Amendments to the Patents and Designs Act: Proposed Bill is Published

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A bill, hereinafter referred to as the Patents and Designs (Amendment) Act, 2014, has been presented by Parliament to amend the Patents and Designs Act (“the principal act”).

The inclusion of a new article 58A is a vital addition to the act; establishing an independent Patents Tribunal which will have the jurisdiction to hear and determine claims concerning the revocation of a patent, infringement claims, as well as declarations of non-infringement and issuance of precautionary warrants. Nonetheless, claims for damages arising from any infringement will be left to the Court’s discretion. The Patents Tribunal, appointed by the Prime Minister, shall consist of a chairman, who shall be a Judge or a Magistrate, and two other members.

A number of amendments were suggested, including:

  • The amendment to Article 10(2) on the manner in which an application is determined to have an earlier filing date when priority is claimed.
  • There will also be the introduction of a new Article 23A granting the Comptroller the authority to oblige the applicant to provide a search report and written opinion by a recognized international search authority.
  • Article 44 shall be substituted by the introduction of a new Article 44A relating to the manner in which any person who wishes to revoke a patent may file a notice for revocation either with the Comptroller or the Patents Tribunal. It will also mention the procedure to be followed by the Comptroller when the patent concerns an invention in respect of which there already exists a published patent, as well as in respect of a patent where there is a priority claim.
  • Article 45 of the principal Act would be substituted by a provision which states that an action to revoke a patent may be taken even if the patent has lapsed. When a decision to revoke a patent, in whole or in part, becomes final before the Patents Tribunal or is taken by the arbiter, the Comptroller should immediately record the decision in the patent register and publish such decision as may be prescribed.

The objects of the bill are targeted to provide for the introduction of a schedule of inventions which may be protected in Malta either under the Patent Co-Operation Treaty or the European Patent Convention. The provisions of this Act are said to come into force on such a date as the Minister responsible for the protection of industrial property may establish, by notice in the Government Gazette.