We have been informed of a memorandum issued on 24th September 2020 issued by the Ministry of Justice and Legal Affairs of St. Kitts & Nevis via its IPO Office (IPOSKN), in the person of Ms. Jihan Williams, Registrar of Intellectual Property stating that in order to improve their services and increase user satisfaction the following developments were informed (same that we transcribe as follows):
- In a memorandum dated April 20th, 2020 (delivered through the SKN Bar Association), our Office expressed that applications with renewal and priority dates that would have expired during the State of Emergency will be honoured for six weeks after. We wish to clarify that the extension of the deadlines will be applied 6 weeks after the particular deadline in the application and not six weeks after the end of the State of Emergency. So for example, a trademark with a priority date application ending 1st June 2020 would have enjoyed validity until 13th July 2020. This extension will continue until the cessation of the State of Emergency. We apologize for any misinterpretation or inconvenience that our phrasing would have caused. The discretionary facility to grant extensions has always and will continue to be available for agents who submit evidence in writing of legitimate, extenuating circumstances that would have prevented timely filing of documents.
- The IPOSKN wishes to thank agents and clients for the generous patience displayed in relation to trademark applications over the years. You are well aware of the backlog of applications which grew as a result of the absence of trained trademark examination capacity between 2015 and 2018. Since the backlog began, the number of trademark examiners has moved from zero to three through strategic in-house and external training from our regional and international partners. As such, you hopefully would have felt a marked increase in the processing of applications, particularly this year. At this juncture, we remind you that while the speed of our ability to examine the applications has improved, that we are severely stymied by the publication process which is outside of our control. We trust that you will support the Office’s recommendation to the Ministry to move publication to an online platform under the control of the IPOSKN.
- As outlined in our Office’s presentation hosted by the St. Kitts and Nevis Bar Association earlier this month, many delays in trademark registration results from misclassification of goods and/or services and a seeming unfamiliarity with the Nice Classification. In an attempt to assist agents and potential applicants, our Office has partnered with the European Union Intellectual Property Office (EUIPO) to create a database of goods and services, their appropriate classes and suggested specification wording accepted by the IPOSKN. This initiative falls under the EUIPO’s classification tool called “TMClass”, which seeks to increase predictability and success rates for faster registration. Our database was launched on the 27th July 2020 and can be found at https://euipo.europa.eu/ec2/. A report of the launch can also be found at https://ipo.gov.kn/news/
- We strongly urge agents to avail themselves of this tool to ensure that goods and services of their applications are properly classed and phrased. Terms that appear in our database have been pre approved by the IPOSKN. We-are currently reviewing terms in the Harmonised Database (HDB) that do not appear in our database but there is a strong likelihood that such terms will also be accepted by our Office. This increases predictability and faster processing in the application process.
Over the years a number of patent applications have been submitted to our Office. Due to the absence of examination expertise in the Office and the jurisdiction, the IPOSKN has been unable to process said applications until recently. Through collaboration with our regional and international partners, we are now positioned to access such training and expertise to assist in processing such applications, particularly those that were filed through the Patent Cooperation Treaty (PCT) System. The vast majority of the applications that have been received by the IPOSKN have initially been filed under that system.
Your attention is again brought to s. 27(5) of the Patent Act 2000 which provides that “an application for patent shall be deemed to have been withdrawn if the annual fee is not paid in accordance with the provisions of this section”. I understand that there has been uncertainty as to the fees for patent applications, due in part to the dormancy of the Office in this regard. We therefore take the opportunity to inform you that the fees, albeit old, are, and have always been, contained in the Schedule to the Act and the most common fees have been reproduced in a condensed, user-friendly version overleaf for clarity and ease of reference. Section 27 therefore mandates that annual fees for applications filed at least one year ago are due and payable in order to maintain the application. In an effort to reconcile our inability to process applications with the applicants’ desire for protection in this jurisdiction, our Office is awaiting Ministerial approval to deal with older applications in light of the legal provisions, which if strictly applied, have deemed them to have been withdrawn. There is a recommendation before the Cabinet of Ministers to allow all applicants a grace period to bring their matters up to date and those who comply will have their applications processed.
Agents are therefore strongly encouraged to note and uphold their clients’ responsibility in relation to the payment of fees. Due to the uncertainty that has surrounded fees, where application fees have been overpaid, the funds in excess will be applied to the payment of annual fees. Any underpayment will have to be reconciled accordingly. Letters in respect of 2019 and 2020 applications will shortly be sent to the individual agents for attention and action.
Please note that the Patent Fee schedule is likely to be changed in the near future. Existing applications will be processed according to the existing schedule until it is changed.
The documents required for the filing of a patent application, according to s.16 of the Act are:
- A request for the grant of the patent (see Form A of the Schedule to the Regulations)
- A specification containing a description of the invention
- A claim or claims and any drawings referred to in the description or claim; and
- An abstract
Your patience in relation to these matters is certainly appreciated and your cooperation is sought as we continue our efforts to improve the efficiency of our services to you. If you have any further recommendations on areas in which you wish to see improvement, please let us know so that it can be addressed as best and as soon as possible.