RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/285/Add.1
28 September 2001
(01-4641)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  Spanish
REVIEW OF LEGISLATION
Responses from the Dominican Republic to the Questions Posed by Canada, the European
Communities and their Member States and Follow-up Questions Posed
by the United States and Switzerland
Addendum
By means of communications from the Permanent Mission of the Dominican Republic dated
11 and 18 September 2001 the Secretariat has received the following responses to the questions posed
by Canada and the European Communities and their member States as well as an initial question
posed by the United States and follow-up questions as by the United States and Switzerland, as
circulated in documents IP/C/W/261/Add.1, 274, 268/Add.1 and Add. 2 and 263/Add.1 respectively.
_______________
CANADA1
3. How are plant varieties protected in the Dominican Republic, and how does such
protection accord with TRIPS obligations?
Law No. 65-00 establishes in paragraph 2(d) of Article 2, concerning non-patentable subject-
matter, that new plant varieties are regulated under a special law, in keeping with Article 23.3(b) of
the TRIPS Agreement.  In this connection, a Preliminary Bill on Protection of Plant Breeders Rights,
in conformity with the UPOV Convention, was submitted to the competent authorities (Secretariat ofState for the Environment and Natural Resources of the Dominican Republic) for subsequent
submission to Congress.
4. Please describe how exclusions of subject-matter from patentability under Dominican
Republic patent legislation accord with TRIPS obligations.
Article 1 of Law 65-00 stipulates that anything not in keeping with the definition of an
invention (novelty, inventive step, industrial application) is not deemed an invention and, therefore, is
excluded from patent protection.
Article 2 of Law 20-00, in turn, establishes an exhaustive list of subject-matter excluded from
patent protection, in keeping more particularly with the provisions of Article 27 of the TRIPS
Agreement as well as other provisions of the Ag reement, such as Article 10, on computer programs
                                                     
1 The responses by the Dominican Republic to questions 1 and 2 posed by Canada were circulated in
document IP/C/W/285.IP/C/W/285/Add.1
Page 2
and compilations of data, which are protected as literary works and hence, under our legislation, are
excluded from patent protection.
"Article 2.  Subject-matter excluded from patent protection:
(1) Subject-matter that does not conform to the definition in Article 1 of this law shall be
deemed not to be an invention and shall therefore be excluded from patent protection.
In particular, the following are deemed not to be inventions:
(a) Discoveries which consist in making known something that already exists in
nature, scientific theories and mathematical methods;
(b) exclusively aesthetic creations;
(c) economic or business plans, rules or methods and those relating to purely
intellectual or industrial activities or games;
(d) methods of presenting information;
(e) computer programs;(f) diagnostic, therapeutic and surgical methods for the treatment of humans or
animals;
(g) any kind of living matter and substances pre-existing in nature;(h) juxtapositions of known inventions and mixtures of known products and
variations of their shape, size or materials, unless they are combined or fused
so that they cannot function separately or the characteristic qualities or
functions are modified to obtain an industrial result not obvious to a person
skilled in the art;
(i) products or processes already patented, put to a different use from that
contemplated in the initial patent.
(2) The following inventions shall not be patentable or publishable:
(a) Those whose exploitation would be contrary to ordre public  or morality;
(b) those which are clearly contrary to human or animal health or could cause
serious harm to the environment;
(c) plants and animals, other than micro-organisms, and essentially biological
processes for the production of plants or animals other than non-biologicaland microbiological processes.  New plant varieties shall be regulated by a
special law, in accordance with Article 27.3(b) of the TRIPS Agreement".IP/C/W/285/Add.1
Page 3
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. GENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health
and nutrition, and to promote the public interest in sectors of vital importance to your socio-economic and technological development as mentioned under Article 8 of the TRIPS
Agreement.  If yes, please explain how such measures are consistent with the provisions of the
TRIPS Agreement.
Protection of public health and nutrition is a general principle, enunciated in the Constitution
of the Dominican Republic, that requires the State to ensure improved food and efforts to find the
requisite means to prevent and treat epidemic, endemic and any other diseases.
Consequently, all the economic and social legislation of the Dominican Republic is designed
to advance the public interest and the general welfare of the population.
In regard to intellectual property, the relevant provisions are set out in Article 46 of the
Industrial Property Law No. 65-00, which allows for the possibility of granting compulsory licences
for a patent on the grounds of public interest.
Similarly, to prevent abuse of intellectual property rights by right holders or the resort to
practices which unreasonably restrain trade or adversely affect the transfer of technology, asestablished in TRIPS Article 8.2, Industrial Property Law 65-00 contains an entire section on
measures against unfair competition connected with industrial property.
B. 
COPYRIGHT AND RELATED RIGHTS
2. Please state how your legislation provides for the protection of the exclusive rights of
authors in relation to their literary and artistic  works, as specified in Article 9 of the TRIPS
Agreement, which requires Members to comply with Articles 1 to 21 of the Berne Convention
and the Appendix to the Berne Convention (1971)
The introductory paragraphs to Law 65-00 establish that, under Resolution 2-95 of
20 January 1995, the Dominican Republic ratified the Marrakesh Agreement, which includes the
TRIPS Agreement, and in this connection our law is based on and fulfils Article 9 of the TRIPSAgreement, which requires Members to observe Articles 1 to 21 of the 1971 Berne Convention.  In
addition, the Congress of the Dominican Republic independently ratified the 1971 Berne Convention,
for which reason the Convention is binding in our country.
Article 2 of the Berne Convention establishes protection for works and defines and classifies
them.  Dominican legislation includes these provisions, in the same form, in Article 2 of Law 65-00.
Under Article 2 bis of the Convention, States are entitled to establish protection for certain
works, such as speeches, lectures and addresses.  Our law protects them as creations within the
meaning of Article 2.
The criteria for the protection of works set out in Article 3 of the Convention (nationality of
the author, place of publication and author's residence) are also provided for in Article 8 of our law.
