PATENTS AND DESIGNS ACT

CHAPTER 417

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 ; Legal Notices 181 and 186 of 2006, and 426 of 2007 ; and Acts

XXX of 2014 and XXXV of 2023.

PART I

DESIGNATION

The short title of this Act is the Patents and Designs Act.

The provisions of this Act and of any subsidiary legislation

made thereunder shall also apply, in accordance with the provisions of

the 1982 United Nations Convention on the Law of the Sea as ratified

by the Law of the Sea (Ratification) Act, to an exclusive economic

zone area or an environment protection area as defined in the

Exclusive Economic Zone Act. Any artificial island, installation,

structure, equipment or device therein shall, solely for the purposes of

this Act and any subsidiary legislation made thereunder, be treated as

if they were situated in Malta itself.

PART II

DEFINITIONS

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 Patent Convention" means the Convention on the

Grant of European Patents, done at Munich on the 5th October

1973, as revised and amended from time to time;

"European Patent Office" or "EPO" means the office of the

European Patent Organisation established by the Convention on the

Grant of European Patent of the 5th October 1973, as revised and

amended from time to time;

"European Union means the European Union referred on the

Treaty;

"microbiological process" means any process involving, or

performed upon, or resulting in, microbiological material;

" M e m b e r St a t e " m e a n s a s t a t e w h i c h i s a m em b e r o f t h e

European Union;

"Minister" means the Minister responsible for the protection of

industrial property and "Ministry" shall be construed accordingly;

"the Office" means the Office headed by the Comptroller of

Industrial Property;

"Paris Convention" means the Paris Convention for the

Protection of Industrial Property, done at Paris on the 20th March

1883, as revised and amended from time to time;

"patent" means the exclusive right granted by the Comptroller in

terms of the provisions of this Act;

" P a t e n t C o - o p e r a t i o n Tr e a t y " m e a n s t h e Tr e a t y d o n e a t

Washington on the 19th June 1970, as revised and amended from

time to time;

"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;

"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;

"scheduled invention" means an invention of a type listed in

regulations as the Minister may from time to time prescribe;

"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

(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

(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

PATENTS AND DESIGNS

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

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.

(1) An invention shall be considered novel if it does not

form part of the prior art.

(2) The prior art means 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.

(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

s e ns e a nd s h a l l wi t ho ut p r e j ud ice t o t he f or e g oi n g in c l ud e

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 -

(a) the first application has been published; and

(b) the priority date of an application shall be ignored by

the Comptroller when considering the applications in

question if

(i) the claim for priority is withdrawn;

(ii) the claim for priority is refused or revoked by

the Comptroller or the Patents Tribunal or the

Court of Appeal, as the case may be.

(3) For the purpose of proceedings before a Court the applicant

shall be deemed to be entitled to exercise the right to a patent.

(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.

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

(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;

(c) one or more claims;

(d) any drawings referred to in the description or the

claims;

(e) an abstract of the invention

(f)

the title of the invention, which shall clearly and

concisely state the technical designation of the

invention, provided that the requirements stated in

paragraphs (a) to (f) shall also apply to applications

which are still pending at the time when this paragraph

comes into force.

(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.

(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

PATENTS AND DESIGNS

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.

(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.

(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.

(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.

(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.

(1) The applicant shall have the right, subject to the

payment of such fees as may be prescribed, to amend or correct the

appli cation , on h is ow n in iti ative, u p to the tim e wh en th e

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

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

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

(1) Where any application for a patent has been filed and

not withdrawn, the Office shall determine whether the application

complies with the requirements of these articles and any

regulations as may be prescribed.

(2) If the Office finds that not all formal requirements have

been complied with, the Office shall request the applicant to amend

the application as may be prescribed so as to comply with those

requirements.

(3) If the applicant fails to make such amendments within the

specified time from the date of issue of the request by the Office,

the Comptroller shall refuse the application and inform the

applicant accordingly.

(4) After eighteen months from the filing date the Office shall

publish the application as prescribed

Provided that where priority is claimed, the Office shall

publish the application eighteen months from the priority date

unless the priority claim has in the meantime been withdrawn or

rejected

Provided further that the Office shall not publish the

application if the application is withdrawn or refused before the

expiration of seventeen months from the filing date

So however that, where before the expiration of the said

period of eighteen months, the applicant presents a written request

to the Office of the Comptroller demanding that his application be

p u b l i sh e d , t h e O ff i ce o f t h e C o m p t r o l l e r s h a l l p u b l i s h t h e

application promptly after the receipt of the request.

(1) The Comptroller shall have the power to request the

applicant for a patent to submit a search report accompanied by a

reasoned opinion issued by an international search authority

recognized by the World Intellectual Property Organisation, as may

be determined by the Comptroller.

(2) All costs relating to the acquisition of the search report and

reasoned opinion shall be borne by the applicant.

(1) Where the applicant has been notified pursuant to

article 23(3) that his application complies with all the formal

requirements, the Comptroller shall on payment of the prescribed

fee, grant a patent on the application.

(2) As soon as possible after the decision to grant a patent, the

Comptroller shall publish a notification that the patent has been

granted and shall publish the patent in the prescribed manner.

(Deleted by Act XXX. 2014.8.).

PART VIIA

SCHEDULED INVENTIONS

25. The provisions of this Part shall apply to all scheduled

inventions in respect of which patent protection is sought in Malta.

Notwithstanding the provisions of Parts VI and VII in the

case of a scheduled invention the provisions of this Part shall apply.

Patent protection in Malta for a scheduled invention shall

only be possible through a patent granted following an application

filed and processed under the Patent Co-operation Treaty or under

the European Patent Convention.

PART VIII

EFFECTS OF A PATENT APPLICATION AND A PATENT

(1) The term of a patent shall be 20 years from the filing

date of the application.

(2) The maintenance of a patent shall be subject to the payment

of the prescribed fee hereinafter referred to as the maintenance fee.

Such maintenance fee shall be due in respect of the third year and

each subsequent year thereafter calculated from the filing date of

the application and shall be paid by not later than the last day of the

month of the prescribed due date.

(3) When a maintenance fee has not been paid on or before the

prescribed due date, it may still be validly paid within six months

of that date, provided the prescribed surcharge is paid within that

period.

(1) Where the patent concerns a product, the proprietor of

the patent shall have the right to prevent third parties from

performing, without his authorisation, the following acts

(a) the making of a product incorporating the subject-

matter of the patent;

(b) the offering or the putting on the market of a product

incorporating the subject-matter of the patent, the use

of such product, or the importation or stocking of such

product for such offering or putting on the market or

for such use;

(c) the inducing of third parties to perform any of the

above acts.

(2) Where the patent concerns a process, the proprietor of the

patent shall have the right to prevent third parties from performing

without his authorisation, the following acts

(a) the use of a process which is the subject matter of the

patent;

(b) in respect of any product directly obtained by the use

of the process, any of the acts referred to in subarticle

(1)(b), even where a patent cannot be obtained for the

said product;

(c) the inducing of third parties to perform any of the

above acts.

(3) The protection conferred by a patent on biological material

possessing specific characteristics as a result of the invention shall

extend to any biological material derived from that biological

material through propagation or multiplication in an identical or

divergent form and possessing those same characteristics.

(4) The protection conferred by a patent on a process that

enables a biological material to be produced possessing specific

characteristics as a result of the invention shall extend to biological

material directly obtained through the process and to any other

biological material derived from the directly obtained biological

material through propagation or multiplication in an identical or

divergent form and possessing those same characteristics.

(5) Save as provided in article 4(5)(b), the protection conferred

by a patent on a product containing or consisting of genetic

information shall extend to all material, in which the product is

incorporated and in which the genetic information is contained and

performs its function.

(6) Notwithstanding subarticles (1) and (2), the proprietor of a

patent shall have no right to prevent third parties from performing

the acts referred to in subarticles (1) and (2)(b) in the following

circumstances

(a) where the act is done privately and for non-

commercial purposes, provided that such act does not

significantly prejudice the economic interests of the

proprietor of the patent;

(b) where the act consists of making or using such product

for purely experimental purposes or for scientific

research;

(c) where the act consists of the extemporaneous

preparation for individual cases, in a pharmacy or by a

medical or veterinary doctor, of a medicine in

accordance with a medical prescription or of acts

concerning the medicine so prepared;

(d) when an act is done for purposes which can reasonably

be related to the development and presentation of

information required by the law of Malta or any other

country that regulates the production, use or sale of

medicinal or phytopharmaceutical products;

(e) when the use of the patented invention is on board

vessels of the countries of the Union of Paris for the

Protection of Industrial Property in the body of the

vessel, in the machinery tackle, gear and other

accessories, when such vessels temporarily or

accidentally enter the waters of Malta, provided that

the invention is used exclusively for the needs of the

vessel;

(f)

when the use of that patented invention is in the

construction or operation of aircraft or land vehicles of

countries of the Union of Paris for the Protection of

Industrial Property or of accessories to such aircraft or

land vehicles when such aircraft or vehicles

temporarily or accidentally enter the territory of Malta.

(7)

Notwithstanding the provisions of subarticles (3), (4) and

(a) the sale or other form of commercialization of plant

propagation material to a farmer by the holder of the

patent or with his consent for agricultural use implies

authorization for the farmer to use the product of his

harvest for propagation or multiplication by him on his

own farm;

(b) the sale of any other form of commercialization of

PATENTS AND DESIGNS

breeding stock or other animal reproductive material

to a farmer by the holder of the patent or with his

consent implies authorization for the farmer to use the

protected livestock for an agricultural purpose. Such

use includes making the animal or other animal

reproductive material available for the purposes of

pursuing his agricultural activity. Such use does not

include the sale within the framework of or for the

purpose of a commercial reproduction activity.

(8)

(a) Subject to paragraph (b), a patent shall also confer on

its proprietor the right to prevent third parties from

supplying or offering to supply a person, other than a

party entitled to exploit the patented invention, with

means, r elating to an ele m e nt o f th a t in ven ti on ,

essential for carrying out the invention, when the third

party knows, or ought to know in the circumstances,

that those means are suitable and intended for carrying

out that invention. The provision of this paragraph

shall not apply where such means are staple

commercial products and the circumstances of the

supply of such products do not constitute inducement

to infringe the patent.

(b) Persons performing any acts referred to in subarticle

(6)( b ), ( c ), ( d ), ( e ), ( f ) and ( g ) of shall not be

considered to be parties entitled to exploit the

invention within the meaning of the preceding

paragraph.

(9)

(a) The propagation of a patent shall have no right to

prevent third parties from performing acts referred to

in subarticles (1)(b) and (2)(b) where the act concerns

a product which has been put on the market by the

proprietor of the patent, or with his express consent,

insofar as such as act is performed after that product

has been so put on the market.

(b) The protection referred to in subarticles (3), (4) and (5)

shall not extend to biological material obtained form

the propagation or multiplication of biological material

placed on the market by the holder of a patent or with

his consent where the multiplication or propagation

necessarily results from the application for which the

biological material was marketed

Provided that the material obtained is not

subsequently used for other propagation or

multiplication.

(c) For the purposes of this subarticle "market" means the

market in Malta and from 1st May, 2004, the European

Union.

(10) The Minister may make regulations giving effect to any

international agreement or obligation entered into by Malta with

regard to matters covered by this article and may by such

regulations regulate the above rights and limitations to reflect the

provisions of any such agreement or obligation.

(1) A patent application shall, where published under

article 23, provisionally confer upon the applicant from the date of

such publication the same rights in respect of the subject matter of

the application as are conferred by article 27 in respect of the

subject-matter of a patent.

(2) A patent application shall be deemed never to have had the

effects set out in subarticle (1) if it is withdrawn, or deemed to be

withdrawn or finally refused.

(1) A patent shall have no effect against any person who in

good faith, for the purposes of his enterprise or business, before the

filing date, or, where priority is claimed, before the priority date of

the application on which the patent is granted, and within Malta

was using the invention or was making effective and serious

preparations for such use. Any such person shall have the right, for

the purposes of his enterprise or business, to continue such use or

to use the invention as envisaged in such preparations.

(2) The right of the prior user may only be transferred or may

only devolve together with his enterprise or business, or with that

part of his enterprise or business in which the use or preparations

for use have been made.

(1) The extent of the protection conferred by the patent

shall be determined by the claims, which are to be interpreted in the

light of the description and drawings so as to combine fair

protection for the proprietor of the patent with a reasonable degree

of certainty for third parties.

(2) For the purposes of determining the extent of protection

and in accordance with such regulations as may be prescribed, due

account shall be taken of elements which at the time of any alleged

infringement are equivalent to the elements as expressed in the

claims.

