What is a patent?
A patent is the title given to protect an invention. This title gives the owner the exclusive rights to use, make, or sell the invention for a limited period of time. An invention is a product or a process which solves a specific problem in the field of technology.
The grant of a patent provides a reward for the creator of an invention. He can exploit the invention commercially or grant licence to others to do so. It also encourages individuals and companies to continue developing new technology.
- The invention must be new. This means that the invention must not have been disclosed to the public anywhere in the world by oral or written description, by use, or in any other way;
- It must involve an inventive step. This is it must be a sufficient advancement to the prior invention. It must not be obvious to a person having ordinary skill in the filed concerned;
- It must be capable of industrial application. It is capable of industrial application if it can be made or used in any kind of industry including agriculture, fisheries, handcraft and services;
- An invention is not patentable if it is:
- A discovery (things that exist in nature which are discovered).
- A scientific theory or mathematical method.
- Method for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practiced on the human or animal body.
How to apply for a grant of a patent
Any person may make an application for a patent alone or jointly with another by filing with the Companies and Intellectual Property Office:
- Petition for Patent (Form 1). The petition shall contain a request for the invention, the title of invention, names of applicant(s) statement of ownership, inventors name and address, agent if any;
- Application for Petition (Form 2). The application must contain abstract, description of the invention, drawings where required, one or more claims;
- Power of Attorney for an applicant whose residence is outside of Dominica or for a local applicant who is applying through an attorney;
- Fee for filing an application for a patent EC$500.00
- Fee for grant of a patent EC$375.00 and
- Publication fee.
Grant of Patent
Where the requirement of the Act has been satisfied the Registrar will publish in the Journal a notice of the grant and issue a certificate of the grant of the patent to the applicant. The grant takes effect on its publication date.
Duration of Patent
A patent expires 20 years after the filing date of the application.
Maintaining a Patent
In order to maintain a patent or patent application, the owner of a patent or the applicant must 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 as seen in on the fees page.
A patent shall lapse or a patent application shall be deemed to have been withdrawn if the annual fee is not paid.
For more general information on patents you may visit the World Intellectual Property Organization (WIPO) website at http://www.wipo.net/patents/en/.
What is a trade mark?
A trade mark is the visible sign used to distinguish the goods (“trade mark”) or services (“service Mark”) of an enterprise. A trade mark may consist of words, designs, letters, pictures, numbers, packaging, slogans, devices or any combination of these. And a “Collective mark” is any visible sign used by a group or association of enterprises, which distinguish the origin or other common characteristics, including the quality, of goods or services of the members of the group or association. The collective mark is used to distinguish particular features of the product for which the collective mark is used.
A trade mark must be distinctive and must not be deceptive. A trade mark is not distinctive if it is deceptive. It is descriptive if it describes the nature or identity of the goods or services from which it is used. A trade mark must not claim a quality for the goods that they do not have.
Trade mark, once registered, provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services or to authorise others to use it in return for payment.
How to apply to register your trade mark
An applicant who residence or principal place of business is outside Dominica must be represented by a legal practitioner resident and practising in Dominica.
You may apply for the registration of a trade mark by filing at CIPO:
- Form 1, Application for the Registration of a Mark, Schedule II of the Marks, Collective Marks and Trade Names Regulation, S.R.O. No. 3 of 2009: The form must be accompanied by:
- An authorization of agent for applicants whose residence or principle place of business is outside Dominica or for a resident applicant who is applying through a legal practitioner.
- The prescribed fee as follows:
- XC$450.00 for goods or services in a single class, for each additional class XC$200.00
- XC$100.00 per class for a word mark or XC$150 per class, for a mark which has words and figurative elements, for publication of the application.
The Application must contain:
- A request that the mark be registered;
- A reproduction of the mark; and
- A list of the goods or services for which registration of the mark is requested, listed under the applicable class or classes of the International Classification of Goods and Services
See Schedule III, Marks, Collective Marks and Trade Names Regulation, S.R.O No. 3 of 2009 for the class headings of goods and services in the International Classification. For the alphabetic list of goods and services and explanatory notes of the International classification consult the Tenth Edition of the Nice Classification at www.wipo.int/classification/nivilo/
An accepted application is published in the Journal of Intellectual Property. Any person wishing to oppose the registration of the mark may within two months of the publication of a trade mark give notice by filing a Notice of Opposition in Form 3 accompanied by the Notice of Opposition fee of XC$150.00.