The protection of works in non-member countries is governed, in the absence of international
agreements between the countries, both in Article 6 of the Berne Convention and in Article 8.1 of
Law 65-00, by the principle of reciprocity.IP/C/W/285/Add.1
Page 4
The period of protection established in Article 7 of the Convention is set out in Articles 21
to 29 of Law 65-00.  The Berne Convention grants the author protection for the whole of his life and
50 years after his death;  it is the same in Dominican legislation.  Law 65-00, like the Convention,
protects literary, artistic and scientific works, the latter in their literary or artistic form, in generalterms, as well as audiovisual works, performers, phonogram producers and broadcasting
organizations.
Under the Berne Convention, the authors or owne rs of literary or artistic works enjoy the
exclusive right to authorize the translation of their works as long as their rights in the work exist.
Under Article 19 of Law 65-00, the authors of scientific, literary or artistic works and their successors
in title have the right to authorize or prohibit the translation of their works into any language ordialect, and these translations, under Article 6 of the same law, will be protected as independent
works, without prejudice to the copyright on the init ial work, insofar as they constitute an original
creation.
The exclusive right to authorize or prohibit the reproduction of the work granted to authors in
Article 9 of the Convention is also accorded in Article 19 of our law, in any manner or form, just as
the author has the right to authorize or prohibit any other form of use of the work (translation,
modification, inclusion in audiovisual works, phonograms or any kind of material medium,
distribution to the public and communication to the public, this list not being exhaustive).
The right to use the work in certain cases, provided for in Article 10 of this Convention, is
established in Articles 30 to 48 of Law 65-00 as exceptions to and limitations on copyright and may
be applied only in such a way as not to interfere with the normal exploitation of the work or cause
unjustified harm to the interests of the holder of the corresponding right (right to make quotations,
reproduction by reprographic means for teaching purposes, news and current events reporting, privatecopies, etc.).
Article 10 bis of the Convention extends the right to use the works to articles and broadcast
works, as well as to works seen or heard in the course of the reporting of current events, and this has
been included as limitations on copyright in Articles 33 and 34 of our law.
Article 11 of the Convention concerns the rights in dramatic and musical works, that is to say,
the rights of the authors of works of this kind to authorize their:
- Public performance;- communication of the performance to the public by any means;- translation.In this respect, our law establishes the same rights in Article 19.
As regards Articles 11 bis, 11 ter and 12 of the Berne Convention, which cover the exclusive
right to authorize the broadcasting or communication to the public, public recitation and adaptation,
arrangement or the alteration of their work, the same right is covered in Article 19 (paragraphs 6, 2
and 3) of our law.
The communication of musical works to the public, as covered in Article 13 of the Berne
Convention, is dealt with in the same way in Articles 128 and 129 of our law and, as in the
Convention, they establish that the transmission of the musical work, with or without words, by wire
or wireless means, must be authorized in advance by the right holder.IP/C/W/285/Add.1
Page 5
With respect to Articles 14 and 14 bis of the Convention, which concern the author's
exclusive right to authorize the cinematographic adaptation and reproduction of his works and the
distribution and performance of the works thus adapted or reproduced, while protecting the
cinematographic work as an original work and including among the owners all the authors who havebrought contributions to the making of the work, all these provisions can be found in our law, in
Articles 58 to 72, under the general heading of audiovisual works.
The droit de suite  (Article 14 ter of the Convention) is incorporated in Article 17 and
Article 78, paragraph, of Law 65-00.
In accordance with Article 15 of the Convention, the author has the right to enforce the
protected rights and, accordingly, both the Convention and Law 65-00 (Art. 4) establish a
presumption to the effect that the person whose name, pseudonym, initials or conventional marks or
signs well known as corresponding to his name, appear on the work as the author of the work, in the
absence of proof to the contrary.
Under Article 16 of the Berne Convention, member States may seize infringing copies,
including imports.  Law 65-00 establishes a procedure whereby a copyright holder may request a civil
court to issue a writ ordering the inspection of premises on which it is suspected that violations of the
law are being committed and to authorize the preventive seizure of unlawful copies and the equipment
employed for making or using them.  This procedure, like suspension of the customs release of goods,can also be applied to goods and equipment passing through customs for import or export (border
measures).  For its part, the National Copyright office (ONDA) is entitled to order and carry out
inspections, preventive measures, including the gathering of evidence, upon request, by the
corresponding management company, or even ex officio  (Art. 187.7) and to retain any unlawful
equipment detected, including equipment for unauthorized use and relevant documents (Law 65-00,Art. 188.2 (e)).
3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
As stipulated in Article 10 of the TRIPS Ag reement, Articles 73, 74 and 75 of Law 65-00 on
copyright covers protection of computer programs and databases, as follows:
Article 73 defines a computer program producer as a person, whether natural or legal, who
takes the initiative and responsibility in the production of the work.  This article establishes a
presumption, in the absence of the evidence to the contrary, that the program producer is the person
who is indicated as such in the usual way.
In the absence of stipulations to the contrary, it is presumed that the authors of the computer
program have assigned the exclusive economic rights, including the right to make or authorize
adaptations or versions of the work, to the producer, without limitation and for as long as they
continue to exist.
Exceptions to the exclusive right granted to the producer to reproduce computer programmes
are provided for in Article 74.  Article 75 clearly defines the kinds of user licences for computer
programs and databases.
Article 2.1.2 establishes protection for compilations of data that constitute intellectual
creations.  This protection does not extend to the data or material itself, without prejudice to any
copyright existing in the works which may form th e subject-matter of the database or compilation.IP/C/W/285/Add.1
Page 6
Articles 34 to 40 of Regulation No. 36 2-01 of 14 March 2001, implementing Law 65-00,
explain in detail the protection which the Law accords to computer programs and databases.
4. Please state whether new legislation provides for a rental right and, if so, the works to
which it applies.
Computer programs are works protected by c opyright under Article 2(11) of the Copyright
Law.  Accordingly, they are subject to the provisions of Article 19(5) of the Copyright Law, which
gives the authors of works and their successors in title, among other things, the exclusive right to
authorize or prohibit the distribution to the public of the original or copies of the work by sale, rental,
or any other means.
