Intellectual Property

Areas of Expertise

IP is the cornerstone of many businesses.  We assist clients in formulating an IP strategy to better manage, commercialise and protect their respective IP assets.

Copyright

Copyright is a right granted automatically in relation to qualifying original works.
Despite the automatic nature of copyright there are important considerations which must be taken account of to ensure that you own and are able to exploit your rights.

Copyright

General Overview

What is Copyright?

The Copyright Act, Chapter 415 of the Laws of Malta fully transposes the EU Directives and Regulations regulating copyright.

The following works are eligible for copyright protection:

  1. artistic works;
  2. audiovisual works;
  3. databases;
  4. literary works;
  5. musical works.

 

 Do I need to apply

No – copyright protection is automatic.

 

What are the conditions?

The work must have an original character and must be written down or affixed in any material form.

Trademarks

Once registered a trademark grants its proprietor exclusive rights over the mark registered.  As a result, no person may use any mark which is identical or similar to the registered mark in relation to goods and services identical to those registered.
Trademarks are vital tools in the protection of the brand.

Trademarks

General Overview

What is a trademark?

A trademark is sign which distinguishes goods or services of one undertaking from those of other undertakings. A trademark may, in particular, consist of words (including personal names), figurative element, letters, numerals or the shape of goods or their packaging.

The most popular types of marks are:

  • Word Marks – protection is granted to the word used.
  • Figurative – protection is granted to the particular way that the mark is graphically depicted.

Protection can nowadays also be in certain circumstances sought for sound and smell.

What sort of protection is granted?

Once registered, a trademark grants its proprietor exclusive rights over the mark registered.  As a result, no person may use any mark which is identical or similar to the registered mark in relation to goods and services identical to those registered.

Trademark protection is granted in respect of the categories of business that the organisation is involved in.  Accordingly, goods and services are divided into 45 different categories (classes).

What is the period of protection?

Registration is for a period of 10 years, which can be renewed for further periods.

In which countries can I seek protection?

Clients are nowadays likely to be trading in multiple countries and thus they must seriously consider obtaining IP protection in all such countries.  There are a number of avenues that can be considered:

  • Individual registration in each jurisdiction
  • Community Trade Mark – which grants trademark protection in all countries of the European Union;
  • WIPO – The ‘Madrid System’ administered by WIPO provides a centralised system through which an applicant is granted the possibility of registering and managing marks worldwide in up to 90 countries by filing one application.

Trademarks

How can you assist?

We assist clients through the whole life cycle of a trademark registration:

Stage 1 – Preliminary

We typically recommend that organisations involve us during the branding exercise in order to ensure that any mark or sign chosen:

  • can be protected – there are signs that cannot be protected, either because they are contrary to public policy or because they are descriptive in nature. For example, a company engaged in the manufacturing of cars would not be able to register “drive” as a trademark as this merely describes the nature of goods and/or services that such an organisation is engaged in.
  • does not infringe the rights of other organisations – by conducting prior searches in the trade mark databases, we are able to determine whether there are other trademarks which are identical or similar to the trademark sought.

On the basis of the discussions undertaken with clients and the outcome of our searches and research, we would be in a position to recommend to the client the most suitable course of action, either by recommending changes to the original mark or to proceed with a new branding exercise.

Stage 2 – Application

Submission of the relative trademark application.  Of particular importance is the choice of the respective mark and the class in which protection is sought.

Stage 3 – Opposition

Following the publication of a trademark application, holders of similar marks may oppose the registration.  If a trademark opposition is received, we would investigate any claim made and recommend a course of action either by proceeding with the registration or by negotiating with the prior right holder.

 Stage 4 – Monitoring

A registered mark must be closely monitored in order to ensure that no third party uses in trade any mark which is identical or similar to the trademark registered.

Furthermore, monitoring is also extended to cover any applications submitted by third parties.  These will be flagged, identified and discussed with clients in order to assess whether they pose a threat to the branding and commercialisation intentions of the client.

Patents

A patent grants the patent holder the exclusive right to exclude others from making, using, importing, and selling the patented innovation for a limited period of time.

Patents

General Overview

What is a Patent?

A patent is an intellectual property right on granted for a limited period of time over an invention. The legislative instrument regulating patents in Malta is the Patents and Designs Act, Chapter 417 of the Laws of Malta.

A patent is granted in relation to an invention, which must be:

  1. new;
  2. involve an inventive step; and
  3. susceptible to industrial applications.

To be considered novel, an invention must not form part of a prior art and thus was not available to the public before the filing date or priority date of the application.   An invention is considered to have an inventive step if its creation is not obvious to a person skilled in the art.   Furthermore, such invention is considered to be industrially applicable if it can be made or used in any kind of industry, considered in the broadest sense of the term.

The Rights Granted by a Patent

When the patent grants a right on a product, the holder holds the following rights to prevent third parties from performing, without his authorisation:

  • the making of a product with the same subject-matter;
  • offering or putting a product on the market, using it or importing or stocking it to offer or put it on the market;
  • inducing third parties to perform the above acts.

