Patents Act, 1999 (Act No. 8 of 1999)، دومينيكا

Page 2

1999 PATENTS ACT 8

COMMONWEALTH OF DOMINICA

ARRANGEMENT OF SECTIONS

SECTION

PART I

PRELIMINARY

1. Short title. 2. Interpretation.

PART II

COMPANIES AND INTELLECTUAL PROPERTY OFFICE

3. Establishment of Companies and Intellectual Property Office.

4. Registrar, Deputy Registrar and Assistant Registrars of Companies and Intellectual Property.

5. Powers and functions of Registrar. 6. Seal. 7. Register.

PART III

PATENTS

8. Patentable inventions. 9. Novelty.

10. Inventive step. 11. Industrial application. 12. Matter excluded from patent protection.

PART IV

RIGHT TO APPLY FOR AND OBTAIN A PATENT

13. \Vbo may apply for a patent. 14. Right to patent. 15. Invention by employee or person commissioned. 16. Judicial assignment of patent application or patent.

Page 3

PART V

APPLICATIONS FOR PATENTS SECTION

17. Application for a patent. 18. Unity of invention. 19. Amendment of applications. 20. Joint applicants. 21. Right of priority. 22. Conversion of patent application. 23. Information concerning corresponding foreign applications. 24. Disclosure of matter, etc., between earlier and later

applications. 25. Filing date. 26. Examination. 27. Refusal or grant of patent.

PART VI

PROVISIONS AS TO PATENTS AFTER GRANT

28. Duration and maintenance of patent 29. Surrender of patent or claim. 30. Effect of registration, etc., on rights in patents.

PART VII

PROPERTY IN PATENT APPLICATIONS AND PATENTS RIGHT TO APPLY FOR AND OBTAIN A PATENT

31. Nature of, and transactions in patents. 32. Joint ownership of patent.

PART VIII

RIGHTS OF OWNER OF PATENT

33. Rights conferred by patent. 34. Right to continue use begun before date of filing or

priority. 35. Exploitation by Governmentorperson authorised thereby. 36. Prevention of indirect use of invention.

Page 4

PART IX

VOLUNTARY Al"lD NON-VOLUNTARY LICENCES

SECTION

37. Voluntary licences. 38. Non-voluntary licences. 39. Exercise of powers on applications under section 38.

PART X

INFRINGEMENT

40. Infringement. 41. Proceedings for infringement. 42. Restrictions on recovery of damages for infringement. 43. Relief for infringement of partially valid patent. 44. Certificate of contested validity of patent. 45. Proceedings for infringement by exclusive licensee. 46. Effect of non-registration on infringement proceedings.

PART XI

INVALIDATION OF PATENT

47. Invalidation of patent. 48. Amendment of patent in infringement or invalidation

proceedings.

PART XII

UTILITY MODEL CERTIFICATES

49. Application of provisions relating to patents. 50. Qualification of invention for utility model certificate. 51. Duration of utility model certificate. -7.)_. Invalidation of utility model certificate. 53. Conversion of application for utility model certificate.

Page 5

PARTXIIJ

INTERNATIONAL ARRANGEMENTS

SECTION

54. Application of treaties. 55. implementation of Patent Cooperation Treaty. 56. Judicial notice of certain treaties.

PART XIV

GENERAL PROVISIONS

57. Changes in ownership. 58. Correction of errors. 59. Extension of time. 60. Exercise of discretionary powers. 61. Agents. 62. Jurisdiction of Court. 63. Offences. 64. Immunity regarding official acts. 65. Registrar's annual report. 66. Saving in respect of rights to sell forfeited articles. 67. Time limit for prosecution. 68. Regulations. 69. Administrative Instructions. 70. Act binding on State. 71. Repeal. 72. Transitional. 73. Commencement.

Page 6

COMMONWEALTH OF DOMINICA

ACf No. 8 of 1999

I assent

V.L. SHAW President.

7th October, 1999

AN ACT TO PROVIDE FOR THE PROTECTION OF PATENTS, AND FOR MATIERS CONNECTED THERETO.

(Gazetted 14th October, 1999).

BE IT ENACTED by the Parliament of the Commonwealth of Dominica as follows:

PART I PRELIMINARY

1. This Act may be cited as the - Short title. PATENTS ACT 1999

2. In this Act, unless the context othelVlise requires - Interpretation. "'Court" means the High Court;

"foreign application" means any application for a patent filed by an applicant outside Dominica;

"International Patent Classification" means the classification ac­ cording to the Strasbourg Agreement of March 24, 1971;

Page 7

"invention" means an idea of an inventor which pennits in practice the solution to a specific problem in the field of technology;

"Journal" means the Journal of Intellectual Property referred to in section 5(d);

"Minister" means the Minister responsible for patents;

"Paris Convention" means the Paris Convention for the Protection of Industrial Property of March 20, 1883 as last revised;

"patent" means the title granted to protect an invention;

"patentee" means the person to whom a patent has been granted;

"'Patent Cooperation Treaty" means the Patent Cooperation Treaty of June 19, 1970;

"priority date" means the date of the earlier application that serves as the basis for the right of priority provided for in the Paris Convention;

"Register" means the Register of Patents referred to in section 7;

"Registrar" means the Registrar of Companies and Intellectual Property; and

"utility model certificate" means a certificate granted for an inven­ tion under Part XII.

PART II

COMPANIES AND INTELLECfUAL PROPERTY OFFICE

Establishment of !J. There shall be established, at such place as the Minister Companies and detennines, a Companies and Intellectual Property Office.Intellectual Property Office.

Registrar, Deputy~ 4. (1) There shall be a Registrar of Companies and Intellec­ !~~strar and AssiSl~! tual Property who shall be a public officer, and who shall, subject ""gtstrars 0 f Comparues and Intellectual Property. to the control of the Minister, be responsible for the administration

Page 8

of this Act, and who shall perform such functions, and exercise such powers, as are conferred on him by this or any other enactment.

(2) There shall also be a Deputy Registrar of Companies and Intellectual Properly and such number ofAssistan t Registrars as are considered necessary, who shall also be public officers.

(3) The Minister may give the Registrar written directions which are not inconsistent with the provisions of this Act, concern­ ing the exercise and performance of powers and functions in relation to any matter which appears to the Minister to concern the development of industrial property and other matters connected therewith, and the Registrar shall carry out such direc­ tions.

(4) The Deputy Registrar and Assistant Registrars shall per­ form such functions, and exercise such powers, as the Minister may, by Order, delegate to them.

5. Without derogating from the generality of the provisions Powers and functiocs of of section 4, the Registrar shall have the following functions and Registrar. powers, namely to ­

(a) process all applications made under this Act;

(b) grant patents and register utility model certificates;

(c) administer granted patents and registered utility model certificates;

(d) establish and maintain aJoumal ofIntelIectual Property in which he shall publish all matters that are required to be published under this Act or any other enactment;

(e) carry out studies, programs or exchanges of items or services regarding domestic and international patent law; and

(f) provide patent information services such as making available, for use by the public, in the prescribed manner, and on payment of any prescribed fees, patent literature.

Page 9

Seal.

Register.

6. (1) The Registrar shall have a seal approved by the Minis­ ter, which heshall affix to every document issued by him, and to any copy of a document issued by him in lieu of the original document.

(2) Impressions of the Registrar's seai shall be judicially noticed and admitted in evidence.

7. (1) The Registrar shall maintain a Register of Patents in which he shall record all matters required by this Act or the Regulations made thereunder, to be recorded, and shall also, in a section of the Register created for that purpose, register utility model certificates.

