Patents of Invention
– Patents Act No. 8 of 1999, in force since August 25, 2008.
– Patents Regulations, 2008, in force since October 23, 2008.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since November 3, 1978.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 26, 1998.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since August 7, 1999.
– Patent Cooperation Treaty (PCT), since August 7, 1999.
Applicant: the applicant(s) must be the true and first inventor(s) of the invention or his(their) successor(s) in title.
Foreigners and nationals not living in the country: must appoint a qualified resident attorney.
Types of protection: patents of invention and utility model certificates.
Exclusions from patentability: (a) a discovery, scientific theory or mathematical method; (b) a scheme, rule or method for doing business, performing a mental act or playing a game; and (c) methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body (not applicable to products for use in these methods). A patent will not be granted for an invention the commercial exploitation of which it is necessary to prevent in Dominica in order (1) to protect public order or morality, including to protect human, animal or plant life or health; or (2) to avoid serious prejudice to the environment.
Convention priority: can be claimed.
Divisional application: possible before the grant of the original application.
Utility models: protectable under the Patents Act.
Conversions: upon payment of the prescribed fee, a patent application can be converted into an application for a utility model, and vice versa.
Filing requirements for an application (to be sent to a licensed resident agent):
1. A request containing a petition that the patent be granted, the name of and other prescribed information relating to the applicant, the inventor and agent and the title of the invention;
2. A description disclosing the invention in a manner which is sufficiently clear and complete to permit a person having ordinary skill in the art to carry out the invention, and shall, in particular, indicate at least one mode known to the applicant in which the invention can be carried out;
3. 1 or more clear and concise claims defining the matter for which protection is sought;
4. 1 or more drawings where required (or photographs clearly illustrating the invention and suitable for reproduction);
5. An abstract to provide technical information (but will not be taken into account for the purpose of interpreting the scope of the protection sought);
6. Power of attorney; and
7. The prescribed application fee.
PCT applications: must be filed in accordance with the provisions of the Patent Cooperation Treaty and the Regulations made thereunder. Time limit for entering national phase: 30 months for both Chapters I and II.
Examination: provision is made for search and substantive examination.
A notice of the grant of the patent is published in the Journal and a certificate is issued.
Beginning of protection: from the filing date of application.
Duration: twenty years from the filing date.
Annuities: a maintenance fee must be paid in advance for each year starting one year after the filing date. Grace period: maximum six months with surcharge.
Assignment: must be recorded.
Compulsory licenses: provided for.
Licenses: must be recorded. The court has the jurisdiction to grant non-voluntary licenses (1) at any time after the expiration of four years from the date of filing of a patent application or three years from the date of the grant of a patent, whichever happens later, on the application of an interested person on the grounds that the patented invention is not being exploited or is being insufficiently exploited by working the invention in Dominica, or by importation in Dominica; (2) where the invention claimed in a later patent cannot be exploited in Dominica without infringing a patent granted on the basis of an application benefiting from an earlier filing, or, where appropriate, priority date, and provided that the invention claimed in the later patent involves an important technical advance of considerable economic importance in relation to the invention claimed in the earlier patent.
Revocation of a granted patent: the court may, on the application of any interested party, invalidate a patent on any of the following grounds namely (a) that the invention is not an invention as defined in the Patents Act; (b) that the patent concerned is not patentable or does not satisfy the requirements of the Patents Act; (c) that the invention is a matter which should have been excluded from patent protection; (d) that the patent was granted to a person who was not entitled thereto; (e) that the patentee’s application did not satisfy the requirements under the Patents Act; (f) that the subject matter of the patent extends beyond the content of the patent application as filed or, if the patent was granted on a divisional application, it extends beyond the content of the relevant earlier application as filed; or (g) that the protection conferred by the patent has been extended by an amendment which should not have been allowed.
Infringement: court proceedings and damages are provided for.