The revised Patents and Trade Marks Law passed last year came into full force as of April 2012, stipulating that only registered agents who are resident in the Cayman Islands can do business directly with the Registry of Patents and Trade Marks in Cayman.
Before the new law, which took effect in December 2011, overseas companies could directly register their patents and trademarks in Cayman without engaging a local go-between. The new legislation aligns Cayman’s law more closely with that of other jurisdictions and creates a new local industry
In fall 2009, Premier McKeeva Bush told Cayman Free Press about plans to amend the law, saying the country was missing out on opportunities created when overseas companies choose to register their patents and trademarks in Cayman.
“The way it is set up now, Cayman is not getting a thing out of it,” he said. “It won’t mean huge amounts of revenue, but it will create some jobs.”
The Cayman registry allows companies to extend patents and trade mark rights that have already been registered in other jurisdictions, such as the United Kingdom and under the Madrid Protocol. In 1998, Cayman’s law was amended to also allow companies holding European Community-registered trademarks to extend their rights through Cayman’s registry.
According to Registrar General Cindy Jefferson-Bulgin, since 1998 the number of patents and trademarks registered in Cayman has grown steadily. At the end of 2011, the Cayman Registry held about 5,000 active patents and trademarks.
From 2006-2011, the Registrar recorded the registration of nearly 2,160 new patents and trademarks, or roughly about 360 per year.
As of 31 May, Jefferson-Bulgin identified 17 local firms as having been licensed by the Registry as patent and trademark agents, including Higgs & Johnson Corporate Services.
Higgs & Johnson recently sent out a bulletin explaining the particulars of the new law: “As of April 1, 2012, owners of patents or trademarks can no longer transact business directly with the Registry of Patents and Trade Marks (the “Registry”) in the Cayman Islands. Pursuant to the new Patents and Trade Marks Law, 2011 (the “New Law”), only a registered agent who is ordinarily resident in the Cayman Islands may transact business with the Registry. General searches however may still be conducted by any member of the public upon payment of the requisite fees.”
According to the firm, “Under the New Law, owners of a patent or trade mark recorded at the Registry prior to the commencement of the law must now appoint a registered agent upon the next dealing with the Registry in relation to such patent or trade mark or when they next pay their annual fee.”
In addition to the requirement for local registered agents, the new law allows companies to obtain a ‘Certificate of Good Standing’ from the Registrar that shows the patent or trademark has been registered in Cayman and that all applicable annual fees and penalties have been paid, according to the firm.
“It is also now possible for an expired patent or trade mark to be renewed upon an application by the registered agent and payment of the relevant fees. However, where a renewal application is filed more than two months after expiry, a penalty fee will apply in addition to the renewal fee and any other outstanding fees,” according to the firm.
The new law also creates an obligation for patent or trademark owners to notify the Registry when that patent or trademark has been abandoned. Additionally, the new law gives the Registrar “increased powers to cancel a record in circumstances where there is a default in payment of fees or resignation of a registered agent”, according to the firm.
If a patent or trademark owner fails to pay annual fees and penalties for more than 12 months, the record of the patent or trademark is now liable to cancellation. Also, if a registered agent resigns, the patent or trademark owner has 60 days (from when the Registrar is notified of the agent’s resignation) to appoint a new registered agent, or the record of the patent or trademark will be cancelled.