PATENTS AND DESIGNS _g CAP. 417.  1
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 Act IX of 2003.
PART I
DESIGNATION
Short title.
Amended by:
IX. 2003.106.
1. The short title of this Act is the Patents and Designs Act.
PART II 
DEFINITIONS
Interpretation.
Substituted by:
IX. 2003.107.
2. 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 Union means the European Union referred on the
Treaty;
“microbiological process” means any process involving, or
performed upon, or resulting in, microbiological material;
“Member State” means a state which is a member of the
European Union;
“Minister” means the Minister responsible for the protection of
industrial property and “Ministry” shall be construed accordingly;
“patent” means the exclusive right granted by the Comptroller in
terms of the provisions of this Act;
“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;
Cap. 29.
“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Property (Protection) Ordinance, parts of which have been repealed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;
2 _g CAP. 417. PATENTS AND DESIGNS
Cap. 460. “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
Appointment and 
duties of 
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.
PART IV
PATENTABILITY
Patentable 
inventions.
Amended by:
IX. 2003.108.
4. (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
PATENTS AND DESIGNS _g CAP. 417.  3
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
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;
4 _g CAP. 417. PATENTS AND DESIGNS
( 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.
Novelty. 5.  (1) An invention shall be considered novel if it does not
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 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.
Inventive step. 6. 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.
Industrial 
applicability.
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 article the term “industry” shall be understood in its broadest
sense and shall without prejudice to the foregoing include
handicraft, agriculture and fishery.
Disclosure of the 
invention.
8. 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
PATENTS AND DESIGNS _g CAP. 417.  5
( 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
Entitlement to file 
an application.
9. Any natural person or legal entity may file an application
for a patent either alone or jointly with another.
Right to a patent.
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 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.
Invention made in 
execution of a 
commission or an 
employment 
contract.
11. (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.
Mention of 
inventor.
12. 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
Requirements of 
application.
Amended by:
IX. 2003.109.
13. (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;
6 _g CAP. 417. PATENTS AND DESIGNS
( 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.
(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.
Date of filing. 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
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
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
PATENTS AND DESIGNS _g CAP. 417.  7
Office within such time limit as may be prescribed.
Disclosure of the 
invention.
Amended by:
IX. 2003.110.
15. (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 maay 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 materrial shall be
limited to an independent expert for twenty years from the date on
8 _g CAP. 417. PATENTS AND DESIGNS
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.
Claims. 16. (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.
Abstract. 17. 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.
Unity of invention. 18. (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.
Division of 
application.
19. (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.
Amendment or 
correction and 
withdrawal of 
applications.
20. (1) The applicant shall have the right, subject to the
payment of such fees as may be prescribed, to amend or correct the
application, on his own initiative, 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.
PATENTS AND DESIGNS _g CAP. 417.  9
(3) The applicant may withdraw the application at any time
during which it is pending.
Inspection of files.
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.
Right of priority.
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
Examination as to 
formalities.
23. (1) Where an application for a patent has been filed and is
not withdrawn, the Comptroller shall refer the application to an
officer 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.
10 _g CAP. 417. PATENTS AND DESIGNS
(3) If the examiner reports to the Comptroller that the
application, whether as originally filed or as amended pursuant to
subarticle (2) complies with all the formal requirements at any time
before the end of such prescribed period as is referred to in
subarticle (2), the Comptroller shall notify the applicant
accordingly.
Grant. 24. (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.
25. (1) ( a ) Subject to paragraphs ( b ) and ( c ) hereof, the
Comptroller shall, within the time limit provided for in
subarticle (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.
( c ) If by the time an application is published according
to subarticle (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
Term of patents 
and maintenance 
fees.
Amended by:
IX. 2003.111.
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 fee hereinafter referred to as the maintenance fee.
Such maintenance fee shall be due in respect of the fifth 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.
PATENTS AND DESIGNS _g CAP. 417.  11
Rights conferred 
by a patent.
Amended by:
IX. 2003.112.
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:
( 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
charactersitics 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
12 _g CAP. 417. PATENTS AND DESIGNS
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) Nothwithstanding the provisions of subarticles (3), (4) and
(5):
( 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 commercializaion of
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 commerical 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, 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,
PATENTS AND DESIGNS _g CAP. 417.  13
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 maketed:
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.
Rights conferred 
by a patent 
application after 
publication.
