WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
ORGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects 
of Intellectual Property Rights IPIN!lITTO/P1l 
20 March 2000 
(00-1132) 
Original: English! 
anglaisl 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
TRINIDAD AND TOBAGO 
The present document reproduces the textl of the Patents Act 1996, as notified by Trinidad 
and Tobago under Article 63.2 of the Agreement (see documentIP/NllITTOII). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AV TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
TRINITE- ET-TOBAGO 
Le present document contient le texte1 de la Loi de 1996 sur les brevets, notifiee par la 
Trinite-et-Tobago au titre de l'article 63:2 de l'Accord (voir le document IP/NIlITTO/1). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL pARRAFO 2 
DEL ARTiCULO 63 DEL ACVERDO 
TRINIDAD Y TABAGO 
En el presente documento se reproduce el texto1 de la Ley de Patentes de 1996, notificado por 
Trinidad y Tabago en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el documento 
IP/NIlITTO/I ). 
1 In English only'/En anglais seulement.!En ingles solamente. IP/N/lITTO/P/l 
Page 2 
Legal Supplement Part A to the "Trinidad and Tobago Gazette", Vol. 35, 
No. 156, 6th August, 1996 . . 
First Session Fifth Parliament Republic of Trinidad 
and Tobago 
REPUBLIC OF TRINIDAD AND TOBAGO . 
Act No. 21 of 1996 
[L.S.] 
AN Acr to make provision in respect of future patents 
and applications for patents; for the protection of 
inventions, to give effect to certain international 
conventions on patents and for connected purposes. 
[Assented to 2nd August, 1996J 
ENAcrED by the Parliament of Trinidad and Tobago as Preamble 
follows:-THE PATENTS ACT, 1996 
Arrangement of Sections 
Section 
PART I 
PRELIMINARY 
1. Short title and commencement 
2. Interpretation 
PARTII 
THE INTELLECTUAL PROPERTY OFFICE 
3. Intellectual Property Office 
PART HI 
PATENTS· 
4. Administration of Patents; Information· Services 
5. Appointment of Examiners 
6. 'Restrictions on officers of Intellectual Property Office 
7. Exercise of discretionary power by Controller 
PART IV 
PATENTABILITY OF INVENTIONS 
8. Patentable inventions 
9. Novelty 
10. Inventive step 
11. Industrial application 
12. Exclusions from patentability 
PART V 
RIGHT TO APPLY FOR AND OBTAIN A PATENT 
13. Right to apply for patent 
14. Right to patent. 
15. invention made by an employee or pursuant to a commission 
16. Judicial assignment of patent application. or patent 
17. -Mention of inventor IP/N/1/TTO/PIl 
Page 3 IP/N/lITTO/P/1 
Page 4 
ii 
PART VI 
APPLICATIONS FOR PATENT 
18. Making of application 
19. Date of filing application 
20. Priority date 
21. Information on corresponding foreign applications 
22. Disclosure of matter, etc., between earlier and later 
application 
23 ... Examination as to form 
24 .. Search and substantive examination 
25. Refusal or grant of patent 
26. Amendment of application, time limit for grant, changes in 
patent 
27 .. Withdrawal of application 
28. Notification of grant and publication of specification 
PART VII 
PROVISIONS AS TO PATENTS AFTER GRANT 
29. Term of patent 
30. Annual Fees 
31. Surrender of patent or of claim 
PART VIII 
PROPERTY IN PATENT APPLICATIONS. AND PATENTS 
32. Nature of, and transactions in patents 
33. Co-ownership of patents and applications for patents 
PART IX 
REGISTER OF PATENTS, EVIDENCE OF REGISTER, DOCUMENTS, ETC. 
34. Register of patents 
35. Effect of registration, etc., on rights in patents 
36. Ipformation about and inspection of patent applications ~nd 
patents 
37. Correction of errors 
38. Rectification of register 
39. Evidence of register, documents, etc. iii 
PART X 
RIGHTS OF OWNER OF PATENTS 
40: Rights of owner of patent 
41. Prevention of indirect use of invention 
42. Limitation of effect of patent 
43. Exhaustion of rights 
44. Extent of protection 
PART XI 
VOLUNTARY AND NON-VOLUNTARY LICENCES 
45. Voluntary licences 
46. Non-Voluntary licences 
47. Exercise of powers on applications under section 46 
48. Use of Patented Invention for purposes of State 
PART XII 
INFRINGEMENT 
49. Infringement 
50. Action for infringement 
51. Restrictions on recovery of damages for infringement 
52. Relief for infringement of partially valid patent 
53. Certificate of contested validity of patent 
54. Proceedings for infringement by exclusive licensee 
55. Effect of non-registration on infringement proceedings 
56. Remedy for groundless threats of infringement proceedings 
57. Power of Court to make declaration as to non-infringement 
58. Right to continue use begun before date of filing or priority 
PART XIII 
REVOCATION OF PATENT 
59. Application for revocation of patent 
60. Grounds for revocation 
61. Examination of application for revoc~tion IP/N/1/TTO/P/1 
Page 5 IP/N/1/TTO/P/1 
Page 6 
iv 
PART XIV 
PUTTING VALIDITY IN ISSUE 
62. Circumstances in which validity of patent may be put in issue 
63. Amendment of patent in infringement or revocation 
proceedings 
PART XV 
UTILITY CERTIFICATES 
64. Provisions applicable to utility certificates 
65. Protection by utility certificate. 
66. Term of utility certificate 
67. Grounds for revocation 
68. Conversion of application 
69. Registration of utility certificates 
PART XVI 
INTERNATIONAL ARRANGEMENTS 
70. Notification as to convention countries 
71. Implementations of Patent Co-operation Treaty 
72. Judicial notice of certain treaties and instruments thereunder 
PART XVII 
OFFENCES 
73. Falsw.ca~i(;m of register, etc. 
74. Unauthorized claim of patent rights 
75. Unauthorized claim that patent has been applied for . . . 
76. Misuse of title "Intellectual Property Office" 
77. Offences by corporations 
78. Time limit for prosecution 
PART XVIII 
REPRESENTATION 
79. Representation v 
PART XIX 
LEGAL PROCEEDINGS 
-80. Appeal against order of Controller 
81. Right of appeal from order and decision of Court 
82. Burden of proof in certain cases 
83. Extension of privilege for certain communications with 
attorneys-at-law relating to patent proceedings 
84. Costs and security for costs 
PART XX 
GENERAL AND MISCELLANEOUS 
85. Immunity as regards official acts 
86. Service by post 
87. Controller's annual report 
88. Saving in respect of rights to sell forfeited articles 
89. Act binding on State 
90. Rules 
91. Repeal and Transitional Provisions, Ch. 82:83 IP/N/lITTO/PIl 
Page 7 IP/N/1/TTO/P/l 
Page 8 
Short title and 
commencement 
Interpretation PART I 
PRELIMINARY 
1. (1) This Act may be cited as the Patents Act, 1996. 
(2) This Act shall come into operation on such d~te 
as the President may appoint by Proclamation and 
different dates may be appointed for different Parts or 
sections of this 'Act. 
2. In this Act-
"appointed day" in any Part or section of this 
'Act, means the day appointed under 
section 1(2) for the coming into operation 
of that Part or section; 
"Controller" me'ans the Controller of the 
Intellectual Property Office appointed 
under section 3(2) and any reference to the 
Controller shall be construed as including 
a reference to any officer discharging the 
functions of the Controller; 
"Court" means the High Court; 
"date of filing" means--
(a) in relation to an application for a 
patent made under this Act, the 
date which is the date of filing that 
application under section 19; and 
(b) in relation to any oth?r 
application, the date which, under 
the law of the country ,where the 
application. was made or -in 
accordance with the terms of a 
.treaty or convention to which that 
country is a party, is to be treated 
as the date of filing the application 
or is equivalent to the date of filing 
an application in that country 
(regardless of the outcome of the 
application) by virtue of section 20; "Examiner" means any person or body 
appointed or designated as such by the 
Minister under section 5; 
"exclusive licence" means a licence from the 
proprietor of or applicant for a patent 
which confers on the licensee, or on the 
licensee and persons authorized by him, to 
the ~xclusion of all other persons 
(including the proprietor or the applicant), 
any right in respect of the invention to 
. which .~he patent or application relates 
and "exclusive .lic·ensee" and "non-. . 
exclusive licence" shall be construed 
accordingly; 
"formal requirements" means those 
requirements designated as such by rules 
made for the purposes of section 23; 
"Intellectual Property Office" means the 
Intellectual Property Office referred to in 
section 3(1); 
"international application for a patent" means 
an application made under the Patent Co­
operation Treaty; 
"International Bureau" means the secretariat 
of the World Intellectual Property Organi­
zation established by the convention signed 
at Stockholm on the 14th day of July, 1967; 
"invention" means an idea of an inventor 
which permits in practice the solution to a 
specific problem in the field of technology; 
"inventor" means the actual deviser of an 
invention and "joint inventor" shall be 
construed accordingly; 
"Minister" means the Minister to whom is 
assigned responsibility for patents; IPIN/1/TTO/P/1 
Page 9 IP/NIlITTO/PIl 
Page 10 
"Paris Convention" means the Paris Con­
vention for the Protection of Industrial 
Property signed in Paris on the 20th day of· 
March, 1883 as amended from time to time 
and as in force in Trinidad and Tobago; 
"patent" means the title granted to protect an 
invention and unless the context 
otherwise requires includes, subject to 
Part XV, a utility certificate; 
"patent application" means an application 
under this Act for a patent and unless the 
context otherwise requires includes, 
subject to Part XV,. a utility certificate 
application; 
"Patent Co-operation Treaty" means the treaty 
of that name signed at Washington on the· 
19th day of June, 1970; 
"patented invention" means an invention for 
which a patent is granted and "patented 
process" shall be construed· accordingly; 
"patented product" means a product which 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; 
"periodical" includes the Gazette, daily 
newspapers circulating in Trinidad and 
Tobago or other pUblication issued by the 
Intellectual Property Office; 
"prescribed" means, in the case of proceedings 
before the Court, prescribed by rules of 
Court, and, in any other case, prescribed 
by rules made under this Act; 
"priority date" means the date determined as 
such under section 20; "published" means made available to the 
public and a document shall be taken to be 
published if a reproduction thereof can be 
inspected as of right by members of the 
public whether on payment of a fee or not; 
"register" means the register of patents 
referred to in section 34; 
"right" in relation to any patent application or 
patent includes an interest in the patent 
application or patent and, without 
prejudice to the foregoing, any reference in 
this Act to a right in a patent includes a 
reference to a share in the patent; 
"utility certificate", unless the context 
otherwise requires, means a utility 
certificate under Part XV. 