(2) Any person may, upon payment of the prescribed fee, and in accordance with any prescribed conditions, consult, inspect or make a copy of, or obtain an extract from the Register.

(3) The Register shall beprima facie evidence of anything required or authorised by this Act to be registered, and shall be admissible and sufficient evidence of any such thing.

(4) A certificate signed by the Registrar and certifying that any entry which he is authorised by this Act to make has or has not been made, or that any other thing which he is authorised to do has or has not been done, shall be prima facie evidence, and shall be admissible and sufficient evidence, of the matters so certified.

(5) Each of the following, that is to say a copy of ­

(a) .an entry in the Register or an extract from the Register which is supplied under subsection (2); and

(b) any document kept in the Companies and Intellec­ tual Property Office, or an extract from any such document, or any matter which has been published in the Journal, which is to be a certified copy or a certified extract shall be admitted in evidence with­ out further proof and without production of the original, and such evidence shall be sufficient evi­ dence of the matter stated therein.

Page 10

(6) In this section, "certified copy" and "certified extract" means a copy or extract certified by the Registrar and sealed with his seal.

PART III

PATENTS

8. (1) Subject to section 12, a patent may be granted only for Patentable Inventions. an invention which satisfies the following conditions:

(a) the invention is new;

(b) it involves an inventive step; and

(c) it is capable of industrial application.

(2) An invention may be, or may relate to, a product or a process.

9. (1) An invention is considered to be new if it does not form Novelty. part of prior art.

(2) For the purpose of this Act, prior art in relation to an invention means anything which has, at any time prior to the filing date or, where priority is cIaim~ the priority date, of the applica­ tion claiming the invention, been disclosed to the public anywhere in the world by oral or written description, by use, or in any other way.

(3) For the purposes ofsubsection (2), the disclosure to the public of matter constituting an invention shall not be taken into consideration if it occurred within twelve months immediately preceding the filing date or, where priority is claimed, the priority date of the application, and the disclosure was due to or in conse­ quenceof­

(a) acts committed by the applicant or his predecessor in title; or

(b) an abuse committed by a third party with regard to the applicant or his predecessor in title.

Page 11

In~ntive step.

Industrial application.

Malter excluded from patent protection.

(4) In the case of an invention consisting of a substance or composition for use in amethod oftreatment of the human oranimal body by surgery or therapy, or of diagnosis practised on the human or animal body, the fact that the substance or composition fonns part of prior art shall not prevent the invention from being taken to be new if the use of the substance or composition in any such method does not fonn part of prior art.

10. An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention as defined in section 9(2), it is not obvious to a person having ordinary skill in the art

11. An invention shall be considered as being capable of industrial application if it can be made or used in any kind of industry including agriculture, fishery, handicraft and services.

12. (1) The following, even if they are inventions within the meaning of this Act, shall not be protected as patents ­

(a) a discovery, scientific theory or mathematical method;

(b) a scheme, rule or method for doing business, per­ forming a mental act or playing a game; and

(e) methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body.

(2) Subsection (1)(c) shall not apply to products for use in any of the methods specified therein.

(3) A patent shall not be granted for an invention the commercial exploitation of which it is necessary to prevent in Dominica in order ­

(a) to protect public order or morality, including to protect human, animal or plant life or health; or

(b) to avoid serious prejudice to the environment

Page 12

(4) The refusal to grant a patent in respect of an invention referred to in subsection (3) shall not be based solely on the ground that the commercial exploitation is prohibited by a law in force in Dominica.

PART IV

RIGHT TO APPLY FOR AND OBTAIN A PATENT

13. Any person may make an application for a patent either Who may apply for a alone or jointly with another. palent.

14. (1) The right to a patent shall belong to the inventor. Right to palent.

(2) If two or more persons have made an invention jointly, the right to the invention shan belong to them jointly.

(3) Where two or more persons have made the same inven­ tion independently of each other, the person whose application bears the earliest filing date or, if priority is claimed, the person whose application bears the earliest validly claimed priority date shall, unless that application is abandoned or withdrawn by the applicant, or rejected by the Registrar, have the right to the patent

(4) The inventor shall be named as such in the patent unless in a special written declaration signed by him and addressed to the Registrar, he indicates that he does not wish to be so named.

(5) Any promise or undertaking made by the inventor to any person to the effect that he will make such a declaration shall be void.

(6) The right to a patent may be assigned or transferred by succession.

15. (1) Where an invention is made in execution of a contract In\imticobyemployee of employment or for the execution of work, the right to the patent~ commis­ shall, in the absence of any agreement to the contrary, belong to the employeror theperson who commissioned thework as the casemay be.

Page 13

Iudicial assignment of patent applicalioo or patent.

(2) Where an invention referred to in subsection (1) ac­ quires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract of employment or for the execution of work, as the case may be, the inventor shall be entitled to equitable remuneration which may be fixed by the Court in the absence of agreement between the parties.

(3) Where an employee whose contract of employment does not require him to engage in any inventive activity makes, in the field of the activities of his employer, an invention using information or means placed at his disposal by his employer, the right to the patent for such invention shall be deemed to accrue to the employer in the absence of any provision to the contrary in the contract of employment, provided that the employee shall be entitled to equitable remuneration which, in the absence of agree­ ment between the parties, may be fixed by the Court taking into account his emoluments, the economic value of the invention and any benefit derived from it by the employer.

(4) For the avoidance of doubt, it is hereby declared that when an invention is made by an employee whose contract of employment does not require him to engage in inventive activity, or in a field ofactivity different from that ofhis employer, and without using infonnation or means put at his disposal by the employer, the right to the patent for such invention shall accrue to the employee.

(5) The rights conferred on the inventor under subsections (1), (2), (3) and (4) shall not be restricted by contract

(6) This section shall not apply to an invention made before the coming into force of this Act.

16. (1) Where the essential elements ofthe invention claimed in a patent or application for a patent have been unlawfully derived from an invention for which the right to the patent belongs to another person, such other person may apply to the Court for an order that the said patent application or patent be assigned to him.

(2) The Court shall make such order as it sees fit upon hearing such application.

Page 14

(3) No application for the assignment of a patent under subsection (1) shall be entertained by the Court after the expiry of five years from the date of the grant of the patent unless it is shown that any person registered as an ownerofthepatent knew, at the time ofthe grantor, as the case maybe,ofthe transferof the patent to him, that he was not entitled to the patent.

PARTY

APPLICATIONS FOR PATENTS

17. (1) Every application for a patent shall be filed with the Registrar in the prescribed form and shall contain - Application for a patent.

(a) a request;

(b) a description;

(c) one or more claims;

(d) one or more drawings where required; and

(e) an abstract.

(2) The request shall contain ­

(a) a petition that a patent be granted;

(b) the name of and other prescribed information relat­ ing to the applicant, the inventor, and agent, ifany; and

(c) the title of the invention.

(3) Where the applicant is not the inventor or a joint inventor, the request shall be accompanied by a written statement justifying the applicant's right to the patent.

(4) The description shall disclose 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.

(5) The claim or claims shall ­

(a) define the matter for which protection is sought;

Page 15

Unity of inventioo

Amendment of application.

Joint applicants.

(b) be clear and concise; and

(c) be supported by the description.

(6) The description and the drawings may be used to interpret the claim or claims.

(7) The Registrar may require an applicant to file drawings where these are necessary for the understanding of the invention.