The Grounds for Opposition
The grounds for refusing or opposing a trade mark registration is as listed in Section 4 of the Marks, Collective Marks and Trade Names Act Section 4 and Regulation 11 of the Marks, Collective Marks and Trade Names Regulation.
Answer to Notice of Opposition
An applicant who wishes to answer the notice of opposition shall within one month from the date of receipt of the Notice of Opposition file in duplicate a Notice of Answer in Form 3 with the fee of XC$100.00. After the expiration of two months from the date of advertisement in the Journal of Intellectual Property and where the requirements for the registration of a mark is fulfilled and registration of the mark has not been opposed within the time limit or the opposition to registration of the mark has been decided in the applicants favour the mark will be registered as of the date of receipt of the application.
Duration of Registration
The registration of the mark shall expire ten years from the filing date of the application for registration but may be renewed for consecutive periods of ten year.
Renewal of Registration
A registered owner of a mark may any time within six months of the expiration of the registration of a mark make an application for the renewal of the registration of the mark by filing in Form 5 and the renewal fee as follows:
- XC$450.00 in respect of goods or services in a single class, for each additional class $200.00.
- XC$100.00 for publication of application for renewal.
- XC$250.00 additional fee payable within six months of the date of expiration
- XC$250.00 additional fee for restoration of mark removed for non-payment of renewal fees.
Transfer or assignment of a trade mark
Where the rights in a trade mark are assigned or transferred the person to whom the rights in the mark have been assigned or transferred shall apply in Form 6 to have the assignment or transfer recorded in the Register. The fee filing fee is XC$150.00 for each mark and XC$100.00 for publication of application. The application must be accompanied by one of the following:
- a copy of the contract;
- a certified extract of the contract showing the change in ownership;
- an uncertified certificate of transfer in Form 9 and signed by both registered owner and the new owner; or
- An uncertified transfer document drawn in Form 10 and signed by both the registered owner and the new owner.
Recording or cancellation of a licence
If a licence has been granted in respect of a registered mark the registered owner of the mark or the person to whom the licence has been granted shall apply, in Form 7, to have the licence recorded. The filing fee is XC$100.00 per mark and XC$100.00 for publication of application.
The application shall be accompanied by-
- A certified extract of the licence contract; or
- An uncertified statement of licence in Form 11.
A registered owner of a mark or a licensee whose licence is respect of a mark has been recorded may apply for the variation or cancellation of the record, in Form 7. The filing fee is ECS100.00 per mark and XC$100.00 for publication of application.
NOTE: A licence contract shall have no effect against third parties unless it has been recorded.
Recording a change of name, address or other amendment to a registered trade mark
To apply for the recording of a change of name, address or other amendment to a registered trade mark use Form 2. See fees, schedule 1 for applicable fees.
For all legal requirement and procedures please consult the Marks, collective Marks and Trade Names Act, No. 12 of 1999 and the Marks, Collective and Trade Names Regulation, S.R.O. No. 3 of 2009.
The term Intellectual property (IP) refers to the body of works which is the result of a creative human mind or intellect. IP protects the interests of creators in their works giving them property rights over their creations. IP rights are protected by national laws and international agreements – treaties and conventions.
Some of the works protected by IP are:
- Literary, artistic and scientific works;
- Performances of performing artists, phonograms, and broadcasts;
- Inventions in all fields of human endeavour;
- Scientific discoveries;
- Industrial designs;
- Trademarks, service marks, and commercial names and designations;
- All other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.
These works are traditionally divided into two broad categories or branches:
- Copyright, which refers to all literary, artistic and scientific works or creations. Copyright is the exclusive property rights given to protect the creators of literary and artistic works.
- Industrial Property, which refers to inventions and industrial designs.
Industrial property applies to commerce, industry and includes agricultural, manufactured and natural products.
