The Patents Act, 1996
SECTION 40 OF THE PATENT ACT states:
( 1 ) Subject to the other provisions of this Part, Rights of owner of
the owner of a patent shall have the following exclusive rights in relation
to the patent:
-
to exploit the patented invention;
-
to assign or transmit the patent;
(c) to conclude licence contracts.
(2) The owner of the patent shall have the right, subject to sections 43,
46 and 58, to take action against any person exploiting the patented invention
in Trinidad and Tobago without his agreement.
(3) For the purposes of this Part, "to exploit" or "exploiting" a patented
invention means any of the following acts in relation to the patent:
(a) when the patent has been granted in respect of a product (i)making,
importing, offering for sale, selling or using the product;
(ii) stocking such product for the purposes of offering for sale, selling
or using;
(b) when the patent has been granted in respect of a process(i) using the
process;
(ii) doing any of the acts referred to in paragraph (a), in respect of
a product obtained directly by means of the process.
SECTION 41 OF THE PATENT ACT
41. (1) While in force a patent shall confer on its proprietor the right
to prevent all persons not having his consent from supplying or offering
to supply in Trinidad and Tobago a person (other than a person entitled
to engage in commercial working of the patented invention) with means relating
to an essential element of that invention, for putting it into effect therein,
provided that that person knows, or it is obvious to a reasonable person
in the circumstances that those means are suitable for putting, and are
intended to put that invention into effect.
(2) Subsection (1) shall not apply when the means referred to therein are
staple commercial products, except when the person induces the person supplied
to commit acts which the proprietor of the patent is entitled to prevent
by virtue of section 40.
(3) Persons performing acts referred to in paragraphs (a), (b), or (c)
of section 42 shall not be considered to be persons entitled to engage
in commercial working of the invention for the purposes of subsection (1).
SECTION 42 OF THE PATENT ACT
The rights conferred by a patent shall not extend to (a) acts done privately
and for non-commercial purposes;
(6) acts done for experimental purposes relating to the subject matter
of the relevant patented invention;
(c) the extemporaneous preparation for individual cases in a pharmacy of
a medicine in accordance with a medical prescription or acts concerning
the medicine so prepared; and
(d) the use of articles on aircraft, land vehicles or vessels of other
countries which temporarily or accidentally enter the airspace, the territory
or territorial waters of Trinidad and Tobago.
SECTION 43 OF THE PATENT ACT
43. The rights conferred by a patent shall not extend to acts in respect
of articles which have been put on the market in Trinidad and Tobago by
the owner of the patent or with his consent.
SECTION 44 OF THE PATENT ACT
44. The extent of the protection conferred by a patent shall be determined
by the terms of the claim; and, the description and drawings shall be used
to interpret the claims.
SECTION 49 OF THE PATENT ACT
49. Subject to the provisions of sections 42, 43, 44, 46
and 48 the performance of any of the acts referred to in sections
40 and 41, in relation to a patent while it is in force, without the authorization
of the proprietor of the patent, shall constitute an infringement.
SECTION 50 OF THE PATENT ACT
50. (1) Subject to the provisions of this Part, civil proceedings may be
brought in the Court by the proprietor of a patent in respect of any act
alleged to infringe the patent and (without prejudice to any other jurisdiction
of the Court) in those proceedings a claim may be made for (a) an injunction
restraining the defendant from any apprehended act of infringement;
(b) for an order for him to deliver up or destroy any patented product
in relation to which the patent is infringed or any article in which that
product is inextricably comprised;
(c) for damages in respect of the infringement;
(d) for an account of the profits derived by him from the infringement;
(e) for a declaration that the patent is valid and has been infringed by
him.
(2) The Court shall not, in respect of the same infringement, both award
the proprietor of a patent damages and order that he shall be given an
account of the profits.
SECTION 51 OF THE PATENT ACT
51. (1) In proceedings for infringement of a patent damages shall not be
awarded, and no order shall be made for an account of profits, against
a defendant who proves that at the date of the infringement he was not
aware, and had no reasonable grounds for supposing that the patent existed;
and a person shall not be taken to have been so aware or to have had reasonable
grounds for so supposing by reason only of the application to a product
of the word "patent" or "patented", or any word or words expressing or
implying that a patent has been obtained for the product, unless the number
of the patent accompanied the word or words in question.
