EUROPEAN PATENT CONVENTION REGULATIONS

SUBSIDIARY LEGISLATION 417.05

EUROPEAN PATENT CONVENTION

REGULATIONS

1st March, 2007

LEGAL NOTICE 99 of 2007, as amended by Legal Notice 426 of 2007.

The title of these regulations is the European Patent

Convention Regulations.

In these regulations, unless the context otherwise requires -

"the Act" means the Patents and Designs Act, and words and

expressions used in these regulations shall have the same meaning

as is given to them in the Act;

"t h e Co n v e n ti on " m e an s th e C o n v en t io n o n th e Gr a n t of

European Patents, done at Munich on 5th October, 1973 as revised

and done at Munich on 29th November, 2000;

"European patent" means a patent granted by the European

Patent Office in accordance with the Convention;

"European patent application" means an application for a

European patent filed in accordance with the Convention;

"the Office" means the national office responsible for granting

patents in Malta.

The fees to be paid in respect of any application,

registration or any other matter under these regulations shall be

those prescribed in the Schedule of Fees to these regulations.

(1) European patents and European patent applications

designating Malta shall be governed by these regulations and by the

Act unless otherwise provided in the Convention.

(2) In the case of conflict between the provisions of the

Convention and those of these regulations or of the Act, the

provisions of the Convention shall prevail.

(1) European patent applications, except divisional

ap pli cat ion s, m ay be f iled with th e Off ice in an y lang u age

admissible under Article 14(1) and (2) of the Convention. This is to

be accompanied by the prescribed transmittal fee.

(2) The following shall require a translation into English to be

filed within one month of filing the European patent application

(a) an indication that a European patent is sought;

(b) the information that will enable the applicant to be

identified.

(3) Applicants having their residence or principal place of

b u s i n es s in M al ta s h a ll f il e a E u r o p ea n p at en t a p p l ic at io n

concerning an invention that may affect the national security of

Malta with the Office; except in cases where priority is claimed

from a first filing in Malta.

(1) A European patent application, designating Malta and

which has been accorded a filing date, shall be equivalent to a

regular national application, where appropriate, with the priority

claimed for the European patent application and whatsoever the

outcome of such application may be.

(2) A published European patent application designating Malta

shall confer the protection conferred under article 27 by virtue of

article 28 of the Act as from the date of its publication by the

European Patent Office.

(1) A European patent designating Malta shall, subject to

subregulations (2) to (4), confer from the date of the mention of its

grant by the European Patent Office the same rights as a patent

granted by the Office.

(2)

(a) The owner of the patent shall furnish a translation into

English to the Office within the prescribed period as

stipulated in Article 65 (1) of the Convention.

(b) An extension of this period may be applied for and is

to be accompanied by the prescribed fee. The

requested extension shall not exceed two months.

(3) Where, as a result of an opposition procedure before the

European Patent Office, the European patent is maintained as

amended, subregulation (2) shall mutatis mutandis apply.

(4) In the event of failure to comply with the requirements laid

down in accordance with subregulations (2) or (3), the European

patent shall be deemed to be void ab initio.

(5) Re-establishment of rights under article 46 of the Act shall

apply mutatis mutandis.

(1) Where a translation prescribed under regulation 7

confers protection which is narrower than that conferred by the

E u r o p ea n p a t e n t i n t h e l an g u a g e o f t h e p r o c e e d i n g s , s u ch

translation shall be regarded as the authentic text other than for

revocation proceedings.

(2) The owner of the European patent may file a corrected

translation at any time. The corrected translation shall take effect

only after it has been made available to the public by the Office.

(3) Any person who, in good faith, is using or has made

effective and serious preparations for using an invention, the use of

which would not constitute infringement of the patent in the

original translation may, after the corrected translation takes effect,

continue such use in the course of his business or for the needs

thereof without payment.

Annual fees for European patents shall be paid to the

Office for each year following that in which the mention of the

grant of the European patent is published by the European Patent

Office.

(1) A European patent application designating Malta may

be converted into a national patent application where the European

patent application is deemed to be withdrawn pursuant to Article

7 7 ( 5 ) o f th e C o n v en t i o n o r, b ec au s e t h e t r an s l at i o n o f t h e

application under Article 14(2) of the Convention has not been

filed in due time, pursuant to Article 90(3) of the Convention.

(2) The applicant shall within two (2) months from the date

when the Comptroller invites the applicant to submit the translation

into any one of the official languages of the Office pay the

prescribed fee.

(3) Where the Comptroller decides that a request for a

conversion application is admissible, it shall be treated as an

application for registration of a patent under the Act.

(4) A decision of the Comptroller in relation to a conversion

application shall be treated as a decision of the Comptroller under

the Act.

Where a European patent designating Malta and a national

patent having the same filing date or, where priority has been

claimed, the same priority date, have been granted to the same

person or his successor in title, the national patent shall have no

effect to the extent that it covers the same invention as the

European patent as from the date on which the time-limit for filing

an opposition to the European patent has expired without an

opposition having been filed or as from the date on which the

opposition procedure has resulted in a final decision maintaining

the European patent.

EUROPEAN PATENT CONVENTION

Substituted by

Schedule of Fees

L.N. 426 of 2007.

(Regulation 3)

Transmittal fee for the filing of a European Patent .

€46.59 + courier service

charges

Conversion into a national patent application ........

€698.81

Submission of translated documents in terms of

regulation 5(1) ......................................................

€232.94

Submission of translation in terms of regulation

7(2)(b) ..................................................................

€232.94

Filing of a corrected translation ............................

€116.47