WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IPINIlIMLTIP/l 
18 May 2000 
(00-2049) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
MALTA 
The present document reproduces the text! of the Draft of the Patents Act, 2000, as notified 
by Malta under Article 63.2 of the Agreement (see document IP/NIlIMLT/I). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETlt INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
MALTE 
Le present document contient le texte! du projet de Loi sur les brevets, 2000, notifie par Malte 
au titre de l'article 63:2 de l'Accord (voir le document IP/N/IIMLT/l). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIP ALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO 2 DEL ARTicULO 63 DEL ACUERDO 
MALTA 
En el presente documento se reproduce el texto! del proyecto de la Ley de Patentes, 2000, 
notificado por Malta en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el documento 
IP/NIl/MLTIl). 
1 In English only.lEn anglais seulement.lEn ingIes solamente. IP/N/1/MLT/P!1 
Page 2 
A BILL 
entitled 
AnAct to make provisionfor the registration and regulation of Patents, 
BE IT ENACTED by the President, by and with the advice and 
consent of the House of Representatives, in this present Parliament 
assembled, and by the authority of the same, as follows:-
PART I : DESIGNATION 
1. This Act may be cited as the Patents Act, 2000, and shall come Short title and 
'~ h d h M' , 'bl ~ h 'f commencement. mto lorce on suc ate as t e mIster responsl e lor t e protectIOn 0 
Industrial Property may by notice in the Gazette establish and different 
dates may be so established for different provisions and different 
purposes thereof, 
PART II : DEFINITIONS 
2. In this Act, unless the context otherwise requires: 
"prescribed" means prescribed by this Act or by regulations 
made thereunder; 
"the register" means the register of patents kept under this Interpretation. 
Act and includes the register of patents kept under the Industrial 
Property (Protection) Ordinance parts of which have been repealed Cap.29. 
by this Act; 
"the Comptroller" means the Comptroller of Industrial 
Property and includes any other person appointed to exercise all Appointment and 
duties of the 
Comptroller. 
Patentable 
inventions. IP/N/1/MLT/P/l 
Page 3 
or any of the powers and perform all or any of the duties of the 
Comptroller; 
"Minister" means the Minister responsible for the protection 
of Industrial Property; 
"patent" means the exclusive right granted by the Comptroller 
in terms of the provisions of this Act. 
PART III : THE OFFICE OF THE COMPTROLLER 
3. (1) The administration of this Act shall be entrusted to the 
Comptroller of Industrial Property, hereinafter referred to as "the 
Comptroller" . 
(2) The Comptroller shall be appointed by the Minister 
responsible for the Industrial Property Office. 
PART IV : PATENTABILITY 
4. (1) An invention shall be patentable if it is novel, involves 
an inventive step and is industrially applicable. 
(2) The following, in particular, shall not be regarded as 
inventions within the meaning of subsection (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 subsection (2) shall exclude the 
patentability of the subject matter or activities referred to in that 
subsection 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 subsection (1): 
Provided that this subsection 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: IP /NI 1/ML TIP /1 
Page 4 
Ca) an invention the exploitation of which would be contrary 
to public order or morality: 
Provided that exploitation shall not be deemed to be so 
contrary merely because it is prohibited by law or regulation; 
(b) an animal variety or an essentially biological process 
for the production of plants or animals other than a microbiological 
process or the products thereof. 
(6) The Minister may make regulations to modify any of 
the provisions of this section other than paragraph (a) of subsection (5) 
for the purpose of maintaining them in confonnity with developments 
in science and technology. 
5. (1) An invention shall be considered novel if it does not Novelty. 
form part of the prior art. 
(2) The prior art means everything which, before the filing 
date or, where priority is claimed, before the priority date of the 
application claiming the invention, was available to the public in a 
written or other graphic form, by an oral description, by use or in any 
other way anywhere in the world. 
(3) The prior art includes also the content of any patent 
application as filed in, or with effect for, Malta to the extent that such 
application or the patent granted thereon is published subsequently by 
or for the Office of the Comptroller: 
Provided that the filing date or, where priority i? claimed, the 
priority date of such application is earlier than the date referred to in 
subsection (2). 
(4) The provisions of subsections (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 subsection (4) of section 4 provided 
that its use for any method referred to in the said subsection (4) is not 
comprised in the prior art. 
6. An invention shall be considered to involve an inventive step Inventive step. 
if, having regard to the prior art as defined in subsection (2) of section 
5, 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 subsection (3) of section 5 of this Act, these documents 
are not to be considered in deciding whether there has been an inventive 
step. Industrial 
applicability. 
