WORLD TRADE ORGANIZATION 
ORGANISATION MONDIALE DU COMMERCE 
0RGANIZACION MUNDIAL DEL COMERCIO 
Council for Trade-Related Aspects of 
Intellectual Property Rights IP/N/1/DMA/P/1 
18 June 2001 
(01-3022) 
Original: English/ 
anglais/ 
ingles 
MAIN DEDICATED INTELLECTUAL PROPERTY 
LAWS AND REGULATIONS NOTIFIED UNDER 
ARTICLE 63.2 OF THE AGREEMENT 
DOMINICA 
The present document reproduces the text' of the Patents Act, Act No. 8 of 1999, as notified 
by Dominica under Article 63.2 of the Agreement (see document IP/N/l/DMA/1). 
Conseil des aspects des droits de propriete 
intellectuelle qui touchent au commerce 
PRINCIPALES LOIS ET REGLEMENTATIONS CONSACREES A LA 
PROPRIETE INTELLECTUELLE NOTIFIEES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
DOMINIQUE 
Le present document contient le texte1 de la Loi n° 8 de 1999 sur les brevets, notifiee par la 
Dominique au titre de l'article 63:2 de l'Accord (voir le document IP/N/l/DMA/1). 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PARRAFO 2 DEL ARTICULO 63 DEL ACUERDO 
DOMINICA 
En el presente documento se reproduce el texto 1 de la Ley de Patentes, Ley N° 8 de 1999, 
notificado por Dominica en virtud del parrafo 2 del articulo 63 del Acuerdo (vease el documento 
IP/N/1/DMA/1 ). 
1 In English only./En anglais seulement./En ingles solamente. IP/N/1/DMA/P/1 
Page2 
1999 PATENTS ACT 8 
COMMONWEALTH OF DOMINICA 
ARRANGEMENT OF SECTIONS 
SECTION 
PART! 
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. 
PARTIV 
RIGHT TO APPLY FORAND OBTAIN A PATENT 
13. \Vho may apply for a patent. 
14. Right to patent. 
15. Invention by employee or person commissioned. 
16. Judicial assignment of patent application or patent. PARTY 
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 Government or person authorised thereby. 
36. Prevention of indirect use of invention. IP/N/1/DMA/P /1 
Page3 IP/N/1/DMA/P/l 
Page4 
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. 
PARTX 
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. 
PARTXI 
INVALIDATION OF PATENT 
47. Invalidation of patent. 
48. Amendment of patent in infringement or invalidation 
proceedings. 
49. 
50. 
51. 
-7 .) __ 
53. PART XII 
UTILITY MODEL CERTIFICATES 
Application of provisions relating to patents. 
Qualification of invention for utility model certificate. 
Duration of utility model certificate. 
Invalidation of utility model certificate. 
Conversion of application for utility model certificate. PART XIII 
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. IP /N/1/DMA/P /1 
Page 5 IP /N/1/DMA/P /1 
Page6 
COMMONWEALTH OF DOMINICA 
ACT No. 8 of 1999 
l 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: 
1. PARTI 
PRELIMINARY 
This Act may be cited as the -
PATENTS ACT 1999 
2. In this Act, unless the context othelVlise requires -
"'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; Short title. 
Interpretation. Establishment of 
Companies and 
lntellectual Property 
Office. IP /N/1/DMAIP /1 
Page7 
"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 INTELLECTUAL PROPERTY OFFICE 
!J. There shall be established, at such place as the Minister 
determines, a Companies and Intellectual Property Office. 
Registrar, Deputy~ 4. (1) There shall be a Registrar of Companies and Intellec­
!~~strar andf Assist~t tual Property who shall be a public officer, and who shall, subject 
.-cgtstrars o Comparues 
and In1ellectual Property. to the control of the Minister, be responsible for the administration IP/N/1/DMA/P/l 
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 Property and such number of Assistant 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 functioos 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 a Journal oflntellectual 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. Seal. 
Register. IP /N/l /DMA/P/1 
Page9 
6. (1) The Registrar shall have a seal approved by the Minis-
ter, which he shall 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 be prima 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 prim a f acie 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. IP/N/1/DMA/P/l 
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 NO\/Chy. 
