Registration

A patent can be registered in Gibraltar pursuant to the Patents Act, 1924 which provides for applications to extend rights under an existing UK or European Patent (EP (UK)) registration. The application for registration must be made within three years of the grant of the UK or EP (UK) registration.

The following information and documentation is required:

1. a certified copy of the specifications of the patent (including drawings, if any)
2. a Certificate of the Comptroller-General of the Intellectual Property Office of the UK (UK IPO) giving full particulars of the issue of the patent; or
3. a Certificate issued by an officer duly authorised under the Patents Act that the UK has accepted the EP (UK) as being effective in the UK and that the particulars of the application are true

It usually takes about two months for the Registrar of Patents at Companies House Gibraltar to process an application for registration. Paris Convention priority cannot be claimed. Once the registration is complete the Registrar will issue a Certificate of Registration.

Patent Cooperation Treaty

Gibraltar is not a signatory to the Patent Cooperation Treaty (PCT). National phase filing of a PCT patent is not possible. As of 1 January, 2021 however, PCT applications which designate the UK will also cover Gibraltar. Once a PCT patent derived from a PCT application is granted in the UK it will also automatically be extended to Gibraltar.

Searches

It is generally not necessary to conduct a search in Gibraltar to ascertain that there will be no difficulty with the application for registration because of the requirement that there be a pre-existing UK or EP (UK) registration. If, however, a search is required, the result can usually be provided within two weeks.

Expiry

A patent registration is valid for the same period as specified on the underlying UK or EP (UK) registration on which it is based.

Abandonment

Please inform us as soon as possible if you wish to abandon your patent or allow it to lapse so that we can update our records and advise the Registrar accordingly. This will avoid us sending out unnecessary Reminder Notices.

Assignment

Please inform us as soon as possible if the patent has been assigned so that we can file an application to record the assignment in Gibraltar (and the UK if necessary).

To record the assignment of a patent registration the only documentation required is a certified copy of the document showing the assignment (notarised).

It usually takes about two months for the Registrar to process an application to record an assignment. Once the recording is complete the Registrar will issue a Certificate of Registration of Assignment.

Change of Particulars

Please inform us as soon as possible if there is any change to the registration so that we can file an application to record the change in Gibraltar (and the UK if necessary).

To record a change of name and/or address for a patent registration no documentation is required.

It usually takes about two months for the Registrar to process an application to record a Change of Particulars. Once the recording is complete the Registrar will issue a Certificate showing the change.

Our Firm

HSM IP Ltd. provides worldwide intellectual property services. Based in the Cayman Islands and independently owned and operated, our experienced team of attorneys and paralegals deliver first class service to a broad client base which includes major Fortune Global 500 brand owners, international law firms and other specialist IP practices. Our broad perspective, practical approach and international experience allow us to offer clients a unique insight into IP issues.

The success and growth of our firm is due to our keen understanding of our clients’ needs for a comprehensive “one-stop shop” which encompasses a wide range of services from the initial consultation process to searches, registrations, annuity payments and monitoring and renewals. Our interactive database helps us to proactively manage each client’s portfolio efficiently and cost-effectively in an environmentally friendly and substantially paperless workplace. It also allows us to fulfil our clients’ specific reporting and invoicing requirements, including multi-currency invoicing and e-billing. We offer a competitive schedule of fixed fees, inclusive of both disbursements and official fees, which means we can provide clients with an accurate estimate of their project costs before embarking on a global filing programme for their portfolio.

As a leader in the field, HSM IP understands the value of long-term business relationships. We have a wealth of knowledge and specialise in the Caribbean, Central and Latin America and other offshore jurisdictions. Our staff regularly contribute to leading IP publications and we also publish a range of country-specific IP Client Guides which are available on our website.

Supported by HSM Chambers, an offshore law firm with experienced attorneys admitted in multiple jurisdictions, we have substantial experience in taking action to address the infringement of trade marks and patents and in the conduct of passing-off actions. We are also able to offer investigative services to identify the source of, and distributors of, infringing goods, working closely with police and customs officials as necessary.

Memberships: INTA, CITMA, MARQUES and IPCA

Contact Us

E-mail:	ip@hsmoffice.com
Web:	www.hsmoffice.com
Mail:	PO Box 31726, Grand Cayman KY1-1207, Cayman Islands.
Courier:	HSM, 68 Fort Street, George Town, Grand Cayman, Cayman Islands.
Tel:	+1 (345) 949-4766

HSM IP Ltd. is a Law Firm recognised under the Legal Practitioners (Incorporated Practice) Regulations, 2006 (as amended).

Revised June 2022