PART II 
INTELLECTUAL PROPERTY OFFICE IPlNllITTO/P!1 
Page 11 
3. (1) There shall be an office to be known as the Intellectual property 
Intellectual Property Office. office 
(2) There shall be a Controller in charge of the Controller and his 
Intellectual Property Office wh~ shall have the staff 
responsibility for the administration of all laws relating 
to intellectual property, and who shall exercise the 
powers and perform the functions conferred by and 
under this Act, and by and under any law. 
(3) There shall be appointed such number of 
Deputy or Assistant Controllers and other officers as 
are considered necessary. 
(4) The offices of the Controller, Deputy Controller 
and Assistant Controller are prescribed as public offices 
for the purposes of section 111(4) of the Constitution. 
(5) The Controller shall have a seal of such device 
as may be approved by the Minister and impressions of 
such seal shall be judicially noticed and admitted in 
evidence. 
(6) The Minister may issue to the Controller 
directions in writing, not inconsistent with the 
provisions of this Act, concerning the exercise and IP/N/1/TTO/PIl 
Page 12 
performance of his powers and functions in relation to 
any matter which appears to the Minister to concern 
the development of intellectual property and other 
matters connected therewith and the Controller shall 
give effect to any such direction. 
(7) Subject to the provisions of this Act, the 
officers appointed under subsection (3) shall discharge 
1:inder the superintendence and direction of the 
Controller such functions under this Act as he. may 
from time to time by general or special order in writing 
direct them to discharge. 
PART III 
PATENTS 
Administration of 4. (1) For the purposes of this Act the Controller 
patents; Information • ' • • 
Services shall be responslble for the grant and admimstratIOn of 
Appointment of 
Examiners pate:q.ts and utility certificates, for the provision of 
patent information services, and for the promotion of 
inventiveness among citizens of Trinidad and Tobago. 
(2) The patent information services referred to in 
subsection (1) shall consist of the making available, in 
the m;:mner prescribed for use by the public, and on 
payment of the prescribed fees, if any, of patent and 
relevant non-patent literature, including all domestic 
patent documents and such foreign patent docu:in~nts 
as are available. 
5. The Minister may appoint or designate such 
Examiners as may be necessary for exercising the \ 
powers conferred and performing the functions 
required by or under this Act. 
Restrictions on 6. (1) No patent application may be filed by, no 
officers of • • 
IntellectualProperty patent may be granted to, and no nghts relatIng to 
Office patents may be held by officers and other employees of 
the Intellectual Property Office. 
(2) No officer or other employee of the Intellectual 
Property Office shall, during his period of employment 
or thereafter, communicate information obtained as such officer or employee to a person not entitled to the 
information or make other use of such information for 
personal gain. 
(3) An officer or other employee of the Intellectual 
Property Office who contravenes subsection (2) shall be 
liable on summary conviction to a fine of fifteen 
thousand dollars and to imprisonment for six months. IPINI1/TTO/PIl 
Page 13 
7. Where any discretionary power is by or under thisE?,erci~eor 
A· hell h h 11 . h dIscretIOnary power ct gIven to t e ontro er, e s a not exerCIse t at by Controller 
power adversely to any party in proceedings before him 
without giving that party an opportunity of being heard 
as regards such exercise. 
PART IV 
. PATENTABILITY OF INVENTIONS 
. 8. Subject to section 12, a patent may be granted onlyPatent:'ble 
for an invention in respect of which the following InventIOns 
conditions are satisfied, that is to say-. 
(a) the invention is new; 
(b) it involves an inventive step; 
(c) it is capable of industrial application, 
and references in this Act to a patentable invention 
shall be construed accordingly. 
9. (1) An invention shall be taken to be new if it does Novelty 
not form part of the state of the art. 
(2) The state of the art in the case of an invention 
to which an application for a patent or a patent relates 
shall be taken to comprise all matter (whether a 
product, a process, information about either, or 
anything else) which has at any time before the priority 
date of that invention been made available to the public 
(whether in Trinidad and Tobago or elsewhere) by 
written or oral description, by use or in any other way. 
(3) For the purposes of this section, the 
disclosure of matter constituting an invention under 
subsection (2) shall not be taken into consideration if 
such disclosure occurred not more than one year 
immediately preceding the date of filing the patent IPIN/lITTO/P!1 
Page 14 
Inventive step 
Industrial 
application 
Exclusions from 
patentability application and the disclosure was due to or in 
consequence of-
(a) acts committed by the applicant or his 
predecessor in title; or 
(b) an abuse committed by a third party with 
regard to the applicant or his predecessor 
in title. 
(4) In the case of an invention consisting of a 
substance or composition for use in a method of 
treatment of the human or animal body by surgery or 
therapy or of diagnosis practised on the human or 
animal body, the fact that the substance or composition 
forms part of the state of the art shall not prevent the 
invention from being taken to be new if the use of the 
substance or composition in any such method does not 
form part of the state of the art. 
10. An invention shall be taken to involve an 
inventive step if, having regard to the state of the art 
within the meaning of section 9(2), it is not obvious to a 
person having ordinary skill in the art. 
11. 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. 
12. (1) It is hereby declared that the following are 
excluded from patentability that is to say, anything 
which consists of-
(a) a discovery, scientific theory or 
mathematical method; 
(b) a literary, dramatic, musical or artistic 
work or any other aesthetic creation 
whatsoever; 
(e) a scheme, rule or method for performing a 
mental act, playing a game or doing business; 
(d) diagnostic, therapeutic and surgical 
methods for the treatment of humans or 
animals; 
(e) the presentation of information. 
(2) A patent shall not be granted for an invention 
the commercial exploitation of which would be contrary to public order or morality, or which is prejudicial to 
human, animal or plant life or health, or to the 
environment, provided that such refusal is not based 
solely on the ground that the commercial exploitation is 
prohibited by a law in force in Trinidad and Tobago. 
PART V 
RIGHT TO APPLY FOR AND OBTAIN A PATENT IPIN/1/TTO/P/1 
Page 15 
13. Any person may make an application for a patent Right to apply for 
either alone or jointly with another. patent 
14. (1) A patent for an invention may be granted- RighttopBtent. 
(a) primarily to the inventor or joint inventors; 
(b) to the successor or successors in title of 
any person or persons mentioned in 
paragraph (a), 
and to no other person. 
(2) Subject to section 15, a person who makes an 
application for a patent shall be taken to be the person 
who is entitled under subsection (1) to be granted a patent 
and two or more persons who make such an application 
jointly shall be taken to be the persons so entitled. 
(3) Where ·two or more persons have made the 
same invention independently of each other, the person 
whose application has the earliest filing date or, if 
priority is claimed, the earliest validly claimed priority 
date shall have the right to the patent as long as the said 
application is not withdrawn, abandoned or rejected. 
15. (1) In the absence of any provisions to the Invention made by . f hU~~W contrary In any contract 0 employment or for t e pursuant to a 
execution of work, the right to a patent for an invention commission 
made in the performance of such contract of employ-
ment or in the execution of such work shall, notwith-
standing section 14, be deemed to accrue to the employer, 
or the person who commissioned the work, as the case 
maybe. 
(2) Where an invention referred to in sub­
section (1) acquires an economic value much greater 
than the parties could reasonably have foreseen at IP/N/1/TTO/PIl 
Page 16 
the time of concluding the contract of employment or 
for the execution of work, as the case may be, the 
inventor shall be entitled to equitable remuneration 
which may be fixed by the Court in the absence of 
agreement between the parties. 
(3) Where an employee whose contract of 
employment does not require him to engage in any 
inventive activity makes, in the field of activities of his 
employer, an invention using data or means placed at 
'his disposal by his employer, the right to the patent for 
such invention shall be deemed to accrue to the 
employer, in the absence of any provision to the 
contrary in the contract of employment, provided that 
the employee shall be entitled to equitable 
remuneration which, in the absence of agreement 
between the parties, may be fixed by the Court taking 
into account his emoluments, the economic value of the 
invention and any benefit derived from it by the 
employer. 
(4) For the avoidance of doubt, it is hereby 
declared that when an invention is made by an 
employee whose contract of employment does not 
require him to engage in inventive activity, or in a field 
of attivity different to that of his employer and without 
usirig information or means put at his disposal by the 
employer, 'the right to the patent for such invention 
shall accrue to the employee. 
(5) The rights conferred on the inventor under 
subsections (1), (2), (3) and (4) shall not be restricted by 
contract. 
(6) This section shall not apply to an invention 
made before the appointed day. 
Judicial assignment 16. (1) Where the essential elements of the invention 
of patent application l' d' l' . b or patent C alme In a patent app lcatlOn or patent have een 
unlawfully derived from an invention for which the 
right to the patent belongs to another person, such 
other person may apply to the Court for an' order that 
the said patent application or patent be assigned to him. 
(2) The Court upon receipt of such application 
may make such order as it sees fit. (3) No application for the assignment of a patent 
under subsection (1) shall be entertained by the Court 
after the expiry of five years from the date of the grant 
of the patent, unless it is shown that any person 
registered as a proprietor of the patent knew at the 
time of the grant or, as the case may be, of the transfer 
of the patent to him, that he was not entitled to the 
patent. IP/N/1/TTO/PIl 
Page 17 
17. (1) The inventor or joint inventors of an Mention of inventor 
invention shall have a right to be mentioned as such in 
any patent granted for the invention unless in a 
written declaration addressed to the Controller he 
indicates or in the case of joint inventors, they indicate 
a wish not to be named. 
(2) Any promise or undertaking by the inventor 
made to any person to the effect that he will make such 
a declaration shall be void. 
PART VI 
APPLICATIONS FOR PATENT 
18. (1) Every application for a patent shall be madeMak!ng~f 
in the prescribed form, and shall be filed at the apphcatlon 
Intellectual Property Office in the prescribed manner 
under this Act. Such an· application shall be 
accompanied by the prescribed filing fee. 
(2) Every application for a patent shall contain­
(a) a request for the grant of a patent; 
(b) a .specification containing a description of 
the invention, a claim or claims and any 
drawings referred to in the description or 
any claim; 
(e) an abstract; 
(d) where the applicant's ordinary residence or 
principal place of business is outside of 
Trinidad and Tobago, an address within 
Trinidad and Tobago for service; and 
(e) where the applicant is not the sole inventor 
or the applicants are not the joint 
inventors, a statement justifying his or 
their right to be granted the patent. IP/N/1/TTO/P/1 
Page 18 
Date of filing 
appliC!ltion (3) The specification of an application shall 
disclose the invention in a manner which is clear and 
complete enough for the invention to be performed by a 
person skilled in the art, and shall, in particular, 
indicate at least one mode known to the applicant for 
carrying out the invention. 
