Under the inherent jurisdiction of the High Court, under Common Law, procedures exist that enable a right holder who has valid grounds for suspecting that the importation of goods infringe any intellectual property right to apply to the Court for an order for the suspension by the Customs authorities of the release into free circulation of such goods. The existing judicial procedures cover the evidence required to be furnished, security or equivalent assurance, notice to all interested persons, duration of suspension, indemnification of the importer and of the owner of the goods and the right of inspection and information. An application may also be made to the Court to have the goods brought under section 84 of the Customs (Control and Management) Act 1993, which states that no goods, class or description of goods, prescribed in Part 1 of the Third Schedule may be imported into Antigua and Barbuda. Part 1 of the Third Schedule, number 3, deems goods, the importation of which is prohibited by any other law of the State, as prohibited goods.

There is no provision enabling the competent authorities to act ex officio. All actions must be initiated by the copyright owner or exclusive licensee or by the owner or authorized user of the industrial property. Under the Copyright Bill, copies may only be seized if the copyright/neighbouring rights owner or exclusive licensee gives notice of objection to the importation of the copies. This provided for in section 50 of the Bill.

According to section 23 of the Trademarks Bill: "(3) Any person who knowingly performs an act which constitutes an infringement as defined in subsection (1) or an unlawful act as defined in section 6(2) is guilty of an offence and is liable on summary conviction to a fine of EC$100,000 and to imprisonment for a term of five years." The following is a list of criminal penalties and procedure as set out in the Copyright Bill in section 46: "(4) Any person who is guilty of an offence under subsection (1) is liable: (a) on summary conviction to a fine not exceeding EC$5,000 or to imprisonment for a term not exceeding two years or to both such fine and imprisonment; (b) on conviction on indictment to a fine not exceeding EC$5,000 or to imprisonment for a term not exceeding three years or to both such fine and imprisonment. (5) Any person who is guilty of an offence under subsection (2) or (3) is liable: (a) on summary conviction to a fine not exceeding EC$2,000 or to imprisonment for a term not exceeding two years or to both such fine and imprisonment; (b) on conviction on indictment to a fine not exceeding EC$5,000 or to imprisonment for a term not exceeding two years or to both such fine and imprisonment. (6) Any person who manufactures or imports into Antigua and Barbuda for sale or rental: (a) any device or means specifically designed or adopted to circumvent any device or means intended to prevent or restrict reproduction of a work, a phonogram or a broadcast or to impair the quality of copies made; (b) any device or means that is susceptible to enable or assist the reception of an encrypted program, which is broadcast or otherwise communicated to the public including by satellite, by those who are not entitled to receive the programme; commits an offence and is liable on conviction to a fine not exceeding EC$10,000 or to a term of imprisonment not exceeding two years. (7) Any person who: (a) removes or alters any electronic rights management information without authority; or (b) distributes or imports for distribution, broadcasting, communication to the public or making available to the public, without authority, of works performances, phonograms or broadcasts, knowing or having reason to know that electronic rights management information has been removed or altered without authority commits an offence and is liable on conviction to a fine not exceeding EC$10,000 or to a term of imprisonment not exceeding two years." These are enforced in accordance with the Criminal Procedure Act (Cap. 117) of Antigua and Barbuda.