(3) For the period up to the grant of the patent, the extent of

the protection conferred by a patent application shall be determined

by the latest filed claims contained in the publication under article

25. However, the patent as granted or as amended in invalidation

proceedings shall determine retroactively the protection conferred

by the patent application, in so far as such protection is not thereby

extended.

(4) In determining the extent of protection, due account shall

be taken of any statement unambiguously limiting the scope of the

claims made by the applicant or the proprietor of the patent during

procedures concerning the grant or the validity of the patent.

(5) If the patent contains examples of the embodiment of the

invention or examples of the functions or results of the invention,

the claims shall not be interpreted as limited to those examples.

PART IX

ASSIGNMENT OF PATENTS

(1) Any contract assigning a patent application or a patent

shall, on pain of nullity, be made in writing and shall be signed by

the parties to the contract.

(2) 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.

(3) The transfer or assignment of a patent application or patent

shall not affect rights acquired by third parties before the date of

such transfer or assignment and shall have effect vis-à-vis third

parties only after entry thereof is made in the patent register, unless

such third parties having acquired rights after the date of the

transfer or assignment but before its entry into the register knew of

the transfer or assignment at the date on which such rights were

acquired

Provided that where there is a judicial assignment of a

patent by order of the Court under article 32 all licences and other

rights shall lapse upon the registration of the person entitled to the

patent in the patent register except where the former proprietor of

the patent or his licensee, before the institution of the legal

proceedings, acting in good faith, had used the invention or made

effective and serious preparations to do so in which case the former

proprietor of the patent or his licensee may continue to use the

invention provided he requests within the prescribed time a non-

exclusive licence of the patent from the new proprietor whose name

is entered in the patent register.

The non-exclusive licence referred to above shall be

granted for a reasonable period and upon reasonable terms.

If a patent application is filed or a patent is granted to a

person who is not entitled to the patent under article 10 or 11, the

person entitled to it may request the Civil Court, First Hall, within

two years from the date of publication of such application or patent

to order the assignment to him of the patent application or patent

Provided that if the person who is not entitled to a patent

knew at the time when the patent application was filed or granted to

him that he was not entitled to the patent, such period of limitation

shall not apply in his regard.

(1) Where there are joint applicants of a patent

application, each of them may with or without the agreement of the

others separately assign or transfer by succession his share of the

application, but the joint applicants may only act jointly to

withdraw the application or conclude licence contracts with third

parties under the application.

(2) Where there are joint proprietors of a patent, each of them

may with or without the agreement of the others separately assign

or transfer by succession his share of the patent or institute court

proceedings for an infringement of the patent, but the joint owners

may only act jointly to surrender the patent or conclude licence

contracts with third parties under the patent.

(3) The provisions of this article shall be applicable only in the

a b s e n c e o f a n a g r e e m e n t to t h e c o n tr a r y b e t w e e n t he j o i nt

applicants or owners.

(1) The Comptroller shall maintain a patent register in

which patent applications and patents granted shall be recorded.

(2) The patent register shall include such matters constituting

or relating to the patent application or patent as may be prescribed

and entries of all corrections, amendments, change in ownership or

other matters that he is empowered or required by or under this Act

to record. No entry shall be made in the register prior to the

publication of the application.

(3) The patent register shall be prima facie evidence of all

matters directed or authorised by or under this law to be entered

therein.

(4) The patent register shall, subject to such regulations as may

be prescribed, be open to public inspection.

PART X

CONTRACTUAL LICENCES AND LICENCES OF RIGHT

(1) A patent application or patent may be licensed in

whole or in part for the whole or part of Malta. A licence may be

exclusive or non-exclusive.

(2) A licence contract shall in pain of nullity be made in

writing and shall be signed by the parties to the contract. For the

purposes of this law, "licence contract" means any contract by

wh ic h a pa rt y ("t h e licensor" ) allows t he o t he r p ar ty ( "t h e

licensee") to perform any of the acts referred to in article 27 in

respect of an invention claimed in a patent or a patent application.

(3) A licence may be recorded in the patent register on payment

of the prescribed fee. Article 31(3) shall apply mutatis mutandis to

the grant or transfer of a licence.

(1) In the absence of any provision to the contrary in the

licence contract, the agreement given by the licensor to the licensee

shall extend to the performance in respect of the invention of all the

acts referred to in article 27 without limitation as to time, in the

entire territory of Malta, and through any application of the

invention.

(2) In the absence of any provisions to the contrary in the

licence contract, the licensee may not allow a third person to

perform in respect of the invention any of the acts referred to in

article 27.

(1) In the absence of any provision to the contrary in the

licence contract, the licensor may allow a third person to perform in

respect of the invention any of the acts referred to in article 27 and

shall not be prevented from performing them himself.

(2)

If the licence contract provides that the licence is exclusive,

and unless it is expressly provided otherwise in the licence

contract, the licensor may neither allow a third party to perform nor

perform himself in respect of the invention any of the acts referred

to in article 27 which are covered by the said contract.

(1) Where the proprietor of a patent files a written

statement with the Office of the Comptroller that he is prepared to

allow any person to use the invention as a licensee in return for

appropriate compensation, the maintenance fees which fall due

after receipt of the statement shall be reduced as may by

regulations be prescribed.

(2) If no one has informed the proprietor of the patent of his

intention to use the invention, the statement may be withdrawn at

any time upon written notification to this effect to the Office of the

Comptroller

Provided that the statement shall be deemed to be

withdrawn when following a judicial assignment of a patent by

order of the Court under article 32 the name of the person entitled

to the patent is entered in the patent register.

(3) The statement may not be filed as long as an exclusive

licence is recorded in the patent register.

(4) On the basis of the statement, any person shall be entitled

to use the invention as a licensee under such conditions as may by

regulations be laid down. Any licence so obtained shall be treated

as a contractual licence.

(5) No request for recording an exclusive licence in the patent

register shall be admissible after the statement has been filed,

u nless t he sa id st atem ent is wit hdrawn or b e de emed to be

withdrawn.

PART XI

NON-VOLUNTARY LICENCES AND

GOVERNMENT EXPLOITATION

(1) The Civil Court, First Hall, may, on a sworn

application filed by any person who proves his ability to work the

patented invention in Malta, made after the expiration of a period

of four years from the date of filing the application for the patent or

three years from the grant of the patent, whichever is later, direct

the Comptroller to grant a non-exclusive, non-voluntary licence if

the patented invention is not worked or is insufficiently worked in

Malta.

(2) The grant of the non-voluntary licence shall be subject to

the payment of such equitable remuneration to the proprietor of the

patent as may be determined by the Civil Court, First Hall, and may

be permitted if, prior to the institution of such proceedings, the

proposed user has made efforts to obtain authorization from the

right holder on reasonable commercial terms and conditions and if

such efforts have not been successful within a reasonable period of

time.

(3) Notwithstanding subarticle (1), a non-voluntary licence

shall not be granted if the Court is convinced that circumstances

exist which justify the non-working or insufficient working of the

patented invention in Malta.

(4) In deciding whether to grant a non-voluntary licence, the

Court shall give both the proprietor of the patent and the person

requesting the non-voluntary licence an adequate opportunity to

present arguments according to the provisions of the Code of

Organization and Civil Procedure.

(5) Any non-voluntary licence shall be revoked when the

circumstances which led to its granting cease to exist, taking into

account the legitimate interests of the proprietor of the patent and

of the licensee. The continued existence of these circumstances

shall be reviewed upon the request of the proprietor of the patent by

sworn application before the Civil Court, First Hall.

(6) Article 27(3)(a) of this Act shall be interpreted in the sense

that if the patented product is put on the market by a licensee

pursuant to a non-voluntary licence, it will not be deemed to have

been put on the market with the express consent of the proprietor of

the patent.

(7) The scope and duration of a non-voluntary licence shall be

limited to the purpose for which it was authorised and shall be

(a) non-exclusive,

(b) non-assignable, except with that part of the enterprise

or goodwill which enjoys such authorisation,

(c) terminated if and when the circumstances which led to

it cease to exist, and

(d) predominantly for the supply of the domestic market.

(8) The Civil Court, First Hall, may on a sworn application

filed by the owner of a patent (the second patent) which cannot be

exploited without infringing an earlier patent (the first patent),

direct the Comptroller to grant a non-exclusive, non-voluntary

licence provided that

(i)

the invention claimed in the second patent shall

involved an important technical advance of

considerable economic significance in relation

to the invention claimed in the first patent;

(ii) the owner of the first patent shall be entitled to a

cross-licence on reasonable terms to sue the

invention claimed in the second patent; and

(iii) the use authorised in respect of the first patent

shall be non-assignable except with the

assignment of the second patent.

(9) Where a breeder cannot acquire plant variety protection or

exploit a plant variety without infringing a prior patent, he may

apply to the Civil Court, First Hall, for a compulsory licence for

non-exclusive use of the invention protected by the patent in so far

as the licence is necessary for the exploitation of the plant variety

to be protected, subject to payment of an appropriate royalty.

Where such a licence is granted, the holder of the patent will be

entitled to a cross-licence on reasonable terms to use the protected

variety

Provided that an applicant for a licence referred to in above

shall demonstrate that

(a) he had applied unsuccessfully to the holder of the prior

patent to obtain a contractual licence;

(b) the plant variety constitutes significant technical

progress of considerable economic interest compared

with the invention claimed in the prior patent.

(10) Where the holder of a patent concerning a biotechnological

invention cannot exploit it without infringing a prior plant variety

right, he may apply for a compulsory licence for non-exclusive use

of the plant variety protected by that right, subject to payment of an

appropriate royalty. Where such a licence is granted, the holder of

the variety right will be entitled to a cross-licence on reasonable

terms to use the protected invention

Provided that an applicant for a licence referred to in above

shall demonstrate that

(a) he had applied unsuccessfully to the holder of the prior

plant variety right to obtain a contractual licence;

(b) the invention constitutes significant technical progress

of considerable economic interest compared with the

plant variety protected by the prior plant variety right.

(11) With regard to plant variety protection subarticles (9) and

(10) shall only come into force when the relevant form of plant

variety protection comes into force as provided in article 4(5)(e).

(1) Where the national security or public safety so

requires, the Minister may authorise, even without the agreement of

the proprietor of the patent or the patent application, by notice

published in the prescribed form, a Government agency or a person

designated in the said notice to make, use or sell an invention to

which a patent or an application for a patent relates, subject to

payment of equitable remuneration to the proprietor of the patent or

the application for the patent.

(2) The conditions set out in article 39(7) and (8) shall also

apply in respect of an authorisation issued by the Minister under

this article.

(3) Any decision taken by the Minister under this article may

be the subject of an appeal in an action by sworn application before

the Civil Court, First Hall.

PART XII

AMENDMENTS, SURRENDER AND INVALIDATION

(1) The proprietor of a patent shall, in accordance with

such regulations as may be prescribed, have the right to request the

Comptroller to make changes in the patent in order to limit the

extent of the protection conferred by it.

(2) The proprietor of a patent shall have the right to request the

Comptroller to make changes in the patent in order to correct

mistakes or clerical errors, made in good faith.

(3) No such change in the patent may go beyond what has been

disclosed in the application as filed.

(4) Where the Comptroller makes changes in a patent he shall

publish the changes and the extent thereof and shall record them in

the patent register.

(1) The proprietor of a patent may surrender the patent in

its entirety by written declaration submitted to the Office of the

Comptroller. Such surrender shall not have effect until it is entered

in the patent register.

(2) A surrender will be entered in the patent register only with

the agreement of any third party who has a right in rem recorded in

the register or has instituted proceedings under article 32. If a

licence is recorded in the register such surrender will only be

entered if the proprietor of the patent proves to the satisfaction of

the Comptroller that he has previously informed the licensee of his

intention to surrender.

(1) A patent shall lapse

(a) at the end of the term laid down in article 26;

(b) if the proprietor of the patent surrenders it, on the date

when surrender takes effect;

(c) if a maintenance fee and any surcharge have not been

paid in due time, on the date when the maintenance fee

was due;

(d) if the extent of the protection has been limited under

article 41, to the extent that the patent is not

maintained, on the date when the limitation is entered

in the patent register.

(2) The Office of the Comptroller shall record any lapse of the

patent in the patent register.

(1) Any person who wishes that a patent be revoked may,

after publication of the grant of the patent, file a notice for

revocation either with the Comptroller or before the Patents

Tribunal.

