Along with many of us, Jamaica’s patent laws adopted the “New year, new me” resolution in early 2020. The long awaited Patents and Designs Act 2019 was finally approved by the Senate on January 23, 2020, and is set to repeal the ancient Patent Act of 1857 and the Designs Act of 1937 when it comes into force.

The effect of the new Act on Jamaica’s patent landscape is gargantuan. Suffice to say, times have changed in the last 163 years and practitioners and inventors alike have been on the egde of their seats for well over a decade in anticipation of this modern legislation.

The Act is not yet in force. It is slated to come into operation on a day to be appointed by the Minister of Industry, Commerce, Agriculture and Fisheries. It is expected that in the buildup to that date, Jamaica will sign on to the Patent Cooperation Treaty (PCT). While we wait for these critical final steps to take place, it is certainly prudent (and exciting!) for practitioners and inventors to become familiar with the radical changes coming our way. Set out below are some of the most notable provisions on patents:

Novelty

1. Perhaps the most significant change brought about by the new Act is the requirement for novelty. The 1857 Act permitted the registration of patents in Jamaica once the invention was unknown in Jamaica. The new Act contemplates “the state of the art” on a global scale bringing Jamaica in line with international requirements for patentability.

Patentability

2. Patentability requires an invention to:

be new
+
involve an inventive step
+
be capable of industrial application.

 Exclusions

3. The Act contains numerous exceptions to inventions which may qualify for patents. (including typical international exceptions). They include mathematical formulas, plant and seed varieties, the human body in all its developmental stages, scientific theories and aesthetic creations.

Application Procedure

4. To apply for a patent, the applicant is required to file the prescribed form together with a request for the grant, a specification containing a description of the invention, at least one claim, any relevant drawings and an abstract.

5. Notwithstanding the above filing requirements, an applicant can obtain a filing date for a patent once it files documents indicating that a patent is being sought, the documents contain a description of the invention and the relevant fee is paid. However, the application will lapse if the claim, abstract and other requirements are not submitted within 1 year.

Priority

6. Another highly anticipated change is the ability to claim priority under the Paris Convention, a right which has long existed under the trade marks regime and will be welcomed enthusiastically by patent applicants. An applicant has 12 months to claim priority based on the filing date of an application for the same invention in any convention country or WTO member state. Documents to substantiate the priority claim must be submitted within 6 months.

Division and amendment of applications

7. The division provision has also long been desired. Where a single application in fact discloses two or more inventions, at the Registrar’s discretion or on the applicant’s request, the single application may be considered as two or more applications. In such a case, each additional application will attract payment of a fee.

8. Applicants may also amend their applications on payment of a fee at any time before the patent is granted. Amendments are also permitted after a grant, provided that the amendment does not result in the specification disclosing any additional matter, or claim, or extend the protection conferred by the patent.

 Term

9. Patents are valid for a term of 20 years from the date of the application.

Annuities

10. This will be another brand, spanking new requirement (and expense) for patent owners in Jamaica. The payment of annual fees will be necessary to maintain the validity of patents. Payment must be made within 90 days of each anniversary from the date of the grant. A further 90 day grace period is provided for in the Act, but payment during the grace period will attract a late fee. Failure to pay annuities under the Act will result in the patent ceasing to have effect.

International Applications

11. The PCT will finally have its place in Jamaica’s laws. The Jamaica Intellectual Property Office will serve as the designated, elected and receiving Office as per the PCT framework. The Registrar is required to process international applications in accordance with the PCT, and apply the provisions of the Jamaican Act when the national phase of the application begins.

Employee Inventors

12. In direct contrast to the Copyright Act, an invention made by an employee is presumed to belong to the employer under the Patents and Designs Act where it is made in the course of normal duties, assigned duties or where the employee has a special obligation to further the employer’s interests.

13. Further, where an employee is the inventor of a patent which turns out to be of outstanding benefit to the employer, the employee can apply to the Court for an award of compensation to secure his/ her “fair share of the benefit.” The employee may make this claim up to 21 years from the date of the grant of the patent

Non-voluntary licences – WTO patent owners

14. On the expiry of 4 years from the application date or 3 years from the grant (whichever is earlier), a person may apply to the court for a licence on the ground that there is a demand for the patented product in Jamaica which is not being met on reasonable terms or, essentially, where there are hindrances and unfair prejudices to commercial and industrial activities. The applicant must first make efforts to obtain a licence from the patent owner on reasonable commercial terms, allowing at least 90 days to expire before heading to Court. Procedures also exist to obtain non-voluntary licences for the patents of non-WTO members.

Use of inventions by the Government of Jamaica

15. The Government, or any person it authorizes in writing, may use a patented invention for the service of the Government where it is necessary in the public interest. However, as in the case of non-voluntary licences, the Government must first approach the patent owner for authorization on reasonable commercial terms, and that approach must first prove unsuccessful after the expiry of 90 days.

International exhaustion principle

16. An owner’s rights in a patent do not extend to acts in relation to inventions which have been put to market in any other country by that owner, or with his consent. By way of example, the importation and sale of product protected by a patent in Jamaica will not infringe that patent if the product has been put to market elsewhere by the patentee.

Utility Models

17. Of nearly equal significance to the revised patent is the introduction of a whole new animal – the utility model. To qualify as a utility model, the invention must be new and capable of industrial application. A utility model is valid for 10 years from the date of the application. The Act allows, where appropriate, the conversion of an application for a utility model into an application for a patent and vice versa.

There are, of course, numerous other provisions in the new law which require study on the part of inventors and practitioners. Matters of practice will also likely take some getting used to as the changes are numerous. The Jamaica Intellectual Property Office has advised of its intention to hold workshops with practitioners to assist with the smoothest transition possible once the Act comes into force.

For the IP Team at Lival, we are certainly thrilled that the patent train is finally here. Stay tuned to our Blog as we continue on board, navigating the tracks.