These remedies are provided for in our draft bills. Under section 48 of the Copyright Bill, once the Court is satisfied that the at the time of his arrest, the offender had in his possession, custody and control in the course of his business an infringed copy a protected work, the apparatus used to make the copies, it may order that the infringing copy or article be delivered up to the copyright owner or to such other person as it may direct. According to subsection 2: "(2) An order maybe made by the court of its own motion or on the application of the prosecution and may be made whether or not the person is convicted of the offence, so, however, that the court shall not make an order: (a) after the time specified in section 138; or (b) if it appears to the court unlikely that any order will be made under section 137. (3) An appeal lies to the Court of Appeal from an order made under this section by a Magistrate's Court. (4) A person to whom an infringing copy or other article is delivered up in pursuance of an order under this section shall retain it pending the making of an order or the decision not to make an order under section 137." Section 137 describes the procedure and the circumstances for bringing such infringement issues to the Court: "(1) An application may be made to the High Court for: (a) an order that an infringing copy or article delivered up in pursuance of an order under sections 33 and 48 shall be: (i) forfeited to the copyright owner; or (ii) destroyed or otherwise dealt with as the court may direct; (b) an order that an illicit recording of a performance delivered up in pursuance of an order under section 133 or 135 shall be: (i) forfeited to such person having performer's rights or recording rights in relation to the performance as the court may direct; or (ii) destroyed or otherwise dealt with as the court thinks fit; or (c) a decision that no order under paragraph (a) or (b) should be made. (2) In considering what order (if any) should be made, the court shall have regard to all the circumstances of the case and, in particular: (a) where the infringement relates to copyright in a work, whether other remedies available in an action for infringement of copyright would be adequate to compensate the copyright owner and to protect his interest; (b) where the infringement relates to rights conferred under Part IX, whether other remedies available in an action for infringement of those rights would be adequate to compensate the person or persons entitled to the rights and to protect their interests. (3) Provision shall be made by regulations as to the service of notice on persons having an interest in the infringing copy or other articles or the illicit recording, as the case may be, and any such person is entitled: (a) to appear in proceedings for an order under this section whether or not he was served with notice; and (b) to appeal against any order made, whether or not he appeared, and an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal. (4) Where there is more than one person interested in an infringing copy or other article, or as the case may be, an illicit recording, the court shall make such order as it thinks just and may, in particular, direct that such copy, article or recording be sold, or otherwise dealt with, and the proceeds divided. (5) If the court decides that no order should be made under this section, the person in whose possession, custody or control the copy or article or, as the case may be, the recording was before being delivered up or seized is entitled to its return. (6) References in this section to a person having an interest in a copy or other article or a recording include any person in whose favour an order could be made in respect of the copy, article or, as the case may be, recording under this section."

All the draft bills governing intellectual property have provisions for criminal procedures and penalties in cases of wilful infringement as seen for instance in section 34 of the Patent Bill, section 23 of the Trademarks Bill, section 9 of the Integrated Circuits Topography Bill (this gives the Court to make any order necessary in consideration of the circumstances), section 21 of the Industrial Designs Bill, and various sections including section 46 of the Copyright Bill. These sections provide for a fine and/or imprisonment, the confiscation and or the destruction of the illicit product and any other remedy the Court is inclined to grant within its power. The provisions which list the rights conferred on the right holder after registration also describe the infringements under the Bill as seen in section 11(2) and (3) of the Patent Bill.

We are unable to provide any statistics at this time pertaining to such cases arising from the new legislation. The new legislation is about to be implemented in Antigua and Barbuda. In terms of the present system, no such cases have been filed in the year 2000 in the High Court of Justice.

Please see the response to question 35.

