WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property RigMs IPlNllIJAMlI/l 
17 June 2002 
(02-3349) 
Original: Englishl 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
JAMAICA 
The present document reproduces the textl of the Patents and Designs Bill, as notified by 
Jamaica under Article 63.2 of the Agreement (see document IP/NIlIJAM/2). 
Conseil des aspects des droits de propri(~te 
inteUectueile qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE VARTICLE 63:2 DE VACCORD 
JAMAIQUE 
Le present document contient le texte1 du projet de Loi sur les brevets et les decisions et 
modeles, notifie par la Jamalque au titre de l'article 63:2 de l'Accord (voir le document 
IP/NIlIJAM/2). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIP ALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL pARRAFO:2 DEL ARTicULO 63 DEL ACUERDO 
JAMAICA 
En el presente documento se reproduce el texto1 del proyecto de Ley de Patentes y Dibujos y 
Modelos Industriales, que Jamaica ha notificado en virtud del parrafo 2 del articulo 63 del Acuerdo 
(vease el documento IP/NllIJAM/2). 
I In English only.lEn anglais seulement.!En ingles solamente. lP/Nil 
Page 2 
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16. 
17. 
18. THE PATENTS ~~ DESIGNS ACT, 2001 
(Act of 2001) 
ARRANGEMENT OF SECTIONS 
PART I. PRELIMINARY 
Short title and cowmencement. 
Interpretation. 
PART II. PATENTABLE INVENTIONS 
Patenta.bi~ity 
Conditions for patentability. 
Restrictions on grant of patent. 
Novelty of invention. 
Inventive step. 
Industrial application. 
PART III. PROCEDURE FOR OBTAINING PATENT 
Who may apply. 
Application for patent. 
Filing date. 
Priority date. 
Divisional application. 
Information on foreign applications. 
Mention of inventor. 
National treatment. 
Convention App~ication 
Convention application. 
Internationa~ Application 
International application. 
Treatment of application. 19. 
20. 
<')1 L..l... 
22. 
23. 
24. 
25 .. 
26. 
27. 
28. 
29. 
30. 
31. 
32. 
33. 
34. 
35. 
36. 
37. 
38. 
39. IPiNI1 
Page 3 
Adapting Act to international application. 
Provisions as to Applications 
Withdrawal of application. 
&~endment of application~ 
Publication of application. 
Examination and Search 
Preliminary examination and search. 
Substantive Examination 
Substantive examination. 
Grant of patent. 
Duration. 
Postponement of grant. 
Provisions as to Patents After Grant 
P~endment of specification after grant. 
PART IV. PROPERTY RIGHTS AND OWNERSHIP 
Nature of rights. 
Exclusive rights. 
Ownership 
Persons to whom may be granted. 
Co-ownership. 
Directions Co-owners. 
Inventions by employees. 
Compensation of employees. 
Amount of compensation. 
Enforceability of contracts re-employee's inventions. 
Supplementary. 
PART V. MODIFICATION OF RIGHTS 
Voluntary Licences 
Grant of licence. IP/N/l/JAMlIll 
Page 4 
40. 
41. 
42~ 
43. Licences of Right 
Offer to license. 
Agreement by defendant to take licence. 
Reduction of renewal fees. 
Request for Cancellation. 
Non-VoLuntary Licences 
44. Application for grant of non-voluntary licence. 
45. Guiding principles etc., in considering applications. 
46. Order to grant licence. 
47. Supplementary provisions as to licences. 
48. Effect of reports on monopoly and competition issues. 
Opposition, AppeaL and Arbitration 
Respecting Licences 
49. Opposition. 
50. Supplementary provisions as to licences. 
51. Special provisions re-patented inventions worked in a 
relevant country. 
Use of Patented Invention by Crown 
52. Use of invention in service of Crown. 
53. Rights holder to be informed of use. 
54. Rights of third parties in respect of Crown. 
55. Reference of department disputes re-Crown use. 
56. Patentee's right to compensation. 
57. Cassation of use by order of Court. 
Acquisitions and Assignments 
58. Acquisition of patent etc., by Crown. 
59. Assignment by inventor. 60. 
61. 
62. 
63. 
64. 
65. 
66. 
67. 
68. 
69. 
70. 
71. 
72. 
73. 
74. 
75. 
76. 
77. 
78. 
79. PART VI. INDUSTRIAL DESIGNS 
Meaning of "industrial design". 
Registrable industrial design. 
Who may apply. 
Application for registration of industrial design. 
Withdrawal of application for industrial design. 
Right of priority for industrial design. 
Filing date of industrial design. 
Examination of application. 
Opposition to application. 
Duration of Registration; renewal fees. 
Meaning of "designer". 
Ownership of design right. 
Rights conferred by registration of industrial 
design. 
Revocation of registration of design. 
PART VI. REVOCATION Al.'ID SURRENDER OF PATENTS 
Revocation 
Grounds for revocation by Court. 
Revocation by Registrar. 
Surrender of Patent 
Procedure for surrender. 
Record of revocation or surrender. 
PART VII. INFRINGE:MENT OF PATENT 
Infringing Acts 
Acts constituting infringement. 
Exception to infringement. Page 5 IP INIl /JAM/Ill 
Page 6 
80. 
81. 
82. 
83. 
84. 
85. 
86. 
87. 
88. 
89. 
90. 
91. 
92 
93. 
94. 
95. 
96. Infringement Proceedings 
Power to institute proceedings. 
Restrictions on damages etc., for infr~ngement. 
Infringement of partially valid patent. 
Use begun before priority date or filing date. 
Infringement proceeding by co-owner. 
Infringement proceedings by exclusive licensee. 
Unregistered transaction, etc., in infringement 
proceedings. 
Infringement of rights after publication of patent 
application. 
Certificate of validity. 
PART VIII. PATENT ATTORNEYS 
Registration, Rights and Privi~eges 
Registration of patent attorneys. 
Privileges. 
Removal from register. 
Offences by unregistered persons etc. 
Documents prepared by legal practitioner. 
PART [IX]. UTILITY MODEL CERTIFICATES 
Applicability of provisions patents. 
Special provisions relating to utility model 
certificates. 
Conversion of patent applications or applications for 
utility model certificates. 
Register of Patents 
97. Provisions as to location and form of register. 
98. Particulars to be registered. 
99. Register as evidence. 
100. Trusts not registrable. 101. Registration of assignment, etco 
102. Inspection by public. 
103. Rectification of Register. 
Suppleman t.aI 
104. Information Registrar may give. 
105. Admissibility of unregistered particulars. IP/N/l/JA?v1iIll 
Page 7 
Protection of Employees -additional powers 
106. Immunity. 
107. Clerical errors. 
108. Destroyed or lost patent. 
109. AnDual report. 
PART X. MISCELLANEOUS.AND GENERAL 
Offences 
110. Falsification of Register. 
111. False claim as to patent rights. 
Appeals 
112. Appeal to the Court. 
113. Appeals to Court of Appeal. 
Supplemental 
114. Fees. 
115. Electronic submission of documents, etc. 
116. Service by post. 
117. Rules. 
118. Act binds the CrOWD. 
Repeal, Saving and Transitional Provisions 
119. Repeal of Patent Act and Designs Act. 
120. Transitional. 
SCHEDULE. IPm/] / JAMlI!l 
Page 8 
DISCUSSION DRAFT 
Short title A BILL 
ENTITLED 
AN ACT to Repeal the Patent Act and the 
Designs Act and to makenew provisions 
relating to patents and industrial 
designs and for related matters. 
BE IT ENACTED by The Queen's Most Excellent Majesty, 
by and with the advice and consent of the Senate and House 
of Representatives of Jamaica, and by the authority of the 
same, as follows:-
PART I. Preliminary 
1. This Act may be cited as the Patents and Designs Act, 
and commence- 2001, and shall come into operation on a day to be appointed 
ment. by the Minister by notice in the Gazette. 
Interpre- 2. In this Act -
tation. "appointed day" means the day appointed by the Minister 
pursuant to section 1; 
IIconvention country" means a country, other than Jamaica, 
declared by order under section 16 to be a 
convention country for the purposes of this Act; 
"exclusive licensee" means a licensee under a licence 
granted by the patentee and conferring on the 
licensee the right to exploit the patented invention 
in Jamaica to the exclusion of the patentee and all 
other persons; 
Uto exploit" in relation to an invention includes -
(a) where the invention is a product -
(i) to make! sell, offer for sale, or 
otherwise dispose of the producti lP/Nil 
Page 9 
(ii) to use or import it, 
or to stock it for the purpose of doing any of 
those things; or 
(b) where the invention is a method or process, to 
use the method or process or do any act 
mentioned in paragraph (a) in respect of a 
product directly obtained by means of the 
[method or] process; 
"filing date" means the date referred to in section 10; 
"to file" means to file with the Office; 
"foreign vesselll means a vessel registered in a 
prescribed foreign country; 
"industrial design" shall be construed in accordance 
with section 60; 
"infringement proceedings" means proceedings for the 
infringement of a patent; 
"international application" has the same meaning as in 
the Patent Co-operation Treaty; 
IIInternational Bureaull means the International Bureau of 
the World Intellectual Property Organization 
[established by the convention signed at Stockholm 
on the 14th day of July 1 1967]; 
"invention" means an idea which permits in practice the 
solution to a specific problem in the field of 
technology; 
"inventor" means the deviser of an invention; 
tllicence" means a licence to exploit, or to authorize the 
exploitation of a patented invention; 
"non-voluntary licence" means a licence granted under an 
order made under section 46; lP/Nil iJAM/IIl 
Page 10 
"Officell means the Jamaica Intellectual Property Office 
established under the Jamaica Intellectual Property 
Office Act; 
"patent" means the title granted under this Act to 
protect an invention, and unless the context other-
wise requires, includes, subject to Part [ ] a 
[utility model certificate] . 
"Patent Co-operation Treatyll lIor Treaty" means the Patent 
Co-operation Treaty done at Washington on the 19th, 
June, 1970, as amended from time to time and in 
force in Jamaica; 
["publish" unless the context otherwise requires means 
to make available to the public whether by means of 
a national daily newspaper or otherwise] ; 
"Register" means the register to be kept under section 
["registered" means -
(a) in relation to a patent, entered in the 
Register of Patents; and 
(b) in relation to a patent attorney, entered in 
the Register of Patent Attorneysi] 
"Registrarll means the Registrar of Industrial Property 
designated as such pursuant to the Jamaica 
Intellectual Property Office; 
["rules" means the rules made under section 101;] 
"sealed" means sealed with seal of the Office; 
"utility model certificate" means a certificate granted 
under section [ ] to protect the [title] to a 
registered utility model; 
"to workn in relation to a patented invention means -
(a) where the invention is a product, to make or 
import the product; or Conditions 
for patent-IP/N!1/JAMIUI 
Page 11 
(b) where the invention is a method or process, to 
use the method or process or do any act 
mentioned in paragraph (a) in respect of a 
product resulting from such useo 
PART II. PATENTABLE INVENTIONS 
Patentability 
3. -(1) An invention is patentable only if -
(a) it is new, involves an inventive step and is capable 
ability. of industrial application; and 
Cb) the grant of a patent for it is not excluded under 
section 4. 
(2) An invention may be, or may relate to, a product 
or process. 
Restrictions 4. -(1) A patent shall not be granted for -
on grant of (a) plants, varieties of plants or animals other than 
patent. than micro-organisms; 
(b) essentially biological processes for the production 
of plants or animals, other than non-biological and 
micro-biological processes. 
(2) The following are not patentable -
(a) inventions the implementation of which would be 
contrary to public order or morality or would cause 
serious prejudice to the environment; 
(b) methods of surgical or therapeutic treatment and of 
diagnosis applied to the human body or to the bodies 
of animals (but not the products for use in any of 
those methods) i 
(c) discoveries, mathematical methods or the formulation 
of abstract theories; 
(d) schemes, performing purely mental acts or playing 
games. lP/Nil 
Page 12 
Novelty of 
invention. 5. -(1) An invention that does not form a part of the 
state of the art is to be taken to be new. 
(2) The state of the art in relation to an invention 
consists of all matter (whether a product, a processj 
information about either or anything else) that has been 
made available to the public anywhere in the world prior to 
the filing date or the priority date (as may be appropriate) 
of the application claiming the invention, by means of a 
written or oral descriptionl use or by any other means. 
(3) In relation to an invention for which application 
for a patent is made, the state of the art shall also be 
taken to comprise matter contained in an application for 
another patent which was published on or after the priority 
date of that invention, if that matter -
(a) has a priority date earlier than that of the 
inventioni and 
(b) was contained in the application for that other 
patent both as filed and as published. 
(4) Where matter constituting the invention is 
disclosed in a period before the filing date, or the 
priority date, as the case may be, then, so long as the 
disclosure did not occur earlier than the six-month period 
immediately prior to such date, the disclosure shall not be 
taken to be part of the state of the art if it was due to or 
made in consequence of any act specified in subsection (5) 
(5) The acts referred to in subsection (4) are as 
follows -
(a) the matter having been obtained unlawfully or in 
breach of confidence by any person from the inventor 
or from any other person to whom the matter was 
available in confidence by the inventorj Inventive 
step. 
Industrial 
application. Page 13 
(b) a breach of confidence was committed by any person 
who obtained the matter in confidence from the 
inventor or from any other person to whom it was 
made available, or who obtained it, from the 
inventor; or 
(c) the inventor displayed the invention at an 
international exhibition, and the applicant -
(i) states, on filing the application, that the 
invention has been so displayed; and 
(ii) files, within the prescribed period, written 
evidence in support of the statement 
complying with any prescribed conditions. 
(6) Where an invention consists of a substance or 
compound for use in a method of surgical or therapeutic 
treatment or method of diagnosis, the fact that the 
substance or compound is part of the state of the art shall 
not prevent the invention from being taken to be new, so 
long as the use of the substance or composition in such 
method does not form part of the state of the art. 
(7) In this section references to the inventor include 
references to any owner of the invention for the time being. 
6. An invention shall be taken to involve an inventive 
step if, having regard to the state of the art, relevant to 
the application claiming the invention and within the 
meaning of section 5(2) f it is not obvious to a person 
having ordinary skill in the art. 
7. An invention shall be taken to be capable of industrial 
application if it can be made or used in any kind of 
industry (} including agriculture, fishery and handicraft) IPIN/l 
Page 14 
Who may 
apply. 
Application 
for patent. PART Ill. PROCEDURE FOR OBTAINING PATENT 
8. -(1) An application for a patent may be made by -
(a) any person claiming to be the true and first 
inventor of the invention; or 
(b) any person who is an assignee of the person so 
claiming, and in either casei may be made by that 
person alone or jointly with [any other person] . 
(2) Without prejudice to the provisions of subsection 
(1), an application for a patent for an invention in respect 
of which an application for protection has been made in a 
convention country, may be made by the [applicant] for 
protection or by the applicant's assignee. 
