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The implementation of the new law has been delayed by certain formalities but when the new law comes into effect in February of this year, designers, inventors, innovators and other stakeholders, will finally have access to the benefits of a modern patent and designs system.

The New Law, which repeals the existing Patents Act of 1857 and the Designs Act of 1937 (both of which had only undergone minor amendments up to 1975), represents a complete overhaul of the existing patent system and a significant upgrade for industrial designs. Here are some of the highlights of the new regimes.

The New Patent regime

Patents have been governed in Jamaica by the following statutes:

• Patent Law 30 of 1857, Chapter 283
• Patent (Amendment) Act No. 42 of October 1974
• Patent (Amendment) Act No. 8 of March 1975

The New Law repeals the statutes (“the old law”) and brings Jamaica’s patent legislative framework in line with modern standards and consequentially into compliance with the following international treaties:

• World Trade Organization (WTO) Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement (1995) signed by Jamaica in 1995
• The Paris Convention on Industrial Property (1883) to which Jamaica acceded on September 24, 1999
• The Patent Cooperation Treaty (PCT) (as modified on October 3, 2021) to which Jamaica acceded on November 9, 2021
• Hague Agreement Concerning the International Registration of Industrial Designs (Geneva Act, 1999) to which Jamaica acceded on November 9, 2021

The new law introduces several significant changes including:

• NOVELTY – The invention must be new to the world and not just new to Jamaica.
• EXPANDED EXCLUSIONS – Software and Business Methods are expressly excluded from patentability.
• UTILITY MODELS – A Petty Patent (Utility Model) is now available for inventions which do not meet the high patentability threshold.
• PRIORITY FILINGS – Priority claims may now be made under the Paris Convention.
• OWNERSHIP OF INVENTIONS BY EMPLOYEES – Employees will now have a legal entitlement to compensation for inventions made in specific circumstances.
• THE PATENT COOPERATION TREATY (PCT) – International applications through the PCT will now be possible in Jamaica.
• DURATION – Protection will last for 20 years from filing date up from 14 years. 

Novelty

Jamaica’s old patent system has granted patents based on local novelty in that the invention must not have been known or used in the island prior to the filing of the application. Under the new law it must not be known or used anywhere in the world (i.e. it must be universally novel). However, there is a grace period of 12 months within which certain disclosures will not erode the novelty of the invention.

Under the new law, patents are available for inventions (products and processes) in all fields of technology provided they are new (novel), involve an inventive step and are capable of industrial application. Although these criteria for patentability obtained under the old law, they were expressed differently and the scope of novelty, far more restricted.

Exclusions

Excluded subject matter include:

• Methods of surgical or therapeutic treatment and of diagnosis applied to human beings or animals.
• Plants and animals other than micro-organisms
• Plant and seed varieties (New Plant Varieties will be protected under separate legislation)
• Computer programs and business methods

The old law predates information communication technologies (ICTs) and therefore makes no reference to the patentability of software or software-related inventions. Although computer programs are protected primarily by copyright in Jamaica, ICTs which have software as components were granted patent protection under the old law. The new law expressly excludes computer programs and business methods from patentability (per se). Nevertheless, it may still be possible to protect ICT inventions with software components under the new law if they comprise a technical solution to a technical problem.

Under the old law the Registrar was empowered to refuse to register something which the Registrar deemed scandalous or contrary to law or morality. This discretion has been expanded under the new law to exclude from patentability, inventions which if implemented would be contrary to public order or morality or which would cause serious prejudice to the environment or cause injury to human, animal or plant life or health.

Priority Claims

The Paris Convention allows an applicant who is filing in more than one jurisdiction to apply the first filing date to all subsequent filings in other convention countries provided those filings are done within 12 months of the first filing date. This is called a priority claim. Priority claims were not recognized under the old law even though Jamaica has been a Paris Convention country since 1999. The new law implements the Paris Convention and therefore priority filings will be recognized.