28. (1) A patent application shall, where published under
article 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 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.
Prior user.
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
14 _g CAP. 417. PATENTS AND DESIGNS
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 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
Change in 
ownership of 
patent applications 
or patents.
31. (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-_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
PATENTS AND DESIGNS _g CAP. 417.  15
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.
Judicial 
assignment of 
patent application 
or patent.
32. 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. 
Joint ownership of 
patent application 
or patent.
33. (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
absence of an agreement to the contrary between the joint
applicants or owners.
Patent register.
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
16 _g CAP. 417. PATENTS AND DESIGNS
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
Licence contract. 35. (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
which a party ("the licensor") allows the other party ("the
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. 
Rights of licensee. 36. (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.
Rights of licensor. 37. (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.
Licences of right. 38. (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
PATENTS AND DESIGNS _g CAP. 417.  17
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,
unless the said statement is withdrawn or be deemed to be
withdrawn.
PART XI
NON-VOLUNTARY LICENCES AND 
GOVERNMENT EXPLOITATION
Non-voluntary 
licences.
Amended by:
IX. 2003.113.
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 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.
Cap. 12.
(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
writ of summons 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
18 _g CAP. 417. PATENTS AND DESIGNS
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 writ of summons 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 cliamed 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:
PATENTS AND DESIGNS _g CAP. 417.  19
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 ).
Exploitation by 
Government or by 
third parties 
authorised by 
Government.
40. (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 writ of summons before
the Civil Court, First Hall.
PART XII
AMENDMENTS, SURRENDER AND INVALIDATION
Changes in patents.
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.
Surrender.
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
20 _g CAP. 417. PATENTS AND DESIGNS
the Comptroller that he has previously informed the licensee of his
intention to surrender.
Lapse. 43. (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.
Invalidation of 
patents.
44. (1) The Civil Court, First Hall may on a writ of summons
filed by a third party or the Comptroller, 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 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.
(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 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
invalidation; or
( b ) any contract concluded prior to the decision of
PATENTS AND DESIGNS _g CAP. 417.  21
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. 
Proceedings.
the patent has lapsed.
(2) When a decision to invalidate a patent, in whole or in part,
becomes final, the Court shall notify the office of the Comptroller
which 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.
PART XIII
RE-ESTABLISHMENT OF RIGHTS
Rerstitutio in 
intergrum.
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 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 filed 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.
22 _g CAP. 417. PATENTS AND DESIGNS
PART XIV
INFRINGEMENT - CIVIL ACTIONS
Act of 
infringement - 
sanctions.
Cap. 12.
47.  (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 right to sue for damages under subarticle (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.
(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 or of the
patent application, without prejudice to the relief mentioned in this
article.
Infringement 
proceedings.
48. (1) 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.
(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 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 article
may request in the same proceedings the invalidation of any of the
grounds referred to in article 44. In any such case the Comptroller
shall be made a party to the proceedings.
Declaration of non-
infringement.
49. (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 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 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
PATENTS AND DESIGNS _g CAP. 417.  23
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 invalidation is requested under article 48(5),
proceedings for a declaration of non-infringement may be instituted
together with proceedings to invalidate the patent.
PART XV
INFRINGEMENTS - CRIMINAL ACTIONS
Offences.
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 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.
Where owner of 
goods is unknown.
51. 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.
Forfeiture of things 
seized.
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.
Procedure where 
owner is unknown.
53. (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. 
24 _g CAP. 417. PATENTS AND DESIGNS
Award of 
compensation to 
parties in good 
faith.
54. 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.
Limitation of 
criminal actions.
55. 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.
Right to damages 
not affected.
56. The provisions of article 50 to article 55 shall apply
without prejudice to the payment of damages to persons entitled
thereto.
Employer and 
employee.
57. 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
Right of appeal. 58. (1) An appeal shall lie from any decision of the
Comptroller 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 subarticle (2), whichever is the earlier.
Cap. 12.
(4) Any appeal as is mentioned in subarticle (2) and (3) of this
article shall be brought before the Court of Appeal composed in the
manner provided in article 41(6) 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 Rule-Making Board established under article 29 of the
Code of Organization and Civil Procedure may make rules
governing appeals to the Court of Appeal under this Act.
PATENTS AND DESIGNS _g CAP. 417.  25
(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 XVII
MISCELLANEOUS
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. 