(4) The claim or claims shall-
(a) define the matter for which the applicant 
seeks protection; 
(b) be clear and concise; 
(c) be supported by the description; and 
(d) relate to one invention or to a group of 
inventions which are so linked as to form a 
single general inventive concept. 
(5) The purpose of the abstract is to give 
technical information and, upon publication, it shall not 
form part of the state of the art by virtue of section 9(2), 
and tpe Controller may determine whether the abstract 
adequately fulfills its purpose and, if it does not, may 
reframe it so that it does. 
(6) Without prejudice to the provisions of 
subsections (3) and (4), rules may be made prescribing 
the circumstances in which the specification of an 
application which requires for its performance the use 
of a micro-organism is to be treated for the purposes of 
this Act as complying with subsection (3). 
19. (1) The date of filing an application for a patent 
shall, subject to the provisions of this section, be the 
earliest date on which the following conditions are 
satisfied in relation to the application, that is to say-
(a) the documents filed contain an indication 
that a patent is sought in pursuance of the 
application; 
(b) those documents identify the applicant or 
applicants for the patent; 
(c) those documents 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 relevant rules. (2) If the Controller finds that the application 
does not comply with subsection (1) he shall invite the 
applicant to file the required correction, and shall 
accord as the filing date the date of receipt of the 
required correction, but if no correction is made, the 
application shall be treated as if it had not been filed. 
(3) Where the application refers to drawings 
which in fact are not included in the application, the 
Controller shall invite the applicant to furnish the 
missing drawings, and if the applicant complies, the 
Controller shall accord as the filing date the date of 
receipt of the missing drawings. If the applicant does 
not comply,. the Controller shall accord as the filing 
date the date of receipt of the application and shall 
treat any reference to the said drawings as non­
existent. 
(4) (a) The applicant may, up to the time when the 
application is in order for grant, divide the 
application into two or more applications 
("divisional applications"), provided that 
each divisional application shall not go 
beyond the disclosure in the initial 
application; 
(b) Each divisional application shall be 
entitled to the filing date and, where 
applicable, the priority date of the initial 
application. 
(5) The fact that a patent has been granted on an 
application that -did not comply with the requirement of 
unity of invention under section 18(4)(d) shall not be a 
ground for the invalidation of the patent. IP/N/1/TTO/P/1 
Page 19 
20. (1) A patent application may contain aPrioritydate 
declaration claiming priority of one or more earlier 
applications filed by the applicant or his predecessor in 
title in a country that is a party to the Paris 
Convention. 
(2) Where the application contains a declaration 
under subsection (1), the Controller may require that 
the applicant furnish within the prescribed time a copy 
of the earlier application certified as correct by the IPIN/lITTO/P!l 
Page 20 
Information on 
corresponding 
fO,reign applications office with which it was filed, or where the earlier 
application is an international application filed under 
the Patent Co-operation Treaty, by the office with 
which the international application was filed, and if the 
earlier application is not in English, a translation 
thereof in, English verified by the translator that the 
translation is to the best of his knowledge complete and 
faithful. 
(3) The effect of the declaration referred to in 
subsection (1) shall be as provided in the Convention 
referred to therein. 
(4) Where any of the requirements of thissection 
or any rules pertaining thereto have not been complied 
with, the declaration referred to in subsection (1) shall 
be deemed to be invalid. 
21. (l) The applicant shall, at the request of the, 
Controller, furnish the Controller with the date and 
number of any other 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 or intellectual property office 
(hereafter in this section referred to as a "foreign 
application"), relating to the same or essentially the 
same invention as that claimed in the application filed 
with the Controller. 
(2) The applicant shall upon request furnish the 
Controller 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; 
(0) 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 (2). 
(3) Documents furnished pursuant to sub~ 
se,ctions (1) and (2)-
(a) shall, if not in English, be accompanied by 
a translation thereof in English verified by 
the translator that the translation is to the 
best of his knowledge complete and 
faithful; and 
(6) may be used only for facilitating the 
evaluation of the novelty and inventive 
step of the invention for which the patent 
application is made. 
(4) The applicant for a patent may submit 
comments on any documents furnished by him under 
subsections (1) and (2). IP/N/l/TTO/P/1 
Page 21 
22. Where an a pplica tion is made for a patent under Disclosure of matter, . 19 d d I . . d· d . h ete" between earlier sectIOn an a ec arabon IS ma e In accor ance WIt and later 
section 20(2) in or in connection with that application applications 
specifying an earlier application, the first-mentioned 
application and any patent granted in pursuance 
thereof shall not be invalidated by reason only of the 
fact that any subject matter disclosed in the earlier 
application was made available to the public at any 
time after the date of filing of the said earlier 
application. 
23. (1) Where an application for a patent has a date Examination as to 
of filing and is not withdrawn, upon the payment by the form 
applicant of the prescribed fee, the Controller shall 
conduct a formalities examination. IP/N/lITTO/P!1 
Page 22 
Search and 
substantive 
examination 
Refusal or grant of 
patent (2) On such formalities examination the 
Controller shall determine whether the application 
complies with the provisions of this Act and rules made 
thereunder relating to such examination. 
(3) If the Controller determines that all the 
formal requirements have not been complied with,he 
shall give the applicant an opportunity to make 
observations on the report and to amend the 
application within a specified period so as to comply 
with those requirements and if the applicant fails to do 
so the Controller may refuse the application. 
(4) If the Controller refuses the application 
under subsection (3), he shall inform the applicant in 
writing of his decision and the reason therefor. 
24. (1) Where the Controller is of the opinion that 
the application complies with the requirements of 
section 23 he shall, upon payment by the applicant of 
the prescribed fee, cause the application to be examined 
as to whether there has been compliance with the 
requirements of sections 8 to 12 and 18(3) and (4) and 
the rules relating thereto. 
(2) For the purposes of the examination under 
this section the Controller may transmit the 
application to a duly authorized authority with which 
an arrangement to that effect has been made. 
25. (1) If the Controller determines that any of the 
requirements of this Act or the rul~~ made thereunder 
are not complied with, he shall so inform the applicant 
and shall give him an opportunity within a specified 
period to make observations on the determination and, 
subject to section 26(2), to amend the application so as 
to comply with those requirements, and if the applicant 
fails either to satisfy the Controller that the said 
requirements are complied with, or to amend the 
application so as to comply with them, the Controller 
shall, subject to section 7, refuse the application. (2) If the Controller determines that the 
application, whether as originally filed or as amended 
in pursuance of section 23, this section, or section 26, 
complies with the requirements of this Act and the 
relevant rules made thereunder, he shall notify the 
applicant of that fact and on payment within the 
prescribed period of the fee prescribed for the grant, 
grant him a patent, and if the said fee is not so paid, 
the application shall be deemed to be withdrawn. 
(3) . Where two or more patent applications for the 
same invention, having the same dale of filing or the 
same date of priority, are filed by the same applicant or 
his successor-in-title, the Controller may on that 
ground refuse to grant a patent in pursuance of more 
than one of the applications. 
(4) If the Controller refuses the application 
under subsection (1) or (3), he shall inform the 
applicant in writing of his decision and of the reasons 
for his decision. 
(5) The patent shall be deemed to be granted on 
the date the Controller publishes under section 28(1) a 
notice of the grant of the patent. IP/N/1/TTO/P!1 
Page 23 
26. (1) At any time before a patent is granted underAmendmentof . . . application; time this Act, the apphcant may, In accordance with the limit for grant; 
·b d d·t· d b· t t b t· (2) changesinpatents prescrl e con 1 IOns an su Jec 0 su sec IOn , 
amend the application of his own volition. 
(2) No amendment of an application shall be 
allowed under section 23(3) or 25(1) or this section if 
such amendment extends the matter disclosed in the 
application as filed. 
(3) The Controller shall, whenever possible, 
reach a final decision on the application not later than 
two years after the commencement of the examination 
referred to in section 24. IPIN/1ITTO/PI1 
Page 24 
Withdrawal of 
application 
Notification of grant 
and publication of 
specification 
Term of patent (4) The Controller shall, upon request of the 
owner of the patent, make changes in the text or 
drawings of the patent in order to limit the extent of 
the protection conferred thereby, provided that the 
change would not result in the disclosure contained in 
the patent going beyond the disclosure contained in the 
initial application on the basis of which the patent was 
granted. 
27. At any time before a patent is granted under this 
Act, the applicant may in the prescribed manner, 
withdraw his application and any such withdrawal may 
not be revoked. 
28. (1) The Controller shall as soon as practicable 
after a patent has been granted under section 25(2) 
publish,a notice of the grant in a periodical. 
(2) At the same time as the publication under 
subsection (1) of the notice of a grant, the Controller 
shall publish in the prescribed manner particulars of 
the patent and also such matters and information as 
appeared to him to be useful or important. 
(3) The Controller shall, as soon as practicable 
after he publishes a notice under .subsection (1), issue 
to the proprietor of the patent a certificate, in the 
prescribed form, that the patent has been granted to 
him,. and a copy of the patent. 
PART VII 
PROVISIONS AS TO PATENTS AFTER GRANT 
29. A patent granted under this Act shall take effect 
. on the date on which notice of its grant is published in 
a periodical and, subject to this Act, shall continue in 
force until the end of the period of twenty years 
beginning with the date of filing of the application for 
the patent. IP/N/lITTO/PIl 
Page 25 
30. (1) In order to maintain the patent or patent Annual fees 
application, an annual maintenance fee shall be paid in 
advance to the Controller for each year, starting one 
year after the date of filing the application for grant of 
the patent. A period of grace of six months shall be 
allowed for the late payment of the annual 
maintenance fee on payment of the prescribed 
surcharge. If an annual maintenance fee is not paid in 
accordance with this subsection, the patent application 
shall be deemed to have been withdrawn or the patent 
shall lapse. 
(2) If a patent ceases to have effect under 
subsection (1), the lapse of the patent shall be entered 
in the register and published in a periodical. 
31. (1) The proprietor of a patent may at any time by Surrend.er of patent 
notice given to the Controller in the prescribed manner or of claIm 
offer to surrender his patent or one or more claims 
contained in his patent. 