(3) An application may be made under subsection (1) or 
(2) by -
(a) the personal representative of any deceased person 
who, immediately before his death, was entitled to 
make an application; or 
(b) the assignee of the personal representative. 
9. -(1) An application for a patent shall be filed with 
the Registrar in the prescribed form and manner and shall be 
accompanied by the prescribed fee. 
(2) Every application shall contain -
(a) a request for the grant of a patent; 
(b) a specification containing -
(i) a description of the inventionj 
(ii) one or more claims i 
(iii) any drawing referred to in the description 
or in any claim; and 
(c) an abstract. 
(3) Where the applicant or one of the applicants is 
not the inventor -I P/NI lIJAMIlI 1 
Page 15 
(a) the application shall contain a declaration by the 
applicant that he believes that the person named as 
the inventor is correctly named as such; and 
(b) the request shall be accompanied by a statement 
justifying the right of that applicant to the 
patent. 
(4) The request shall contain the name of the 
applicant, the name of the inventor and the agent (if any) 
and a title indicating the subject of the invention. 
(5) The description shall -
(a) particularly describe the invention in a manner 
which is sufficiently clear and complete for the 
invention to be performed by a person having 
ordinary skill in the art; and 
(b) disclose the best method of performing the inventior. 
which is known to the applicant and for which he is 
entitled to claim protection. 
(6) The claim or claims shall -
(a) define the matter for which protection is sought; 
(b) be clear and concise and supported by the 
description; and 
(c) relate to one invention or to a group of inventions 
which are so linked as to form a single inventive 
concept. 
(7) The abstract shall merely provide technical 
information and -
(a) shall not on publication, form a part of the state 
of the art; and 
(b) shall not be taken into account for the purpose of 
interpreting the scope of the protection. IPIN/l 
Page 16 
Filing 
date. 10. -(1) Subject to the following provisions of this 
section [and section 11 and to the rules], the date of 
filing a patent application shall be the earliest date on 
which all the following conditions are satisfied in relation 
to the application -
(a) the documents filed contain an indication that a 
patent is sought in pursuance of the applicationi 
(b) those documents -
(i) identify the applicant OT the applicants for 
the patenti and 
(iil contain a description of the invention for 
which a patent is sought whether or not the 
description complies with the other 
provisions of this Act and the rules; and 
(c) the applicant has paid the prescribed filing fee. 
(2) If the Registrar finds that the conditions 
specified in subsection (1) are not satisfied, the Registrar 
shall invite the applicant to make the necessary corrections 
within the prescribed period, and if the corrections are not 
so made, the application shall be treated as if it had not 
been filed. 
(3) Where after a patent application has been filed 
and before the grant of the patent -
(a) a new application is filed by the original applicant 
or his successor in title in accordance with the 
rules in respect of any part of the matter contained 
in the earlier application; and 
(b) the conditions specified in subsection (1) (a) and 
(b) are satisfied in relation to the new 
application, 
the filing date of the earlier application shall be treated 
as the filing date of the new application. Priority 
date. IP/N/lIJAM/IIl 
Page 17 
(4) Where an application is divided pursuant to 
section 12, each divisional application is entitled to the 
filing date of the initial application. 
11. -(1) An applicant for a patent may claim on for his 
application, a right to priority with reference to an 
earlier application by him or his predecessor in title filed 
in relation to the same invention in a convention country. 
(2) An applicant who wishes to make a claim for a 
right of priority shall -
(a) make a declaration to that effect in the 
application; and 
(b) indicate the filing date of the application in the 
convention country. 
(3) Where an application contains the matters 
referred to in subsection (2), the Registrar may request the 
applicant to furnish, within the prescribed period -
(a) a copy of the earlier application certified as 
correct by the appropriate authorities in the 
country in which that application was filed; and 
(b) if the earlier application is not in English, a 
translation of it in English accompanied by a 
declaration by the translator that the translation 
is to the best of his knowledge, complete and 
faithful. 
(4) An applicant for a patent under this Act is 
entitled to a right of priority in respect of the 
application if -
(a) his application under this Act is made before the 
expiration of twelve months from the date 
immediately after the filing date of the earlier 
application or, if there is more than one, of the 
first of them; and IP/N/l/JAM/IIl 
Page ]8 
(b) he has acted as required under subsections (2) and 
(3) and in accordance with such rules as may be 
prescribed. 
(5) Where the Registrar finds that the requirements 
of subsection (3) or the rules have not been met; the 
declaration by the applicant under subsection (2) (a) shall 
be regarded as having not been made. 
(6) Where two or more applications have been filed 
earlier in the same country or in different countries, being 
applications which constitute regular filings in such 
country or countries, then, the priority date under this Act 
shall be taken to be the earliest filing date of the 
previous regular filings. 
(7) Where the date taken to be the priority date 
under subsection (6) or the filing date in Jamaica under 
section 10 or both, were effected by a person who was not 
entitled to the grant of the patent, the true owner of the 
right may claim the priority conferred by subsection (4). 
(8) The acceptance by the Registrar of a claim to a 
right of priority in respect of a patent application does 
not relieve a patentee of the obligation to prove the 
existence of the right. 
(9) In relation to a patent application, no 
opposition may be raised with reference to any act occurring 
between the priority date and the date on which the 
application is first filed under this Act. 
(10) In this section '~regular filing" means any 
filing of an application that is adequate to establish the 
date on which the application was filed in the country 
concerned, whatever may be the subsequent outcome of the 
application. Divisional 
application. 
Information 
on foreign IP/NIlIJAM/lIl 
Page 19 
12. -(1) At any time before the termination of the 
examination of an application relating to two or more 
inventions, the application may be divided into two or more 
applications (hereinafter called "divisional applicationsll) 
at the direction of the Registrar or at the request of the 
applicant, provided that each divisional application makes 
specific reference to the original application and does not 
extend beyond the description in the original application. 
(2) A divisional application which does not comply 
with subsection (1) shall be deemed to be withdrawn. 
(3) Each divisional application shall have the filing 
date of the original application and shall have the benefit 
of any priority enjoyed by the original application. 
(4) The prescribed fee shall be payable in respect of 
each divisional application. 
13. -(1) An application shall, at the request of the 
Registrar, furnish the Registrar with the date and number of 
applications. any application for a patent or other title of protection 
made in an industrial or intellectual property office of any 
other country, or within a regional industrial intellectual 
property office (hereinafter referred to in this section as 
a "foreign application"), relating to the same or 
essentially the same invention as that claimed in the 
application filed with the Registrar. 
(2) The applicant shall, upon request/ furnish the 
Registrar with the following documents relating to one of 
the foreign applications referred to in subsection (1) -
(a) a copy of any communication received by the 
applicant concerning the result of any search or 
examination carried out in respect of the foreign 
application; IP/N/liJAM/lll 
Page 20 
Mention 
of inventor. (b) a copy of the patent or other title of protection 
granted on the basis of the foreign application; 
(c) a copy of any final decision rejecting the foreign 
application or refusing the patent requested in the 
foreign application; 
(d) a copy of any final decision invalidating the patent 
or other title of protection granted, on the basis 
of the foreign application referred to in subsection 
(1) . 
(3) Documents furnished pursuant to subsections (I) 
and (2) shall, if not in English be translated into English 
and be accompanied by a declaration by the translator that 
the translation is, to the best of his knowledge complete 
and faithful; and such documents may be used only to 
facilitate the evaluation of the novelty and inventive step 
of the application filed with the Registrar. 
(4) The applicant may submit comments on any 
documents furnished by him under subsections (1) and (2). 
14. -(1) The inventor or joint inventors of an invention 
have the right to be mentioned as such in any patent granted 
for the invention unless there has been submitted to the 
Registrar by him or them, as the case may be, a written 
declaration indicating a desire not to be so named. 
(2) A promise or undertaking by the inventor made to 
any person to the effect that he would make such a 
declaration shall be void. 
(3) The mention of a person as an inventor pursuant 
to this section shall not confer or derogate from any rights 
under the patent. National 
treatment. 
Convention 
application. lP/Nil 
Page 21 
(4) Where a person has been mentioned as sole or 
joint inventor in pursuance of this section, any other 
person who alleges that the former ought not to have been 
so mentioned may at any time apply to the Registrar for a 
certificate to that effect, and the Registrar may issue such 
a certificate and if he does so, he shall accordingly 
rectify any undistributed copies of the patent and of any 
documents prescribed for the purposes of subsection (1).] 
15. As regards the protection of patents, utility 
models, industrial designs or applications therefore, this 
act shall apply also to nationals of any convention country 
and, nationals of a non-convention country who are domiciled 
in or have [real and effective] industrial or commercial 
establishments in Jamaica; 
Convention Application 
16. -(1) With a view to fulfilling obligations under any 
Treaty, international convention or arrangement, the 
Minister may by order published in the Gazette declare a 
country specified in the order as a convention country for 
the purposes of Act. 
(2) A patent application from any country so 
specified under subsection (1) shall be referred to 
hereinafter as a convention application and shall -
(a) specify the date on which and the country in which 
the patent application or the first such application 
was filedi and 
(b) state that no patent application in respect of the 
invention had been made in the convention country 
before that date by the applicant or any person from 
whom he derives title. IP/N/l/JAM/I!1 
Page 22 
International Application 
International 17. -(1) An international application for (designating 
application. Jamaica) for which a filing date has been accorded under the 
Patent Co-operation Treaty shall, subject to sections 18 and 
19 f be treated for the purposes of [this Part] [this Act] as 
an application for a patent under this Act. 
(2) If the international application or the 
designation of Jamaica in it is withdrawn or (except as 
mentioned in subsection (3)) deemed to be withdrawn under 
the Treaty, it shall be treated as withdrawn under this Act. 
(3) An international application shall not be 
treated as withdrawn under this Act if it or the designation 
of Jamaica in it is deemed to be withdrawn under the 
Treaty -
(a) because of an error or omission in an institution 
having functions under the Treaty; 
(b) because, owing to circumstances outside the 
applicant's control, a copy of the application was 
not received by the International Bureau before the 
end of the time limited for that purpose under the 
Treaty; or 
(c) or in such other circumstances as may be prescribed. 
(4) Where an international application which 
designates Jamaica is refused a filing date under the Treaty 
and the Registrar determines that the refusal was caused by 
an error or omission in an institution having functions 
under the Treaty, the Registrar may direct that the 
application shall be treated as an application under this 
Act, having such filing date as the Registrar may direct. Treatment 
of appli­
cation. IP/N/I 
Page 23 
18. -(1) During the international phase of an 
international application [(Jamaica)] the provisions of the 
Patent Co-operation Treaty and the Regulations thereunder 
relating to [publication, search, examination and 
amendment] I shall apply instead of the relevant provisions 
of this Act. 
(2) The international phase of the application means 
the period from the date of filing of the application in 
accordance with the Treaty until the national phase begins. 
(3) The national phase of the application begins -
(a) when the prescribed time limit expires, but only if 
prior thereto the translation (where applicable)of 
the application into English has been submitted to 
the Office and the applicant has paid the prescribed 
fee; or 
(b) on the applicant expressly requesting the Registrar 
to proceed, in advance of such expiry, with the 
national phase of the application, so long as a copy 
of the application is filed at the Office, if not 
previously done pursuant to the Treaty, a 
translation of the application into English is 
provided where necessary and the prescribed fee is 
paid, 
and for the purposes of sub-paragraph (b) "a copy of the 
application" includes a copy published in accordance with 
the Treaty in a language other than in which it was 
originally filed. 
(4) If before the expiration of the prescribed 
period, conditions mentioned in subsection (3) (a) are not 
satisfied, the application shall be taken to be withdrawn. lP/Nil 
Page 24 
Adapting 
Act to in-
ternational 
application. (5) Where an amendment is made to an international 
application during the international phase, the amendment 
will be treated as made under this Act if -
(a) before the end of the prescribed period, any 
necessary translation of the amendment has been 
filed at the Office and the applicant has paid the 
prescribed fee; or 
(b) where the applicant expressly requests the Registrar 
to proceed earlier with the national phase of the 
application, there is then filed with the Office a 
copy of the amendment (if it had not been previously 
sent in accordance with the Patent Co-operation 
Treaty) and any necessary translation thereof. 
(6) Where the requirements of subsection (5) (a) or 
(b) are not satisfied, the any amendment to an international 
application during the international phase shall be dis-
regarded. 
(7) The Registrar shall, on payment of the 
prescribed feel publish any translation filed at the Office 
under subsection (3) or (5). 
19. The following provisions shall apply where an inter-
national application (Jamaica) is accorded a filing date 
under the Patent Co-operation Treaty -
(a) the filing date so accorded shall be treated as the 
date of filing the application under this Act, or if 
the application is re-dated under the Patent Co-
operation Treaty to a later date, that later date 
shall be treated as the date of filing; 
(b) any declaration of priority contained in the 
application shall be treated as made under section 
ll(2), and where in accordance with the Treaty extra 
days are allowed, the period of twelve months 
specified in section ll(4) shall be treated as 
altered accordingly; lP/Nil 
(c) any statement of the inventor's name under the 
Treaty shall be treated as a statement filed in an 
application under section 8(1). Page 25 
(2) Where an international application which has not 
otherwise been published under this Act is published in 
accordance with [the Treaty] then, except as provided in 
subsection (3), it shall be treated as published for the 
purposes of section 22 when the conditions specified in 
section 18 (3) (a) are satisfied. 
(3) For the purposes of sections 52 and [87] f the 
application, not having been published under this Act, shall 
be treated as published under section 22 -
(a) if it is published in English, on its being so 
published; and 
(b) if it is published in a language other than 
English -
(i) on the publication of a translation of the 
application in accordance with section 18; 
or 
(ii) on the service by the applicant of a 
translation into English of the 
specification of the application on the 
Government department concerned or, as the 
case may be, on the person committing the 
infringing act, 
and reference in paragraph (b) (ii) to the service of a 
translation on a government department or other person is to 
its being sent by post or delivered to that department or 
person. 
(4) The provisions of section 12 shall apply -
(a) during the international phase of the application 
applies notwithstanding the application; IP/N/1/JAMI1I1 
Page 26 
(b) cease to apply after the end of the international 
phase. 
(5) When the national phase begins, the Registrar 
shall refer the application for so much of the examination 
and search under sections 23, and 24 as the Registrar 
considers appropriate in view of the examination or search 
carried out under the Treaty. 
Provisions as to Applications 
Withdrawal of 20. -(1) An application which has a filing date by 
application. virtue of section 10(1) shall be taken to be withdrawn at 
the end of the period prescribed unless before that time the 
applicant -
(a) files at the Office -
(i) one or more claims for the purposes of the 
application; and 
(ii) the abstracti 
(b) makes a request for a preliminary examination and 
search under the Act; and 
(c) pays the prescribed search fee. 