Fees.
Cap. 12.
60. 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.
Agents.
Amended by:
IX. 2003.114.
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.
(2) Where an applicant does not have his ordinary residence or
principal place of busiess 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.
Repeal and 
transitional 
provisions.
Amended by:
IX. 2003.115.
Cap. 29.
62. (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
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,
26 _g CAP. 417. PATENTS AND DESIGNS
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:
Cap. 29.
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.
PATENTS AND DESIGNS _g CAP. 417.  27
PART XVIII
INTERPRETATION
Interpretation.
Added by:
IX. 2003.116.
63. (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 refered 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 ornamentaion;
“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
Classificatation 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;
“Member State” means a state which is a member of the
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 avialable to the public, and references to
publication in relation to registration, are to publication under
article 95(4);
Cap. 29.
“register” means the register of designs kept under this Act and
includes the register of designs kept under the Industrial Property
(Protection) Ordinance;
28 _g CAP. 417. PATENTS AND DESIGNS
Cap. 460.
“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
Property right.
Added by:
IX. 2003.116.
64. A registered design is a property right obtained by the
registraion of the design uder this Act. The proprietor of a
registered design has the rights and remedies provided by this Act.
Requirements for 
protection.
Added by:
IX. 2003.116.
65. (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.
Novelty.
Added by:
IX. 2003.116.
66. 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.
Individual 
character.
Added by:
IX. 2003.116.
67. (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.
Disclosure.
Added by:
IX. 2003.116.
68. (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
PATENTS AND DESIGNS _g CAP. 417.  29
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
cliamed, the date of priority. The design shall not, however, be
deemed to have been made available to the public becuase 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.
Designs dictated 
by their technical 
function and 
designs of inter-
connections.
Added by:
IX. 2003.116.
69. (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 aplied 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.
Designs contrary to 
public policy or 
morality.
Added by:
IX. 2003.116.
70. A right in a registered design shall not subsist in a design
which is contrary to public policy or to accepted principles of
morality.
Scope of 
protection.
Added by:
IX. 2003.116.
71. (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.
Term of protection.
Added by:
IX. 2003.116.
72. (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.
30 _g CAP. 417. PATENTS AND DESIGNS
Renewal of 
registration.
Added by:
IX. 2003.116.
73. (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 regisration is not renewed in accordance with the
above provisions, the Comptroller shall remove the design from the
register.
Grounds for refusal 
of a registration.
Added by:
IX. 2003.116.
74. A design shall be refused registration:
( a ) if the design does not fall within the defintion 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 containes 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 Presidentail 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.
PATENTS AND DESIGNS _g CAP. 417.  31
Exclusive rights 
conferred by the 
design right.
Added by:
IX. 2003.116.
75. (1) The registration of a design shall confer on its holder
the exclusvie 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.
Limitation of the 
rights conferred by 
the design right.
Added by:
IX. 2003.116.
76. (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.
Exhaustion of 
rights.
Added by:
IX. 2003.116.
77. (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.
32 _g CAP. 417. PATENTS AND DESIGNS
Relationship to 
other forms of 
protection.
Added by:
IX. 2003.116.
78. (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.
Cap. 415.
(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.
Nature of 
registered design.
Added by:
IX. 2003.116.
79. A registered design is the personal property of its owner.
Co-ownership of a 
registered design.
Added by:
IX. 2003.116.
80. (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.
Transmission of a 
registered design.
Added by:
IX. 2003.116.
81. (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.
PATENTS AND DESIGNS _g CAP. 417.  33
(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 busines.
Registrations of 
transactions 
affecting a 
registered design.
Added by:
IX. 2003.116.
82. (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.
Application for 
registration of 
design as object of 
property.
Added by:
IX. 2003.116.
83. 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.
Licensing of a 
registered design.
Added by:
IX. 2003.116.
84. (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.
34 _g CAP. 417. PATENTS AND DESIGNS
(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 constured 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 inlcude a sub-licence or sub-licensee.
Exclusive licences.
Added by:
IX. 2003.116.
85. (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.
General provisions 
as to the rights of 
licensees in case of 
infringement.
Added by:
IX. 2003.116.
86. (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 proceedigns 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 desing 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.
Exclusive licensee 
having right and 
remedies of 
assignee.
Added by:
IX. 2003.116.
87. (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
proccedings 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 registred design; and
references in this Act to the proprietor of a registered design
relating to infringement shall be construed accordingly.