(8) The purpose of the abstract is to provide technical information and shaH not be taken into account for the purpose of interpreting the scope of the protection sought.

(9) An applicant may, at any time before the patent is granted, withdraw his application.

(10) An application for a patent shall be accompanied by the prescribed application fee.

18. (1) An application for a patent shall relate to one invention only or to agroup 0 f inventions so linked as to form a single general inventive concept. .

(2) The applicant may, at any time before a patent is granted, divide the application into two or more applications (referred to in this section as "divisional applications"), provided that each divisional application shall not include any matter which was not disclosed in the initial application as filed.

(3) Each divisional application shall be accorded the filing date and, where applicable, the priority date, of the initial applica­ tion.

(4) The fact that a patent has been granted on an application thatdid not comply with the requirement ofunity ofinveotion under subsection (1) shall oot be a ground for the invalidation of the patent.

19. The applicant may, at any time before a patent is granted, amend the application, but the amendment shall not include any matter which was not disclosed in the initial application as fIled.

20. (1) Where two or more persons apply jointly for a patent,

Page 16

they shall, in the absenceofan agreement to the contrary, have equal undivided shares in the application and none of them shall deal with the application in any way without the consent of the other.

(2) Notwi thstanding the provisionsofsubsection (1), ifany step is required to be taken to save the application from being abandoned, any applicant may, on his own behalf and on behalf of any other joint applicant, take such step without recourse to the other applicant or applicants.

21. (1) An application for a patent may contain a declaration RighI ofpriority. claiming the priority, as provided for in the Paris Convention, ofone or more earlier national, regional or international applications filed by the applicant or his predecessor in title in or for any State party. to the said Convention or any member of the World Trade Organisation.

(2) Where the application contains a declaration under subsection (1), the Registrar may require the applicant to furnish, within the prescribed time, a copy of the earlier national, regional or international application certified as correct by the Office with which it was filed.

(3) Where the earlier application is not in English, the Registrar may require a translation thereof in English verified by the translator that the translation is, to the best of his knowledge, complete and faithful.

(4) The effect of the declaration referred to in subsection (1) shall be as provided in the Paris Convention.

(5) Where any requirement of this section or the Regula­ tions pertaining thereto is not fulfill ed, the declaration referred to in subsection (1) shall be considered as having not been made.

22. (1) At any time before the grant or refusal of a patent, an CoovClSiooofpatcnt applicant for a patent may, upon payment of the prescribed fee, application. convert his application into an application for a utility model certificate.

(2) No person may convert an application under subsection (1) more than once.

Page 17

Informatioo concerning corresponding foreigp applicatioos.

23. (1) The applicant shall, if requested by the Registrar, fur­ nish him with the date and number of any application for a patent filed by him abroad relating to the same or essentially the same invention as that claimed in the application filed with the Registrar.

(2) The applicant shall also, if requested by the Registrar, furnish him with the following documents relating to any foreign application referred to in subsection (1)­

(a) a copy of any communication received by the applicant concerning the results of any search or examination carried out in respect of the foreign application;

(b) a copy of the patent granted on the basis of the foreign application;

(c) a copy of any final decision rejecting the foreign application or refusing the grant requested in the foreign application; and

(d) a copy of any final decision invalidating the patent granted on the basis of the foreign application referred to in subsection (1).

(3) Subsection (2)(a) and (c) shall not apply where the Office of the Registrar is an elected Office within the meaning of section 55 and has received or will receive an international prelimi­ nary examination report.

(4) Any document furnished pursuant to this section­

(a) shall, if not in English, be accompanied by a trans­ lation thereof in English, verified by the translator that the translation is, to the best ofhis knowledge, complete and faithful; and

(b) may be used only for facilitating the evaluation of the novelty and inventive step of the invention for which the patent application is made.

Disclosure ormaner. 24. Where an application is made for a patent under section 17 ~~~==::.ierand and a declaration is made in accordance with section 21(1) in or in

connection with that application specifying an earlier application,

Page 18

the first-mentioned application and any patent granted in pursuance thereof shall not be invalidated by reason only of the fact that any subject matter disclosed in the earlier application was made avail­ able to the public at any time after the date of filing of the said earlier application.

25. (1) The Registrar shall accord as the filing date of an filiogdate. application for a patent, the date of receipt of the application, provided that at the time of its receipt, the following requirements are satisfied ­

(a) the documents filed contain an express or implied indication that the granting of a patent is sought;

(b) the documents filed identify the applicant or appli­ cants;

(c) the documents filed contain information which, on the face of it, appears to be a description of the invention.

(2) Where the application does not comply with the re­ quirements of subsection (1), the Registrar shall so inform the applicant in writing and shall invite him, subject to section 19, to file the required amendment.

(3) The Registrar shall then accord, as the filing date, the date of receipt of the amendment referred to in subsection (2).

(4) Where the applicant fails to make the required amend­ ment, the application shall be treated as if it had not been filed.

(5) Where the application refers to drawings which are not included in the application, the Registrar shall invite the applicant to furnish the missing drawings and, if the applicant complies, the Registrar shall accord as the filing date of the application, the date of receipt of the missing drawings.

(6) Where the applicant fails to comply with subsection (5), the Registrar shall accord as the filing date of the application, the date of receipt of the application and shall treat any reference to the said drawings as non-existent.

Page 19

EuminalioD.

Refusal or grant of palent.

26. After according a filing date, and if the application is not withdrawn, the Registrar shall examine the application to deter­ mine whether ­

(a) it complies with the requirements of section 17(1), (2), (3) and (10) and the Regulations pertaining thereto;

(b) it complies with the requirements of this Act;

(C) it complies with the requirements of the Regulations as have been designated by the Regulations to be formal requirements; and

(d) information requested under section 23, ifany, has been provided.

27. (1) Subject to section 25(2) to (4), where the Registrar is not satisfied that the requirements of the Act and the Regulations have been complied with, he shall refuse the application and so inform the applicant in writing, stating the reasons for the refusal.

(2) Where two or more patent applications for the same invention, having the same filing date or the same priority date, are filed by the same applicant or his successor in title, the Registrar may, on that ground, refuse to grant a patent in respect of more than one of the applications.

(3) Where the Registrar refuses an application under sub­ section (2) he shall so inform the applicant in vlriting, stating the reasons for his refusal.

(4) Where the Registrar is satisfied that the application, as originally filed or as amended complies with the requirements of section 26, he shall grant the applicant a patent.

(5) Where the Registrar grants a patent, he shall­

(a) publish, in the Journal, a notice of the grant of the patent;

(b) issue a certificate of the grant of the patent and a copy of the patent to the applicant; and

(c) record the patent in the Register.

(6) The Registrar shall, on payment of the prescribed fee, make a copyofany patentgranted under this section available to any person who requests such copy.

Page 20

(7) The Registrar shall, upon the request oftheownerofthe patent, amend the text or drawings of the patent in order to limit the extent of the protection conferred thereby, provided that the amend­ ment would not result in the disclosure contained in the patent going beyond the disclosure contained in the initial application on the. basis of which the patent was granted.

(8) The patent shall be deemed to be granted on the date on which the Registrar publishes a notice of the grant of the patent.

PART VI PROVISIONS AS TO PATENTS AFrER GRM'T

28. (1) Subject to subsection (2), a patent shall expire 20 years Duration and after the filing date of the application therefor. maintenanc:eofpatc"ot.