Inventions by Employees

The old law is silent on entitlements in inventions made by employees in the course of their employment. The normal practice has been for the employer to own the rights in inventions their employees are directed to create and to have an assignment executed in their favour. In a seismic shift that is certain to generate major shock waves throughout corporate Jamaica, employees will now have in certain circumstances a legal entitlement to compensation for inventions made in the course of employment.

Where an invention is made in the course of an employee’s normal duties or in the course of specifically assigned duties but outside of the normal duties, the invention will be deemed to be owned by the employer if the invention might reasonably have been expected to result from the carrying out of the duties. The employer would also own an invention which was made in the course of the duties of the employee if at the time of making the invention, because of the nature of his duties and responsibilities, he had a special obligation to further the interests of the employer’s undertaking. Any invention made by an employee outside of those specified circumstances would belong to the employee.

If an employee applies to the Court for compensation in respect of an invention, he created which has been patented by the employer, the court in deciding will consider inter alia the size and nature of the employer’s undertaking, whether the invention or the patent is of outstanding benefit to the employer and whether by reason of those facts, compensation to the employee by the employer is justifiable.

PCT Applications

With Jamaica’s recent accession to the Patent Cooperation Treaty (PCT), under the new law it will be possible to file an international application under the PCT targeting multiple jurisdictions. Applicants can simultaneously file for patents in the over 150 PCT countries. The process is timeline sensitive and actively involves the designated national offices in the process of examination and grant. An international patent filing can take over 3 years to reach grant.

Duration of Protection

Under the old law patent protection lasts for 14 years from the issue date with a possible extension of 7 years in extenuating circumstances. Under the new law, comporting with international standards, patent protection lasts for 20 years from filing date.

Increased Fees & Annuities

The government fees for the processing of patents under the old law were nominal. The new law imposes significantly higher fees which are more reflective of the current costs of filing patents in more modern systems thus bringing the official fees into the 21^st Century. For instance, the statutory patent application fee will now be JA$30,000.00 compared to JA$15.00. International applications under the PCT will cost JA$25,000.00 in statutory fees, to which the International Bureau of the World Intellectual Property Organization (WIPO) charges and professional fees must be added.

Maintenance fees are also new to the Patent system in Jamaica. From the grant of a patent, on each successive anniversary thereafter of the filing date of the application for the patent, the patentee will be required to pay the prescribed annual fee to maintain the patent. If the annual fee is not paid up to ninety days after every anniversary the patent will have no effect. There is an additional 90-day grace period within which the patent can be restored by payment of the annuity and a late fee.

Utility Models

Under the new law for the first time, inventors will be able to obtain utility model protection (also known as ‘petty patents’ or ‘minor patents’). An invention qualifies as a utility model if it is new and capable of industrial application. This form of protection is viewed as beneficial to developing economies like Jamaica, where significant but incremental innovation may not meet the high threshold of inventiveness (inventive step) 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 or refusal of a patent. Similarly, an application for a utility model may be converted by the applicant, into an application for a patent.

Utility model applications will not undergo substantive examination as required for patents nor will protected utility models be subject to annuities. A utility model certificate will last for 10 years from the date of filing.

The New Industrial Designs Regime

Industrial Designs have been governed in Jamaica by the following statutes:

• Industrial Designs Act No. 32, July 1937
• Industrial Designs (Amendment) Act No. 9-75 of March 1975
• Designs Rules of September 1937
• The Designs (Amendment) Rules No. 171, December 1983

The prevailing law of 1937 is considerably behind its modern foreign counterparts even though not as outdated as patents. When the New Law takes effect in February 2022, it will repeal the above laws and comply with international standards. Industrial Designs will be protected at the standards outlined by the WTO TRIPS Agreement, the Paris Convention, the Haque Agreement 1999 Act and 1960 Act and the Locarno Agreement Establishing an International Classification for Industrial Designs (1968).

