RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/237/Add.3
13 June 2001
(01-2933)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Saint Lucia to questions posed by the European Communities
and their member States, Switzerland and the United States
Addendum
By means of a communication from the Permanent Delegation of Saint Lucia dated 8 June
2001, the Secretariat has received the following responses to outstanding questions posed by the
European Communities and their member States, Switzerland and the United States, as circulated indocuments IP/C/W/244, 239 and 239/Add.1 and 215/Add.1, respectively.
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EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
1
F. P ATENTS
23. Please describe how your legislation defines the notions of: novelty, inventiveness and
industrial application.
Under the Patents Act 2001:
- "novelty" relates to an invention which does not form part of the state of the art.  The
Act provides that "the state of the art" comprises all matter, whether a product, a process,
information about a product or process, or anything else, which has at any time before the
priority date of the invention been made available to the public whether in Saint Lucia or
elsewhere, by written or oral description, by use, or any other way.
- "inventiveness" is defined as involving something which is not obvious to a person
skilled in the art.
- "industrial application" is an invention which can be made or used in any kind of
industry, including agriculture, fishery and handicraft.
24. Please explain whether or not in your legisl ation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how these
exclusions are applied in legal as well as practical terms.
                                                     
1 These responses supplement Saint Lucia's responses to the European Communities and their member
States circulated in document IP/C/W/237/Add.2.IP/C/W/237/Add.3
Page 2
The legislation does provide for exceptions with regard to the rights enjoyed by patent
holders.  One such case would be the use of a patent without the authorisation or consent of the right
holder which is provided for in section 57 of the Patents Act 2001.  The Act is new and has not
entered into force yet and so there has been no practical application of this particular section.
26. Please explain whether your legislation provides for the exclusion of inventions from
patentability based on ordre public or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
Apart from the exceptions mentioned in section 9 of the Patents Act 2001 there is no specific
exclusion from patentability based on ordre public  or morality.  The only provision made is in
section 29 with respect to applications which may be refused because they contain information whichis prejudicial to defence of Saint Lucia or safety of the public.
27. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation. If so, please explain the relevant section of your legislation and
explain its formulation.
Yes, Section 9 (2) of the Patents Act 2001 excludes anything which consists of diagnostic,
therapeutic and surgical methods for the treatment of humans or animals.
28. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation. If so, please explain the relevant section of yourlegislation and explain its formulation.
The Patents Act does not address the protection of plants as this will be addressed in the new
Plant Varieties Act which is soon to be passed.  The Act does not however specifically exclude
animals and biological processes from patentability.
29. Please describe how micro-organisms, non-essentially biological processes, microbiological
processes and plant varieties are protected in your legislation. Please explain, in this respect, the
relevant sections of your legislation.
See response to Question 27.
30. Please explain how your legislation protects patent right holders against the importing and
against the offering for sale of a patented invention.
Section 62 of the Patents Act 2001 provides that a patent is infringed if it is used, offered for
use, imported into Saint Lucia, without the consent of the proprietor.  Where such acts have beencommitted without the consent of the proprietor the proprietor has the right to institute civil
proceedings against the infringer.  The proprietor cam make a claim in such proceedings for (a) an
injunction restraining the defendant from any appended act of infringement; (b) an order that the
defendant deliver up or destroy any patented product in relation to which the patent is infringed; (c)
damages in respect of the infringement; (d) an account of the profits derived by the defendant fromthe infringement; and (e) a declaration that the patent is valid and has been infringed by the defendant.
31. Please state if your legislation provides fo r patent product protection of pharmaceutical and
agricultural chemical products.  In the affirmative, please indicate the legal reference.
Section 9 which deals with things which are excluded from patentability does not exclude
pharmaceutical and agricultural chemical products from being protected by being patented.IP/C/W/237/Add.3
Page 3
32. Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
The Patents Act 2001 in its definition section defines patented product and by virtue of this
definition includes a product obtained directly by a process: "patented product" means a productwhich is a patented invention or, in relation to a patented process, a product obtained directly by
means of the process or to which the process has been applied.
33. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TR IPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislations and describe the additional conditions in detail.
There are no additional conditions detailed in the Patents Act 2001.
34. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
The Patents Act 2001 provides limited exceptions by making provision for the use of patented
inventions for services of Government without the consent of the proprietor.  This is provided for in
Section 57 et seq .
35. Please explain whether or not your legislation provides for compulsory licensing. If so, please
explain in detail the conditions under which a compulsory licence may be granted.  In particular,
please explain how your national le gislation considers individual merits in the authorization of such
use.
Yes, the legislation does make provision for compulsory licences in Section 51 of the Act.