(2) Where an offer is made under this section, 
the Controller shall advertise the offer in the 
prescribed manner and any person interested may, 
within the prescribed period commencing on the date of 
the publication of the advertisement, give notice to the 
Controller of his opposition to the proposed surrender. 
(3) Where notice of opposition is duly given 
under this' section the Controller shall notify the 
proprietor of the patent and determine the question. 
(4) If the Controller is satisfied that the patent or 
any claim or claims contained in the patent may 
properly be surrendered, he may accept the offer, and 
record his acceptance in the register, and shall, as soon 
as practicable, publish notice of his acceptance in a 
periodical. 
(5) As from the date when notice of acceptance is 
published in a periodical under subsection (4), the 
patent or claim or claims shall cease to have effect, but IPINI1 ITTO/PIl 
Page 26 
Nature of and 
transactions in 
patents no action for infringement shall lie in respect of any act 
done before that date and no right to compensation 
shall accrue for any use of the patented invention 
before that date for purposes of State. 
(6) Where a patent has been granted to two or 
more persons, a notice in accordance with sub­
section (1) shall be signed by each of these persons. 
PART VIII 
PROPERTY IN PATENT APPLICATIONS AND PATENTS 
32. (1) Any patent or application for a patent is 
personal property (without being a thing in action), and 
any patent or any such application and right~ in or 
under it may be transferred, created or granted in 
accordance with subsections (2) to (6). . . , 
(2) Subject to section 33(3), any patent or any 
such application, or any right in it, may be assigned or 
mortgaged. 
(3) Any patent or any such application or right 
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) Subject to section 33(3), a licence may be 
granted under any patent or any such application for 
working the invention which is the subject of the patent 
or the application, and-
(a) to the extent that the licence so provides, a 
sub-licence may be granted under any such 
licence and any such licence or sub-licence 
may be assigned or mortgaged; and 
(b) any such licence or sub-licence shall vest 
by operation of law in the same way as any 
other personal property and may be vested 
by an assent of personal representative. say-(5) Any of the following transactions, that is to 
(a) any assignment or mortgage of a patent or 
any such application, or any right in a 
patent or any such application; 
(b) any assent relating to any patent or any 
such application or right, 
shall be void unless it is in writing and is signed by or 
on behalf of the parties to the transaction (or, in the 
case of an assent or other transaction by a personal 
representative, by or on behalf of the personal 
representative)- or in the case of a body corporate is so 
signed or is uIlder the seal of that body. ' 
(6) An assignment of a patent or any such 
application or a share in it, and an exclusive licence 
granted under any patent or any such application, may 
confer on the assignee or licensee the right of the 
assignor or licensor to bring proceedings by virtue of 
section 50 for a previous infringement. IPINIlITTO/PI1 
Page 27 
33. (1) Where a patent is granted to two or more Co-ownership of 
persons, each of them shall, subject to any agreement~;~~~t~~~for 
to the contrary, be entitled to an equal undivided share patents 
in the patent. 
(2) Subject to the provisions of this section, 
where two or more persons are proprietors of a patent, 
then, subject to any agreement for the time being in 
force, each of those persons shall be separately entitled, 
by himself or his agents, in respect of the invention 
concerned, for his own benefit and without accounting 
to the other or others-
(a) to do any act which would, apart from this 
subsection, amount to an infringement of 
the patent concerned and any such act 
shall not amount to an infringement of that 
patent; or IP/N/lITTO/P/1 
Page 28 
(b) to bring civil proceedings for infringement 
of the patent pursuant to section 50. 
(3) Subject to any agreement for the time being 
in force, where two or more persons are proprietors of a 
patent, one of them shall not, without the consent of 
the other or others, grant a licence under the patent or 
assign or mortgage a share in the patent. 
(4) Subject to the provisions' of this section, 
where two or more persons are proprietors of apatent~ 
anyone else may supply one of those persons with the 
means, relating to an essential element of the 
invention, for putting the invention into effect, and the 
supply of those means by virtue of this subsection shall 
not amount to an infringement of the patent. 
(5) Where a patented product is disposed of by 
any of two or more proprietors to any person, -that 
person 'and any other person claiming through him 
shall be entitled to deal with the product in the same 
way as if it had been disposed of by a sole registered 
proprietor. 
(6) Nothing in subsection (1) or (2) shall affect 
the mutual rights or obligations of trustees or of the 
personal representatives of a deceased person, or their 
rights or obligations as such. 
(7) The foregoing provisions of this section shall 
have effect in relation to an application for a patent 
which is filed as they have effect in relation to a patent 
and-
(a) references to a patent and a patent being 
granted shall accordingly include 
references respectively to any such 
application and to the application being 
filed; and 
(b) the reference in subsection (5) to a 
patented product shall be construed 
accordingly. PART IX 
REGISTER OF PATENTS, EVIDENCE OF REGISTER, 
DOCUMENTS, ETC. IP/N/IITTO/P!1 
Page 29 
34. (1) There shall be kept and maintained by the Register of patents 
Controller at the Iritellectual Property Office a register 
of patents in which there shall be entered particulars of 
patents in force, of assignments and transmissions of 
patents and of licences under patents and notice or.~ll 
matters which are required by or under this Act to be 
entered in the register and of such other matters 
affecting the validity of proprietorship of patent as may 
be prescribed l:>Y rules. 
(2) Without prejudice to subsection (1) or' any 
other provision of this Act, rUle~ may make provisions 
with respect to the following matters including 
provisions imposing requirements as to any of those 
matters: 
(a) the registration of patents and. of 
applications for patents; 
(b) the . registration of transactions, 
instruments or events affecting rights in 
or under patents and applications; 
(c) the furnishing to the Controller of any 
prescr~bed documents or description of 
documen ts in connection with any 
matter which is re.quired to be 
registered; 
(d) the' correction of errors ~n the register 
and in any documents 'filed at the 
Intellectual Property Office In 
connection with registration; 
(e) the publication and advertisement of 
anything done under this Act or rules in 
relation to the register. IP/N/lITTOIPIl 
Page 30 
(3) Notwithstanding anything in subsection (2)(b), 
,no notice of any trust, whether express, implied or 
constructive, shall be entered in the register and the 
Controller shall not be affected by any such notice. 
(4) The register need not be kept in documentary, 
form. 
(5) Save' as otherwise provided by rules,-the 
public shall have a right' to inspect the register at the 
Intellectual Property Office at all convenient times. 
(6) Any person who applies for a certified copy of 
an entry in the register or a certified extract from' the 
register shall be entitled to obtain such a copy or 
extract on payment of a fee prescribed in relation to 
certified copies and extracts, and rules may provide 
that any person who applies for an uncerlified copy or 
extract shall be entitled to such a copy or extract on 
payment of a fee prescribed in relation to uncertified 
copies and extracts. 
(7) Applications under subsection (6) or rules 
made by virtue of that subsection shall be made in such 
manner as may be prescribed. 
(8) In relation to any portion of the register kept 
otherwise than in documentary form-
(a) the right of inspection conferred by sub­
section (5) is, save as otherwise provided by 
rules, a right to inspect the material on the 
register; and 
(b) the right to a copy or extract conferred by 
subsection (6) or by rules is a right to a 
copy or extract in a form in which it can be 
taken away and in which it is visible and 
legible. IP/N/1/TTO/P/1 
Page 31 
35. (1) Any person who claims to have acquired the Effect of registration, 
property in a patent or application for a patent by:~~~~rightsin 
virtue of any transaction, instrument or event to which 
this section applies shall be entitled as against any 
other person who claims to have acquired that property 
by virtue of an earlier transaction, instrument or event 
to which this section applies if, at the time of the later 
transaction, instrument or event-
(a) the earlier transaction, instrument or event 
was not registered, or 
(b) in the case of any application, notice of the 
earlier transaction, instrument or event 
had not been given to the Controller, and 
(c) in any case, the person claiming under the 
later transaction, instrument or event, did 
not know of the earlier transaction, 
instrument or event. 
(2) Subsection (1) shall apply equally to the case 
where any person claims to have acquired any right in 
or under a patent or application for a patent, by virtue 
of a transaction, instrument or event to which this 
section applies, and that right is incompatible with any 
such right acquired by virtue of an earlier transaction, 
instrument or event to which this section applies. 
(3) This section applies to the following 
transactions, instruments and event&-
(a) the assignment of a patent or application 
for a patent, or a right in it; 
(b) the mortgage of a patent or application or 
the granting of security over it; 
(c) the grant, assignment of a licence or sub­
licence, or mortgage of a licence or sub­
licence, under a patent or application; IPINIlITTO/PI1 
Page 32 
Information about 
and inspection of 
patent applications 
and patents (d) the death of the proprietor or one of the 
proprietors of any such patent .or 
application or of any person having a right 
in or under a patent or application and the 
vesting by an assent of the personal 
representative of a patent, application or . 
any such right; and 
(e) any order or directions of a court or other 
competent authority-
(i) trarisferring a patent or 
application' or any right in or 
'under it to any person; or 
(ii) that a~ application should proceed 
in the name of any person, 
and in either case the event by virtue of 
which the 'court or authority had power to 
make any such order or give any such 
directions. 
(4) Where an application for the registration of 
a transaction, instrument or event has been .made, 
but the transaction, instrument or event has not 
been registered,·then, for the purposes of subse~tion 
(l)(a), registration of the application shall be treated 
as registration of the transaction, instrument or 
event. 
36. (1) The Controller shall, oh a request being made 
to him in the prescribed manner and on payment of the' 
prescribed fee, if any, give the person making the 
request such information as may be prescribed. 
(2) Subject to subsection (4), until a patent is 
granted documents or information constituting or 
relating to the application shall not, without the 
written consent of the applicant, be published or 
communicated to any person by the Controller. . (3) Where. a patent application has been 
withdrawn in accordance with section 27, documents or 
information constituting or relating to the application 
shall not, without the written consent of the applicant, 
be published or communicated to any person by the 
Controller. 
(4) Subsection (2) shall not prevent the 
Controller from publishing or communicating to others 
any prescribed bibliographic information about an 
unpublished patent application. IP/N/1/TTO/PIl 
Page 33 
37 .. (1) The Controller may, in accordance with theQlrmtionoferrors 
provisions of this section, correct any lingqistic error, 
error of transcription, clerical error or mistake in any 
specification of a patent, any application for a patent, 
or any document filed in pursuance of such an 
application, or any error in the register. 
(2) A correction may be made in pursuance of 
this section either upon a request made in the 
prescribed manner and accompanied by the prescribed 
fee, or Without such a request. 
