Application Procedure for a Patent

APPLICATION PROCEDURE FOR A PATENT

Where do I apply?

Applications may be filed at the Intellectual Property Office; 3rd Floor, Capital Plaza, 11-13 Frederick Street, Port Of Spain, Trinidad & Tobago.

Patent Application Processing Steps:

  1. Reception of the application
  2. Payment of fees
  3. Formalities Examination
  4. Substantive Examination
  5. Grant and Publication
  6. Certificate issued
  7. Patent Maintenance (Payment of Annuities)

 

1. Overview of the Patent Application

When a national or resident of Trinidad and Tobago files a patent application the formal requirements under the Patent Rules and Regulations are:

1) The Patent Request Form No. 1.
2) A disclosure of the invention must accompany the application. This is the specifications of the invention, which include: Descriptions, Claims, Abstract & Drawings (If necessary).

This gives details about the invention such as the technical field to which the invention relates and also gives information relating to the background art which can be regarded as useful for understanding, searching and examining the patent applications. This is followed by the claims which define the invention in terms of the technical features of the invention. The abstract then follows and this is a summary of the disclosure contained in the description. Any drawings mentioned in the description are placed behind the abstract.

The application must be submitted in triplicate on A4 size paper as outlines in Rule 16 of the Patents Rules and Regulations together with the application fee of $2000. Once these formal requirements have been met, the person in the receiving office will stamp the application and a filing date will be issued, a file number will be issued and the processing of the application will begin.

 

2. How are payments made to the Intellectual Property Office? 

Once an application is made, the prescribed application fee ($2000) must be paid. Maintenance fees (annuities) must be paid yearly from the filing date, commencing on the start of the second year.
All payments are due in advance, payable by certified cheque with the Payee as the Controller, Intellectual Property Office or by Linx or through the District Revenue Office, upon presentation of the prescribed voucher issued by the Intellectual Property Office.

 

3. Formality Examination

  • The application will undergo Formalities Examination as set out by the Patent Act 1996 and Patent Rules 1996. This is the preliminary examination that begins at the time that a filing date is issued to the patent. Formal examination concerns the requirements that the applications must meet in order to proceed to substantive examination.
  • The tasks of the formalities examiner include ensuring that the application has been correctly made (reference to Form No. 1), checking such items as dates and inventors’ details, ensuring that the description and any drawings are correctly presented according to the rules so that they can be published, checking priority details, and so on. 
  • If the application does not comply with all formalities requirements as set out by the Patent Act 1996 Section 23 and the Patent Rules 1996, the applicant will be notified and given the opportunity to correct any deficiency, so as to further process the application.
  • If the application does not comply with all formalities requirements, the applicant will be asked to amend the application. Amendments must be accompanied with the prescribed fee.
  • Once in compliance, the applicant will then be asked to pay Search and Examination fees.

Formal Requirements for an application
• The local patent application may be filed by the applicant himself or through his attorney. If it is filed by his attorney, the attorney will also be required to file an ‘Authorization of Agent’ signed by the applicant.

• If the applicant is not the inventor he will need to file a ‘statement justifying his right’ to the application. This can take the form of an assignment document or a statutory declaration.

 

4.Substantive Examination

  • The document will be examined for patentability based on the Patent Act and Rules. The 3 criteria of novelty, industrial applicability and inventive step must be met. 
  • If any amendments are required, the applicant will be asked to do so.  Amendments must be accompanied with the prescribed fee.
  • Once the application complies with the Act and Rules the application will be granted.

 

5. Publication

  • Once the application complies with the Act and Rules, and is granted, the applicant will be requested to pay the grant and publication fee within 3 months.
  • If the applicant fails to respond within the 3 months, the application will be taken to be withdrawn under Section 25(2), and the applicant would be so informed.
  • If the fee is paid, then under Section 28(1) and (2), as soon as is practicable, a notice of grant should be published in a periodical and the granted patent should be published.
  • The notice of grant will proceed for publication in the Newsday Newspaper. The cost of publication must be paid by the applicant.

 

6. Issuance of Certificate

  • The certificate of grant and register will be prepared by the office. 
  • Under Section 25(5) the patent shall be deemed to have been granted on the date that the notice of grant is published under Section 28(1).
  • The certificate is issued and together with the granted specifications, it will be given to applicant.

 

7. Patent Maintenance (Payment of Annuities)

Maintenance fees or annuities are fees that are paid to retain a patent and such fees increase in amount during the course of the patent term. It must be paid yearly from the filing date, commencing on the start of the second year. The patent would be valid for 20 years from the filing date once annual fees are paid. However, if it is not paid, the application may be withdrawn or revoked. A listing of the annual fees for each year can be seen in the fees section of this manual.

 

Annual fees for patents: [sections 29, 30(1)]

YearAmount
2nd year $200.00
3rd year $400.00
4th year $400.00
5th year $600.00
6th year $900.00
7th year $1,200.00
8th year $1,600.00
9th year $2,000.00
10th year $2,400.00
11th year $3,200.00
12th year $4,200.00
13th year $5,200.00
14th year $6,200.00
15th year $7,200.00
16th year $8,400.00
17th year $9,600.00
18th year $10,800.00
19th year $12,000.00
20th year $13,200.00

 

 

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All rights reserved.

Criminal penalties for Intellectual Property Rights Infringement

IPR

Maximum Penalty (TT Dollars)

Copyright and Related Rights incl. databases

$250,000.00 or ten years imprisonment (summary conviction)

Topography of Integrated Circuits

$10,000.00 or 5 years imprisonment (summary conviction)

Trade Mark (incl. company names represented in a special or particular manner)

$10,000.00 or 6 months imprisonment (summary conviction); $40,000.00 or 10 years imprisonment (indictment)

Industrial Design

$10,000.00 or ten years imprisonment (summary conviction)

Patent and Utility Model

$10,000.00 (summary conviction).

Falsification of patent register: $20,000.00 (summary conviction) or $40,000.00 or ten years imprisonment (indictment)

Geographical Indications

$8,000.00 or three years imprisonment (summary conviction)

Plant Variety

$10,000.00 (summary conviction)

Unauthorised claim of patent rights

$10,000.00 (summary conviction)

Unauthorised claim that a patent has been applied for

$10,000.00 (summary conviction)


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The Copyright Infringement Ship

Piracy Ship

Click here to download image.

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Piracy

Piracy occurs when any of the copyright owner’s exclusive rights are violated.

Note 14 of the TRIPS Agreement on Trade Related Aspects of Intellectual Property Rights (IPRs) provides the following interpretation:

(a) “counterfeit trademark goods” shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation;

(b) “pirated copyright goods” shall mean any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation.

The maximum penalty for copyright infringement is $250,000 or ten years imprisonment. The above pirate ship illustrates some common examples of piracy.


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