Grace period. 
Entitlement to file 
an application. 
Right to a patent. IP/N/lIMLT/P/l 
PageS 
7. An invention shall be considered industrially applicable if it 
can be made or used in any kind of industry. For the purposes of this 
section the term "industry" shall be understood in its broadest sense 
and shall without prejudice to the foregoing include handicraft, 
agriculture and fishery. 
8. (1) Disclosure, during the 12 months preceding the filing 
date or, where priority is claimed, the priority date of a given application, 
of information which otherwise would affect the patentability of an 
invention claimed in that application shall not affect the patentability 
of that invention where the information was disclosed: 
(a) by the inventor; 
(b) by an intellectual property office and 
(i) the information was contained in another application 
filed by the inventor and should not have been disclosed by 
that office, or 
(ii) the information was contained in an application 
filed without the knowledge or consent of the inventor by a 
third party who obtained the information directly or indirectly 
from the inventor; 
(c) by a third party who obtained the information directly 
or indirectly from the inventor. 
(2) For the purposes of subsection (1), "inventor" also means 
any natural person who or any legal entity which, at the filing date, was 
entitled to obtain a patent on the given application, irrespective of 
whether that person or entity is the applicant of the given application. 
PART V : RIGHT TO APPLY FOR AND OBTAIN A PATENT AND 
BE MENTIONED AS INVENTOR 
9. Any natural person or legal entity may file an application for 
a patent either alone or jointly with another. 
10. (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. IP/N/1/MLT/P/l 
Page 6 
(2) Where two or more applications have been filed by 
different persons in respect of the same invention and the inventors 
concerned made the invention independently of each other, the right to 
a patent for that invention shall belong to the applicant whose application' 
has the earliest filing date or, where priority is claimed, the earliest 
priority date, provided that his application has been published. 
(3) For the purpose of proceedings before a Court the 
applicant shall be deemed to be entitled to exercise the right to a patent. 
11. (1) Notwithstanding the provisions of section 10, when an Invention made in 
invention is made in execution of a commission or a contract of ~~=i~7o~:ran 
employment, the right to a patent for that invention shall belong, in the employment 
b f 1· . h h h' contract. a sence 0 contractu a prOVISIOns to t e contrary, to t e person avmg 
commissioned the work or to the employer. 
(2) The employee shall have a right to equitable 
remuneration taking into account his salary, the economic value of the 
invention and any benefit derived from the invention by the employer. 
In the absence of agreement between the parties, the remuneration shall 
be fixed by the Civil Court, First Hall. 
12. The inventor shall be mentioned as such in the patent, unless Mention of .• . inventor. in a special wntten declaratIOn addressed to the Comptroller he mdicates 
that he wishes not to be named. 
PART VI : APPLICATIONS 
13. (1) An application for a patent shall be made in duplicate Req~ire~ents of 
in the prescribed form and shall be filed at the Office of the Comptroller applIcatIOn. 
and shall contain: 
(a) a request for the grant of a patent; 
Cb) 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. 
(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. Date of filing. IP/N/IIMLT/P/1 
Page 7 
(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. 
14. (1) The filing date of an application shall be the date of 
receipt by the Office of the Comptroller of the documents that contain: 
(a) an express or implicit indication that the granting of a 
patent is sought; 
(b) indications allowing the identity of the applicant to be 
established; 
(c) a description of the invention for which a patent is 
applied for; 
(2) (a) If the Comptroller finds that, at the time of receipt 
of an application, the requirements referred to in subsection (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 paragraph (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 and the claims referred to 
in paragraphs Cl) (c) and (d) or any text contained in any drawings IP/N/1/MLT/P/l 
Page 8 
is in a language other than the official languages of the Office, a 
translation thereof in one of the official languages of the Office 
shall be deposited at the Industrial Property Office within such 
time limit as may be prescribed. 
15. (1) The application shall disclose the invention in a manner Disclosure of the 
sufficiently clear and complete for the invention to be carried out by a invention .. 
person skilled in the art. 
(2) \V'here the application refers to biologically reproducible 
material which cannot be disclosed in the application in such a way as 
to enable the invention to be carried out by a person skilled in the art, 
and such material is not available to the public, the application shall be 
supplemented by a deposit of such material with a depositary institution 
as may be prescribed. 
16. (1) The claims shall define the matter for which patent Claims. 
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. 
17. The abstract shall merely serve the purpose of technical Abstract. 
information; in particular, it shall not be taken into account for the 
purpose of interpreting the claims. 