(2) An applicant may file a request for the 
withdrawal of a patent application within [sixteen months] 
from the date of filing or the date of earliest priority, as 
the case may require. 
(3) Notice of withdrawal or abandonment of a patent 
application shall be published in the Gazette.] 
A patent application which is withdrawn or abandoned shall 
be published in the Gazette.] 
(4) Withdrawal of an earlier application that has 
not produced any effect shall cause priority to go to the 
earliest subsequent application.] Amendment of 
application. 
Publication 
of appli-
cation. IPINI1 IJAM/I/l 
Page 27 
21. -(1) At any time before a patent is granted pursuant 
to an application under this Act l the applicant may amend 
the application in accordance with the prescribed condi-
tions. 
(2) The Registrar may, on his own initiative, amend 
the specification and abstract contained in a patent 
application so as to acknowledge a registered trade mark. 
22. -(1) Where an application has a filing date then, as 
soon as possible after the end of the prescribed period, 
the Registrar -
(a) shall, unless the application is withdrawn or 
refused before the preparations for its publication 
have been completed by the Office, publish it as 
filed (including the original claims and any 
amendments thereto, and new claims substituting 
immediately before the completion of those 
preparations) and; 
(b) may, at the request of the applicant publish the 
application during the prescribed period, 
and in either event shall advertise the fact and the date of 
its publication in the Gazette. 
(2) The Registrar may omit from the specification 
of a published patent application any matter -
(a) which, in the Registrar's opinion, disparages any 
person in a way likely to damage such person; 
(b) the publication or exploitation of which would, in 
the Registrar's opinion, encourage offensive, 
immoral or anti-social behaviour.] !P/NIl /JAM/!/l 
Page 28 
Preliminary 
examination 
and search. 
Substantive 
examination. Examination and Search 
23. -(1) Where an application has a filing date and is 
not withdrawn under any of the foregoing provisions of this 
Act the applicant may, within the prescribed time, in the 
prescribed manner, make a request to the Registrar for a 
formalities examination. 
(2) For the purpose of the formalities examination, 
the Registrar shall determine whether the application is in 
[formal] compliance with the requirements of sections 9(2) f 
(3) and (4) and 13 and of any regulations relating thereto. 
Substantive Examination 
24. -(1) Where the Registrar is satisfied that the 
requirements specified in section 23(2) have been 
complied with, he shall determine whether the application 
complies with the requirements of sections 3 to 7, and 9 and 
12 of any regulations relating thereto. 
(2) For the purposes of making a determination under 
subsection (1) the Registrar -
(a) if he thinks fit may, after prior notification to 
the applicant and payment by the applicant of the 
prescribed fee transmit the application to an 
authority duly authorized by the Minister to carry 
out a search and examination required under section 
23 and this section [and references to 'examiner' 
under this Act mean an examiner under any such 
authority] ; 
(b) shall take into account -
(i) the report of any such search and 
examination; Page 29 
(ii) the results of any international search 
report and any international preliminary 
examination report under the Patent Co­
operation Treaty carried out in relation 
to the applicationj 
(iii) the results of any search or examination 
referred to in section 13(2) (a) and any 
decision referred to in section 13 (2) (d) 
(3) If the fee is not paid within the prescribed 
period, the application shall be taken to be withdrawn at 
the end of that period. 
(4) The examiner shall determine whether or not 
the search would serve any useful purpose in relation to the 
application as constituted, for the time being, and where he 
determines that -
(a) the search would serve a useful purpose, whether as 
regards the whole or any part of the application, he 
shall proceed to conduct the search and shall report 
thereon to the Registrar; 
(b) no useful purpose would be served by conducting the 
search, he shall report thereon to the Registrar 
accordingly. 
(5) In conducting the search the examiner shall 
make such investigations as he considers practicable and 
necessary to identify the documents which he thinks will 
be needed to decide, on a substantive examination of the 
application hereunder, whether the invention for which 
the patent is sought is new and involves an inventive 
step. IP/N/J/JAM/II1 
Page 30 
Grant of 
patent. (6) Where the examiner forms the opinion r whether 
before or during the preliminary search, that an 
application relates to two or more inventions which are 
not so linked as to form a single inventive conceptr he 
shall initially conduct a search in relation only to the 
first invention specified in the claim to the applica-
tionr so, however, that he may proceed to conduct a 
search in relation to another invention specified in the 
application if the applicant pays the search fee in 
respect of that other invention. 
(7) Where the Registrar refuses an application 
under this section, he shall, by notice in writing 
inform the applicant of the decision and the reasons 
therefor. 
25. -(1) Where the Registrar is satisfied that the 
application complies with requirements of sections 23(2) and 
25(1) he shall grant a patent for the invention in respect 
of which the application was made. 
(2) Where the Registrar is not so satisfied, he shall 
refuse the application and within ] days of that 
decision, notify the applicant accordingly. 
(3) A patent granted under subsection (1) shall be in 
the prescribed form and shall be sealed with the seal of the 
Office. 
(4) Where two or more applications for a patent for 
the same invention having the same priority date are filed 
by the same application or his successor in title, the 
Registrar may on that ground, refuse to grant a patent in 
pursuance of more than one of the applications. Duration. 
Postponement 
of grant. shall -IP/N/l/JAM/III 
Page 31 
(5) Upon the grant of a patent the Registrar 
(a) make an entry of the patent in the Register, 
including the date on which the patent is sealed 
pursuant to subsection (2) i 
(b) issue the patent to the applicant; 
(c) published in the Gazette a reference to the grant of 
the patent; 
(d) make copies of the patent available to the public, 
on payment of the prescribed fee. 
(6) The patent shall contain -
(a) a certificate to the effect that the requirements of 
this Act and rules for the grant of a patent have 
been complied with; and 
(b) such other information as may be prescribed. 
26. -(1) The term of a patent shall be twenty years from 
the filing date 
(2) A patent shall cease to have effect at the end 
of the period prescribed for the payment of any renewal fee 
if it is not paid within the prescribed time. 
27. -(1) At the request of the applicant, the grant of 
a patent may be postponed for a maximum of six months from 
the date of the communication indicating that the 
examination procedure has been completed. 
(2) Where the Minister certifies that the public 
interest requires that the invention be kept secret, the 
Registrar may allow an extension of the time for grant 
beyond six months, subject to such conditions and procedu.res 
as may be specified,. I PIN 11 / JAM/IJ1 
Page 32 
l-.mendment of Provisions as to Patents After Grant 
28. -(1) Subject to the following provisions of this 
specification section the Registrar may, on an application made by 
after grant. the patentee, allow the specification of the patent to be 
Nature of 
rights. 
Exclusive 
rights. amended subject to such conditions, if any, as the Registrar 
thinks fit. 
(2) The Registrar shall not allow amendments under 
subsection (1) where proceedings are pending before the 
Registrar or the Court in which the validity of the patent 
may be put in issue. 
(3) An amendment of a specification of a patent under 
this section shall have effect and be deemed always to have 
had effect from the grant of the patent. 
(4) Without an application being made to the 
Registrar, the Registrar may, amend the specification of a 
patent so as to acknowledge a registered trade mark. 
(5) A person may give notice to the Registrar of his 
opposition to an application under this section by the 
patentee, and if he does so, the Registrar shall notify the 
owner and consider the opposition in deciding whether to 
grant the application. 
PART IV. PROPERTY RIGHTS AND O~mRSHIP 
29. A patent or application for a patent is personal 
property and the rights in a patent and in any application 
for a patent may be transferred, created or granted in 
accordance with the provisions of this Act. 
30. Subject to the provisions of [this Act], a patent 
gives the patentee the exclusive rights, during the term of 
the patent to exploit the invention and to authorize another 
person to exploit the invention. J PiN/] /ll\ M/lil 
Page 33 
Ownership 
Persons to 31 -(1) A patent for an invention may be granted only 
whom may to a person who -
be granted. (a) is the inventor; 
(b) would, on the grant of the patent for the invention 
be entitled to have the patent assigned to him; 
(c) derives title to the invention from the inventor or 
a person mentioned in paragraph (b); 
(d) is the legal representative or a person referred to 
in paragraph (a), (b) or (c). 
(2) A patent may be granted to a person whether or 
not he is a Jamaica national. 
Co-ownership. 32 -(1) Subject to any agreement to the contrary, whether 
there are two or more patentees -
(a) each of them is entitled to an equal undivided share 
in the patent; and 
(b) each of them is entitled by himself or by his agent 
to exercise the exclusive rights given by the patent 
for his own benefit without obtaining the consent of 
or accounting to the others; and 
(c) none of them may grant licence under the patent or 
assign an interest in it, without the consent of the 
other or others. 
(2) Where a patented product or a product of a 
patented method or process is sold by any of two or more 
patentees, the buyer, and a person claiming through the 
buyer, may deal with the product as if it had been sold by 
all the patentees. 
(3) This section does not affect the rights or 
obligations of a trustee or a legal representative of a 
deceased person or rights or obligations arising out of 
either of those relationships. IPlN/I/JAMlI!l 
Page 34 
Directions to 33 -(1) Where there are two or more patentees the 
Co-owners. Commissioner may, on the application of any of them, give 
directions in accordance with the applications as the 
Commissioner thinks fit, being directions concerning -
(a) a dealing with the patent or an interest in it; 
(b) the grant of licences under the patent; or 
(cl the exercise of a right under section 32 in relation 
to the patent. 
(2) If a patentee fails to do anything necessary to 
carry out a direction under subsection (1) within twenty­
eight days after being asked in writing to do so by one of 
the other patentees, the Registrar may, on the application 
of one of those other patentees, direct a person to do it in 
the name and on behalf of the defaulting patentee. 
(3) Before giving a direction, the Registrar shall 
give an opportunity to be heard -
(a) in the case of an application by a patentee or 
patentees under subsection (1) f to the other 
patentee or patentees; and 
(b) in the case of an application under subsection (2) I 
to the defaulting patentee. 
(4) The Registrar shall not give a direction that -
(a) affects the rights or obligations of a trustee or of 
the legal representative of a deceased person, or 
rights and obligations arising out of either of 
those relationships; or 
(b) is inconsistent with the terms or an agreement 
between the patentees. 
Inventions by 34 -(1) Notwithstanding anything in any rule of law, an 
employees. invention made by an employee shall to be taken to belong to 
the employer if -Page 35 
(a) it was made in the course of the normal duties of 
the employee or in the course of duties falling 
outside his normal duties, but specifically assigned 
to him and in either case, the circumstances were 
such that an invention might reasonably be expected 
to result from the carrying out of his dutiesj or 
(b) 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 
the particular responsibilities arising from the 
nature of his duties, he had a special obligation to 
further the interests of the employer's undertaking. 
(2) Any invention made by an employee in circum­
stances not specified in subsection (2) shall be taken to 
belong to the employee. 
(3) Where by virtue of subsection (2) an invention 
belongs to an employee, nothing done -
(a) by or on behalf of the employee or any person 
claiming under him for the purposes of pursuing an 
application for a patent; or 
(b) by any person for the purpose of performing or 
working the invention, 
shall be taken to infringe any copyright or design right in 
any model or document relating to the invention to which the 
employer is entitled. 
Compensation 35 -(1) Subject to subsection (3) where it appears to 
of employees. the Court or the Registrar on an application made by an 
employee within the prescribed period that -
(a) the employee had made an invention which by virtue 
of section 34 belongs to the employer for which a 
patent has been granted; IPIN!l/JAM/f/l 
Page 36 
(b) having regard among other things to the size and 
nature of the employer's undertaking, the patent is 
of outstanding benefit to the employeri and 
(c) by reason of that fact, it is just that the employee 
should be awarded compensation to be paid by the 
employer, 
the Court or the Registrar, as the case may be, may award 
the employee such compensation of an amount determined under 
section 36. 
(2) Subject to subsection (4), on an application 
made by an employee within the prescribed period the Court 
or the Registrar may award compensation in accordance with 
section 36 to that employee if satisfied that the matters 
referred to in subsection (3) apply to that employee. 
(3) The matters mentioned in subsection (2) are that -
(a) a patent has been granted from an invention made by 
and belonging to the employee; 
(b) the rights of the employee in the invention, or in 
any patent or application for a patent for the 
invention have, [since the appointed day] been 
assigned to the employer or an exclusive licence 
under the patent or application, has [since the 
appointed day] been granted to the employeri 
(c) the benefit derived by the employee from the 
contract of assignment or grant or any ancillary 
contract (referred to in this section as the 
"relevant contract") is inadequate in relation to 
the benefit derived by the employer from the patenti 
and Page 37 
(d) by reason of the matters outlined in paragraphs (a), 
(b) and (c) it is just that the employee should be 
awarded compensation to be paid by the employer in 
addition to the benefit derived from the relevant 
contract. 
(4) Subsections (1) and (2) shall not apply to the 
invention of an employee where a relevant collective 
agreement provides for the payment of compensation in 
respect of inventions of the same description as that 
invention to employees of the same description as that 
employee. 
(5) Subsection (2) shall have effect notwithstanding 
anything in the relevant contract or any agreement 
applicable to the invention (other than any such agreement) . 
(6) The Registrar may decline to deal with an 
application made under this section if it appears to the 
Registrar that it involves matters which would more properly 
be determined by the Court. 
(6) References in this section to an invention 
belonging to an employer or employee are references to it so 
belonging as between the employer and the employee. 
(7) In this section -
"the prescribed period" in relation to proceedings before 
the Court, means the period prescribed by rules of 
court; and 
"relevant collective agreement" means a collective 
agreement within the meaning of the Labour and 
Industrial Relations Act made by or on behalf of a 
trade union to which the employee belongs and by the 
employer or an employer's association to which the 
employer belongs/ which is in force at the time of 
the making of the invention. Page 38 
Amount of 36. -(1) The award of compensation to an employee under 
compensation. section 35(1) and (2) shall be such as will secure to the 
employee a fair share of benefit which the employer has 
derived or may reasonably be expected to derive from the 
patent of from the assignment or grant to a person connected 
with the employer of the property or any right in the 
invention or in property in an the application for the 
patent. 
(2) For the purposes of subsection (1), the amount of 
any benefit derived or expected to be derived by an employer 
from the assignment or grant to a person connected with him, 
of the property in or any right in either a patent for an 
invention, an application for such a patent, or the 
invention itself, shall be taken to be the amount which 
could reasonably be expected to be so derived by the 
employer if that person had not been connected with the 
employer. 
(3) Where the Crown or a prescribed research 
organization in its capacity as employer aS,signs or grants 
the property or right in an invention or application for a 
patent-
(a) to a body whose functions consist of developing or 
exploiting inventions resulting from the public 
researchi and 
(b) does so for no consideration or only a nominal 
consideration, 
any benefit derived from the invention, patent or 
application by that body shall be treated for the purposes 
of subsections (1) and (2) as so derived by the Crown or j as 
the case may be, the prescribed research organization. Page 39 
(4) In determining the fair share of the benefit to be 
secured for an employee in respect of a patent for an 
invention which has always belonged to the employer or which 
originally belonged to the employee, the court or the 
Registrar shall take account of such matters as may be 
prescribed. 
