
- (a)
- not to make it or any material derived from it available to third parties; and
- (b)
- not to use it or any material derived from it except for experimental purposes, unless the applicant for or proprietor of the patent, as applicable, expressly waives such an undertaking.
Disclosure of the invention.
Amended by:
IX. 2003.110.
Claims.
Abstract.
Unity of invention.
Division of application.
Amendment or correction and withdrawal of applications. - (6)
- Where an application is refused or is withdrawn, then at the applicant’s request, access to the deposited material shall be limited to an independent expert for twenty years from the date on which the patent application was filed, and in such case the provisions of subarticle (5) shall apply.
- (7)
- The applicant’s requests referred to in subarticle (4)(b) and in subarticle (6) may only be made up to the date on which the technical preparations for publishing the patent application are deemed to have been completed.
- (8)
- If the biological material deposited in accordance with this article ceases to be available from the recognised depositary institution, a new deposit of the material shall be permitted on the same terms as those laid down in the Budapest Treaty.
- (9)
- Any new deposit shall be accompanied by a statement signed by the depositor certifying that the new deposited biological material is the same as that originally deposited.
16. (1) The claims shall define the matter for which patent protection is sought. - (2)
- The claims shall be clear and concise.
- (3)
- The claims shall be supported by such description as may be necessary or as may be prescribed.
- (4)
- The claims shall be presented in the prescribed manner.
- The abstract shall merely serve the purpose of technical information; in particular, it shall not be taken into account for the purpose of interpreting the claims.
- (1) An application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
(2) Failure to comply with the requirement of subarticle (1) shall not be a ground for invalidation or revocation of a patent.
19. (1) Until such time as a grant is made pursuant to a pending application, the applicant may divide such pending application into two or more applications ("divisional application"). - (2)
- Any divisional application shall be deemed to have been filed on the filing date of the earlier application and shall have the benefit of any right to priority attaching to such earlier application provided its content does not go beyond the disclosure as filed in the earlier application.
- (3)
- Priority documents and any required translation thereof that are submitted to the Office of the Comptroller in respect of the initial application shall be considered as having been submitted in respect of all divisional applications.
20. (1) The applicant shall have the right, subject to the payment of such fees as may be prescribed, to amend or correct the application, on his own initiative, up to the time when the application is in order for a grant. - (2)
- No amendment or correction of the application may go beyond what has been disclosed in the application as filed.
- (3)
- The applicant may withdraw the application at any time during which it is pending.
- After a patent application or the patent granted thereon has Inspection of files. been published in accordance with article 25, any person may inspect the files of the application in accordance with such regulations as may be prescribed.
- (1) The application may contain a declaration claiming Right of priority. 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 or his predecessor in title in or for 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.
- (2)
- Where the application contains a declaration under subarticle (1), the Office of the Comptroller may require that the applicant furnish, within such time as may be prescribed, a copy of the earlier application, certified as correct by the Office or any regional or international organisation with which it was filed.
- (3)
- The effect of the declaration referred to in subarticle (1) shall be such as is provided in the Convention referred to in that subarticle pursuant to which the declaration has been made.
- (4)
- If the Comptroller finds that the requirements under this article and any regulations as may be prescribed have not been fulfilled, he shall invite the applicant to file the required correction within such time as may be prescribed. If the applicant does not comply with the said invitation, the declaration referred to in subarticle (1) shall be deemed not to have been made.
- (5)
- The Minister responsible for the Industrial Property Office, with the concurrence of the Minister responsible for Foreign Affairs, may by order specify the countries with which any international arrangement as is referred to in subarticle (1) are in force and may by subsequent orders amend, revoke or substitute any such order.
PART VII
EXAMINATION AND GRANT OR REFUSAL
23. (1) Where an application for a patent has been filed and is not withdrawn, the Comptroller shall refer the application to an officer in his department hereinafter referred to as "the examiner" to determine whether the application complies with such requirements of this Act and of any regulations made thereunder and which are designated by any regulations as may be prescribed as formal requirements. The examiner shall make a report thereon to the Comptroller.
(2) If the examiner reports to the Comptroller that not all the formal requirements are complied with, the applicant shall be given
Examination as to formalities.
Grant.
Term of patents and maintenance fees.
Amended by:
IX. 2003.111;