(3) Where the Controller proposes, or a request is 
made, to make a correction referred to in subsection (1), 
he shall befo.re determining the matter give notice of 
the proposal to the proprietor of or applicant for the 
patent, 'as the case may be, and to any person, other 
than the person by whom the request is made, who 
appears to him to be concerned. 
38. (1) The Court may, on the application of a person Rec.ti~cation.of 
aggrieved, order the register to be rectified by the regIs r 
making, or the variation or deletion of any entry in it. 
(2) In proceedings under this section the Court 
may determine any question which it may be necessary 
or expedient to decide in connection with the 
rectification of the register. IP/N/1/TTO/P/1 
Page 34 
Evidence of register 
documents, etc, (3) Rules of Court may provide for the 
notification of any application under th,is section to the 
Controller and for his appearance on the application 
and for giving effect to any order of the Court -on the 
application. 
39. (1) The register shall be prima facie evidence of 
anything required or authorized by this Act or rules to 
be registered and shall be admissible and suffiCient 
. evidence of any such thing. 
(2) A certificate purporting to be signed by the 
Controller and certifying that any entry which he is 
authorized by this Act or rules to make has or has not 
been:made, or that any other thing which he is so 
authorized to do has or has not been done, shall be 
prima facie evidence, and shall be admissible and 
sufficient, evidence, of the matters so certified. 
(3) Each of the following, that is to say: 
(a) a copy of an entry in the register or an. 
extract from the register which is supplied 
under section 34(6); 
(b) a copy of any document kept in the 
Intellectual Property Office, or an extract 
from any such document, any specification 
of patent drawings or other matter which 
has been published under section 28(2), 
which purports to be a certified copy or a certified 
extract shall be admitted in evidence without further 
proof and without production of the original, and such 
evidence shall be sufficient evidence of the matter 
therein stated.' 
(4) In this Part "certified copy" and "certified 
extract" means a copy and extract certified by the 
Controller and sealed with the seal of the Intellectual 
Property Office. PART X 
RIGHTS OF OWNER OF PATENT IP/N/lITTO/P!1 
Page 35 
40. (1) Subject to the other provisions of this Part, Rights of owner of 
the owner of a patent shall have the following exclusive patent· 
rights in relation to the patent: 
(a) to exploit the patented invention; 
(b) to assign or transmit the patent; 
(c) to conclude licence contracts. 
(2) The owner of the patent shall have the right,· 
subject to sections 43, 46 and 58, to take' action against 
any person exploiting the patented invention "in 
Trinidad and Tobago without his agreement .. 
(3) For the purposes of this Part, "to exploit"'or 
"exploiting" a patented invention means any of the 
following acts in relation to the patent: 
(a) when the patent has been granted in 
respect of a product-
(i) making, importing, offering for 
sale, selling or using the product; 
(ii) stocking such product for the 
purposes of offering for sale, 
selling or using; 
(b) when the patent has been granted in 
respect of a process-
(i) using the process; 
(ii) doing any of the acts referred to in 
paragraph (a), in respect of a 
product obtained directly by 
means of the process. 
41. (1) While in force a patent shall confer on its Prevention of 
indirect use of proprietor the right to prevent all persons not having invention 
his consent from supplying or offering to supply in IP/N/lITTO/P/1 
Page 36 
Trinidad and Tobago a person (other than a person 
entitled to engage in commercial working of the 
patented invention) with means relating to an essential 
element of that invention, for putting it into effect 
therein, provided that that person knows, or it is 
obvious to a reasonable person in the circumstances 
that those means are suitable for putting, and are 
intended to put that invention into effect. 
(2) Subsection (1) shall not apply when the 
means referred to therein are staple commercial 
products, except ,~hen the person induces the person 
supplied to. commit acts. which the. proprietor of the 
patent is entitled to prevent by virtue of section 40. 
(3) Pe~sons performing acts referred t? in 
paragrap~s (a), (b), or (c) of section 42 shall not be 
considered to be persons entitled to engage in 
commercial working of the invention for the purposes of. 
subsection (1). 
Limitation.ofeffectof 42 __ The rights conferred by a patent shall not extend 
patent· to--
(a) acts done privately and for non-commercial 
. purposes; 
(b) acts done for experimental purposes 
relating to the subject matter of the 
relevant patented invention; 
(c) the extemporaneous preparation for 
indIvidual cases in a pharmacy of a 
medicine in accordance with a medical 
prescription or acts concerning the 
medicine so prepared; and 
(d) the use of articles on aircraft, land vehicles 
or vessels of other countries which 
temporarily or accidentally enter the 
airspace, the territory or territorial waters 
of Trinidad and Tobago. IP/N/1/TTO/P/l 
Page 37 
43. The rights conferred by a patent shall not extend Exhaustion of rights 
to acts in respect of articles which have been put on the 
market in Trinidad and Tobago by the owner of the 
patent or with his consent. 
44. The extent of the protection conferred by a patent Exte~t of protection 
shall be determined by the terms of the claim; and, the 
description and drawings shall be used to interpret the 
claims. 
PART XI 
VOLUNTARY AND NON-VOLUNTARY LICENCES 
45. (1) Subject to section 33, a proprietor of a patentvoluntarylicences 
application or patent may grant a licence in respect of 
the relevant invention;· 
(2) A licence contract shall be in writing and may~ 
on payment of the prescribed fee, be recorded in the 
register and the relevant notice published in a 
periodical as prescribed by the rules. Until such 
contract has been so recorded, the licence shall have no 
effect against third parties, unless otherwise decided by 
the Court. 
(3) In the absence of any provision to the contrary 
in the terms of a licence contract, a licensee may not 
extend to another person the authorization conferred 
on him by the proprietor in accordance with subsection 
(1), nor may he assign or mortgage his licence. 
(4) In the absence of any provision to the contrary 
in the terms of a licence contract, the proprietor may 
continue to enjoy the rights conferred on him by section 
40 and 41. 
(5) To the extent that the licence has been 
granted as an exclusive licence, the proprietor may not 
grant a licence in respect of the invention to a third 
person and may not himself do any of the acts referred 
to in sections 40 and 41. IP/N/1/TTO/P/1 
Page 38 
Non-voluntary 
licences (6) If before the expiration of the licence contract, 
any of the following events occur with respect to any 
patent application or patent, the subject of that 
contract: 
(a) the patent application is withdrawn or is 
deemed to be withdrawn; 
(b) the patent application is treated as if it had 
not been filed; 
(c) the grant of a patent is refused; or 
(d) the patent is revoked, 
the licensee shall, f:r:om the date of the event, be no 
longer :bound to make any payment directly relating to 
that patent application or patent. 
(7) In any of the cases referred to in subsection 
(6), the licensee shall have the right to repayment of 
the payments already made and directly relating to the 
patent application or patent in question, provided he 
has not, or practically has not, benefitted, from the 
licence. 
46. (1) At any time after the expiration of three 
years from the date of grant of a patent under this Act 
or . four years from the date of the filing, whichever is 
later, any person interested may apply to the Court for 
the grant of a licence under the patent on any 'of the 
following grounds, namely that a market for the 
patented invention is not being supplied, or is not being 
supplied on reasonable terms in Trinidad and Tobago" .. 
(2) Subject to subsections (4), (5), (6) and (7), if 
the Court is satisfied that either of the grounds 
referred to in subsection (1) is established, the Court 
may make an order for the grant of the licence in. 
accordance with the application on such terms as the 
Court thinks fit. (3) A licence granted under this section­
(a) is not exclusive; 
(b) shall not be assigned otherwise than in 
connection with the goodwill of the 
business in which the patented invention is 
used; and 
(e) is limited to the supply of the patented 
invention predominantly in Trinidad and 
Tobago. 
(4) Wher.e the Court is satisfied that the grounds 
on which any licence granted under this se·ction have 
ceased "to exist, it may, on the application of any 
interested party, terminate such licence. 
(5) Any person to whom a licence is granted 
under this section shall pay such remuneration to the 
patentee- as may be agreed, or as may be determined by 
a method agreed upon between that person and the 
patentee, or in default of agreement, as is determined 
by the Court on the application of either party. 
(6) A licence shall not be granted under this 
section unless the person applying for the licence, 
having taken. all reasonable steps to do so, has been 
unable to obtain a licence, or to obtain a licence on 
reasonable terms from the patentee. 
(7) A licence shall not be granted under this 
section in respect ofa patent relating to an integrated 
circuit. IP/N/lITTO/P/1 
Page 39 
47. The powers of the Court on an application under Exercise of powers on . .. . applications under secbon.46 shall be exercIsed wIth a view to secunngsection46 
that the inventor or other person beneficially entitled to 
a patent shall receive reasonable remuneration having 
regard to the economic value of the licence. IP/N/1/TTO/P/l 
Page 40 
~seof'patented , 48. (1) Where the public interest so requires, or 
invention for services h h M .. d' f of the State were t e Inlster eCldes that the manner 0 
exploitation by the owner of a patent or his licensee is 
anti-competitive, then subject to subsection (2) the 
Minister may authorize a State agency or any person in 
writing, to make use, exercise or vend the patented 
invention for the services of the State subject to the 
payment of adequate compensation to the ow:ner 
thereof, taking into account the economic value of the 
exploitation, and anything done by'virtue of this 
subsection shall not amount to an infringement of the 
patent. 
(2) Before issuing his authorization under 
subsection (1), the Minister shall hear the owner of the 
patent and any other interested party who 'may wish to 
be heard. 
(3) Subsection (2) does not apply in the case of a 
national emergency. 
(4) The Minister may upon the request of any of 
the parties, vary the terms of the authorization. 
(5)(a) Upon the request of the owner of the 
patent, the Minister shall terminate the 
authorization if he is satisfied that the 
circumstances which led to his decision 
have ceased to e_~ist and are unlike-Iy-to 
recur, or that the State agency or person 
authorized by him has failed to comply 
with the terms of the authorization; 
(b) Notwithstanding paragraph (a), the 
,Minister shall not terminate the 
authorization if he is satisfied that the 
need for adequate protection or'the 
legitimate interests of the State agency or 
the person authorized by him justifies 
maintaining the decision. 
(6) An authorization granted to a person other 
than a State agency shall be subject to the conditions 
prescribed by subsection (3) of section 46. (7)(a) Before an authorization is granted under 
subsection (1), the Minister must be 
satisfied that the proposed user has made 
efforts to obtain a licence from the . . 
patentee on reasonable commercial terms 
and conditions within a reasonable time, 
but has failed to do so; 
(b) Paragraph (a) shall not apply in cases of 
national emergency or other circumstances 
of extreme urgency, provided however, that 
in such cases the owner of the patent shall 
be notified of the Minister's decision as 
·soon as is reasonably practicable. 
