The main source of patent law in Malta is the Patents and Designs Act, Chapter 417 of the Laws of Malta, which governs patentable subject matter, conditions for patentability, application, examination, grant and duration of patents, as well as the rights conferred by a patent and remedies for infringement. It is supplemented by subsidiary legislation, which regulates filing procedures and other administrative matters, as well as PCT and EPC interactions with the local procedures.

An invention is patentable if it is novel, involves an inventive step and is susceptible to industrial application. Both products and processes may be patentable, including biotechnological inventions. In a manner which largely mirrors the EPC, there are some statutory exclusions from patentability only to the extent to which a patent application or patent relates to such subject matter or activities as such, namely:

• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• schemes, rules and methods for performing mental acts, playing games or doing business;
• computer programs; and
• presentations of information.

In addition, methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body, are not patentable.

The Comptroller of Industrial Property under the Industrial Property Registrations Directorate (IPRD) within the Commerce Department is responsible for receiving applications, conducting formal examinations and granting national patents. Compliant applications are published 18 months after the filing or priority date and proceed to grant once all requirements are met; however, a request can be made for the patent application to proceed directly to grant.

The routes available for national patent protection in Malta are:

• direct filing in Malta;
• EP validated in Malta after the EPO grant; and
• PCT application designating an EP and entering the national phase thereafter (it is not currently possible to enter the national phase directly through PCT).

A patent granted under the Patents and Designs Act confers on the proprietor the exclusive right to exploit the invention in Malta and prevent third parties from carrying out a number of acts, namely as outlined below.

• The making, offering, putting on the market, using, importing or stocking the product or directly obtained by the process for the preceding purposes.
• The rights can be assigned, licensed and enforced; however, there are some limitations on private and non-commercial use, experimental research and regulatory and Bolar-type exemptions in the pharmaceutical field.
• The standard term of a patent is 20 years, calculated from the filing date; however, SPCs for medicinal products and plant protection products are available for up to five years, with a further six-month paediatric extension.
• A patent lapses if renewal fees payable from the third year onwards are not paid by the due date. There is a six-month grace period for late renewals, subject to a surcharge.

A patent’s ownership vests in the applicant/proprietor recorded in the register and entitlement to apply for a patent lies with the inventor, any successor in title and joint inventors.

In the case of inventions made by employees during their normal or specifically assigned duties, this invention would belong to the employer unless otherwise contracted and the employee remains designated as the employee. An employee may also be entitled to equitable remuneration if the invention is of exceptional benefit to the employer, taking into consideration the employee’s remuneration. In practice, however, these matters are regulated by contract.

A patent assignment must be made in writing and clearly identify the patent concerned. It can cover existing patents, pending applications and/or future rights. It must be recorded in the patent register; otherwise, it is only valid inter partes and not effective against third parties in good faith.

A patent can also be licensed via exclusive or non-exclusive licences, which must be made in writing and may also be recorded in the patent register.

Any breach of the exclusive rights defined in 1.3 Scope, Term and Maintenance of Patent Rights constitutes direct infringement. Indirect infringement is also possible where persons supply or offer to supply means relating to an essential element of an invention, knowing or where it is obvious that those means are suitable and intended for putting the invention into effect.

Patent invalidity may be raised by way of defence or counterclaim. Other defences raised by way of exceptions to the exclusive rights granted by a patent can be set up:

• 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;
• where the act consists of making or using such a product for purely experimental purposes or for scientific research;
• 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;
• 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;
• when the use of the patented invention is on board vessels of the countries of the Paris Union 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; and
• when the use of that patented invention is in the construction or operation of aircraft or land vehicles of countries of the Paris Union or of accessories to such aircraft or land vehicles when such aircraft or vehicles temporarily or accidentally enter the territory of Malta.