(5) An order for compensation under section 36 may 
provide for the payment of a lump sum or for periodical 
payments, or both. 
(6) The refusal of the Court or the Registrar to make 
an order on an application made by an employee under section 
36 shall not prevent a further application being made under 
that section by the employee or any of his successor in 
title of his. 
Enforce- 37. -(I) This section applies to any contract (whenever 
ability of made) relating to inventions made by an employee{ being a 
contracts re-contract entered into by him -
employee's 
inventions. (a) with the employer, alone or with another; or 
(b) with some other person at the request of the 
employer or in, pursuance of the employee's contract 
of employment. 
(2) Any term in a contract to which this section 
applies which diminishes the employee'S rights -[P/N/lIJAMf[/l 
Page 40 
Supple-
mentary. (a) in inventions of any description made by the 
employee at any time which is after the appointed 
day and the date of the contract; or 
(b) in patents for those inventions or applications for 
such inventions, 
shall be unenforceable against the employee to the extent 
that it diminishes the employee's rights in an invention of 
that description so made? or in a patent for such invention 
or an application for any such patent. 
(3) Subsection (2) shall not be construed as 
derogating from any duty of confidentiality owed by an 
employee to an employer by virtue of any rule of law or 
otherwise. 
(4) This section applies to any arrangement made with 
a public officer by or on behalf of the [Crown] as his 
employer as it applies to any contract made between an 
employee and an employer [other than for the purpose of this 
section] . 
38. -(1) Sections 34 [to 37] shall not apply to -
(a) an invention made before the appointed daYi or 
(b) an invention made by an employee unless at the time 
it was made -
(i) the employee was mainly employed in 
Jamaica; or 
(ii) he was not mainly employed anywhere; or 
(iii) his place of employment could not be 
determined, but his employer has a place 
of business in Jamaica to which the 
employee was attached, whether or not he 
was also attached elsewhere. IP!N/1/JAM/IIl 
Page 41 
(3) In sections 34 to 37 and this section, except so 
far as the context otherwise requires, references to the 
making of an invention by an employee are references to his 
making it alone or jointly with any other person, but do not 
include references to the mere contributing of advice or 
assistance by the employee in the making of an invention by 
another employee. 
(4) Any references in sections 34 to 37 to a patent 
and to a patent being granted are, respectivelYI references 
to a patent and to other protection and to its being granted 
whether under the law of Jamaica or the law in force in any 
other country or under any treaty or international 
convention. 
(5) For the purposes of sections 34 and 37, the 
benefit derived or expected to be derived by an employer 
from a patent shall, where he dies before any award is made 
under section 35 in respect of the patent, include any 
benefit derived or expected to be derived from the patent, 
by the employee's personal representatives or by any person 
in whom it was vested by their assent. 
(6) Where an employee dies before an award is made 
under section 33 in respect of a patented invention made by 
the employee, the personal representatives of the employee 
or their successors in title may exercise the right of the 
employee to make or proceed with an application for 
compensation under subsection (1) or (2) of that section. 
(7) In sections 35 and 36 and this section "benefit" 
means benefit in money or money1s worth. 
(8) The definition of "connected person" in the 
Income Tax Act shall apply for determining for the purposes 
of section 33 whether one person is connected with another 
as it applies for determining that question for the purposes 
of that Act.] fP/N/1 
Page 42 
Grant of 
licence. 
Offer to 
license. PART V. MODIFICATION OF RIGHTS 
Voluntary Licences 
39. -(1) The applicant for or the owner of a patent may 
grant a licence to work the invention to which the 
application or the patent relates. 
(2) If, and to the extent that a licence allows, a 
sub-licence may be granted under it. 
(3) A licence and the sub-licence may be assigned or 
mortgaged and shall vest by operation of law in the same way 
as any other personal property, and may be vested by an 
assent of personal representatives. 
(4) A licence has effect with regard to third parties 
only if it is registered under section [82J I but need not be 
recorded for the purposes of proving use. 
(5) Where an improvement is made to a licensed patent 
the licensee shall be afforded a preferential right to a 
licence in respect of the improvement.] 
Licences or Right 
40. -(1) Subject to subsection (2) I the Registrar may, 
on application made by a patentee at any time after the 
sealing of a patent, endorse the patent with the words 
"licences of right". 
(2) On receipt of an application under subsection 
(1), the Registrar shall -
(a) give notice to the application to any person entered 
on the Register as entitled to an interest in the 
patent; 
(b) give him an opportunity within a specified time to 
be heard on the matter; and 
(c) if satisfied that the patentee is not precluded by 
contract from granting licences under the patent, IP/N/] 
[and that any of the grounds specified in section 
45(1) apply] cause the patent to be endorsed 
accordingly. 
(3) Where a patent is endorsed under this section -Page 43 
(a) any person shall, after the date of the endorsement, 
be entitled as of rights to a licence under the 
patent upon such terms as may be agreed between the 
patentee and the person seeking the licence, or in 
default of agreement, as may be determined by the 
Registrar on application by either of them; 
(b) where a licence was granted under the patent before 
the endorsement, the Registrar may, on the 
application of the holder of the licence, order that 
the licence be exchange for a licence to be granted 
by virtue of the endorsement on terms to be 
determined by the Registrar. 
(4) Every endorsement of patents under this section 
shall be entered in the Register and shall be published in 
the Gazette and in such other manner as the Registrar thinks 
desirable for bringing the endorsement tot he notice of 
manufacturers. 
(5) The amount determined as payable under this 
section in respect of a licence may be reviewed one year 
after the determination.] 
(6) The patentee may withdraw an offer any time prior 
to express acceptance of the terms of the offer by an 
interested party! in which event, the provisions of sectior. 
42 shall not apply.] IP/N/I/JAM/V1 
Page 44 
Agreement by 
defendant to 41. If in proceedings for infringement of the patent 
endorsed under section 40 (otherwise than by the importation 
take licence. of goods) the defendant agrees to take a licence on terms to 
Reduction of be determined by the Registrar, no injunction shall be 
granted against him, and the amount (if any) recoverable 
against him by way of damages shall not exceed double the 
amount which would have been payable by him as licensee if 
such licence had been granted before the earliest 
infringement. 
42. The renewal fees payable in respect of a patent after 
renewal fees. the date of endorsement under section 40 shall be [one-half] 
of the renewal fees which would be payable if the patent 
were not so endorsed. 
Request for 43. The patentee may request cancellation of a licence if a 
Cancellation. licensee-
(a) does not begin [effective exploitation] within one 
year of the grant of the licence; 
(b) interrupts the working of the paten~ for a period of 
more than one year; or 
(c) fails to comply with the conditions of exploitation. 
Non-Voluntary Licences 
Application 44. At any time after the expiration of three years from 
for grant of the date of sealing of a patent or four years from the date 
non-voluntary of the patent, whichever is the later, any person may apply 
licence. to the Registrar for the grant of a licence under the patent 
on one or more of the following grounds, that is to say -
(a) where the patented invention is capable of being 
commercially worked in Jamaica, that it is not being 
so worked or is not being so worked to the fullest 
extent that is reasonably practicablei lP/Nil /JAM/lII 
Page 45 
(b) where the patented invention is a product, that the 
demand for the product in Jamaica is not being met 
or not being met on reasonable terms or is being met 
to a substantial extent by importation; 
(c) where the patented invention is capable of being 
worked commercially in Jamaica, that it is being 
prevented or hindered from being so worked -
(i) in the case of a product, by the 
importation of the product; 
( ii) in the case of a process, by the 
importation of a product obtained directly 
by means of the process or to which the 
process has been applied; 
(d) that by reason of the refusal of the owner of the 
patent to grant a licence or licences on reasonable 
terms -
(i) a market for the export of a patented 
product made in Jamaica is not being 
supplied; or 
(ii) the working or efficient working in 
Jamaica of any other patented invention 
which makes a substantial contribution to 
the art is being prevented or hinderedi or 
(iii) the establishment or development of 
commercial or industrial activities in 
Jamaica is being unfairly prejudicedi 
(e) that by reason of conditions imposed by the owner of 
the patent on -
(i) the grant of licences under the patent; 
(ii) the disposal or use of the patented 
product; or IPINIl 
Page 46 
Guiding 
principles 
etc.! in 
considering 
applications. (iii) the use of the patented process, 
the manufacture, use or disposal of materials or development 
of commercial or industrial activities in Jamaica is being 
unfairly prejudiced. 
45. -(1) In making a determination in relation to an 
application under section 44, the Registrar shall be 
guided by the following principles -
(a) inventions that can be worked on a commercial 
scale in Jamaica and should, in the public interest 
be so worked, should be worked without undue delay 
and to the fullest extent that is reasonably 
practicable; 
(b) the inventor or other person beneficially entitled 
to a patent should receive reasonable remuneration, 
having regard to the nature of the inventioni 
(c) that the interests of any person for the time being 
working or developing an invention in Jamaica under 
the protection of a patent should not be unfairly 
prejudiced. 
(2) Without prejudice to subsection (1) and subject 
to subsection (3) f in determining whether to make an order 
[or entry] in pursuance of such an application, the 
Registrar shall take account of the following matters -
(a) the nature of the invention, the time which has 
elapsed since the publication in the Gazette of a 
notice of the grant of the patent and the measures 
already taken by the owner of the patent or any 
licensee to make full use of the invention; 
(b) the ability of any person to whom a licence would be 
granted under the order concerned to work the 
invention to the public advantage; and Order to 
grant 
licence. lPINI1IJAM/l/l 
Page 47 
(c) the risks to be undertaken by that person in 
providing capital and in working the invention if 
the application for an order is granted. 
(3) The Registrar is not required to take account of 
matters which arise subsequent to the making of the 
application. 
46. -(1) Subject to the following provisions of this 
section, on being satisfied in relation to an application 
under section 44 that any ground specified in that section 
is established, the Registrar [may] [shall] grant the 
licence to the applicant on such terms as the Registrar 
thinks fit. 
(2) Where the application is made on the ground 
specified in section 44(a) and it appears to the Registrar 
that the time which has lapsed since the publication in the 
Gazette of a notice of the grant of the patent has for nay 
reason been insufficient to enable the invention to be so 
worked, the Registrar may by order adjourn the application 
for such period as will, in his opinion give sufficient time 
for the invention to be so worked. 
(3) No order shall be made under this section in 
respect of a patent (the patent concerned) on the ground 
mentioned in section 44 (d) (ii) I unless the Registrar is 
satisfied that the owner of the patent for the other 
inventions (the other patent) is able and willing to grant a 
licence under the other patent on reasonable terms to the 
owner of the patent concerned and his licensees. IP/N/1/JAM/lll 
Page 48 
(4) An application may be made under section 44 in 
respect of a patent notwithstanding that the applicant is 
already the holder of a licence under the patenti and no 
person shall be estopped or barred from alleging any of the 
matters specified in that section by reason of any admission 
made by him, whether in such a licence or otherwise, or by 
reason of his having accepted such a licence. 
Supplementary 47. -(1) Where on an application made under section 44 in 
provisions 
as to 
licences. 
Effect of 
reports on 
monopoly and 
competition 
issues. relation to a patent the Registrar is satisfied that the 
manufacture, use or disposal of materials not protected by 
the patent is unfairly prejudiced by reason of conditions 
imposed by the owner on -
(a) the grant of licences under the patent; 
(b) the disposal or use of the patented product; or 
(c) the use of the patented process, 
the Registrar may, subject to the provisions of that 
section, order the grant of licences under the patent to the 
applicant and such of the applicant's customers as the 
Registrar thinks fit. 
(2) Where an application is made under section 44 by a 
person who holds a licence under a patent, the Registrar may 
cancel the existing licence and grant a new licence or may 
amend an existing licence. 
48. -(1) Where a report has been laid before Parliament 
by the Securities Commission containing the conclusions to 
the effect that on a merger reference, a merger situation 
requiring an investigation has been created of the situation 
or particular elements in the situation or consequences of 
it specified in the report may operate or may be expected to 
operate against the public interest, the Minister 
responsible for securities may, subject to subsection (3), 
apply to the Registrar to take action under this section. IPlN/l/JAM/J/l 
Page 49 
(2) Where a report has been laid before Parliament by 
the Fair Trading Commission on a [monopoly reference, a 
competition reference or a] reference under the Fair Trading 
Act, that a person is pursuing a course of conduct [is in 
contravention of that Act] which [operates against the 
public interest] f the Minster responsible for commerce may, 
subject to subsection (3) I apply to the Registrar to take 
action under this section.] 
(3) Before making an application under subsection (1) 
or (2), the Minister shall -
(a) publish in such manner as the Minister thinks 
appropriate, a notice describing the nature 
of the proposed application; and 
(b) consider any representations which may be made 
within 30 days of such publication by persons whose 
interests appear to him to be affected. 
(4) If on an application under this section it appears 
to the Registrar that the matters specified in the report 
under subsection (1) or (2) as being those which in the 
opinion of the relevant Commission operate or operated or 
may be expected to operate against the public interest 
include -
(a) conditions in licences granted under a patent by its 
owner restricting the use of the invention by the 
licensee or the right of the owner to grant other 
licencesi or 
(b) refusal by the owner of a patent to grant licences 
on reasonable terms, 
the Registrar may by order cancel or modify any such 
conditions or may, instead or in addition, make an entry in 
the register to the effects that licences under the patent 
are to be available as of right. lP/NI j /JAMIfIl 
Page 50 
[Opposition. Opposition, Appeal and Arbitration Respecting Licences 
49. -(1) The owner of the patent concerned or any other 
person wishing to oppose an application under section 44 
may, in accordance with rules made under this Act, give to 
the Registrar notice of opposition; and the Registrar shall 
consider the opposition in deciding whether to grant the 
application. 
(2) Where an appeal is brought from a -
(a) an order made by the Registrar in pursuance of an 
application under section 44i 
(b) from a decision of the Registrar to make an entry in 
the Register in pursuance of such an applicationi 
(c) or from a refusal of the Registrar to make such an 
order or entry, 
the Attorney General shall be entitled to appear and be 
heard. 
(3) Where an application is opposed under 
subsection (1) and -
(a) the parties consent; or 
(b) the proceedings require a prolonged examination of 
documents or any scientific or local investigation 
which cannot, in the opinion of the Registrar, be 
conveniently made before the Registrar, 
the Registrar may at any time order the whole proceedings! 
or any question or issue of fact arising in them to be 
referred to an arbitrator agreed on by the parties or in 
default of agreement, appointed by the Registrar. 