(2) Where an amendment of the specification of a patent has been allowed
under any of the provisions of this Act, no damages shall be awarded in
proceedings for an infringement of the patent committed before the decision
to allow the amendment unless the_Court is satisfied that the specification
of the patent as published was framed in good faith and with reasonable
skill and knowledge.
SECTION 52 OF THE PATENT ACT
52.(1) If the validity of a patent is put in issue in proceedings for infringement
of the patent and it is
found that the patent is only partially valid, the Court may, subject to
subsection (2), grant relief in respect of that part of the patent which
is found to be valid and infringed.
(2) Where in any such proceedings it is found that a patent is only partially
valid, the Court shall not grant relief by way of damages, costs or expenses,
except where the plaintiff proves that the specification for the patent
was framed in good faith and with reasonable skill and knowledge and in
that event the Court may grant relief in respect of that part of the patent
which is valid and infringed, subject to the discretion of the Court as
to costs or expenses and as to the date from which damages should be reckoned.
(3) As a condition of relief under this section the Court may direct that
the specification of the patent shall be amended to its satisfaction upon
an application made for that purpose under section 63, and an application
may be so made accordingly, whether or not all other issues in the proceedings
have been determined.
SECTION 53 OF THE PATENT ACT
53. (1) If in any proceedings before the Court the validity of a patent
to any extent is contested and that patent is found by the Court to be
wholly or partially valid, the Court may certify the finding and the fact
that the validity of the patent was so contested.
(2) Where a certificate is granted under this section, then, if in any
subsequent proceedings before the Court for infringement of the patent
concerned or for revocation of the patent a final order or judgment is
made or given in favour of the party relying on the ._ validity of the
patent as found in the earlier proceedings, that party shall, unless the
Court otherwise directs, be entitled to his costs or expenses as between
attorney-at-law and client (other than the costs of expenses of any appeal
in the subsequent proceedings).
SECTION 54 OF THE PATENT ACT
54. (1) Subject to the provisions of this section, the holder of an exclusive
licence under a patent shall have the same right as the proprietor of the
patent to bring proceedings in respect of any infringement of the patent
committed after the date of the licence; and references to the proprietor
of the patent in this Act relating to infringement shall be construed accordingly
(2) In awarding damages or granting any other relief in any such proceedings
the Court shall take into consideration any loss suffered or likely to
be suffered by the exclusive licensee as such as a result of the infringement,
or, as the case may be, the profits derived from the infringement, so far
as it constitutes an infringement of the rights of the exclusive licensee
as such.
(3) In any proceedings taken by an exclusive licensee by virtue of this
section, the proprietor of the patent shall be made a party to the proceedings,
but if made a defendant shall not be liable for any costs or expenses unless
he enters an appearance and takes part in the proceedings.
SECTION 55 OF THE PATENT ACT
55. Where by virtue of a transaction, instrument or event to which section
35 applies a person becomes the proprietor or one of the proprietors or
an exclusive
licensee of a patent and the patent is subsequently infringed, the Court
shall not award him damages or order that he be given an account of the
profits in respect of such a subsequent infringement occurring before the
transaction, instrument or event is registered unless-
the transaction, instrument or event is registered within the period of
six months beginning with its date; or
-
the Court is satisfied that it was not practicable to register the transaction,
instrument or event before the end of that period and that it was registered
as soon as was practicable thereafter.
SECTION 56 OF THE PATENT ACT
56. (1) Where a person (whether or not the proprietor of, or entitled to
any right in, a patent) by circulars, advertisements or otherwise threatens
proceedings
for any infringement of a patent, a person aggrieved by the threats (whether
or not he is the person to whom the threats are made) may, subject to subsection
(4), bring proceedings in Court against the person making the threat, claiming
any relief mentioned in subsection (3).