(2) In order to maintain a patent or patent application, the owner of a patent or the applicant shall pay in advance to the Registrar for each year starting one year after the filing date of the application for the grant of the patent, the prescribed annual fee.

(3) (a) Where the period prescribed for the payment of the annual fee expires and payment of the said fee has not been made, the Registrar shall give the owner of the patent or the applicant, as the case may be, a period ofgrace not exceeding six months, within which he must pay the annual fee.

,

(b) Theowneroftbe patentor the applicant, as the case may be, shall, when paying the annual fee in accordance with paragraph (a), also pay, to the Registrar, the surcharge prescribed for late payment

(4) A patent shall lapse or a patent application shall be deemed to have been withdrawn if the annual fee is not paid in accordance with the provisions of this section.

(5) If a patent ceases to have effect under this section, the Registrar shall enter the lapse in the Register and publish it in the Journal.

Page 21

Surrender of patent or claim.

Effect of registration, erc., OD rigflts in patents.

29. (1) The owner of a patent may, at any time by notice given to the Registrar in the prescribed manner, offer to surrender his patent or one or more claims contained in his patent

(2) Where an offer is made under this section, the Registrar shall advertise the offer in the prescribed manner and any interested person may, within the prescribed period commencing on the date of the publication of the advertisement, give notice to the Registrar of his opposition to the proposed surrender.

(3) Where notice of opposition is duly given under this section, the Registrar shal1 notify the owner of the patent in writing and determine the question.

(4) Where the Registrar is satisfied that the patent or any claim or claims contained in the patent may properly be surren­ dered, he may accept the offer and record his acceptance in the Register and shall, as soon as practicable, publish a notice of his acceptance in the Journal.

(5) From the date ofpublication of the notice under subsec­ tion (4), the patent or claim or claims shall cease to have effect, but no action for infringement shall lie in respect of any act done before that date, and no right to compensation shall accrue for any use of the patented invention before that date for purposes of the State.

(6) Where a patent has been granted to two or more persons, a notice in accordance with subsection (1) shall be signed by each of them.

30. (1) Any person who claims to have acquired the property in a patent or application for a patent by virtue of any transaction to which this section applies shall be entitled as against any other person who claims to have acquired that property by virtue of an earlier transaction to which this section applies if, at the time of the later transaction ­

(a) the earlier transaction was not registered; or

(b) in the case of any application, notice of the earlier transaction had not been given to the Registrar; and

Page 22

(c) in any case, the person claiming under the later transaction did not know of the earlier transaction.

(2) Subsection (1) shall apply equally to the case where any person claims to have acquired any right in or under a patent or application for a patent by virtue of a transaction to which this section applies, and that right is incompatible with any such right acquired by virtue of an earlier transaction to which this section applies.

(3) This section applies to the following transactions:

(a) the assignmentofa patent or application for a patent or a right in it;

(b) the mortgage of a patent or application or the granting of security over it;

(c) the grant, assignment of a licence or sub-licence, or mortgage of a licence or sub-licence, under a patent or application;

(d) the death of the owner or one of the owners of any such patent or application or of any person having a right in a patent or application and the vesting, of any such right, by an assent of the personal repre­ sentative of the applicant or owner of a patent; and

(e) any orderor directions of a court or other competent authority ­

(i) transferring a patent or application or any right in or under it to any person; or

(ii) that an application should proceed in the name of any person, and in either case the event by virtue of which the Court or authority had power to make any such order or give any such directions.

(4) Where an application for the registration of a transac­ tion has been made, but the transaction has not been registered, registration of the application shall, for the purposes of subsection (l)(a), be treated as registration of the transaction.

Page 23

Nature o~ and tmnsactiOIlII in patents.

(5) For purposes of this section, "transaction" includes an instrument and an event.

PART VII PROPERTY IN PATENT APPUCATION AND PATENTS

31. (1) A patent or application for a patent is personal property (without being a thing in action), and any patent or any such application and rights in or under it may be transferred, created or granted in accordance with subsections (2) to (6).

(2) Subject to section 32(2)(b), any patent or any such application, or any right in it, may be assigned or mortgaged.

(3) Any patent or any such application or right shall vest by operation oflaw in the same way as any other personal property and may be vested by an assent of personal representatives.

(4) Subject to section 32(2)(b), a licence may be granted under any patent or any such application for working the invention which is the subject of the patent or the application, and ­

(a) to the extent that the licence so provides, a sub­ licence may be granted under any such licence and any such licence or sub-licence may be assigned or mortgaged; and

(b) any such licence or sub-licence shall vest by opera­ tion of law in the same way as any other personal property and may be vested by an assent ofpersonal represen13lives.

(5) Any of the following transactions, that is to say­

(a) any assignment or mortgage ofa patent or any such application, or any right in a patent or any applica­ tion; or

(b) any assent relating to any patent or any such appli­ cation or right, shall be void unless it is in writing and is signed by or on behalf of the parties to the transaction (or, in the case of an assent or other

Page 24

transaction by a personal representative, by or on behal f 0 f the personal representative), or in the case of a body corporate, is so signed or is under the seal of that body.

(6) An assignment of a patent or any such application or a share in it, and an exclusive licence granted under any patent or any such application may confer, on the assignee or licensee, the right of the assignor or licensor to bring proceedings by virtue of section 41 for a previous infringement.

32. (1) Where a patent isgranted to two or more persons jointly, Iointownership of each of the patentees shall, in the absence of an agreement to the patent. contrary, be entitled to an equal undivided share in the patent.

(2) Subject to the provisions of subsection (4), a joint patentee shall not be entitled, in the absence of an agreement to the contrary, and in the absence of the consent of the joint pateniee or patentees, to ­

(a) make, use, exercise, or dispose of the patented invention;

(b) grant a licence or assign or mortgage the whole or any part of his interest in the patent; or

(c) take any step or institute any proceedings relating to the patent;

provided that he may without recourse to any other joint patentee, pay any annual fee which is payable.

(3) Where a patented article is disposed of by a joint patentee, the person who acquires the patent, or any person making a claim through him shall be entitled to deal with that article in the same manner as though the article had been disposed of by the patentees jointly.

(4) Any joint patentee may institute proceedings for in­ fringement and shall give notice thereof to any other joint patentee, and any such other joint patentee may intervene as co-plaintiff and recover any damages in respectofany damage he may have suffered as a result of the infringement.

Page 25

Rights conferred by pateot.

PART VIII RIGHTS OF OWNER OF PATENT

33. (1) The exploitation of a patented invention in Dominica by any persOn other than the owner of the patent shall require the latter's authorisation.

(2) For the purposes of this section, exploitation of a patented invention means­

(a) where the patent has been granted in respect of a product­

(i) making, importing into Dominica, offering for sale, selling and using that product;

(ii) stocking such product for the purposes of offering it for sale or selling or using it; and

(b) where the patent has been granted in respect of a process­

(i) using that process; and

(ii) doing any act referred to in paragraph (a) in respect of a product obtained by means of that process.

(3) Subject to subsection (4) and to sections 34, 35 and 38, the ownerof the patent shaH have the right to bring an action against any person who exploits the patented invention in Dominica with­ out his authorisation.

(4) The rights under the patent shall not extend to ­

(a) acts in respect ofarticles which havebeen p~ton the market in Dominica by the owner of the patent or with his consent;

(b) the use of articles on aircraft, land vehicles. or vessels of other countries which temporarily or accidentally enter the airspace, territory or waters of Dominica;

(c) acts done only for experimental purposes relating to a patented invention;

Page 26

(d) the extemporaneouspreparation for individual cases, in a pharmacy, of a medicine in accordance with a medical prescription or acts concerning the medi­ cine so prepared; or

(e) acts performed by any person who in good faith, before the filing or, where priority is claimed, the priority date of the application on which the patent is granted, and in Dominica, was using the inven­ tion or was making effective and serious prepara­ tions for such use.