PATENTS AND DESIGNS _g CAP. 417.  35
(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
relaitng 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 infringment;
(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 artricle as ti
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
Application for 
registration.
Added by:
IX. 2003.116.
88. 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;
36 _g CAP. 417. PATENTS AND DESIGNS
( 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.
Date of filing.
Added by:
IX. 2003.116.
89. (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.
Classification of 
designs.
Added by:
IX. 2003.116.
90. (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.
Claim to priority of 
Convention 
application.
Added by:
IX. 2003.116.
91. (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
equivalent to a regular national filing under its
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.
PATENTS AND DESIGNS _g CAP. 417.  37
(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.
Claim to priority 
from other relevant 
overseas 
applications.
Added by:
IX. 2003.116.
92. (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.
Examination of 
application.
Added by:
IX. 2003.116.
93. (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.
38 _g CAP. 417. PATENTS AND DESIGNS
Withdrawal, or 
amendment, of 
application.
Added by:
IX. 2003.116.
94. (1) The applicant may at any time withdraw his
applicaton.
(2) An application may be amended, at the request of the
applicant, only by correcting -
( a ) the name or addres 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.
Registration.
Added by:
IX. 2003.116.
95. (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 registraion, and that date shall be
deemed for the purposes of this Act to be the date of registration.
(4) On the registraton 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.
Alteration of 
registered design.
Added by:
IX. 2003.116.
96. (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.
Surrender of a 
registered design.
Added by:
IX. 2003.116.
97. (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.
Grounds for 
invalidity of 
registration.
Added by:
IX. 2003.116.
98. (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;
PATENTS AND DESIGNS _g CAP. 417.  39
( b ) if it does not fulfill the requirements of articles 65 to
70;
( c ) if the design is the same or similar to a prior design
which has been made vailable to the public after the
date of filing of the application or, if priority is
cliamed, after the date of priority, and which prior
design is protected from adate prior to the said date by
a registered design or an applciation 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.
Acts of agent or 
representative.
Added by:
IX. 2003.116.
99. (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 writ of summons 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 ot
substitute his name as the prorietor of the register
40 _g CAP. 417. PATENTS AND DESIGNS
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.
Effect of 
acquiescence.
Added by:
IX. 2003.116.
100. (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 perid 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 earier
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
Maintenance and 
content of register.
Added by:
IX. 2003.116.
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 ) registerd designs;
( b ) the relevant particulars of registable 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:
PATENTS AND DESIGNS _g CAP. 417.  41
(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 testamenary 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 assignement; and
( h ) such other matters relating to registered designs as the
Comptroller may deem necessary.
Public inspection 
of register.
Added by:
IX. 2003.116.
102. (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.
Rectification or 
correction of the 
register.
Added by:
IX. 2003.116.
103. (1) Any person having a sufficient interest may apply for
the recitification of an error or omission in the register:
Provided that an application for rectification may not be
42 _g CAP. 417. PATENTS AND DESIGNS
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 writ of summons 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 inquestion 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.
Power to require 
the use of forms.
Added by:
IX. 2003.116.
104. The Comptroller may require the use of such forms as he
may direct for any purpose relating to the registration of a design or
anyother proceeding before him under this Act.
Information about 
applications and 
registered designs.
Added by:
IX. 2003.116.
105. (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;
PATENTS AND DESIGNS _g CAP. 417.  43
( 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 dispargaes 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.
Exclusion or 
liability in respect 
of official acts.
Added by:
IX. 2003.116.
106. (1) Registration by the Comptroller shall not be deemed
to be a warrantly 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.
Registration to be 
prima facie  
evidence of 
validity.
Added by:
IX. 2003.116.
107. 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.
Certification of 
validity of 
contested 
registration.
Added by:
IX. 2003.116.
108. 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.
Comptroller’s 
appearance in 
proceedings 
involving the 
register.
Added by:
IX. 2003.116.
109. (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 proccedings 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,
44 _g CAP. 417. PATENTS AND DESIGNS
( 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.
Appeals from the 
Comptroller’s 
decision.
Added by:
IX. 2003.116.
Cap. 12.
110. (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(6) 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 vestred 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.
Business hours.
Added by:
IX. 2003.116.
111. (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.
Recognition of 
agents.
Added by:
IX. 2003.116.
112. (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.