With respect to cinematographic works, Article 66(2) and Article 61(1) of the Copyright Law
stipulate that the producer of an audiovisual work shall have, among other things, the right to
distribute copies of the audiovisual work by sale, rental or any other means.
Additionally, in general Article 71(7) extends protection of the economic rights of authors of
scientific, literary or artistic works to any means of  use of the work, whether known or to be known in
the future.
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organizations under your legislation.
Article 135 of the Copyright Law establishes that performers have the exclusive right to
authorize or prohibit:
(1) The fixation of their unfixed performances;(2) the reproduction of fixations of their performances, by any means or process;(3) the communication of their performances to the public, except where the performance
in itself constitutes a broadcast performance;
(4) the distribution to the public of the original or copies that contain their performance
fixed in a phonogram, by sale, rental or any other means.
Again, Article 140 establishes the moral right of performers to link their name or pseudonym
to the performance and to prevent any distortion that might be detrimental to their honour or
reputation.
As for phonogram producers, Article 141 of the Copyright Law establishes that they have the
right to authorize or prohibit:
(1) The reproduction, direct or indirect, temporary or permanent, of their phonograms, by
any means or process;
(2) the distribution of the original or copies of their phonograms to the public, by sale,
rental or any other means;
(3) the making of their phonograms available to the public, by wireless or wireless
means, in such a way that members of the public have access thereto in the place and
at the time of their choosing.IP/C/W/285/Add.1
Page 7
Similarly, the producer of a phonogram that has been published for commercial purposes or a
reproduction of which is used in any manner for communication to the public shall be entitled to
receive from the user a fair one-off remuneration.  The phonogram producer shall pass on half of the
sum he receives to the performers or their repr esentatives (Articles 142 and 143 of the Copyright
Law).
Under 144 of the Copyright Law, broadcasting organizations enjoy the exclusive right to
authorize or prohibit both the transmission and fixation of their broadcasts, as well as the reproduction
of a fixation of their broadcasts where:
(a) The fixation from which the reproduction has been made has not been authorized;
and
(b) the broadcast has initially been fixed in accordance with the provisions of the law, but
the reproduction is made for purposes other than those indicated.
Broadcasting organizations are also entitled, like phonogram producers, to equitable
remuneration for the public communication of their broadcasts, where the broadcast is made in places
to which the public has access by the payment of an admission or entry fee.
6. Please state whether your legislation provides  for any limitation or exception in relation
to each of the rights described above in acco rdance with the relevant provisions of the Berne
and Rome Conventions and in the light of Articles 13 and 14.6 of the TRIPS Agreement.
Copyright Law 65-00 contains an entire Title (section) on limitations and exceptions to
copyright in keeping with the provisions of  the Berne Convention and the Rome Convention.
This Title is divided into three chapters which exhaustively establish the limitations and
exceptions permissible by law, namely, Chapter I:  General Provisions; Chapter II:  Licences to
Translate and Reproduce Foreign Works; Chapter III:  Limitation of Copyright on Grounds of Public
Interest.  This Title covers Articles 30 to 48 of Law 65-00.
A relevant provision is found in Article 30 of the Copyright Law, which specifies that
copyright limitation and exceptions are interpreted restrictively and may not be used in such a way asto conflict with a normal exploitation of the work and do not unreasonably prejudice the interests of
the right holder, which is completely in conformity with TRIPS Article 13.
7. Please state the terms of protection of each right described above and the work or
subject-matter to which it applies.
The term of protection of economic rights is established in Chapter III of the Copyright Law.
Generally speaking, the author's rights belong to the author during his lifetime or that of his spouse,
heirs or successors in title for 50 years from the date of the author's death.  This term of protection
was extended to 70 years for audiovisual works.
In regard to performers, Article 29 grants protection for fifty (50) years from 1 January of the
year following the death of the right holder.  In the case of orchestras, choirs and other performing
groups, the term of protection is fifty (50) years from the 1 January of the year following that of the
performance or its fixation, as the case may be.
The term of the rights of phonogram producers is 50 years from 1 January of the year
following the year of the fixation.IP/C/W/285/Add.1
Page 8
The protection of broadcasting organizations is 50 years from 1 January of the year following
that of the broadcast.
8. Please state how your legislation grants th e retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligatio n of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
The final, derogation and interim provisions of Copyright Law No. 65-00 establish retroactive
protection in accordance with Article 18 of the Berne Convention, to which the Domincan Republic is
a signatory.  In this connection, Law 65-00 stipulates the following:
"Article 190.  Rights over works  protected in accordance with the requirements of Law
No. 1381 of 1947 and Law 32-68 1986 (previous intellectual property laws) shall enjoy the
longer terms of protection established in the present law.
Article 191.  Rights over the works of nationals and aliens resident in the country that did not
enjoy protection under Law 1381 of 1947 because they had not been registered and fell intothe private domain under  Law 32-86 shall also automatically enjoy the protection accorded by
the present law, without prejudice to rights acq uired by third parties prior to the entry into
force thereof."
C. 
TRADEMARKS
9. Please give the definition of a sign under your national legislation and explain under
which conditions it is protectable .
Chapter II of the Industrial Property Law sets out the definition of the various distinctive
signs protected by the Law (mark, collective mark, certification mark, tradename, label, emblem,geographical indication, appellation of origin, well-known distinctive sign).
Article 70(g) defines distinctive signs as any sign constituting a mark, trade-name, label or
emblem.
In accordance with Article 70(a) a trademark constitutes any visible sign for distinguishing
the products or services of other undertakings.
The Industrial Property Law establishes in Article 72 a non-exhaustive list of signs deemed to
be trademarks, namely, words, fanciful denomin ations, names, pseudonyms, commercial slogans,
letters, numerals, monograms, figures, portraits, labels, badges, impressions, vignettes, borders, lines
and stripes, combinations and arrangements of colours or three-dimensional shapes.  They may alsoconsist of the shape or presentation of the products or their packaging or wrappings or the means or
place of retail sale of the corresponding products or services.