The governing legislation for this area is the Copyright Bill. According to section 5: "(1) Unless otherwise specifically provided in this Act, copyright does not subsist in any work unless it satisfies the requirements specified in this part as respects: (a) the category of work; and (b) either: (i) the qualification of the author; or (ii) the country or place of first publication, or in the case of a broadcast or cable programme, the country or place where it is made or from which it is sent, as the case may be." Section 8 goes on to provide a more detailed explanation for the term "country or place": "(1) A literary, dramatic, musical or artistic work, a sound recording or film, or the typographical arrangement of a published edition qualifies for copyright protection if, having regard to section 3, it is first published in Antigua and Barbuda or a specified country. (2) A broadcast qualifies for copyright protection if it is made from a place in Antigua and Barbuda or a specified country by a broadcasting organization in possession of a valid licence granted to it under any law in Antigua and Barbuda or a specified country regulating broadcasting. (3) A cable programme qualifies for copyright protection if it is sent from a place in Antigua and Barbuda or in a specified country in accordance with the law in force regulating transmission by cable." Therefore protection may be provided equally for those in the local right holders as well as those right holders from the Member States. This position is further defined in section 144(1)-(3): "(1) Subject to the provisions of this section the Minister may by order provide that in respect of any country specified in the order, any provisions of this Act so specified shall apply: (a) in relation to persons who are citizens or habitual residents of that country as they apply to persons who are citizens or habitual residents of Antigua and Barbuda; (b) in relation to bodies incorporated or established under the law of that country as they apply in relation to bodies incorporated or established under the laws of Antigua and Barbuda; (c) in relation to literary, dramatic, musical or artistic works, sound recordings, films and editions first published in that country as they apply in relation to such works, sound recordings, films and editions first published in Antigua and Barbuda; (d) in relation to broadcasts made from or cable programmes sent from that country as they apply in relation to broadcasts made from or cable programmes sent from Antigua and Barbuda; (e) in relation to performances taking place in that country or given by an individual who is a citizen or habitual resident of that country, as they apply in relation to performances taking place in Antigua and Barbuda or given by an individual who is a citizen or habitual resident of Antigua and Barbuda. (2) An order made under this section applying any provisions of this Act in relation to any country may apply that provision: (a) without exception or modification or subject to such exceptions and modifications as may be specified in the order; (b) generally or in relation to such classes of works or other classes of case as may be so specified. (3) An order shall not be made under this section in relation to any country unless the country is: (a) a Convention country; or (b) a country as to which the Minister is satisfied that provision has been or will be made under its law in respect of the class of works or (as the case may be) the performances, to which the order relates, giving adequate protection to the owners of copyright under this Act or, as the case may be, to Antigua and Barbuda works and performances as defined in section 145(4). (6) In this section "Convention country" means a country which is a party to a Convention relating to copyright or performers' rights, as may be appropriate, to which Antigua and Barbuda is also a party. In general, the owner of a copyright from any other country will receive the same protection under the law given to those in Antigua and Barbuda as long as it falls within the categories or satisfy the conditions spelt in the Bill. Any special protection for a particular copyright or related right will apply to all.

The Geographical Indication Bill 2001 provides for the protection of geographical indications in accordance with Article 22 of the TRIPS Agreement. Protection is provided for those geographical indications regardless of registration that fall within the definition of geographical indications contained in section 2 of the Act. Registration shall raise a presumption that such indication is a geographical indication within the meaning of section 2 (See section 13 of the Bill). Examples of such indications are indications that identify goods such as any natural or agricultural product or any product of handicraft or industry as originating in the territory or country, or a region or locality in this territory. Section 4 of the Bill gives protection to geographical indications registered or unregistered, and protection against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory. Section 5 provides protection for homonymous geographical indications for wines. Section 6 points out the goods that will not be protected as geographical indications. These include indications which do not correspond to the definition in section 2; indications which are contrary to public order or morality; geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country. According to section 11, only producers carrying on their activity in the geographical area specified in the Register shall have the right to use a registered geographical indication, in the course of trade, with respect to the products specified in the Register, provided that such products possess the quality, reputation or other characteristic specified in the Register. Section 12(1)(c) of the Bill establishes that any interested person and any interested group of producers or consumers may institute proceedings in the Court to prevent, in respect of geographical indication, the: "(c) use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as 'kind', 'type', 'style', 'imitation' or the like." And in proceedings under this section, the Court may, in addition to issuing an injunction, award damages and grant any other remedy or relief as it may deem fit (see section 12(2) of the Bill).

