This article serves to update you on the situation detailed in our earlier article on this website, concerning the introduction of a new patents law in St Kitts-Nevis.

As advised previously, we have been in detailed discussions with our St Kitts associate to try and find a solution to the serious problems and inconsistencies created by the introduction of the new law, which as you will remember introduced a requirement of absolute novelty, but which did not provide any transitional provisions under which granted UK patents could still validly be registered.

In turn, our associate has taken our complaints and concerns directly to the Attorney General, who has considered our position in detail and discussed the matter with the Registrar herself. I have just been advised of the outcome of those discussions, and it appears that the Attorney General has agreed for the Registrar to use her discretionary powers under Section 58 of the current Act, to allow the continued reregistration of granted UK and EP(UK) patents until such time as St Kitts-Nevis joins the Patent Cooperation Treaty.

Section 58 of the Patents Act reads as follows:

 

  • (1) Where the Registrar is satisfied that the circumstances justify it, he may, upon the written request of any interested person, and upon such terms as he may direct, extend the time for doing any act or taking any proceeding under this Act and Regulations.
  • (2) The extension may be granted even though the time for doing the act or taking the proceeding has expired.

The Registrar has agreed to act accordingly, such that pending reregistration applications which have been filed since the implementation of the new law and patents granted under the new law will be considered by the Registrar to be valid. Similarly, the Registrar will continue to accept new reregistration applications which we file at the St Kitts Registry, until such time as the new Implementing Regulations are issued and/or the jurisdiction joins the PCT. In this regard, we have been advised that the necessary instruments for St Kitts’ accession to the PCT are to be prepared in due course, although it is not known how long this will take.

In view of the above developments, our associate has formally applied to the Registrar for an extension of time in respect of the filing of pending and future patent applications. However, we would point out that we do not endorse the Registrar’s view that these patents would be valid, as we do not consider the new patent law to provide any basis for the legitimate filing of patents based on published granted UK patents. Thus, whilst we will of course accept any future instructions that you may have for the filing of such reregistration applications, and forward any such Certificates of Registration to you once they have issued, we regret that we cannot endorse the validity of such patents.

It has yet to be decided whether the Registrar will introduce suitable transitional provisions in the long-awaited Implementing Regulations, or alternatively supplementary legislation, which will retroactively sanction the filing of reregistration applications in St Kitts. If such provisions or legislation are implemented, we admit that we will feel more comfortable about endorsing the validity of the patents in question. Until such time, however, we regret that we cannot consider these patents to be legally binding and authoritative.

Please note that the Regulations for the new Patents Act have still not been issued, and there is therefore still no provision for the payment of annuities. We will keep you apprised of all developments in this regard.

If you have any queries on any of the above points, please do not hesitate to contact us. Finally, please appreciate that, whilst we endeavour to ensure that our information is accurate and current, we cannot be held responsible for any misinformation or inaccuracies.