Patent Applications Requirements
A copy of the specification, claims and abstract in French.
The full particulars of both the applicant and the inventor.
A deed of assignment if the assignee applies.
A certified copy of the basic application, if priority is to be claimed.
Registration procedure and Law:
The Saint Barthelemy patent law defines two different types of protection for technical inventions, namely the patent of invention and the utility certificate.
The patent is granted for a duration of 20 years with a search report.
The utility certificate is granted for a duration of 6 years without search report.
• A complete specification must particularly describe and ascertain the nature of the invention and in what manner it is to be performed, and must be accompanied by drawings, if required.
• A specification, whether provisional or complete, must commence with the title and in case of a complete specification, must end with a distinct statement of the invention claimed.
THE GRANTING PROCEDURE
A patent application shall be filed using the prescribed forms and conditions
a) Patent application
The patent application must contain a description of the invention and claims defining the scope of the protection. Drawings may be added for completing the description. The description and claims of the application as filed may be filed in any language. A French translation must be filed within three months.
The claims should normally be drafted in two parts with a preamble defining the generic object of the invention and comprising all technical features which, taken into combination, are already in the prior art, and a characterizing part stating the technical features which form the invention together with the features of the preamble.
Multiple dependent sub-claims related to any preceding claim may be provided.
b) Authorization for disclosing and working the invention
For reasons of national defense, all applications filed in Saint Barthelemy for obtaining a Saint Barthelemy patent or certificate of utility are submitted to an authorization issued by the Saint Barthelemy Patent Office before any disclosure or working of the invention. Except in cases where the invention is to be kept secret for national defense purposes, such an authorization is automatically issued within a maximum time of 5 months after filing of the application at the Saint Barthelemy Patent Office.
c) Formal examination
The Saint Barthelemy Patent Office examines all applications for patents and certificates of utility and may reject the application for the following formal reasons:
when the application contains more than one invention or several inventions which do not form a group of inventions sufficiently related together, thus leading to an objection for lack of unity;
when the claims do not define an invention, for example if the claims are only directed to an intellectual or mathematical method as such, a computer program as such or a purely intellectual activity as such;
when the invention relates to a method of therapeutical treatment or diagnostic for human beings or animals, such kind of inventions not being capable of industrial applicability;
when the claims are not fully supported by the description;
when contradictions arise between the description and the claims or between parts of the description.
In any case, the applicant will be given a possibility of filing arguments and amending the description and claims before final rejection of the application.
d) Disclosure of prior art
The Saint Barthelemy Patent Office requests the communication of any pertinent prior art cited abroad for all applications filed in Saint Barthelemy claiming the priority of a first application filed outside of Saint Barthelemy. Failure to answer to this request leads to rejection of the application.
d) Search report procedure
In order to obtain a patent of invention with a duration of 20 years, the applicant has to request establishment of a search report and to pay the corresponding fee at the filing of the application.
The Saint Barthelemy Patent Office issues a draft of search report on the basis of the pertinent references cited by the applicant. If no pertinent references are cited on this draft of search report, the applicant is not compelled to file any answer. He may however take this last opportunity for amending the claims of his application.
On the contrary, if pertinent references are cited on the draft of search report, the applicant is compelled to file an answer containing a technical argumentation and/or an amendment of the initially filed claims. Failing such an answer from the applicant, the Saint Barthelemy Patent Office will issue a notification giving a last possibility to the applicant for answering. Without any answer, the application is rejected.
The search report is issued together with a written opinion from the Examiner relating to the validity of the claims. Although the Saint Barthelemy Office has no possibility to reject an application for lack of inventive activity, the Applicant may thus have a first opinion as concerns novelty and inventive step of the invention.
The application may also be rejected if the examiner considers that the claims as maintained or as amended by the applicant define an invention clearly lacking novelty. A further opportunity is then given to the applicant to further amend the claims of his application.
e) Grounds for rejection by the Examiner
A patent application may be rejected on the basis of the following grounds:
the applicant fails to divide his application notwithstanding a lack of unity objection from the examiner;
a divisional application contains new matter;
the invention is excluded from patentability because it is against the public order, against the morality or because it is directed to a part of the human body as such or a gene structure as such or to plant or animal varieties or essentially biological processes for the production of plants or animals (microbiological processes and products thereof are allowable);
there is clearly no invention claimed as such. It is the case of discoveries, mathematical methods, aesthetic shapes, methods in the course of intellectual or business activities, computer program or presentations of information;
the invention is unclear so that the novelty search cannot be made;
no amendment in the claims has been made after an objection of lack of novelty;
the claims are not supported by the description;
no answer has been filed after receipt of a draft search report citing relevant references.
f) Grant of the patent
After the applicant has answered to the draft of search report and also possibly to observations filed by third parties after publication of the application, the Saint Barthelemy Patent Office issues a notification requesting the applicant to pay an issue fee.