(2) A notice for revocation of a patent filed with the

Comptroller may only be made

(a) where the patent concerns an invention in respect of

which, before the filing date or, where priority is

claimed, before the priority date of the application of

said patent, there already exists a published patent; or

(b) in respect of a patent where there is a priority claim,

on the grounds that -

(i)

the application for a patent on the basis of which

priority was 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

PATENTS AND DESIGNS

filed with the Comptroller; and

(ii) the application on the basis of which priority

was claimed or the resulting patent were

published by the other Patent Office referred to

in sub-paragraph (i) before the filing date of the

application of the patent in respect of which a

notice for revocation has been filed with the

Comptroller

Provided that both the grounds in sub-paragraph (i) and

sub-paragraph (ii) are cited in the case of a notice for revocation

filed under paragraph (b).

(3) A notice for revocation on the above grounds may not be

filed with the Patents Tribunal if it has already been filed before the

Comptroller and vice versa.

(4) A notice for revocation filed directly before the Patents

Tribunal may only be based on the following grounds

(a) that the subject matter of the patent is not patentable

within the terms of articles 4 to 7;

(b) that 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 as stipulated

in article 15;

(c) that the right to the patent does not belong to the

person to whom the patent was granted within the

terms of articles 10 and 11;

(d) that 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 as filed subject to any action

carried out under articles 20 and 41; and

(e) that the protection conferred by the patent has been

extended by an amendment which should not have

been allowed.

(5)

A notice of revocation shall include

(a) detailed grounds on the basis of which the revocation

of the patent is being sought;

(b) a request for the patent to be revoked.

(6) A notice for revocation before the Comptroller or the

Tribunal shall be accompanied by the prescribed fee where such a

fee has been prescribed and -

(a) in the case of a notice of revocation filed on the basis

of sub-article (2)(a), it shall also be accompanied by a

certified copy of the published patent referred to in

that paragraph;

(b) in the case of a notice of revocation filed on the basis

of sub-articles (2)(b) and (4)(a) to (e), it is

accompanied by certified copies of documentation

substantiating the grounds referred to in the said

paragraphs.

(7) Non-compliance with any of the above requirements shall

render the notice for revocation inadmissible.

(8) If the grounds for revocation affect the patent only in part,

any revocation pronounced shall be in the form of a corresponding

limitation of the patent.

(9) A patent and the application on which it is based shall, to

the extent that the patent has been revoked, be deemed to have been

invalidated and never to have had the effects referred to in articles

27 and 28

Provided that this shall not affect

(a) any decision on infringement which has become final

and has been enforced prior to the decision of

revocation; or

(b) any contract concluded prior to the decision of

revocation, in so far as it has been performed before

that decision, subject to the right on grounds of equity

of repayment to an extent justified by the

circumstances, of sums paid under the relevant

contract.

(1) In the case of a notice of revocation filed with the

Comptroller, the latter shall as soon as possible on receipt of said

notice and the prescribed fee, if such fee is applicable, forward the

notice to the owner of the patent in question at the address of

service in Malta and shall inform him that within ninety days from

the date of service to him of the notice of revocation he is to file a

reply indicating clearly whether he accepts that his patent be

revoked

Provided that, if it appears that the owner of the patent upon

whom such a notice of revocation is to be served, is abroad, or that

access to his place of service in Malta cannot be obtained, or that

his place of service in Malta is not known, the Comptroller may

cause without delay a summary of the notice of revocation to be

published as may be prescribed. Service shall be deemed to have

been made on the third working day after the date of publication.

The Comptroller may also adopt such other measures as he may

deem fit to serve the owner of the patent with the notice of

revocation.

(2)

The reply to the Comptroller shall include

(a) a clear indication of whether or not the owner of the

patent is in agreement with the notice for revocation;

(b) if the owner of the patent is not in agreement with the

notice for revocation, detailed grounds upon which he

is basing his disagreement accompanied by certified

copies of documentation to which reference is being

made.

(3) Non-compliance with the deadline given by the

Comptroller or the above requirements shall render the reply

inadmissible.

(4) The Comptroller shall initiate proceedings before an arbiter

to determine the case brought before him after ninety days from the

date of service by him of the notice for revocation to the owner of

the patent

Provided that if the owner of the patent informs the

Comptroller in writing that he accepts the notice for revocation, the

Comptroller shall revoke the application for the patent

Provided further that where proceedings are initiated before

an arbiter, the arbiter shall give his decision within six months from

the date of initiation of the said proceedings before him, and in the

event that the arbiter does not conclude the said proceedings within

the said time limit of six months the applicant who shall have made

the demand for the revocation of the patent shall have a right to

demand that the proceedings be transferred to the Patents Tribunal.

(5) On the arbiter reaching a decision the Comptroller shall

inform the party requesting the revocation and the patent owner

accordingly.

(6)

(a) The Comptroller shall duly record the arbiter’s

decision and shall as soon as possible publish notice of

the said decision as may be prescribed.

(b) Any party entering an appeal from the decision of the

arbiter shall within ten days from the filing of the said

appeal inform the arbiter of that fact.

(c) The notice referred to in paragraph (a) shall be without

prejudice to any right of appeal from the decision of

the arbiter. Upon a final decision at appeal modifying

or revoking the arbiter’s decision, the Comptroller

shall duly record such decision and publish it as may

be prescribed.

(1) In the case of a notice for revocation filed directly

before the Patents Tribunal, the Tribunal shall, as soon as possible

upon receiving a notice for revocation of a patent, notify the owner

of the patent who shall within ninety days from the date of service

file his reply.

(2) The Patents Tribunal shall hear and determine the case for

revocation as far as possible within nine months from the date of

the institution of the case.

(3)

The Patents Tribunal shall regulate its own procedure.

(1) Any person who wishes that a priority claim be

revoked may, after publication of the grant of the patent, file a

notice for revocation with the Comptroller.

(2) A notice of revocation of a priority claim may only be filed

on the basis that the application for a patent on whose account

priority was claimed, was originally filed 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 Comptroller

Provided that a notice of revocation of a priority claim may

only be filed before the Comptroller.

(3)

A notice for revocation of a priority claim shall include

(a) detailed grounds on the basis of which the revocation

of the priority claim is being sought, incorporating

references to relevant documentation; and

(b) a request for the priority claim to be refused.

(4) A notice for revocation of a priority claim shall be

accompanied by the prescribed fee, where such a fee has been

prescribed, and certified copies of any documentation to which

reference has been made pursuant to sub-article (3)(a).

(5) Non-compliance with any of the above requirements shall

render the notice for revocation of a priority claim inadmissible.

(1) On receipt of a notice for revocation of a priority

claim the Comptroller shall, as soon as possible on receipt of the

said notice and, if applicable, the prescribed fee, forward the notice

to the proprietor of the patent in question at his address of service

in Malta and shall inform him that within ninety days from the date

of service to him of the notice for revocation of a priority claim he

may file a reply indicating clearly whether or not he accepts that

the priority claim in question be revoked

Provided that if it appears that the proprietor of the patent

upon whom such a notice for revocation of a priority claim is to be

served is abroad, or that access to his place of service in Malta

cannot be obtained, or his place of service in Malta is not known,

the Comptroller may cause without any delay a summary of the

notice for revocation of a priority claim to be published as may be

prescribed. In such cases, service shall be deemed to have been

made on the third working day after publication. The Comptroller

may also adopt such other measures as he may deem fit to serve the

proprietor of the patent with the notice for revocation of a priority

claim.

(2)

The reply to the Comptroller shall include

(a) a clear indication of whether or not the owner of the

patent is in agreement with the notice for revocation;

(b) if the proprietor is not in agreement with the notice for

revocation, detailed grounds upon which he is basing

his disagreement accompanied by certified copies of

documentation to which reference is being made.

(3) Non-compliance with the deadline given by the

Comptroller, or with the above requirements, shall render the reply

inadmissible.

(4) The Comptroller shall initiate proceedings before an arbiter

to determine the case brought before him after ninety days from the

date of service by him of the notice for revocation of a priority

claim to the owner of the patent

Provided that if the proprietor informs the Comptroller in

writing that he accepts the notice of revocation, the Comptroller

shall refuse the priority claim

Provided further that where proceedings are initiated before

an arbiter, the arbiter shall give his decision within six months from

the date of initiation of the said proceedings before him, and in the

event that the arbiter does not conclude the said proceedings within

the said time limit of six months the applicant who shall have made

the demand for the revocation of the claim for priority shall have a

right to demand that the proceedings be transferred to the Patents

Tribunal.

(5) On reaching a decision the Comptroller shall inform the

person who submitted the notice of revocation, and the owner of

the patent accordingly.

(6)

(a) The Comptroller shall duly record the arbiter’s

decision and shall as soon as possible publish notice of

the said decision as may be prescribed.

(b) Any party entering an appeal from the decision of the

arbiter shall within ten days from the filing of the said

appeal inform the Comptroller of that fact.

(c) The notice referred to in paragraph (a) shall be without

prejudice to any right of appeal from the decision of

the arbiter. Upon a final decision at appeal modifying

or revoking the arbiter’s decision, the Comptroller

shall duly record such decision and publish it as may

be prescribed.

(1) An action to revoke a patent may be taken even if the

patent has lapsed.

(2) When a decision to revoke a patent, in whole or in part,

becomes final before the Patents Tribunal, the Tribunal shall notify

the office of the Comptroller which shall as soon as possible record

the decision in the patent register and publish such decision as may

be prescribed.

(3) When a decision to revoke a patent, in whole or in part, is

taken by the arbiter, the Comptroller shall as soon as possible

record the decision in the patent register and publish such decision

as may be prescribed.

PART XIII

RE-ESTABLISHMENT OF RIGHTS

(1) The applicant for or proprietor of a patent who,

notwithstanding having taken all due care required by the

circumstances, was unable to observe a time limit set by the

Comptroller shall, upon his request, have his rights re-established

if the non-observance in question has the direct consequence of

causing the refusal of the patent application, or the refusal of a

request, or the lapse of the patent, or the loss of any other right or

means of redress.

(2) The request shall be filed in writing within two months

from the removal of the cause of non-compliance with the time

limit or within the year immediately following the expiry of the

unobserved time limit, whichever is the earlier, after the omitted

Act has been completed. In the case of non-payment of a

maintenance fee, the period specified in article 26(3) shall be

deducted from the period of one year.

(3) The request shall state the grounds on which it is based,

and shall set out the facts on which it relies. It shall not be deemed

to have been fi led until after the prescribed fee for the re-

establishment of the rights in question has been paid.

(4) This article shall not apply to the time limits referred to in

subarticle (2) of this article and in article 22.

(5) The decision to re-establish any rights under subarticle (1)

shall be recorded in the patent register.

(6) Any person who in good faith has used or made effective

and serious preparations for using an invention which is the subject

of a published patent application or a patent in the course of the

period between the loss of rights referred to in subarticle (1) and

the publication of the decision to re-establish such rights, may

without payment continue such use in the course of his business or

for the needs thereof.

PART XIV

INFRINGEMENT - CIVIL ACTIONS

(1) Any person who in contravention to article 27 exploits

an invention which is the subject-matter of a patent or patent

application shall be liable in damages towards the proprietor of the

patent or of a patent application or the licensee.

(2) The application to sue for damages under sub-article (1)

may be made before the Patents Tribunal without prejudice to the

right of such person to apply for the issue of any precautionary

warrant as provi ded i n the Cod e of Organizatio n and Civ il

Procedure to protect his rights.

(3) The Patents Tribunal may, moreover, on the demand of the

plaintiff, order that the machinery or other industrial means or

contrivances used in contravention of the patent, the infringing

articles, and the apparatus destined for their production, be

forfeited, wholly or partially, and delivered up to the proprietor of

the patent or of the patent application, without prejudice to the

relief mentioned in this article.

(1) Infringement proceedings shall be brought before the

Patents Tribunal and may not be instituted after five years from the

date when the injured party has obtained knowledge of the

infringement and of the identity of the alleged infringer.

(2) Where the subject-matter of the patent or the patent

application is a process for obtaining a new product, the same

product when produced by any other party shall, in the absence of

proof to the contrary, be deemed to have been obtained by the

patented process or the process contained in the patent application.

In the assessment of any proof to the contrary by the defendant, the

legitimate interests of the defendant in protecting his

manufacturing and business secrets shall be taken into account by

the Patents Tribunal.

(3)

The Patents Tribunal shall stay any proceedings for

infringement in respect of -

(a) a patent application filed with the Comptroller until

after a final decision has been made by the

Comptroller to grant or refuse a patent on the

application;

(b) a patent application filed at the EPO until after a final

decision has been made by the EPO to grant or refuse a

patent on the application.

