The EPA however sets higher standards of protection -’TRIPS plus’- in relation to these rights. This is somewhat to be expected as the EPA takes account of several international developments that have overtaken the 1995 TRIPS accord. In Part II, we looked at Trademarks and Geographical Indications and now cover Patents, Utility Models and New Plant Varieties in this part.
While the TRIPS Agreement requires countries to accede to the Paris Convention on Industrial Property (the foundational international convention on patents) under the EPA, CARIFORUM states must also accede to the most recent versions of the Patent Co-operation Treaty (PCT) and the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure and should endeavour to accede to the Patent Law Treaty (2000) (PLT) (Art. 147.1).
Jamaica is not a member of any of these treaties. However, they all contain elements that could be beneficial for Jamaican inventors and innovators.
Patent Corporation Treaty
The PCT facilitates the simultaneous filing of patent applications in PCT member countries. The PCT offers the closest thing to an ’international patent’ that is available to inventors and patent holders and has proved very beneficial to patent applicants around the world given its cost effectiveness and wide acceptance. This Treaty currently has 139 Contracting States compared, for example, to the Madrid Protocol’s 75. Several Caribbean countries are members of the PCT - Antigua & Barbuda, Barbados, Belize, Dominica, Grenada, St Kitts & Nevis, St Lucia, St Vincent & the Grenadines, Trinidad and Tobago, as well as Cuba and the Dominican Republic. Although Jamaica is not yet a member of the treaty, accession to and implementation of the PCT has been under discussion for a number of years in the context of an overall revision of Jamaica’s Patent Act of 1857.
The Budapest Treaty serves a highly specialised purpose within the patent application process for inventions involving a micro-organism. An invention must be fully disclosed during the application process and in order to fully describe a micro-organism a sample must be examined. The Budapest Treaty provides for the recognition by national or regional patent offices of international depositories for microorganisms irrespective of where such depositories may be located. So far only Trinidad and Tobago, the Dominican Republic and Cuba are members of this Treaty from the Caribbean.
Patent Law Treaty
The PLT harmonises and streamlines formal patent application procedures across national and regional patent offices, thereby making the patent system more user-friendly. Similar to the objectives of the Trademark Law Treaty, the PLT outlines maximum requirements to be applied by national intellectual property offices. The PLT has 18 Contracting Parties with Haiti and Cuba being the only signatories from the Caribbean.
Public Health Considerations
By virtue of Article 147.2 of the EPA, signatories recognise the importance of the Doha Declaration on the TRIPS Agreement and Public Health (Doha Declaration) and a WTO Decision on the Doha Declaration which lifted barriers to access to affordable pharmaceuticals that were imposed under TRIPS. The Decision, which was taken by the WTO General Council on August 30, 2003, was largely a developing country initiative and has been incorporated in the TRIPS Agreement through a Protocol amending TRIPS dated December 6, 2005. The Protocol must be accepted by member countries in order to be effective. EPA Signatories agree to take the necessary steps to accept the Protocol. Caribbean Countries consider the Doha Decision and the Protocol desirable given their need for affordable pharmaceuticals generally and more so in the event of a national health emergency and in respect of chronic deceases.
A Utility Model (also described as a Petty Patent) is a novel device or process which is industrially applicable but does not necessarily involve the inventive step required in order to obtain patent protection. The right is usually granted in the form of a Utility Model Certificate and lasts for a shorter time than a patent. Similar to the owner of Letters Patent, the owner of a Utility Model Certificate has the exclusive right to manufacture, sell, distribute and use the invention and can therefore license others to exploit, as well as prevent unlicensed persons from exploiting the invention.
Under Article 148 of the EPA, parties have the option of providing protection for utility models in any field of technology, provided that they are new, involve some degree of non-obviousness and are capable of industrial application. The EPA permits the unauthorised commercial exploitation of a product and process where it is necessary to protect public order or morality or to protect human, animal or plant life or health and avoid serious prejudice to the environment.
Under Article 148.1(3) diagnostic, therapeutic and surgical methods for the treatment of humans or animals may also be excluded. Utility models should be protected for at least five years but not more than 10 years from the effective filing date. The same conditions and flexibilities which are provided under the TRIPS Agreement for public health purposes in respect of patents also apply to utility models by virtue of Article 148.3(1) of the EPA.
Utility model protection is considered desirable for small developing economies where innovation may not necessarily involve the inventive leap as is required for the awarding of a patent. This form of protection is not provided under Jamaican law, nor is it required under the TRIPS Agreement, but given its anticipated benefits it should be contemplated in the review of the Patent legislation.
New Plant Varieties protection is a form of IPR which protects those who invest in the breeding of new varieties of plants that may be more resistant to diseases and of a higher quality than existing breeds. The TRIPS Agreement requires member countries to protect new plant varieties either by patents or by a new regime or a combination of both but does not specify any standards of protection.
The International Convention for the Protection of New Varieties of Plants adopted in 1961 and last revised in 1991 outlines minimum standards of protection and provides a framework of international recognition of the rights granted by member countries. For a new plant variety to be protected it must be distinct, uniform and stable so that its distinct characteristics may be retained in future generations of the plant. Protection gives the owner of the new plant variety rights, commercial control over its production and exploitation.
The 1978 version of the Convention established the International Union for the Protection of New Varieties of Plants (UPOV) and the 1991 revised version provides that the rights must last, from the date of grant, for a minimum of 25 years in respect of trees and vines and 20 years in respect of other crops.
Article 149 requires the EC Party and the Signatory CARIFORUM states to provide for the protection of plant varieties in accordance with the TRIPS Agreement and to consider, in this connection, accession to UPOV, 1991. Importantly, the Article also allows for exceptions to exclusive rights granted to plant breeders "to allow farmers to save, use and exchange protected farm-saved seed or propagating material".
Jamaican law does not yet provide protection for new plant varieties. However, as this is also a TRIPS obligation by virtue of Jamaica’s WTO membership it is anticipated that plant varieties will be protected under a new or sui generis legislation in Jamaica. This regime is also expected to have a positive impact on plant breeders in Jamaica as it has been useful to other countries, particularly in the farming, agricultural, agro-business and horticultural sectors.
Part IV will examine genetic resources, traditional knowledge and folklore and discuss the enforcement and co-operation provisions of the EPA.
Dianne Daley, LLB (Hons) (UWI), LLM (McGill), an Attorney-at-law, is one of Jamaica’s foremost copyright lawyers. This is the second of a four-part series on the EPA and Intellectual Property.