The First Hall of the Civil Court deals with patent infringements; however, the Patents Tribunal deals with revocation and invalidity proceedings. Interim and ex parte measures fall within the jurisdiction of the Civil Court and there are a variety of injunctions available, including specific measures that may be issued by virtue of the Enforcement of Intellectual Property Rights Regulations, Chapter 488 of the Laws of Malta. Interim injunctions are typically resolved within months; however, main infringement actions can take years.

If a particular infringing act in question is already the subject of infringement proceedings, the defendant in the infringement proceedings is precluded from instituting proceedings for a declaration of non-infringement.

Proceedings for non-infringement may also be instituted in conjunction with revocation proceedings, unless such revocation proceedings form part of ongoing infringement proceedings.

If there are ongoing EPO proceedings, these would run in parallel to local action. However, this has to be dealt with on a case-by-case basis; the Patents Tribunal is only statutorily bound to stay proceedings for infringement in respect of:

• a patent application filed with the Comptroller until after a final decision has been made by the Comptroller to grant or refuse a patent on the application;
• a patent application filed with the EPO until after the EPO has made a final decision to grant or refuse a patent on the application.

The Trademarks Act, Chapter 597 of the Laws of Malta and its relevant subsidiary legislation govern the registration, protection, enforcement and licensing of trade marks in Malta, transposing the Trademark Directive.

Any sign that can distinguish the goods or services of one undertaking from others and is also capable of being represented on the trade mark register in a manner which enables the determination of the clear and precise subject matter of protection can consist of a trade mark. The law provides some non-exhaustive examples, including words, logos, letters, shapes, colours, sounds, patterns, position marks and motion or multimedia marks.

Malta also protects unregistered signs under the law on unfair competition in the Commercial Code, Chapter 13 of the laws of Malta. This recognises names, marks or distinctive devices capable of creating confusion with any other name, mark or distinctive device lawfully used by others.

Trade mark protection in Malta is based on the registration system, provided the trade mark is distinctive and does not fall within any absolute grounds for refusal. Use is not a condition for registration; however, a registered trade mark becomes vulnerable to revocation for non-use if it is not put to genuine use.

A trade mark can also acquire distinctiveness even if initially it is deemed non-distinctive, but there is an evidentiary threshold associated with it.

Well-known marks with a reputation are also protectable in Malta, even without registration; however, this carries a high evidentiary threshold.

A registered trade mark confers exclusive rights enforceable against third parties under the Trademarks Act. The process starts with a trade mark application, which is examined by the IPRD for formalities and absolute and relative grounds; however, relative grounds are not raised ex officio. Once cleared on formal and absolute grounds, a trade mark application proceeds to publication for opposition for a three-month period.

Third parties can oppose the trade mark application on relevant grounds during this time. In a problem-free scenario, the trade mark would proceed to registration and be entered in the register with effect from the filing date for a period of ten years, renewable indefinitely.

Malta operates a single-class trade mark system and there are no discounted official fees available for multi-class applications. There are no non-use or maintenance filings required apart from the standard ten-year renewals.

Trade marks are registered for a period of ten years and can be renewed indefinitely. The office does not ask for proof of use; however, trade marks can be attacked by third parties on grounds of non-use, which exceeds a consecutive period of five years.

Trade mark registration confers exclusive property rights to the proprietor in Malta to prevent third parties from using in the course of trade any infringing signs which are identical or are likely to be confused or (when the trade mark has a reputation in Malta) use without due cause which takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark and can prohibit various actions involving the trade mark the most common being affixing it to goods, offering or placing on the market.

There are also a number of statutory defences or limitations, however, such as the own-name defence, referential use and descriptive use. There are also limitations which arise due to acquiescence, where the proprietor of an earlier mark has acquiesced for 5 consecutive years to the use of a later registered mark, for instance. Moreover, where goods are placed on the EU/EEA market with the consent of the proprietor, further commercialisation cannot be prohibited except for when there are other legitimate reasons to do so.