(5) The right of prior user referred to in subsection (4)(e) may be transferred or devolve only together with the enterprise or business, or with that part of the enterprise or business in which the use or preparations for use have been made.

34. (1) Where apatent is granted for an invention, aperson who Right to coorinue lISe before the date of filing of the patent application or, if priority was befil~ befo.re~reof

• 109 or prtonty. claimed, before the date ofpriority, does in good faith in Dominica, an act which would constitutean infringementofthe patent ifitwere then in force, or makes effective and serious preparations in good faith to do such an act, shall have the rights specified in subsection (2).

(2) The rights referred to in subsection (1) shall be the following, namely ­

(a) to continue to do or, as the case may be, to do that act himself; and

(b) if the act was done or preparations had been made to do it in the course of a business ­

(i) to assign the right under paragraph (a);

(ii) to transmit the right under paragraph (a) to his heirs on his death or, in the case of a body corporate, on its dissolution, to any person who acquires that part of the busi­ ness in the course ofwhich the act was done or preparations had been made to do it; or

Page 27

Exploitalioo by ~enuncntorpenon

authorised thereby.

(iii) to authorise the act to be done by any partners of his for the time being in that business, and the doing of that act by virtue of this subsection shall not amount to an infringement of the patent concerned.

(3) The rights specified in subsection (2) shall not include the right to grant a licence to any person to do an act referred to in subsection (1).

(4) Where a product which is the subject of a patent is disposed ofby any person to another in exercise of a right conferred by subsection (2), that other and any person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole owner of the patent.

35. (1) Where­

(a) the public interest, in particular. national security, nutrition, health, or the development of other v~tal sectors of the national economy so requires; or

(b) the Minister has determined that the manner of exploitation, by the owner of the patent or his licensee, is anti-competitive, and he is satisfied that the exploitation ofthe invention in accordance with this subsection would remedy such practice,

the Minister may decide that, even without the agreement of the owner of the patent, a Government agency or a third person designated by the Minister may exploit the invention.

(2) The exploitation of the patented invention shall be limited to the purpose for which it was authorised and shall be subject to the payment to the said owner of an adequate remunera­ tion therefor, taking into account the economic value of the Minis­ ter's authorisation, as determined in the said decision, and, where a decision bas been taken under subsection l(b), the need to correct anti-competitive practices.

(3) The Minister shall make his decision after hearing the owner of the patent and any interested person.

Page 28

(4) A request for the Minister's authorisation to exploit a patented invention shall be accompanied by evidence that the owner of the patent has received, from the person seeking the authorisation, a request for a contractual licence, but that that person has been unable to obtain such a licence on reasonable commercial terms and conditions and within a reasonable time.

(5) Subsection (4) shall not apply in cases of ­

(a) national emergency or other circumstances of ex­ treme urgency provided, however, that in such cases theownerofthe patent shall be notified of the Minister's decision as soon as reasonably practica­ ble;

(b) public non-commercial use; and

(c) anti-competitive practices determined as such by the Minister in accordance with subsection (l)(b).

(6) The exploitation of a patented invention in the field of semi-conductor technology shall only be authorised for public non­ commercial use or where a judicial or administrative body has determined that the manner of exploitation of the patented inven­ tion, by the owner of the patent or his licensee, is anti- competitive, and if the Minister is satisfied that the issuance of the non-voluntary licence would remedy such practice.

(7) The authorisation shall not exclude ­

(i) the conclusion of license contracts by the owner of the patent; or

(ii) the continued exercise, by the owner of the patent, of his rights under section 33(2); or

(iii) the grant of a non-voluntary licence under section 38.

(8) Where a third person has been designated by the Min­ ister, the authorisation may only be transferred with the enterprise or business of that person or with the part of the enterprise or business within which the patented invention is being exploited.

Page 29

Prevent ion of indirect use of invention.

(9) The exploitation of the patented invention by tbe Gov­ ernment agency or third person designated by the Minister shall be predominantly for the supply of the market in Dominica.

(10) Upon the request of the owner of the patent, of the Government agency or of the third person authorised to exploit the patented invention, the Minister may, after bearing the parties, vary the terms of the decision authorising the exploitation of thepatented invention to the extent that changed circumst~nces justify such variation.

(11) Upon therequestoftheownerofthe patent, the Minister shall terminate the authorisation if he is satisfied, after hearing the parties, that the circumstances which led to his decision have ceased to exist and are unlikely to recur, or that the Government agency or third person designated by him has failed to comply with the terms of the decision.

(12) Notwithstanding subsection (11), the Minister shall not terminate the authorisation if he is satisfied that the need for adequate protection of the legitimate interests of the Government agency or third person designated by him justifies the maintenance of the decision.

36. (1) While in force, a patent shall confer, on its owner, the right to prevent aU persons not having his authorisation, from supplying or offering to supply in Dominica, a person (other than a person entitled to engage in commercial working of the patented invention) with means relating to an essential element of that invention, for putting it into effect therein, provided that the person knows, or it is obvious to a reasonable person in the circumstances that those means are suitable for putting, and are intended toput, that invention into effect.

(2) Subsection (1) shall not apply where the means referred to therein are staple commercial products, except where the person induces the person suppl ied to commit acts which the owner of the patent is entitled to prevent by virtue of section 33.

(3) Any person who commits an act referred to in paragraph (e) or (d) of section 33(4) shall not be considered to be a person

Page 30

entitled to engage in commercial working of the invention for the purposes of subsection (1).

PART IX

VOLUNTARY AND NON-VOLUNTARY LICENCES

37. (1) Subject to section 32 the owner of a patent application or Voluntary licences. patent may grant a licence in respect of the relevant invention.

(2) Any licence contract concerning a patent or an applica­ tion therefor shall be filed with the Registrar who shall keep its contents confidential but shall, upon payment of the prescribed fee, record it in the Register and publish a reference thereto in the Journal in the manner prescribed.

(3) Until such contract has been so recorded, the licence shall have no effect against third parties, unless otherwise decided by the Court.

(4) In the absence of any provision to the contrary in the terms of a licence contract, a licensee may not extend~ to another person, the authorisation conferred 0!1 him by the owner in accord­ ance with subsection (1), nor may he assign or mortgage his licence.

(5) In the absence of any provision to the contrary in the terms of a licence contract, the owner of a patent may continue to enjoy the rights conferred on him by sections 33 and 36.

(6) To the extent that the licence has been granted as an exclusive licence, the owner may notgranta licence in respect of the invention to a third person and may not himself do any of the acts referred to in sections 33 and 36.

(7) If, before the expiration of the licence contract, any of the following events Occur with respect to any patent application or patent, the subject of that contract­

(a) the patent application is withdrawn or is deemed to be withdrawn;

(b) the patent application is treated as if it had not been filed;

Page 31

(c) the grant of the patent is refused; or

(d) the patent is invalidated,

the licensee shall, from the date of the event, no longer be bound to make any payment directly relating to that patent application or patent.

