Jamaica – Implementation of new Patents and Designs Act

As you may have seen from our previous newsletter and website updates, the Government of Jamaica recently deposited its instrument of accession to the Patent Cooperation Treaty (PCT), so making it the 154th PCT member state.  In the build-up to this accession, Jamaica announced dramatic changes to its IP legislation, with the repeal of its archaic patent law which dated back to 1857 and its 1937 design law.    It has just been announced that the new “Patents and Designs Act, 2020” is expected to come into force on 11th February 2022.   From this date, the PCT system will be available to applicants for the registration of patents in Jamaica, although the practical aspects of the Jamaica Intellectual Property Office’s (JIPO) processing of PCT national phase applications are still being decided.  

In addition, as detailed in our previous website article, the new Act introduces the following provisions of particular significance:

- The requirements of absolute novelty, inventiveness and industrial applicability of inventions – hence, it will no longer be possible to file non-Convention patent applications based on disclosed inventions or foreign granted patents.

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

- Excluded from patentability are 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.

- 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 is provided for in the Act, on payment of a late fine. Failure to pay annuities will result in the patent ceasing to have effect.

- On the expiry of 4 years from the application date or 3 years from the grant date (whichever is later), 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 are also provided for under the new Act.  In 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.

The JIPO will be holding a consultative session during the week of 7th February 2022, after which we should know more about the specific procedures, documentation and fees involved under the new law.