(4) The defendant in any proceedings referred to in this article

may, in the same proceedings, request the revocation of the patent

on any of the grounds referred to in article 44. In any such case, the

Comptroller shall be made a party to the proceedings.

(1) Subject to subarticle (4), any interested person shall

have the right to request, by instituting proceedings against the

proprietor of the patent or of the patent application, that the Patents

Tribunal declare that the performance of a specific act does not

constitute an infringement of the patent.

(2) If the person making the request proves that the act in

question does not constitute an infringement of the patent, the

Tribunal shall grant a declaration of non-infringement.

(3) The proprietor of the patent or of the patent application

shall notify any licensees of the proceedings. The licensees shall

have the right to join in the proceedings in the absence of any

provision to the contrary in the licence contract.

(4) If the act in question is already the subject of infringement

proceedings, the defendant in the infringement proceedings may

not institute proceedings for a declaration of non-infringement.

(5) Save where revocation is requested under article 48(4),

proceedings for a declaration of non-infringement may be instituted

together with proceedings to revoke the patent.

PART XV

INFRINGEMENTS - CRIMINAL ACTIONS

(1) Whoever puts into circulation, or sells any article,

falsely representing that it is a patented article shall, on conviction,

be liable to a fine (multa) of not less than two hundred and thirty-

two euro and ninety-four cents (232.94) and not more than eleven

thousand and six hundred and forty-six euro and eighty-seven cents

(11,646.87).

(2) If any person puts into circulation or sells an article having

stamped, engraved or impressed thereon or otherwise applied

thereto the word "patent", "patented", or any other word expressing

or implying that a patent has been obtained for the article, he shall

be deemed for the purpose of this article to represent that the article

is a patented article.

If the owner of any goods or things, which, if he were

convicted of any of the offences referred to in this Part, would be

liable to forfeiture, is unknown or cannot be found, any Magistrate

if he is satisfied on information on oath that such goods or things

by means of which an offence under this Part has been committed

are in any house or premises, and that the offender is unknown or

cannot be found, may by warrant under his hand direct any officer

of the Executive Police to be named in the warrant, to enter any

house, premises or place so named therein, and there to search for,

seize and remove such goods or things.

The goods and things so seized shall be produced before

the Court of Magistrates sitting as a Court of criminal judicature,

and such Court shall determine whether they are liable to forfeiture

under this Act.

(1) In the case referred to in article 51 the Court shall

order the issue of banns which shall be published twice, with an

interval for at least eight days, in the Government Gazette, and

posted up at the entrance of the building wherein the court sits, and

in any other place which the court may deem fit, stating that the

goods or things seized shall be forfeited, unless at the time and

place named in the banns the proprietor of such goods or things or

other person interested in such goods or things attends before the

court and shows cause to the contrary.

(2) If the owner or any person on his behalf, or other person

interested in the said goods or things, fails to attend at the time and

place named in the banns to show cause to the contrary, it shall be

lawful for the Court to direct that such goods or things or any of

them be forfeited.

The Court may direct that the goods or things so forfeited

be destroyed or disposed of, and may also direct that, out of the net

proceeds which may be realised by the disposal of such goods or

things and up to the amount thereof, any persons who, being in

good faith, were injured by the forfeiture, be awarded

compensation for any loss caused to them.

Criminal actions under this Act shall be barred by the lapse

of three years from the day on which the act constituting the

offence was committed, if the person to whose prejudice the act

was committed, had no previous knowledge thereof; in all other

cases the period of limitation shall be one year from the day on

which such person became aware of that act.

The provisions of article 50 to article 55 shall apply

without prejudice to the payment of damages to persons entitled

thereto.

No proceedings shall be instituted against any person in the

service of another person, if, in good faith, he has acted in

obedience to the instructions of his employer, and, on being

questioned by Police, gives full information as to his employer and

all other particulars of the case.

PART XVI

RIGHT OF APPEAL

(1) An appeal, which shall have suspensive effect, may be

made from a de cision of t he C omptroller or the arbiter, as

applicable, where the decision consists of

(a) a refusal of a patent, in which case the appeal may be

made only by the applicant;

(b) a refusal of a notice for revocation of a patent, in

which case the appeal may be made only by the person

filing the notice;

(c) an acceptance of a notice for revocation of a patent, in

which case the appeal may be made only by the

proprietor of the patent;

(d) a refusal of a notice of revocation of a priority claim,

in which case the appeal may be made only by the

person filing the notice;

(e) an acceptance of a notice of revocation of a priority

claim, in which case the appeal may be made only by

the proprietor of the patent;

(f)

a refusal of an application for the re-establishment of

rights, in which case the appeal may be made only by

the proprietor of the patent;

(g) a refusal of any other request of the patent applicant or

patent proprietor, in which case the appeal may be

made only by the patent applicant or patent proprietor

respectively.

(2) The appeal referred to in sub-article (1) may only be made

in the Court of Appeal within thirty days of the date of service of

the decision of the Comptroller.

(3) In the case of revocation proceedings initiated directly with

the Patents Tribunal in accordance with article 44, any party to the

proceedings that feels aggrieved by the decision of the Patents

Tribunal may appeal to the Court of Appeal on points of law only

by means of an application filed in the registry of that court within

thirty days from the date of the decision of the Patents Tribunal.

(4) The Court of Appeal shall be constituted in accordance

with article 41(9) of the Code of Organization and Civil Procedure.

(5) The Rule-Making Board established under article 29 of the

Code o f Org ani zatio n and Civil Pro cedure may m ake rules

governing appeals to the Court of Appeal under this Act.

(6) The Court of Appeal may, in regard to costs, make an order

in accordance with the provisions of article 223 of the Code of

Organization and Civil Procedure.

PART XVIA *

THE PATENTS TRIBUNAL

(1) There shall be a Tribunal to be known as the Patents

Tribunal, which shall have jurisdiction to hear and determine

claims concerning claims for the revocation of a patent, civil claims

for infringement, applications for declarations of non-infringement

*in the amendment introduced by Act XXX. 2014.18., this Part was erroneously

introduced as Part XVIIA rather than Part XVIA.

and precautionary actions related to the above, provided that claims

for damages arising from any infringement shall continue to be

determined by the Civil Court, First Hall.

(2) The Patents Tribunal shall be appointed by the Prime

Minister and shall consist of a chairman, who shall be a Judge or a

Magistrate, and two other members.

(3) Decisions of the Patents Tribunal shall be delivered by the

chairman and shall be taken by simple majority so however that it

shall be necessary that the chairman shall be part of that majority.

(4) The chairman and members of the Patents Tribunal shall be

appointed for a term of three years and shall be eligible for re-

appointment.

(5) The Patents Tribunal shall be independent and shall not act

under the direction or control of any other person in the

performance of its functions.

(6) The Patents Tribunal shall for the purposes of conducting

its proceedings have the same powers as are granted to the Civil

Court, First Hall, by or under the Code of Organization and Civil

Procedure. In determining any application filed before it, the

Patents Tribunal shall give an opportunity to all parties concerned

to put forward their evidence and submissions and it may also order

the production of any additional expert evidence and secure expert

opinion as it may consider necessary. In its decision, the Patents

Tribunal shall also decide upon responsibility for the payment of

any costs incurred in the proceedings, including the cost of expert

evidence or searches or opinions.

(7) The chairman and members of the Patents Tribunal may be

challenged or abstain for any of the reasons for which a judge may

be challenged or may abstain in accordance with the Code of

Organization and Civil Procedure. In such case, the Prime Minister

shall appoint a person having the same qualifications as those of

the chairman or member challenged or abstaining, to sit in

substitution.

(8) A member of the House of Representatives, or of the

European Parliament, or of a local council, shall be disqualified

from being appointed or continuing to be a member of the Patents

Tribunal for as long as such member holds that office.

(9) The chairman or member of the Patents Tribunal may only

be removed from office by the Prime Minister on grounds of gross

negligence, conflict of interest, incompetence, or acts or omissions

unbecoming of a member of the Patents Tribunal. In doing so, the

Prime Minister shall lay before the House of Representatives a

statement giving the reasons for the removal of the said chairman

or member.

(10) The chairman or a member of the Patents Tribunal shall, for

a period of one year following the termination, for whatever reason,

of his appointment, not engage in any activity which, because of

conflict of interest, would have been incompatible with the exercise

of his functions. Any person who acts in breach of the provisions of

this sub-article shall be guilty of an offence against this Act and

shall, on conviction, be liable to a fine (multa) of not more than two

thousand and five hundred euro (€2,500) and shall be barred from

being appointed to any similar posts for a period of not less than ten

years.

(11) The Prime Minister shall designate a person to serve as

secretary to the Patents Tribunal, who shall serve in such capacity

in accordance with the ethical standards appropriate to his position.

(12) The Prime Minister shall appoint an advocate or a legal

procurator to assist the Patents Tribunal.

(13) The registry of the Civil Court, First Hall, shall be the

registry of the Patents Tribunal.

(14) The Minister responsible for justice may, by regulations

under this article, establish the fees payable in the registry of the

court in relation to the filing of judicial acts in connection with

proceedings under this article and article 23A

Provided that until such fees are so established, the fees in

Schedule A of the Code of Organization and Civil Procedure shall

apply.

(15) The Board established under article 29 of the Code of

Organization and Civil Procedure may make Rules of Court

governing proceedings before the Patents Tribunal.

(1) For the purposes of this Act, the Minister may appoint

one or more persons to serve as arbiters in cases that may be

referred to them from time to time, sohowever that

(a) in all cases the person so appointed shall have held a

warrant to practise the profession of advocate in Malta

for at least seven years; and

(b) the appointment shall be for a period of three years and

may be renewed.

(2) The arbiter shall, before entering upon his duties, take an

oath of office before the Attorney General in the form approved by

the Minister.

(3)

(a) The arbiter shall have the power to take expert advice

when necessary, at his discretion, and to summon any

person to appear before him to give evidence on oath

and, or to produce documents; and for these purposes

he shall have the powers which are conferred by law on

the First Hall of the Civil Court.

(b) Every summons shall be signed by the arbiter and shall

be served either personally or by registered post, and

in the latter case, in proving service, it shall be

sufficient to prove that the summons was properly

addressed and posted.

(4) The Comptroller or his representative shall be entitled to

appear and be heard in any proceedings before the arbiter.

(5) The arbiter shall abstain from taking cognizance of a case

or may be challenged in any of the circumstances in which a judge

would abstain or can be challenged in accordance wi th the

provisions of article 734 of the Code of Organization and Civil

Procedure and in every such case the provisions of Sub-Title II of

Title II of Book Third of that Code shall apply so far as applicable.

(6) The arbiter shall have jurisdiction to hear and determine

claims made in terms of article 44(2).

The Comptroller, the arbiter and the chairman and members

of the Patents Tribunal shall not be held liable for any act or

omission done in good faith in the course of the exercise of their

functions under this Act.

PART XVII

MISCELLANEOUS

(1) The Minister may from time to time make regulations

not inconsistent with this Act prescribing all matters which by this

Act are required or permitted to be prescribed or which are

necessary or desirable to be prescribed for carrying out or giving

effect to this Act, or for the conduct of any business relating to the

Office of the Comptroller including the fees payable to the

Government as may be prescribed under this Act.

(2) The Minister may also make regulations giving effect in

Malta to the provisions of an international or regional patent

registration instrument or any related agreements to which Malta

becomes a party.

Without prejudice to any provision of this Act granting the

Minister the power to make regulations, the Minister may, subject to

the provisions of the Exclusive Economic Zone Act, from time to

time, make, amend, substitute or repeal regulations for the purpose of

regulating, prescribing or otherwise providing for any matters

regulated by or under this Act or by or under any subsidiary legislation

made thereunder, in respect of an exclusive economic zone area or an

environment protection area as defined in the Exclusive Economic

Zone Act or any activities therein including, but not limited, to the

applicability or otherwise of this Act and, or of any subsidiary

legislation made thereunder.

The Minister responsible for justice may by regulations

establish fees payable in the registries of the Courts of Malta and

Gozo for the filing of appeals before the Court of Appeal under this

Act, and until such fees are established the tariff or registry fees

annexed to the Code of Organization and Civil Procedure shall

apply.

(1) Where by this Act any act has to be done by or to any

person in connection with any proceeding or matter under this Act,

the act may under and in accordance with the regulations be done

by or to an agent of that person duly authorised in the prescribed

manner.