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 claimed, 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 of subsection (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
quence of -
( 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. Invcntive step. 
Industrial application. 
Matter excluded from 
patent protection. IP/N/1/DMA/P/l 
Page 11 
( 4) In the case of an invention consisting of a substance or 
composition for use in a methodoftreatmentofthehuman or animal 
body by surgery or therapy, or of diagnosis practised on the human 
or animal body, the fact that the substance or composition forms 
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 form part of prior art. 
10. An invention sha1I 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 
(c) 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 W/N/1/DMNP/l 
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. patent. 
14. (1) The right to a patent shall belong to the inventor. 
(2) If two or more persons have made an invention jointly, 
the right to the invention shall 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. Right to patent. 
15. (1) Where an invention is made in execution of a contract Im1m1icobyemployec 
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 
employer or the person who commissioned the work as the case may 
be. Judicial assignment of 
patent applicatioo or 
patent. IP/N/1/DMA/P/1 
Page 13 
(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 of activity different from that of his employer, and without 
using information 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 of the 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. IP /N/1 /DMA/P /1 
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 owner of the patent knew, at the time 
of the grant or, as the case maybe,ofthe transfer of 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, if any; 
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; Unity of inventioo 
Amendment of 
application. 
Joint applicants. (b) be clear and concise; and 
(c) be supported by the description. IP /N/1/DMA/P I 1 
Page 15 
(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 shaJI 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 a group of 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 
thatdidnotcomplywith the requirement of unity of invention under 
subsection (1) shall not 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, IP /N/1 /DMA/P /1 
Page 16 
they shall, in the absence of an 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) Notwithstanding the provisions of subsection (1 ), if any 
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 Right of priority. 
claiming the priority, as provided for in the Paris Convention, of one 
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 ref erred 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 fulfil] 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 Coovetsiaiofpatcn1 
applicant for a patent may, upon payment of the prescribed fee, appiicatiOll. 
convert his application into an application for a utility model 
certificate. 
(2) No person may convert an application under subsection 
(1) more than once. Informatioo concerning 
cor=ponding forcig;, 
applicatioos. IP/N/1/DMA/P/1 
Page 17 
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 
ref erred 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 of his 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 ofmaner, 24. Where an application is made for a patent under section 17 :~~==:1icrand and a declaration is made in accordance with section 21(1) in or in 
connection with that application specifying an earlier application, IP/N/1/DMA/P/1 
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 fiiiogdate. 
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. fa:amination. 
Refusal or grant of 
patent. IP/N/1/DMA/P/l 
Page 19 
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, if any, bas 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 v.rriting, 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 copy of any patent granted under this section available to any 
person who requests such copy. IP /N/1 ID MA/P /1 
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 PA TENTS 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 of grace not exceeding six months, within 
which be must pay the annual fee. 
, 
(b) Theownerof tbe 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. Surrender of patent or 
claim. 
Effect of registration, 
etc., OD riglits in 
patents. IP IN/ 1/DMA/P /1 
Page 21 
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 of publication of the notice under subsec­
tion ( 4), the patent or daim 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) shaJI 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 IP/N/1/DMA/P/1 
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 assignment of a 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 order or 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 registere~ 
registration of the application shall, for the purposes of subsection 
(l)(a), be treated as registration of the transaction. Nature ot and 
transactiOllll in patCllls. IP /N/1/DMA/P /1 
Page23 
(5) For purposes of this section, "transaction" includes an 
instrument and an event. 
PART VII 
PROPERTY IN PATENT APPLICATION 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 of personal 
representatives. 