As of the time of writing, the Civil Court First Hall is still the court with jurisdiction to deal with such matters, although this is expected to change in favour of the Commercial Court. A number of civil remedies are available, including seizure, damages and destruction, as well as measures targeting counterfeit goods in transit, ie, goods not destined for release on the Maltese market. In certain contexts, trade mark infringement can constitute a criminal act; however, this would require prosecution by the Executive Police and the remedies would be punitive in nature.

The Copyright Act, Chapter 415 of the laws of Malta, is the main statute governing copyright protection and confers eligibility for copyright on artistic works, including works irrespective of artistic quality, as well as works of architecture, audiovisual works, databases, literary works and musical works.

Copyright protection is automatic; however, it requires fixation, ie, embodiment of the material subject to copyright. No registration is required, although there are several best practices to be considered depending on the nature of the work eligible for copyright.

An author is necessarily the natural person or group of natural persons who created the work eligible for copyright. Joint authorship is recognised as a work produced by the collaboration of two or more authors in which the contribution of each author is not separable from the contribution of the other author/s. There is also a presumption that in the case of computer programs or databases created in the course of employment, in the execution of the employee’s duties or following instructions given by the employer, the economic rights are deemed transferred to the employer unless the contrary is set out contractually.

Moral rights are retained by the author and cannot be transferred inter vivos. Moral rights can be waived and transferred causa mortis.

Copyright lasts for 70 years after the end of the year in which the author dies. There are no termination or reversion rights that automatically apply.

Under the Maltese Copyright Act, copyright is subject to a closed list of statutory exceptions rather than a general fair dealing doctrine and these exceptions apply only in specific cases that do not conflict with the normal exploitation of the work or unreasonably prejudice the rightholder’s legitimate interests. Permitted uses include temporary technical copies forming an integral part of a technological process, private copying by a natural person for non commercial purposes subject to fair compensation, quotation for purposes such as criticism or review with proper acknowledgement and use by way of caricature, parody or pastiche. Further exceptions cover illustration for teaching or scientific research on a non-commercial basis, uses for the benefit of persons with disabilities, reporting of current events, incidental inclusion of works, certain uses by libraries, archives and educational institutions and uses required for public security or for administrative, parliamentary or judicial proceedings. These exceptions are exhaustively defined by statute and must be interpreted strictly.

Copyright infringement occurs where any person, without the licence of the copyright owner or other right holder, carries out or authorises the carrying out of an act reserved to the owner’s exclusive economic rights, including reproduction, distribution, rental or lending, communication to the public, broadcasting, adaptation or other exploitation of a protected work, whether in whole or in a substantial part.

Infringement also includes:

• the commercial importation, distribution, possession or manufacture of infringing copies;
• the circumvention of effective technological protection measures;
• dealings in devices or services designed to facilitate such circumvention; and
• the unauthorised removal or alteration of electronic rights management information where this facilitates or conceals infringement.

Separate liability arises for the infringement of moral rights where a work is mutilated, distorted or otherwise subjected to derogatory treatment prejudicial to the author’s honour or reputation or where the author’s right of attribution is violated, irrespective of any assignment of economic rights.

A variety of civil remedies are available, including injunctions, damages, seizures, measures for destruction and blocking orders vis-à-vis intermediaries, as Malta fully transposed the enforcement of intellectual property rights by virtue of Chapter 488 of the Laws of Malta.

Criminal proceedings are also possible in certain circumstances; however, these would need to be prosecuted by the executive police and may lead to punitive measures.

The courts would be expected to assess the “substantial part” requirement in copying from both a qualitative and quantitative perspective. As the law provides for an exclusive right in respect of the protected material in its totality or substantial part thereof, either in its original form or in any form recognisably derived from the original, non-literal copying is also expected to be actionable as long as the other requirements for infringements are met.

Collecting Societies undergo an authorisation process under the auspices of the Copyright Board in Malta, which is statutorily set up. The Copyright Board also approves the applicable tariffs. The Act does not establish broad compulsory licensing schemes for sectors such as education or broadcasting, but it does impose mandatory collective management for specific uses and provides for non-waivable rights to equitable remuneration in defined cases, such as rental of sound recordings or audiovisual works. Disputes concerning approved royalties, licence terms or tariffs, including disagreements over equitable remuneration, are resolved by the Copyright Board, whose decisions are subject to appeal before the Court of Appeal; however, once these are approved, enforcement of such tariffs is a matter for civil infringement or contractual breach proceedings.

