Intellectual Property (IP) practitioners in Jamaica have arguably witnessed more significant changes in the IP legal landscape in the last two years, than they have two decades prior.

2020 heralded a new law on patents and designs, with the Patents and Designs Act being the first law to be enacted in Jamaica that year. It was not until two years later, on February 11, 2022, that the Patents and Designs Act came into effect making monumental changes to the laws.

In the area of trademarks, significant amendments came into effect on June 30, 2021, through the Trade Marks (Amendment) Act which has imposed new conditions of protection and made way for Jamaica's implementation of the Madrid Protocol for the International Registration of Marks (the Protocol).

Here's a rundown of the major changes in patents, designs and trademark protection, respectively.

PATENT UPDATES

The New Law

The Patents and Designs Act No. 1 of 2020 came into effect on February 11, 2022 (the new law) completely overhauling the systems that prevailed under the Patent Act of 1857 and the Designs Act of 1937 (the old laws) and repealing those laws in its wake. Jamaica also acceded to the Patent Cooperation Treaty (PCT) on November 10, 2021, which came into effect February 10, 2022.

The new law has modernized the patent system by raising the criteria of protection to international standards and implementing the WTO TRIPS Agreement's provisions on patents and designs as well as the PCT. Here are a few noteworthy changes.

Criteria for Protection

Under the new law, patents are available for inventions in all fields of technology provided they are new, involve an inventive step and are capable of industrial application and do not fall within the excluded subject matter.

Novelty

Under the new law, absolute novelty is required, not local novelty as obtained under the old law. The invention must not have been made available to the public anywhere in the world, whether by means of written or oral description use or any other means, prior to the filing/priority date. There is a grace period of 12 months within which certain disclosures will not erode the novelty of the invention.

Excluded Subject-Matter

The new law expressly excludes computer programs and business methods from patentability although it might still be possible to protect inventions with these components if they comprise a technical solution to a technical problem. Other subject-matter on the exclusions list include:

  • Plants and animals other than micro-organisms
  • Essential biological processes for the production of plants or animals, other than non-biological and micro-biologival processes
  • Plant and seed varieties
  • The human body
  • Methods of surgical or therapeutic treatment and of diagnosis applied to human beings or animals.
  • Schemes, rules or methods for playing games
  • The presentation of information
  • A discovery, scientific theory or mathematical method.
  • Inventions which if implemented would be contrary to public order or morality or which would cause serious prejudice to the environment or cause injury to human, animal or plant life or health.

Inventions by Employees

The old law was silent on entitlements in inventions made by employees in the course of their employment. However, the new law outlines circumstances wherein employees would either own their inventions outright or be entitled to compensation in respect of the inventions they create for their employers.

Where an invention is made in the course of the employee's normal duties or in the course of specifically assigned duties, the law is clear that the employer would own it but only where the invention might reasonably be expected to result from the carrying out of the duties. Additionally, if the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and responsibilities he had a special obligation to further the interests of the employer's undertaking, ownership would be vested in the employer. Outside of those specific circumstances, an invention made by an employee would belong to the employee.

Term of Protection and Annuities

Under the new law patent protection lasts for 20 years. There is no provision for renewal and annuities are payable to maintain the grant. The fee is payable from the grant of a patent on each successive anniversary of the filing date. If the annual fee is not paid up to ninety days after every anniversary, the patent will have no effect. There is an additional 90-day grace period within which the patent can be restored by payment of the annuity and a late fee.

Paris Convention & Priority Claims

The new law allows for priority claims under the Paris Convention, which were not recognized under the old law. It is possible to claim priority based on an application which was filed in another Paris Convention or WTO member state up to 12 months prior to the date of filing in Jamaica. If Jamaica is the country of first filing, the applicant can claim priority in other Paris Convention Countries within 12 months of the Jamaican filing date.

Patent Cooperation Treaty (PCT) Applications

With Jamaica's accession to PCT as of February 11, 2022, it is possible to file an international application under the PCT designating Jamaica.