18. (1) An application shall relate to one invention only or to a Unity of invention. 
group of inventions so linked as to form a single general inventive 
concept. 
(2) Failure to comply with the requirement of subsection 
(1) shall not be a ground for invalidation or revocation of a patent. 
19. (1) Until such time as a grant is made pursuant to a pending Division of 
application, the applicant may divide such pending application into two application. 
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. Amendment or 
correction and 
withdrawal of 
applications. IP/N/1/MLT/P/1 
Page 9 
(3) Priority documents and any required translation thereof 
that are· submitted to the Office of the Comptroller in respect of the 
initial application shall be considered as having been submitted in respect 
of all divisional applications. 
20. (1) The applicant shall have the right, subject to the payment 
of such fees as may be prescribed on his own initiative, to amend or 
correct the application up to the time when the application is in order 
for a grant. 
(2) No amendment or correction of the application may go 
beyond what has been disclosed in the application as filed. 
(3) The applicant may withdraw the application at any time 
during which it is pending. 
Inspection of files. 21. After a patent application or the patent granted thereon has 
been published in accordance with section 25, any person may inspect 
the files of the application in accordance with such regulations as may 
be prescribed. 
Right of priority. 22. (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 
subsection (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 thCl declaration referred to in subsection 
(1) shall be such as is provided in the Convention referred to in that 
subsection pursuant to which the declaration has been made. 
(4) If the Comptroller finds that the requirements under this 
section 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 subsection (1) shall be 
deemed not to have been made. IPIN/lIMLT/P/1 
Page 10 
(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 subsection (l)are in force and may by 
subsequent orders amend, revoke or substitute any such order. 
PART VII : EXAMINATION AND GRANT OR REFUSAL 
23. (1) Where an application for a patent has been filed and is Examination as to 
not withdrawn, the Comptroller shall refer the application to an officer fonnalities, 
in his department hereinafter referred to as "the examiner" to determine 
whether the application complies with such requirements of this Act 
and of any regulations made thereunder and which are designated by 
any regulations as may be prescribed as formal requirements. The 
examiner shall make a report thereon to the Comptroller. 
(2) If the examiner reports to the Comptroller that not all 
the formal requirements are complied with, the applicant shall be given 
an opportunity to make observations on the report and to amend the 
application within such period as may be prescribed so as to comply 
with those requirements, and if the applicant fails to make such 
amendments the Comptroller may refuse the application. 
(3) If the examiner reports to the Comptroller that the 
application, whether as originally filed or as amended pursuant to 
subsection (2) complies with all the formal requirements at any time 
before the end of such prescribed period as is referred to in subsection 
(2), the Comptroller shall notify the applicant accordingly. 
24. (1) Where the applicant has been notified pursuant to Grant. 
section 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. 
25. (l) (a) Subject to paragraphs (b) and (c) hereof, the Publ,icat,ion of 
C 11 h 11 • h' h' 1" 'd d ~. b ' applications or omptro er sa, Wlt ill t e time lffilt provl e 10r ill su sectlOn patents, 
(2) and in the prescribed manner, publish all applications filed with 
it. 
(b) No application shall be published if it is withdrawn 
or is rejected before the expiration of 17 months from the filing 
date or, where priority is claimed, from the priority date of the 
application, Term of patents 
and maintenance 
fees. 
Rights conferred by 
a patent. IP/N/1/MLT/P/1 
Page 11 
(c) Ifby the time an application is published according 
to paragraph (2), a patent has been granted pursuant to that 
application, the Comptroller shall not publish the application but 
shall publish the patent in the prescribed manner. 
(2) The Comptroller shall publish each application filed with 
it promptly after the expiration of 18 months from the filing date or, 
where priority is claimed, from the priority date of the application. 
However, where, before the expiration of the said period of 18 months, 
the applicant presents a written request to the Office of the Comptroller 
that his application be published, the Office of the Comptroller shall 
publish the application promptly after the receipt of the request. 
PART VIII: EFFECTS OF A PATENT APPLICATION AND A 
PATENT 
26. (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 fees hereinafter referred to as "the 
maintenance fee". The 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 on or before 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. 