The Broadcasting Act also provides for aspects of “must offer” content vis-à-vis general interest objective service licensees broadcasting on the general interest objective network.

The Patents and Designs Act (Chapter 417 of the Laws of Malta) creates a design right that protects the appearance of the whole or a part of a product, resulting from features such as lines, contours, colours, shape, texture and materials, provided the design is new and has individual character. Protection may extend to product shape, configuration, surface decoration and packaging, but not to features dictated solely by technical function and there is no specific mention of trade dress per se.

Please see the response above for the requirements for protection. Unregistered design rights may also arise in Malta under the EU unregistered design rights regime, which subsist automatically upon first disclosure in the EU.

Industrial designs are registered with the Comptroller of Industrial Property under the Patents and Designs Act (Chapter 417) by filing an application accompanied by representations of the design and payment of the prescribed fee. The official filing fee for a national design application is EUR46.59. Registration typically follows a formal examination and, if accepted, is completed within a few months, after which the design is published and entered in the register.

A registered design is protected for an initial term of five years from the filing date and may be renewed in successive five–year periods up to a maximum of 25 years, subject to payment of renewal fees. Late renewals are also possible within a statutory grace period, failing which the design lapses.

Industrial design infringement occurs where a third party uses a design that does not produce a different overall impression on the informed user from that of a protected registered design, including by making, offering, marketing, importing, exporting or using products incorporating the design without the proprietor’s consent. Civil remedies are available, including seizure, damages, destruction, as well as measures targeting counterfeit goods in transit, ie, goods not destined to be released on the Maltese market.

These relate solely to designs as trade dress is not a statutorily recognised right per se; however, a remedy can still be sought through passing-off/unfair competition and/or trade mark infringement.

Cases on design rights are rare in Malta; however, courts are expected to embrace the interpretations provided by the CJEU vis-à-vis features dictated by technical function and whether the appearance of the feature was chosen exclusively for functional reasons, such that no aesthetic freedom was available to the designer. If alternative shapes or configurations capable of performing the same technical function exist, this generally indicates that the feature is not purely functional.

Elements of a design can be invalidated or rejected if they are attacked on these grounds.

In Malta, trade secret protection is governed by the Trade Secrets Act (Chapter 589 of the Laws of Malta), which transposes Directive (EU) 2016/943 on the protection of undisclosed know-how and business information. A trade secret is defined in Article 2 as information that:

• is secret in the sense that it is not generally known or readily accessible within relevant professional circles;
• has commercial value because it is secret; and
• has been subject to reasonable steps by the lawful holder to maintain its confidentiality.

This protection can cover technical information, commercial data, business strategies, processes, formulas, customer lists and other confidential know-how, provided the statutory criteria are met. To establish protection (and enforce rights), the holder must demonstrate the existence of a trade secret, lawful control over it and (where relief is sought) that it has been unlawfully acquired, used or disclosed or that such unlawful conduct is imminent.

Under the Trade Secrets Act (Chapter 589), trade secret owners must take reasonable steps, appropriate to the circumstances, to preserve the secrecy of the information in order to benefit from protection. In practice, this includes legal organisational and technical measures such as confidentiality and non-disclosure clauses, access controls on a need-to-know basis, internal policies and training on confidential information, segregation of sensitive data and security safeguards (physical and digital). Absolute secrecy is not required; the test is whether the measures taken are objectively reasonable given the nature, value and sensitivity of the information.