From the definition and from the list in Article 72 it can be inferred that, for a trademark to be
registered under the terms of the Industrial Property Law, the sign must be sufficiently distinctive andsuch as to be capable of graphic representation.
The right to exclusive use of a trademark is acquired only by registration, as established in
Article 71 of the Industrial Property Law.  However, priority use is established whenever such use in
the Domincan Republic has been uninterrupted and in good faith for a period of more thansix months.IP/C/W/285/Add.1
Page 9
10. Please confirm whether or not services are a protectable subject-matter in your
trademark law.  Please confirm if signs, such as trade names, are protectable.  Please describe if
elements such as sound, perfumes and containers are protectable .
Under the definition of a trademark contained in Article 70(a) of the Industrial Property Law,
services also constitute protectable subject-matter.
Article 70(d) also establishes the definition of a trade name as a name, appellation,
designation or abbreviation identifying an undertaking or establishment.
The acquisition of the right to a trade name, the conditions of protection and the procedure for
registration are set out in Chapter V, Section I, of the Industrial Property Law, which, inArticles 113 to 120 concerns trade names.
Sounds, perfumes and containers may be registered provided they meet the requirements
regarding graphic representation and sufficient distinctiveness.
11. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a
registration in that respect .
Article 70.2 establishes that, where a person has been using a mark in the Domincan Republic
without interruption and in good faith, from earliest date, for a period of more than six months, he
shall have priority in obtaining registration.  If the mark is not in use in the country, the person first
filing the application shall have priority.
In addition, Article 73.2 establishes that, without prejudice to the provisions of paragraphs (c),
(d) and (e) of the same Article, concerning marks not registerable for reasons intrinsic to the sign, a
mark may be registered when it is found that, because of constant use in the Domincan Republic, it
has acquired in commercial circles and among the public a sufficiently distinctive character to warrant
protection as a trademark for the products or services to which it applies.
Article 74, concerning marks not registerable by reason of third-party rights, sets out in
paragraph (b) cases in which a sign for registration is identical or similar, in a way which might leadto confusion, to a mark that has not been registered but is being used by a third party and would have
a better right to registration, provided the mark is for the same products or services, or for products or
services that are different but liable to be associated or linked to those distinguished by the mark used.
Article 94 of the Industrial Property Law sets out the definition of the use of a mark.   In this
connection, a trademark is considered to be in use when the goods or services it distinguishes have
been placed in circulation or are available on the domestic market under that trademark in the normal
form and quantity, due account being taken of the size of the market, the product concern, the nature
of the goods or services and the methods used for marketing them;  a mark is also in use when it is
utilized for products intended for export from nationa l territory or for services supplied abroad from
national territory.
The same article establishes that there shall be no reason to cancel the registration or to
reduce the protection of the trademark if the trademark is used in a form different from the form in
which was registered, only in regard to elemen ts that do not alter the distinctiveness thereof.
The Industrial Property Law establishes in Article 93 that registration of a trademark may be
cancelled for failure to use it in the country during an uninterrupted period of three years preceding
the date on which the action for cancellation is initiated.  The application to cancel may be filed byIP/C/W/285/Add.1
Page 10
any interested party and shall not apply until three years have elapsed from the date of the registration
of the trademark.
The article also establishes that, in the case of justifiable reasons for failure to use a
registration, it shall not be cancelled.  To this end, Article 95 establishes that justifiable reasons forfailing to use a trademark are those based on facts or circumstances alien to the will of the owner of
the trademark and which he has been unable to avoid or remedy.  However, inadequate financial and
technical resources to engage in productive or trade activity and inadequate demand for the product or
service distinguished by the trademark shall not be deemed to be as justifiable reasons.
The burden of proof concerning the use of the trademark lies with the owner of the trademark,
in accordance with the provisions of Article 96 of the Industrial Property Law.  Use of the trademarksshall be proved by any evidence admissible in law demonstrating that the trademark has been used in
accordance with Article 94.
Any evidence of use of the trademark submitted for the purposes of the Law shall have the
value of a sworn declaration and the owner of th e trademark shall be responsible for the veracity
thereof.
12. Please confirm whether or not your legislation permits that the registration of
trademarks be indefinitely renewable .
The Domincan Republic's Industrial Property Law allows the registration of a trademark to be
indefinitely renewable.
In principle, the registration of a trademark expires ten years after the date of the granting of
registration (Article 81).  However, a trademark registration may be renewed for successive periods often years as from the date of expiry of the previous period.
13. Please describe the special requirements, if any, prescribed by your legislation
concerning the use of a trademark .
See the response to Question No. 11 regarding the definition of use and the conditions under
which the trademark is considered to be in use.
D. G
EOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a
trademark application if it contains a geographical indication .
A national or foreign geographical indication may be registered as a trademark provided it is
sufficiently arbitrary and distinctive with respect to the products or services to which it is applied and
its use is not liable to create confusion with regard to the origin, source, qualities or characteristics of
the goods or services for which the trademark is used, in accordance with the terms of Article 72,
concerning signs deemed to be trademarks.
For the purpose of strengthening the provisions of Article 73, concerning trademarks not
registerable for reasons intrinsic to the sign, it is established that no sign may be registered as a
trademark if it is covered by any of the prohibitions in that Article, namely:
(j) Signs which reproduce or imitate an appellation of origin registered in conformity
with this Law for the same products, or for different products if there is any risk of
confusion regarding the origin or other characteristics of the products, or a risk ofIP/C/W/285/Add.1
Page 11
unfair use of the prestige of the appellation of origin or consist of a geographical
indication not in conformity with Article 72.2.
15. Please give the definition of a geographical indication in your legislation.
Article 70, concerning distinctive signs, defines in paragraph (h) a geographical indication as
any name, appellation, expression, image or sign directly or indirectly indicating that a product or
service is from a specific country, group of countries, region, locality or place.