27. (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: IP /NI 1/ML TIP /1 
Page 12 
(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 subsection (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) Notwithstanding subsections (1) and (2), the proprietor 
of a patent shall have no right to prevent third parties from performing, 
without his authorisation, the acts referred to in subsections (1) and (2) 
in the following circumstances: 
(a) 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 an act is performed after that product has 
been so put on the market in Malta or in any territory as may be 
specified in the regulations; 
(b) where the act is done privately and for non-commercial 
purposes, provided that it does not significantly prejudice the 
economic interests of the proprietor of the patent; 
(c) where the act consists of making or using such product 
for purely experimental purposes or for scientific research; 
(d) 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. 
(4) (a) Subject to paragraph (b) hereof, 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, relating to an element 
of that invention, essential for carrying out the invention, when 
the third party knows, or ought to know in the circumstances, that 
those mean,s 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. Rights conferred by 
a patent application 
after publication. 
Prior user. IP/N/1/MLT/P/1 
Page 13 
(b) Persons pelforming any acts referred to in subsection 
(3) (b), (c) and (d) shall not be considered to be pruties entitled to 
exploit the invention within the meaning of paragraph (a). 
28. (1) A patent application shall, where published under 
section 25, 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 section 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 subsection (l) if it is withdrawn, or deemed to be 
withdrawn or finally refused. 
29. (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. 
Extent of protection. 30. (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 section 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. IPINllIMLT/PIl 
Page 14 
(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 
31. (1) Any contract assigning a patent application or a patent Change in 
h 11 . f 11' b d' . . d h 11 b . db I ownership of patent sa, on pam 0 nu Ity, e ma e m wrItmg an s a e slgne y t le applications or 
parties to the contract. patents. 
(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-a.-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 section 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. 
32. If a patent application is filed or a patent is granted to a person Judicial assignment 
. . 1 d h d' 10 11 h of patent who IS not entlt e to t e patent un er sectIOn or ,t e person application or 
entitled to it may request the Civil Court, First Hall, within two years patent. IP/NIlIMLT/PI 1 
Page 15 
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. 
Joint owne~hip of 33. (1) Where there are joint applicants of a patent application, 
patent apphcatIon or h f h . . h h f h h 1 patent. eac 0 t em may wIth or WIt out t e agreement 0 t e ot ers separate y 
Patent register. 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 section shall be applicable only 
in the absence of an agreement to the contrary between the joint 
applicants or owners. 
34. (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. IP/N/1/ML TIPIl 
Page 16 
PART X: CONTRACTUAL LICENCES AND 'LICENCES OF 
RIGHT 
35. (1) A patent application or patent may be licensed in whole Licence contract. 
or in part for the whole or part of Malta. A licence may be exclusive or 
non-exclusive. For the purposes of this law, "licence contract" means 
any contract by which a party ("the licensor") allows the other party 
("the licensee") to perfom1 any of the acts referred to in section 27 in 
respect of an invention claimed in a patent or a patent application. 
(2) A licence contract shall in pain of nullity be made in 
writing and shall be signed by the parties to the contract. 
(3) A licence may be recorded in the patent register on 
payment ofthe prescribed fee. Subsection (3) of section 31 shall apply 
mutatis mutandis to the grant or transfer of a licence. 
36. (1) In the absence of any provision to the contrary in the Rights of licensee, 
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 section 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 section 27. 
37. (1) In the absence of any provision to the contrary in the Rights of licensor. 
licence contract, the licensor may allow a third person to perform in 
respect of the invention any of the acts referred to in section 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 
perfoffi1 himself in respect of the invention any of the acts referred to in 
section 27 which are covered by the said contract. 
38. (1) Where the proprietor of a patent files a written statement Licences of right. 
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) Provided that 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: Non-voluntary 
licences. IP/N/lIMLT/P/1 
Page 17 
Provided further that the statement shall be deemed to be 
withdrawn when following a judicial assignment of a patent by order of 
the Court under section 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 bid down. Any licence so obtained shall be treated as a 
contractuallic(;nce. 
(5) No request for recording an exclusive licence in the 
patent register shall be admissible after the statement has been filed, 
unless the said statement is withdrawn or be deemed to be withdrawn. 
PART XI : NON-VOLUNTARY LICENCES AND GOVERNMENT 
EXPLOITATION 
39. (1) The Civil Court, First Hall, may, on a writ of summons 
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 such use, 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 subsection (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. Importation shall not constitute such a circumstance. 
(4) In deciding whether to grant a non-voluntary licence, 
the Court shall give both the proprietor of tht'· patent and the person 
requesting the non-voluntary licence an adequ<.t;e opportunity to present 
arguments. IP /NJ1/ML T JP /1 
Page 18 
(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 ofthese circumstances shall be reviewed upon 
the request of the proprietor of the patent by writ of summons before 
the Civil Court, First Hall. 