(8) Any decision of the Minister under 
subsections (1), (4) or (5) may be subject to judicial 
review. 
PART XII 
INFRINGEMENT IP/N/1/TTO/PIl 
Page 41 
49. Subject to the provisions of sections 42, 43, 44, 46 Infringement 
and 48 the performance of any of the acts referred to in 
sections 40 and 41, in relation to a patent while it is in 
force, without the authorization of the proprietor of the 
patent, shall constitute an infringement. 
50. (1) Subject to the provisions ot this Part, civilActionfor 
pro'ceedings may be brought in the Court by the infringement 
proprietor of a patent in resPE?ct of any act alleged to 
infringe the patent and (without prejudice to any other 
jurisdiction ·of the Court) in those proceedings a claim 
may be made--· 
(a) for an injunction restraining the defendant 
from any apprehended act of infringement; 
(b) for an order for him to deliver up or destroy 
any patented product in relation to which 
the patent is infringed or any article in 
which that product is inextricably comprised; 
(c) for damages in respect of the infringement; IP/N/lITTO/P1l 
Page 42 
Restrictions on 
recovery of damages 
for infringement 
Relief for 
infringement of 
partially valid 
patent (d) for an account of the profits derived by him 
from the infringement; 
(e) for a declaration that the' patent is valid 
and has been infringed by him. 
(2) The Court shall not, in respect of the same 
infringement, both award the proprietor of a patent 
damages and order that he shall be given an account of 
the profits. 
51. (1) In proceedings for infringement of a patent 
damages shall not be awarded, and no order shall be 
made for an account of profits, against a defendant who 
proves that at the date of the infringement he was not 
aware, and had no reasonable grounds for suppo,sing 
that the patent existed; and a person shall not be taken 
to have been so aware or to have had reasonable 
groundq for so supposing by reason only of the 
application to a 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. 
(2) Where an amendment of the specification of a 
patent has been allowed under any of the 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 is 
satisfied that the specification of the patent as 
published was framed in good faith and with 
reasonable skill and knowledge. 
52. (1) If the validity of a patent is put in issue in 
proceedings for infringement of the patent and it is 
found that the patent is only partially valid, the Court 
may, subject to subsection (2), grant relief in respect of 
that part of the patent which is found to be valid and 
infringed. (2) Where in any such proceedings it is found 
that a patent is only partially valid, the Court shall not 
grant relief by way of damages, costs or expenses, 
except where 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 may grant relief in respect of that part of the 
patent which is valid and infringed, subject to the 
discretion of the Court as to costs or expenses and as to 
the date from which damages should be reckoned. 
(3) As a condition of relief under this section the 
Court may direct that the specification of the patent 
shall be amended to its satisfaction upon an application 
made for that purpose under section 6~, and an 
application may be so made accordingly, whether or not 
all other issues in the proceedings have been 
determined. IP/N/lITTO/P/l 
Page 43 
53. (1) If in any proceedings before the Court the Certificate of 
l·d· . d d·' h contested validity of va 1 Ity of a patent to any extent IS conteste an t at patent 
patent is found by the Court to be wholly or partially 
valid, the Court may certify the finding and the fact 
that the validity of the patent was so contested. 
(2) Where a certificate is granted under this 
section, then, if in any subsequent proceedings before 
the Court for infringement of the patent concerned or 
for revocation of the patent a final order or judgment is 
made or given in·~favour of the party relying on the 
validity of the patent as found in the earlier 
proceedings, that party shall, unless the Court 
otherwise directs, be entitled to his costs or expenses as 
between attorney-at-law and client (other than the 
costs of expenses of any appeal in the subsequent 
proceedings) . 
54. (1) Subject to the provisions of this section, the Proceedings for 
• • infringement by holder of an excluslVe lIcence under a patent shall have exclusive licensee 
the same right as the proprietor of the patent to bring IP/N/IITTO/P/1 
Page 44 
EtTect of non­
registration on 
infringement 
p~dings proceedings in respect of any infringement of the 
patent committed after the date of the licence; and 
references to the proprietor of the patent in this Act 
relating to infringement shall be construed accordingly. 
(2) In awarding damages or granting any other 
relief in any such proceedings the Court shall take into 
consideration any loss suffered or likely to .be suffered 
by the exclusive licensee as such as a result of .the 
infringement, or, as the case may be, the profits derived 
from the infringement, so far as it constitutes an 
infringement of the rights of the exclusive licensee as 
such. 
(3) In any proceedings taken by a.n exclusive 
licensee by virtue of this section, the proprietor of the 
patent shall be made a party to the proceedings, but if 
made a defendant shall not be liable for any costs or 
expenses unless he enters an appearance and takes 
part in the proceedings. 
55. Where by virtue of a transaction, instrument or 
event to which section 35 applies a person becomes the 
proprietor or one of the proprietors or an exclusive 
licensee of a patent and the patent is subsequently 
infringed, the Court shall not award him damages or 
order that he be given an account of the profits in 
respect of such a subsquent infringement occurring 
before the transaction, instrument or event is 
registered unless-
(a) the transaction, instrument or event is 
registered within the period of six months 
beginning with its date; or 
(b) the Court is satisfied that it was not 
practicable to register the transaction, 
instrument or event before the end of that 
period and that it was registered as soon as 
was practicable thereafter. IP/N/1/TTO/P/l 
Page 45 
56. (1) Where a person (whether or not the Remedy for . f . 1 d . h . ) b groundless threats of proprIetor 0 , or entIt e to any ng t lll, a patent y infringement 
circulars, advertisements or otherwise threatens pra<:eedings 
another person with proceedings for any infringement 
of a patent, a person aggrieved by the threats (whether 
or not he is the person to whom the threats are made) 
may, subject to subsection (4), bring proceedings in 
Court against the person making the threat, claiming 
any relief mentioned in subsection (3). 
(2) In any such proceedings the plaintiff shall, -if 
he proves that the threats were so made and satisfies 
the Court that he is a person aggrieved by them, be 
entitled to the relief claimed unless-
(a) the defendant proves that the acts in 
respect of which proceedings were 
threatened constitute or, if done, would 
constitute an infringement of a patent; and 
(b) the patent alleged to be infringed is not 
shown by the plaintiff to be invalid in a 
relevant respect. 
(3) The said relief is-
(a) a declaration to the effect that the threats 
are unjustifiable; 
(b) an injunction against the continuance of 
the-threats; and 
(e) damages in respect of any loss which the 
plaintiff has sustained by the threats. 
(4) Proceedings may not be brought under this 
section for a threat to bring proceedings for an 
infringement alleged to consist of making or importing 
a product for disposal or of using a process. 
(5) It is hereby declared that a mere notification 
of the existence of a patent does not constitute a threat 
of proceedings within the meaning of this section. IP/N/1/TTO/P/1 
Page 46 
Power of Court to 
make declaration as 
to non-infringement 57. (1) Without prejudice to the Court's jurisdiction 
to make a declaration apart from this section, a 
declaration that an act (that is to say, the use by any 
person of any process, or the making or use or sale by 
any person of any product) does not, or a proposed act 
would not, constitute an infringement of a patent, may 
be made .by the Court in proceedings between the 
person doing .or proposing to.do the act and the 
pro'prietor of the patent, notwithstanding that 'no 
assertion to the contrary has been made by the 
proprietor, if it is shown-
(a) that that person has applied in writing to 
the proprietor for a written acknowledge­
ment to the effect of the declaration 
claimed, and has furnished him with full 
particulars in writing of the act in 
question; and 
'(b) that the proprietor has refused or failed 
within a reasonable time to give any such 
acknowledgement. 
(2) No declaration under subsection (1) shall be 
made if the act in question is already the subject 
matter of an infringement proceeding. 
Right to continue use 58. (1) Where a patent is granted for an invention 
begun before date of • • .' 
filing or priority a person who before the date of fIlIng of the patent 
application or, if priority was claimed, before the 
date of priority, does in good faith in Trinidad and 
Tobago an act which would constitute an 
infringement of the patent if it were then in force, or 
makes in good faith effective and serious preparation 
to do such an act, shall have the rights specified in 
subsection (2). 
(2) Any such person shall have the right-
(a) to continue to do or, as the case may be, to 
do that act himself; and (b) if the· act was done or preparations had 
been made to do it in the cours·e of a 
business--
(i) to assign therigh t under 
paragraph (a); 
(ii) to transmit the right under 
paragraph (a) to his heirs on his 
death or, in the case of a body 
corporate on its dissolution, to 
any person who acquires that 
part of the business in the course 
of which the act .was done or 
preparations had been made to do 
it; or . 
(iii) to authorize the aCt to be done by . 
any partners of his for the time 
being in that business, 
and the doing of that act by virtue of this 
subsection shall not amount to an 
infringement of the patent concerned. 
(3) The rights specified in subsection (2) shall not 
include the right to grant a licence to any person to do 
an act referred to in subsection (1). 
(4) Where a product which is the subject of a 
patent is disposed of by any person to another in 
exercise of a right conferred by subsection (2), that 
other and any person claiming through him shall be 
entitled to deal with the product in the same way as if 
it had been disposed of by a sole proprietor of the 
patent. 
PART XIII 
;REVOCATION OF PATENT IPIN/1/TTO/P/1 
Page 47 
59. (1) Subject to the provisions of this section and Application for 
section 60, any person may apply to the Court forrevocationofpatent 
revocation of a patent. . 
(2) An application for the revocation of a patent 
on the ground mentioned in section 60(e) may be made 
only by a person found by the Court pursuant to section 
16 to be entitled to be granted that patent or to be 
granted a patent for part of the matter coveregby the IP/NIlITTO/PI 1 
Page 48 
Grounds for 
revocation 
Examination of 
application for 
revocation patent, or, in case more than one person is found to be 
so entitled, by all those persons. 
(3) An application under this section may be filed 
even if the patent has lapsed. 
60. An application for revocation of a patent may be 
made only on any of the following grounds, that is to say: 
(a) the subject matter of the patent is not 
patentable under Part IV; 
(b) the specification of the patent does not 
disclose· the invention in a manner 
sufficiently clear and complete for it to be 
carried out by a person skilled in the art; 
(c) the subject matter of the patent extends 
beyond the content of the patent 
application as filed or, if the patent was 
granted on a divisional application, it 
extends beyond the content of the relevant 
earlier application as filed; 
(d) the protection conferred by the patent has 
been extended by an amendment which 
should not have been allowed; 
(e) the patent was granted to a person who 
was not entitled thereto under section· 14 or 
section 15, as the case may be. 
