PATENTS
Registration Proceedings :
Patent Law
THE PATENTS ACT, 2018
No. 22 of 2018
[Published in the Official Gazette Vol. XXXVIII No.82 dated 8th November, 2018]
Examination stage:
There is two type of examination in Antigua:
Formal Examination
According to part V, Article No. 15. If the Registrar finds that the application does not fulfil the basic requirements of an patent application, he will invite the applicant to correct the application’s defects within a period of three (3) months, counted as of the notification of the request by the Registrar.
Substantive Examination:
Within six (6) months after the publication date of the application, the applicant shall request the Registrar that the patent application be substantive examined.
The Registrar shall take into account, for the purposes of substantive examination—
(a) the results of any international search report and any international preliminary examination report established under the Patent Cooperation Treaty in relation to the application; and/or
(b) a search and examination report submitted
(c) a copy of the patent granted or a final decision on the refusal or invalidation of the patent/on a corresponding foreign application; and or
(d) a search and examination report which was carried out upon his request by an external search and examination.
Divisionnal Patent:
Allowed
The applicant may, at any time before a patent is granted, divide the application into two or more applications as “divisional application”, provided that each divisional application shall be in good standing, that is it has not been refused or withdrawn and all applicable fees been paid, and shall not include any matter which was not disclosed in the initial application as filed.
Paris Convention Priority:
Allowed
Right of priority
An application for a patent may contain a declaration claiming the priority, as provided for in the Paris Convention, of one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any State party to the said Convention or any member of the World Trade Organization.
Conversion of patent applications: Utility Model
Allowed
At any time before the grant of a patent, an applicant for a patent may, upon payment of the prescribed fee, convert his application into an application for a utility certificate.
Information of foreign applications for granting purpose:
The applicant can at any time, to inform the Registrar, furnish him with the date and number of any application for a patent filed by him abroad relating to the same invention as that claimed in the application filed with the Registrar.
Matters excluded from patent protection
Part III, Article No. 9
The following, even if they are inventions within the meaning of this Act, shall not be protected as patents—
(a) a discovery, scientific theory or mathematical method;
(b) a scheme, rule or method for doing business, performing a mental act or playing a game;
(c) computer programs as such;
(d) a method for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods
(e) plants and animals other than micro-organisms;
(f) Essentially biological processes for the production of plants or animals other than non-biological microbiological processes;
(g) plant varieties;
(h) known substances for which a new use has been discovered; and
(i) inventions the commercial exploitation of which it is necessary to prevent in Antigua and Barbuda in order—
(i) to protect public order or morality, including to protect human, animal or plant life or health; or
(ii) to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by law.
Patent Applications
1. A notarized power of attorney.
2. A declaration duly notarized.
3. Three copies of the patent specification.
4. Two sets of the formal drawings.
Patent Applications (confirmation of UK patents)
1. A notarized power of attorney.
2. A declaration duly notarized.
3. A certified copy of the UK patent including the specification and
formal drawings.
POA note:
A Power of Attorney is required for each patent application. The Registry requires an officer or director to sign documents on behalf of the company. The Registry requires the position of the signatory to be stated on all documents. If an authorized agent signs on behalf of the company, the Registry requires evidence of such authorization. This is usually in the form of a Power of Attorney. An original or certified copy of the POA is required. If a certified copy is being provided, the certification must be done by a notary public.
Duration :
A patent is protected for 20 years from the date of filing or in accordance with the UK or EP patent being extended.
Annuity Payments :
Patents are non-renewable, however in order to maintain the patent or application, a prescribed annual fee becomes payable to the Registrar beginning one (1) year after the filing date application.
A grace period of six months is allowed for the payment of the annuity. However, if the annual fee is not paid, the patent application will be deemed to have been withdrawn or the patent will lapse. The fee is due on the anniversary of the filing date. Annuities for a PCT issued patent are due on the same date. When the annuity has been paid the Registry will issue an official receipt.
