The Court of Appeal (inferior jurisdiction) delivered its judgment on May 28 on appeal application 71/2020 LM. The appeal was filed by the German company Leonhard Kurz Stiftung & Co. KG against the decision of the Comptroller of Industrial Property under the Patents and Designs Act, chapter 417 of the Laws of Malta.

The decision of the comptroller had been given on September 24, 2020. The appeal application to the Court of Appeal was filed on October 23, 2020, according to the provisions of article 58 of the Patents and Designs Act.

There are different and specific possibilities of recourse under the Patents and Designs Act, but this case deals specifically about issues related to article 46 of the Patents and Designs Act. On appeal to the Court of Appeal, the applicant unsuccessfully contended that their application to the comptroller according to said article 46 was about the existence of rights and the termination of the same.

The applicant company had first sought recourse through a request according to the provisions of article 46 of the Patents and Designs Act, which calls upon the comptroller to give a decision on said request

This provision refers to a right of restitutio in integrum which generally means restoration to an original condition and, in this particular case, is specifically defined by article 46(1), which provides that “the applicant for or proprietor of a patent who, notwithstanding having taken all due care required by the circumstances, was unable to observe a time limit set by the comptroller shall, upon his request, have his rights re-established if the non-observance in question has the direct consequence of causing the refusal of the patent application, or the refusal of a request, or the lapse of the patent, or the loss of any other right or means of redress”.

The patent nullity issue centred around the fact that no English language translation was provided to the Maltese competent authority within the [stipulated] time periods

In his administrative decision upon the above request, the comptroller had decided against the applicant, as “ is not possible to reinstate rights to a patent which was deemed void ab initio as such rights could not accrue if the patent was void in the first place. In this regard, the office is not in a position to accept your request.”

In effect, what the comptroller did was go beyond the specific request so to speak and analyse the validity of the rights claimed in Malta by the applicant. This is correct, as any invalidity would render recourse under article 46 of the Patents and Designs Act futile or, even worse, it could risk validating something which was not valid, the latter being beyond the powers afforded according to said article 46.

The central issue in this case is the existence or otherwise of a valid patent in Malta (privattiva in Maltese).

This case centred about language requirements. Indeed, the applicant had filed for a patent with the European Patents Office on December 15, 2014, using the German language.

Indeed, originally we are dealing with what is known as a ‘European patent’, which is a patent granted by the European Patent Office in accordance with the Convention on the Grant of European Patents, to which Malta is a party. A European patent according to the same can designate various jurisdictions within which it may apply and, in this case, Malta was one of those jurisdictions.

This convention is implemented in Malta through the European Patent Convention Regulations (S.L. 417.05), which is legislation subsidiary to the Patents and Designs Act. For the application and enforceability of a European patent in Malta, compliance with S.L. 417.05 is necessary.

The applicant had sought to get the patent protected in Malta by virtue of the mention of its grant by the European Patent Office, which would be in accordance with regulation 7(1) of S.L. 417.05.

This means that said grant would be equivalent to a grant being granted directly by the Maltese competent authority. However, regulation 7(1) of S.L. 417.05 does not stand alone in absolute fashion and other provisions limit it accordingly.

In fact, the patent nullity issue centred around the fact that no English language translation was provided to the Maltese competent authority within the time periods provided under S.L. 417.05, i.e. three months according to the convention, starting from the mention of the grant of a European patent by the European Patent Office. Said three-month period can be extended by a further two months as per regulation 7(2)(b) of S.L. 417.05. In fact, the comptroller submitted that the applicant could have had a period of five months to provide the required English translation.

This translation requirement is no small thing, as a translation into English (no need for Maltese for certain public entities in Malta) is absolutely required under said Maltese legislation as per regulation 7(2) of S.L. 417.05, otherwise “the European patent shall be deemed to be void ab initio”. Ab initio means from the start. This nullity is according to regulation 7(4) of S.L. 417.05.

Much to the displeasure of the applicant, it is to be said that provisions in one and the same legislative instrument are to be read organically, in full and, in case of apparent conflict, interpreted harmoniously in line with the aims sought by the legislation. It is even more to the chastisement of whoever attempts otherwise that if the wording of the legislative instrument is crystal clear and in no way equivocal (as in this case), then one should stick to it unequivocally. In the end, this is what the comptroller did and fulfilled his duties, with the Court of Appeal confirming the same and dismissing the appeal of the German company.

Edric Micallef Figallo is an associate at Azzopardi, Borg & Associates Advocates.

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