Legislative Implementation of Flexibilities - Malta

Title:Articles 39-40 of the Patents and Designs Act, Chapter 417, of 01/06/2002, as amended by Acts IX of 2003 and XVIII of 2005
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Non-voluntary licences.

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 Controller 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.

(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 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:

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; 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

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 claimed 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:

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.