Business

The patent regime in Jamaica: Working with what we have… for now

Legal Notes

by LISA RHOOMS

Wednesday, February 14, 2018

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Jamaica's 1857 Patent Act (the “Act”) is long overdue for an overhaul. In the meantime, however, while the gears are in motion to revamp the patent regime in Jamaica, local inventors seeking patent protection, and international inventors, will have to be guided by the laws currently in place.

THE CURRENT PATENT PROCESS

A patent is a monopoly granted to an inventor in the use of his invention. This monopoly, as the name suggests, prevents other people from making any use of the invention without the consent of the inventor. In Jamaica, patents are valid for fourteen (14) years, and may be extended for a further seven (7) years if the governor general considers it expedient to do so.

Under the Act, a patent requires some “invention”, “discovery” or “improvement”, which means “any manner of new manufacture or new mode of manufacture…” There are, however, certain categories of things which are not patentable and these include scientific theories, mathematical methods, rules for performing a mental act, playing games or doing business, and programmes for a computer.

In order for letters patent to be granted, an inventor must petition that “…he hath invented or discovered some new and useful art, machine, manufacture, or composition of matter, not heretofore known or used within this island…” Simply put, the invention must be novel and it must also be useful, that is, it must also serve a utilitarian function.

Where the inventor is filing the patent, four documents will be required, and these are the petition, declaration, specification in duplicate, and the form of letters patent.

The petition required from the inventor will be a formal petition to the governor general for the grant of letters patent, while the declaration, to be sworn before a justice of the peace or notary public by the inventor, will affirm that, to the best of the inventor's knowledge, he is the first inventor of the invention, and that it has not been used by any other person.

The specification will expound the details of the invention, setting out its object, purpose, benefits and usefulness. If the invention would be better illustrated by diagram, model or drawing, these should also be included.

The form of letters patent is the document that will be signed by the governor general granting the inventor the monopoly rights in the use of the invention in Jamaica.

Patent applications, comprised of these documents, are filed with the Jamaica Intellectual Property Office (JIPO) and are then sent to examiners who will comprehensively assess the novelty and utility of the invention. If such conditions are met, the examiners will recommend the granting of the patent.

Additionally, if corresponding patents have been granted in another jurisdiction where there is extensive examination, the inventor can submit the foreign examination report and foreign grant as the basis of a grant in Jamaica.

Prior to filing a patent, however, it is recommended that a search be conducted at JIPO to ensure that the invention is, in fact, novel and that no other person has applied for a patent for the same invention.

Additionally, prior to letters patent being granted, an inventor must publish the fact that an application for a patent has been made, in the Gazette and a daily newspaper, for four consecutive weeks.

In Jamaica, it is important to note that when a patent is filed, it is, by law, assumed valid until the contrary is proved, and patent applications can take anywhere up to three years to be granted.

It is also important to note that patents granted in Jamaica only receive the monopoly right in Jamaica. Therefore, protection of an invention in another country is only available where an application for the grant of a patent is made in that other country.

Further, Jamaica is not a party to the Patent Cooperation Treaty (PCT), which would have enabled an inventor to concurrently seek protection for an invention in any of several countries (PCT contracting states), by filing one international patent application under the PCT. Therefore, where the inventor is not a resident of a PCT country, individual applications will need to be filed in all countries where patent protection is sought.

NEW LEGISLATION

The revamping of the patent regime is not a new mandate, and has been a topic of political and social debate for well over a decade.

Such debates led to the draft Patents and Designs Bill (the “Bill”), which remains in the throes of the legislative process despite the discussions of various stakeholders on the necessity and overwhelming public and economic benefit of modern patent legislation.

This legislation is vital, therefore, in ensuring the sustainability of Jamaica's patent system, and the Bill is intended to provide the framework for addressing the current inefficiencies and gaps in the system.

Some expected features and benefits of the Bill include:

i. extension of the duration of patent protection;

ii. greater clarity and direction on the concept of novelty, and the introduction of universal novelty (patent must be novel worldwide);

iii. greater clarity and direction on the concept of utility, that is, industrial applicability; and

iv. the introduction of the concept of inventive step.

The Bill, when passed into law, will also enable Jamaica to become a signatory to the PCT, which will enable Jamaican inventors to conduct patent searches and file one-time patent applications within the International Patent Cooperation Union, which would be applicable in several countries under the PCT.

While Jamaica's patent legislation is stuck in the 19th century for now and can, on occasion, prove imperfect in answering questions about technology and more modern-day concerns for construing patents, it is the system that is in place, and patent applications have been successfully granted under it.

Therefore, in spite of the slow pace of the legislation to bring the Act into the 21st century, patent applications are not standing still, and inventors should not either.

It all will come down to simply working with what we have, until such time as a new patent regime comes to the fore.

Lisa Rhooms is an associate at Myers, Fletcher & Gordon, and is a member of the firm's Commercial Department. Lisa may be contacted via lisa.rhooms@mfg.com.jm or www.myersfletcher.com . This article is for general information purposes only and does not constitute legal advice.

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