Priority Claims and International Applications

The new law implements the Paris Convention and recognizes priority filings where the Jamaican design application is filed within 6 months of the first filing date. The new law also implements the Hague Agreement and provides for the filing of an international application under that Agreement.

Whereas the old law recognized sixteen classes of designs, the new law recognizes the Locarno system of international classification of designs (amended 1979) which contains an alphabetical list of goods of over 5,000 entries. An international application can cover multiple designs (no more than one hundred in total) provided the designs covered belong to the same class of the Locarno Agreement. An international registration will have thesame effect in Jamaica as a regularly filed national application for the grant of protection of the design.

New eligibility criteria

Under the new law a design must be universally novel and not just novel to Jamaica as obtained under the old law. A design must also have individual character. This means that the overall impression that the design produces on the informed user differs from the overall impression produced on the informed user by any design which was publicly available before the date on which the design application was filed or deemed to be filed. The degree of freedom of the designer in creating the design must be considered in determining the extent to which a design has individual character. Finally, the design must not be contrary to public order or morality.

Expanded Exclusions

Designs which involve the use of a representation of the Coat of Arms of Jamaica, national flag of Jamaica, armorial bearings, official signs or hallmarks, or other national symbol or emblems and the like, are now excluded from protection unless the government grants consent.

Designs which use the country name of Jamaica or abbreviations or homonyms thereof, the map of Jamaica or national colours of Jamaica, in a misleading manner are not afforded design protection. These exclusions also apply to emblems, colours, maps and names of other countries.

Designs which make use of the traditional knowledge ortraditional cultural expressions of indigenous or local communities, without authorization from the relevant community or otherwise misleading uses are also excluded. Similarly, designs which use the image or likeness of an individual, without consent and designs which use third party copyright or trademarks (registered or unregistered) without consent will not be protected under the new law.

Duration of Design Protection

Although there is no substantive change in the maximum duration of protection for designs it should be noted that under the old law, the protection is afforded for a period of fifteen (15) years from the date of registration, without extension or renewal, whereas under the new law designs are protected for 5 years and renewable for 2 consecutive 5-year periods.

Transitional matters and Timeframes

The 165-year-old patent law is about to give way to the new, but some remnants of the old will live on through pending applications. Patent applications which have been filed under the old patent law of 1857 will continue to be administered under the old law. Meanwhile, applicants under the new law will have to meet higher standards and pay significantly more to obtain protection. Further, once the new law takes effect, there will be no opportunity to file an invention based on local novelty, a facility which many large foreign pharmaceutical companies have taken advantage of.

The new law is slated to come into operation very shortly after the PCT and Hague Agreements take effect in Jamaica on February 10, 2022, giving all interested parties just a few weeks to get ready for a legal tsunami. Finally, the monumental changes that were over a century in the making are just around the corner.

By Dianne Daley McClure, Intellectual Property Partner, Foga Daley

January 14, 2022

This article is information purposes only and is not intended to be a substitute for legal advice.

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The 2021 Act augmented the protection for nation branding by giving the Registrar power to impose conditions or limitations on trademarks containing Country names, maps, colours, emblems and symbols. Additionally, trademarks containing the Jamaican Coat of Arms, flag, emblems and other national symbols will be denied registration unless consent has been granted by the Government of Jamaica. The Act has also reinforced the government’s policy on the protection of traditional knowledge and traditional cultural expressions (albeit without defining these terms) by disallowing trademarks which misrepresent or misappropriate the traditional knowledge or traditional cultural expressions of indigenous or local communities in Jamaica.

Undoubtedly however, the ground-breaking development is the provision made in the Act for the international registration of marks through simultaneous filings in Madrid Protocol member countries as a precursor to Jamaica becoming a signatory to the international agreement. On December 27, 2021, only six months after the Act came into effect, Jamaica acceded to the Protocol.

