[Guest post] A Christmas wish for Jamaica – The 2020 Patent and Designs Act promises good tidings and an “irie” New Year

The IPKat is delighted to host the following contribution by Dr Natalie Corthèsy, Associate Dean of Outreach and Continuing Legal Education and Lecturer in Law at The Faculty of Law The University of the West Indies Mona Campus Jamaica, on recent IP developments in her beautiful home country.

Here's what Natalie writes:

A Christmas wish for Jamaica – The 2020 Patent and Designs Act promises good tidings and an “irie”* New Year 

by Natalie Corthésy

Christmas in Jamaica ... one can dream!

Jamaica’s archaic Patent Act Law 30 of 1857, Cap 283, the Patent (Amendment)Acts No. 42 of 1974 and No.8 of 1975 [The Patent Act], continues to hang over the heads of Jamaican inventors like the sword of Damocles despite the passage of the long awaited Patents and Designs Act on February 27, 2020. This is because no date bringing the Act into operation has yet been notified by the Minister of Industry, Commerce, Agriculture and Fisheries. It is anticipated that the delay will be sustained to allow Jamaica to first ratify the international agreement on patent filing, The Patent Cooperation Treaty (PCT), so that the entry into force of the legislation will coincide with accession. The Jamaica Intellectual Property Office (JIPO) has indicated that this should transpire by the end of 2020 - the most long awaited Christmas IP gift yet! 

The PCT, administered by the World Intellectual Property Organisation (WIPO) has 153 contracting States, and allows inventors to benefit from a single priority date when filing for a patent in multiple jurisdictions. However, the decision to grant a patent remains exclusively within the remit of each national office. For new contracting states like Jamaica, the PCT will only come into force three months after the date on which Jamaica has deposited its instrument of ratification and accession. 

Although the protraction of the old law makes applying for a patent in Jamaica undesirable for the time being, the new Act holds much promise as it aligns with internationally accepted standards characteristic of modern patent regimes, in particular as it relates to application, grant of monopoly rights, infringement and remedies. Regrettably, it does not do what patent enthusiasts, AI enthusiasts in particular, might hope a new patent Act would. PDAJ does not offer a definition of “inventor”. Perhaps the most notable change heralded in by the PDAJ is the introduction of an international standard of novelty. The requirement of novelty under the outgoing law is that the invention must be new, meaning it must not be known or used in the Island of Jamaica before. Arguably, this lower threshold augers well for easier access to innovation and technology given the country’s status as an emerging economy. [Aaron Graham, Patents and Invention in Jamaica and the British Atlantic before 1857, 29 July, 2020 EHR Vol.73, Issue 4. https://onlinelibrary.wiley.com/doi/10.1111/ehr.12995 ]. Currently, JIPO carries out a search of patent and non-patent literature to determine whether an invention claimed is indeed new to Jamaica by conducting a search process that includes referrals of to the National Chemist, and The Bureau of Standards. 

However, once the PDAJ comes into force, and proof of international novelty is required, referrals will also be necessary to an International Search Authorities (ISA) to be designated by JIPO. There are 23 ISAs worldwide, including the European Patent Office, the US Patent Office, Russian Federation, Japan, India, Israel, Brazil, and Canada. The UK voluntarily agreed to cease being an ISA in favour of the European Patent Office. 

The 2020 edition of WIPO’s Global Innovation Index (GII), which presents the latest global innovation trends and the annual innovation ranking of 131 economies, ranked Jamaica 72nd. This is an improvement on Jamaica’s ranking in previous years. Modernization of the country’s patent regime thus reflects a clear policy objective to propel Jamaica’s innovation machinery into full throttle by providing an up to date statutory framework to foster innovation, enable sustainable economic growth and promote development. This strategic move brought swift results as shortly after the promulgation of PDAJ, Jamaica was removed from one of Santa’s most notorious IP naughty lists – the USA’s 301 Trade Representative “watch list” which the country has been on for decades. “The Special 301 Report identifies trading partners that do not adequately or effectively protect and enforce IP rights or otherwise deny market access to US innovators and creators that rely on protection of their IP rights” (here).

*Jamaican expression meaning “good or everything is alright”.