It follows from this definition that, in our legislation, a geographical indication is used as a
generic term, designed broadly to encompass any sign indicating the source or origin of a product or
service.  In this respect, Chapter VI of the Industrial Property law has two sections:  Section  I, on
geographical indications in general, and Section II, on appellations of origin, defined as a type ofgeographical indication.
16. Please describe and explain the provisions of  your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.
The definition of an appellation of origin contained in Article 70(i) of the Industrial Property
Law established a link between the characteristics of a product and its geographical origin.  The
article establishes that an appellation of origin is taken to mean a geographical indication consisting of
the name of a country, region or specific place used to describe a product originating therein, whose
quality, reputation or other characteristic is essentially due to the geographical environment in which
it is produced, including natural and human factors; a name which, without being a geographical nameidentifying a product as originating in a country, region or place shall also be considered as an
appellation of origin.
17. Please describe how additional protection is granted by your legislation to wines and
spirits.  Please mention other types of products, if any, covered by this additional protection.
The legislation in the Dominican Republic affords the same high level of protection for all
geographical indications and appellations of origin, without discrimination as to the type of product to
which the indication or appellation applies.  In this respect, all geographical indications enjoy
protection in accordance with the highest level mentioned in TRIPS Article 23.
Directly relevant is Article 124 of the Industrial Property Law, which stipulates that a
geographical indication may not be used in the course of trade in relation to a product or service if thatindication is false or misleading with respect to the origin of the product or service or if it might create
confusion in the mind of the public with respect to the origin, quality, source, characteristics or
properties of the product or service.  The use of a geographical indication to identify wines or
spirituous beverages for products of that kind which do not originate in the place designated by the
geographical indication constitute a false geographical indication and is therefore prohibited underArticle 24 of the Law.
Also relevant are the following provisions of the Industrial Property Law:"Article 73.  Trademarks not registerable for reasons intrinsic to the sign.(1) No sign may be registered as a trademark if it is covered by any of the following
prohibitions:IP/C/W/285/Add.1
Page 12
(i) It may mislead trade circles or the public as to the source, nature, method of
manufacture, properties, suitability for use or consumption, quantity or any other
characteristic of the products or services concerned;
(j) it reproduces or imitates an appellation of origin registered in conformity with this
Law for the same products, or for different products if there is a risk of confusion as
to the origin or other characteristics of the products, or a risk of unfair use of the
prestige of the appellation of origin, or it consists of a geographical indication that
does not comply with the provisions of Article 72.2;".
"Article 126.  Proceedings against the improper use of geographical indications.
Any interested party, and in particular producers, manufacturers and craftsmen, consumers
and the Office of the Attorney-General may initiate proceedings, individually or jointly,
before the competent authorities for any purpose relating to the enforcement of the provisions
of Article 124."
Moreover, Article 134, regulating the cancellation of the registration of an appellation of
origin, allows any third party to request the cancellation of such registration if it violates Article 128.
"Article 134.  Cancellation of the registration of an appellation of origin.
(1) At the request of any of the parties mentioned in Article 126, the Industrial Property
Registry shall declare the registration of an appellation of origin null and void if it is shown to be
covered by any of the exclusions set out in Article 128.
(2) At the request of any of the parties mentioned in Article 126, the Industrial Property
Registry shall cancel the registration of an appellation of origin if it is shown that the properties or
characteristics indicated in the registration with respect to the products designated by the appellation
of origin do not correspond to those of the products placed in circulation under that appellation.
Nevertheless, interested parties may request re-registration if they consider that the conditions for
protection have been restored."
Subparagraphs (b), (c) and (d) of Article 166 establish the penalties for breaches of the Law:"Article 166.  Penalties.A penalty of three months' to three years' imprisonment or a fine of 10 to 50 minimum wages,
or both, shall be incurred by anyone who wilfully:
(b) Without the consent of the owner of th e distinctive sign performs any of the
following acts in relation to a trade name, label or emblem:
(i) Makes commercial use of an identical distinctive sign, for an identical or
related business;
(ii) makes commercial use of a similar distinctive sign when it is likely to create
confusion;
(c) makes commercial use in relation to a product or service of a geographical indication
that is false or likely to mislead the public as to the origin of that product or service or
as to the identity of the producer, manufacturer or supplier of the product or service;IP/C/W/285/Add.1
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(d) makes commercial use in relation to a product of a false or misleading appellation of
origin, or an imitation of an appellation of origin, even where the true origin of the
product is indicated, or the appellation is used in translation or accompanied by
expressions such as "type", "kind", "style", "imitation" or the like;
PARAGRAPH.  Liability for the acts describe d above extends to persons who order them or
arrange for them to be carried out, the legal representatives of corporate entities and all those
who, knowing the act to be unlawful, take part in, facilitate or conceal it."
Under Article 177(c) an infringement of geographical indications constitutes an act of unfair
competition and therefore any third party may institute the proceedings specified in law.  This
provision is supplemented by Article 183 of the same law.
"Article 177.  Unfair competition relating to distinctive elements of an enterprise.The following, inter alia , constitute acts of unfair competition:
(c) Using or propagating indications or claims liable to mislead to induce error with
respect to the commercial source, geographical origin, nature, method of
manufacture, suitability for use or consumption, quantity or other characteristics of
one's own products or services or those of another;
Article 183.  Proceedings against an act of unfair competition.
(1) Anyone who considers himself to have been injured by an act of unfair competition
may initiate proceedings before the competent judicial authority.
(2) In addition to the person directly injured by the act, any association, federation, union
or other entity representing a professional or business group or consumers shall be
entitled to bring proceedings if its members' interests are adversely affected."
18. Please explain how the exceptions under Article 24 of the TRIPS Agreement are used in
your jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of
names considered as generic in your jurisdiction.
Law 20-00 sets out the following exceptions permissible under TRIPS Article 24:
- Article 71.2 sets out the exception provided for in TRIPS Article 24.5;
- the exception in TRIPS Article 24, paragraph 6, first sentence, is set out in
Article 73(d);
- Article 74(e) of Law 20-00 sets out the exception in TRIPS Article 24.8.