For years, there has been much discussion and speculation about what being a Protocol Country will mean for Jamaica. Some have high expectations that the Protocol will make it easier and cheaper for local companies to protect their trademarks abroad and provide significant revenue for the Government of Jamaica in foreign trademark filings. Others have urged and cautioned a measured approached, recognising that the Protocol, while clearly beneficial to large brand owners, does not promise automatic international protection and is not a panacea for addressing trademark infringements globally. What is undisputed is that when the Protocol takes effect on March 27, 2022, businesses will have more trademark filing options with the Protocol and concurrently, the Jamaica Intellectual Property Office will experience an influx of international filings designating Jamaica.

Questions remain as regards to what extent local proprietors/businesses will utilize the system and the profile of the entities which will find the Protocol helpful. Also unknown is whether the incoming international filings will put such pressure on the national trademark system, resulting in protracted delays in the prosecution of national filings as has happened in some jurisdictions. Finally, will the local proprietors’ ability to defend their own marks in Jamaica, be impacted in any way by incoming filings?

Understandably, it may take several months to get some of these questions answered and brand owners should lean on skilled trademark practitioners as they navigate this new legal framework towards achieving their goals. What should be pellucid is that while the Madrid Protocol can fast-track portfolio expansion, it is not an end in and of itself. It is therefore imperative for Jamaican businesses to employ additional strategies to ensure proper management and preservation of their brands beyond an International Registration.

By Dianne Daley McClure, Intellectual Property Partner, Foga Daley

January 11, 2022

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As a part of Foga Daley’s vision to be a socio-economic change agent in the communities in which we operate based on Christian principles, the firm provides scholarships and bursaries to students to further their educational pursuits.

Foga Daley provides annual scholarships to students at the Norman Manley Law School who have achieved excellence and have displayed a special interest in Intellectual Property Law.  This year, the Firm extended a hand to students from a school in Water House, Jamaica’s largest inner-city community. Sheikheema Huma, Head Girl and Krystal Dixon, Prefect of St. Patrick’s Primary School were the recipients. Both students were successful in their recent Primary Exit Profile (PEP) Exams and are set to enter Holy Childhood High and Merl Grove High, respectively, in September.

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It is not known exactly when the Amendment Act will come into force or when the Government of Jamaica will accede to the Protocol. Some businesses have signaled their expectation that the Government will move swiftly to sign on to the Protocol and there has even been talk about a one-month timeline for accession.

The urgency appears to be sparked by, among other things, the fact that Jamaican exporters of a variety of food products including sauces, spices and other condiments have been plagued by imposters in key foreign markets.

Enterprises with no legitimate link to Jamaica, have been known to imitate Jamaican brands by using similar packaging and identical or confusingly similar marks on their products, thereby posing as authentic Jamaican products on grocery shelves abroad.

Expectations are that Jamaica’s participation in the Protocol will address these woes. While registered trademark protection, nationally and through the simultaneous multinational filing facility offered by the Protocol, provides proprietors with a key tool to wield at infringers, the enforcement toolkit includes effective marketing, management, and other strategies that businesses must be prepared to employ to stem the problem of infringement around the world.

As Jamaica readies itself for implementation, international users can expect their international registrations designating Jamaica to be subject to local examination and publication. An international registration must be examined on substantive grounds by the Registrar of the Jamaica Intellectual Property Office (JIPO) and published in the local Trade Marks Journal for opposition purposes prior to grant. If the international registration is opposed or refused, the Registrar is required to notify WIPO’s International Bureau of the provisional refusal within 18 months of the date on which the extension of protection was notified to JIPO.

Local users seeking to extend protection of their trademarks to other Madrid Protocol countries, should expect a fairly smooth filing process through JIPO, once the requirements are met, but must be on the lookout for potential refusals as the international application makes its way through designated national trademark offices before proceeding to grant.

On the question of when this will all begin to happen, considering that the coming into force of the legislation should precede accession to the Protocol and there is a three-month timeframe from accession to implementation, one can reasonably expect that it could take a few months before the Protocol is a reality in Jamaica. A Madrid Christmas? Perhaps.