(5) Any of the following transactions, that is to say -
( a) any assignment or mortgage of a 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 IP/N/1/DMA/P/1 
Page24 
transaction by a personal representative, by or on 
behalf of 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 is granted to two or more persons jointly, Joint ownership 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 othei 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 respect of any damage he may have suffered 
as a result of the infringement. Rights conferred by 
patent. PART VIII 
RIGHTS OF OWNER OF PATENT IP/N/1/DMNP/l 
Page 25 
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 owner of the patent shall 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 of articles which have been p~t on 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; IP/N/1/DMA/P/l 
Page 26 
( d) the extemporaneous preparation 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 a patent is granted for an invention, a person who Right to coorinuc use 
before the date of filing of the patent application or, if priority was be61~ bcfo_re~reof • mg or pnonty. 
claimed, before the date of priority, does in good faith in Dominica, 
an act which wouldconstitutean infringementoftbepatent 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 bis 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 of which the act was done 
or preparations had been made to do it; or Exploitatioo by 
Govemincntorpeison 
authorised thereby. IP /N/1 /DMA/P I 1 
Page 27 
(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 of by 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 of the 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 1(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. IP/N/ 1/DMA/P /1 
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 the owner of the 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 bas 
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 issuanceofthe 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. Prevent ion of indirect 
use of invention. IP/N/1/DMA!P/l 
Page 29 
(9) The exploitation of the patented invention by the 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 hearing the parties, vary 
the terms of the decision authorising the exploitation of the patented 
invention to the extent that changed circums•~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), theMinistershall 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 all 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 to put, 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 supplied 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 ref erred to in paragraph 
(c) or (d) of section 33(4) shall not be considered to be a person IP /N/1 /DMA/P /1 
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 O!l 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 not grant a licence in respect of the 
invention to a third person and may not himself do any of the acts 
ref erred 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; (c) the grant of the patent is refused; or 
(d) the patent is invalidated, IP /N/1/DMA/P /1 
Page 31 
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. 
r-ico-vol\llltary licences. 38. (1 )( a) 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, 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 not be issued if the owner of the patent satisfies the Court 
that circumstances exist whkb justify the non-exploitation or 
insufficient exploitation of the patented invention in Dominica. 
(2) The Court shall, where it grants a non-voluntarv 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 
(c) 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, IP/N/1/DMNP/l 
Page 32 
fa:ercise of powers on 
applications under 
section 38. 
Infringement. 
Proc~e<li ngs for 
infringement. 39. The powers of the Courton 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 having regard to the economic value of the licence. 
PARTX 
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, instrument or thing by means of 
which any infringing product or article was 
produced; 
(c) damages; 
( d) an account of the profits derived from the infringe­
ment; or 
(e) any other relief provided for in the general law. Restrictions cm re.:overy 
of damages for 
infringemt'O!. 
Rdief for infringement 
of partially valid 
patent. IP IN/ 1/DMA/P /1 
Page 33 
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 order shall he made for an account of 
profits, against a defendant who proves that at the date 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 aware or to have had reasonable grounds for so supposing 
by reason only ofthe 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 
for 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 description was framed in good faith and with reasonable skill 
and knowledge and, in that event, the Court may grant relief in 
respect of that part of the patent which is valid and infringed, subject 
to the discretion of the Court as to costs or expenses and as to the date 
from which damages should be reckoned. 
(31 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 IP/N/1/DMA/P/1 
Page 34 
application may be so made accordingly, whether or not all other 
issues in the proceedings have been determined. 
44. (l) \Vhcre in any proceedings before the Court the validity Cerrifi.:ate ofoooteste<l 
of a patent to any extent is contested and that patent is found by the validi:yofpa:ent. 
Court to be wholly or partially valid, the C-0urt 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 this sec~ion, the holder of an Proceedings for 
exclusive licence under a patent shall have the same right as the infrin~emen
1_ t by exclusive 1ceosee. 
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 according! y. 
(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 EtTcc1 ofooo-
h · b · "O 1 · b h f h registration oo w IC section-' app 1es, a person ecomes t e owner or one o t e infringement 
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 IP/N/1/DMA/P/l 
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. 
PARTXI 
INVALIDATION OF PATENT 
Invalictatioaofpateat. 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 
acc.:ordancc 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 part of a claim shall be 
regarded as being null and void from the date of the grant of the 
patent. IP/N/1/DMA/P/1 
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 Ame::c:neoi of patent 
Court in which the validity of a patent is put in issue, the Court mav ~ UU:r~?me:ir or • · ., mvahc:iticn 
allow the owner of the patent to amend the patent in such manner, proce..-c:ngs. 
