MaltaGenerale

Malta EPs / European Patent Validation in Malta

EP Validation in Malta

Malta became member state of the European Patent Organisation in 2007.
Since the very beginning of Malta's Membership we are entrusted by leading international law firms to carry out Malta EP Validations for their clients.

After its grant by the EPO (European Patent Office) an EP which indicates Malta as a designated contracting state has to be validated in Malta within specific time limits.

Requirements

Filing requirements for Malta EP Validations:

  1. The Power of Attorney (POA Requirements);
  2. A copy of the EP Registration Certificate (Extract from the European Patent Bulletin);
  3. A translation into English in case the EP was granted in German (DE) or French (FR);

Translation

For EPs granted in English (Official Language prescribed by Malta in terms of Article 65 of the EPC), a translation is not required.
EPs granted in German (DE) or French (FR) require a translation into English of the patent title, description, claims and drawings. The translation can be filed with the Malta IPO within 2 months from the filing date of the Validation Application.

Official Fees

Official Fees for EP Validations have not yet been issued in Malta.
EP Validation in Malta may be subject to official charges that may be implemented in future.
Possible future official fees will not be retroactive. All clients will be kept informed of any future official charges.


Validation of EPs granted in English

On 24th January 2013 the Malta IPO informed us on the introduction of a new and specific Validation Process for EPs which are granted in English (EN) - The communication from the IPO clarifies the following:

"The Malta IPO clarifies that in order to validate a European Patent (EP) which has been granted in the English language, the request for renewal, together with the prescribed fee and a copy of decision of grant issued by the EPO or a copy of the page of the EPO bulletin containing the grant, is to be submitted to this office on the attached form when the EP is due for its first renewal in Malta.
For cases where the EP has been granted in French or German, Article 7 (2) of Subsidiary Legislation 417.05 entitled European Patent Convention Regulations applies; i.e. 'The owner of the patent shall furnish a translation into English to the Office within the prescribed period as stipulated in Article 65 (1) of the Convention.' "

EP Validation Deadlines in Malta

An overview on the EP Validation Deadlines depending on the grant language of the EP:

EN DE / FR
EP Validation Deadline: EPs granted in English (EN) can only be validated in combination with the first patent renewal in Malta after the grant date of the EP.
Validation and first renewal cannot be filed separately of each other.
EPs granted in German (DE) or French (FR) have to be validated in Malta within 3 months from the grant date of the EP.
Earliest possible EP Validation: The validation / first renewal of the EP can be filed up to 6 months before the first patent renewal due date in Malta. EPs granted in German (DE) or French (FR) can be validated directly after the grant date within 3 months from the grant date of the EP.
Latest possible EP Validation: Since the validation of EPs granted in English (EN) is connected with the patent's first renewal in Malta it is also possible to file the validation / first renewal late (up to the end of the 6th month from the due date of the first renewal in Malta). The validation of EPs granted in German (DE) or French (FR) is only possible within 3 months from the grant date of the EP.
A later validation is not possible.
EP Validation only in connection with the first renewal: Yes. The EP has to be validated together with the patent's first renewal in Malta. No. The EP Validation must be filed separately from a renewal application.
Should a deadline fall on a weekend or on a public holiday the deadline will be deemed to be the day before the weekend or public holiday.

Validation Deadline Examples

Examples on Validation Deadlines depending on the grant language of the EP:

Example I EN DE / FR
  EP granted in English EP granted in German or French
EP filing date with the EPO: 12th March 2010 12th March 2010
EP grant date by the EPO: 05th May 2017 05th May 2017
Earliest possible filing date of Malta EP Validation: 12th September 2017
(6 months before the first patent renewal date in Malta)
05th May 2017
(EP grant date)
Latest possible filing date of Malta EP Validation: 30th September 2018
(end of the 6th month after the first patent renewal due date in Malta)
05th August 2017
(3 months from the EP grant date)

Example II EN DE / FR
  EP granted in English EP granted in German or French
EP filing date with the EPO: 14th November 2012 14th November 2012
EP grant date by the EPO: 20th June 2017 20th June 2017
Earliest possible filing date of Malta EP Validation: 20th June 2017
(in this case the validation can be filed immediately)
20th June 2017
(EP grant date)
Latest possible filing date of Malta EP Validation: 31st May 2018
(end of the 6th month after the first patent renewal due date in Malta)
20th September 2017
(3 months from the EP grant date)

Certificates

The timeframe from filing to validation depends on the working processes of the Malta IPO. It usually takes 6-8 weeks until the certificate will be issued.
In case of EPs granted in English (EN) the Malta IPO issues a "Renewal Certificate" as the validation is combined with the Malta first renewal.
In case of EPs granted in German (DE) or French (FR) a "Validation Acknowledgement" will be issued by the Malta IPO.

Renewal & Annuity

After the EP Validation has been processed annuity payments are handled like Renewals for Maltese National Patents.