Madrid System Lands in Jamaica and a New Patents and Designs Act
Jamaica recently became the 110th member of the Madrid System, with the Protocol officially entering into force on March 27, 2022. Jamaica has long been a leader in the Caribbean in the advancement of IP, and joins Antigua & Barbuda, Trinidad & Tobago (2020), and Cuba as Caribbean participants of the Madrid System. The Caribbean Netherlands, Curaçao, and Sint Maarten also participate in the system based on their statuses within the Netherlands. The French Caribbean participates in the system based on its status within France and (excepting St. Barthélemy) the EU.
Fees
Official fees for trademarks will be increased in the near future in Jamaica, although an exact date has not yet been set. However, brand owners should be aware that costs will be rising soon and perhaps may wish to take some action now to avoid the increased costs.
Procedure
Jamaica has opted for the 18-month notification period for provisional refusals, while holders of IRs designating ‘JM’ must respond to refusals within two months. Local agents must be appointed by those holders that wish to respond but do not have a local address for service. We can advise brand owners wishing to designate Jamaica regarding these differences and the local vs. IR cost-benefit question. We are also available to assist clients who may receive a provisional refusal.
Impact
It remains to be seen how the arrival of new Madrid designations of Jamaica will affect the workload at the Jamaican IPO. The ease in adding jurisdictions to an international filing may mean an increase in the volume of applications to be processed by the IPO staff; compared to its regional neighbors, Jamaica has historically managed a relatively high volume of matters efficiently. Local practitioners remain hopeful that any impacts will be minimal.
The New Patents and Designs Act
It’s all change in Jamaica on the IP front as it now has a new law for patents and designs as well! The long-awaited Patents and Designs Act replaces both the Patents Act of 1857 and the Designs Act of 1937, the last modifications to either of these being in 1975. This long overdue modernization represents a significant step forward for IP in Jamaica, largely bringing it into line with TRIPS.
The key takeaways from the new law are as follows:
• Plants and animals other than micro-organisms excluded from patentability, and essentially biological processes for the production of the same, as well as plant and seed varieties and also business methods.
• Patent validity increased from 14 to 20 years and now with annual maintenance fees.
• Inclusion of provisions preparing country for imminent PCT implementation.
• Now possible to obtain international registration for a design by virtue of the implementation of the Hague Agreement.
• Now possible to claim Paris Convention priority for patent and design filings.
• Utility model protection available for first time; applications not subject to substantive examination nor annuities, and registrations valid for 10 years from filing.
• Now possible to oppose patents, utility models and designs.
• 12-month grace period for disclosures of inventions which are made by the inventor or by a third party in breach of confidence.
• Registered designs must have ‘individual character’ to be registrable, in line with Economic Partnership Agreement (EPA) definition of the term; designs valid for 5 years with the possibility of renewal for two consecutive 5-year periods.
• Clarifies that generally employers will own rights to patents, utility models and designs if arrived at in the normal duties of employment.