Documents required :
Power of Attorney, duly executed by the proprietor(s) in the presence of a Notary Public.
Subsequent recordings :
The Registrar must be given written notice of any change of name, address or address for service; changes in ownership; licence contracts.
Assignment :
Please inform us as soon as possible if the patent has been assigned so that we can file an application to record the assignment in Antigua and Barbuda (and the if necessary). To record the assignment of a national patent registration the documentation required is a request for the assignment, a certified copy of the Deed of Assignment and a Power of Attorney (notarized).
TRADEMARKS
What is Registrable as a Trademark:
The sign must fulfill certain conditions in order to be protected as a trade mark. For instance, the sign must be distinctive, so that consumers can distinguish it as identifying a particular product or service.
It must neither mislead nor deceive customers or violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trade mark owner. This may be determined through a search and examination done at the Office or by the opposition of third parties who claim similar or identical rights.
Three-dimensional trademarks are theoretically registrable.
The following trademark types are registrable: trademarks, service marks and collective marks.
There is two ways A Trademark can be registered in Antigua & Barbuda :
Through the local Trade Mark Act (2003) which provides for local Trademark applications dating from receipt of application.
Or through the United Kingdom Trade Mark Act (1946) which allow applications to extend rights under a UK registration with effect from the date of registration in the UK. If the application is based on a United Kingdom trademark, multi-class filing system and International Classification are used. Service classes are accepted.
Classification:
Nice classification, 11th edition; Multi-Class applications are permitted.
Registration Proceedings:
The application is filed at the trademarks registry in St. John's, Antigua. Multi-class applications are possible.
A signed Authorisation of Agent form is needed. The proprietor’s seal needs to be applied, if available, and the form must be notarized. No witnessing or legalization of this form is needed. The Declaration of use form needs to be signed before a Notary, with no additional formality.
All applications are examined and subject to absolute and relative grounds of refusal.
Prior use in Antigua & Barbuda is unnecessary provided the applicant asserts, on its Declaration filed at the time of application, an intent to use the mark in Antigua & Barbuda.
After formal examination and acceptance, the mark is published for opposition.
The processing time from first filing to registration is typically 18 to 24 months or longer due to delays with the government printery at the publication stage.
Opposition Period:
National:
Interested parties may oppose new applications within three months from the date of publication of an application.
Trademark Duration:
All new registrations are valid for a term of 10 years, with renewals for further periods of 10 years.
Grace Period for Trademark Renewals :
Six (6) months with late payment fees.
Madrid protocol
Antigua and Barbuda is the only English speaking Caribbean country that is a member of the Madrid protocol since the year 2000.
Local registration system:
Power of Attorney Notarized.
Full details of the mark & class(es).
Full particulars of the Applicant.
Statement of Application and Declaration of Intent-to-Use Notarized.
Certified copy of Priority document (if claimed).
UK registration Extension:
Power of Attorney Notarized.
Full details of the mark & class(es).
Full particulars of the Applicant.
Certified copy of UK Registration Certificate.
Trademark Law:
The Trade Marks Act, 2003 and Trade Marks Regulations, 2006 went into force on October 1, 2006.
These laws established an independent trade mark registration system. Registration based on an existing UK registration has not been possible since 2006.
Paris Convention priority is available. Antigua & Barbuda has long been a member of the Madrid Protocol, since accession in 1999.
All new registrations are for a term of 10 years, with renewals for further periods of 10 years. Under the old laws, the term of registration was either concurrent with the underlying UK registration (if UK-based) or for a term of 14 years (if local).
Trademark protection is obtained by registration. It can also be acquired by local use within the jurisdiction whereby it is protected only by common law. Only if a mark is registered under the act is it entitled to protection under the Trade Marks Act and Regulations.
The Act confirms that common law "passing off" is still actionable. Also, the doctrine of "honest concurrent user" is still a valid defense to an allegation of trade mark infringement.