Patents of Invention

– Industrial Property Act, 1994, amended by the Industrial Property (Amendment) Acts 1999, 2002 and 2009.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Consular Legalization for Foreign Public Documents (Apostille), successor party since June 4, 1970.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 14, 2001.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 14, 2001.
– WTO’s TRIPS Agreement, since July 27, 2007.

Although not a member, provisions of the following Conventions are adopted:
– Strasbourg Agreement Concerning the International Patent Classification.

Filing

Applicant: may be the inventor, the assignee of or successor to the inventor. 

Applicants not living in the country: must be represented by an agent having a place of business in Tonga. 

Priorities: may be claimed from one or more earlier national, regional or international applications filed by the applicant or his predecessor in title in any Paris Convention country.

Application: comprises a request, a description, one or more claims, one or more drawings where required, and an abstract. 

Convention applications: a declaration specifying the date of the earlier application, the number of the earlier application where known, the International Classification where known and the country must be lodged with the application. A certified copy of the priority document must be lodged within three months of a request by the Registrar. Where the priority document is in a language other than English a certified English translation must be lodged within six months of a request by the Registrar. 

Notion of the invention: the invention may relate to a product or a process and must be new, involve an inventive step and be industrially applicable. 

Patentability: discoveries, mathematical methods, schemes, rules or methods for doing business, methods for treatment of the human or animal body by surgery or therapy are not patentable, although products for use in any of those methods may be patentable.

Novelty: the invention must not have been anticipated, anywhere in the world by publication in tangible form, in Tonga by use, oral disclosure or in any other way, prior to the priority date.

Filing requirements for an application (to be sent to resident agent):
1. A specification in English, in triplicate, on international size A4 paper;
2. Claims in English and drawings if any, in triplicate on international size A4 paper;
3. Request signed by the applicant giving a title to the invention of preferably not more than seven words, the name of the inventor if not the applicant and a statement justifying the applicant’s right to apply, the name and address of both the applicant and their resident agent and the nationality of the applicant. Where a claim of priority is being made, the request shall include a declaration giving the date, number, classification and country in which the earlier application was made;
4. Power of attorney;
5. A certified copy of the basic application must be filed within three months of a request by the Registrar or if not in English within six months of such a request together with a certified translation thereof.

Note: margins on each typed page should be not less than: upper margin of first page, 30 mm; upper margin of each subsequent page, 20 mm; left hand margin, 25 mm; right hand margin, 20 mm; bottom margin, 20 mm. All elements of the application, including the drawings, should be on paper which is flexible, strong, white, smooth, non-shiny and durable. All sheets to be numbered consecutively at the top center in consecutive Arabic numerals.

Examination Procedure

Corresponding foreign protection: the applicant shall, at the request of the Registrar, furnish him with the date and number of any foreign applications relating to essentially the same invention. At the Registrar’s request, the applicant shall provide a copy of any foreign protection granted, a copy of any search results received in relation to the foreign application, and a copy of any final decision to reject, refuse or invalidate any foreign protection. The time limit set by the Registrar for providing such information shall be not less than two months and not more than six months or if the documents are not available, examination may be suspended until they are available. 

Examination: the application is examined for compliance with formalities. Examination as to substance may be conducted by an external examining authority. Where the application is found not to comply with the legislation the applicant is notified in writing and invited to make observations, amend or divide the application. The time limit for response set by the Registrar is no less than two months and no more than six months.

Granting

Publication: the patent shall be deemed to be granted on the date when the Registrar publishes the fact that he has granted the patent. 

Duration: the patent shall expire twenty years after the filing date of the application for the patent.

Extension of term: no provision.

Annuities: annual fees are payable commencing one year after the filing date of the application. 

Annuity grace period: six-month grace is allowed for late payment on payment of a surcharge.

Marking of patented articles: not compulsory but recommended. 

Working: not compulsory. 

Compulsory licenses: on the request of any person who proves the ability to work a patented invention in Tonga after four years from the filing date of the application or three years from the date of the patent, whichever expires last, the Registrar may grant a non-voluntary license if the invention is not sufficiently worked in Tonga.

Modification of Protection after Granting

Invalidation: any interested person may request the court to invalidate a patent.

Assignment: must be in writing and must be recorded to have effect as against third parties. 

Licenses: license contracts concerning patents must be submitted to the Registrar who shall keep the contents of the license confidential but shall publish the fact of having recorded the license. Any such license contract shall be deemed invalid until submitted to the Registrar.

Infringement: exploitation of a patent by other than the owner shall require the patentee’s permission.

Working conditions: exploitation includes the making, importing, exporting, offering for sale, setting and using the products or stocking the products for the purposes of offering for sale.