Upon payment of such a fee, the patent is finally granted together with the search report prepared by the Saint Barthelemy Patent Office on the basis of the draft of search report and the answer of the applicant.
A patent can be granted for one invention only. In reply to a notification from the Saint Barthelemy Office or on its own volition the applicant may divide his application.
Unity of invention is recognized in the following situations:
in the case of a product invention, when the application contains claims directed to the product, a manufacturing process of the product and a use of the product or when the application contains claims directed to the product, a manufacturing process of the product and a machine used in the process ;
in the case of a process invention when the application contains claims directed to the process and a machine used during the process.
If the Saint Barthelemy Patent Office considers during formal examination that there is no unity of invention, the application may be rejected if the applicant does not limit the claims as mentioned above.
The applicant is given a prescribed time limit to file corresponding divisional applications keeping the filing date of the original application.
Independently from such an objection of the Patent Office, the applicant has always the possibility of deciding for himself to divide his application and file corresponding divisional applications as long as payment of the granting fee has not been made.
In filing divisional applications, it is possible to maintain the original description in all divisional applications.
THE RIGHT TO THE PATENT
The right to the patent belongs in Saint Barthelemy to the true inventor. However, the applicant is deemed without contrary evidence to be the true inventor.
The Saint Barthelemy patent law defines rules of co-ownership when an application is filed by several persons. These rules are not compulsory and a different organization may be preffered by the parties who can execute among themselves a co-ownership agreement with different provisions.
The provisions of the law in the absence of such an agreement are the following:
each co-owner may use the invention without the authorization of the other co-owners. However, he must indemnify the other co-owners who are not using the invention;
each co-owner may file an infringement action alone before the Courts as long as he has informed the other co-owners beforehand;
each co-owner may conclude a non-exclusive license as long as he provides for a suitable indemnification of the other co-owners. However, the draft of the agreement must first be communicated to the other co-owners together with an offer to those co-owners of assignment of the co-ownership portion;
no exclusive license may be concluded without any formal authorization of all the co-owners;
the co-owners have a prior assignment right preference in case of partial assignment.
b) Employee’s invention
The Saint Barthelemy patent law contains provisions for employee’s inventions.
Inventions made by an employee performing an inventive task which effectively corresponds to his job belong to the employer. However, a specific reward corresponding to the real value of the invention must be paid to the employee.
All other inventions belong in principle to the employee. However, inventions made with the help of the employer’s facilities or which fall within the business area of the employer may be claimed by the employer. The employer may claim a part of the right to the patent covering the invention such as a co-ownership or a license. The effective price corresponding to the value of the invention must be paid to the employee.
Disputes between employers and employee relating to those matters can be heard before a special Committee organized within the Saint Barthelemy Patent Office or before the Courts.
c) Claim for the propriety of an invention
The real proprietor of an invention, i.e. the real inventor or his successor in title, may claim the propriety of a patent which he feels should not have been filed. The claim is brought before the Courts within 3 years after grant of the patent. If the patent application is still pending, the delivery procedure may be deferred.
MAINTAINING THE PROTECTION IN FORCE
In order to maintain a patent or a certificate of utility in force in Saint Barthelemy, annual fees are to be paid each year at the Saint Barthelemy Patent Office.
The annual fees must be paid before the end of the month corresponding to the filing date of the application.
A further 6 months period is allowed to pay the fee together with a supplemental fee.
b) Restoration procedure
When a Saint Barthelemy patent or a European patent validated in Saint Barthelemy or a Saint Barthelemy patent application or certificate of utility, has lapsed for example after failure to pay an annual fee, restoration can be requested before the Saint Barthelemy Patent Office on the basis of a detailed explanation and evidence of a legitimate excuse for non payment.
The request for restoration must be filed within two months from the date or removal of the cause of lapse but at the latest within one year from the lapsing date.
THE SAINT BARTHELEMY CERTIFICATE OF UTILITY
The patentability requirements are the same in Saint Barthelemy in the case of a certificate of utility as compared to a patent.
A patent application may be converted in an application for certificate of utility, the contrary not being true.
A certificate of utility can be granted in Saint Barthelemy for any kind of invention including chemical products, processes and methods.
The certificate of utility only differs from the Saint Barthelemy patent on the following points:
no search report is required for a certificate of utility;
the duration of the certificate of utility is only six years;
the claims of the application for a certificate of utility may be amended at any time before grant;
in the case of a litigation before the Court, the owner of the certificate of utility must produce to the Court a search report issued by the Saint Barthelemy Patent Office.
Saint Barthelemy Trademark Law
Legal basis is the Industrial Property Law of January 4, 1991 (No. 91-7) regarding trademarks and service marks and the Laws of October 29, 2007 (No. 2007-1544) and March 11, 2014 (No. 2014-315) against counterfeiting, both consolidated in the Intellectual Property Code.