Disclosure to employees or third parties does not, in itself, destroy trade secret protection, provided that the disclosure is limited, serves a legitimate business purpose and is accompanied by enforceable confidentiality obligations or duties of confidence. Employees may lawfully access trade secrets in the normal course of employment, but unauthorised use or disclosure, whether by employees or third parties, will be unlawful where it breaches contractual, statutory or fiduciary duties. On the other hand, disclosure without confidentiality safeguards or to persons free to use or further disclose the information, may undermine secrecy and result in loss of protection, as the information may no longer qualify as “secret” within the meaning of the Act.

Misappropriation or unlawful acquisition of a trade secret occurs where information is obtained, used or disclosed without the consent of the trade secret holder through conduct contrary to honest commercial practices.

This includes unauthorised access to, copying of or appropriation of documents, materials or electronic files containing the trade secret; breaches of confidentiality agreements or other duties of confidence; breaches of contractual or legal duties restricting use; and “downstream” misuse where a person knew or ought to have known that the information originated from unlawful conduct.

In employee disputes, acquisition and use of information within the scope of employment is lawful, but use or disclosure outside that scope, ie, contrary to confidentiality obligations, constitutes unlawful use. The Act does not protect employers against employees’ use of general skills and honestly acquired experience.

In joint venture or collaboration settings, it is expected that the analysis would focus on the governing agreements, review the agreed purpose and assess any disclosures that breach contractual confidentiality or use limitations.

It is potentially indefinite as long as the information continues to meet the statutory definition of a trade secret. Accidental or authorised disclosure does not automatically terminate protection; the decisive issue is whether, following the disclosure, the information remains secret within the relevant circles.

Civil remedies available to a trade secret holder include provisional and final injunctions to prohibit or cease unlawful acquisition, use or disclosure; bans on the production, marketing, import or storage of infringing goods, corrective measures (such as recall, depriving goods of their infringing quality, destruction or delivery up of materials embodying the secret) and damages calculated by reference to actual prejudice (including lost profits and unfair gains) or, alternatively, a reasonable royalty. Courts may also order publication of the decision and impose financial penalties for non–compliance with court orders.

During litigation, parties can request various measures to preserve confidentiality, including:

• to have evidence accessible only to court-appointed experts;
• to preserve evidence in the judge’s chambers; and
• to have evidence accessible only to the parties’ lawyers.

Know-how in itself is not a standalone statutory right; however, contractual obligations can create similar confidentiality or non-compete obligations.

Anything that meets the criteria for trade secret protection can constitute protectable know-how; however, technically, anything that can be the subject of a contract can be protected through confidential obligations or, in the case of employment relationships, post-termination restraints. The Maltese courts, however, follow UK practice and post-termination restraints must be strictly and narrowly interpreted and cannot prevent an employee from practising their profession under the guise of confidentiality or know-how.

As know-how per se is not created statutorily, aspects of employee creations are governed by the relevant IP right applicable to them or any contractual undertakings entered into.

Contractual mechanisms such as NDAs, employment confidentiality clauses and non-solicitation and non-compete clauses are typically used to establish buffers and protections around “know-how”.

Know-how may be licensed or assigned, but this generally entails complex contractual arrangements. In assignment scenarios, particular care must be taken to ensure that the assigning party is contractually prevented from further use or disclosure of the transferred know-how.

This is entirely separate from both patents and statutory trade secrets, as it is treated as a transferable intangible commercial asset protected primarily through contract rather than registration. There are no statutory formalities for know–how assignments or licences, but in practice, a clear written agreement is critical to identify the know–how, define scope (assignment vs licence), impose confidentiality and non–use obligations and preserve enforceability, particularly post–termination or where the know–how does not (or no longer) qualify as a trade secret.

Reverse engineering is not statutorily prohibited; however, there are frequent contractual provisions that curb this practice. The Trade Secrets Directive itself provides in its recitals that “reverse engineering of a lawfully acquired product should be considered as a lawful means of acquiring information, except when otherwise contractually agreed.”