(8) In any case referred to in subsection (7), the licensee shall have the right to repayment of the payments already made and directly relating to the patent application or patent in question, provided that he has not benefited from the licence_

l'oo-vohmlary licences. 38. (1)(a) At any time after the expiration of four years from the date of filing ofa patent application or three years from the date of the grant of a patent, whichever happens later, any interested person may apply to the Court for the grant of a non - voluntary licence under the patent 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 into Domi­ nica.

(b) Notwithstanding paragraph (a), a non-voluntary li­ cence shall notbe issued if the ownerof the patent satisfies the Court that circumstances exist whkh justify the non-exploitation or insufficient exploitation of the patented invention in Dominica.

(2) The Court shall, where it grants a non-voluntary li­ cence, fix­

(a) the scope and function of the licence;

(b) the time limit within which the licensee must begin to exploit the patentt!d invention; and

(e) the amount of the remuneration to be paid to the owner of the patent, and the conditions of the payment thereof.

(3) The beneficiary of the non-voluntary licence shall­

(a) have the right to exploit the patented invention in Dominica in accordance with the Court's order,

Page 32

E'ltercise of powers 00 applications under section 38.

Infringement.

Proc~edings for infringement.

39. The powers of the Court on an application under section 38 shall be exercised with a view to ensuring that the inventor or other person beneficially entitled to a patent receives adequate remunera­ tion baving regard to the economic value of the licence.

PART X

INFRINGEMENT

40. Subject to the provisions of sections 33(4), 35 and 38, the performance, in relation to a patent, of any act referred to in sections 33 and 36 without the authorisation of the owner of the patent shall, while it is in force, constitutes an infringement.

41. (1) The owner of the patent shall, in addition to any other right, remedy or action available to him, have the right, subject to sections 33(4),35,38 and 42, to institute court proceedings against any person who infringes the patent by performing, without his authorisation, any of the acts referred to in section 33(2) or who performs acts which make it likely that infringement will occur.

(2) A plaintiff in proceedings for infringement shall be entitled to relief by way of ­

(a) an injunction; (b) the seizure, forfeiture or destruction of ­

(i) any infringing product or article, or of any product or article of which the infringing product or article forms an inseparable part; and

(ii) any article, instrumentor thing by meansof which any infringing product or article was produced;

(e) damages;

(d) an account of the profits derived from the infringe­ ment; or

(e) any other relief provided for in the general law.

Page 33

Restrictions em re.:overy of damages for infringem<"Ot.

Relief for infringement of partially valid patent.

reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the patent concerned.

42. (1) In proceedings for infringement of a patent, damages shall not be awarded, and no ordcr shall he made for an account of profits, against a defendant who proves that at the datc of the infringement he was not aware, and had no reasonable grounds for supposing that the patent existed; and a person shall not be taken to have been awareorio have had reasonable grounds for so supposing by reason only oUhe application to a product of the word "'patent" or "patented"', or any word or words expressing or implying that a patent has been obtained for the product, unless the number of the patent accompanied the word or words in question.

(2) \Vhere an amendment of the description of a patent has been allowed under the provisions of this Act., no damages shall be awarded in proceedings for an infringement of the patent commit­ ted before the decision to allow the amendment unless the Court is satisfied that the description as published was framed in good faith and with reasonable skill and knowledge.

43. (1) If the validity of a patent is put in issue in proceedings [or infringement of the patent and it is found that the patent is only partially valid, the Court may, subject to subsection (2), grant relief in respect of that part of the patent which is found to be valid and infringed.

(2) Where in any such proceedings it is found that a patent is only partially valid, the Court shall not grant relief by way of damages, costs or expenses, except where the plaintiff proves that the de.o;cription was framed in good faith and with reasonable skill and knowledge and, in that event, the Court may grant relief in respect of that partofthepatent which is valid and infringed, subject to the discretion ofthe Court as to costs or expenses and as to the date from which damages should be reckoned.

(3\ As a condition of relief under this section, the Court , I

may direct that the description be amended to its satisfaction upon an application made for that purpose under section 48 and an

Page 34

application may be so made accordingly, whether or not all other issues in the proceedings have been determined.

44. (1) \Vhcre in any proceedings before the Court the validity Certitkate ofoootested of a patent to any extent is contested and that patent is found by the validity of patent.

Court to be wholly or partially valid, the CDurt may certify the finding and the fact that the validity of the patent was so contested.

(2) Where a certificate is granted under this section and in any subsequent proceedings before the Court for infringement of the patent concerned or for invalidation, a final order or judgment is made or given in favour of the party relying on the validity of the patent as found in the earlier proceedings, that party shall, unless the Court otherwise directs, be entitled to his costs or expenses as between attorney-at-law and client (other than the costs or expenses of any appeal in the subsequent proceedings).

45. (1) Subject to the provisions of th is sec~ion, the holder of an Proceedings for exclusive licence under a patent shall have the same right as the infrin~emenl. t by

exclUSIve lceosee.

owner of the patent to bring any proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the owner of the patent in this Act relating to infringement shall be construed accordingly.

(2) In awarding damages or granting any other relief in any such proceedings, the Court shall take into account any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.

46. \Vhere by virtue of a transaction, instrument or event to EtTed ofooo­ h · h . "0 I' b h f h registration 00W Ie sectlOn -' app les, a perSlln ecomes t e owner or one 0 t e drmgernent

owners or an exclusive licensee of a patent and the patent is proceedings. subsequently infringed, the Court shall not award him damages or order that be be given an account of the profits in respect of such subsequent infringement occurring before the transaction, instru­ ment or event is registered unless­

(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or

Page 35

(h) the Court is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as was practicable thereafter.

PART XI

INVALIDATION OF PATENT

Invalidation of patenI. 47. (1) Subject to the provisions of this Act, the Court may, on the application of any interested party, invalidate a patent on any of the following grounds:

(a) that the invention is not an invention as defined in this Act;

(b) that the patent concerned is not patentable under section 8 or does not satisfy the requirements of sections 9 (1), (2) and (3), and sections 10 and 11;

(c) that the invention is a matter which should, in act:ordance with section 12, have been excluded from patent protection~

(d) that the patent was granted to a person who was not entitled thereto under section 14 or 15 as the case may be;

(e) that the patentee's application did not satisfy the requirements of section 17(4) to (7);

(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.

(2) Any invalidated patent, claim or partof a claim shall be regarded as being null and void from the date of the grant of the patent.

Page 36

(3) An application for the invalidation of a patent shall be served on the patentee and filed with the Court in the manner and within the time prescribed.

(4) The Registrar of the High Court shall notify the Regis­ trar of the final decision of the Court and the Registrar shall forthwith record it and publish a reference thereto in the Journal.

48. (1) Subject to subsection (5), in any proceedings before the AmecC:neo! ofpatcnt Court in which the validity of a patent is put in issue, the Court may ~ mr:r~~eme:J[ or

• . " mvahclt100

allow the owner of the patent to amend the patent in such manner, proce..-Cillgs. and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the Court thinks fit.

(2) Any interested person may give notice to the Court of his opposition to an amendment proposed by theowner of the patent under this section, and ifhe does so the Court shall notify the owner and consider the opposition in deciding whether the amendment should be allowed.

(3) An amendment of a description under this section shall have effect and shall always be deemed to have effect from the grant of the patent.

(4) \Vhere an application for an order under this section is made to the Court, the applicant shall notify the Registrar who shall be entitled to appear and be heard, and shall appear if so directed by the Court.

(5) No amendment shall be allowed under this section if it discloses matter which extends beyond that disclosed in the de­ scription of the granted patent or extends the scopeofthe protection conferred by the patent.