PATENTS AND DESIGNS _g CAP. 417.  45
PART XXII
INFRINGEMENT
Action for 
infringement.
Added by:
IX. 2003.116.
113. (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.
Order for delivery 
up of infringing 
machinery, 
products or 
material.
Added by:
IX. 2003.116.
114. (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
discoverning 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.
Order as to 
disposal of 
infringing 
machinery, 
products or 
material.
Added by:
IX. 2003.116.
115. (1) Where infringing goods, material or products have
been delivered up in pursuance of an order under article 114, an
action by writ of summons 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
46 _g CAP. 417. PATENTS AND DESIGNS
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 perosn in whose possession, custody or control the
products were before being delivered up shall be entitled to their
return.
Remedy for 
groundless threats 
of infringement 
proceedings.
Added by:
IX. 2003.116.
116. (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 writ of summons 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.
Unauthorised use 
of registered 
design.
Added by:
IX. 2003.116.
117. (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 ten
thousand liri or to both such fine and imprisonment.
(2) It shall be a defence for aperson 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.
Falsification of 
register.
Added by:
IX. 2003.116.
118. (1) Any person who knowing or having reason to believe
that it is false -
( a ) makes, or cuases to be made, a false entry in the
register of designs; or
PATENTS AND DESIGNS _g CAP. 417.  47
( 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 tha five thousand liri or to both
such fine and imprisonment.
Falsely 
representing a 
design as 
registered.
Added by:
IX. 2003.116.
119. (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 one hundred liri and not more than five thousand
liri.
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 one hundred liri and not more than five thousand liri.
Unauthorised use 
of certain devices, 
emblems, etc.
Added by:
IX. 2003.116.
120. (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 three
thousand liri.
Delivery up of 
infringing 
machinery, goods, 
etc.
Added by:
IX. 2003.116.
121. 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.
Powers of 
Magistrates.
Added by:
IX. 2003.116.
122. 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,
48 _g CAP. 417. PATENTS AND DESIGNS
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.
Where owner of 
goods is unknown.
Added by:
IX. 2003.116.
123. 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.
Forfeiture of things 
seized.
Added by:
IX. 2003.116.
124. 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.
Procedure where 
owner is unknown.
Added by:
IX. 2003.116.
125. (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.
Award of 
compensation to 
parties in good 
faith.
Added by:
IX. 2003.116.
126. 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.
Limitations of 
criminal actions.
Added by:
IX. 2003.116.
127. 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.
Rights to damages 
not affected.
Added by:
IX. 2003.116.
128. 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.
Employment and 
employee.
Added by:
IX. 2003.116.
129. 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.
PATENTS AND DESIGNS _g CAP. 417.  49
PART XXIII
GENERAL PROVISIONS
Burden of proving 
use of design.
Added by:
IX. 2003.116.
130. 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.
Limitations of civil 
actions.
Added by:
IX. 2003.116.
131. 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
Power of Minister 
to make 
regulations.
Added by:
IX. 2003.116.
132. (1) The Minister may make regulations for the better
administration of Parts XVIII to XXIV of this Act, making such
rules as are required byh 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:
( 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;
50 _g CAP. 417. PATENTS AND DESIGNS
( 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 byt his 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.
Repeal of 
Industrial Property 
(Protection) 
Ordinance, and 
transitory 
provision.
Added by:
IX. 2003.116.
Cap. 29.
133. (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.
Existing registered 
designs.
(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.
Proceedings under 
old law.
(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.
Effects of 
registration 
infringement
(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
PATENTS AND DESIGNS _g CAP. 417.  51
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.
Infringing goods, 
material or 
products.
(7) Article 114 shall apply to infringing goods, material or
products whehter made before or after the commencement of this
article.
Rights and 
remedies of 
licensee.
(8) Article 86 shall apply to licences granted before the
commencement of this article, but only in relation to infringement
committed after its commencement.
Co-ownership of a 
registered design.
(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.
Assignment, etc., 
of a registered 
design.
(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 registrered
his title, any application for registration of an
assignment after its commencement shall be made
under article 83.
Licensing of a 
registered design.
(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 commecnement 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 applciation for registration
filed before the commencemnet 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.
52 _g CAP. 417. PATENTS AND DESIGNS
( c ) Notice duly given shall be irrevocabale and shall have
the effect that the aplication 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.