E. 
INDUSTRIAL DESIGNS
19. Please explain whether or not your legislat ion extends to the protection of designs
dictated essentially by technical or functional considerations.  Please explain how textile designs
are protected.
Article 55 of the Industrial Property Law, concerning subject-matter excluded from protection
of industrial designs, establishes that an industrial design shall not be protected if its aspect isIP/C/W/285/Add.1
Page 14
determined solely by a technical function and does not incorporate any arbitrary contribution by the
designer.
Under the definition of an industrial design set out in Article 54 of the Industrial Property
Law, textile designs are protected.  The article establishes that an industrial design shall be consideredto be any combination of lines or colours or any external two-dimensional or three-dimensional form
which is incorporated in an industrial or crafts product to give it a distinctive appearance without
changing the purpose or end-use of the product.
20. Please explain how your legislation protec ts right holders of a design against the
importing of articles bearing embodied or copied design.
Article 59 of the Industrial Property Law, concerning the scope of the protection conferred by
the law on industrial designs, establishes that the right holder of an industrial design shall be entitled
to exclude third parties from exploitation of the design.  Accordingly, the right holder is entitled to act
against any person who, without his authorization, manufactures, sells, offers for sale or uses, imports
or stores for any of such purposes a product that  reproduces or embodies the protected industrial
design or whose appearance gives an overall impression similar to that of the protected industrial
design.
The article also stipulates that any one of the above acts is not deemed lawful simply because
the reproduced or embodied design applies to a type or kind of product different from those indicatedin the registration of the protected design.
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial design.
Industrial Property Law No. 20-00 does not include a compulsory licensing system for
industrial designs.
22. Please indicate for what period of time your legislation grants protection for industrial
designs.
Article 67 of the Industrial Property Law establishes a period of five years' protection for
industrial designs, as from the date of filing the relevant application with the National Industrial
Property Office.
The registration may be extended for two further periods of five years each, by payment of
the requisite extension fee.
F. 
PATENTS
23. Please describe how your legislation defines the notions of:  novelty, inventiveness and
industrial application.
Under Articles 3, 4, 5 and 6 of Law No. 20-00 (Industrial Property Law), on the requirements
for patentable inventions, an invention is novel when it does not exist in the previous state of the art
(Article 5).  An invention involves an inventive step if, for a specialized person or an expert in the
technical subject-matter, the invention is not obvious, does not obviously derive from the relevant
state of the art (Article 6).  An invention is industrially applicable when its purpose can be producedor utilized in any type of industry.  To this end, the expression industry is taken in its broader sense
and includes, inter alia , craftsmanship, agriculture, mining, fisheries and services.IP/C/W/285/Add.1
Page 15
24. Please explain whether or not in your legislat ion, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions a re provided for, please describe in detail how
these exclusions are applied in legal as well as practical terms.
Generally speaking, anything not in keeping with the definition of an invention established in
the law (novelty, inventive step, industrial application) is not deemed to be an invention and is
excluded from patent protection.
Article 2 of Law 20-00, for its part, establishes an exhaustive list of subject-matter excluded
from patent protection, in keeping more particularly with the provisions of TRIPS Article 27, as well
as other provisions of the same Agreement, such as Article 10 on computer programs and
compilations of data, which are protected as literary works and, in our legislation, are therefore withinthe subject-matter excluded from patent protection.
25. Please explain whether your legislation prov ides for the exclusion of inventions from
patentability based on ordre public  or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
This exclusion from patentability is established in Article 2, paragraph 2(a), which stipulates
that inventions contrary to ordre public  or morality shall not be patentable or publishable.
The Dominican Republic has no practical experience in this respect.
26. Please explain whether or not diagnostic, therapeutic and surgical methods are excluded
from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
This exclusion from patentability is set out in Article 2, paragraph 1(f) of Law 20-00, which
stipulates that therapeutic or surgical methods for the treatment of human beings or animals as well as
diagnostic methods are not considered as inventions and are therefore excluded from patent
protection.
27. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of yourlegislation and explain its formulation.
Plants, animals and essentially biological processes are excluded from patentability in
accordance with Article 2, paragraph 2(c) of Law 20-00.
The formulation of this subparagraph in our legislation is wholly in keeping with TRIPS
Article 27.3(b).
28. Please describe how micro-organisms, non-essentially biological processes,
microbiological processes and plant varieties are prot ected in your legislation.  Please explain, in
this respect, the relevant section of your legislation.
Micro-organisms, non-biological  processes and microbiological processes may be patent
protected, in accordance with the provisions of Article 2, paragraph 2(c) of Industrial Property
Law 20-00, which stipulates:
"Article 2.  Subject-matter excluded from patent protection.(2) The following inventions shall not be patentable or publishable:IP/C/W/285/Add.1
Page 16
(a) Those whose exploitation would be contrary to ordre  publique  or morality;
(b) those which are clearly contrary to the health or life of human beings or animals or
capable of causing serious harm to the environment;
(c) plants and animals, other than micro-organisms, and essentially biological processes
for producing plants or animals, othe r than non-biological or microbiological
processes.  New plant varieties shall be regulated by a special law, in accordance with
TRIPS Article 27.3(b) of the TRIPS Agreement".
The Regulation implementing Law 20-00, Regulation No. 408-00, establishes the following
procedure for the deposit of micro-organisms and biological substances:
Article 6.  Deposit of biological material and micro-organisms.Until the institutions for receiving deposits of biological material needed to describe
applications relating to micro-organisms are designated, applicants may deposit such material
with any of the international deposit authorities recognized by the Budapest Treaty on
International Recognition of the Deposit of Micro-Organisms for the Purposes of PatentProcedure, of 28 April 1977.