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 tbeownerofthe patent 
under this section, and if he 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) \Vhcre 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 scope of the protection 
conferred by the patent. 
PART XII 
UTILITY MODEL CERTIFICATES 
49. (1) Except as otherwise provided under this Part, the provi- AppI:c:irion of 
sions of this Act relating to patenl5 and applications shall apply to ::~:xsrelaiiogto 
~ A 4 .t,. ., f''<l~C::U~. 
utility model certificates and applications therefor. Qualification of 
inventioo for utility 
model certificate. 
Duration of utility model 
certificate. 
Invalidation of utility 
model certificate. IP /N/1/DMA/P /1 
Page 37 
(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 
(f) that the person to whom the utility model certificate 
has been granted is not the inventoror his successor 
in title. IP/N/1/DMA/P/l 
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 grant or refusal ofa utility model Coavcrsico or 
certificate an applicant may upon payment of the prescribed fee applicari~ for utility ' ' ' model cert16ca1e. 
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 Applica1ioo of1rca1ies. 
industrial property to which Dominica is party shall apply to matters 
dealt with by this Act and, in case of conflict with the provisions of 
this Act, shall prevail over the latter. 
SS. (1) (a) The Patent Cooperation Treaty (referred to in this huptcmen1:11ionof 
section as "the Treaty"), the Regulations made thereunder, and the TPatent Co-opcratioo 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,andinaccordancewith theprovisionsofthisAct 
and the Regulations made thereunder. (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 
preliminary examination under Chapter II of the Treaty. 
(9) The Companies and Intellectual Property Office, as 
designated Office or elected Office, shall not commence the process­
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 files, 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 of such later time 
limit as may be prescribed in the Regulations -IP/N/1/DMA/P/l 
Page 39 IP /N/1/DMA/P /l 
Page40 
(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 terms "'designate", "designated Of­
fice", "'elect", "elected Office", "'international application", "inter­
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 noticeo£certain 
the Patent Cooperation Treaty, or any other industrial property treaties. 
Convention or Treaty to which Dominica may become party~ and of 
any bulletin, journal or gazette published under such Convention or 
Treaty. 
(2) Any document referred to in any such bulletin, journal 
or gazette shall be admissible as evidence of any instrument or 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 of a patent or utility model Otangcsinowuership. 
certificate or in the ownership of the application there for 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 Journal. IP IN/ l /D MA/P /1 
Page 41 
(2) A change under subsection (1) shall be of no effect 
against third parties until it has been recorded. 
Correction of errors. 58. (1) The Registrar may, of his own volition or upon the 
E.~ensioa of time. 
E.i:ercise of discrctioo­
ary powers. 
Agents. 
Jurisdictico of Court. written request of any 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 of such 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 of any 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 
practitioner who 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. IP /NI 1/DMA/P / 1 
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 of not less lhan five years but 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 
(c) 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 utility 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, but not more than twenty thousand 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 ten thousand dollars. (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 applied 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 (B)(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 of an article having stampe~ 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 IP /N/1/D MA/P /1 
Page 43 IP/N/1/DMA/P/1 
Page44 
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 lm.mUDityrcg13rding ~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 n:port. 
annual report to the Minister with respect to the operation of this 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 
1 d b . . . , f • d d rights to sell forfeited person emp oyc y 1t to dispose of or use articles 1or e1te un er articles. 
the laws relating to customs and excise. 
67. A prosecution for an offence under this Act shall not be Tune limi1 for 
commenced after the expiration of five years after the commission J'TO'CCU!ioo. 
of the offence or one year after the discovery thereof, whichever 
occurs last. Regulations. 
Administrative 
Instru.ctioos. 
Act binding oo State. 
Repeal. 
Oi. 78:40. 
Oi. 78:45. 
Transitiocal. IP /N/1 /DMA/P /1 
Page45 
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 actmmistrative 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 of United Kingdom 
Patents Act (referred to in this section as ""the former 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 /Nil ID MAIP /1 
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 appli-ai. 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 0i. 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 of Assembly (Ag.) 