(2) Where an applicant does not have his ordinary residence or

principal place of business in Malta, he shall authorise in the

prescribed manner an agent who has his ordinary residence or

principal place of business in Malta, to represent him

Provided that this subarticle shall not apply as from the 1st

May 2003 in respect of an applicant who has his ordinary residence

or principal place of business in any Member State.

(1)

Part I of the Industrial Property (Protection)

Ordinance (hereinafter in this article called "the repealed law") and

every reference to patents in Part IV, Part V and Part VI thereof are

hereby repealed

Provided article 17 shall remain in force in respect of

d esig ns and t radem arks un til su ch ti me th at th e pro vision s

contained in Part II and Part III are repealed.

(2) Any patent the term of which, upon the coming into force of

this Act, has expired under the Industrial Property (Protection)

Ordinance shall not be reactivated under or by virtue of the

provisions of this Act.

(3) Where an application for the registration of a patent has

been filed before the coming into force of the Act, the provisions of

the Industrial Property (Protection) Ordinance shall,

notwithstanding the repeal of the same by this Act, continue to

apply thereto. Provided that upon the granting of any such patent

the provisions of this Act shall apply thereto.

(4) Where an application for the registration of a patent has

been filed before the coming into force of this Act any registration

of a patent granted pursuant to such an application shall,

notwithstanding any other of the provisions of this Act, be subject

to being deemed null or to being annulled only in accordance with

the provisions of Title V of Part I of the Industrial Property

(Protection) Ordinance as in force before the coming into force of

the Act.

(5) Any patent registered under the Industrial Property

(Protection) Ordinance before the coming into force of this Act, the

term of which has not upon the coming into force of this Act,

lapsed, shall enjoy the term of protection of the duration stipulated

under this Act and shall benefit from any rights granted in respect

of patents under this Act

Provided that in the case of a patent which has been

registered, by virtue of the Industrial Property (Protection)

Ordinance, before the coming into force of this Act and which has

been granted an extension of not more than five years in

accordance with the provisions of Title II of Part I of the same

Ordinance, that patent shall enjoy, from the date of the filing of

application for the patent, the term of protection of the duration

stipulated under this Act and shall benefit from any rights granted

in respect of patents under this Act

Provided further that in the case of a patent which has been

registered, by virtue of the Industrial Property (Protection)

Ordinance, before the coming into force of this Act and which has

been granted an extension of not less than seven years and not more

than fourteen years, in accordance with the provisions of Title II of

Part I of the same Ordinance, that patent shall still benefit from the

extension granted and shall benefit from any rights granted in

respect of patents under this Act

Provided further that in the case of a patent which has

lapsed and which was granted under the Industrial Property

(Protection) Ordinance

(i)

that patent if restored shall, subject to the

payment of the maintenance fees, enjoy the term

of protection stipulated in this Act from the

filing date of the patent application; and

(ii) the provisions contained in article 46 shall apply

when a request for a restoration is made.

(6) Any regulation, order, requirement, certificate, notice,

decision, direction, authorisation, consent, application, request or

thing made, issued, given or done under the repealed law shall, if in

force at the commencement of this Act, insofar as they could have

been made, issued, given or done under this Act, continue in force

and have effect as if made, issued, given or done under the

corresponding provision of this Act.

PART XVIII

INTERPRETATION

(1) In Parts XVIII to XXIV of this Act, unless the context

otherwise requires -

"complex product" means a product which is composed of

multiple replaceable components permitting disassembly and

reassembly of the product;

"Comptroller" means the Comptroller of Industrial Property and

includes any other person appointed or assigned by the Comptroller

to exercise all or any of the powers and perform all or any of the

duties of the Comptroller;

"European Union" means the European Union referred to in the

Treaty;

"designs" means the appearance of the whole or a part of a

product resulting from the features of, in particular, the lines,

contours, colours, shape, texture and, or materials of the product

itself and, or its ornamentation;

"Office" means the office responsible for the registration of

designs in Malta under the provisions of this Act;

"infringement proceedings" in relation to a registered design,

includes proceedings under article 115;

"Locarno Classification" means the Classification contained in

the Locarno Agreement establishing an International Classification

for Industrial Designs, as revised or amended from time to time;

"made available to public" means made available to the public by

the owner of the design or by any other party;

" M e m b e r St a t e " m e a n s a s t a t e w h i c h i s a m em b e r o f t h e

European Union;

"Minister" means the Minister responsible for the protection of

industrial property;

"Paris Convention" means the Paris Convention for the

Protection of Industrial Property of 20 March 1883, as revised or

amended from time to time;

"prescribed" means prescribed by this Act or by any regulations

made thereunder;

"product" means any industrial or handicraft item, other than a

computer program, including inter alia intended to be assembled

into a complex product, packaging, get-up, graphic symbols and

typographic typefaces;

"publish" means make available to the public, and references to

publication in relation to registration, are to publication under

article 95(4);

"register" means the register of designs kept under this Act and

includes the register of designs kept under the Industrial Property

(Protection) Ordinance;

"the Treaty" has the same meaning assigned to it by the European

Union Act.

(2) The provisions of Parts II to XVII of this Act do not apply

to designs which are regulated by Parts XVIII to XXIV of this Act

exclusively.

PART XIX

REGISTRABILITY

A registered design is a property right obtained by the

registration of the design under this Act. The proprietor of a

registered design has the rights and remedies provided by this Act.

(1) Designs shall be protected by registration, and

exclusive rights shall be conferred upon their holders in accordance

with the provisions of this Act.

(2) A design shall be protected by a design right to the extent

that it is new and has individual character.

(3) A design applied to or incorporated in a product which

constitutes a component part of a complex product shall only be

considered to be new and to have individual character

(a) if the component part, once it has been incorporated

into the complex product, remains visible during

normal use of the latter, and

(b) to the extent that those visible features of the

component part fulfil in themselves the requirements

as to novelty and individual character.

(4) The expression "normal use" within the meaning of

subarticle (3)(a) means use by the end user, excluding maintenance,

servicing or repair work.

A design shall be considered new if no identical design has

been made available to the public before the date of filing of the

application for registration or, if priority is claimed, the date of

priority

Provided that designs whose features differ only in

immaterial details shall also be deemed to be identical.

(1) A design shall be considered to have individual

character if the overall impression it produces on the informed user

differs from the overall impression produced on such a user by any

design which has been made available to the public before the date

of filing of the application for registration or, if priority is claimed,

the date of priority.

(2) In assessing individual character, the degree of freedom of

the designer in developing the design shall be taken into

consideration.

(1) For the purpose of applying articles 66 and 67, a

design shall be deemed to have been made available to the public if

it has been published following registration or otherwise, or

exhibited, used in trade or otherwise disclosed, except where these

events could not reasonably have become known in the normal

course of business to the circles specialised in the sector concerned,

and as from the 1st May, 2004, within the European Union before

the date of filing of the application for registration or, if priority is

claimed, the date of priority. The design shall not, however, be

deemed to have been made available to the public because of the

sole reason that it has been disclosed to a third party under explicit

conditions of confidentiality.

(2) A disclosure shall not be taken into consideration for the

purpose of applying articles 66 and 67 if a design for which

protection is claimed has been made available to the public by the

designer, his successor in title, or a third party as a result of

information provided or action taken by the designer, or his

successor in title and such disclosure took place during the twelve-

month period preceding the date of filing of the application or, if

priority is claimed, the date of priority.

(3) Subarticle (2) shall also apply if the design had been made

available to the public as a consequence of an abuse in relation to

the designer or his successor in title.

(1) A right in a registered design shall not subsist in

features of appearance of a product which are solely dictated by its

technical function.

(2) A right in a registered design shall not subsist in features of

appearance of a product which must necessarily be reproduced in

their exact form and dimensions in order to permit the product in

which the design is incorporated or to which it is applied to be

mechanically connected to or placed in, around or against another

product so that either product may perform its function.

(3) Notwithstanding subarticle (2), a right in a registered

design shall, under the conditions set out in articles 66 and 67,

subsist in a design serving the purpose of allowing multiple

assembly or connection of mutually interchangeable products

within a modular system.

A right in a registered design shall not subsist in a design

which is contrary to public policy or to accepted principles of

morality.

(1) The scope of the protection conferred by a right in a

registered design shall include any design which does not produce

on the informed user a different overall impression.

(2) In assessing the scope of protection, the degree of freedom

of the designer in developing his design shall be taken into

consideration.

(1) Upon registration, a design which meets the

requirements of article 65(2) shall be protected by a design right for

a period of five years from the date of filing of the application.

(2) The right holder may have the term of protection renewed

in accordance with article 73 for one or more periods of five years

each, up to a total term of twenty-five years form the date of filing.

(1) The registration of a design may by renewed at the

request of the proprietor, subject to the payment of the prescribed

renewal fee

Provided that the request is made and the fee is paid before

the date of expiry and such action be taken not more than six

months before such date

Provided that the request may be made and the fee paid up

to six months after the date of expiry, in which case any additional

renewal fee as may be prescribed is also paid within that period.

(2) Renewal shall take effect from the expiry of the previous

registration.

(3) If the registration is not renewed in accordance with the

above provisions, the Comptroller shall remove the design from the

register.

A design shall be refused registration

(a) if the design does not fall within the definition of a

design in article 63;

(b) if it consists of or is significantly made up of the

national flag of Malta;

(c) if it contains a representation of the national flag of

Malta and it appears to the Comptroller to be

misleading or offensive;

(d) if it consists of or contains

(i)

the arms, or any of the principal armorial

bearings of the arms appertaining to the

President or to the Roman Catholic Archbishop

of Malta, or any insignia or device so nearly

resembling such arms or any such armorial

bearing as to be likely to be mistaken for them

or it,

(ii) a representation of the Presidential or Episcopal

flags,

(iii) a representation of the President or the

Archbishop, or any colourable imitation thereof,

or

(iv) words, letters or devices likely to lead persons to

think that the applicant either has or recently has

had Presidential or Episcopal patronage or

authorisation,

unless it appears to the Comptroller that consent has

been given by or on behalf of the President or the

Archbishop;

(e) if it is contrary to public policy or accepted principles

of morality; or

(f)

if the applicant for the right in a registered design is

not entitled to it under Maltese law.

(1) The registration of a design shall confer on its holder

the exclusive right to use it and to prevent any third party not

having his consent from using it. The aforementioned use shall

cover, in particular, the making, offering, putting on the market,

importation, export or use of a product in which the design is

incorporated or to which it is applied, or stocking such a product

for such purposes.

(2) Any reference in this Act to the infringement of a registered

design shall be deemed to be a reference to any such infringement

of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of

registration reckoned in accordance with article 95(3)

Provided that -

(a) no infringement proceedings may be begun before the

date on which the design is in fact registered, and

(b) no offence under article 117 shall be committed by

anything done before the date of publication of the

registration.

(1) The rights conferred by the design right upon

registration shall not be exercised in respect of

(a) acts done privately and for non-commercial purposes,

or

(b) acts done for experimental purposes, or

(c) acts of reproduction for the purposes of making

citations or of teaching, provided that such acts are

compatible with fair trade practice and do not unduly

prejudice the normal exploitation of the design, and

that mention is made of the source.

(2) In addition, the right conferred by a design right upon

registration shall not be exercised in respect of

(a) the equipment on ships and aircraft registered in

another country when these temporarily or

accidentally enter the territory of Malta, or

(b) the importation into Malta of spare parts and

accessories for the purpose of repairing such craft, or

(c) the execution of repairs on such craft.

(1) A registered design shall not entitle the proprietor to

prohibit the use of a product in which the design is incorporated or

to which the design is applied when the product has been put on the

market by the proprietor or with his consent

(2)

For the purposes of this article

"the market" means the market in Malta and as from 1st May

2003, the market in another member state; and

"use" includes the offering, selling, buying or export of the

product.

(1) The provisions of Parts XVIII to XXIV of this Act

shall be without prejudice to any other provisions of Maltese law

relating to unregistered design rights, trade marks or other

distinctive signs, patents and utility models, typefaces, civil

liability or unfair competition.

(2) A design protected by a design right registered in

accordance with this Act shall also be eligible for protection under

the Copyright Act, as from the date on which the design was

created or fixed in any form.

A registered design is the personal property of its owner.

(1) Where a registered design is granted to two or more

persons jointly, each of them is entitled, subject to any agreement

to the contrary, to an equal undivided share in the registered design.

(2) The following provisions apply where two or more persons

are co-proprietors of a registered design, by virtue of subarticle (1)

or otherwise.