In any event, such deposit institutions must satisfy the following conditions:(1) They must be permanent;(2) they must not be under the control of the depositors;(3) they must have the appropriate personnel and facilities to check the relevance of the
deposit and guarantee storage and preservation without risk of contamination;
(4) they must provide the security measures necessary to minimize the risk of loss of
biological material".
As for the protection of new plant varieties, a Preliminary Bill on Protection of Plant Breeders
Rights, in conformity with the UPOV Conventi on, was submitted to the competent authorities
for consideration in March 2001.
29. Please explain how your legislation protects  patent right holders against the importing
and against the offering for sale of a patented invention.
The protection of patent right holders against acts by third parties is established in Article 29
of Law 20-00.
"Article 29.  Rights and protection conferred by a patent.(1) A patent shall confer on its owner the right to exclude third parties from exploiting
the patented invention.  Thus, with the limitations for which this Law provides, the
patent holder shall have the right to proceed against anyone who, without his
authorization, performs any of the following acts:
(i) Where the patent has been granted for a product:IP/C/W/285/Add.1
Page 17
(i) Makes the product:
(ii) offers for sale, sells or uses the product or imports or stocks it for any
of these purposes.
(ii) Where the patent has been granted for a process:
(i) Uses the process
(ii) performs any of the acts indicated in subparagraph (a) with respect to
a product obtained directly by using the process".
30. Please state if your legislation provides for patent product protection of pharmaceutical
and agricultural chemical products.  In the a ffirmative, please indicate the legal reference.
From the definition of an invention in Article 1 and the patentablilty requirements set out in
Article 3 of Law 20-00, it can be inferred that our legislation protects by means of a patent any
invention, whether a product or a process, in all fields of technology, provided they are novel, involvean inventive step and have an industrial application.
In particular, Article 4 of Law 20-00, in defining the meaning of an industrial application,
establishes that the term industry is to be taken in its broadest sense and includes, inter alia , crafts,
agriculture, mining, fisheries and services.
31. Please clarify if the patent protection of a process, as provided for in your legislation,
covers the product obtained directly by that process.
Under Law No. 20-00, the patent protection of a process also covers the product obtained
directly by that process.  In this respect, a relevant provision is to be found in Article 29,
paragraph (ii)(b), on the rights and protection conferred by the patent (see response to Question
No. 29).
32. Please explain the additional conditions, if any, in your legislation other than the
sufficient disclosure of the invention in Articl e 29 of the TRIPS Agreement (e.g. submission of
justification for access to genetic material or prior informed consent to its use).  If suchadditional conditions exist, please point out to the relevant legislation and describe the
additional conditions in detail.
The Dominican Republic is a signatory of th e Convention on Biological Diversity (CBD),
which is based on the fundamental premise that States have sovereign rights over the biologicaldiversity in their territories (preamble and Article 15, paragraph 1).  The CBD also recognizes that
governments can regulate access to those resour ces in accordance with their national legislation
(Article 15, paragraph 1).  Again, it specifies that access to genetic resources shall be subject to the
prior informed consent of the Party to the CBD and shall be granted on mutually agreed terms (CBD
Article 15, paragraphs 4 and 5).
Law No. 64-00, on the Environment and Natural Resources, dated 18 August 200, sets out the
provisions of the CBD.  In this respect, for the purposes of the requisite authorization for access to
genetic resources, several provisions of the law are relevant:
Article 3 establishes that natural resources and the environment are the common heritage of
the nation and essential to the country's sustainable development.  Article 4 of the law goes on to
specify that conservation, protection, restoration and sustainable use of natural resources, theIP/C/W/285/Add.1
Page 18
environment and the assets that form the national and cultural heritage are declared to be of national
interest.
Article 17 establishes that the functions of the Secretariat of State for the Environment and
Natural Resources is to carry out and organize the inventory of national biodiversity and geneticresources, as well as to draw up and implement the national biodiversity conservation strategy.
Chapter IV of the law, on environmental assessment, sets out in Article 41 a non-exhaustive
list of projects or activities that call for submission of an environmental impact assessment.  It also
specifies that the Secretariat of State for the Environment and Natural Resources will establish the
criteria to determine whether the project, work or activity requires environmental permission and
therefore the interested party is required to submit an environmental impact declaration, or whetherenvironmental licensing is required, in which case the interested party, must submit an environmental
impact study.
Article 43 specifies that the environmental licensing and permits process is to be administered
by the Secretariat of State for the Environment and Natural Resources, in coordination with theappropriate institutions, which shall be required to consult the environmental impact studies.
Chapter V of Law 64-00 establishes in Article 51 that, without prejudice to intellectual
property rights, anyone engaged in research, work or activity relating to the environment and natural
resources shall provide a copy of the research or study to the Secretariat of State for the Environmentand Natural Resources.
Article 141 of Chapter VI, on biological diversity, establishes that genetic resources are
natural resources.  The Sectoral Bill on Biodiversity required under this Article is the law that will
exclusively regulate all matters pertaining to access to genetic resources.  In this respect, it should benoted that in July this year a preliminary bill was submitted to the competent authorities for their
consideration.
33. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to a relevant legislation.
The exceptions to the exclusive rights conferred by a patent are established in Articles 30 and
31 of Law 20-00.
"Article 30.  Limitation and exhaustion of patent rights.A patent does not give the right to prevent:(a) Acts performed in a private environment and for non-commercial purposes;
(b) acts performed exclusively for experimental purposes with respect to the patented
invention;
(c) acts performed exclusively for the purposes of teaching or scientific or academic
research;
(d) the sale, rental, use, usufruct, importation or any other mode of marketing of a
product protected by the patent or obtained by the patented process, once that product
has been introduced into the commerce of an y country, with the consent of the owner
or a licensee or in any other lawful way.  Products or processes that infringe theIndustrial Property Law shall not be deemed to have been lawfully introduced;IP/C/W/285/Add.1
Page 19
(e) acts mentioned in Article 5 of the Paris Convention for the Protection of Industrial
Property;
(f) where the patent protects biological material capable of being reproduced, the use of
that material as the basis for obtaining a viable new biological material, except where
the patented material must be used repeatedly to obtain the new material;
(g) those uses which are necessary to obtain sanitary approval and to market a product
after the patent protecting it has expired;
"Article 31.  Rights of the prior user of the invention.
