On January 23, 2020, the Jamaican Parliament passed the long-awaited Patents and Designs Act (the “New Act”). The New Act, which had gone through several iterations since Jamaica signed on to the World Trade Organization (WTO) Agreement in 1995, was passed by the House of Representatives on December 3, 2019, and was given the nod of approval by the Senate on January 23, 2020.
From a system that has granted patents based on local novelty to one which now makes universal novelty a criterion for patentability, the New Act is a significant step towards well-needed reform in the field of industrial property rights in Jamaica. When it comes into force, the New Act will repeal the prevailing Patent Act of 1857 and the Designs Act of 1937, both of which had only undergone minor amendments up to 1975.
WTO – TRIPS Compliance
In conformity with the standards set by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), patents are available for inventions (products and processes) in all fields of technology provided they are new, involve an inventive step and are capable of industrial application. Like several jurisdictions, the New Act excludes from patentability plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes, and plant and seed varieties. Interestingly, business methods are also excluded from patentability.
A Jamaican patent will last for twenty (20) years from the filing date which is up from fourteen (14) years under the 1857 Act. Unlike the old Act, there is no opportunity for an extension of time and patents will now be subject to an annual maintenance fee.
International Filing Systems
Of note in the New Act, are provisions which implement the Patent Cooperation Treaty (PCT) that Jamaica intends to sign. The PCT provides the facility for international patent filings through the World Intellectual Property Organization (WIPO). It will also be possible to obtain international registration for a design by virtue of the implementation of the Hague Agreement for the International Registration of Industrial Designs. In addition, the New Act implements the Paris Convention on Industrial Property which is a welcomed development, since despite being a member of the Paris Convention from 1999, the Convention’s provisions on patents and designs (notably, priority filings) have not been implemented in Jamaica due to the absence of modern legislation.
Utility Model Protection
By virtue of the New Act, for the first time inventors will be able to obtain utility model protection (also known as ‘petty patents’ or ‘minor patents’). This form of protection is felt to be beneficial to developing economies like Jamaica, where significant innovation may not meet the high threshold of inventiveness required for patents. An application for a patent may be converted by the applicant, into an application for a utility model at any time before the grant of refusal of a patent. Similarly, an application for a utility model may be converted by the applicant, into an application for a patent. A utility model certificate will last for 10 years from the date of filing and utility model applications will not undergo substantive examination as required for patents nor will they be subject to annuities.
Opposition and Disclosure Provisions
The New Act introduces the possibility of opposition proceedings in respect of patents, utility models and designs. Other major changes from the old system include the provision of a twelve (12) month grace period for disclosures of inventions which are made by the inventor or by a third party in breach of confidence. Disclosure at international exhibitions may also be allowed under certain conditions.
Design Protection and Duration
In order to obtain registered design protection under the New Act, industrial designs must be new and have individual character. This concept of ‘individual character’ is new to Jamaica’s design law but is a requirement under the Economic Partnership Agreement (EPA) between the European Community and CARIFORUM states to which Jamaica is a party. Registered designs will be protected for five (5) years with the possibility of renewal for two consecutive five year periods which accords with international norms as TRIPS requires a minimum duration of 10 years while the EPA sets a maximum of 25 years.
Ownership of Inventions and Designs by Employees
Provisions on ownership of patents, utility models and design rights, as between employers and employees also herald a major change to the prevailing system as the Patent Act of 1857 and the Designs Act of 1937, are silent on the matter. As a general rule, employers will own the rights to patents, utility models and designs, made in the course of normal duties of the employee. These provisions interestingly, run counter to Jamaica’s Copyright Act which vests the first ownership of copyright in the author of the work unless there is an agreement to the contrary and makes no exception in respect of works done by employees (save for Government employees) in the course of their employment.
In relation to patents and utility models, an employer will also own the right where the invention is made pursuant to duties specifically assigned to the employee. Designs created by an employee who is not engaged in the creation of designs under a contract of service will be first owned by the designer; however the employer is the first owner of any design rights for designs created by the employee using information or means that the employer puts at the employee’s disposal. Compensation may be awarded by the court to an employee who invents patentable subject matter or creates a new design in certain circumstances.
It is fair to say that the New Patents and Designs Act represents a seismic shift in Jamaica’s Intellectual Property landscape, clearly bringing Jamaica in line with international standards and hopefully eliminating future citations by the United States Trade Representative for lack of a modern patent system, once the New Act comes into force. It remains to be seen how local designers, inventors and innovative enterprises will leverage these sweeping changes to their benefit. The New Act now awaits the Governor General’s Assent and an Appointed Day for its coming into effect.
By Dianne Daley McClure
Intellectual Property Partner | Foga Daley