In Dominica the following legislation protects the various forms of Industrial Property as named by the legislation:
- Patents, Act 8 of 1999
- Industrial designs, Act 2 of 1998
- Marks, Collective Marks and Trade Names, Act 12 of 1999
- Geographical Indication, Act 13 of 1999
- Protection of Layout-Designs (Topographies) of Integrated Circuits, Act 11 of 1999
- Protection of New Plant Varieties, Act 14 of 1999
Patents – granted by the State to protect inventions. The grant of a patent recognizes the creator and allows him to commercially exploit and get compensation for his marketable inventions for a limited period of 20 years. In order to be granted a patent the inventor must adequately disclose the patented invention, it must be of practical use or application, it must be new or an improvement on existing knowledge and it must have an inventive step.
Industrial Designs – registration for the protection of the ornamental or aesthetic design that determines the appearance of a useful product. Granted for the non-functional feature of a product that results from design activity example the shapes or forms of drink or perfume bottles, cars, watches. Industrial designs serve to identify the goods of competitors and facilitate its marketing and commercialization. Protection is granted for a term of five years, from the date of filing, and is renewable for two consecutive periods of five year.
Marks, Collective Marks and Trade Names – a trade mark is a sign that is used to distinguish the goods or services of one enterprise from that of another to protect consumers against deception. The two main characteristics for a trademark are that it must be distinctive and it should not be deceptive. A trade mark may consist of words, designs, letters, numbers, slogans symbols or combinations. Examples of well-known trademarks are Cocoa-cola, Nike, and Toyota. Once a Trade marks is registered it can last indefinitely subject to renewal every ten years.
Geographical Indication – is an indication which identifies any goods as originating in the territory of a country, or a region or locally in that territory, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin. That could be due to the climate, soil. This protection is aimed to facilitate commerce by informing the customer of the origin of the products. Well known examples are Champaign which comes from the Champaign region of France and Blue Mountain coffee which comes from the Blue Mountain Region of Jamaica.
Protection of Layout-Design (Topographies) of Integrated Circuits – is the protection granted to the creators of new layout of integrated circuits. Integrated circuits are used in a wide range of products, examples washing machines, television, cars and computers. Creating new layout design for an integrated circuit involves major investment thus protection is granted as an incentive to creators. Protection last for ten years.
Protection of New Plant Varieties – protection is available for a new variety of plant to safeguard the interests of plant breeders as an incentive to the development of improved plant varieties for agriculture, horticulture and forestry. Breeders invest skill, labour, material resources, money and time. To be protected as a new variety it should be (1) new; (2) distinct (3) uniform in characteristics (4) characteristics must be stable. The grant of protection expires after 20 years.
In-depth information on all aspects of Intellectual Property can be obtained from the World Intellectual Property Organisation (WIPO) website at www.wipo.int.
Copyright is the exclusive property rights given to protect the creators of literary and artistic works. The aim of copyright is to promote science, culture and the arts. Copyright reward the creators of works by granting them rights, and strike a balance between these rights, and the interest of the public and entrepreneurs such as publishers, broadcasters, record companies and the like.
The legal framework for copyright protection in Dominica is the Copyright Act, Act No. 5 of 2003.
The Berne Convention for the Protection of Literary and Artistic Works (1886) which is the oldest international convention governing the protection of copyright, to which Dominica is a signatory, gives in broad terms what creations are to be protected by copyright laws:
"The expression 'literary and artistic works' shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and writings; lectures, address, sermons and other works of the same nature: dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without works; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works, to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science. … Translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work… collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of the selection are arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections."
The owners of copyright have the exclusive right of authorizing public performance, broadcasting and communication to the public of their works. Therefore, the presentation of a play in a theatre or a musical concert in a hall, the playing of music in discotheques, in street jams must be authorized by the copyright owner.
He has to authorize the translation or adaptation of his work into another language, a play or a movie for example. These translations or adaptations are also protected by copyright laws in their own right as original works.
Works derived from those original works are also protected in their own rights, these include:
- Translations, adaptations, arrangements and other transformations or modifications of works; and
- Collections of works, collections of mere data (databases) whether in machine readable or other form, and collections of expressions of folklore, provided that such collections are original by reason of the selection or arrangement of their contents.