By Dianne Daley McClure | Partner | Foga Daley

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The Madrid Protocol established 1989 (last amended in 2007) (the “Protocol”) together with its companion treaty, the Madrid Agreement of 1891 (last amended in 1979) comprise the Madrid System (“Madrid”). Madrid facilitates the international registration of marks and is administered by the International Bureau of the World Intellectual Property Organization (WIPO).

The Act which was passed without amendments, has as its focus the implementation through legislation of the Protocol, clearing the way for the Government of Jamaica’s accession to the treaty.

The amendments encapsulate provisions which make it possible for Jamaican nationals to seek registered protection for their trademarks in jurisdictions that are contracting parties to the Protocol based on a pending application or existing registration in Jamaica. Concomitantly, nationals of other Protocol countries may also ‘extend’ their marks for protection in Jamaica.

The Act enables the Jamaica Intellectual Property Office (JIPO) to administer the international registration system locally and outlines, among other things, the application procedures, opposition procedures, matters pertaining to publication, fees and so on.

While trademark professionals around the world are au fait with the workings of Madrid, for Jamaican-based businesses, the use of the system will be uncharted territory and expectations of ease of protection may be tempered once the system is up and running. An application for an international registration is to be examined by each national trademark office (usually on substantive grounds only) before being approved for protection in that country and can also be opposed by interested third parties. Hence the Protocol does not promise automatic protection, nor does it eliminate the work of trademark examiners in scrutinizing the application for acceptability under the relevant trademark law or the work of trademark counsel in advising on legal considerations regarding registrability and responding to objections and oppositions which an application may encounter in different jurisdictions.

In addition to providing for international applications under the Protocol, other significant changes include provisions aimed at protecting country brands, traditional knowledge and traditional cultural expressions. More specifically, trademarks containing the Jamaican Coat of Arms, the National Flag or any national emblems or symbols will not be accepted for registration without the Government of Jamaica’s consent.

Further, in relation to the country name ‘Jamaica’ and other aspects of the nation’s brand, including the flag, the map of Jamaica and other emblems, while these are accorded a level of protection in the prevailing trademarks legislation, the amendments go a step further by empowering the Registrar to impose the condition that goods or services covered by marks embodying such elements must originate in Jamaica “or in another country as the case may be”.

Although ‘traditional knowledge’ and ‘traditional cultural expressions’ are not defined in the Act, the Registrar is empowered to refuse an application for the registration of a trademark that “misrepresents or misappropriates the traditional knowledge or traditional cultural expressions of indigenous or local communities”.

These additional changes could be seen as pre-emptive of the likelihood that some incoming international applications from other Protocol countries may incorporate aspects of ‘Brand Jamaica’ without having an authentic link to the country.

For several years, many developing countries and some developed countries were reluctant to join the Madrid System, but the last few years has seen some newcomers, like Canada and Malaysia which both joined the Protocol in 2019 and Trinidad & Tobago and Pakistan which joined the Protocol effective January and May of this year, respectively. The United States of America also took some time to accede, making considerable preparations before it joined the Protocol in 2003.

Presently, the Protocol covers 124 contracting states with only two Commonwealth Caribbean countries, namely, Antigua & Barbuda and Trinidad & Tobago, being members. Around 50 countries that subscribe to foundational intellectual property agreements such as the Paris Convention, remain outside of the Protocol.

An obvious benefit of the Protocol is the facility for simultaneous filings in several jurisdictions. Still, there have been concerns about the state of readiness of Jamaica to participate and whether there will be a positive net effect on the economy overall. While the latter remains to be seen, it was clear that changes to the trademark law would be required prior to accession, to ensure proper implementation of the Protocol with due consideration for the national interest.

Having cleared the Lower House, the Bill will now have to be passed by the Senate to come into effect. We will see whether it proceeds smoothly and is passed unchanged or is subject to amendments. Either way the ‘Madrid destination’ appears to be in sight.

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