Intellectual property

Intellectual property rights serve to protect intellectual creations. In todays society the options to recreate the inventions of others are within the reach of almost everyone and the need to protect ones invention becomes more necessary. In this article an explanation of the various intellectual property rights is provided.

Intellectual property includes patents, trademarks, industrial design rights, copyrights and often trade secrets. In a way these rights reward the invested energy of innovators by giving them rights and allowing them to spread their creations in society by making them grow, thanks to a monopoly on the exploitation’s for determined period. Protecting your invention through intellectual property rights is a means to act against counterfeiters and unfair competition. Having an intellectual property portfolio helps to enrich the intellectual capital of ones company, and can be a source of tangible income (patents assignments, licenses …). As a factor of recognition, owning intellectual property rights ensures greater credibility with partners and establishes a reputation with customers. Moreover, protecting ones creation abroad contributes to open new markets and new alliance partners for the exploitation of the offered products and services. Sultana Legal can offer essential assistance in protecting what is rightfully yours.

Maltese intellectual property legislation is in line with a substantial number of International Conventions, including the Berne Convention for the Protection of Literary and Artistic Works (1964), the Paris Convention or the Protection of IP (1967), the Universal Copyright Convention (1968), the WIPO Agreement (1977), the WTO TRIPS Agreement (1995), the Patent Cooperation Treaty (2007), the European Patent Convention (2007) and the WIPO Copyright Treaty (2009).

Industrial property rights (i.e. patents, trademarks, designs) are acquired in principle through the submission of an application that would be granted by the appropriate national intellectual property office. The competent authority in Malta is the Industrial Property Registrations Directorate (IPRD), within the Commerce Department of Ministry for Fair Competition, Small Business and Consumers. It is responsible for all intellectual property policies (registration, renewal, cancellation, etc.), on a national, European and international level.

Registering a patent through the IPRD will exclude competitors from entering the market by making and selling the patented invention and ensures the product can establish a position in which companies are willing to invest. One can also choose to give access to the invention to others by licensing it and earning additional income form the owned intellectual property. According to the Maltese Patents & Designs Act (2000), the scope of patent protection covers any invention that is novel, involves an incentive step and is industrially applicable. However, such scope is limited to the borders of the territory where the patent is registered and to a 20 year time period from the application’s filing date. When a Maltese business comes to exploit its invention abroad, it must extend the protection of the Maltese patent to other countries. The main means to extend patent protection outside Malta are either through the European Patent Office (EPO) or via the International Patent Cooperation Treaty (PCT), depending on the degree of protection one is looking for.

The appearance of ones products can also be protected by the Patent & Designs Act, allowing ones designs’ rights on materialized graphic elements of two or three-dimensions. The design’s rights may relate to the appearance of the most varied products. The appearance must be characterized by visual elements, such as its lines, contours, colours, shape, texture or materials used. An industrial design right protects the ornamental or aesthetic aspect of an object. A national submission will provide protection for an initial period of 5 years, which can be renewed for a bracket of 5 years, up to a maximum of 25 years. The Office for Harmonization of the Internal Market is in charge of the European protection of designs rights, while the World Intellectual Property Organization provides international protection in member countries of the Hague Agreement.

Trademark protection is also another means of industrial intellectual property rights and it is not regulated by Maltese company law. It is defined by the Trademarks Act (2000) as any distinctive sign being represented graphically. It may consist of words (including personal names), figurative elements, letters, numerals, and the shape of goods or their packaging. Trademarks allows one to know and recognize its products or services, and distinguish them from those of competitors. It offers consumers an essential benchmark, as it represents the image of a company, and guarantees a consistent quality or reputation to the public eye. After validation of registration by the IPRD and its publication, ones brand will be protected for 10 years from the date of submission to the office. Just like designs, extending brand protection in the European countries is managed by the OHIM, and by the WIPO located in Geneva for the international coverage.

Copyright protection concerns any expressible form of an idea or information that is substantive and discrete. It applies to a wide range of creative, intellectual or artistic works (books, paintings, movies, photographs, maps, computer software, musical compositions, sculptures, databases…). Copyright subsists in original artistic works created by an author; it does not cover ideas, only the manner in which they are materialized or expressed. Unlike other intellectual property rights, copyright works are automatically protected, without the need for registration or other formalities. According to the Berne Convention (1886), any created work enjoys protection of 70 years after the copyright holder’s death. However voluntary formal registration to the IPRD is possible but not necessary, as the work will receive statutory protection automatically once it is placed in the public domain.

Maltese law has also recently provided direct recognition of trade secrets under the Trade Secrets Act. Similarly to copyrights on intellectual property, Trade secrets are protected without the necessity of any registration process or formalities. Trade secrets concern any confidential and commercial information which gives a competitive advantage to a company. It is thus connected to a trade or an industry, not to personal use. A trade secret can protect ones processes, manufacturing formulas or other non-patented technical elements, but also the technical knowledge, useful for the implementation of an industrial, commercial or organizational process (e.g. Consumer profiles, list of suppliers and clients, sales methods, advertising strategies, etc.). However, certain conditions are required before the information is considered to be a trade secret. The secret is not to disseminate to the public the acquired or developed knowledge. Trade secret protection however is only available against individuals who are exposed to the trade secret by means of their role in the business in question. Therefore such individuals would be internal personnel, for example employees or contractors. Consequently, no trade secret protection arises against third parties who are not exposed to the trade secret. Nevertheless, unauthorized use of such information by persons other then its holder, such as industrial or commercial espionage, breach of contract or of confidence, is regarded as unfair practice and a violation of trade secrets. Therefore one may also opt to further protect their trade secrets through a non-disclosure agreement or a confidentiality clause and thus ensuring that all parties know the information must remain secret and unnecessary litigation is avoided.