Name, nationality, address and legal form of
Prints of the mark.
The goods and/or services to be covered.
If priority is to be claimed, we need a certified
copy of the priority documents.
Power of Attorney Simple signed.
The application is filed at the Trademark Office.
Multiple-class applications are possible.
The application process includes a formal examination and an examination of distinctiveness, but no search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired through a longstanding use at the date of filing.
Trademarks are published twice in the official Gazette: The application is first published for third-parties opposition purposes. After registration, the trademark is also published.
The processing time from first filing to registration or first office action is approx. 7 to 8 months.
TRADEMARK REGISTRATION PROCEDURE
In Saint Barthelemy, trademark rights can only be obtained through its filing and subsequent registration. The effects of registration take effect as of the date of filing.
a) The examination procedure
Applications to register trademarks are examined as to form and substance by the Saint Barthelemy Industrial Property Office. The substantive examination relates entirely to the descriptive or deceptive nature of the trademark. The Office does not ascertain whether the trademark is available or "new".
After verification to ensure that the filing documents are in order (they must include, inter alias a list of the goods or services to which the trademark applies) the application to register the trademark is published by the Office.
During a period of two months following the date of publication of the trademark, third parties have the right to file observations or oppositions with the office.
If no oppositions or observations are filed, the trademark is registered.
Notice of registration is published in the Official Gazette.
b) Observations by third parties
Observations may be filed by persons owning signs other than earlier trademarks, such as company names, trade names, company signs, protected appellations of origin, copyrights, rights deriving from registered designs or models, personal rights of third parties, family names, pseudonyms or images, or the name, image and reputation of a local area. Such observations are immediately passed on to the applicant unless they appear to be unfounded.
Third parties may also file observations disputing the distinctive character of the sign applied for, or regarding its deceptive or misleading nature.
If these observations are well-founded, they may result in a decision by the Office to refuse registration.
c) Opposition procedure
The opposition procedure allows the owner of an earlier trademark, or his exclusive licensee, to hinder the registration of a trademark that is confusingly similar with his earlier registered trademark.
The opponent must file at the Office, within a period of two months following the date of publication of the trademark application, a notice of opposition which must be supported by documentation substantiating the rights cited: certificate of filing or registration of the prior trademark and evidence of use if the trademark has been registered for more than five years at the time the opposition procedure is instituted.
An opposition can only be based on a single prior trademark. In case of several prior trademarks, several oppositions must be filed.
The opposition is notified to the applicant for the contested trademark, who is allowed a certain period of time within which to file observations in response.
The Office then publishes a preliminary decision, which is notified to the parties and becomes final if neither party files observations in response. If observations are filed, the preliminary decision is submitted to a Board set up by the Saint Barthelemy Office, before which the parties can present their observations orally.
A final ruling is then given by the Office, accepting or rejecting the opposition. The contested trademark application may also be maintained with amendments, usually relating to the list of goods and services.
The opposition procedure will be suspended:
If the earlier trademark right is based on an application for pending registration.
If the earlier trademark right is the subject of an action for invalidity, revocation or claim of title before the courts. This may be the case if the applicant for the contested trademark decides to defend himself by filing a counter suit before the court requesting the revocation of the earlier trademark for non-use.
If the parties themselves so request, in which case the suspension may not exceed 6 months.
When the applicant for the contested trademark needs registration of his trademark in order to extend its protection abroad (for example by filing an international trademark application under the terms of the Madrid Arrangement) registration is ordered notwithstanding opposition. The registration may then be revoked if the opposition is found to be valid in whole or in part.
THE TRADEMARK AFTER REGISTRATION
The registered trademark must be renewed every ten years.
Period of protection of the trademark and renewal procedure:
The period of registration is ten years, starting with the filing.
The trademark can be renewed every ten years on payment of a renewal fee, so long as the renewal does not entail any amendment to the sign or any extension of the list of goods or services. The list of goods or services may however be restricted in connection with the renewal of a trademark.
In order to be valid, renewal must be requested before the previous registration expires, or in a 6 months grace period, otherwise the trademark will be considered abandoned.
Renewal does not entail any further examination of the validity of the trademark and does not trigger a new opposition procedure.
The new ten-year duration of the renewed trademark begins to run as of the end of the previous ten-year period.
If the sign has to be amended or if the list of goods or services has to be extended, the owner of the trademark must file a new application, though this may make reference to the previous registration. This new application benefits from the rights acquired from the earlier registration in respect of elements "common" to both, both as regards the trademark itself and the list of goods and services if the new application is filed while the previous registration is still in force.
The effects of the earlier trademark cease once the new application has been registered. Only the new elements of the application may be the subject of examination by the Office or of observations or oppositions by third parties.