(4) Where the whole proceedings are referred pursuant 
to subsection (3) -
(a) section [ of the Arbitration Act statement of 
cases by arbitrators) shall not apply to the 
arbitration unless the parties otherwise agree 
before the award of the arbitrator is made; lP/NJI 
Page 51 
(b) an appeal shall lie from the award to the Court. 
(5) Where a question or issue of fact is so referred! 
the arbitrator shall report his findings to the Registrar.] 
Supplementary 50. -(1) In any proceedings on an application made under 
provisions 
as to 
licences. 
[Special 
provisions 
re-patented 
inventions 
worked in a 
relevant 
country. section 44 in respect of a patent, any statement with 
respect to -
(a) any activity to the patented invention; or 
(a) the grant or refusal of licences under the patent, 
contained in a report [of the Securities Commission laid 
before Parliament under the Securities Act or a report] of 
the Fair Trading Commission under the Fair Trading 
Commission Act shall be prima facie evidence of the matters 
stated. 
(2) The Registrar may make an entry in the Register 
under section 40(4) notwithstanding any contract which would 
have precluded the entry on the application of the owner of 
the patent under subsection (2) of that section.] 
(3) No order or entry shall be made in pursuant to an 
application under section 45 which would be at variance with 
any treaty or international convention to which Jamaica is a 
party. 
51. -(1) The Minister may be order provide that the 
Registrar may not (otherwise than for the public interest) 
make an order or entry in respect of a patent in pursuant 
to an application under section 44 if the invention 
concerned is being commercially worked in any relevant 
country to which the order relates and the demand in Jamaica 
for any patented product resulting from that working is 
being met by importation from that country. IP/N/1/JAM/II1 
Page 52 
Use of 
invention in 
service of 
Crown. (2) In subsection (1) "relevant country" means a 
country whose law in the opinion of the Minster, makes 
provision or will make provision for treating the working of 
an invention in and importation from Jamaica in a similar 
way to which the order would (if made under section (1)) 
treat the working of an invention in and importation from, 
the country. 
Use of Patented Invention by Crown 
52. -(1) Subject to subsection (5) and to sections 53 
and 56, and to the rules, but notwithstanding any other 
provision of this Act, any Government department or agency 
or any person authorized in writing by a Government 
department or agency (hereinafter referred to as an 
authorized person) may exploit for the services of the 
Crown, any invention -
(a) for which an application for a patent has been made 
under this Act; or 
(b) which is a patented invention, 
and anything done by virtue of this subsection shall not 
amount to an infringement of the patent concerned or the 
application for the patent. 
(2) For the purposes of this section and section 55 -
(a) any use of an invention for the supply to the 
Government of any country outside of Jamaica of 
articles required for the defence of that country, 
shall be deemed to be a use of the invention for the 
services of the Crown; 
(b) the power of a government department or agency or an 
authorized person [under this section] to sell a 
patented invention shall not, in the case of a 
patent relating to an integrated circuit, extend to 
sale of invention to the public. lP/Nil 
Page 53 
(3) Where the Minister by order, [subj ect to 
negative resolution] makes a declaration in accordance with 
subsection (4) in relation to the use of any invention, such 
use shall for the purposes of this section and sections 54 
and 55 be deemed to be a use for the services of the Crown. 
(4) A declaration referred to in subsection (3) 
shall state the use of any invention by any person or any 
class of persons engaged in a particular industry is 
necessary or desirable to enable full benefit to be derived 
by the members of the public in Jamaica of any enterprise or 
undertaking in which the Government has a complete or almost 
complete monopoly. 
(5) The right to use an invention conferred by this 
section -
(a) is not exclusive; 
(b) shall not be assigned otherwise than in connection 
with the goodwill of the business in which patented 
invention is used; and 
(c) is, notwithstanding subsection (2) (a), limited to 
the supply of the invention predominantly in Jamaica 
by a government department or agency or an 
authorized person authorized under this section. 
(5) The purchaser of any articles sold in the exercise 
of powers conferred by this section and any person claiming 
through the purchaser shall be entitled to deal with them in 
the same manner as if the patent were held on behalf of the 
Crown. lP/N/l/JAM/l/J 
Page 54 
Rights holder 53. As soon as practicable after an invention has been 
to be exploited under section 52(1), the Minister responsible for 
informed the department or agency which exploited the invention shall 
of use. inform the applicant or patentee of the exploitation and 
give him any information relating thereto as he may from 
time to time reasonably require, unless it appears to the 
Minister that it would be contrary to the public interest to 
do so. 
Rights of 54. (1 ) Subsection (2) shall apply in respect of any 
third patented invention or an invention in respect of which an 
parties in application is pending I that is used for the services of the 
respect of Crown in the manner specified in subsection (3). 
Crown. (2) In relation to an invention referred to in 
subsection (I), the provisions of any licence, assignment or 
agreement made, whether before or after the commencement of 
this Act, between the patentee or applicant for the patent 
or any person who derives title from whom he derives title 
and any person, other than a government department or 
agency, shall be of no effect to the extent that those 
provisions -
(a) restrict or regulate the use of the invention, or 
any model, document or information relating thereto; 
or 
(b) provide for the making of payments in respect of any 
such use, or calculated by reference thereto, 
and the reproduction or pUblication of any model or document 
connection with such use shall not be [deemed] to be an 
infringement of any copyright substituting in the model or 
document. Reference of 
department 
disputes re-
Crown use. IP/NIIIJAM/II1 
Page 55 
(3) For the purposes of this section an invention is 
used for the services of the Crown if it is used by -
(a) a Government department or agency or an authorized 
person; 
(b) a patentee or an applicant for a patent by order of 
a Government department or agency. 
55. -(1 ) Any dispute as to -
(a) the exercise by a government or agency or a person 
authorized by either of them of the powers conferred 
by section 53; or as 
(b) the terms for the use of an invention for the 
services of the Crown under that section, 
maybe referred to the Court by either party to the dispute 
in such manner as may be prescribed by rules of Court. 
(2) In any proceedings under this section to which a 
Government department or agency is a party, the department 
or agency may -
(a) if the patentee is a party to the proceedings, apply 
for revocation of the patent upon any ground which a 
patent may be revoked under section 61; 
(b) in any case, put in issue the validity of the patent 
without applying for its revocation. 
(3) In determining any dispute referred to it under 
this section, the Court shall have regard to -
(a) any benefit or compensation that the patentee may 
have received or may be entitled to receive, 
directly or indirectly from any Government 
department or agency or an authorized person in 
respect of the invention in question; and 
(b) the need to ensure that the patentee shall receive 
reasonable remuneration having regard to the nature 
of the patented invention. lP/Nil 
Page 56 
Patentee's (4) In any proceedings under this section, the 
Court may at any time order the whole proceedings or any 
question or issue of fact arising in the proceedings to De 
referred to a special or official referee or an arbitrat~rl 
on such terms as the Court may direct, and references to the 
Court in the foregoing provisions of this section shall De 
construed accordingly. 
56. -(1) Where an invention is exploited for the services 
right to of the Crown under section 49, the Government department or 
compensation. agency concerned shall pay -
(a) to the owner of the patent; or 
(b) if there is an exclusive licence in force in respect 
of the patent, to the exclusive licensee} 
such compensation as may agreed or determined by an agreed 
method or, in the absence of agreement, as may be deter~ined 
by a reference to the Court under section 52, on the 
application of either party. 
(2) For the purposes of subsection (1) 
(a) the terms or the method may be agreed before, d~ring 
or after the exploitation; 
(b) any amount payable by virtue of that subsection is 
in addition to any amount payable under section 49 
or 52. 
(3) When fixing the terms, the Court may take into 
account any compensation that a person having an interest in 
the invention or the patent has received directly or 
indirectly for the invention from the department or agency 
concerned. Cessation of 
use by order 
of Court. 
Acquisition 
of patent 
etc. I by 
Crown. JP/NI] 
Page 57 
(4) In this section the "Government department [or 
agency concerned" 'means, in relation to any use of the 
invention for the service of the Crown, the Government 
department or agency by whom or on whose authority the 
patent was exploited. 
57. -(1) The Court may, on the application of the 
patentee or other interested person declare that the 
exploitation of the invention by the Crown is not or is no 
longer necessary [for the proper provision of services} if 
the Court is satisfied that, in all circumstances of the 
case, it is fair and reasonable to make the declaration. 
(2) The Court may, also order that the Government 
department or agency concerned should cease to exploit the 
invention -
(a) on and after a date specified in the order; and 
(b) subject to any conditions specified in the order. 
(3) In making an order under this section, the Court 
shall ensure that the legitimate interests of the Crown are 
not adversely affected by the order. 
Acquisitions and Assignments 
58. -(1) The Minister may by order direct that a patent 
or invention that is the subject of a patent application be 
acquired by the Crown. 
(2) An order made under subsection (1) shall be 
subject to the negative resolution and shall contain such 
supplemental and ancillary matters as the Minister considers 
necessary or desirable to give full effect to its 
provisions. 
(3) When an order is made under subsection (1), all 
rights in respect of the patent or the invention are, by 
virtue of this subsection, transferred to and vested in the 
Crown. lP/Nil 
Page 58 
Assignment 
by inventor. 
Meaning of 
11 industrial 
designll • (4) Notice of the acquisition shall be given to the 
patentee or applicant and shall be published in the Gazette 
[unless! in the case of the acquisition of an invention that 
is the subject of an application for a patent or a 
prohibition order, or an order under section is in 
force in respect of the application] . 
(5) The Crown shall pay to [the patentee, applicant 
or, as the case may be, any person entitled to compensation 
in respect of the acquisition], such compensation as is 
agreed between the Crown and that person or, in the absence 
of agreement, as is determined by the Court on an 
application made by either of them. 
59. -(1) An inventor or the successor in title of an 
inventor may assign the invention and any patent granted or 
to be granted for the invention. 
(2) The assignment and all covenants and agreements in 
the assignment are valid and effectual, even if valuab18 
consideration has not been given for the assignment, and may 
be enforced by proceedings in the name of the Minister. 
PART VI. INDUSTRIAL DESIGNS 
60. For the purposes of this Act, an industrial design 
is any composition of lines and colours or any three-
dimensional form, whether or not associated with lines or 
colours, which -
(a) gives a special appearance to a product of industry 
or handicraft and can serve as a pattern for a 
product; 
(b) does not serve solely to obtain a technical or 
functional result and leaves no freedom as regards 
arbitrary features of appearance. Registrable 
industrial 
design. 
Who may 
apply. lP/Nil 
Page 59 
61. -(1) An industrial design is registrable if it is 
original and not contrary to public order or morality. 
(2) For the purposes of this Act, an industrial 
design is original if it is not commonplace in the design 
field in question at the [time of its creation] [filing date 
(where applicable) or the priority date of the application 
for registration] . 
(3) Account shall not be taken of a disclosure 
earlier than the applicable date referred to in subsection 
(2) if such disclosure did not occur earlier than [six] 
months immediately prior to such date and was due to or made 
in consequence of -
(a) the matter having been obtained unlawfully or in 
breach of confidence by any person from the inventor 
or from any other person to whom the matter was 
available in confidence by the inventor; 
(b) a breach of confidence by any person who obtained 
the matter in confidence from the inventor or from 
any other person to whom it was made available, or 
who obtained it, from the inventor; or 
(c) the inventor having displayed the invention at an 
international exhibition, and the applicant states, 
on filing the application, that the invention has 
been so displayed and files/ within the prescribed 
period, written evidence in support of the statement 
complying with any prescribed conditions. 
62. -(1) An application for the registration of and 
industrial design may be made by -
(a) any person claiming to be the creator of the 
industrial design; IP/N/1/JAMlIIl 
Page 60 
Application 
for regis-
tration of 
industrial 
design. (b) any person who is an assignee of the creator of the 
design, 
and in either case may be made by that person alone or 
jointly with any other person. 
(2) An application may be made under subsection (1) 
by the personal representative or the assignee of the 
personal representative of any deceased person who, 
immediately before his death, was entitled to make an 
application. 
63. -(1) An application for the registration of an 
industrial design shall be filed with the Registrar in 
accordance with this section and such procedures as to form 
and manner as may be prescribed. 
(2) Every application shall contain -
(a) a request for the registration of the design; 
(b) drawings, photographs or other adequate graphic 
representation of the article or articles embodying 
the design; 
(c) an indication of the kind of products for which the 
industrial design is to be used, 
and where the design is two dimensional or three-
dimensional, the application may be accompanied by a 
specimen of the article embodying the industrial design. 
(3) An application may also contain a request that 
upon registration, the publication of the industrial design 
be deferred for a period not exceeding twelve months from 
the date of filing, or, where priority is claimed, from the 
date of priority. 
(4) Two or more industrial designs which relate to 
the same class of the international classification or to the 
same set or composition of articles may be the subject of 
the same application. Withdrawal 
of applica­
tion for 
industrial 
design. 
Right of 
priority for 
industrial 
design. 
Filing 
date of 
industrial 
design. 
Examination 
of appli­
cation. Page 61 
64. A pending application may be withdrawn at any time 
before its is determined. 
65. -(1) The provisions of subsections (1), (2), (3) and 
(4) of section 11 (which relate to dates of priority) shall, 
subject to the modifications outlined in the other provi­
sions of this section, mutatis mutandis apply to applica-
tions under this Part. 
(2) Section 11(4) (a) shall apply to industrial 
designs as if the words "six months" were substituted for 
the words "twelve monthsH• 
66. -(1) Subject to the provisions of this section the 
filing date of an application for the registration of an 
industrial design shall be the [earliest] date on which an 
application is submitted to the Registrar containing -
(a) [documents] [an indication] identifying the 
applicant; 
(b) adequate graphic representation of the article [or 
articles] embodying the design. 
(2) If the Registrar is not satisfied that the 
conditions specified in subsection (1) have been fulfilled, 
the Registrar shall invite the applicant to make the 
necessary corrections within the prescribed period and if 
the corrections are not so made, the application shall be 
treated as I fit had not been filed. 
67. -(1) After assigning filing date the Registrar shall 
examine whether the application satisfies the requirements 
of sections 60, 61 and 63 and any related regulations. lP/Nil 
Page 62 
opposition 
to appli-
cation. (2) Where the Registrar is satisfied that the 
requirements referred to in subsection (1) have been 
fulfilled, he shall forthwith publish the application in the 
prescribed manner. 
68. -(1) Any interested person may, within the prescribed 
period and in the prescribed manner, give to the Registrar 
notice of opposition to the registration of the industrial 
design on grounds that -
(a) one or more of the requirements of sections [61] and 
[63] and regulations pertaining thereto are not 
fulfilled; or 
(b) the applicant does not have a right to the registra-
tion of the industrial design. 