The TRIPS Agreement under Article 27 provides for three permissible exceptions to the basic rule on patentability. One for inventions contrary to public order or morality, the second is for the exclusion of diagnostic, therapeutic and surgical methods for the treatment of humans or animals, and the third is that Members may exclude plants and animals other than those categorized in the Article. The Patent Bill 2001 defines what is a patent and defines what is an invention for the purposes of this Bill, mentioning the two existing categories of inventions, namely product inventions and process inventions. Product inventions exist in tangible form, e.g. machines, equipment, devices, etc., and process inventions generally consist of a series of steps for producing a product or a desired result, e.g. artificially colouring citrus fruits. Subsection 2 lists subject-matter that is excluded from patent protection. The basic difference between a discovery, mentioned in item (i), and an invention is that a person who makes an invention "creates" something that has not existed before whereas the person who makes a discovery does not create but reveals the existence of something which was unknown up to then. Item (ii) concerns instructions to the human mind that cannot be patented. The exclusion of methods of treatment and diagnostic methods is in item (iii), clearly states that products for applying such methods (e.g. medical equipment) are not excluded. "(2) The following, even if they are inventions within the meaning of subsection (1), shall be excluded from patent protection: (i) discoveries, scientific theories and mathematical methods; (ii) schemes, rules or methods for doing business, performing purely mental acts or playing games; (iii) methods for treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body; this provision shall not apply to products for use in any of those methods; (iv) plants and animals other than micro organisms; (v) essentially biological processes for the production of plants or animals other than non-biological and microbiological processes; (vi) plant varieties; (vii) inventions, the prevention within Antigua and Barbuda of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by law."

Antigua and Barbuda has decided to create a sui generis system of protection for plant varieties. It has made plant varieties an exception for protection under section 2 of the Patent Bill. Although a bill is being drafted presently, discussions are still being conducted as to what system would best suit the right holder's particular needs. The OECS countries are also examining the best possible system to ensure that all the countries implement similar systems. The Trinidad and Barbadian models are being considered. Caricom has also placed an obligation under Protocol 3 of its Trade Agreement on the Member States to ensure that all legislation pertaining intellectual property be harmonized.

The draft Patent Bill does consider the importation of patent as "working" a patent. This is seen in section 14 of the Bill: "(1) On request, made to the Registrar after the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last, the Registrar may issue a non-voluntary licence if he is satisfied that the patented invention is not exploited or is insufficiently exploited, by working the invention locally or by importation, in Antigua and Barbuda."

The Act does provide for compulsory licences. Section 14 provides for non-voluntary licences and the conditions under which they may be granted: "the Registrar may issue a non-voluntary license if he is satisfied that the patented invention is not exploited or is insufficiently exploited, by working the invention locally or by importation, in Antigua and Barbuda." However, according to subsection 2, if the patent owner can satisfy the Registrar that circumstances exist that justify the non-exploitation or insufficient exploitation of the patented invention in Antigua and Barbuda, such a licence will not be issued. Section 14(9) provides that subsections 2-10 of section 13 shall apply mutatis mutandis. This means that references to the Minister's authorization would have to read as references to the non-voluntary licence issued or requested to be issued by the Registrar. For instance, section 12(3) states that authorization can only be given if efforts have been made to obtain a contractual licence and have failed. This requirement is waived in cases of emergency or other circumstances of extreme urgency. In such cases, the owner of the patent is, however, to be informed as soon as reasonably possible. Subsections 2-10 of section 13 point out the various circumstances that would perhaps justify the issuance of a compulsory licence and the conditions attached to each licence. Therefore, before the authorization is given, the individual merits must be considered.

The legislation governing Intellectual Property provides for all the remedies that are available under the Eastern Supreme Court Civil Procedure Rules 2000. This includes judicial reviews and appeals, which are dealt with by the various Courts being the High Court of Justice, the Court of Appeal and the Privy Council, which is situated in England. In reference to Article 31 of the Agreement, a decision to grant a compulsory licence can be appealed by the affected party/parties in the relevant Courts. Please see our responses to the Checklist of Enforcement for the various types of remedies and for an overview of the judicial system of Antigua and Barbuda (document IP/N/6/ATG/1).