The conditions or grounds which need to be present in order for such a licence to be granted are stated
in Section 51 subsection 2 of the Act.  These conditions include:
(a) that there is no production of the patented product or application of the patented
process in Saint Lucia without any legitimate reason;
(b) that there is no product produced in Saint Lucia under the patent for sale in Saint
Lucia or there are some but they are sold at unreasonably high prices or do not meet the
public demand without legitimate reason;
(c) that by reason of the refusal of the proprietor of the patent to grant a licence or
licences on reasonable terms-
(i) a market for the export of any patented product made in Saint Lucia is not
being supplied;
(ii) the working or efficient working in Saint Lucia of any other patented
invention which makes a substantial contribution to the art is prevented or hindered;
or
(iii) the establishment or development of commercial or industrial activities in
Saint Lucia is unfairly prejudiced; or
(d) that by reason of conditions imposed by the proprietor of the patent on the grant of
licences under the patent, or on the disposal or use of the patented product or on the use of the
patented process, the manufacture, use or disposal of materials not protected by the patent, orIP/C/W/237/Add.3
Page 4
the establishment or development of commercial or industrial activities in Saint Lucia, is
unfairly prejudiced.
Section 54 of the Act states that in making a determination as to whether a compulsory
licence should be granted, the Registrar should take account of "the ability of any person to whom alicence would be granted under the order to work the invention to the public advantage".  This allows
for the taking into account of individual merits.
36. Please explain how your legislation explicitly ensures that a proposed user has made efforts
to obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasonable period of time. In this context, how do you
define "reasonable period of time".  Please also explain how your legislation ensures that the use of acompulsory licence shall be authorised predominantly for the supply to the domestic market of the
member authorizing such use.
The Patents Act ensures that a proposed user has made efforts to obtain authorisation from a
right holder by making the doing of certain acts an infringement if done without the consent of theproprietor of the patent.  What is deemed as "r easonable period of time" will be defined by the
circumstances of the particular case.
The Patents Act ensures that the use of a compulsory licence shall be authorised
predominantly for the supply to the domestic market of the Member authorising such use bystipulating grounds which must be satisfied in order for a compulsory licence to be granted
(Section 51).  The grounds specified all deal in some way with the non-production of the patented
product at the domestic level; no sale of the patented product or unreasonably high prices at the
domestic level; the establishment or development of commercial or industrial activities in Saint Lucia;
the disposal or use of the patented product or on the use of a patented product; the manufacture, use ordisposal of materials not protected by the patent which is unfairly prejudiced due to conditions
imposed by the proprietor of the patent.
37. Please state if your legislation grants additional protection for innovations after the 20 years
of patent protection has lapsed.
Yes, the Patents Act in section 32 provides additional protection after 20 years of patent
protection has lapsed as it provides for application for renewal od a patent once the 20 year period has
expired.
38. Please explain how your legislation provides for the enhanced patent protection of patents or
patent applications pending on 1
st January 1995.
The Patents Act 2001 in its transitional provisions makes provision for applications which
were pending under the repealed enactment and applications made pursuant to the Patent Cooperation
Treaty before the commencement of the Act.  Although there is no stipulation of a date i.e. 1 January,
1995, such applications are to be dealt with in acco rdance with the Act and accordingly afforded the
protection under the Act.
39. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Section 64 of the Patents Act 2001 provides for the reversal of the burden of proof in relation
to process patents.
The section that "in any proceedings for the infringement of a patent, where the subject-matter
of the patent is a process for obtaining a new product, the burden of proving that a product is not madeIP/C/W/237/Add.3
Page 5
by the process shall be on the alleged infringer if the product is new or a substantial likelihood exists
that the product is made by the process and the proprietor of the patent has been unable through
reasonable efforts to determine the process actually used".
SWITZERLAND2
A. PATENTS
1. In your law, are patents available for all categories of products? In particular, are all
pharmaceutical products patentable? Are there any exceptions? If so please explain in detail what
these exceptions are and how they comply with Article 27 of the TRIPS Agreement.
No, under the Patents Act 2001, patents are not available for all categories of products.  Yes,
pharmaceutical products are patentable.
The Act in Section 9 subsection 2 excludes the following things from patentability:
(a) anything which consists of-
(i) a discovery, scientific theory or mathematical method;
(ii) a literary dramatic musical or artistic work or any other aesthetic creation
whatsoever;
(iii) a scheme, rule or method for performing a mental act, playing a game or
doing business, or a program for a computer;
(iv) the presentation of information; or
(b) anything which consists of diagnostic, therapeutic and surgical methods for the
treatment of humans or animals.
In addition, the Minister responsible for intellectual property may by order published in the Gazette,
vary the things excluded from patentability for the purposes of maintaining them in conformity with
developments in science and technology.