(2) The Registrar shall forthwith send a copy of the 
notice to the applicant who shall, within the prescribed 
period and in the prescribed manner, send to the Registrar a 
counter-statement of the grounds on which he relies for his 
application; if he does not do so, he shall be deemed to 
have abandoned the application. 
(3) If the applicant sends a counter-statement, the 
Registrar shall furnish a copy thereof to the person giving 
notice of opposition and, after hearing the parties (, if 
either or both so desired) and considering the merits of the 
case, shall decide whether the industrial design should be 
registered. Duration of 
Registra­
tion; re­
newal fees. 
Meaning of 
"designer!! . Page 63 
(4) After an application is published and until the 
registration of the industrial design, the applicant has the 
same privileges and rights as he would have if the 
industrial design had been registered, so, however, that it 
shall be a valid defence to an action brought hereunder in 
respect of an act done after the publication of the 
application r if the defendant establishes that the 
industrial design could not validly have been registered at 
the time the act was done. 
(5) Where the Registrar finds that the conditions 
referred to in subsection (2) are fulfilled, and the 
registration of the industrial design -
Ca) has not been opposed within the prescribed time 
limit; or 
(b) has been opposed and the opposition has been decided 
in the applicant's favor, 
the Registrar shall register the industrial design, publish 
a reference to the registration and issue to the applicant a 
certificate of registration of the industrial design. 
69. -(1) Subject to the provisions of this Actl the 
initial registration of an industrial design shall be in 
force for a period of five years from the filling date. 
(2 ) The registration of an industrial design for a 
similar period may, upon payment of the prescribed fee 
within the prescribed time, be renewed on two consecutive 
occasions. 
70. -(1) In this Part the '~designer" f in relation to a 
design, means the person who creates it. 
(2) In the case of a computer-generated design the 
person by whom the arrangements necessary for the creation 
of the design are undertaken shall be taken to be the 
designer. [P/NII 
Page 64 
Ownership of 
design 
right. 
Rights con-
ferred by 
registra-
tion of in-
dustrial 
design. 71. -(1) The designer is the first owner of-any design 
right in a design which is not created in pursuance of a 
commission or in the course of employment. 
(2) Where a design is created in pursuance of a 
commission, the person commissioning the design is the first 
owner of any design right in it. 
(3) Where, in a case not falling within subsection 
(2) a design is created by an employee in the course of his 
employment, his employer is the first owner of any design 
right in the design. 
72. -(1) Subject to the provisions of J, the 
registration of an industrial design gives the owner the 
exclusive right during the term of such registration to 
exploit and to authorize the exploitation of the registered 
industrial design. 
(2) The registered owner of an industrial design 
may, subject to the provision of subsection (3), bring 
proceedings in respect of any act done without his consent 
which constitutes the exploitation of the design or which 
makes it likely that such exploitation will occur, and 
without affecting any other jurisdiction of the Court, may 
make the same claims mutatis mutandis as those applicable 
under section [78] in relation to an infringement of patent. 
(3) The rights conferred by the registration of an 
industrial design shall not extend to an act in respect of 
an article which has been put on the market [any where in 
the world] by the owner of the registered industrial design 
or with his consent. 
(4) In this Act "exploitationtl in relation to a 
registered industrial design means the making, selling, or 
importation of articles incorporating the design. Revocation 
of registra-
tion of 
design. 
Grounds for 
revocation 
by Court. lPiN/lIJAM/TIl 
Page 65 
73. -(1) Subject to the provisions of this Act, the 
registration for an industrial design may, on the applica-
tion of any interested person be revoked by the court on the 
ground that -
(a) the requirements of section 61 [and 63J have not 
been met; or 
(c) the registered owner is neither the creator of the 
industrial design nor the successor-in-title of the 
creator. 
PART VI -REVOCATION AND SURRENDER OF PATENTS 
Revocation 
74. -(1) Subject to the provisions of this Act, a patent 
may, on the application of any person interested, be revoked 
by the Court on any of the following grounds -
(a) the invention, so far as claimed in any claim of the 
specification, was claimed in a valid claim having 
an earlier priority date contained in the specifica-
tion of another patent granted in Jamaica; 
(b) the patent was granted on the application of a 
person not entitled under the provisions of this Act 
to apply therefor; 
(c) the patent was obtained in contravention of the 
rights of the person who makes the application to 
the Court or of any person under or through whom he 
claims; 
(d) the invention was not patentable by virtue of 
section 3; 
(e) that the invention, so far as claimed, is not new, 
having regard to what was known or used before the 
priority date of the application in Jamaica or the 
filing date; I PIN 11 /JAM/lI J 
Page 66 
(f) the invention, so far as claimed in the specifica-
tion, is obvious and does not involve an inventive 
step having regard to what was known or used before 
the priority date of the application in Jamaica; 
(g) the specification does not describe the invention In 
a manner which is clear and complete enough for it 
to be performed by a person skilled in the art; 
(h) the scope of any claim of the specification is not 
sufficiently and clearly defined or is not [fairly] 
based on the matter disclosed in the specificationi 
(i) the invention, so far claimed in any claim of the 
specification! was secretly used in Jamaica! 
otherwise than as mentioned in subsection (2), 
before the priority date; 
(j) the patent was granted on a false suggestion or 
representation; 
(k) the patent was granted contrary to law. 
(2) For the purpose of -
(a) subsection (1) (i)! no account shall be taken of any 
use of the invention -
(i) for the purpose of reasonable trial or 
experiment only; or 
(ii) by a government department or agency or 
any person authorized in consequence of 
the applicant for the patent or any 
person from whom he derives title having 
communicated or disclosed the invention 
directly or indirectly to a Government 
department or agency or authorized 
personj or [Revocation (iii) IP/N/IIJAMlIIl 
Page 67 
by any other person, in consequence of 
the applicant for the patent or any 
person from whom he derives title having 
communicated or disclosed the invention, 
and without the consent or acquiescence 
or of any person from whom he derives 
title; and 
(b) subsection (1) (e) or (f) I no account shall be 
taken of any secret use. 
(3) Without prejudice to the provisions of 
subsection (1), a patent may be revoked by the Court -
(a) on the application of a Government department or 
agency, if the Court is satisfied that the patentee 
has, without reasonable cause, failed to comply with 
a request of a department or agency to make, use of 
work the patented invention for the services of the 
Crown upon reasonable terms; or 
(b) on application, with the written consent of the 
Attorney-General, of any person not otherwise 
entitled to apply under this section. 
(4) Every ground on which a patent may be revoked 
shall be available as a ground of defence in any proceeding 
for the infringement of the patent under PF~T VI. 
75. -(1) At any time within twelve months after the grant 
by Registrar. of a patent, any interested person who did not oppose the 
grant of the patent may, subject to subsection (2) I apply to 
the Registrar for an order revoking the patent on anyone or 
more of the grounds upon which the grant of the patent could 
have been opposed. 
(2) Where an action for infringement or proceedings 
for the revocation of a patent are pending in any Court, an 
application under subsection (1) shall not be made except 
with the leave of the Court. I /JAM!I! 1 
Page 68 
(3) Where an application is made under this section, 
the Registrar shall notify the patentee within the 
prescribed period after the application and shall give the 
patentee an opportunity to be heard before deciding the 
case. 
(4) If/ on an application under this section the 
Registrar is satisfied that any of the grounds referred to 
in this subsection (1) are established, the Registrar may, 
subject to subsection (5), by order direct that the patent 
be revoked unconditionally, as from a date specified in the 
order, unless within such period as the Registrar may so 
specify, the specification amended to the Registrar's 
satisfaction. 
(5) The Registrar shall not make an order for the 
unconditional revocation of a patent under subsection (4) 
unless the circumstances are such as would have justified 
his refusing to grant the patent in proceedings under 
section (opposition proceedings) . 
(6) An appeal to the Court shall lie from any decision 
of the Registrar under this section.] 
Surrender of Patent 
Procedure for 76. -(1) A patentee may at any time by notice in writing 
surrender. to the Registrar, offer to surrender a patent. 
(2) On receipt of the offer under subsection (I), the 
Registrar shall advertise in the prescribed manner, the fact 
that the offer has been received, indicating the prescribed 
period within which notice of opposition to the surrender 
may be sent to the Registrar. 
(3) Any person interested may, within the prescribed 
time, give notice of opposition to the surrender/ to the 
Registrar who shall, notify the patentee accortdingly. Record of 
revocation 
or surrender. 
Acts consti­
tuting 
infringement. Page 69 
(4) After hearing the patentee and any opponent, (if 
desirous of being heard) the Registrar may accept the offer 
and [by order revoke the patent], if he is satisfied that 
the patent may properly be surrendered. 
(5) An appeal to the Court shall lie from any 
decision of the Registrar under this section. 
77. The Registrar shall enter particulars of any 
revocation or surrender under this Part in the Register. 
PART VII -INFRINGEMENT OF PATENT 
Infringing Acts 
78. -(1) Subject to [subsection (2) and] section 79, a 
patent for an invention is infringed by a person who, while 
the patent is in force and without the consent of the (owner 
of the patent,] does in Jamaica any of the following acts in 
relation to the invention, that is to say -
(a) where the invention is a product, he makes, disposes 
of, offers to dispose of, uses or imports the 
product or keeps it whether for disposal or 
otherwise; 
(c) whether the invention is a process -
(i) he uses the process or offers it for use in 
Jamaica when he knows, or it is obvious to 
a reasonable person in the circumstances, 
that such use without the consent of the 
owner would be an infringement of the 
patent; 
(ii) he disposes of, offers to dispose of, uses 
or imports any product obtained directly by 
means of that process or keeps any such 
product whether for disposal or otherwise. fPlNI1 !JAMIlI 1 
Page 70 
Exception to (2) Subject to subsection (3) and section 79, a patent 
is also infringed by a person who, while the patent is in 
force and without the consent of the owner of the patent! 
supplies or offers to supply in Jamaica a person, other than 
a licensee or other person entitled to work the invention, 
with any of the means, relating to an essential element of 
the invention for putting the invention into effect wnen he 
knows, or it is obvious to a reasonable person in the 
circumstances, that those means are suitable for putting and 
are intended to put the invention into effect in Jamaica. 
(3) Subsection (2) shall not apply to the supply or 
offer of a [staple commercial product] unless the supply or 
the offer is made for the purpose of inducing the person 
supplied or, as the case may be, the person to whom tne 
offer is made, to do an act which constitutes an 
infringement of the patent by virtue of subsection (1). 
79. -(1) An act which would, apart from this section! 
infringement. constitute an infringement of a patent shall not do so if 
that act -
(a) is done privately and for purposes which are not 
commerciali 
(b) is done for experimental purposes relating to the 
subject matter of the invention; 
(c) consists of the extemporaneous preparation in a 
pharmacy of a medicine for an individual in 
accordance with a prescription given by a registered 
medical or registered dental practitioner or 
consists of dealing with a medicine so preparedi IP/NI1IJAM/l/] 
Page 71 
(d) consists of the use, exclusively for the needs of a 
relevant ship of a product or process in the body of 
such a ship or in its machinery, tackle, apparatus 
or other accessories, in a case where the ship 
temporarily or accidentally entered the internal or 
territorial waters of Jamaica; 
(e) consists of the use of a product or process in the 
body or operation of a relevant aircraft or vessel 
which has temporarily or accidentally entered or is 
crossing Jamaica (including the air space above it 
and its territorial waters) or the use of 
accessories for such a relevant aircraft or vessel; 
(f) consists of the use of an exempted aircraft which 
has lawfully entered or is lawfully crossing Jamaica 
as mentioned in paragraph (el f or of the importation 
into Jamaica or the use or storage thereof any part 
or accessory for such an aircraft. 
(2) For the purposes of section 78(2){ the fact that 
an act done by a person is, by virtue of subsection (l) (a) , 
(b) or (c) prevented constituting an infringement, does not 
entitle the person to work the invention. 
(3) In this section -
"registered dental practitioner" means a dental 
practitioner registered under the Dental Act; 
nregistered medical practitioner" means a medical 
practitioner registered under the Medical Act; 
"relevant ship" and "relevant aircraft or vessel" meant 
respectively, a ship and an aircraft or vessel 
registered in or belonging to any country other than 
Jamaica which is party to the Paris Convention. IPlN/] /JAM/Ill 
Page 72 
Power to 
institute 
proceedings. Infringement Proceedings 
80. -(1) Subject to the following provisions of this 
section and to section 83, the patentee may bring proceed-
ings in respect of any act alleged to infringe the patent 
and (without prejudice to any other jurisdiction of the 
Court,) may apply for -
(a) an injunction restraining the defendant from any 
acts of infringement; 
(b) damages in respect of the infringement; 
(c) an account of profits derived from the infringementi 
(d) an order for the delivery up or destruction of any 
patented product in relation to which the patent is 
infringed or any article in which that product is 
inextricably comprisedi 
(e) a declaration that the patent is valid and has been 
infringed by the defendant. 
(2) The Court shall not, in respect of the same 
infringementl award the owner of the patent damages and 
accounts of profits. 
(3) The question whether a person has infringed a 
patent may be referred to the Registrar if the patentee and 
the person agree to the reference, and the owner may in that 
reference, make any claim mentioned in subsection (1) (b) or 
(e) . 
(4) If it appears to the Registrar on a reference 
under subsection (3) that the question referred would more 
properly be determined by the Court, the Registrar may 
decline to deal with it and the Court shall have jurisdic-
tion to determine the question as if the reference were 
proceedings brought in the Court. Restrictions 
on damages 
etc., for 
infringe­
ment. 1P/>J/l 
Page 73 
(5) Except where the context otherwise requires, any 
reference in the following provisions of this Act -
(a) to proceedings for infringement and the bringing of 
such proceedings, includes a reference to a 
reference under subsection (3); 
(b) to a plaintiffl includes a reference to the owner of 
the patent; and 
(c) to a defendant, includes a reference to any other 
party to the reference. 
81. -(1) Subject to the following provisions of this 
section, in proceedings for infringement of a patent -
(a) damages shall not be awarded; and 
(b) an order for an account of profits shall not be 
made, 
against a defendant who proves that at the date of the 
infringement, he was not aware and had no reasonable grounds 
for believing that the patent existed. 
(2) For the purposes of subsection (1), a person shall 
not be taken to have been so aware or to have had reasonable 
grounds for so believing by reason only of the application 
to the product of the word "patent" or "patented", or any 
word or words expressing or implying that a patent has been 
obtained for the product, unless the number of the patent 
accompanied the word or words in question. 
(3) In proceedings for infringement of a patent the 
Court or the Registrar may refuse to award any damages or 
make any order for an account of profits in respect of an 
infringement committed during any further period specified 
under section 27(2), but before the payment of the renewal 
fee and any additional fee prescribed for the purposes of 
that subsection. lPlNI 1 IJAMIIIl 
Page 74 
Infringe-
ment of 
partially 
valid 
patent. 