There is both copyright and a distinct sui generis database right. Databases may be protected by copyright where, by reason of the selection or arrangement of their contents, they constitute the author’s own intellectual creation, but copyright does not extend to the underlying data as such. Independent of copyright, a sui generis right arises in favour of the maker of a database who has made a qualitatively or quantitatively substantial investment in obtaining, verifying or presenting its contents, giving the right to prevent extraction or re-utilisation of the whole or of a substantial part of the database for fifteen years, subject to renewal where a substantial new investment is made.

This subject is undergoing constant flux; however, a matter is yet to reach the local courts. It seems clear that copyright protection is afforded only to human authors; however, a distinction should be made between purely AI-generated outputs and human output augmented with AI-based tools. That would become a qualitative matter which would need to be assessed on a case-by-case basis.

Text and data mining exceptions are available under statute; however, real-world scenarios in Malta are extremely rare. Theoretically, all enforcement measures available under the Enforcement Directive have been transposed and are available in Malta.

These matters haven’t arisen in Malta yet; however, mechanisms are available to address such conduct. Platforms and tool providers could be exposed to court orders as intermediaries or secondary liability if they are made aware of illegal content.

The most common trade-off between patent and trade secret protection is generally the product’s commercial applicability or commercial interest, ie, whether more income is expected to be generated from exclusivity or royalties. Moreover, theoretically, if a patentable subject is difficult to reverse-engineer, suitable measures can help it retain exclusivity beyond the expiration of patent protection.

There are no judicial or statutory limits on claiming overlapping protection as long as each IP regime’s requirements are independently satisfied.

Naturally, some IP rights are better suited than others to protect specific creations and it is always advisable to assert the most appropriate IP right. If multiple rights are asserted in a dispute, it depends on whether they are asserted concurrently in the claims or in a hierarchical manner. It is expected that if an earlier hierarchical right is established, the court would not have to delve further into the other rights and would decide based on the first right claimed and proven.

Confidential know-how or technical information may be protected as a trade secret before and during a patent application, provided it satisfies the criteria of a trade secret.

Only information actually disclosed in the patent filing is affected. Publication of a patent application (or grant of a patent) destroys trade secret protection for the disclosed subject matter, as it enters the public domain and trade secrets cannot be used to extend exclusivity over what has been publicly taught.

However, undisclosed ancillary or implementation know-how, such as manufacturing processes, optimisation data or improvements not revealed in the patent, may technically continue to enjoy trade secret protection (subject to the ongoing satisfaction of the trade secret criteria). Theoretically, trade secret protection can survive the expiry or invalidation of a patent, but solely in respect of information that was never publicly disclosed.

Trade marks and industrial designs have separate and distinct criteria, as set out in the relevant sections above. Trade Dress, as such, is not a recognised right; however, trade dress or get-up can be protectable under a variety of rights, depending on the elements of the trade dress itself. If it can act as a source of origin, it can be protected via a trade mark or unfair competition rights, which protect distinctive signs. If it meets the criteria for a design right, it may also be eligible for design protection.

Under Maltese law, logos, artistic elements and branding may benefit from cumulative copyright and trade mark protection where they satisfy the independent requirements of each IP right. Copyright arises automatically where the branding element constitutes an original work of authorship, protecting its expressive and artistic aspects, while trade mark law protects the same sign insofar as it functions as a source of origin and meets the requirements of distinctiveness and registrability. There is no statutory hierarchy between the two rights: copyright cannot be used to secure trade mark-like exclusivity over non-distinctive or functional signs, nor can trade mark protection be enforced to control purely artistic expression that does not give rise to a likelihood of confusion.

In multi-faceted infringement cases, it is common to assert multiple IP rights. However, when determining damages, courts focus on the actual economic harm suffered and any unjust enrichment, rather than the number of rights infringed.

Malta is a Member State of the European Union and therefore, cross-border considerations can arise when asserting regional rights, such as the European Union Trademark and its own jurisdictional cascade rules set out in the EU TM Regulation. More broadly, Brussels I Recast is also applicable from a private international law perspective and, in general, the courts rely on CJEU interpretations on matters that have been transposed from the directive into Maltese Law.