(3) Subject to any agreement to the contrary, each co-proprietor

is entitled, personally or through his agents, to do for his own

benefit and without the consent of or the need to account to any

other co-proprietor, any act which would otherwise amount to an

infringement of the registered design.

(4) Notwithstanding the provisions of subarticle (3), a co-

proprietor may not without the consent of the other or others -

(a) grant a licence to use the registered design, or

(b) assign or cede control of his share in the registered

design.

(5) Infringement proceedings may be brought by any co-

proprietor, but a co-proprietor may not, with the leave of the Court,

proceed with the action unless the other, or each of the other co-

proprietors, is joined in the suit.

A co-proprietor who is thus joined in the suit shall not be

liable for any costs in the action.

Nothing in this subarticle affects the making of any

precautionary warrant on the application of a single co-proprietor.

(6) Nothing in this article affects the rights and obligations of

trustees or personal representatives, or their rights and obligations

as such.

(1) A registered design is tranmissible by assignment,

testmentary disposition or operation of law in the same way as

other personal or moveable property.

It is so transmissible either in connection with the goodwill

of a business or independently.

(2) An assignment or other transmission of a registered design

may be partial and limited so as to apply in relation to the use of the

design in a particular manner or a particular locality.

(3) An assignment of a registered design is not effective unless

it is in writing signed by or on behalf of the assignor or, as the case

may be, his personal representative.

(4) Nothing in this Act shall be construed as affecting the

assignment or other transmission of an unregistered design as part

of the goodwill of a business.

(1) On application being made to the Comptroller by a

person claiming to be entitled to an interest in or under a registered

design by virtue of a registrable transaction, or any other person

claiming to be affected by such a transaction, the relevant details of

the transaction shall be entered in the register.

(2)

The following are registrable transactions

(a) an assignment of a registered design or any right

therein;

(b) the grant of a licence under a registered design;

(c) the transfer of a registered design by testamentary

disposition;

(d) an order of a Court or other competent authority

transferring a registered design or any right in or under

it.

(3) Until an application has been made for registration of a

registrable transaction -

(a) the transaction is ineffective as against a person

acquiring in good faith a conflicting interest in the

registered design, and

(b) articles 86 or 87 shall not apply in respect of a person

claiming to be a licensee by virtue of the transaction.

(4) Where a person becomes the proprietor or a licensee of a

registered design by virtue of a registrable transaction, he shall not

be entitled to damages or an account of profits in respect of any

infringement of the registered design occurring after the date of the

registrable transaction and before the transaction is registered,

unless

(a) an application for registration of the transaction is

made before the end of the period of six months

beginning with the date of the transaction, or

(b) the Court is satisfied that it was not practicable for

such an application to be made before the end of that

period and that an application was made as soon as

possible thereafter.

The provisions of articles 79 to 82 apply mutatis mutandis

in relation to an application for the registration of a design in the

same manner as they apply in relation to a registered design.

(1) A licence to use a registered design may be general or

limited. A limited licence may, in particular, apply in relation to

use of the design in a particular manner or a particular locality.

(2) Unless the licence provides otherwise, it is binding on a

successor in title to the grantor’s interest, and references in this Act

to doing anything with, or without, the consent of the proprietor of

a registered design shall be construed accordingly.

(3) Where the licence so provides, a sub-licence may be

granted by the licensee; and references in this Act to a licence or

licensee include a sub-licence or sub-licensee.

(1) In Parts XVIII to XXIV of this Act an "exclusive

licence" means a licence (whether general or limited) authorising

the licensee to the exclusions of all other persons, including the

person granting the licence, to use a registered design in the manner

authorised by the licence.

(2) An exclusive licensee has the same rights against a

successor in title who is bound by the licence as he has against the

person granting the licence.

(1) The provisions of this article shall apply with respect

to the rights of a licensee in relation to infringement of a registered

design

Provided that they shall not apply where or to the extent

that, in accordance with article 87(1) an exclusive licensee has a

right to bring proceedings in his own name.

(2) A licensee is entitled, unless his licence provides otherwise,

to call on the proprietor of the registered design to take

infringement proceedings in respect of any matter which affects his

interests.

(3) If the proprietor refuses to do so, or fails to do so within

two months after being called upon the licensee may bring

proceedings in his own name as if he were the proprietor.

(4) Where infringement proceedings are brought by a licensee

by virtue of this article, the proprietor shall be joined in the suit.

(5) In infringement proceedings brought by the proprietor of a

registered design any loss suffered or likely to be suffered by

licenses shall be taken into account by the Court which shall give

such directions as it thinks fit with regard to the disposal and

distribution of any sum awarded as a remedy for the infringement.

(1) An exclusive licence may provide that the licensee

shall have, to such extent as may be provided by the licence, the

same rights and remedies in respect or matters occurring after the

grant of the licence as it the licence had been an assignment.

Where or to the extent that such provision is made, the

licensee shall be entitled, subject to the provisions of the licence

and to the following provisions of this article, to bring infringement

proceedings in his own name against any person other than the

proprietor.

(2) The rights and remedies of an exclusive licensee are

concurrent with those of the proprietor of the registered design; and

references in this Act to the proprietor of a registered design

relating to infringement shall be construed accordingly.

(3) In an action brought by an exclusive licensee under this

article a defendant may avail himself of any defence which would

have been available to him if the action had been brought by the

proprietor of the registered design.

(4) Where proceedings for infringement of registered design

are brought by the proprietor or by the exclusive licensee relating

to an infringement in respect of which they have concurrent right of

action, the proprietor or, as the case may be, the exclusive licensee

who are not the plaintiff shall be jointed in the suit.

(5)

(a) Where an action for infringement of a registered design

relating to an infringement in respect of which the

proprietor and an exclusive licensee have concurrent

right of action is brought -

(i)

the Court shall in assessing damages take into

account the terms of the licence, and any

pecuniary remedy already awarded or available

to either of them in respect of the infringement;

(ii) no account of profits shall be ordered to be made

if an award of damages has been made, or an

account of profits has been ordered, in favour or

either of them in respect of the infringement;

and

(iii) the Court shall, if an account of profits has been

ordered, apportion subject to any agreement

between the proprietor and the exclusive

licensee, the profits between them as the Court

considers just.

(b) The provisions of this subarticle apply whether action

is brought by the proprietor alone, or it is brought by

the proprietor and the exclusive licensee; and if they

are not both parties the Court may give such directions

as it deems fit with regard to the disposal and

distribution of any sum awarded as remedy for the

infringement.

(6) The proprietor of a registered design shall notify any

exclusive licensee who has a concurrent right of action before

applying for an order under article 115; and the Court may on the

application of the licensee make such order under that article as it

thinks fit having regard to the terms of the licensee.

(7) The provisions of subarticles (4) to (6) shall be without

prejudice to any agreement to the contrary between the exclusive

licensee and the proprietor.

PART XX

APPLICATIONS

An application for registration of a design shall be filed

with the Comptroller in the Maltese or English language and shall

contain the following

(a) a request for registration of a design;

(b) the name and address of the applicant;

(c) the design which is the subject of the application;

(d) the name and address of the agent or representative, in

cases where one has been appointed; and

(e) a declaration claiming priority in cases where the

applicant wishes to take advantage of an earlier

application.

The application shall be subject to the payment of a fee as

may be prescribed.

(1) The date of filing of an application for registration of a

design is the date on which the elements prescribed in article 88 are

furnished to the Comptroller by the applicant

Provided that where the elements are furnished on different

days, the date of filing shall be the date on which the last element is

so furnished.

(2) References in Parts XVIII to XXIV to the date of

application for registration shall be construed as a reference to the

date of filing of the application.

(1) Designs shall be classified for the purpose of the

registration of designs according to the Locarno Classification.

(2) Any question arising as to the class within which any

design falls shall be determined by the Comptroller, whose decision

shall be final.

(1) A person who has duly filed an application for

protection of a design in a state which is a member of the World

Trade Organisation or a party to the Paris Convention, hereinafter

in this Act referred to as a "Convention application", or his

successor in title, has a right to priority, for the purposes of

registering the same design under this Act for which such an

application has been filed, for a period of six months from the date

of filing of the first such application.

(2) If the application for registration under this Act is made

within such six-month period

(a) the relevant date for the purposes of establishing

which rights take precedence shall be the date of filing

of the first Convention application, and

(b) the registrability of the design shall not be affected by

any use of the same in Malta in the period between that

date and the date of the application under this Act.

(3)

(a) Any filing in a state member of the World Trade

Organisation or party to the Paris Convention which is

e q u i v a l en t t o a r e g u l a r n a t i o n a l f i l i n g u n d e r i t s

domestic legislation, shall be treated as giving rise to

the right of priority.

(b) For the purposes of this subarticle "regular national

filing" means a filing which is adequate to establish the

date on which the application was filed in that country,

whatever may be the subsequent application.

(4) A subsequent application concerning the same design as the

first Convention application, filed in the same Convention country,

shall be considered the first Convention application (the filing date

of which is the starting date of the period of priority), if at the time

of the subsequent application

(a) the previous application has been withdrawn,

abandoned or refused, without having been laid open

to public inspection and without leaving any rights

outstanding, and

(b) it has not yet served as a basis for claiming right of

priority, and the previous application may not

thereafter serve as a basis for claiming a right of

priority.

(5) Provisions may be made by regulations as to the manner of

claiming a right to priority on the basis of a Convention

application.

(6) A right to priority arising as a result of a Convention

application may be assigned or otherwise transmitted, either with

the application or independently.

(1) The Minister may make regulations conferring on a

person who has duly filed an application for protection of a design

in a country or territory in relation to which the Government of

Malta is a party to a treaty, convention, arrangement or engagement

for the reciprocal protection of designs, a right to priority, for the

purpose of registering the same designs under this Act for any or all

of the same goods or services, for a such period as may be specified

in the regulations from the date of filing of that application.

(2) Such regulations may make provisions similar to those

contained in article 91 in relation to Convention applications or

such other provision as appears to the Minister to be appropriate for

the purpose of giving effect to the treaty, convention arrangement

or engagement.

(1) The Comptroller shall examine whether an application

for registration of a design satisfies the requirements of this Act.

(2) If it appears to the Comptroller that the requirements for

registration are not met, he shall inform the applicant and give him

an opportunity to make representations or to amend the application

within such period as the Comptroller may specify.

(3) If the applicant fails to satisfy the Comptroller that those

requirements are met, or to amend the application so as to meet

them, or fails to respond before the end of the specified period, the

Comptroller shall refuse the application.

(4) If it appears to the Comptroller that the requirements for

registration are met, he shall accept the application as eligible for

registration.

(1) The applicant may at any time withdraw his

application.

(2) An application may be amended, at the request of the

applicant, only by correcting -

(a) the name or address of the applicant,

(b) errors of wording or of copying, or

(c) obvious mistakes,

and then only where the correction does not substantially affect the

identity of the design.

(1) Where an application has been accepted as eligible for

registration, the Comptroller shall register the design, unless it

appears to him having regard to matters coming to his notice after

he accepts the application that it was accepted in error.

(2) A design shall not be registered and the application shall be

deemed to be withdrawn unless any fee prescribed is paid within

thirty working days from the date of filing.

(3) A design when registered shall be registered as of the date

of filing of the application for registration, and that date shall be

deemed for the purposes of this Act to be the date of registration.

(4) On the registration of a design the Comptroller shall issue

to the applicant a certificate of registration, and he shall publish in

the Gazette the fact that the design has been registered and is

available to be viewed by the public at the Office.

(1) A registered design shall not be altered in the register,

during the period of registration or on renewal.

(2) Notwithstanding the provisions of subarticle (1), the

Comptroller may, at the request of the proprietor, allow the

alteration of a registered design where the design includes the

proprietor’s name or address and the alteration is limited to the

alteration of that name or address and does not substantially affect

the identity of the design.

(3) Provision shall be made by regulations prescribing the

manner of publication of any such alteration and the making of

objections by any person claiming to be affected thereby.

(1) A registered design may be surrendered by the

proprietor by sending notice to the Comptroller including the name

and address of any person having a contractual interest in the

design, or any other interest under the Act. The proprietor shall also

certify that any such person

(a) has been sent not less than ninety days’ notice of the

proprietor’s intention to surrender the design, or

(b) is not affected, or if affected consents thereto.

