Essentially, patents are a form of intellectual property right which confers the inventor with exclusive rights, much akin to monopoly rights, over the subject-matter disclosed within the claims of a patent application. Such rights are conferred in exchange for the inventor disclosing his invention in a manner which is sufficiently clear and complete for the invention to be replicated by another person skilled in the art – thus, patent protection is based on this form of “bargain” between society and an inventor whereby in exchange for the dissemination of knowledge, a form of protection is conferred.

Patents are one of the oldest and most important forms of intellectual property protection, but on a local level, the patent scene can be described as somewhat quiet, at least from a litigious perspective, with very limited patent litigation having taken place in Malta.

Patent protection is conferred subject to successful registration and the authority which handles patent registration is the Malta Industrial Property Registration Directorate (“Malta IPRD”), colloquially known as the Malta IP Office. Under Maltese Law, patents are regulated in terms of the Patents and Designs Act, Chapter 417 of the Laws of Malta (“Patents Act”). Malta is also a signatory to various conventions and agreements relating to patents, including the European Patent Convention, the Patent Cooperation Treaty and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The Unitary Patent Package was also ratified by Malta.

Patent Protection Types

Patent protection can be conferred over a product or a process. As such however, patent protection is conferred over an inventive idea which may be embodied in a product or process and not the actual underlying product or process. In this regard, the Maltese courts held:

The patent is for the idea as distinguished from the thing manufactured. No doubt you cannot patent an idea, which you have simply conceived and have suggested no way of carrying out, but the invention consists in thinking of or conceiving something and suggesting a way of doing it. [1] (emphasis added)

It is also possible that the same patent protects both a product and a process, where the two are sufficiently interlinked.

In a process patent, the claim is directed to the ways of applying or putting into effect a process to achieve a given result, as envisaged by the claims of an invention. Thus, any third party may legally achieve the same result or effect, as obtained via the patented process, provided he employs a different method of achieving the result. On the other hand, in a product patent, the protection is conferred over the patented product irrespective of the way that the product is created.

Crucially, it should be noted that the protection is conferred in respect of the claims of a patent invention, as registered with the IP Office. An exercise of patent construction is undertaken in a patent infringement case wherein the allegedly infringing product is compared with the claims of a patented invention, not with a product which is covered by a patent.

Patent Eligibility

It should be noted that for an invention to be considered patentable, it must satisfy the cumulative criteria of novelty, inventive step and industrial applicability.

An invention is considered novel for patentability purposes if it does not form part of what is known as the “prior art”, namely, every information which discloses the subject-matter of the invention and which is available to the public, in any form, prior to the filing of a patent application.

On the other hand, an invention is considered to satisfy the inventive step patentability criterion if, having regard to the prior art, the invention is not obvious to the fictitious legal persona known as the “skilled person”. In this respect, it should be noted that the Maltese Court of Appeal in Melita Marine Ltd Et v. Mark Darmanin Kissaun[2] devised the following test for the purposes of determining whether an invention has the required inventive step:

  1. First, the inventive concepts of the invention at hand are determined and it is questioned whether the same are obvious to an extent that a lay person would be expected to know of their existence; and
  2. Then, assuming the invention does not fail on point 1 above, one identifies the differences between the inventive concepts and the existing prior art in question and determines whether the inventive concepts, when compared to the existing prior art, are to be deemed obvious to a person skilled in the art.

Lastly, an invention is deemed to be industrially applicable if it can be utilized in any form of industry. In turn, the term “industry” is in terms of the Patents Act, to be interpreted in its broadest sense. Thus, in practical, industrial applicability tends to be more of an academic requirement and not as relevant in practice.

It should also be noted that not all forms of inventions can be eligible for patent protection. Aesthetic creations, discoveries, scientific theories, mathematical methods, schemes, presentations of information, rules and methods for performing mental acts, playing games or doing business and programs for computers, are all excluded from the scope of patent eligibility.

Patent Registration & Protection

Any natural person or legal entity may file an application for a patent, both alone and jointly with others.

In cases where two inventors submit a patent application in respect of the same invention and both inventions were created separately from the other, the patent will be granted to the inventor who either filed the application at an earlier date or who claimed priority at an earlier date – in line with what is referred to as the “first to file” principle.

Patent protection is in turn only conferred subject to successful patent registration. The protection conferred is limited to a period of 20 years from filing date, assuming that the patent is annually renewed when due.

Additionally, it should be noted that the right to a patent belongs to the inventor, or his successor in title. This default position may however be departed from in certain instances, such as through a written contract.

Patent Rights & Infringement

The Patents Act grants the proprietor of a patent the right to exclude third parties from carrying out certain defined acts, namely the acts of making, offering, importing, inducing and using the patented subject-matter.

The term “exclude” is utilised – a prohibitive term, known as the ius excludendi. The right to exclude is to be distinguished from the positive right to make, offer or use the subject-matter of a patent. Such rights reside outside of the scope of patent law. Indeed, the law governing the underlying invention covered by a patent is a separate and distinct law from that governing patents. For a patentee to be able to produce the underlying invention, other legal considerations come into play. For example, if one holds a patent covering a method of ̳building a house, it does not follow that he can actually build a house. Such would require building permits; point being that the ownership of a patent does not per se equate with any right excepting that to exclude others from doing certain defined acts.

Whilst the ius excludendi conferred by a patent is typically described as akin to a monopoly right, it should be note that it is not an absolute right. Various patent exemptions or defences apply, and broadly, such can be categorised as (i) circumstances exempted from patent infringement and (ii) limitations to the scope of protection.

From the perspective of exemptions from patent infringement, the same include under Maltese law the private and non-commercial use, experimental purposes and scientific research, extemporaneous preparations, development and presentation of information and passage in transit. In this respect, a very broad interpretation is conferred in Malta to the “Bolar Exemption” and this has materialised in a very flourishing local generic drug industry.

Limitations on the scope of protection include patent exhaustion as a result of an authorised sale and prior user rights.

Crucially, there are also implied limitations to the scope of protection which do not arise from the direct wording of the Patents Act itself per se. These include limitations arising from the patent grant process, the fact that protection is temporal in scope, validity, invalidity, revocation and territorial limitations.