After more than 150 years, Jamaica has promulgated a new Patents and Designs Law.
This has been a long-awaited development to bring Jamaica’s intellectual property laws into line with other countries worldwide. The Jamaica Patents and Designs Act (No.1 of 2020) came into effect on 11 February 2022, and repeals the Patent Act of 1857 and Designs Act of 1937.
Furthermore, Jamaica also recently deposited its instrument of accession to the PCT on 10 November 2021, to become the 154th Contracting State of the PCT, and became bound by the PCT with effect from 10 February 2022.
Some significant provisions are that it is now possible to claim Convention priority and it is also possible to obtain utility model protection.
What follows are some of the new provisions of the law.
Patentability – absolute novelty, inventiveness and capable of industrial application. However, information disclosed to the public during the 12 months preceding the filing date or priority date claimed in a patent application shall not destroy the novelty of the invention, if it was due to:
- information disclosed by an abuse committed by a third party (matter obtained unlawfully or breach of confidence) with regard to the applicant or his predecessor in title; or
- the applicant or his predecessor in title displayed the invention at an international exhibition and the applicant states on filing that the invention has been displayed and files supporting evidence.
Previously, Jamaica had local novelty requirements (not known or used on the island before filing).
Exclusions from patentability:
- plants and animals, (including deoxyribonucleic acid (DNA) and cells), other than micro-organisms
- essentially biological processes for the production of plants or animals, other than non-biological and micro-biological processes
- plant and seed varieties
- the human body in all its developmental stages and all its elements, in whole or in part
- inventions, the implementation of which would be contrary to public order or morality or would cause serious prejudice to the environment or cause injury to human, animal or plant life or health
- methods of surgical or therapeutic treatment and of diagnosis applied to the human body or to the bodies of animals
- a discovery, scientific theory or mathematical method
- a scheme, rule or method for performing a mental act, doing business, playing a game or a computer programme
- a literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever; or
- the presentation of information
Previously, it was contrary to law but not specified.
It is now possible to claim Convention priority. Previously, this was not possible despite Jamaica being a party to the Paris Convention.
Search and substantive examination
The new law now provides for substantive examination and it is necessary to submit a request for substantive examination and pay the prescribed fee.
Voluntary divisional applications are permitted and divisional applications may also be filed in response to a unity of invention objection.
It is possible to file amendments at any time before a patent is granted. It is also possible to file amendments after grant provided that the amendment does not introduce new matter and the scope of the claims may not be broadened. An amendment after grant is deemed to have effect from the date of the grant of the patent.
Term and Renewal
The term is now 20 years from the filing date. Renewal fees fall due within 90 days of each anniversary of the filing date after the grant of the patent. A further grace period of 90 days is allowed for late payment of annuities.
Previously, it was 14 years from the date of grant with no renewal fees.
Patent Co-operation Treaty (PCT)
As mentioned, Jamaica is now a PCT member and from 10 February 2022, any PCT international application filed on or after this date will automatically include Jamaica as a designated state. Nationals and residents of Jamaica may file international applications under the PCT.
Inventions created by employees
An invention made by an employee belongs to the employer, if:
- the invention was made in the normal course of their duties or in the course of duties falling outside the employee’s normal duties, but specifically assigned to the employee, or
- the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of the employee’s duties and the particular responsibilities arising from the nature of the employee’s duties, the employee had a special obligation to further the interests of the employer’s undertaking
Further, where an employee is the inventor of a patent which turns out to be of outstanding benefit to the employer, the employee may apply to the Court for compensation for a fair share of the benefit which the employer has derived.
At any time after the expiry of 4 years from the application date or 3 years from the grant date (whichever is later), 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 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.
International exhaustion of rights
A patentee’s rights to a patent do not extend to acts in relation to inventions which have been put on the market in any other country by the patentee or with the consent of the patentee.
There is provision for revocation of a patent within 12 months of grant on application to the Registrar by any interested person.
There are infringement provisions which deal with, inter alia, the unauthorised making, disposal, use and importation of the product. There are numerous exceptions including acts done privately and for non-commercial purposes, as well as acts done for educational or experimental purposes.
Utility models are provided for under the new Act. An invention qualifies as a utility model if the invention is new and capable of industrial application. There is no inventive step requirement.
The law allows for the conversion of an application for a utility model into an application for a patent and vice versa.
A utility model has a term of 10 years from the date of the application.
A design is registrable if it is new, has individual character and is not contrary to public order or morality.
A design may be applied for (a) any composition of lines or colours; or (b) any three dimensional form, (whether or not associated with lines or colours), which gives a special appearance to the product of industry or handicraft and serves as a pattern for a product of industry or handicraft.
Design protection is not applicable to anything in a design which serves solely to obtain a technical or functional result, to the extent that it leaves no freedom as regards arbitrary features of appearance.
There are also various exclusions to designs not being registrable, for example, if it involves a representation of the Coat of Arms of Jamaica, flag of Jamaica, the country name of Jamaica or name of another country, an unregistered trade mark, a registered trade mark, copyright work, traditional knowledge of indigenous or local communities, etc.
An international design registration in terms of the Hague Agreement has the same effect as a national design registration.
The term of a design is 5 years from the filing date, which term may be extended for two further terms of 5 years (total of 15 years). Renewal fees are payable.
The new law is an important development. If you or one of your clients is interested is seeking patent, utility model or design protection in Jamaica please contact us.