PART XII

UTILITY MODEL CERTIFICATES

49. (1) Except as otherwise provided under this Part, the provi- A-",I:c:1!ion of sions of this Act relating to patenl'; and applications shall apply to :~~:xsrelaliogt0

~ A .t.'"... r'<l~C::U~.

utility model certificates and applications therefor.

Page 37

Qualification of inventioo fOT utility model certificate.

Duration of utility model certificate.

Invalidation of utility model certificate.

(2) Sections 8, 10, 28 and 47(1) shall not apply to utility model certificates and to applications therefor.

50. (1) An invention shall qualify for a utility model certificate if it is new and industrially applicable.

(2) An invention for which a utility model certificate is applied for shall not be considered new if it differs from earlier inventions only in minor respects or in details which are immaterial to the function or application of the invention.

51. A utility model certificate shall expire seven years after the filing date of its application and shall not be renewed.

52. (1) Subject to the provisions of this Act, the Court may, on the application of any interested person, invalidate a utility model certificate on any of the following grounds:

(a) that the invention relating to the certificate is ­

(i) not new or industrially applicable; or

(ii) contrary to public order or morality;

(b) that the description and claim or claims do not disclose the invention in a manner which is suffi­ ciently clear and complete to permit a person hav­ ing ordinary skill in the art to carry out the inven­ tion, and do not indicate at least one mode known to the applicant for carrying out the invention;

(c) that the claim or claims do not define the matter for which protection is sought;

(d) that the claim or claims are not clear or concise and are not fully supported by the description;

(e) that the drawings necessary for the understanding of the invention have not been filed as required under this Act; and

(j) that the person to whom the utility model certificate has been granted is not the inventoror his successor in title.

Page 38

(2) An application for the invalidation of a utility model certificate shall be served on the person to whom the certificate has been issued and filed with the Court in the manner and time prescribed.

(3) The Registrar of the High Court shall notify the Regis­ trar of the decision of the Court to invalidate a utility model certificate and the Registrar shall forthwith record it and publish a reference thereto in the Journal.

53. (1) At any time before the grantorrefusal ofa utility model CoDVersico of certificate an applicant may upon payment of the prescribed fee applicati~ for utility

" , model certIficate. convert his application for a utility model certificate into an appli­ cation for a patent, and the latter application shall be accorded the filing date of the initial application.

(2) No person may convert an application under subsection (1) more than once.

PART XIII

INTERNATIONAL ARRANGEMENTS

54. The provisions of any international treaty in respect of Applicalioo oflrealies. industrial property to which Dominica is party shall apply to matters dealt with by this Act and, in case ofconflict with the provisions of this Act, shall prevail over the latter.

55. (1) (a) The Patent Cooperation Treaty (referred to in this Implcment:llionof Patentsection as "the Treaty"), the Regulations made thereunder, and the T Co-OPCI3tioo

rcaty.

Administrative Instructions made under those Regulations shall be given full effect

(b) Where reference is made in this section to the Treaty, such reference shall include the Regulations and Adminis­ trative Instructions referred to in paragraph (a).

(2) The Companies and Intellectual Property Office shall process international applications in accordance with the provi­ sionsoftheTreaty,and in accordancewith the provisions of this Act and the Regulations made thereunder.

Page 39

(3) Where the provisions of this Act and the Regulations made thereunder conflict with those of the Treaty, the provisions of the Treaty shall prevail.

(4) An international application designating Dominica shall, subject to this section, be treated as an application for a patent or a utility model certificate filed under this Act having, as its filing date, the international filing date accorded under the Treaty.

(5) The Companies and Intellectual Property Office shall act as a receiving Office in respect of any international application filed with it by a resident or national of Dominica.

(6) An international application filed with the Companies and Intellectual Property Office as receiving Office shall be filed in a prescribed language and the prescribed transmittal fee shall be paid to the Registrar within one month of the date of receipt of the international application.

(7) The Companies and Intellectual Property Office shall act as a designated office in respect of an international application in which Dominica is designated for the purposes of obtaining a national patent or a utility model certificate under this Act.

(8) The Companies and Intellectual Property Office shall act as an elected Office in respect of an international application in which Dominica is designated as referred to in subsection (7) if the applicant elects Dominica for the purposes of an international prel iminary examination under Chapter II of the Treaty.

(9) The Companies and Intellectual Property Office, as designatedOfficeorelectedOffice, shall notcommence theprocess­ ing of an international application before the expiration of the time limit referred to in subsection (10) except if the applicant complies with the requirements of that subsection and fJles, with the Compa­ nies and Intellectual Property Office, an express request for the early commencement of such processing.

(10) The applicant in respect of an international application designating Dominica shall, before the expiration of the time limit applicable under Article 22 or 39 of the Treaty, or ofsuch later time limit as may be prescribed in the Regulations ­

Page 40

(a) pay the prescribed fee to the Companies and Intel­ lectual Property Office; and

(b) if the international application was not filed in, and has not been published under the Treaty as a trans­ lation into, a prescribed language, file, with the Companies and Intellectual Property Office, a trans­ lation of the international application, containing the prescribed contents, into such language.

(11) \Vhere the applicant does not comply with the require­ ments of subsection (10) within the time limit referred to in that subsection, the international application shall be considered as having been withdrawn for the purposes of this Act.

(12) In this section, the tenns "'designate", "designated Of­ fice", "'elect", "elected Office", "'international application", "hiter­ national filing date", "international preliminary examination" and "receiving Office" have the same meanings as in the Treaty.

56. (1) Judicial notice shall be taken of the Paris Convention, Judicial noliceo(certain the Patent Cooperation Treaty, or any other industrial property trcali~. Convention or Treaty to which Dominica may become party~ and of any bulletin, journal orgazette published under such Convention or Treaty.

(2) Any document referred to in any such bulletin, journal or gazette shall be admissible as evidence ofany instrumentor other act thereby communicated, or of any institution established by or having functions under any Convention or Treaty referred to in subsection (1).

PART XIV

GENERAL PROVISIONS

57. (1) Any change in the ownership ofa patent or utility model OtangesinoW1Jership. certificate or in the ownership of the application therefor shall be in writing and shall, upon the request of any interested party to the Registrar, be recorded and, except in the case of an application, be published in the 1ournal.

Page 41

Correction of errors.

E.~ension of time.

E."tercise of discretioo­ ary powers.

Agents.

lurisdicticD of Court.

(2) A change under subsection (1) shall be of no effect against third parties until it has been recorded.

58. (1) The Registrar may, of his own volition or upon the written request ofany interested person, correct any clerical error or error in translation or transcription in any application filed under this Act, or in any document filed in pursuance ofsuch application, and the Registrar may also correct any clerical error in the Register.

(2) Subsection (1) shall not be construed as giving the Registrar any power to correct in the Register, any application or document in a material way.

59. (1) Where the Registrar is satisfied that the circumstances justify it, he may, upon the written request ofany interested person, and upon such terms as he may direct, extend the time for doing any act or taking any proceeding under this Act and the Regulations.

(2) The extension may be granted even though the time for doing the act or taking the proceeding has expired.

(3) The Registrar shall give written notice of any extension to the parties concerned.

60. The Registrar shall, before exercising any discretionary power vested in him by this Act or the Regulations made thereun­ der, give any party to a proceeding before him the opportunity of being heard if his decision might adversely affect that party.

61. Every applicant whose ordinary residenceorprincipal place of business is outside Dominica shall be represented by a legal practitionerwho is resident in Dominica and practising in Dominica in accordance with the relevant law.

