Patents Act (Revised 2020)

Summary

This is the Patents Act (Revised 2020), the core British Virgin Islands statute governing how patents for inventions are applied for, examined, opposed, granted, maintained and revoked. It is a long-standing procedural law (originally 1906, consolidated amendments to 2001) administered mainly by the Registrar (Registrar of Companies), with the Financial Services Commission (referred to as "the Commission") holding specific powers over compulsory licensing and term extension.

• Application process: Sets out who may apply for a patent, the form and content of provisional and complete specifications, and the Registrar's power to refer applications to an examiner or refuse/require amendment.
• Timeframes: Imposes strict statutory periods for leaving a complete specification, accepting it, opposing a grant, and sealing the patent, with limited extensions on payment of prescribed fees.
• Grant and rights: Governs sealing and dating of patents, provisional protection before sealing, the effect of acceptance of a complete specification, and the term and extent of a granted patent.
• Post-grant matters: Covers amendment and disclaimer of specifications, restrictions on damages, compulsory licensing by the Commission, the register of patents, fees, extension of patent term, and revocation.
• Other obligations: Addresses licensed patent agents, patents for deceased inventors, assignment of patents, loss/destruction of patents, exhibition protections, and Crown-related provisions.

The Act remains in force as a consolidated, revised edition current to 1 January 2020 and continues to apply to anyone seeking or holding a BVI patent, as well as to patent agents and the Registrar's office that administers the regime.

Key obligations

• An applicant who does not file a complete specification with the initial application must leave it within 9 months of the application date, extendable to 10 months on payment of the prescribed fee, or the application is deemed abandoned.
• A complete specification must be accepted within 12 months from the date of application, extendable to a maximum of 15 months on payment of the prescribed fee, or the application becomes void.
• Any person opposing the grant of a patent must give notice of opposition within 3 months from the date of advertisement of acceptance of the complete specification, and may be required to give security for costs within that same period or the opposition lapses.
• A patent must be sealed within 15 months from the date of application, except where sealing is delayed by appeal or opposition, or where the applicant dies (in which case sealing may occur within 6 months of death), or where extensions for specification timing have been granted (which extend the 15 month period accordingly).
• Where a second application with a similar title is filed before an earlier patent is sealed, the Registrar may act on the second applicant's request within 2 months of the grant of the first patent.
• Applications for a patent must be made in the prescribed form, accompanied by a provisional or complete specification, and must state an address in Road Town for service of notices.
• An applicant may not institute infringement proceedings unless and until a patent has actually been granted.

Applies to

patent applicants, patentees, inventors, licensed patent agents, the Registrar of Companies, the Financial Services Commission

Deadlines

• 9 months from the date of application (extendable to 10 months): Time to leave a complete specification after a provisional specification, or the application is deemed abandoned.
• 12 months from the date of application (extendable to 15 months): Time within which a complete specification must be accepted, or the application becomes void.
• 3 months from the date of advertisement of acceptance: Time within which any person may give notice of opposition to the grant of a patent, and provide any required security for costs.
• 15 months from the date of application: Deadline for sealing of the patent, subject to specified exceptions (appeal/opposition delay, death of applicant, or extended specification periods).
• 2 months from the grant of a patent on the first application: Window within which the Registrar may act on a second, similarly titled application filed before the first patent is sealed.
• 6 months after the death of the applicant: Extended period within which a patent may be granted to the legal representative and sealed if the applicant dies before the 15 month sealing deadline.