The Bill does provide for the principle of reversal of burden of proof in a process patent litigation. According to section 34(4) of the Bill: "For the purposes of proceedings, other than criminal proceedings, in respect of the violation of the rights of the owner of the patent referred to in subsections (1) and (2), where the subject-matter of the patent is a process for obtaining a product, the burden of establishing that an identical product was not made by the process shall be on the alleged infringer if: (a) the product was new; or (b) a substantial likelihood exists that the product was made by the process and the owner of the patent has been unable through the reasonable efforts to determine the process actually used."

The Unfair Competition Bill does provide for the exception in section 8(4): "(a) an unfair commercial use of secret test or other data, the origination of which involves considerable effort and which have been submitted to a competent authority for the purposes of obtaining approval of the marketing of pharmaceutical or agricultural chemical products which utilise new chemical entities; or (b) the disclosure of such data, except: (i) where necessary to protect the public; and (ii) where steps are taken to ensure that the data are protected against unfair commercial use." The time period and conditions are spelt out in subsection 5 of the Bill: "(5) Subsection (4) shall be construed as precluding, in particular, any person other than the person who submitted undisclosed tests or other data, the origination of which involves a considerable effort, from relying on such data in support of an application for product approval for a reasonable period of time after the submission of those tests or data and the period of time shall be determined by the Court, taking account of the nature of the data and the person's efforts and expenditure in producing them, and shall normally not be less than five years."

The Bills as drafted contain provisions that deal specifically with the procedure and remedies available to right holders in the instance of an infringement, where there is a battle over who is entitled to the registration of the particular intellectual property, or any other instances where the right holder feels that his rights are being violated. The High Court of Justice has the jurisdiction to hear matters on infringement as seen in section 2 of the various draft Bills where the "court" is defined as the High Court. In the Integrated Circuit Topography Bill, according to section 8 of the Bill, an action for infringement of the exclusive right in a registered topography may be brought in any court of competent jurisdiction by the owner of the registered topography or by a licensee of any right therein, subject to any agreement between the licensee and the owner; section 9 spells out the remedies available in the case of an infringement where the Court may make specific orders for: "relief by way of injunction, the payment of royalties and the recovery of damages or profits, for punitive damages, and for the disposal of any infringing integrated circuit product or any article of which an infringing integrated circuit product forms a part." Under the Geographical Indications Bill, any interested person and any interested group of producers or consumers may institute proceedings in the Court to prevent, in respect of a geographical indication, any illegal use of the geographical indication within the scope of section 3 of the Bill. In proceedings under this section, the Court may, in addition to issuing an injunction, award damages and grant any other remedy or relief as it may deem fit. In all the provisions the persons who have access to the remedies available must come within the scope of the legislation. For instance, under the Patent Bill, only the person who is granted a patent in accordance with sections 4 (deals with the right to a patent), 9 and 10, or who has a licence to use the patent has the right to bring an action in Court under section 34(2). The provisions tend to be generally the same in all the Bills as pointed out above; however in the Copyright Bill, the provisions examine the available remedies, which include confiscation and destruction of illicit products, and the order for delivery up of the goods (see sections 33, 46 and 137), payment of damages and damages, injunctions, and accounts of profits made from the sale of the infringed product (see section 32), payment of fines and imprisonment in the criminal cases where it becomes an offence (section 134). The fines range from EC$50,000.00 to EC$100,000.00, and the terms of imprisonment range from three years to five years.

The Government of Antigua and Barbuda is examining the practicality of establishing an Enforcement Unit that will be able to monitor all enforcement procedures and ensure that all investigations are properly carried out by the unit, and raids are effected where and when necessary. This unit will have several Police Officers and a prosecutor from the Director of Public Prosecutions Office attached to it, plus an Officer who will liaise with the Customs Department. The Copyright Bill provides for the establishment of a Copyright Tribunal, and the best approach to the establishment of this entity is being explored presently. Programs are also being designed to ensure that the competent authorities that will be involved in enforcement of intellectual property rights as well as the public are educated in the field of intellectual property and the need to protect the various rights through an efficient regime.