62. (1) The Court shall have jurisdiction in cases of disputes relating to the application of this Act and the Regulations, and in matters which, under this Act, may be brought before it.

(2) Any person who has been aggrieved by a decision of the Minister or the Registrar under this Act may, within two months of that decision, appeal to the Court.

Page 42

63. (1) Any person who intentionally or wilfully performs an Offences act which constitutes an infringement as defined under section 40 commits an offence and is liable to a fine of not less than fifteen thousand dollars but not more than forty thousand dollars, or to imprisonment for a term ofnot less than five yearsbut not more than twelve years, or to both such fine and such imprisonment.

(2) Any person who, knowing the same to be false ­

(a) makes or causes to be made a false entry in the Register,

(b) makes or causes to be made any document falsely purporting to be a copy of an entry in the Register; or

(e) produces, tenders or causes to be produced or ten­ dered as evidence any such entry or copy thereof,

commits an offence and is liable to a fine of not less than ten thousand dollars, but not more than thirty thousand dollars, or to imprisonment for not less than three years, but not more than ten years, or to both such fine and such imprisonment.

(3) Any person who, knowing the same to be false, makes a false statement or representation that ­

(a) a.patent or util ity model certificate has been granted to him or to any other person in respect of any invention; or

(b) he has been granted an exclusive or non-voluntary licence to use any patentor utility model certificate,

which statement or representation induces another person to act thereon, commits an offence and is liable to a fine of not less than five thousand dollars, hut not more than twenty tbousand dollars, or to imprisonment for a term of not less than two years, but not more than five years, or to both such fine and such imprisonment.

(4) Any person who falsely represents that anything dis­ posed of by him for value is a patented product or process he shall, subject to subsections (5) to (7), be liable to a fine of not less than four thousand dollars, but not more than tcn thousand dollars.

Page 43

(5) For the purposes of subsection (4), a person who for value disposes of an article having stamped, engraved or impressed on it or otherwise applie.d to it the word "'patent" or "'patented" or anything expressing or implying that the article is a patented product, shall be taken to represent that the article is a patented product.

(6) Subsection (4) shall not apply where the representation is made in respect of a product after the patent for that product or, as the case may be, the process in question has expired or been invalidated and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

(7) In proceedings for an offence under this section it shall be a defence for the accused to prove that he used due diligence to prevent the commission of the offence.

(8) Any person who represents that a patent has been applied for in respect of any article disposed of for value by him, and­

(a) no such application has been made; or

(b) any such application has been refused or with­ drawn,

commits an offence and is liable to a fine of not less than four thousand dollars, but not more than ten thousand dollars.

(9) Subsection (8)(b) shall not apply where the representa­ tion is made in respect of a product after the patent for that product or, as the case may be, the process in question has expired or been invalidated, and before the end of a period which is reasonably sufficient to enable the accused to take steps to ensure that the representation is not made (or does not continue to be made).

(10) For the purposes of subsection (8) a person who for value disposes ofan article having stamped, engraved or impressed upon it or otherwise applied to it the words "'patent applied for" or "'patent pending" or anything expressing or implying that a patent

Page 44

has been applied for in respect of the article, shall be taken to represent that a patent has been applied for in respect of the article.

(11) Where an offence under this Act which has been com­ mitted by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to, any neglect on the part of, a director, manager, secretary or other similar officer of the body corporate, or any person who was purporting to act in any such capacity, he, as well as the body corporate commit an offence and is liable to be proceeded against and punished accordingly.

(12) Where the affairs of a body corporate are managed by its members, subsection (11) shall apply in relation to the acts and defaults of a member in connection with his functions of manage­ ment as if he were a director of the body corporate.

64. Neither the Minister nor any person employed by the State ImmUDityregilrding ~ll- ~~~

(a) be taken to warrant the validity of any patent granted under this Act; or

(b) incur any liability by reason ofor in connection with any examination or investigation required or authorised by this Act or any report or other proceedings consequent upon any such examination or investigation.

65. The Registrar shall, before 1st June every year, make an Registrar's annual report. annual report to the Minister with respect to the operationofthis Act and the discharge of his functions thereunder.

66. Nothing in this Act shall affect the right of the State or any Saving in respect of ·· . ~ f· d d rights to s~11 forfeitedperson emp oycI d by It to dispose of or use artlcles lor elte un er articles.

the laws relating to customs and excise.

67. A prosecution for an offence under this Act shall not be Tune limit for commenced after the expiration of five years after the commission prc6ecu!ioo. of the offence or one year after the discovery thereof, whichever occurs last.

Regulations.

Administrative InstrucUOIlS.

Act binding on State.

Repeal. 01.78:40. 01.78:45.

Transitiocal.

Page 45

68. (1) The Minister may make Regulations providing for any matter which is to be prescribed under this Act, or for giving effect to the purooses of this Act.

(2) Without derogating form the generality of subsection (1), the Minister may make Regulations providing further details for the processing of international applications by, and other func­ tions of, the Registrar in connection with the Patent Cooperation Treaty, including fees payable, time limits, prescribed languages and other requirements relating to international applications.

69. The Registrar may issue admmistrative instructions relating to the procedures under this Act, the Regulations made thereunder, and any other enactment relating to industrial property, as well as relating to the general functions of the Companies and Intellectual Property Office.

70. This Act binds the State.

71. (1) The Patents Act and the Registration ofUnited Kingdom Patents Act (referred to in this section as ""the fonner Acts") are hereby repealed, save that all Orders, Rules or Regulations made thereunder shall, in so far as they are not inconsistent with this Act, continue in force until revoked by Regulations made under this Act.

72. (1) Notwithstanding the repeal of the former Acts, patents granted thereunder shall remain in force but shall, subject to subsec­ tions (2) and (3), be deemed to have been granted under this Act.

(2) Patents thus granted shall remain in force for the unex­ pired portion of the period of protection provided under this Act subject to the payment of annual maintenance fees or renewal fees provided for in this Act.

(3) A person who on the date of entry into force of this Act is the owner of a patent granted in the United Kingdom or a European patent designating the United Kingdom or has filed an application in the United Kingdom for the grant of a patent or an application for the grant of an European patent designating the

IP fDMAIP11/Nil Page 46

United Kingdom may, within 12 months of the entry into force of this Act, file an application for the grant of a patent for the same invention under this Act, and such application shall be accorded the filing date or priority date accorded to the application or grant by the United Kingdom Patent Office or by the European Patent Office, as the case may be.

(4) Where, upon the entry into force of this Act, an appIi- 01.78:40. cation made under the Patents Act is pending, such application shall, notwithstanding the provisions of subsection (1), be dealt with under the said Patents Act but the grant shall thereafter be subject to this Act.

(5) Notwithstanding subsection (1), the Patents Act shall Ol. 78:40 continue to apply so far as it is necessary to enable any person applying for a patent before this Act comes into force to do so, but any patent thus granted shall be deemed to have been granted under this Act.

(6) The Minister may by Order published in the Gazette make any further transitional or saving provisions which appear to him to be necessary or desirable.

73. (1) This Act shall come into force on such day as the Cocmcno:mcnt. Minister may, by Order published in the Gazette, appoint.

(2) Different days may be appointed for bringing different provisions into force, or for bringing different purposes of the same provision into force. .

Passed in the House of Assembly this 9th day of September, 1999.

RUTH SIMON (MRS.) Clerk of the House ofAssembly (Ag.)