Patents Regulations

PUBLISHING DETAILS Revised under the authority of the Law Revision Law (1999 Revision). The Patents and Trade Marks Regulations, 2012 made 31st January, 2012. Consolidated with - The Patents and Trade Marks (Amendment) Regulations, 2017 made 17th May, 2017. Consolidated and revised this 28th day of February, 2018. Arrangement of Regulations Regulation Regulation 1 Citation These Regulations may be cited as the Patents Regulations (2018 Revision). Definitions In these Regulations — “firm of attorneys-at-law” means a sole practitioner, partnership or limited liability partnership or corporate body which engages in the practice of law of the Islands; and “register of agents” means the register of registered agents required to be maintained under section 5(d) of the Law and referred to in regulation 3(1)(d). Registers (1) There shall be maintained in the Registry registers of — (a) recorded patent rights; (b) inactive patent rights; expired patent rights; and (d) registered agents in accordance with section 5(d) of the Law. (2) The registers referred to in paragraph (1) need not be kept in documentary form. Regulation 4 Destruction of items Items contained in the registers maintained under regulation 3(1)(c) shall be destroyed seven years after recording or two years after receipt or despatch of any correspondence relating thereto, whichever is the later. Certificate of good standing A certificate of good standing issued pursuant to section 11 of the Law shall be in the form determined by the Registrar. Correction of errors Where the Registrar is satisfied that an error has occurred he may correct a typographical, arithmetical or procedural error in a register maintained under regulation 3. Content of register entries (1) An entry in a register maintained under regulation 3(1)(a) shall include — (a) the name and address of the owner; (b) the name and address of the registered agent of the owner; the effective date of extension to the Islands; (d) a reference to the particulars of the grant or registration sufficient to identify the patent right in a positive manner; (e) the expiry date of the protection afforded by the recording (being the same date as the expiry of the relevant grant or registration); and (f) a short descriptive headline, and shall make provision for noting any future extensions of, and alterations to, the right recorded and its ownership. (2) An entry in the register of agents shall include the name and address of the registered agent. Repealed Repealed by regulation 5 of the Patents and Trade Marks (Amendment) Regulation, 2017. Registered agent (1) An applicant who wishes to be recognised as a registered agent for patents under section 6 of the Law shall apply to be recognised as a registered agent for design rights, patents and trade marks. (2) The Registrar shall not accept an application to be recognised as a registered agent for patents only. Regulation 9 (3) Upon approval of the application, the Registrar shall enter the name of the registered agent on the register of agents. (4) Subject to paragraph (3), a registered agent shall, on or before the 31st March each year, pay the registered agent annual fee prescribed in the Schedule to the Law. (5) The requirement to pay the annual fee referred to in paragraph (1) does not apply to a registered agent who has paid the annual fee as required by the Design Rights Registration Law, 2016 [Law 29 of 2016] or the Trade Marks Law, 2016 [Law 31 of 2016]. (6) The Registrar may notify the registered agent of the annual fee payable by the registered agent in January based upon the number of patents recorded as attributable to the registered agent which were registered as at 31st December of the prior year. (7) If the annual fee is not paid by 1st April the Registrar may remove the name of the registered agent from the register of agents. (8) Any registered agent who defaults in paying the registered agent annual fee shall pay, in addition to the annual fee, a penalty of — (a) 33.33% of the annual fee referred to in paragraph (1), if the fee and penalty are paid between the 1st April and the 30th June; (b) 66.67% of the annual fee referred to in paragraph (1), if the fee and penalty are paid between the 1st July and the 30th September; and 100% of the annual fee referred to in paragraph (1), if the fee and penalty are paid between the 1st October and the 31st December. (9) A registered agent who has been removed from the register of agents shall, in order to be re-instated in the register of agents, reapply to be recognised as a registered agent and pay the annual fee. (10) A registered agent shall notify the Registrar and any prior registered agent appointed by the owner of a patent upon his appointment by the owner of a patent and the Registrar shall duly record the fact of that appointment in the Registry’s records. (11) The Registrar may require evidence of appointment from a registered agent. (12) For the purposes of paragraph (3), in determining whether a person is a fit and proper person, the Registrar shall have regard to all circumstances, including that person’s — (a) honesty, integrity and reputation; (b) competence and capability; and financial soundness. Regulation 10 (13) In this regulation “annual fee” means the registered agent annual fee prescribed in the Schedule to the Law. Publication

On recording an extension of, or a modification or change to, a right, the Registrar shall publish a notice thereof in the next available issue of the Gazette. Litigation

Where any litigation is instituted in the Grand Court in relation to any patent, an extension of which is recorded or intended to be recorded in the Islands, copies of all process shall be served upon the Registrar, whether or not the Registrar is a party, and shall continue to be so served until the Registrar gives notice to the parties that service upon the Registrar is no longer required. Forms

The Registrar may prescribe forms to be used — (a) to apply for the extension of a patent right under section 7 of the Law; (b) to apply for the recording of a change of particulars of a recorded patent right under section 13 of the Law; to apply for the recording of a renewal of a recorded patent right under section 14 of the Law; (d) to pay the annual fee in respect of a recorded entry under section 12 of the Law; and (e) to apply to be recognised as a registered agent under section 6 of the Law. Practice directions

(1) The Registrar may issue Practice Directions to registered agents for the purpose of — (a) supplementing or clarifying these Regulations, but no Practice Direction shall revoke or vary any of these Regulations; and (b) providing for the practice and procedure of the Registry in respect of any matter not governed by the Law or these Regulations. (2) A Practice Direction issued pursuant to these Regulations shall be published in the Gazette. Regulation 13 Publication in consolidated and revised form authorised by the Cabinet this 13th day of March, 2018. Kim Bullings Clerk of the Cabinet