Section 1(3) of the Patents Bill and section 3(1)(ii) of the Trademarks Bill specify that no registration will take place of a mark or patent that is contrary to public order. This protection of public order includes the protection of human, animal and plant life, health, and the avoidance of serious prejudice to the environment, provided that such exclusion is not made merely because law prohibits the exploitation. This provision is repeated in the other draft legislation for Industrial Designs, Integrated Circuits Topography and Geographical Indications. This is consistent with the provisions within the TRIPS Agreement, as seen, for instance, in Article 27 where the permissible exceptions to the basic rule on patentability are inventions contrary to public order, those that are diagnostic, therapeutic and surgical for the treatment of humans or animals, and those involving plants and animals as specified in the Article.

Copyright legislation in Antigua and Barbuda is governed by the Copyright Act and complies with the above-mentioned Articles. These Articles deal predominantly with the subject-matter eligible for protection, the terms of protection available, those on whom rights are conferred, what rights are conferred and the limitations of those rights. These issues are dealt with in detail in many different sections within the Copyright Bill. Part I of the Bill is the interpretation section of the Bill. Section 2 contains definitions of the terms used in the Bill. This includes definitions of the subject-matter covered in Article 2 of the Berne Convention, in particular, which deals with "Protected Works". Sections 3 and 4, which also fall within Part I, deal with the definitions of publication and broadcasting respectively as is required by Article 3. Article 3 is further encompassed by section 5 which contains the same three criteria for protection as can be seen in the above-mentioned article. Section 5 is the first section that may be found in Part II of the Bill. This part encompasses subsections 5-13 and sets the categories of works protected by copyright, the qualifications for protection and the nature and duration of the rights conferred under the Part. Section 6 governs what subject-matter may be considered qualified or eligible for protection. Section 7 deals with who is eligible for protection namely the "author" and defines who may fall under the definition of this term depending on the protected work that is being dealt with. Section 8 considers the places from where protection may be sought. As is seen in Article 5, this section covers each of the items of this article completely. Section 9 expands on the nature of the protection that copyright gives. It deals with both the economic and moral rights though the latter is not mandatory. The economic rights however are examined in full in this section describing in full the exclusive rights of the author. Consequently, this section covers those exclusive rights seen in Articles 8, 9, 11, 12, 13 and 14. Subsections 10-13 cover the duration of copyright protection or what is referred to in Article 7 as the term of protection. These sections provide not only the duration afforded to the several different types of protected works but also deals with the situations where there is more than one author or right holder, as in Article 7bis. Part IV deals with the issue of ownership of the copyright. This part is made up of subsections 22-28. Section 22 is a very important section in that it declares in subsection (1): "The author of a protected work is the original owner of any copyright in that work unless there is an agreement to the contrary." This therefore leaves room within its definition for the transferral or assignment of the rights mentioned above, and the rest of the section gives the rules which govern just that. Part V of the Bill includes sections 29-50. Within it, sections 29-35 show how a copyright may be infringed, the remedies and actions available to the right owners and that of the exclusive licensee. This Part also addresses the presumptions that are made under the law (sections 44-45), the possible criminal offences resulting from infringements (sections 46-48) and the restrictions on and possible actions against the importation of infringing works or articles. Articles 15 through 17 are covered by this Part. Part VI (sections 51-86) deals with the possible exceptions to infringement of copyright. Part VI is very extensive and deals with a multitude of exceptions. These encompass use for educational purposes, in libraries and archives, public administration and adaptations. These coincide with the free uses given in Article 10. The reservation of the right of the country to make special agreements with other countries under Article 20 is covered by section 144, which gives the minister responsible for the Act such power. It will be noted then that the Bill encompasses the salient issues of Articles 1-21 of the Berne Convention and as a result complies with Article 9 of the TRIPS Agreement.