(6) Paragraph (a) of subsection 3 of section 27 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. 
40, (1) Where the national security or public safety so requires, Exploitation by 
the Minister responsible for the Industrial Property Office may authorise, ~:~;:~~~ or by 
even without the agreement of the proprietor of the patent or the patent authorised by 
application, by notice published in the prescribed form, a Government 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 scope and duration of such authorisation shall be 
limited to the purpose for which it was given and shall be: 
Ca) non-exclusive, 
(b) non-assignable, except with that part o~ the enterprise 
or goodwill which enjoys such authorisation, 
(c) terminated if and when the circumstances which led to 
it cease to exist and are unlikely to recur. 
(3) Any decision taken by the Minister under this section 
may be the subject of an appeal in an action by writ of summons before 
the Civil Court, First Hall. 
PART XII: AMENDMENTS, SURRENDER AND INVALIDATION 
41. (1) The proprietor of a patent shall, in accordance with such Changes in patents. 
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 patentshall 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. Surrender. 
Lapse. 
Invalidation of 
patents. IP/N/1IMLT/PI1 
Page 19 
(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. 
42. (1) The proprietor of a patent may sun-ender 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 section 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 sun-ender. 
43. (1) A patent shall lapse: 
(a) at the end of the term laid down in section 26; 
(b) if the proprietor of the patent sun-enders it,on the date 
when sun-ender 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 
section 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. 
44. (1) The Comptroller may, at the request of a third party, or 
save in the case referred to in paragraph (c) hereof of his own accord, 
invalidate a patent, in whole or in part, on any of the following and may 
. not do so on any other ground 
(a) that the subject-matter of the patent is not patentable 
within the terms of sections 4 to 7; 
(b) that the patent does not disclose the invention in a manner 
sufficiently clear and complete for it to be can-ied out by a person 
skilled in the art as stipuiated in section 15; IP /NI lIML TIP /1 
Page 20 
(c) that the right to the patent does not belong to the person 
to whom the patent was granted within the terms of sections 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 sections 20 and 41 ; 
and 
(e) that the protection conferred by the patent has been 
extended by an amendment which should not have been allowed. 
(2) If the grounds for invalidation affect the patent only in 
part, invalidation shall be pronounced in the form of a corresponding 
limitation of the patent. 
(3) A patent and the application on which it is based shall, 
to the extent that the patent has been invalidated, be deemed never to 
have had the effects referred to in sections 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 invalidation; or 
(b) any contract concluded prior to the decision of 
invalidation, 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. 
45. (1) An action to invalidate a patent may be taken even if Proceedings. 
the patent has lapsed. 
(2) When a decision to invalidate a patent, in whole or in 
part, becomes final, the Comptroller shall record the decision in the 
patent register and shall publish any amendments to the patent in 
accordance with such regulations as may be prescribed. Restitutio in 
integrum. 
Act of 
infringement­
sanctions. 
Cap.12. IP/N/1/MLT/P/1 
Page 21 
PART XIII: RE-ESTABLISHMENT OF RIGHTS 
46. (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 subsection (3) of section 26 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 filed until after the prescribed fee for the re-establishment of 
the rights in question has been paid. 
(4) This section shall not apply to the time limits referred 
to in subsection (2) of this section and in section 22. 
(5) The decision to re-establish any rights under subsection 
(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 subsection (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 
47. (1) Any person who in contravention to section 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 right to sue for damages under subsection (1) hereof 
shall be without prejudice to the right of such person to apply for the 
issue of any precautionary warrant as provided in the Code of 
Organization and Civil Procedure to protect his rights. IP/NI1 IMLT/P/1 
Page 22 
(3) 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 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, without prejudice to the 
relief mentioned in this section. 
48. (1) Infringement proceedings shall be brought before the Infringement 
Civil Court, First Hall, and may not be instituted after five years from proceedings. 
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 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. 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 Court. 
(3) The Court may stay proceedings for infringement in 
respect of a patent application until after a final decision has been made 
by the Comptroller to grant or refuse a patent on that application. 
(4) The defendant in any proceedings referred to in this 
section may request in the same proceedings the invalidation of any of 
the grounds referred to in section 44. In any such case the Comptroller 
shall be made a party to the proceedings. 
49. (1) Subject to subsection (4), any interested person shall ~larationofnon. 
have the right to request, by instituting proceedings against the proprietor mfringement. 
of the patent, that the Civil Court, First Hall, 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 Court 
shall grant a declaration of non-infringement. 