Utility Models

A new feature of the new law is the protection of utility models. Inventors can now obtain utility model protection for inventions which are new and capable of industrial application. Utility model applications are not subject to substantive examination as required for patents. A patent application may be converted by the applicant, into a utility model application at any time before the grant or refusal of a patent. Similarly, a utility model application may be converted by the applicant, into a patent application. A utility model certificate lasts for 10 years from the date of filing and protected utility models are not subject to annuities.

Transitional

The Patent Act of 1857 continues to govern all applications filed and granted under that law and the Patent Rules under that Act also continue to apply except where they are inconsistent with the new law.

DESIGNS UPDATE

Industrial Designs are now protected at the standard outlined by the WTO TRIPS Agreement and the Paris Convention. The Haque Agreement Concerning the International Registration of Designs (1999 Act & 1960 Act) and the Locarno Agreement Establishing an International Classification for Industrial Designs (1968) also apply.

New eligibility criteria

Under the new law absolute novelty is required and a design must have individual character.

Duration of Design Protection

Designs are protected for 5 years and renewable for 2 consecutive 5-year periods, while under the old law designs were protected for 15 years non-renewable.

Exclusions

Consistent with the government's policy to protect and safeguard its nation brand ('Brand Jamaica') from appropriation and improper use, designs which involve the use of a representation of the Coat of Arms of Jamaica, national flag of Jamaica, armorial bearings, official signs or hallmarks, or other national symbol or emblems and the like, are now excluded from protection unless the government grants consent. Similarly, designs which use the country name of Jamaica or abbreviations or homonyms thereof, the map of Jamaica or national colours of Jamaica, in a misleading manner are not afforded design protection. These exclusions also apply to emblems, colours, maps and names of other countries. Designs which make use of the traditional knowledge or traditional cultural expressions of indigenous or local communities, without authorization from the relevant community or otherwise misleading uses, are also excluded.

Interestingly, although there is no statutory image right per se, the new law stipulates that designs which use the image or likeness of an individual without consent, will not be registered. Further, designs which use third party copyright or trademarks (registered or unregistered) without consent will not be protected under the new law.

Priority Claims and International Applications

As the new law implements the Paris Convention, where the Jamaican design application is filed within 6 months of the first filing date priority claims can be made. The new law also implements the Hague Agreement and provides for the filing of an international application under that Agreement.

Transitional

The Designs Act of 1937 continues to govern all applications filed and granted under that law and the Designs Rules under that Act apply even to new design applications under the new law, insofar as they are consistent with the new law.

TRADEMARK UPDATES

New Conditions of Protection

The Trade Marks (Amendment) Act 2021 gives the Registrar power to impose conditions or limitations on trademarks containing country names, maps, colours, emblems and symbols. Trademarks containing the Jamaican Coat of Arms, flag, emblems and other national symbols are unregistrable without the consent of the Government of Jamaica. This aligns with the government of Jamaica's policy to protect Brand Jamaica from appropriation and improper use. Similarly, in an effort to safeguard Jamaica's traditional knowledge, the amended law renders unregistrable, trademarks which misrepresent or misappropriate the traditional knowledge or traditional cultural expressions of indigenous or local communities in Jamaica.

Madrid Protocol Accession

After decades of national consultations and consequent on the passage of the Trade Marks (Amendment) Act, Jamaica acceded to the Madrid Protocol for the International Registration of Marks (the Protocol) on December 27, 2021, six months after the 2021 Act came into effect.

The Protocol took effect on March 27, 2022, and since then, hundreds of foreign-based proprietors have been opting to designate Jamaica in their international applications, taking advantage of the relatively modest individual fees (188 Swiss francs for one class of goods or services and 25 Swiss francs for each additional class and 304 Swiss francs for collective and certification marks).

Prior to accession, it was unclear to what extent local proprietors would utilize the Protocol and questions were raised as regards whether incoming international filings would put a strain on the national trademark system. While these remain largely unanswered, local proprietors have not been rushing to file international applications and the incoming international applications have yet to be published in Jamaica, fuelling speculation that the increased delays being experienced by trademark practitioners in the processing of national applications, may be at least partly attributable to the influx of international filings.

The Jamaica Intellectual Property Office has 18 months from the date of filing to refuse or grant an international registration. The next eight (8) months, which would mark 18 months since the implementation of the Protocol, should paint a clearer picture of how well JIPO has been managing the new regime.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Author profiles please!