- The Procedure for Obtaining European Patent Validations in Malta
- July 26, 2012 | Authors: Antoine Camilleri; Claude Micallef-Grimaud
- Law Firm: Mamo TCV Advocates - Valletta Office
- The European Patent Convention (EPC) of 1973 is a regional treaty that grants applicants the possibility of obtaining a series of national patents in contracting states to the EPC by filing an application to this effect at the European Patent Office (EPO).
Once the EPO (acting as the examination authority) grants a European Patent (EP), all the national patent offices in the contracting states may subsequently grant a national patent in accordance with domestic procedures relating to EP validations. The Government of the Republic of Malta deposited its instrument of accession to the EPC on 1st December 2006 and the Treaty subsequently entered into force for Malta on 1st March 2007. Consequently, European Patent applications filed on or after 1st March 2007 at the EPO may include also the designation of Malta (being a Contracting State). It is not possible to designate Malta retroactively in applications filed before 1st March 2007.
Maltese Procedure for EP Validations
Once a European Patent is granted by the EPO, the Maltese Industrial Property Office (IPO) would only require a notification from the EPO (or an extract from the European Patent Bulletin) indicating that Malta is designated as a Contracting State in which protection for the invention in question is sought. If the application filed at the European level is in English (the official language prescribed by Malta in terms of Article 65 of the EPC), there would actually be no official costs involved at the local level except for annual renewal costs as explained below. However, if the proceedings before the EPO were carried out in any other language (with the exception of the English language) and the patent in question has been filed in such other language, the owner of the patent is obliged by Maltese law (Regulation 7(2) of the local ‘European Patent Convention Regulations’ hereby referred to as ‘the Regulations’) to furnish a translation into English to the IPO within three months after the date on which the mention of the grant is published in the European Patent Bulletin (as required by Article 65 of the EPC).
In order to be in a position to prepare and file the required application form with the Malta Industrial Property Office to obtain the validation of a European patent, local legal representative(s) will require the following information and documents:
1) The full name, address and postcode of the applicant of the European Patent.
2) The full name, address and postcode of each and every inventor mentioned in the European Patent.
3) If the applicant and the inventor/s are different, an indication in whose name the national Maltese patent is to be issued would also be required (i.e. either in the name of the applicant or of the inventor/s).
4) The number of the European Patent, filing date of the European Patent, date of publication of the grant of the European Patent, and title of the invention of the European Patent.
5) A copy of the decision to grant the European Patent as issued by the EPO OR a copy of the front page of the published European Patent (if already available).
6) An English language version of the European Patent documentation (a Maltese language translation is NOT required). If the patent documentation that was filed at the European level was not in the English language, a certified English language translation of the patent documentation will be required.
This document (i.e. the English language version or English language translation) of the European Patent, together with the application to request the validation in Malta, must be filed with the Malta Industrial Property Office within three (3) months after the date on which the mention of the grant is published in the European Patent Bulletin (as required by Article 65 of the European Patent Convention).
In the application form requesting the validation in Malta, an extension of not more than two (2) months may be requested to provide the English language version/translation of the European Patent.
7) A Power of Attorney will also be required which is to be issued and drawn in favor of the local legal representative(s) by the proprietor of the European Patent. This document needs to be simply signed and no notarization or legalization is required.
Annual Renewal Costs
The obligation to pay renewal fees for the patent application in question shall terminate in the year when the mention of the grant of the European Patent in question is published in the European Patent Bulletin, (as per Article 86 of the EPC). Following that year, renewal fees for the European Patent in question would have to be paid (as per Article 141 of the EPC). These renewal fees would not be paid to the EPO (as in the case of renewal fees for the patent application) but would have to be paid to the relative national Offices in all the designated Contracting States in which protection for the invention in question is sought. In the case of Malta, regulation 9 of the Regulations provides that annual fees for European Patents shall be paid to the IPO for each year following that in which the mention of the grant of the European
Patent is published by the EPO. At present, these fees are identical to the annual fees that are paid in respect of national patent registrations.
Mamo TCV Advocates is in a position to assist with all the formalities described above - particularly, with the preparation and filing of the application form with the Malta Industrial Property Office for the validation of a European Patent as well as liaising with the IPO on various other matters including annual renewals. For a complete rundown of the fees and costs involved kindly send an email to [email protected]
1 Which entered into force in October 1977.
2 And to the Act revising the EPC of 29 November 2000 (Revision Act).
3 Along with the Patent Cooperation Treaty which also came into effect on this date.
4 Subsidiary Legislation 417.05 (Legal Notice 99 of 2007).
5 Regulation 7(2)(b) of Legal Notice 99 of 2007.