Follow-up question to responses to questions 2, 3 and 4:
You mention that the new Patent Act is currently in the draft stage.  Please explain what the
draft Act provides in relation to our questions 2, 3 and 4 and when the new regulation is supposed to
be adopted.
2. Does your law, in accordance with Article 27.1 in combination with Article 31 of the
TRIPS Agreement, consider importation as “wor king a patent” (and therefore preclude compulsory
licensing, if a product is being imported)?
Section 52 of the Patents Act 2001 relates to inventions relating to food or medicine or
surgical or curative devices and provides in its subsection 4 that a compulsory licence granted inrelation to this area may permit the licensee to import the patented product.
This only refers to inventions relating to food or medicine or surgical or curative devices and
does not appear to apply to other inventions.
                                                     
2 These responses supplement Saint Lucia's responses to Switzerland circulated in document
IP/C/W/237/Add.1.IP/C/W/237/Add.3
Page 6
3. Does your law make compulsory licenses subject to all the conditions enumerated in
Article 31 of the TRIPS Agreement? Please cite the relevant provisions of law.
Yes, the legislation does make provision for compulsory licences in Section 51 of the Act.
The conditions or grounds which need to be present in order for such a licence to be granted are statedin Section 51 subsection 2 of the Act.  These conditions include:
(a) that there is no production of the patented product or application of the patented
process in Saint Lucia without any legitimate reason;
(b) that there is no product produced in Saint Lucia under the patent for sale in Saint
Lucia or there are some but they are sold at unreasonably high prices or do not meet the
public demand without legitimate reason;
(c) that by reason of the refusal of the proprietor of the patent to grant a licence or
licences on reasonable terms-
(i) a market for the export of any patented product made in Saint Lucia is not
being supplied;
(ii) the working or efficient working in Saint Lucia of any other patented
invention which makes a substantial contribution to the art is prevented or hindered;
or
(iii) the establishment or development of commercial or industrial activities in
Saint Lucia is unfairly prejudiced; or
(d)  that by reason of conditions imposed by the proprietor of the patent on the grant of
licences under the patent, or on the disposal or use of the patented product or on the use of the
patented process, the manufacture, use or disposal of materials not protected by the patent, orthe establishment or development of commercial or industrial activities in Saint Lucia, is
unfairly prejudiced.
4. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation? Please cite the relevant provisions of law.
Yes the legislation does provide in section 64 of the Patents Act 2001 for the principle of the
reversal of the burden of proof in a process patent litigation.
UNITED STATES
3
E. P ATENTS
24. (Question 17, IP/C/W/215/Add.1) Please explain whether or not inventions within the
categories specified below are eligible to be patented under Saint Lucia's law if they are otherwise
novel, involve an inventive step, and are industrially applicable:
(a) process inventions which, in whole or in part, consist of steps that are performed by a
computer and are directed by a computer program;
(b) product inventions consisting of elements of a computer-implemented invention
including:
                                                     
3 These responses supplement Saint Lucia's response s to the United States circulated in documents
IP/C/W/237/Add.1 and Add.2.IP/C/W/237/Add.3
Page 7
(i) machine-readable computer program code stored on a tangible medium such
as a floppy disk, computer hard drive or computer memory;  or
(ii) a general purpose computer whose novelty over the prior art arises primarily
due to its combination with a specific computer program;
(c) process inventions that facilitate the conduct of business;(d) a micro-organisms.Section 9 (2) of the Patents Act 2001 lists the things which are not inventions for the purpose
of the Act and so cannot be patented.  These are:
anything which consists of a discovery, scientific theory or mathematical method;a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;a scheme, rule or method for performing a mental act, playing a game or doing business, or a
programme for a computer;
the presentation of information;
25. (Question 18, IP/C/W/215/Add.1) Please identify any exceptions to the rights conferred by a
patent in Saint Lucia and indicate the manner in which the law of Saint Lucia ensures that such
exceptions do not unreasonably conflict with a normal exploitation of the patent and do not
unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimateinterests of third parties.
The Act in section 57 identifies exceptions to the rights conferred by a patent by providing for
use of patented inventions for services of Government i.e. the doing of certain acts in Saint Lucia
without the consent of the proprietor of the patent, e.g. where the invention is a product, make, use,
import, obtain or keep the product, or sell or offer to sell it where to do so would be incidental or
ancillary to making, using, importing, obtaining or keeping it.
Section 57 (1) further provides that anything done by virtue of this section shall not amount to
an infringement of the product.  The Act goes on to define in Section 58 what "services of the
Government" referred to in section 57 relate to and states that it includes:
the supply of anything for foreign defence purposes
the production or supply of drugs and medicines required for the provision of pharmaceutical,
medical or dental services in any prescribed dispensary, hospital or other medicinal institution
maintained by or on behalf of the Government and any dispensary, hospital or medicalinstitution which the Minister may specify by notification in the Gazette.