(1) The registration of design may be declared invalid on

the following grounds

(a) if the provisions of article 74 have not been complied

with;

(b) if it does not fulfil the requirements of articles 65 to

70;

(c) if the design is the same or similar to a prior design

which has been made available to the public after the

date of filing of the application or, if priority is

claimed, after the date of priority, and which prior

design is protected from a date prior to the said date by

a registered design or an application for a registered

design in a territory covered by an international

agreement to which Malta is a party;

(d) if a distinctive sign is used in a subsequent design and

the rightholder of the sign has the right to prohibit

such use;

(e) if the design constitutes an unauthorised use of work

protected under copyright;

(f)

if the design involved the use of

(i)

the armorial bearings, flags or other emblems,

and

(ii) the abbreviations and names, of international

intergovernmental organisations of which one or

more Paris Convention countries are members.

(2) The grounds provided under article 74(f) may be invoked

only by the person entitled to the right under Maltese law.

(3)

The grounds in subarticles (1)(c), (1)(d) and (1)(e) may be

invoked solely by the applicant for or the holder of the conflicting

right.

(4) The grounds in subarticle (1)(f) may be invoked solely by

the entity associated therewith.

(5) When a design has been refused registration pursuant to

article 74, or a design right has been declared invalid pursuant to

subarticle (1), the design may be registered or the design right

maintained in an amended form, if in that form it complies with the

requirements for protection and the identity of the design is

retained. Registration or maintenance in an amended form may

include registration accompanied by a partial disclaimer by the

holder of the right in the registered design or entry in the design

register of a court decision declaring the partial invalidity of the

design right.

(1) The following provisions apply where an application

for registration of a design is made by a person who is an agent or

representative of a person who is the proprietor of the design in a

Convention country.

(2) The proprietor may by sworn application before the First

Hall of the Civil Court

(a) demand a declaration of invalidity of the registration,

or

(b) demand the rectification of the register in order to

substitute his name as the proprietor of the register

design.

(3) The proprietor may restrain any use of the design in Malta

which is not authorised by him.

(4) Subarticles (2) and (3) shall not apply if, or to the extent

that, the agent or representative shows that his actions were

authorised by the proprietor.

(5) An application under subarticle (2) must be made within

three years of the proprietor becoming aware of the registration;

and no order may be made under subarticle (3) in respect of a use in

which the proprietor has not taken action for a continuous period of

three years or more.

(1) An action for invalidity may not be initiated when the

person bringing the action being aware of the use of a registered

design in Malta has acquiesced for a continuous period of five

years to such use.

(2) In the case referred to in subarticle (1), where the action is

brought on the basis of an earlier registered design or an earlier

acquired right the proprietor of the registered design is not entitled

to oppose the use of the earlier design or, as the case may be, the

exploitation of the earlier right, notwithstanding that the earlier

design or right may no longer be invoked against his registered

design.

PART XXI

ADMINISTRATIVE AND SUPPLEMENTARY PROVISIONS

101.(1)(a)The Comptroller shall maintain a register of designs.

(b) Reference in Parts XVIII to XXIV this Act to "the

register" are to that register; and references to

registration, in particular, in the expression "registered

design", are, unless the context otherwise requires, to

registration in that register.

(2) There shall be entered in the register in accordance with

this Act

(a) registered designs;

(b) the relevant particulars of registrable transactions

affecting a registered design, including

(i)

the date of registration as determined in

accordance with articles 89 and 95,

(ii) the priority date (if any) to be accorded pursuant

to a claim to a right to priority made under

article 91 or 92,

(iii) the name and address of the proprietor, and

(c) in the case of an assignment of a registered design

(i) the name and address of the assignee, and

(ii) the date of the assignment;

(d) in the case of the grant of a licence under a registered

design

(i) the name and address of the licensee,

(ii) where the licence is limited, a description of the

limitation,

(iii) where the licence is an exclusive licence, that

fact,

(iv) the duration of the licence if the same is or is

ascertainable as a definite period, and

(v) the date on which the entry is made;

(e) in the case of a court or other competent authority

transferring a registered design

(i) the name and address of the transferee,

(ii) the date of the order, and

(iii) the date on which the entry is made;

(f)

in the case of a transfer of a registered design by

testamentary disposition, or otherwise by inheritance

(i)

the name and address of the person in whose

favour the testamentary disposition is made, or

the inheritance devolves if any, and

(ii) the date of the testamentary disposition if any,

and of the death of the previous holder;

(g) in the case of merger, the requirements specified for

the registration of an assignment; and

(h) such other matters relating to registered designs as the

Comptroller may deem necessary.

(1) Without prejudice to the provision of article 105, the

register shall be open for public inspection at the Office during

such hours as may be determined by the Office.

(2) A search in the register may be conducted in respect of a

design or designs in one of the following manners

(a) an interested person may on payment of the prescribed

fee call at the Office and conduct a search for a design

or designs. If the person or persons conducting the

search request copies of any related record, extracts

from the register or copies of the design, whether

certified or uncertified, these shall be provided on

payment of the prescribed fee;

(b) an interested person may on payment of the prescribed

fee submit a request in writing to the Office for a

search to be conducted in respect of a design or

designs. If the person or persons requesting the search

require copies of any related record, extracts from the

register or copies of the design, whether certified or

uncertified, these shall be provided on payment of the

prescribed fee.

(1) Any person having a sufficient interest may apply for

the rectification of an error or omission in the register

Provided that an application for rectification may not be

made in respect of a matter affecting the validity of the registration

of a design.

(2) Provided that an application for rectification may not be

made either to the Comptroller or by sworn application against the

Comptroller and any person interested before the Civil Court, First

Hall

Provided that if proceedings concerning the registration in

question are pending before a Court

(a) the application must be made by application before

Court in the acts of the proceedings; and

(b) if the application is made to the Comptroller, he may at

any stage of the proceedings direct the applicant to

refer the matter to the Court in accordance with

subarticle (2).

(3) Except where the Comptroller or the Court directs

otherwise, the effect rectification of the register is that the error or

omission in question shall be deemed never to have been made.

(4) The Comptroller may, on request by the proprietor of a

registered design, or a licensee, enter any change in his name or

address as recorded in the register.

(5) The Comptroller may remove from the register any matter

appearing to him to have ceased to have effect.

The Comptroller may require the use of such forms as he

may direct for any purpose relating to the registration of a design or

any other proceeding before him under this Act.

(1) After publication of the registration of a design, the

Comptroller shall on request provide a person with such

information and permit him to inspect all documents filed or kept at

the Office relating to the registered design, as maybe specified in

the request.

Any such request must be accompanied by such fee as may

be prescribed.

(2) Before publication of registration of a design, documents or

information constituting or relating to the application shall not be

published by the Comptroller or made available to the pubic except

with the consent of the applicant.

(3) The Comptroller shall not be obliged to permit the

inspection of any such document as is mentioned in subarticle (1)

above until he has completed any procedure or the stage in the

procedure which is relevant to the document in question, which he

is required or permitted to carry out under the Act.

(4)

The right of inspection under subarticle (1) does not apply

to

(a) any document until fourteen days after it has been filed

at the Office;

(b) any document prepared in the Office solely for use

therein;

(c) any document sent to the Office, whether at its request

or otherwise, for inspection and subsequent return to

the sender;

(d) any request for information under this article;

(e) any document issued or received by the Office which

Comptroller considers should be treated as

confidential;

(f)

any document or part of a document which in the

opinion of the Comptroller disparages any person in a

way likely to damage him; or

(g) any document filed with or sent to the Office before

the enactment of the Act.

(1) Registration by the Comptroller shall not be deemed

to be a warranty by him of the validity of the registration of a

design under this Act or under any treaty, convention, arrangement

or engagement to which Malta is a party.

(2) The Comptroller shall not be liable by reason of, or in

connection with, any examination required or authorised by this

Act, or any such treaty, convention, arrangement or engagement, or

any report or other proceedings consequent to such examination.

(3) No action shall lie against an officer of the Comptroller in

respect of any matter for which, by virtue of this article, the

Comptroller is not liable.

In all legal proceedings relating to a registered design

(including proceedings for rectification of the register) the

registration of a person as proprietor of a design shall be prima

facie evidence of the validity of the original registration and of any

subsequent assignment or other transmission thereof.

If in proceedings before the Court the validity of the

registration of a design is contested and it is found by the Court that

the design is validly registered, the Court shall give judgement

accordingly.

(1) In proceedings before the Court involving a demand

for -

(a) the revocation of the registration of a design,

(b) a declaration of the invalidity of the registration of a

design, or

(c) the rectification of the register,

the Comptroller shall be notified with the proceedings and shall be

entitled to intervene in statu et terminis.

(2) Unless otherwise directed by the Court, the Comptroller

may, instead of intervening, file in the record of the case a

statement in writing signed by him, giving particulars of

(a) any proceedings before him in relation to the matter in

issue,

(b) the grounds of any decision given by him affecting it,

(c) the practice of the Office in like cases, or

(d) such matters relevant to the issues and within his

knowledge as he thinks fit,

and the statement shall be deemed to form part of the evidence in

the proceedings.

(1) Any decision of the Comptroller under Parts XVIII to

XXIV of this Act, may be appealed from, before the Court of

Appeal composed in the manner provided in article 41(9) of the

Code of Organization and Civil Procedure by application within

fifteen days of service of the Comptroller’s decision.

(2) For the purposes of subarticle (1) "decision" means any act,

other than such acts as may by regulations be prescribed, done by

the Comptroller in exercise of a discretion vested in him by or

under this Act.

(3) The Minister with the concurrence of the Minister

responsible for Justice may make rules governing appeals to the

Court of Appeal under Parts XVIII to XXIV of this Act, and

presenting a scale of costs and fees in relation to such appeals.

(1) The Comptroller may give directions specifying the

hours of business of the Office for the purpose of the transaction by

the public of business under this Act, and the days which are

business days for that purpose.

(2)

Business done on any business day after the specified hours

of business, or on a day which is not a business day, shall be

deemed to have been done on the next business day; and where the

time for doing anything under this Act expires on a day which not a

business day, that time shall be extended to the next business day.

(3) Directions under this article may make different provision

for different classes of business and shall be published in the

prescribed manner.

(1) Where by Parts XVIII to XXIV of this Act any act has

to be done by or to any person in connection with any proceeding

or matter under the said parts of this Act, the act may under and in

accordance with the regulations be done by or to an agent of that

person duly authorised in writing

Provided that the Comptroller may in any particular case

require the personal signature or presence of the agent or the person

authorising him to act as an agent.

(2) If an applicant does not have his ordinary residence or

principal place or business in Malta, he shall authorise an agent

who has his ordinary residence or principal place of business in

Malta to represent him in the manner as prescribed in subarticle

(1)

Provided that this subarticle shall not apply as from the 1st

May 2004 with regard to an applicant who has his ordinary

residence or principal place of business in a Member State.

PART XXII

INFRINGEMENT

(1) Any person who in contravention to article 75

exploits a registered design shall be liable in damages towards the

proprietor of the design right or the licensee.

(2) Infringement proceedings shall be brought before the Civil

Court, First Hall, and may not be instituted after five years from the

date when the injured party has obtained knowledge of the

infringement and of the identity of the alleged infringer.

(3) In an action for infringement all such remedies as are in

respect of the infringement of any other property right shall be

available to the plaintiff.

(1) The Court may, moreover, on the demand of the

plaintiff, order that the machinery or other industrial means or

contrivances used in contravention of the design, the infringing

products, and the apparatus destined for their production, be

forfeited, wholly or partially, and delivered up to the proprietor of

the design or such other person as the Court may direct, without

prejudice to any other remedy.

(2) An action for an order under subarticle (1) may not be made

after the end of the period of five years from the date on which the

infringing products were made except as provided in the following

subarticle.

(3)

While during the whole or part of that period the proprietor

of the registered design is prevented by fraud or concealment from

discovering the facts entitling him to take action for an order, an

application may be made at any time before the end of the period of

five years from the date on which he could with reasonable

diligence have discovered those facts.

(1) Where infringing goods, material or products have

been delivered up in pursuance of an order under article 114, an

action by sworn application against any person having an interest in

the products may be brought before the Court by any party

interested

(a) for an order that they be destroyed or forfeited to such

person as the Court may deem fit, or

(b) for a decision that no such order should be made.

(2) In considering its decision, the Court shall consider

whether other remedies available in an action for infringement of

the registered design would be adequate to compensate the

proprietor and any licensee to protect their interests.

(3)

Any person having an interest shall be entitled

(a) to appear in proceedings for an order under this article,

whether or not he was served with a notice, and

(b) to appeal against any order made, whether or not he

appeared at first instance, and any such order shall not

take effect until the end of the period within which an

appeal may be filed or, if before the end of that period

an appeal is so filed, until the final determination or

abandonment of the proceedings on the appeal.

(4) Where there is more than one person interested in the

products, the Court shall make such order as it thinks fit.