(2) In any such proceedings the plaintiff shall, if he proves that the
threats were so made and satisfies the Court that he is a person aggrieved
by them, be entitled to the relief claimed unless(a)the defendant proves
that the acts in respect of which proceedings were threatened constitute
or, if done, would constitute an infringement of a patent; and
(b) the patent alleged to be infringed is not shown by the plaintiff to
be invalid in a relevant respect.
(3) The said relief is( a) a declaration to the effect that the threats
are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) damages in respect of any loss which the plaintiff has sustained by
the threats.
(4) Proceedings may not be brought under this section for a threat to bring
proceedings for an infringement alleged to consist of making or importing
a product for disposal or of using a process.
(5) It is hereby declared that a mere notification of the existence of
a patent does not constitute a threat of proceedings within the meaning
of this section.
SECTION 57 OF THE PATENT ACT
57(1) Without prejudice to the Court's jurisdiction to make declaration
apart from this section, a declaration that an act (that is to say, the
use by any person of any process" or the making or use or sale by any person
of any product) does not, or a proposed act would not, constitute an infringement
of a patent, may be made by the Court in proceedings between the person
doing or proposing to do the act and the proprietor of the patent, notwithstanding
that no assertion to the contrary has been made by the proprietor, if it
is shown-
(a) that that person has applied in writing to, the proprietor for a written
acknowledgement to the effect of the declaration claimed, and has furnished
him with full particulars in writing of the act in question; and
(b) that the proprietor has refused or failed within a reasonable time
to give any such acknowledgement.
(2) No declaration under subsection (1) shall be made if the act in question
is already the subject matter of an infringement proceeding.
SECTION 58 OF THE PATENT ACT
58, (1) Where a patent is granted for an invention, a person who before
the date of filing of the patent application or, if priority was claimed,
before the date of priority, does in good faith in Trinidad and Tobago
an act which would constitute an infringement of the patent if it were
then in force, or makes in good faith effective and serious preparation
to do such an act, shall have the rights specified in subsection (2).
(2) Any such person shall have the right(a) to continue to do or, as the
case may be, to do that act himself; and
(b) if the act was done or preparations had been made to do it in the course
of a business
(i) to assign the right under paragraph (a); to transmit the right under
paragraph (a) to his heirs on his death or, in the case of a body corporate
on its dissolution, to any person who acquires that part of the business
in the course of which the act was done or preparations had been made to
do it; or
(i) to authorize the act to be done by any partners of his for the time
being in that business, and the doing of that act by virtue of this subsection
shall not amount to an infringement of the patent concerned.
(3) The rights specified in subsection (2) shall not include the right
to grant a licence to any person to do an act referred to in subsection
(1).
(4) Where a product which is the subject of a patent is disposed of by
any person to another in exercise of a right conferred by subsection (2),
that other and any person claiming through him shall be entitled to deal
with the product in the same way as if it had been disposed of by a sole
proprietor of the patent.
SECTION 73 OF THE PATENT ACT
OFFENCES
73 If a person makes or causes to be made a false entry in any register
kept under this Act, or a writing falsely purporting to be a copy or reproduction
of an entry in any such register, or produces or tenders or causes to be
produced or tendered in evidence any such writing, knowing the entry or
writing to be false, he shall be liable-
(a) on summary conviction, to a fine of twenty thousand dollars;
(b) on conviction on indictment, to a fine of forty thousand dollars and
to imprisonment for ten years.
SECTION 74 OF THE PATENT ACT
74. (1) If a person falsely represents that anything disposed of by him
for value is a patented product or process he shall, subject to the following
provisions of this section, be liable on summary conviction to a fine of
ten thousand dollars.
(2) For the purposes of subsection (1) a person who for value disposes
of an article having stamped, engraved or impressed on it or otherwise
applied to it the word "patent" or "patented" or anything expressing or
implying that the article is a patented product, shall be taken to represent
that the article is a patented product.
(3) Subsection (1) does not apply where the representation is made in respect
of a product after the patent for that product or, as the case may be,
the process in question has expired or been revoked and before the end
of a period which is reasonably sufficient to enable the accused to take
steps to ensure that the representation is not made (or does not continue
to be made).
