Registration Overview in Trinidad and Tobago
Applicants should submit the following documents for a Patent:
1. Patent Application
2. A copy of the patent specifications, claims, abstract and drawings, if any.
3. A simply signed power of attorney.
4. Statutory declaration [Where Applicant is not Inventor] The notarized statement justifying the applicant’s right to the invention, if he is not the inventor. (To be filed within 2 months from date of filing)
5. Official English translation of the international application (Where Applicable)
TERM OF PROTECTION OF A PATENT
The term of protection for a patent in Trinidad and Tobago is 20 years as long as the patent is maintained and the term is calculated from the date of filing.
Where there are prior patent applications made elsewhere, the patent application must be made within 1 year of the date of filing of the priority document.
Information for Entry into the National Phase in Trinidad and Tobago (PCT Applications)
1. Names and addresses of the applicant(s) and the inventor(s).
2. The state and country of incorporation as well as the legal status of the applicant.
3. Authorization of Agent (form enclosed), must be on A4 size paper. No notarization or legalization required. General Authorizations of Agent are not accepted for patent applications in Trinidad and Tobago.
4. Statement justifying the applicant’s right to the invention if he is not the inventor (form enclosed). Notarization of this document is required.
5. If the international application was not filed in English, and has not been published under the PCT in English, an English translation of the international application is required. The translation must be verified by the translator as a true and correct translation. However, if the verified translation cannot be provided at the time of filing, the Intellectual Property Office (IPO) will accept an unverified translation, and the verified translation can be submitted after filing.
6. The Authorization of Agent and Statutory Declaration forms, as well as the certified copy of the priority document, if applicable, can be filed subsequently to filing the application in Trinidad and Tobago. If the documents are missing, the Controller will send a notice fixing an official deadline for receipt of the missing documents, which is usually two months from the date of the note. This deadline is extendible on payment of a fee.
Time limit for entry into the National Phase:
Time limits for entry into National Phase in Trinidad and Tobago is thirty (30) months from the priority date under Chapter I, and thirty-one (31) months under Chapter II.
An official filing receipt is usually issued by the Intellectual Property Office within seven (7) working days of filing the application.
Search and Examination:
Once notified by the Intellectual Property Office that all formal requirements are completed (usually within 3-6 months of filing), a request for examination must be made. The Controller will accept search and examination reports from an International Preliminary Examination Authority approved by WIPO. Granted patents from such offices may also serve as a basis for grant of local applications.
No time has been fixed by the law or by the Controller to request examination, but the application will not proceed to grant unless examination is requested.
Grant of patent registration in Trinidad and Tobago:
Currently, the estimated time from filing date to issuance of a patent is approximately 2½ to 3 years.
Term of Patent in Trinidad and Tobago:
The term of a patent is twenty (20) years from the filing date (in the case of PCT patents, this is the international filing date) and protection commences from publication of the patent.
Patent Annuities in Trinidad and Tobago:
For PCT patents and patent applications the international filing date is the relevant date from which annuities are calculated and annuities are payable in advance for each year, starting one year after the international filing date. Annuities need not be paid until the expiry of 30 months for Chapter I and 31 months for Chapter II applications.
If annuities are not paid in accordance with the above deadlines, the patent applications will be deemed withdrawn or the patent shall lapse. There is no provision for restoration for nonpayment of annuities for patents and patent applications.
Trademark Law of Trinidad and Tobago
The registration of a trademark in Trinidad and Tobago is managed by Intellectual Property Office (IPO) which is a department of the Ministry of Legal Affairs, and is governed by the Trade Marks Act Chap. 82:81.
Marks must be non-descriptive, in that they do not describe your goods or services or any characteristics of them. They cannot be commonly used names in the industry and must be distinctive and not general. Naturally, one may not register a mark that is offensive, illegal, specially protected or internationally well known.
Classes of Trademarks
A trademark must be registered under a class or classes of business, which is set out in the Third Schedule of the Trade Marks Act (copy attached). The Applicant must review the list of classes to determine the most appropriate category for goods or services offered.
Multi-class filing system and International Classification are used. Service classes are accepted.
1. Power of Attorney simply signed by the applicant.
Method of Application.
The trademark registration is effected by the filing of the following forms at the Intellectual Property Office:
• Application for the registration of a Trademark form and
• Authorisation of Agent form.
Information needed to complete forms
• Full name of the applicant;
• Address (incl. postal code and country), telephone and fax no.;
• Applicant’s nationality if the applicant is an individual or country of incorporation in the case of a corporate legal entity;
• Specifications of the goods and/or services provided by the applicant;
• If colours are a distinctive feature of the mark, then the names of the colours must be specified and the principal parts of the mark which are colour identified?
Procedure for filing
The completed Trademark Application and Authorisation of Agent forms and seven specimens of the mark (no larger than 8cm x 8cm) are filed at the Intellectual Property Office (IPO) together with the payment of the prescribed fee.
Search of the Registry
There is no requirement that a trademark search be carried out prior to filing. However this is advisable in order to determine whether the particular trademark being applied for is available for registration. Moreover, it will assist in determining whether your trademark usage will infringe the rights of any other registered trademark proprietors.
Trademark registration process
After the Trademark Application and Authorisation of Agent forms are filed the IPO examines the application in order to determine whether it complies with all the formal and legal requirements. The Controller can refuse, conditionally accept or unconditionally accept the application. If the application is refused or the applicant is unwilling to accept the IPO’s conditions, the applicant has three (3) months within which to appeal the IPO’s decision. If the Controller has no queries or objections to the application, the application is accepted for registration and sent for publication. The process from filing to approval can take up to 6 months although the process may sometimes take longer depending on whether the Controller has any queries.
Trademarks are usually published every Wednesday in a daily newspaper. Third parties have within three (3) months of its publication to oppose the trademark. If no oppositions are filed the trademark will be entered on the register and a Certificate of Registration is issued upon payment of the Certificate Fee. However, if a Notice of Opposition is received, both sides must file various documents and an opposition hearing is convened for a final determination of the matter.
Trademark registration lasts for a period of ten years and may be renewed by the owner upon payment of the prescribed renewal fees.
Concerning the filing of a Trademark, please see the following details:
The Examination process takes approximately 4-6 months. If there are no issues and the mark is accepted, it is then placed for publication. The Notice of Opposition period is 3 months wherein registration will be granted barring any Oppositions being filed.
Your client will be required to execute a Power of Attorney which I will provide you with. The Power of Attorney must be an original copy on A4 sized paper (Please note that the TTIPO does not accept any other size of paper) One copy can be provided but it must indicate the matters the Attorney is authorized to deal with. A grace period is granted by the IPO for the filing of the TM1. However, the examination of the TM will be put on hold until the TM1 is provided.
NOTARIZATION, LEGALIZATION OR OTHER FORMS OF ATTESTATION REQUIRED
If Priority is being claimed, Priority Documents must be notarized.