The long-awaited Patents and Designs Act was finally approved by the Senate in Jamaica on 23rd January 2020. This law, once it becomes effective, will repeal the current Patent Act of 1857 and Designs Act of 1937.

 

There are widespread implications of the new law, and once it comes into force, the Act will serve to modernise Jamaica’s IP laws and bring them into closer conformity with those of other jurisdictions. The new Act will come into force on a day to be appointed by the Minister of Industry, Commerce, Agriculture and Fisheries. Meanwhile, it is likely that Jamaica will sign up to the Patent Cooperation Treaty (PCT) in the intervening period.

 

Some of the most significant provisions of the new Act are as follows:

 

- A requirement of absolute novelty of inventions will be introduced – conversely, only local novelty is required under the current Act.

- An invention must satisfy the requirements of novelty, inventiveness and industrial applicability in order to be patentable

- Excluded from patentability will be inventions relating, inter alia, to mathematical formulae; plant and seed varieties; methods of surgical or therapeutic treatment and of diagnosis applied to the human body or to the bodies of animals; the human body in all its developmental stages; scientific theories and aesthetic creations.

- It will be possible to claim priority under the Paris Convention. Documents to substantiate the priority claim must be submitted within 6 months.

- The filing of divisional applications will be permissible, and applicants will also be able to amend their applications on payment of a fee at any time before the patent is granted. In addition, amendments will be permitted after the grant of a patent, provided that the amendment does not result in the specification disclosing any additional matter or extending the protection conferred by the patent.

- Patents will be valid for a term of 20 years from the date of the application, and annuities will be payable within 90 days of each anniversary of the filing date falling after the grant of the patent. A further 90 day grace period will be provided for in the Act, on payment of a late fee. Failure to pay annuities under the Act will result in the patent ceasing to have effect.

- The PCT will finally be provided for under the new Act. The Jamaica Intellectual Property Office will serve as the designated, elected and receiving Office, and the Registrar will be required to process international applications in accordance with the PCT and to apply the provisions of the Jamaican Act when the national phase of a PCT application begins.

- On the expiry of 4 years from the application date or 3 years from the grant date (whichever is earlier), a person may apply to the court for a licence on the ground that there is a demand for the patented product in Jamaica which is not being met on reasonable terms or where there are hindrances and unfair prejudices to commercial and industrial activities.

- Utility models will also be provided for under the new Act. Iin order to qualify as a utility model, the invention must be new and capable of industrial application. A utility model will be valid for 10 years from the date of the application. The Act allows, where appropriate, the conversion of an application for a utility model into an application for a patent and vice versa.

 

We will post further information as soon as we have any news to report on the coming into force of the new Act. In the meantime, please do not hesitate to contact us should you require any clarification of the above matters.