(4) In proceedings for an offence under this section it shall be a defence
for the accused to prove that he used due diligence to prevent the commission
of the offence.
SECTION 75 OF THE PATENT ACT
-
(1) If a person represents that a patent has been applied for in respect
of any article disposed of for value by him, and
-
(a) no such application has been made; or
(b) any such application has been refused or withdrawn,
he shall, subject to the following provisions of this section, be liable
on summary conviction to a fine of ten thousand dollars.
(2) Subsection (1)(h) does not apply where the representation is made (of-
continues to be made) before the expiry of a period which commences with
the refusal or withdrawal and which is reasonably suficient to enable the
accused to take steps to ensure that the representation is not made (or
does not continue to be made).
3) For the purposes of subsection ( l ) a person who for value disposes
an article having stamped, engraved or impressed or it or otherwise applied
to it the words "patent applied for" or "patent pending" or anything expressing
or implying that a patent has been applied for in respect of the article,
shall be taken to represent that a patent has been applied for in respect
of the article.
(4) In any proceedings for an offence under this section it shall be a
defence for the accused to prove that he used due diligence to prevent
the commission of such an offence.
SECTION 76 OF THE PATENT ACT
76 If any person uses on his place of business or on any document issued
by him,or otherwise, the words
"Intellectual Property office" or any other words suggesting that his place
of business is, or is officially connected with, the Intellectual Property
Office, he shall be liable on summary conviction to a fine of fifteen thousand
dollars.
SECTION 77 OF THE PATENT ACT
77( 1 ) Where an offence under this Act which has been committed by a body
corporate is proved to have been committed with the consent or connivance
of, or to be attributable to any neglect on the part of, a director, manager,
secretarv or other similar officer of the bodv corporate, or any person
who was purporting to act in any such capacity, he, as well as the body
corporate, shall be guilty of that offence and shall be liable to be proceeded
against and punished accordingly.
(2) Where the affairs of a body corporate are managed by its members, subsection
(1) shall apply in relation to the acts and defaults of a member in connection
with his functions of management as if he were a director of the body corporate.
SECTION 78 OF THE PATENT ACT
78. No prosecution for an offence under this Act shall be commenced after
the expiration of five years after the commission of the offence or one
year after the discovery thereof, whichever date last occurs.
SECTION 79 OF THE PATENT ACT
REPRESENTATION
79. (1) A person who is an Attorney-at-law shall be entitled to represent
any party in any matter or proceedings before the Controller under this
Act, provided-
(a) that the name of such a person is on the Roll of Attorneys-at-law kept
under section 13 of the Legal Profession Act No. 21 of 1986
(b) that he resides and has a place of business in Trinidad and Tobago.
(2) Where an applicant's ordinary residence or principal place of business
is outside of Trinidad and Tobago he shall be represented by an Attorney-at-law
resident and practising in Trinidad and Tobago.
SECTION 80 OF THE PATENT ACT
LEGAL PROCEEDINGS
80. (1) An appeal to the Court shall lie from any order or decision of
the Controller under this Act or the rules made thereunder except any of
the following decisions, that is to say:
(a) a decision falling within section 19(5);
(b) a decision under rules which is excepted by rules from the right of
appeal conferred by this section.
(2) In any such appeal or other proceedings before the Court, the Controller
shall be entitled to appear or be represented and shall appear if so directed
by the Court.
(3) In any appeal or other proceedings under this Act, the Court may exercise
any power which could have been exercised by the Controller in the proceedings
from which the appeal is brought.
(4) Save as otherwise provided in this Act, an appeal under this section
shall be made within three months from the date of the order or decision,
as the case may be, of the Controller or within such further time as the
Court may allow in accordance with the Rules of Court.
(5) Rules of Court shall make provision for the appointment of scientific
advisers to assist the Court in proceedings under this Act, for regulating
the functions of such advisers and for payment of such remuneration to
them as the Court may determine from time to time.
We can be reached at the following :