(3) The proprietor of the patent 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. Offences. 
Where owner of 
goods is unknown. 
Forfeiture of things 
seized. 
Procedure where 
owner is unknown. IP/N/lIMLT/PIl 
Page 23 
(5) Save where invalidation is requested under subsection 
(5) of section 48, proceedings for a declaration of non-infringement 
may be instituted together with proceedings to invalidate the patent. 
PART XV : INFRINGEMENTS -CRIMINAL ACTIONS 
50. (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 one hundred liri and not more than five 
thousand liri. 
(2) If any person puts into circulation or sells an article 
having stamped, engraved or impressed thcreon 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 section to represent that the article is a 
patented article. 
51. If the owner of any goods or things, which, if he were 
convicted of any of the offences refeITed 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. 
52. 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. 
53. (1) In the case referred to in section 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. IP INI1IMLT IP /1 
Page 24 
54. The Court may direct that the goods or things so forfeited be Award of . compensatIon to 
destroyed or disposed of, and may also direct that, out of the net proceeds parties in good 
which may be realised by the disposal of such goods or things and up to faith. 
the amount thereof, any persons who, being in good faith, were injured 
by the forfeiture, be awarded compensation for any loss caused to them. 
55. Criminal actions under this Act shall be barred by the lapse Limitation of 
of three years from the day on which the act constituting the offence criminal actions. 
was committed, ifthe 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. 
56. The provisions of section 50 to section 55 shall apply without Right to damages 
. d' h fd . 1 d h not effected. preJu Ice to t e payment 0 amages to persons enht e t ereto. 
57. No proceedings shall be instituted against any person in the Employer and 
service of another person, if, in good faith, he has acted in obedience to employee. 
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: RlGHT OF APPEAL 
58. (1) AIl appeal shall lie from any decision of the Comptroller Right of appeal. 
refusing the grant of a patent, an application for re-establishment of 
rights or any other request of the applicant for, or proprietor of, a patent. 
Such appeal shall have suspensive effect. 
(2) Notice of appeal and a statement setting out the grounds 
of appeal shall be filed in writing at the Office of the Comptroller by 
applicant or proprietor of a patent, within two months of being informed 
of the decision and if the Comptroller considers the appeal to be 
admissible and well founded, he shall rectify his decision within three 
months from receiving the appeal. 
(3) If within the said period of three months the Comptroller 
has not informed the applicant or the proprietor that he has rectified his 
decision an appeal may be entered by the applicant or the proprietor by 
application before the Court of Appeal within two months from the 
receipt from the Comptroller of notification that he has not rectified his 
decision, or from the lapse of the two-month period referred to in 
subsection (2), whichever is the earlier. Regulations. 
Costs. 
Cap. 12. 
Agents. IPIN/lIMLT/P/l 
Page 25 
(4) Any appeal as is mentioned in subsection (2) and (3) 
of this section shall be brought before the Court of Appeal composed in 
the manner provided in subsection (6) of section 41 of the Code of 
Organization and Civil Procedure by application within fifteen days 
after the expiry of the said period of three months from when the 
Comptroller would have rectified his decision or not informed the 
applicant that he has rectified his decision, whichever is the earlier. 
(5) The Minister may make rules governing appeals to the 
Court of Appeal under this Act, and prescribing a scale of costs and 
fees in relation to such appeals. 
(6) The Court of Appeal may, in regard to costs, make an 
order in accordance with the provisions of section 223 of the Code of 
Organization and Civil Procedure. 
PART XVII: MISCELLANEOUS 
59. (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. 
60. In any proceedings under this Act the costs shall be taxed 
and levied according to the tariffs in Schedule A annexed to the Code 
of Organization and Civil Procedure. 
61. (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. IP /N/1/ML TIP /1 
Page 26 
(2) If an applicant does not have his ordinary residence or 
principal place of business in Malta, he shall authorise in the prescribed 
manner an agent in Malta to represent him. 
62. (1) Part I of the Industrial Property (Protection) Ordinance Repeal and 
(hereinafter in this section called "the repealed law") and every reference ::ii::~~ 
to patents in Part IV, Part V and Part VI thereof are hereby repealed. 
Provided section 17 shall remain in force in respect of designs and 
trademarks until such time that the provisions 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 
tenn 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. 
(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 IPINIlIMLTIPI 1 
Page 27 
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. 
Objects and Reasons 
The object of the Bill is to make new provision with respect to patents in lieu of 
the provisions of the Industrial Property (Protection) Ordinance, Cap.29.