For a more detailed treatment of the intellectual property regime in Jamaica see Jamaica: Intellectual Property by Foga Daley Partner, Dianne Daley in International Encyclopaedia of Laws, Kluwer Law International, Intellectual Property – Suppl. 47 (September 2008)
Jamaica Updated Patent System
Up until February 10, 2022, Jamaica’s patent system was governed by the Patent Act of 1857.
On February 11, 2022, the Patents and Designs Act No. 1 of 2020, (the new law) came into effect repealing the antiquated 1857 Act and introducing several major changes bringing Jamaica’s patent system in line with modern standards.
The new law completely overhauled the patent system which now complies with the following key international treaties/agreements:
- World Trade Organization (WTO) Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement of 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.
Major changes under the new Patent
- 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 – It is now possible to claim priority under the Paris Convention.
- OWNERSHIP OF INVENTIONS BY EMPLOYEES – Employees now have a legal entitlement to compensation for inventions made in certain circumstances.
- THE PATENT COOPERATION TREATY (PCT) – International applications through the PCT are possible in Jamaica
- DURATION – Protection lasts for 20 years from filing date; up from 14 years but not possible to extend period.
- INTERNATIONAL EXHAUSTION OF RIGHTS – is now applicable
- ANNUITIES – Maintenance fees are now applicable
Subject matter not protectable under the new law include:
- Plants and animals other than micro-organisms
- Essential biological processes for the production of plants or animals, other than non-biological and micro-biologival processes
- Plant and seed varieties
- The human body
- Methods of surgical or therapeutic treatment and of diagnosis applied to human beings or animals.
- Computer programs, business methods, schemes, rules or methods for playing a games
- The presentation of information
- A discovery, scientific theory or mathematical method.
- 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.
Under the new law a grant of Patent lasts for a period of 20 years and annuities are applicable.
From the grant of a patent, on each successive anniversary thereafter of the filing date of the application for the patent, a prescribed annual fee is required to maintain the patent.
If the annual fee is not paid up to ninety (90) 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.
The new law grants the Patent Holder the full and exclusive right and liberty to make, construct, use and sell the new invention, discovery or improvement. These rights extend to the inventor or assignee, his executors and administrators.
During the term of the patent no person shall without the consent, licence or agreement, of the patentee within Jamaica “directly or indirectly make use of or put in practice the said invention, or any part of the same or in anywise imitate the same or make or cause to be made any addition thereto or subtraction therefrom whereby to pretend themselves the inventors thereof.”
With Jamaica’s recent accession to the Patent Cooperation Treaty (PCT), it is now possible to file an international application under the PCT designating Jamaica.
The New Law recognizes priority claims under the Paris Convention. It is possible to claim priority based on an application which was filed in another Paris Convention or WTO member state up to 12 months prior to the date of filing in Jamaica. Where a claim for right of priority is made the certified priority documents must be filed within 6 months of the claim.
If Jamaica is the country of first filing, the applicant can claim priority in other Paris Convention Countries within 12 months of the Jamaican filing date.
Criteria for Protection
An invention qualifies as a utility model if it is new and capable of industrial application.
A utility model certificate will last for 10 years from the date of filing.
Under the new law inventors can obtain utility model protection (also known as ‘petty patents’ or ‘minor patents’).
Conversion of Application
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.
Local Agent / Address for Service
Every Applicant for a Patent or a Utility Model must provide an address for service within Jamaica and the address must be stated in the application.