(5) If the Court decides that no order should be made under this

article, the person in whose possession, custody or control the

products were before being delivered up shall be entitled to their

return.

(1) Where a person threatens another with proceedings

for infringement of a registered design other than those provided

for in this Act, any person aggrieved may bring proceedings for

relief under this article by sworn application before the Civil Court,

First Hall.

(2) The relief which may be applied for is all or any of the

following -

(a) a declaration that the threats are unjustified,

(b) an injunction against the continuance of the threats,

(c) damages in respect of any loss the plaintiff may have

sustained by the threats,

and the plaintiff shall be entitled to such relief unless the defendant

shows that the acts in respect of which proceedings were threatened

constitute, or if done would constitute, an infringement of the

registered design concerned.

(3) Where the defendant shows that the acts in respect of which

proceedings were threatened constitute or would constitute an

infringement of the registered design, the plaintiff shall

nevertheless be entitled to relief if he shows that the registration of

the design is invalid or liable to be revoked.

(4) The mere notification that a design is registered, or that an

application for registration has been made, does not constitute a

threat of proceedings for the purposes of this article.

(1) Any person who with a view to gain for himself or

another, or with intent to cause loss to another, and without the

consent of the proprietor, in contravention of article 75 exploits a

registered design shall be guilty of an offence against this article

and shall be liable on conviction to imprisonment for a term not

exceeding three years or to a fine (multa) of not more than twenty-

three thousand and two hundred and ninety-three euro and seventy-

three cents (23,293.73) or to both such fine and imprisonment.

(2) It shall be a defence for a person charged with an offence

against this article to show that he believed on reasonable grounds

that the use of the design in the manner in which it was used, or was

to be used, was not an infringement of the registered design.

(1) Any person who knowing or having reason to believe

that it is false -

(a) makes, or causes to be made, a false entry in the

register of designs; or

(b) makes, or causes to be made, anything falsely

purporting to be a copy of an entry in the register, or

(c) produces or tenders or causes to be produced or

tendered in evidence any such thing,

shall be guilty of an offence against this article.

(2) A person guilty of an offence against this article shall be

liable on conviction to imprisonment for a term not exceeding two

years or a fine (multa) of not more than eleven thousand and six

hundred and forty-six euro and eighty-seven cents (11,646.87) or to

both such fine and imprisonment.

(1) Whoever puts into circulation, or sells any product,

falsely representing that a design applied to, or incorporated in any

product sold by him is registered, shall be guilty of an offence

against this subarticle and, on conviction, be liable to a fine (multa)

of not less than two hundred and thirty-two euro and ninety-four

cents (232.94) and not more than eleven thousand and six hundred

and forty-six euro and eighty-seven cents (11,646.87).

For the purposes of this article a person who sells a product

having stamped, engraved or impressed thereon or otherwise

applied thereto the word "registered", or any other word expressing

or implying that the design applied to the products is registered,

shall be deemed for the purposes of this article to represent that the

design applied to the product is registered.

(2)

Any person, who after the right in a registered design is

expired, marks any product to which the design has been applied

with the word "registered", or any word or words implying that

there is subsisting right in the design under this Act, or causes any

such product to be so marked, shall be guilty of an offence against

this subarticle and shall on conviction, be liable to a fine (multa)

not less than two hundred and thirty-two euro and ninety-four cents

(232.94) and not more than eleven thousand and six hundred and

forty-six euro and eighty-seven cents (11,646.87).

(1) A person shall not without the authority of the

President use in connection with any business any device, emblem

or title in such a manner as to be calculated to lead to the belief that

he is employed by, or supplies goods or services to, the President.

(2) Any person who contravenes the provisions of subarticle

(1) shall be guilty of an offence against this article and shall, on

conviction, be liable to a fine (multa) of not more than six thousand

and nine hundred and eighty-eight euro and twelve cents

(6,988.12).

The Court may, moreover, in the cases referred to in article

117, on the demand of the prosecution, order that the machinery or

other industrial means or contrivances used in contravention of the

rights of the proprietors of the designs, the infringing products, and

the apparatus destined for their production, be forfeited, wholly or

in part, and delivered to the holder of the design, without prejudice

to any other right to relief under this Act.

Pending any proceedings for any one of the offences

referred to in this Part, any Magistrate, if he is satisfied by

information on oath that there is reasonable cause to suspect that

any goods or things by means of, or in relation to which the offence

has been committed, are in any house or premises of the accused, or

are in his possession or under his control in any other place, may,

by a warrant under his hand, direct any officer of the Police to be

named in the warrant, to enter any house, premises or place, also to

be named therein, and there to search for, seize and remove such

goods or things.

If the owner of any goods or things, which, if he were

convicted of any of the offences referred to in this Part, would be

liable to forfeiture, is unknown or cannot be found, any Magistrate

may in the like manner and in the circumstances required in article

122 issue the said warrant.

The goods and things so seized shall be produced before

the Court of Magistrates sitting as a court of criminal judicature,

and such Court shall determine whether they are liable to forfeiture

under this Act.

(1) In the case referred to in article 123, the Court shall

order the issue of banns which shall be published twice, with an

interval of at least eight days, in the Gazette, and posted up at the

entrance of the building wherein the Court sits, and in any other

place which the court may deem fit, stating that the goods or things

seized shall be forfeited, unless at the time and place named in the

banns the owner of such goods or things or other persons interested

in such goods or things attends before the Court at the time and

place indicated in the banns and shows cause to the contrary. The

person from whose possession the goods or things were seized,

shall also, where his whereabouts are known, be notified with the

banns.

(2) If the owner or any person on his behalf, or other person

interested in the said goods or things, fails to attend at the time and

place named in the banns to show cause to the contrary, it shall be

lawful for the Court to direct that such goods or things or any of

them be forfeited.

The Court may direct that the goods or things so forfeited

be destroyed or disposed of, and may also direct that, out of the net

proceeds which may be realized by the disposal of such goods or

things and up to the amount thereof, any persons who, being in

good faith, were injured by the forfeiture, be awarded

compensation for any loss caused to them.

Criminal actions under this Act shall be barred by the lapse

of three years from the day on which the act constituting the

offence was committed, if the person to whose prejudice the act

was committed, had no previous knowledge thereof; in all other

cases such action shall be barred by the lapse of one year from the

day on which such person became aware of that act.

The provisions of this Part shall apply without prejudice to

the right of any person to claim damages in consequence of any act

constituting an offence.

No proceedings shall be instituted against any person in the

service of another person, if, he shows that in good faith, he acted

in obedience to the instructions of his employer, and, on being

questioned by the Police, gives full information relating to his

employer and of the facts of the case as known to him.

PART XXIII

GENERAL PROVISIONS

In any civil proceedings under this Act if a question arises

as to the use to which a registered design has been put, the burden

of proof that a particular use has been made shall lie on the

proprietor.

Civil actions under Parts XVIII to XXIV of this Act shall

be barred by the lapse of five years in all cases in which no other

period within which such actions may be brought is fixed in this

Act.

PART XXIV

REGULATIONS

(1) The Minister may make regulations for the better

administration of Parts XVIII to XXIV of this Act, making such

rules as are required by any provisions of the said parts of this Act,

prescribing anything authorised or required by any provision to be

prescribed, and generally for regulating practice and procedure

under the said Parts, and in particular provision may be made

PATENTS AND DESIGNS

(a) with regard to the interpretation of terms used in the

said Parts of this Act;

(b) with regard to the grant, refusal or surrender of a

registered design;

(c) with regard to the terms of renewal of a registered

design;

(d) with regard to the manner of filing of applications and

other documents as well as all respective and other

fees under the said Parts of this Act;

(e) requiring and regulating the translation of documents

and the filing and authentication of any translation;

(f)

with regard to the service of documents;

(g) with regard to matters relating to the register of

designs, in particular as to

(i)

amendment of registered particulars relating to a

licence so as to reflect any alteration of the

terms of the licence, and

(ii) the removal of such particulars from the register;

(h) with regard to the classification of registered designs;

(i)

authorising

the

rectification

of

irregularities

of

procedure;

(j)

with regard to procedures, sanctions and anything else

relating to the infringement of the provisions of the

said Parts of this Act;

(k) prescribing time limits for anything required to be

done in connection with any proceeding under the said

Parts of this Act;

(l)

providing for the extension of any time limit so

prescribed, or specified by the Comptroller whether or

not the time limit has already expired; and

(m) regulating administrative and other supplementary

provisions.

(2) The Minister may also from time to time make regulations

not inconsistent with the said Parts of this Act prescribing all

matters which by this Act are required or permitted to be prescribed

or which are necessary or desirable to be prescribed for carrying

out or giving effect to this Act, or for the conduct of any business

relating to the Office of the Comptroller.

(3) The Minister may also make regulations giving effect in

Malta to the provisions of any international or regional design

registration instrument or any related agreements to which Malta

becomes a party.

(1) Subject to the provisions of this article, the Industrial

Property (Protection) Ordinance is hereby repealed.

(2)

In this article

"existing registered design" means a design, registered under the

Industrial Property (Protection) Ordinance immediately before the

commencement of Parts XVIII to XXIV of this Act;

"former register" means the register kept under the old law;

"new register" means the register kept under Parts XVIII to

XXIV of this Act;

"old law" means the Industrial Property (Protection) Ordinance

and any other enactment or rule of law applying to existing

registered designs immediately before the commencement of Parts

XVIII to XXIV of this Act.

(3)

For the purposes of this article -

(a) an application shall be treated as pending on the

coming into force of Parts XVIII to XXIV of this Act,

if it was made but not finally determined before such

coming into force; and

(b) the date on which it was made shall be taken to be the

date of filing under the old law.

(4) Existing registered designs shall, on the commencement of

this article, be transferred to the new register and subject to the

provisions of this article, shall have effect as if they were registered

under Parts XVIII to XXIV of this Act.

(5) Proceedings under the old law which are pending on the

commencement of this article shall be dealt with under the Old Law

and any necessary alteration pursuant to such proceedings shall be

made to the new register.

(6)

(a) Upon the coming into force of this article, articles 75

and 76 of this Act shall apply in relation to, an existing

registered design and subject to paragraph (b), article

113 shall apply in relation to any infringement of an

existing registered design committed after the

commencement of this article.

(b) After the coming into force of this article, it shall not

be an infringement of -

(i) an existing registered design, or

(ii) a registered design of which the distinctive

elements are the same or substantially the same

as those of an existing registered design,

to continue with any use which did not amount to

infringement of the existing registered design under

the old law.

(7) Article 114 shall apply to infringing goods, material or

products whether made before or after the commencement of this

article.

(8) Article 86 shall apply to licences granted before the

commencement of this article, but only in relation to infringement

committed after its commencement.

(9) The provisions of article 80 shall apply as from the

commencement of this article to an existing registered design of

which two or more persons were immediately before the

commencement of this article registered as joint proprietors.

(10) (a) Article 81 shall apply to transactions and events

occurring after the commencement of this article in

relation to an existing registered design; and the old

law shall continue to apply in relation to transaction

and events occurring before its commencement.

(b) Where, before the commencement of this article a

person become entitled by assignment or transmission

to an existing registered design but has not registered

his title, any application for registration of an

assignment after its commencement shall be made

under article 83.

(11) Articles 84 and 85 shall apply only in relation to licences

granted after the commencement of this article.

(12) An application for registration of a design under the old law

which is pending on the commencement of this article shall be dealt

with under the old law, and, when registered, the design shall be

treated for the purposes of this article as an existing registered

design.

(13) (a) In the case of a pending application for registration

filed before the commencement of this article the

applicant may give notice to the Comptroller

demanding to have the registrability of the mark

determined in accordance with the provisions of Parts

XVIII to XXIV of this Act.

(b) The notice must be accompanied by the appropriate fee

and be given no later than six months after the

commencement of this article.

(c) Notice duly given shall be irrevocable and shall have

the effect that the application shall be treated as if

made immediately after the commencement of this

article.

(14) The Comptroller may exercise the powers conferred by this

Act to ensure that any existing registered designs which do not

conform to the system of classification prescribed under article 90

are brought in conformity with such system.

(15) Article 91 shall apply to an application for registration

under this Act made after the commencement of this Part

notwithstanding that the Convention application was made before

commencement.

(16) Articles 72 and 73 shall apply in relation to the registration

of a design in pursuance of an application made after the

commencement of this article

Provided that in the case of a design registration under the

old law, whose term of protection has not yet expired at the coming

into force of this article registration may be renewed as provided

for in articles 72 and 73.