(A) STANDARD PATENTS

(B) INNOVATION PATENTS

– Intellectual Property Act, 2011.

Notes: all patents granted under the repealed Patents Act of December 19, 1972 remain in force and are taken to have been granted under the corresponding provisions of the new Intellectual Property Act, 2011.

Granted patents remain in force for the unexpired portion of the period of protection provided under the Patents Act, 1972, subject to the payment of determined fees provided for in the new Act.

– Convention Establishing the World Intellectual Property Organization (WIPO), since October 11, 1997.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), party since September 13, 1999.
– WTO’s TRIPS Agreement, since May 10, 2012.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since September 21, 2013.
– Patent Cooperation Treaty (PCT), since January 2, 2020.

Applicant: may be the inventor, or if the invention is made in execution of a commission or an employment contract, the right to the patent belongs to the person having commissioned the work or the employer, unless a contractual provision says otherwise.

Applicants not living in the country: must be represented by a legal practitioner resident and practicing in Samoa.

Not patentable: a discovery, scientific theory, mathematical method, scheme, rule or method for performing a mental act, playing a game or doing business, diagnostic, therapeutic and surgical methods for treatment of humans or animals, inventions contrary to public morality, plants and animals other than micro-organisms and processes for production thereof, inventions that are likely to cause serious environmental harm, mere discoveries of a new form, property or use of a known substance.

Novelty: not anticipated by prior art, which consists of everything known or used, anywhere in the world, by publication in tangible form or by oral disclosure, by use or in any other way prior to the filing, or where appropriate, the priority date.

Novelty grace period: disclosure to the public within twelve months preceding the filing (or priority) date where by an act of the applicant or their predecessor, or by an abuse by a third party.

Priority: can be claimed under the Paris Convention.

Convention applications: details of priority claim including the country, number, filing date, and a certified copy must be given at filing.

Application: must be in writing and accompanied by the fee.

Filing requirements for an application (to be sent to resident agent):
1. The applicant’s name, address and nationality and details of an agent used;
2. Each inventor’s name;
3. A request for the grant of the patent;
4. A description of the invention, one or more claims and any drawings referred to in the description or claims;
5. An abstract;
6. A statement whether the invention is based on knowledge available within any local or indigenous community in Samoa or elsewhere;
7. A statement disclosing the source of any biological material used for the invention;
8. A written authorization of agent;
9. Convention details as above.

PCT applications: time limit for entering the national phase under both Chapters I and II: 31 months.

Amendment of application: permissible to limit the extent of protection. No change is allowable if it results in the disclosure in the patent going beyond the disclosure contained in the initial application.

Information of corresponding applications: upon request of the Registrar, details of any corresponding foreign applications must be given including search or examination results received, copy of any patent granted or refusal to grant or decision of invalidity. The Registrar must take into account the results of this information, and any search and examination report carried out by an external authority.

Division: divisional applications may be made at any time during the examination process but must not go beyond the disclosure in the initial application.

Duration: twenty years from the filing date.

Renewal fees: must be paid in advance every five years starting five years after the filing date. Grace period: six months with late fee.

Importation of patented pharmaceutical products: the Minister may decide that, even without the consent of the owner of the patent, a Government agency or a third person designated by the Minister may import, sell or use a patented product in Samoa in certain circumstances.

Compulsory licenses: the Registrar, on the request of the owner of a later patent, may grant a license if there is an earlier similar patent which prevents use of the later patent, and the later patent involves an important technical advance of considerable economic importance.

Revocation: an interested person may apply to the Supreme Court to invalidate a patent on the grounds that it does not fulfill the requirements of the Act.

Assignments and transmissions: must be registered to be enforceable against third parties.

Legal proceedings: for infringement and revocation before the Supreme Court.

– Intellectual Property Act, 2011.

– As for “Standard Patents“.

Filing application: as for a “standard patent” except that the request must be for an innovation patent. No limit to the number of claims.

Novelty: as for “standard patents“.

Innovative step: a lower standard than that needed for a standard patent, the invention may be “an incremental or lower level invention”.

Not patentable: as for “standard patents“.

Convention applications: details of priority claim including the country, number, filing date, and a certified copy must be given at filing.

Information of corresponding applications: upon request of the Registrar, details of any corresponding foreign applications must be given, including search or examination results received, copy of any patent granted or refusal to grant or decision of invalidity. The Registrar must take into account the results of this information, and any search and examination report carried out by an external authority.

Amendment of application: as for “standard patents“.

Process claims: allowable as for “standard patents“.

Examination: once an innovation patent application is lodged, the application is initially checked only for formalities.

Substantive examination: if the Registrar is of the opinion that the application complies with the novelty and industrial applicability requirements, the Registrar must grant the innovation patent.

Conversion: may be converted to a standard patent application at any time before grant or rejection. Standard patent applications may be converted to innovation patent applications at any time before grant or rejection. A standard patent application may not be converted to an innovation patent application more than once.

Publication: occurs on grant of the innovation patent.

Opposition: pre-grant opposition is not possible. An interested person may apply to the Registrar to invalidate.

Division: divisional applications may be made at any time during the examination process, but must not go beyond the disclosure in the initial application.

Duration: the innovation patent is granted for seven years from the filing date.

Annuities: none payable.

Opposition: may be lodged at any time after the innovation patent has been granted.

Reexamination: not available.

Assignment: as for “standard patents“.

Compulsory licenses: no provisions.

Infringement – penalties: as for “standard patents“.