07.04.21

Old Versus New: A Look at the New Patent Regime

Helen Liu
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Old Versus New: A Look at the New Patent Regime

Patents are a very important form of Intellectual Property (“IP”). It is one of the hardest IP rights to obtain. It gives the owner of a patent a monopoly on the exploitation of an invention for a period of time. Some well-known examples are pharmaceuticals and medicines, which can be very high revenue earners for the patent owner while the patent is in existence.

On January 23, 2020, the Jamaican Parliament passed the long-awaited Patents and Designs Act (the “New Act”). The New Act will replace the Patent Act, 1857 (“the Old Patent Act”) and the Designs Act, 1937 (“the Old Designs Act”). The New Act is not yet in force, and there has been no indication as to when it will come into force.

The New Act will allow Jamaica to participate in the Patent Cooperation Treaty (“the PCT”). The PCT is an international patent law treaty and provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in many countries. The PCT now has 153 Contracting States.

It is anticipated that the New Act will significantly improve the current regime by bringing the application process up to date and in line with other jurisdictions.

 

Differences between the Old Patent Act and the New Act

 

Applications will be handled solely by the Jamaica Intellectual Property Office (JIPO)
As it stands now, patent applications are filed at JIPO and, once all the formalities are met, JIPO sends the applications to the Attorney General’s Chambers (“the AG’s Chambers”). The AG’s Chambers will then advise the Governor General that the application has met all the requirements and that the patent should be granted. The Governor General will thereafter sign the Letters Patent.

Once the New Act comes into force, JIPO will manage the application from start to grant. The New Act takes away the requirement for the AG’s Chambers to review the application and for the Governor General to grant the patent. It is anticipated, therefore, that patents will be granted in a shorter time frame.

 

Priority dates now possible
A priority date means the filing date of an application in one jurisdiction is then later used as the filing date in other jurisdictions for the same application. Under the Old Patent Act, priority dates were not possible. Applicants can now seek to protect their patents using the earliest date possible.


International applications
Perhaps, one of the biggest benefits of the New Act for local applicants is that local applicants can now simultaneously lodge applications for patents in other PCT jurisdictions. The New Act simplifies the process greatly. While other jurisdictions may require that a foreign applicant has a local agent for service, the applicant is still able to initiate the process locally.

However, of note, while a foreign applicant may choose to have a local agent for service in Jamaica, it is not a requirement that the applicant has a local agent. This could mean that local agents are now by-passed, resulting in less legal fees earned by local firms.


Publication
Publication has been simplified under the New Act. Under the Old Patent Act, applicants had to advertise in both the Jamaica Gazette and one of the daily newspapers for four consecutive weeks. Under the New Act, publication would be done by JIPO in JIPO’s monthly Journal. This simplifies the process significantly and will mean lower advertising cost for applicants.


Life of a patent
Under the New Act, the life of a patent will be 20 years. Under the Old Patent Act, a patent was granted for 14 years with the possibility of an extension for 7 years. This is extended protection for an applicant and is in line with other jurisdictions such as Europe and the United States of America. Under the New Act, the life of a patent cannot be extended.


Increased revenue
Under the Old Patent Act, the application fees were woefully inadequate. The fees paid to JIPO were JM$15 and stamp duty on the specification, which is the document submitted with the application, which sets out the patent in detail. Under the New Act, application fees are significantly higher at JM$30,000 and JM$7,500 for registration. Additionally, to maintain the exclusive right to exploit the patent in Jamaica, an applicant must pay annual maintenance fees, which increase with each year. If the maintenance fees are not paid, then the patent will lapse and no longer be in effect.


Utility models
Utility models are also called “minor inventions” and would be possible via the updated system which is similar to the patent system. In general, compared with patents, utility model systems require compliance with less stringent requirements (for example, lower level of inventive step), have simpler procedures and offer shorter term of protection.


Non-Voluntary Licences
In certain circumstances where a patent is not being exploited, the Supreme Court may order a non-voluntary licence. Under the New Act, at any time after the expiration of four years from the date of filing, or three years from the date of the grant of the patent, whichever is the later, a person may apply to the Supreme Court for a licence under the patent or where the applicant is a Government department, for the grant of a licence under the patent to any person specified in the application if certain conditions are met.

Section 46(2) of the New Act states that the applicant must have made efforts to obtain a licence from the owner of a patent on reasonable commercial terms and conditions. The applicant’s efforts must have been ongoing for at least 90 days.

A non-voluntary licence will not be exclusive, cannot be transferred to someone else, must be used to benefit Jamaica, must account for reasonable remuneration and must be limited in scope and duration for the purpose being applied.

Generally, the New Act will bring both the patent and designs regime in line with many other jurisdictions. The existing design regime is the Designs Act, 1937. This regime focuses on protecting the aesthetic of products. Once the New Act is in force, designs will be protected for 5 years with the possibility of renewal for 2 five-year periods.

Once the New Act comes into force, the application process for patents should become much more efficient and streamlined. Jamaica will also be able to earn more revenue, from the anticipated fees. The question is, how long will it take for the New Act to come into force.

Helen Liu is an Associate at Myers, Fletcher & Gordon, and is a member of the firm’s Commercial Department. Helen may be contacted via or www.myersfletcher.com. This article is for general information purposes only and does not constitute legal advice.