Use begun 
before 
priority 
date or 
filing 
date. (4) Where an amendment of the specificatlon or ct 
patent has been allowed under any provisions of this Act, no 
damages shall be awarded in proceedings for an infringement 
of the patent committed before the decision to allow the 
amendment, unless the Court or the Registrar is satisfied 
that the specification of the patent as published was framed 
in good faith and with reasonable skill and knowledge. 
82. -(1) If, in proceedings for infringement of a patent, 
the validity of a patent is put in issue and it is found 
that the patent is only partially valid, the Court or the 
Registrar may, subject to subsection (2), grant relief in 
respect of the infringement of that part of the patent that 
is found to be valid. 
(2) No relief shall be granted under subsection (I) 
by way of damages, costs or expenses, unless the plaintiff 
proves that the specification for the patent was framed in 
good faith and with reasonable skill and knowledge, and in 
that event, the Court or the Registrar may grant relief in 
respect of that part of the patent which is valid, subject 
to the discretion of the Court or the Registrar as to costs 
or expenses and as to the date from which damages should be 
reckoned. 
83. -(1) Where a patent is granted for an invention, a 
person who in Jamaica before the [filing date, or as the 
case may require,] priority date of the invention -
(a) does in good faith an act which would constitute 
infringement of the patent if it were in force; or 
(b) makes in good faith effective and serious prepara-
tion to do such an act, 
has the right to continue to do the act or, as the case may 
be, to do the act, notwithstanding the grant of the patent; 
but the right does not extend to granting a licence to 
another person to do the act. Infringement 
proceedings 
by co-owner. IP/NIl 
Page 75 
(2) If the act was done or the preparations were 
made in the course of a business! the person entitled to the 
right conferred by subsection (1) may -
(a) authorize the doing of that act by any of his 
partners for the time being in that business; and 
(b) assign that right or transmit it on death (or, in 
the case of the body corporate, on its dissolution) J 
to any person who acquires that part of the business 
in the course of which the act was done or the 
preparations were made. 
(3) Where a product is disposed of to another 
person in exercise of the rights conferred by subsection (1) 
or (2), that other person and any person claiming through 
him! may deal with the product in the same way as if it had 
been disposed of by the registered owner of the patent. 
84. -(1) Section 78 shall apply in respect of a patent 
having two or more joint owners, as if the reference in that 
section to the owner of the patent were -
(a) in relation to any act, a reference to that owner or 
those owners who! by virtue of section 32 or any 
agreement referred to in that section, is or are 
entitled to do that act without it amounting to an 
infringementi and 
(b) in relation to any consent! a reference to that 
owner or those owners who, by virtue of section 32 
or such agreement, is or are the proper person or 
persons to give the requisite consent. 
(2) Subject to the subsection (3), one of two or more 
joint owners of a patent may, without the concurrence of the 
others, bring proceedings in respect of an alleged 
infringement. IP/NIlIJAM/IIl 
Page 76 
Infringement 
proceedings 
by exclusive 
licensee. 
Unregistered 
transaction, 
etc., in 
infringment 
proceedings. (3) An owner if made a defendant in infringement 
proceedings shall not be liable for any costs or expenses 
unless he enters an appearance and takes part in the 
proceedings. 
85. -(1) Subject to the provisions of this section, the 
holder of an exclusive licence under a patent shall have the 
same right as the owner of the patent to bring proceedings 
in respect of an infringement of the patent committed after 
the date of the licence; and references to the owner of the 
patent in the provisions of this Act relating to infringe-
ment shall be construed accordingly. 
(2) In awarding damages or granting any other relief 
in any such proceedings, the Court [or the Registrar] shall 
take into consideration any loss suffered or likely to be 
suffered by the exclusive licensee in his capacity as such, 
as a result of the infringement, so far as it constitutes an 
infringement of the right of the exclusive licensee in his 
capacity as such. 
(3) In any proceedings taken by an exclusive licensee 
by virtue of this section, the owner of the patent shall be 
made a party to the proceedings, but if he is made a 
defendant, he shall not be liable for any costs or expenses 
unless he enters an appearance and take part in the 
proceedings. 
86. -(1) Where in relation to a transaction, instrument or 
even by which rights in a patent are assigned, mortgaged, 
licensed or transferred by order of the Court, a person 
becomes the owner or one of the owners or an exclusive 
licensee of a patent and the patent is subsequently in-
fringed, the Court (or the Registrar] shall not award him 
damages or an order that he be given an account of the 
profits in respect of an infringement occurring before the 
transaction, instrument or event is registered unless -Infringement 
of rights 
after pub­
lication 
of patent 
application. IP/]\i!J 
Page 77 
(a) the transaction, instrument or event is registered 
within the period of six months beginning with the 
date of registration; or 
(b) the Court [or the Registrar] is satisfied that it 
was not practicable to reglster the transaction, 
instrument or event before the end of that period 
and that it was registered as soon as practicable 
thereafter. 
87. -(1) Subject to [subsection (3) and {4}], an applicant 
for a patent for an invention ha~, from the date of the 
publication of the date of the grant of the patent, the 
same right as he would have had if the patent had been 
granted on the date of publication of the application, to 
bring proceedings in the Court [or before the Registrar] for 
damages in respect of any act which would have infringed the 
patent. 
(2) Subject to subsection [(3) and (4)] -
(a) references in section 78 to 81 and 84 to 86 to a 
patent and the owner of a patent, shall be con­
strued, respectively, as including references to any 
application for a patent and the applicantj and 
(b) references to a patent being in force, being 
granted! being valid or existing shall be construed 
accordingly. 
(3) The applicant shall be entitled to bring 
proceedings by virtue of this section in respect of any act 
only -
(a) after the patent has been granted; and lP/Nil 
Page 78 
certificate 
of validity. 
Registration 
of patent 
attorneys. (b) if, the act would, if the patent had been granted on 
the date of the publication of the application, have 
infringed the patent and claims in the form in which 
they were contained in the application immediately 
before the preparations for its publication were 
made by the Office. 
88. -(1) Where the validity of a patent is contested in 
infringement proceedings and the Court or Registrar finds 
the patent to be wholly or partially valid, the Court or 
Registrar may certify the finding and the fact that the 
patent was so contested. 
(2) Where a certificate is granted under this 
section, then, if in any subsequent proceedings before the 
Court or the Registrar for infringement of the patent 
concerned or for revocation of the patent, a final order or 
judgement is made or given in favour of the party relying on 
the validity of the patent as found in the earlier pro-
ceedings, that party shall, unless the Court or Registrar 
otherwise directs, be entitled to his costs or expenses as 
between the attorney-at-law and own client (other than costs 
or expenses of any appeal in any such proceedings. 
[PART VIII. PATENT ATTORNEYS 
Registration, Rights and Privileges 
89. -(1) There shall be kept at the Office, a Register 
of Patent Attorneys. 
(2) A person who -
(a) is domiciled or habitually resident in Jamaicai 
(b) is at least [21] years of agei and 
(c) has the prescribed qualifications, 
may, on application to the Registrar n the prescribed manner 
and upon payment of the prescribed fee, be registered as a 
patent attorney for the purposes of this Act. Privileges. 
Removal 
from 
register. 
Offences 
by unregis-lP1N1 
Page 79 
(3) A person who is not registered under this section 
is not authorized to carry on business as a patent attorney. 
90. -(1) A patent attorney is authorized to prepare all 
documents, transact all business and conduct all proceedings 
for the purposes of this Act and to enjoy such other rights 
and privileges as may be prescribed. 
(2) Any communication between a patent attorney and 
his client and any record or document made for the purposes 
of such a communication are privileged to the same extent as 
a communication between an attorney-at-law and his client. 
(3) Nothing in this section shall be construed as 
authorizing a patent attorney to prepare a document to be 
issued from or filed in a court or to transact business or 
conduct proceedings in a court. 
91. The name of a patent attorney may be removed from the 
Register of Patent Attorneys in the prescribed manner and on 
the prescribed grounds. 
92. -(1) A person commits an offence if he -
(a) carries on business, practises or acts as a patent 
tered per- attorney without being a registered patent attorney 
sons etc. [or an attorney-at-law] i 
(b) describes himself or holds himself to be described 
or held out as a patent attorney or agent for 
obtaining patents, without being a patent attorney. 
(2) Members of a partnership shall not -
(a) carry on business, practise or act as patent 
attorneys unless each member is a registered patent 
(b) attorney [or an attorney-at-law] i or 
describe themselves or hold themselves out or permit 
themselves to be so described or held out, as patent 
attorneys or agents for obtaining patents, unlesS 
each member is a registered patent attorney· Page 80 
(3) b body corporate shall not carry on business, 
practise, act or describe itself or hold itself out as a 
patent attorney or agent for obtaining patents. 
(4) Subsections (1) (a), (2) and (3) shall not apply 
to the personal representative of a deceased patent attorney 
who -
(a) carries on the patent attorney's business for not 
more than three years after the patent attorney1s 
death or for any further period (if any) allowed by 
the Court; and 
(b) is himself a registered patent attorney or employs a 
registered patent attorney to manage the business on 
his behalf. 
(5) For the purposes of this section, [an individual] 
[a person] is deemed to carry on business as a patent 
attorney if he undertakes in Jamaica for gain -
(a) to apply for or obtain patents in Jamaica or 
anywhere else; 
(b) to prepare specifications or other documents for the 
purposes of this Act or the patent law of another 
country; or 
(c) to give advice (other than advice of a scientific or 
technical nature) about the validity or infringement 
of patents. 
(6) A person who commits an offence under this sec­
tion is liable on summary conviction before a Resident 
Magistrate 
(a) in the case of an offence committed under subsection 
(1 ) or (2) , to a fine not exceeding 
dollarsi and 
(b) in the case of an offence under subsection (3) f to a 
fine not exceeding [ ] dollars. Documents 
prepared by 
legal prac-
titioner. 93. JP/NIl/JAM/V1 
Page 8 I 
A attorney-at-law shall not prepare a specification or 
a document relating to an amendment of a specification 
unless -
(a) he is acting under the instructions of a registered 
patent attorneYi or 
(b) the amendment has been directed by an order of the 
Court under this Act. ] 
PART [IX]. UTILITY MODEL CERTIFICATES 
Applicability 94. -(l) Subject to section 17, the provisions of [PART 
of provisions Ill] shall apply, mutatis mutandis, to utility model 
patents. certificates relating to or applications therefor, as the 
case may be. 
(2) Where the right to a patent conflicts with the 
right to a utility model certificate in the case referred to 
in section 3(3), that provision shall apply as if the word 
"patentll were replaced by the words "patent or utility model 
certificatell• 
Special pro- 95. -(1) An invention qualifies for a utility model 
visions re-certificate if it is new and industrially applicable. 
lating to (2) Section 3(l} and 6 shall not apply in the 
utility case of inventions for which utility model certificates are 
model requested. 
certificates. (3) Section 24 shall not apply in the case of 
applications for utility model certificates.] 
(4) A utility model certificate shall expire} without 
any possibility of renewal, at the end of the seventh year 
after the date of the filing of the application. 
(5) In proceedings under section 74, the court may 
revoke the utility model certificate on the following 
grounds -I P/N/ 1/ 
Page 82 
Conversion 
of patent 
applications 
or applica-
tions for 
utility model (a) that the claimed invention did not qualify for a 
utility model certificate, having regard to 
subsection (1) and to sections 4 (2) (a), 5 and 7; 
(b) that any description and the claims do not comply 
with the requirements prescribed by section 9(5) and 
(6) and the regulations pertaining thereto; 
(c) that any drawing which is necessary for the under-
standing of the invention has not been furnished; 
(d) that the owner of the utility model certificate is 
not the inventor or his successor in title. 
(6) Section [13(2)] shall not apply in the case of 
utility model certificates. 
96. -(1) At any time before the grant or refusal of a 
patent, an applicant may, upon payment of of the prescribed 
fee, convert his application into an application for a 
utility model certificate, which shall be accorded the 
filing date of the initial application. 
(2) At any time before the grant or refusal of a 
certificates. utility model certificate, the applicant concerned may, upon 
payment of the prescribed fee, convert his application into 
Provisions 
as to 
location 
and form 
of register. a patent application, which shall be accorded the filing 
date of the initial application. 
(3) An application may not be converted under 
subsection (1) or (2) I as the case may be, more than once. 
Register of Patents 
97. -(1) A Register of Patents and Designs is to be kept 
at the Office in the prescribed form. 
(2) The Register may be kept wholly or partly in 
electronic form [,and where it is so kept -
(a) references in this Act to an entry in the register, 
are to be construed as including references to a 
record of particulars kept in electronic form and 
comprising the Register or part of the Register; Particulars 
to be regis­
tered. 
Register 
as evi­
dence. IP/N/l 
Page 83 
(b) references in this Act to particulars being 
registered or entered in the register, are to be 
construed as including references to the keeping of 
a record of those particulars as part of the 
Register in electronic formi and 
(c) references in this Act to the rectification of the 
Register are to be construed as including references 
to the rectification of the record of particulars 
kept in electronic form and comprising the Register 
or part of the Register.] 
98. -(1) There shall be entered in the register particu­
lars relating to patents in force and registered industrial 
designs , including such particulars as to -
(a) assignments and transmissions of patents and 
designs; 
(b) licences under patents and designs; 
(c) notice of all matters which are required under this 
Act to be entered in the Registeri 
(d) such other particulars affecting the validity or 
ownership of patents and registered industrial 
design as the Registrar thinks fit; 
(e) any other prescribed particulars relating to patents 
or industrial designs. 
(2) All documents filed in connection with the 
registration of particulars shall be available for 
inspection under section 100. 
99. -(1) The Register shall be prima facie evidence of any 
matters required or authorized by or under this Act to be 
entered in it. lP/Nil 
Page 84 
Trusts not 
registrable. 
Registration 
of assign-
ment, etc. (2) If the Register is wholly or partly kept in 
electronic form, document signed by the registrar 
reproducing in writing all or any of the particulars 
comprising the Register, or that of it, is admissible in any 
proceedings as evidence of those particulars. 
100. Notwithstanding anything in section 98, notice of 
any trusts, whether expressed, implied or constructive 
relating to a patent or licence is receivable by the 
Registrar and shall not be registered. 
101. -(1) Where a person becomes entitled -
(a) by assignment, transmission or operation of law to a 
patent or registered industrial design or to a 
share; or 
(c) as mortgagee! licensee or otherwise to any other 
interest in a patent or registered industrial 
design, 
he shall apply to the Registrar in the prescribed manner for 
the registration of his title as owner or as joint owner, or 
as the case may be, or of notice of his interest in the 
Register. 
(2) Without prejudice to the provisions of subsection 
(1) an application for registration of the title of any 
person derived in a manner specified in subsection (1) may 
be made in the prescribed manner by the assignor, mortgagor, 
licensor or other party to that instrument, as the case may 
be. 
