After several years of exhaustive consultations, protracted deliberations and draft laws, a new Patents and Designs Act was passed by the Jamaican Parliament in January 2020, (the New Law) in compliance with Jamaica’s obligations under the 1995 World Trade Organization’s Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS Agreement).
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.
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.
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.
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.
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 21st 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.
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.
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.