61. (1) If on an application for revocation of a patent 
the Court considers that the grounds for revocation 
mentioned in section 60 prejudice the maintenance of 
the patent, the Court may by order unconditionally 
revoke the patent. 
(2) If on an application for revocation of a 
patent the Court considers that the grounds for 
revocation mentioned in section 60 affect the patent 
only partially, the Court may make an order for the 
revocation of the patent unless within a time specified 
by the Court the relevant specification is amended to 
the satisfa~tion of the Court. (3) If required by the Court the proprietor of the 
patent shall furnish to the Court such information as 
may be required in regard to foreign ~pplications filed 
for protection of the invention or documents filed with 
any other national or regional industrial property office 
or in connection with any proceedings relating to an 
application, a patent or other title of protection for the 
same or essentially the same invention, 
PART XIV 
PUTTING VALIDITY IN ISSUE IP/N/l/TTO/P1l 
Page 49 
62. (1) Subject to the following provisions of this Cir~m8~n~s in 
t' . th l'd't f t t b . t" which vahdlty of sec lOn, e va 1 1 Y 0 a pa en may e pu In Issue patent may ~ put in 
before the Court only: issue 
(aj by way, of defence in proceedings for 
infringement under section 50 or 54; 
(bj in proceedings under sections 48,56,57 or 59. 
(2) The validity of a patent may not be put in 
issue in any other proceedings and, in particular, no 
proceedings may be instituted (whether under this Act 
or otherwise) seeking only a declaration as to the 
validity or invalidity of a patent, 
(3) The only grounds on which the validity of a 
patent may be put in issue (whether in proceedings for 
revocation under section 59 or otherwise) are the 
grounds on which the patent may be revoked under 
that section. 
(4) No determination shall be made in any 
proceedings mentioned in subsection (1) on.the validity 
of a patent which any person puts in issue on the 
ground specified in section 60(e) unless-
(aj it has been determined, either in 
en ti tlemen t proceedings commenced by 
that person or in the proceedings in which 
the validity of the patent is in issue, that 
the patent should have been granted to him 
and not some other person; and IP/NIlITTO/PI 1 
Page 50 
Amendment of 
patent in 
infringement or 
revocation 
proceedings (b) except it has been so determined in 
entitlement proceedings, the proceedings in 
. which the validity of the patent is in issue 
are commenced before the end of the period 
of two years beginning with the date of the 
grant of the patent or it is shown that any 
person· registered as a proprietor· of the 
patent knew at the time of the grant or· of 
the transfer of the patent to him that he 
was not entitled to the patent. 
(5) Where the validity of a patent is put in issue 
by way of defence, the Court shall if it thir:tks just to do 
so, give the defendant an opportunity to comply with 
the condition in subsection ·(4)(a). 
(6) In subsection (4) "entitlement proceedings", in 
relation to a patent, means proceedings to determine 
the question whether a patent was granted to a person 
not entitled to it. 
63. (1) Subject to subsection (5), in any proceedings 
before the Court in which the validity of a patent is put 
in issue the Court may, allow the proprietor of the 
patent to amend the patent in such manner, and 
subject to such terms as to advertising the proposed 
amendment and as to costs, expenses or otherwise,· as 
the Court thinks fit. 
(2) A person may give notice to the Court of his 
opposition to an amendment proposed by the proprietor 
of the patent under this section, . and if he does so the 
Court shall notify the proprietor and consider the 
opposition in deciding whether the amendment or any 
amendment should be allowed. 
(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) Where an application for an order under this 
section is made to the Court, the applicant shall notify 
the Controller who shall be entitled to appear and be 
heard and ~hall appear if so directed by the Court. 
(5) No such amendment shall be allowed if it 
discloses matter which extends beyond that disclosed in 
the specification of the granted patent or extends the 
scope of the protection conferred by the patent. 
PART XV 
UTILITY CERTIFICATES IP/NIl/TTO/P1l 
Page 51 
64. (1) The provisions in this Act relating to patents Provisionsappli~ble 
or to patent applications shall, unless otherwise to utility certificates 
provided under this Part, be applicable to "utility 
certificates or to utility certificate applications, as the 
case maybe. 
(2) Sections 8, 10, 24, 29, 30(1) and 60(a) shall 
not apply to utility certificates nor to utility certificate 
applications. 
65. (1) A utility certificate may be granted only for Protection by utility 
an invention which is new and is capable of industrial certificate 
a pplica tion." 
(2) An invention for which a utility certificate is 
requested shall not be considered new if it differs from 
earlier inventions only in minor respects or in details 
which are immateria1 to the function or application of 
the invention. 
66. A utility certificate granted under this Act shall Term of utility 
take effect on the date on which notice of its grant is certificate 
published in a periodical and, subject to this Act, shall 
continue' in force until the end of a period of ten years 
beginning "on the "date on which the-utility certificate 
application or, where relevant, the patent application 
was filed. IP/N/lITTO/PIl 
Page 52 
Grounds for 
revocation 
Conversion of 
application 
Registration of 
utility certificates 67. An application for revocation' of a utility 
certificate may be made only on the ground&-
(a) that the subject matter of the utility 
certificate may not be protected by a utility 
certificate under Part IV and this Part; and 
(b) mentioned in sections 60(b), (c), (d) or (e). 
68. (1) At any time before a patent is granted or 
before the refusal of a patent application is notified 
under this Act, an applicant for a patent may, in 
accordance with the prescribed conditions, request that 
his application be treated as a utility certificate 
application. 
(2) In the same circumstances mentioned in 
subsection (1), an applicant for a utility certificate may, 
in accordance with the prescribed conditions and upon 
payment of the prescribed fee, request that his 
application be treated as a patent application. 
(3) The Controll~r shall refuse a request under 
subsection (1) or (2) if the patent application or the 
utility certificate application has already been the 
subject of a request under either of those subsections. 
69. Particulars of utility certificates granted and 
notice of all matters which are required by or under 
this Act or rules to be registered, shall be registered in 
a special part of the register of patents. by the 
Controller. 
PART XVI 
INTERNATIONAL ARRANGEMENTS 
Notifica:ion as ~ . 70. The Minister may, with a view to the fulfillment 
convention countries ., • of a treaty or mternatIOnal conventIOn or arrangement, 
by order declare that any country specified in the Order 
is a convention country for the purposes of section 20. IP/N/1/TTO/PIl 
Page 53 
71. (1) The Patent Co-operation Treaty (in this Implementationof 
. £ d "h Tr y") d l' Patent Co-operation sectlOn re erre to as t e eat an any regu atlons Treaty 
made thereunder shall be given full effect. 
(2) Where the provisions of this Act conflict With 
those of the Treaty, the provisions of the Treaty shall 
prevail. 
(3) Where this Act does not provide for any 
matter provided for by the Treaty, the provisions of the 
Treaty shall apply. 
(4) The Intellectual Property Office shall act as a 
receiving office, designated office and elected office as 
provided for in the Treaty. 
(5) The processing and examination of an 
international application for a patent designating 
Trinidad and Tobago shall not commence before the 
expiration of the time limit prescribed in Articles 22 
and 39 of the Treaty, except that such processing and 
examination may commence if the applicant files an 
express request at the Intellectual Property Office 
within that time limit. 
(6) The Controller shall not grant or refuse to 
grant a patent on an international application before 
the expiration of the time limit prescribed in Rule 52 as 
provided for in Article 28 or in Rule 78 as provided for 
in Article 41 as the case may be, except with the 
consent of the applicant in writing. 
(7) Where an international application for a 
patent which purports to designate Trinidad and 
Tobago is refused an inter:o.ational filing date under the 
Treaty because-
(a) it is declared considered withdrawn; or 
(b) the International Bun~au has made 
a finding under Article 12(3) of the 
Treaty; or IPIN/1ITTO/PI1 
Page 54 
Judicial Notice of 
certain treaties and 
instruments 
thereunder 
Falsification of 
register, ete. (c) .the receiving.pffice has declared that the 
designation of Trinidad and Tobago,is 
considered withdrawn, 
and the Controller determines that such refusal was 
caused by an error or omission in the Intellectual 
Property' Office or any other institution having 
functions under the Treaty, he may direct that the 
application shall be. treated as an application under 
this Act. 
72. (1) Judicial notice shall be taken of the Paris 
Convention, the Budapest Treaty, the Patent 
Corporation Treaty and of any bulletin, journal or 
gazette published under such Convention or Treaty. 
(2) Any document mentioned in any such 
bulletin;' journal or gazette shall be admissible as 
evidence of any instrument or other act thereby 
commun\cated, or of any institution established by or 
having functions under any Convention or Treaty 
mentioned in subsection (1). 
PART XVII 
OFFENCES 
73. If a person makes or causes to be made a false 
entry in any register kept under this Act, or a writing 
falsely purporting to be a copy or reproduction of an 
entry in any such register, or produces or tenders or 
causes to be produced or tendered in evidence any such 
writing, knowing the entry or writing to be false, he 
shall be liable---::· 
(a) on summary conviction, to a fine of twenty 
. thousand dollars; 
(b) on conviction on indictment, to a fine of 
. forty thousand dollars and to imprisonment 
for ten years. IP/N/1/TTO/P/l 
Page 55 
74. (1) If a person falsely represents.that anythingunauthorizedclaim 
disposed of by him for value is a patented product or of patent rights 
process he shall, subject to the following provisions of 
this section, be liable on summary conviction to a fine 
of ten thousand dollars. 
(2) For the purposes of subsection (1) a person 
who for value disposes of an article having stamped, 
engraved or impressed on.it or otherwise applied to .it 
the word "patent" or "patented" or anything expressing 
or implying that the article is a patented product, ·~h8.ll 
be taken to represent that the article is a patented 
product. 
(3) Subsection (l)doesnot apply where-the 
representation is made in respect of a product after the 
patent for that product or, as the case may be, the 
process in question has expired or been revoked and 
before the end of a period which is reasonably sufficient 
to enable the accused to take steps to ensure that the 
representation is not .L."'1ade (or does not continue to be 
made). 
(4) In proceedings for an offence under this 
section it shall. be a defence for the accused to prove 
that he used due diligence to prevent the commission of 
the offence. 