(3) Where an application is made under this section, 
the Registrar shall, on proof of title to the Registrar's 
satisfaction -Inspection 
by pUblic. IPlN/l 
Page 85 
(a) where the person is entitled to a patent or design 
or a share in a patent or design, register that 
person in the Register as owner or joint owner of 
the patent or design, indicating the instrument or 
event by which the person derives titlei or 
(b) where that person is entitled to any other interest 
in the patent or design, enter in the Register and 
on any [patent} produced to the Registrar, notice of 
that interest. 
(3) Subject to -
(a) provisions of this Act relating to joint ownership 
of patents or designs, as the case may be; and 
(b) any rights vested in any other person of which 
notice is entered in the Register, 
the person or persons registered as grantee or owner of a 
patent or design shall have power to assign, grant licences 
under or otherwise deal with, the patent or design and to 
give effectual receipts for any consideration for any such 
assignment, licence or dealing, so, however, that any 
equities in respect of the patent or design may be enforced 
in like manner as in respect of any personal property. 
(5) Rules may require the supply to the Registrar for 
filing of copies of such deeds, licences and documents as 
may be prescribed, in connection with any application under 
this section. 
102. -(1) Subject to the following provision of this 
section, the Register shall be available for inspection by 
the public at the Office during the hours that it is 
normally open for business. IP/N/I/JAMlIll 
Page 86 
Rectifica-
tion of 
Register. (2) Where a record of particulars is kept in 
electronic form, subsection (1) is complied with to the 
extent that the Register consists of those particulars, by 
giving the public assess to a computer terminal which can be 
used to inspect the particulars either or a screen in or in 
the form of a computer printout. 
(3) Except with the approval of the applicant, an 
application for a patent or a document filed in connection 
with the application shall not be open to public inspection 
before the confidentiality period of eighteen months has 
expired. 
(4) The confidentiality period begins -
(a) on the date of filing of the application; or 
(b) where a request for priority has been made in 
respect of the application, on the earliest date of 
filing of any previously [regularly] filed 
application on which the request is based. 
(5) Where a request for priority is withdrawn on or 
before the prescribed date, then, for the purposes of 
subsection (3) and to the extent that it is withdrawn, it 
shall be considered never to have been made. 
(6) An application shall not be open to public 
inspection if it is withdrawn in accordance with the rules 
on or before the prescribed date. 
(7) For the purposes of subsection (5) and (6) I the 
prescribed date shall be a date no later than the date on 
which the confidentiality period expires. 
103. A person aggrieved by -
(a) the omission of an entry from the Register; or 
(b) an entry made in the Register without sufficient 
cause; or Information 
Registrar 
may give. 
Admissi­
bility of 
unregistered 
particulars. 
Immunity. lP/Nil 
Page 87 
(d) an entry wrongly existing in the Register; or 
(e) an error or defect in an entry in the Register, 
may apply to the Court for a rectification of the Register. 
Supplemental 
104. The Registrar may give any person information about -
(a) a patent or design; or 
(b) an application for a patent or for the registration 
of an industrial design, that is open to public 
inspection; 
(c) any prescribed document or matter. 
105. A document in respect of which particulars have not 
been entered in the Register is not admissible in any 
proceedings in proof of the title of a patent or to an 
interest in a patent unless -
(a) the Court or the Registrar before which the 
proceedings are brought otherwise directs; or 
(b) the proceedings are for an order for rectificaticn 
of the register under section 88 or to enforce 
equities in relation to a patent or licence. 
Protection of Employees -additional powers 
106. The Registrar or officers employed to the Office -
(a) shall not be taken to warrant the validity of any 
patent granted industrial or design registered under 
this Act or any treaty or international convention 
to which Jamaica is a party; or 
(b) shall incur no liability by reason of or in 
connection with any examination or investigation 
required or authorized by this Act or any such 
treaty or convention or any report or other 
proceedings consequent on any such examination. rp/NI 
Page 88 
Clerical 
errors. 
Destroyed 
or lost 
patent. 
Annual 
report. 107. -(1) The Registrar maYt subject to any of rules 
correct any errors of translation, transcription, clerical 
error or mistake in -
(a) any specification of a patent or application for a 
patent or for the registration of an industrial 
design; or 
(b) any document filed in connection with a patent or 
design or such application. 
(2) Where the registrar is requested to correct such 
an error or mistake, any person may, in accordance with 
rules give the Registrar notice of opposition to the 
request, and the Registrar shall determine the matter. 
108. If any patent or certificate of registration of an 
industrial design is destroyed or lost, the Registrar may 
issue a certified copy in lieu of the original on payment of 
the prescribed fee. 
109. -(1) Before the 31st of March in every year, the 
[Registrar] shall cause to be laid on [both Houses of 
Parliament] a report with respect to the operation of this 
Act and the discharge of the Registrar1s functions under the 
Patent Co-operation Treaty or any other relevant inter­
national treaty or arrangement, and every such report shall 
include an account of all fees, salaries and allowances and 
other money received and paid to the Registrar under this 
Act and the treaty during the previous year. 
(2) In this section It relevant treaty or 
arrangement" means a treaty or arrangement relating to 
patents or industrial designs to which Jamaica 
and which relates directly to the functions of the office. Falsifica-
tion of 
Register. 
False 
claim as PART X -MISCELLANEOUS AND GENERAL 
Offences 
110. Any person who -IPINllIJAMl!ll 
Page 89 
(a) makes or causes to be made, a false entry in any 
Register under this Act or a writing falsely 
purporting to be a copy of an entry in any such 
Register; or 
(b) produces or tenders or causes to be produced or 
tendered in evidence any such writing, knowing the 
entry or writing to be false, 
commits an offence and shall be liable on conviction before 
a Resident Magistrate to a fine not exceeding dollars] 
or to imprisonment for a term not exceeding [ years] or 
to both such fine and imprisonment I or on conviction on 
indictment to imprisonment for a term not exceeding [years] 
111. -(1) a person who falsely represents -
(a) that he or another person is the patentee of an 
to patent invention or the owner of a registered industrial 
rights. design i or 
(b) that he or another person has applied for a patent 
for an invention the registration of an industrial 
design, 
commits an offence and shall be liable on summary conviction 
to a fine not exceeding dollars] . 
(2) A person who falsely represents that an article 
sold by him is patented or incorporates an industrial design 
registered in Jamaica or is the subject of an application 
for a patent or the registration of an industrial design in 
Jamaica, commits an offence and shall be liable on summary 
conviction to a fine not exceeding [ dollars] . lP/Nil/ 
Page 90 
Appeal to 
the Court. (3) For the purposes of this section a person shall 
be deemed to represent that -
(a) an article is patented in Jamaica if there is 
stamped, engraved or impressed on or otherwise 
applied to, the article the word "patent" or 
"patented' " the words "provisional patent" or some 
other word or words expressing or implying that a 
patent for the article has been obtained in Jamaicaj 
and 
(b) an article is the subject of an application for a 
patent in Jamaica if there are stamped, engraved or 
impressed on or otherwise applied to the article the 
words "patent applied for" or "patent pendingil or 
some other words implying that an application for a 
patent for the article has been made in Jamaica. 
(4) It shall be a defence to any prosecution under 
this section to show that the article was patented or was 
subject to an application for a patent at the time when Rnd 
in the country where the words were stamped, engraved or 
impressed on or otherwise applied to it. 
(5) Any person who uses on his places of business or 
on any document issued by him or otherwise the words "Patent 
Office", or any other words suggesting that his place of 
business is or is officially connected with the Patent 
Office, commits an offence and shall be liable on summary 
conviction to a fine not exceeding dollars] . 
Appea.ls 
112. -(1) An appeal shall lie to the Court under this Act 
against a decision of the Registrar. 
(2) Notice of appeal shall be filed in the Court 
within [twenty-eight] days after the day on which the 
decision appealed against was given. Appeals to 
Court of IP/N/l/JAM/IIl 
Page 91 
(3) In any such appeal! the Court shall have and may 
exercise the same discretionary powers as are conferred on 
the Registrar. 
(4) Subject to the provisions of section 113, the 
decision of the Court shall be final -
(a) on an appeal against a decision of the Registrar; 
(b) on any application under section [nz31 or nz32J 
113. An appeal shall lie to the Court of Appeal -
(a) from any decision of the Court on an appeal under 
Appeal. section 74i 
Fees. 
Electronic 
submission 
of docu-
ments, etc. [(b) with the leave of the Court of Appeal, from any 
decision of the Court on any appeal against a 
decision of the Registrar] . 
Supplemental 
114. There shall be paid in respect of -
(a) the grant of patents, the registration of industrial 
designs and application pertaining thereto; and 
(b) any other matters relating to patents and industrial 
designs arising under this Act! 
such fees as may be prescribed from time to time, and all 
such fees [shall be paid into the Consolidated Fund] [shall 
be retained by the Office to be applied to defray costs 
associated with the carrying out of its functions under this 
Act] . 
115. -(1) Subject to such rules as may be prescribed, any 
document, information or fee that is authorized or required 
to be submitted to the Registrar under this Act may be 
submitted in electronic or other form in any manner 
specified by the Registrar. fP/Nil IJAM/IIl 
Page 92 
Service by 
post. 
Rules. (2) Subject to the rules! any document or 
information received by the Registrar under this Act in 
electronic form may be entered or recorded by an information 
storage device! including any system of mechanical or 
electronic data processing, that is capable of reproducing 
stored documents or information in intelligible form within 
a reasonable time. 
116. Any notice required or authorized to be given by this 
Act or rules and any application or other document so 
authorized if required to be filed! may be given, made or 
filed by post. 
117. The Minister may make rules generally for giving 
effect to the objects and purposes of the Act and for 
ensuring its due administration and, in particular, but 
without prejUdice to the generality of the foregoing, rules 
may be made respecting -
(a) the form and content of applications for patents or 
the registration of industrial designsi 
(b) the form of the register and of the indexes thereto; 
(c) the registration of assignments, transmissions! 
disclaimers, judgements or other documents relating 
to any patent; 
(d) the form and content of any certificate issued 
pursuant to this Act; 
[(e) the fees or the manner of determining fees that may 
be charged in respect of -
(i) the filing of applications for patents or 
designs; 
(ii) the taking of other proceedings under this 
Act or under any rule made pursuant to 
this Act; or (iii) lPIN/1 
Page 93 
any services or the use of any facilities 
provided by the Registrar or any person 
employed in the Officei 
(f) the fees or manner of determining the fees that 
shall be paid to maintain in effect an application 
for a patent or design or to maintain the rights 
accorded by a patent or design; 
(g) the payment of any prescribed fees, including the 
time when and the manner in which such fees shall be 
paid, the additional fees that may be charged for 
the late payment of such fees and the circumstances 
in which any fees previously paid may be refunded in 
whole or in part;] 
(h) the carrying into effect of the terms of any treaty, 
convention agreement or arrangement that subsists 
between Jamaica and any other countrYi 
(i) the carrying into effect of any amendment, modifica­
tion or revision of the Patent Cooperation Treaty 
made from time to time, to which Jamaica is partYi 
(j) the entry in, the maintenance of, and the removal 
from the Register, of Patent Attorneys and the 
qualifications of such entry; 
(k) the submission of documents, information or fees 
under this Act; 
(1) the entering or recording of any document or 
information under section 96(2) i 
(m) the manner in which an application for a patent or a 
request for priority may be withdrawn; 
(n) requests for priority and examination; 
(0) any other matter required to be prescribed by any 
provision of this Act. Page 94 
Act binds 
the Crown. 
Repeal of 
Patent Act 
and Designs 
Act. (2) Rules may authorize the Registrar to extend, 
subject to any prescribed terms and conditions, the time 
fixed by or under this Act for doing anything, where the 
Registrar is satisfied that the circumstances justify the 
extension. 
118. The Act binds the Crown. 
Repeal, Saving and Transitional Provisions 
119. -(1) The Patent Act and the Designs Act (hereinafter 
called the repealed Acts) are hereby repealed. 
(2) Any patent or design registered or any document 
made or anything whatsoever done under the repealed Acts so 
far as it is in force or subsisting immediately before the 
appointed day shall continue and have effect as if it had 
been made or done under the corresponding provision of this 
Act as if the provision has been in force when the document 
was made or thing was done.] 
Transitional. 120. The transitional provisions set out in the Schedule 
shall have effect for the purposes of the transition to the 
provisions of this Act from the lay in force before the 
appointed day.] SCHEDULE 
(To be inserted) 
MEMORANDUM OF OBJECTS AND REASONS IP/N/I/JAM/Iil 
Page 95 
This Bill seeks to reform the law relating to patents. 
The existing Act was promulgated in 1857. The deficiencies 
of the existing law have precluded Jamaica's involvement in 
international arrangements which require national legis la-
tion to accord a level of protection which is consistent 
with international norms and practices in the field of 
patent. 
Specifically, the Bill when passed will significantly 
fulfil Jamaica's obligations as a party to the Paris 
Convention for the Protection of Industrial Property and 
will reflect the requirements of the Agreement on the Trade 
Related Aspects of Intellectual property between Jamaica and 
the United States of America. The Bill also provides for 
the filing of an international application under the Patent 
Cooperation Treaty. 
Among its main features are -
(a) inventions which satisfy prescribed the criteria 
set out in the Bill may be granted a patent utility 
model certificate, as the case may require thereby 
conferring on the right holder the exclusive right 
to exploit the patent or utility model for twenty 
years or seven years, respectively; 
(b) industrial design which meet the prescribed 
criteria may also be registered thus providing 
similar protection to the registered 
certificate; lP/N/l/JAM/lIl 
Page 96 
(c) [an applicant] may seek and obtain a right to 
priority, that is, the grant of a priority date 
for protection in respect of an application 
made in Jamaica within a twelve month period of 
the making of previous applications in relation 
to the same invention in countries which are 
parties to the Paris Convention; 
(d) patents utility models and industrial designs 
may be assigned, mortgaged, transferred or 
willed. Provision is made for patents to be 
licensed voluntarily, or compulsorily in 
clearly defined circumstances. The Crown may 
acquire rights to the use of patented inven-
tions, subject to the payment of compensation 
to the patentee; 
(e) the patent system is to be administered by the 
Registrar of Industrial Property who is 
mandated to keep a register of patents and 
designs in which should be entered particulars 
of activities affecting patents and designs 
issued under the Act. Provision is made for 
transactions affecting patents to be 
registered. 
(f) persons who posses the prescribed criteria will 
be eligible for registration as patent 
attorneys; 
(g) the Minister is given wide rule-making power in 
relation to a variety of matters, including the 
procedures for application, search and examina-
tion and the payment of feesi lP/Nil 
Page 97 
(h) in order to ensure a proper transition from the 
old system to the new one, appropriate 
transitional provisions have been included in 
the Bill. 
Phillip Paulwell 
Minister of Commerce and Technology