This right is limited in that the holder of a patent has no right to prevent third parties in such a manner in the following scenarios:

  • if the act is done privately and for non-commercial purposes;
  • if it is purely for experimental purposes or scientific research; or
  • if it is required under Maltese law.

A patent also confers its proprietor with the right to prevent third parties from supplying or offering to supply a person with means, relating to an element of that invention, essential for carrying it out, when such third party knows, or ought to know in the circumstances, that those means are suitable and intended for carrying out that invention.  However the proprietor has no right to limit third parties from offering such a product for sale, importing it or using it after it has been put on the market by the proprietor himself or with his express consent.

Newer Areas of Technology

In accordance to Article 52 of the European Patent Convention, the following inventions are not patentable: (i) playing games (ii) doing business (iii) computer programs and (iv) presentations of information.

There is however considerable debate about the extent to which European patents should be available for innovations in the newer areas of technology, particularly in the fields of business methods and software.

European patent law explicitly excludes methods of doing business (and computer programs) from patent protection and similar provisions are found in the patent acts of most European countries (as well as Malta). However, over the years these exclusions have been modified such that it is still possible, in certain circumstances, to obtain patent protection for inventions devised in a business context.

In simple words: Patents for computer programs and business methods are no longer excluded outright.  European Patent Office (EPO) believes that the invention must solve – in non- obvious (or inventive) manner a technical problem and the technical solution may not be obvious. The EPO accepts that a technical problem can be found, even in business methods, and a solution implemented in software. The patent offices and courts in other European countries have adopted a similar view, but approach the problem from other angles.

Patents

How can we assist?

We work closely with industry experts in order to be able to assist in:

  • Prior Art Searching
  • Patent Filing
  • Patent Registration

Designs

Design rights offer attractive benefits over other forms of IP: speed, simplicity of registration and relatively low cost
Design rights are a valuable tool in the intellectual property strategy of a business.

Design Rights

General Overview

What is a design?

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 ornamentation

 What are the conditions for registration?

A design shall be protected by a design right to the extent that it is new and has individual character.

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

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.

What rights are granted?

The registration of a design shall confer on its holder the exclusive 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.

 What is the period of protection?

Protection is granted for a period of five (5) years from the date of filing of application, renewable for further five (5) year periods up to a maximum of twenty-five (25) years.

What is a Patent?

A patent is an intellectual property right on granted for a limited period of time over an invention. The legislative instrument regulating patents in Malta is the Patents and Designs Act, Chapter 417 of the Laws of Malta.

A patent is granted in relation to an invention, which must be:

  1. new;
  2. involve an inventive step; and
  3. susceptible to industrial applications.

To be considered novel, an invention must not form part of a prior art and thus was not available to the public before the filing date or priority date of the application.   An invention is considered to have an inventive step if its creation is not obvious to a person skilled in the art.   Furthermore, such invention is considered to be industrially applicable if it can be made or used in any kind of industry, considered in the broadest sense of the term.

The Rights Granted by a Patent

When the patent grants a right on a product, the holder holds the following rights to prevent third parties from performing, without his authorisation:

  • the making of a product with the same subject-matter;
  • offering or putting a product on the market, using it or importing or stocking it to offer or put it on the market;
  • inducing third parties to perform the above acts.

This right is limited in that the holder of a patent has no right to prevent third parties in such a manner in the following scenarios:

  • if the act is done privately and for non-commercial purposes;
  • if it is purely for experimental purposes or scientific research; or
  • if it is required under Maltese law.

A patent also confers its proprietor with the right to prevent third parties from supplying or offering to supply a person with means, relating to an element of that invention, essential for carrying it out, when such third party knows, or ought to know in the circumstances, that those means are suitable and intended for carrying out that invention.  However the proprietor has no right to limit third parties from offering such a product for sale, importing it or using it after it has been put on the market by the proprietor himself or with his express consent.

Newer Areas of Technology

In accordance to Article 52 of the European Patent Convention, the following inventions are not patentable: (i) playing games (ii) doing business (iii) computer programs and (iv) presentations of information.

There is however considerable debate about the extent to which European patents should be available for innovations in the newer areas of technology, particularly in the fields of business methods and software.

European patent law explicitly excludes methods of doing business (and computer programs) from patent protection and similar provisions are found in the patent acts of most European countries (as well as Malta). However, over the years these exclusions have been modified such that it is still possible, in certain circumstances, to obtain patent protection for inventions devised in a business context.

In simple words: Patents for computer programs and business methods are no longer excluded outright.  European Patent Office (EPO) believes that the invention must solve – in non- obvious (or inventive) manner a technical problem and the technical solution may not be obvious. The EPO accepts that a technical problem can be found, even in business methods, and a solution implemented in software. The patent offices and courts in other European countries have adopted a similar view, but approach the problem from other angles.

Design Rights

How can we assist?
  • Strategic review on suitability of any unregistered design rights;
  • Assistance in the registration of design rights;
  • Licensing
  • Infringement

Areas of Expertise