75. (1) If a person represents that a patent has been Unauthorized claim .. . . that patent has been applIed for m respect of any artIcle dIsposed of for value applied for 
by him, and-
(a) no such application has been made; or 
(b) any such application has been refused or 
withdrawn, 
he shall; subject to the following provisions of this 
section, be liable on summary conviction to a fine of ten 
thousand dollars. IP/N/1/TTO/P/1 
Page 56 
Misuse of title 
"Intellectual 
Property Office" 
Offences by 
corporations (2) Subsection (l)(b) does not apply where the 
representation is made (or continues to be made) before 
the expiry of a period which commences with the 
refusal or withdrawal and which is reasonably 
sufficient to enable the accused to take steps to ensure 
that the representation is not made (or does not 
continue to be made). 
(3) For the purposes of subsection (1) a person 
who for value disposes of an article having stamped, 
engraved or impressed on it or otherwise applied to it 
the words "patent appli~d for" or "patent pending" or 
anything expressing or implying that a patent has been 
applied for in respect of the article, shall be taken to 
represent that a patent has been applied for in respect 
of the article. 
(4) In any proceedings for an offence under this 
section it shall be a defence for the accused to prove 
that he used due diligence to prevent the commission of 
such an off'3nce. 
76. If any person uses on his place of business, or on 
any document issued by him, or otherwise, the words 
"Intellectual Property Office" or any other wor4s 
suggesting that his place of business is, or is officially 
connected with, the Intellectual Property Office, he 
shall be liable on summary conviction to a fine of fifteen 
thousand dollars. 
-77. (1) Where an offence under this Act which has 
been committed by a body corporate is proved to have 
been committed with the consent or connivance of, or to 
be attributable to any neglect on the part of, a director, 
manager, secretary or other similar officer of the body 
corporate, or any person who was purporting to act in 
any such capacity, he, as well as the body corporate, 
shall be guilty of that offence and shall be liable to be 
proceeded agai:Q.st and punished accordingly. " (2) Where the affairs of a body corporate are 
managed by its members, subsection (1) shall apply in 
relation to the acts and defaults of a member in 
connection with his functions of management as ifhe 
were a director of the body corporate. IPINIlITTO/PIl 
Page 57 
78. No prosecution for an offence under this Act shall Time limit for 
b d f h .. f f" af" prosecution e commence a ter t e eXpIratIOn 0 lve years' tef" 
the commission of the offence or one year after the 
discovery thereof, whichever date last occurs .. 
PART XVIII 
REPRESENTATION 
79. (1) A person" who is an Attorney-at-law shall be Representation 
entitled to represent any party in any matter or 
proceedings before the Controller under this Act, 
provided-
(a) that the name of such a person is on 
the Roll of Attorneys-at-law kept under 
section 13 of the Legal Profession Act,No.21of1986 
1986; and 
(b) that he resides and has a place of business 
in Trinidad and Tobago. 
(2) Where an applicant's ordinary residence or 
principal place of business is outside of Trinidad and 
Tobago he shall be represented by an Attorney-at-law 
resident and practising in Trinidad and Tobago. 
PART XIX 
LEGAL PROCEEDINGS 
80. (1) An appeal to the Court shall lie from any Appeal against 
. '. order of Controller order or decision of the Controller under thls Act or the 
rules m~de thereunder except any of the following 
decisions, that is to say: 
(a) a decision falling within section 19(5); IP /NI lITTOIP 11 
Page 58 
Right of appeal 
trom order and 
decision of Court (b) a decision under rules which is excepted by 
rules from the right of appeal conferred by 
this section. 
(2) In any such appeal or other proceedings 
before the Court, the Controller shall be entitled to 
appear or be represented and shall appear if so directed 
. by the Court. 
(3) In any appeal or other proceedings under this 
Act, the Court may exercise any power which could 
have been exercised by the Controller in the 
proceedings from which the appeal is brought. 
(4) Save as otherwise provided in this Act, an 
appeal under this section shall be made within three 
months from the date of the order or decision, as the 
case may be, of the Controller or within such further 
time as the Court may allow in accordance with the 
Rules of Court. 
(5) Rules of Court shall make provision for the 
appointment of scientific advisers to assist the Court in 
proceedings under this Act, for regulating the functions 
of such advisers and for payment of such remuneration 
to them as the Court may determine from time to time. 
81. (1) An appeal to the Court of Appeal from an 
order or decision made by the Court in proceedings 
under this Act shall lie on any of the following grounds, 
but no other-
(a) that the Court had no jurisdiction in the 
matter, but it shall not be competent for the 
Court of Appeal to entertain such ground of 
appeal, unless objection to the jurisdiction 
of the Court has been formally taken at 
some time during the progress of the 
matter before the making of the order or 
decision; (b) that the Court has exceeded its jurisdiction 
in the matter; 
(e) that the order or decision of the Court has 
been obtained by fraud; 
(d) that any finding or decision of the Court in 
any matter is erroneous in point of law; or 
(e) that some other specific illegality not 
mentioned above, and substantially 
affecting the merits of the matter, has been 
commi tted in the course of the proceedings. 
(2f On the hearing of an appeal in any matter· 
ut.Ider subsection (1), the Court of Appeal shall have 
power-
(a) if it appears to the Court of Appeal that a 
new hearing should be held, to set aside the 
order or decision appealed against and 
order that a new hearing be held; or 
(b) to order a new hearing on any question 
without interfering with the finding or 
decision upon any other question, 
and the Court of Appeal may make such final or other 
order as the circumstances of the matter may require. 
(3) The Court of Appeal may in any matter 
brought on appeal before it dismiss the appeal if it 
considers. that no substantial miscarriage of justice has 
actually occurred notwithstanding that it is of the 
opinion that any point raised in the appeal might have 
been decided in favour of the appellant. IP/N/1/TTO/P/l 
Page 59 
82. (1) If the invention for which a patent is granted Burd~nofproofin . f b·· d h certain cases IS a process or 0 tmnlng a new pro uct, t e same 
product produced by a person other than the proprietor 
of the patent or a licensee of his shall, unless the 
contrary is proved, be taken in any proceedings to have 
been obtained by that process. IP /NI lITTO/P 11 
Page 60 
(2) In considering whether a party has 
discharged the burden imposed upon him by this 
section, the Court shall not require him to disclose any 
manufacturing or commercial secrets if it appears to 
the Court that it would be unreasonable to do so, 
Extension of 83. For the removal of doubt, it is hereby declared 
privilege for certain h h "1 f d' 1 C' d b 1 ' communications with t at t e PrIVI ege rom ISC osure conierre y aw In 
Atto~neys.at-law legal proceedings in respect of communications made relating to patent 
proceedings with an Attorney-at-law or a person acting on his 
Costa and security 
for costa behalf, or in relation to information obtained or 
supplied forsub~ission to an Attorney-at-law or a 
person acting on his behalf, for the purpose of any 
pending or contemplated proceedings before the Court, 
extends to such communications so made for the 
purpose of any pending or contemplated proceedings 
before the Controller under this Act or the Patent 
\ Co-operation Treaty, 
84. (1) The Controller may, in proceedings before 
him under this Act, by order award to any party such 
costs as he may consider reasonable, and direct. how 
and by whom they are to be paid, 
(2) If any party by whom notice of any opposition 
is given under this Act or by whom application is made 
to the Controller for the grant of a licence .under a 
patent or for the revocation of a patent, neither resides 
nor carries on business in Trinidad and Tobago, the 
Controller may require him to give security for the 
costs of the proceedings, and in default of such security 
being given, may treat "the opposition or the 
application, as the case may be, as abandoned. 
(3) Any order made under subsection (1) for the 
payment of costs may be enforced as if it were a money 
judgment passed by a Petty Civil Court if within the 
pecuniary jurisdiction of that Court, or, failing that, by 
the Court. PART XX 
GENERAL AND MISCELLANEOUS IPINI1 ITTOIPIl 
Page 61 
85. Neither the Minister nor any employee of the Immunity as 
S regards official acts tate-
(a) shall be taken to warrant the validity of 
any patent granted under this Act or any 
treaty or international convention to which 
Trinidad and Tobago is a party; or 
(b) shall incur any 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 or investigation. 
86. Any notice required or authorized to be given by Service by post , 
or under this Act and any application or othe:r 
document so authorized or required to be made or filed, 
may be given, made or filed by post or in any other 
prescribed manner. 
R7. 1) The Controller shall, before the 1st June Controller's annual ' 
eve~ear, make an annual report to the Minister with report 
respd.:t to the operation of this Act and the discharge of 
his functions thereunder which shall be laid before 
Parliament. 
(2) Every such report shall include an audited 
account of all fees and other monies received and paid 
by him under this Act during the previous year. 
88. Nothing in this Act affects the right of the State Saving in respect or 
.' rights to sell forfeited or any person in the employment of the State to dispose articles 
of or use articles forfeited under the laws relating to 
customs and excise. 
89. This Act is binding on the State. Act binding on State IP/N/1/TTO/P/l 
Page 62 
Rules 
Repeal and 
transitional 
provisions 
Chap. 82:83 90. The Minister may, subject to a negative 
resolution of Parliament make such rules as he 
thinks expedient for regulating the business of the 
Intellectual Property Office in relation to patents and 
applications for patents (including international 
.applications for patents) and for regulating all 
matters placed. by this Act under the direction or 
control of the Controller. 
91. (1) Subject to the provisions of this section, 
Part I of the Patents and Designs Act (hereinafter 
referred tc? as "the former Act") is repealed, and 
section 2 arid Part. IV thereof insofar as they relate to 
patents shall not apply. 
(2) Where, upon the commencement of this Act, 
an ap~lication made under the former Act is pending, 
such an application shall, notwithstanding the 
provisions of subsection (1) be dealt with under the 
former Act but the grant shall thereafter be subject to 
this Act. 
(.3) The Controller shall, on and after the 
appointed day-
(a) perform all the functions of and exercise all 
the powers conferred on the Registrar 
General in relation to patents under the 
former Act; and 
(b) be the custodian of the Register of patents 
kept under the former 'Act and 'of the 
patents granted under that Act together 
with the certifi'cates of registration and 
other relevant records. 
(4) A patent granted under the former Act before 
the appointed day shall remain in force for twenty 
years from the date of the application. . (5) Nothing in this Act applies to or affects-
(a) any proceedings for revocation or 
infringement of a patent, commenced 
before the coming into operation of this Act; 
(b) any existing licence, or any application for 
a licence made before the commencement of 
this Act. 
Passed in the House of Representatives this 9th day 
of July, 1996. 
J. SAMPSON 
Clerk of the House 
Passed in the Senate this 12th day of July, 1996. 
N. COX 
Clerk of the Senate 
Senate Amendment agreed to by the House of 
Representatives this 19th day of July, 1996. 
J. SAMPSON 
Clerk of the House IP/N/lITTO/P/l 
Page 63