Section 59 of the Act deals with the rights of third parties in respect of Government use.26. (Question 19, IP/C/W/215/Add.1) Please describe any provisions for compulsory licensing of
patents in Saint Lucia's law and explain how Saint Lucia ensures that each of the conditions in
Article 31 of the TRIPS Agreement is met in relation to any compulsory licences.  Please cite to the
relevant provisions of law.IP/C/W/237/Add.3
Page 8
Section 51 of the Patents Act 2001 makes provision for compulsory licences and lists in
subsection (2) the conditions/grounds which must be met before a compulsory licence can be granted.
27. (Question 20, IP/C/W/215/Add.1) Please indica te the number of compulsory licences issued
under Saint Lucia's patent law in each of the last five years.
The Patents Act 2001 is a new piece of legislation which has been passed and is not yet in
force.  Therefore there has been no administering of the legislation and consequently no compulsory
licences have been issued.
Whereas there existed a provision for compulsory licences under the Commercial Code, there
is no record of such licences being issued.
28. (Question 21, IP/C/W/215/Add.1) Article 33 of the TRIPS Agreement requires that patents
have a term of protection that does not end before a period of twenty years measured from the date of
filing.  Please describe the term of protection for patents available under Saint Lucia's patent law and
indicate if there is any variation in that term, based upon the area of technology to which the patent
relates.  If so, please indicate what the variations are and for what technologies and describe Saint
Lucia's plans to bring its law into compliance with Article 27.1, which prohibits discrimination in theenjoyment of patent rights based on the field of technology.
The term of protection as provided by section 32 of the Patents Act 2001 is twenty years.
There exists no variation in the term based upon the area of technology to which the patent relates.
29. (Question 22, IP/C/W/215/Add.1) Please verify t hat the terms of all patents in existence in
Saint Lucia on 1 January 2000, will not end before the expiration a period of twenty years measured
from the date of filing.
Section 110 (2) provides that existing patents expire on the day on which it would have
expired under the old law relating to patents.  Patents in existence in Saint Lucia before 1 January2000, comprise mainly United Kingdom registered patents and carry the same term of protection as
the UK patent i.e. 20 years.
30. Question 23, IP/C/W/215/Add.1) Please describe in detail the manner in which plant varieties
are protected under Saint Lucia's laws and cite to the relevant provisions.
Plant Varieties is to be protected by a separate piece of legislation viz: Plant Varieties Act.
This Act is to be passed by Parliament in the short term.
31. (Question 15, IP/C/W/240) Please describe in detail the way in which the patent law of Saint
Lucia implements Article 27 of the TRIPS Agreemen t, indicating any exceptions provided for, and
including details regarding the protection for micro-organisms and non-biological andmicrobiological processes and plant varieties.  Please cite to the relevant provisions of the law.
The Patents Act 2001 in section 9 provides certain exceptions with regard to inventions which
can be patented as detailed in Question 24 above.  As far as plant varieties this will be protected by
separate legislation.  The Patents Act 2001 does not make specific reference to micro-organisms andnon-biological processes and does not exempt these from patentability.
32. (Question 16, IP/C/W/240) Please describe in detail the rights provided patent holders under
the patent law of Saint Lucia and cite  to the relevant provisions of law.
The Patents Act 2001 provides that a patent is personal property and therefore any rights in or
under the patent which accrue to the patent holder can transferred, created or granted. These rights canIP/C/W/237/Add.3
Page 9
also be assigned or mortgaged. The patent holder can also grant licenses for the use of the patent to
persons.
33. (Question 17, IP/C/W/240) Please describe in detail any provisions in the laws of Saint Lucia
permitting unauthorized use of a patent, citing to the relevant provisions of law, and describe in detailthe conditions under which such use can occur.
Section 57 of the Patents Act 2001 provides for the use of patented inventions without the
consent of the proprietor of the patent for services of Government.  The provision is very specific as
to the conditions under which such use can be made e.g. where the invention is a product, make, use,
import, obtain or keep the product, or sell or offer to sell it where to do so would be incidental or
ancillary to making, using, importing, obtaining or keeping it; or in any event, sell or offer to sell it fordefence purposes or for the production or supply of  any drug and medicine, or dispose or offer to
dispose of it for any purpose whatever.
34. (Question 18, IP/C/W/240) What term of protection does the patent law of Saint Lucia
provide for patents?  Please describe any provisions for extension of the term of protection and cite tothe relevant provisions of the law.
The Patents Act 2001 provides a twenty (20) year term of protection for patents.  Section 32
of the Act provides for renewal at the expiration of the twenty (20) year period.
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