(1) The rights conferred by the patent may not be asserted against anyone who, in good
faith and before the filing date or, where applicable, the priority date of the
corresponding patent application, was already producing in the country, the productor using the process constituting the invention, or had made effective and serious
preparations for such production or use.
(2) Such a person shall have the right to continue producing the product or using the
process as before, or to begin production or use as planned.  This right may only beassigned or transferred together with the business or establishment in which the
product or process is being or is to be produced or used."
34. Please explain whether or not your legislatio n provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  Inparticular, please explain how your national le gislation considers individual merits in the
authorization of such use.
Under Industrial Property Law No. 20-00, and pursuant to the provisions of TRIPS Article 31,
our legislation provides for compulsory licensing.  Law 20-00 has an entire section on the subject(Section IV:  Compulsory licensing and other measures concerning the use of the patent, Articles 39
to 48).
Articles 40 to 47 of Law 20-00 set out four ways or conditions in which a compulsory licence
may be granted, under certain specifically established requirements.  Consequently, our legislation
does not consider individual merits in granting a compulsory licence.
The requirements in Dominican law for granting a compulsory licence are the same as those
in TRIPS Article 31, namely, refusal by the right holder to grant a licence on reasonable commercial
terms and conditions;  prior hearing of the right holder by the representative of the National Industrial
Property Office;  the right holder shall be paid adequate remuneration;  licences shall not be
exclusive;  they shall be granted predominantly for the supply of the domestic market;  thecompulsory licence may be wholly or partly revoked by the competent court at the request of the right
holder.
"Article 40.  Compulsory licences.
(1) Where a potential user has made efforts to obtain a licence from the patent owner on
reasonable commercial terms and conditions and such efforts have not been
successful within two hundred and ten (210) days of the licence being requested, the
National Industrial Property Office, after hearing the owner, may issue compulsory
licences in relation to that patent.IP/C/W/285/Add.1
Page 20
PARAGRAPH.  Wherever warranted, the Na tional Industrial Property Office shall
grant compulsory licences if the interested party can show:
(a) That he possesses the technical and economic capacity to undertake the use in
question.  His technical capacity shall be assessed by the competent authority,in accordance with the specific national provisions in force for each branch of
activity.  Economic capacity shall be understood to mean the ability to fulfil
the obligations arising out of the working of the patent;
(b) Where the patent relates to a raw material from which it is intended to
develop a finished product, that the applicant is able to develop the finished
product himself or through third parties in the Dominican Republic, except inthose cases in which production in national territory is impossible.
(2) In determining what is to be understood as reasonable commercial terms and
conditions, account shall be taken of the particular circumstances of each case and the
economic value of the authorization, bearing in mind the average fees for the sector inquestion established in commercial licensing agreements between independent
parties.
Article 41.  Compulsory licence for non-working of the patent.
(1) Where three (3) years have elapsed after the granting of the patent or four (4) from
submission of the application, whichever period is the later, if the invention has not
been worked or where the working of the patent has been interrupted for more than
one (1) year without justifiable cause, anyone able to use the invention may apply to
the National Industrial Property Office for a compulsory licence for the patent inquestion.
(2) A compulsory licence shall not be granted where it is shown that the non-working or
insufficient working is due to fortuitous circumstances or force majeure , or to
circumstances beyond the will or control of the patent owner or which justify the non-
working or insufficient working.  The lack of financial resources or the lack of the
economic viability of working the patent shall not be regarded as justifiablecircumstances.
Article 42.  Compulsory licences for anti-competitive practices.Compulsory licences will be granted where the National Industrial Property Office determines
that the patent owner has engaged in anti-competitive practices.  In such cases, without
prejudice to the patent owner's resources, the licence shall be granted without need to apply
the procedure established in Article 43(2).
For the purposes of this law, the following, inter alia , shall be regarded as anti-competitive
practices:
(h) Fixing excessive or discriminatory practices for patented products, in particular when
there are offers to supply the market at significantly lower prices than those offered
by the patent owner for the same product;
(i) failure to supply the market on reasonable commercial terms;
(j) hindering trade or production activities;IP/C/W/285/Add.1
Page 21
(k) any other act deemed under national legislation to be anti-competitive or limiting or
restricting competition.
Article 43.  Application for and granting of compulsory licences.
(1) Anyone interested in obtaining a compulsory licence shall apply to the National
Industrial Property Office.  The application shall indicate the terms on which it is
desired to obtain the compulsory licence.
(2) The person applying for a compulsory licence shall prove that he has first asked the
patent owner for a contractual licence and that he has been unable to obtain it under
the terms and within the periods provided for in Article 40.
It will not be necessary to comply with this requirement in the event of a national
emergency or extreme urgency, or non-comm ercial use of the invention by a public
body.  In such cases, the patent owner shal l be informed without delay of the granting
of the licence.  Nor shall it be necessary to meet this requirement when the purpose ofthe licence is to remedy an anti-competitive practice.
(3) Without prejudice to paragraph (2), the National Industrial Property Office shall
notify the patent owner of an application for a compulsory licence within
thirty (30) days from the date of deposit of the application.
(4) The patent owner shall submit his arguments within a period of not more than
sixty (60) days from the date of notification of the application for a compulsory
licence.  If the owner has not come forwar d within that period, the terms presented by
the applicant shall be regarded as accepted.
(5) Where the owner does reply, the National Industrial Property Office, after hearing the
parties and if they do not reach agreement, shall establish a reasonable remuneration
for the patent owner, which shall be es tablished in accordance with the terms of
Article 40.
(6) Decisions on the granting of such uses shall be adopted within one hundred and
twenty (120) days of filing the application and they shall not be open to appeal.
Substantiation of the appeal shall not have a suspensive effect.
Article 44.  Conditions for granting compulsory licences.
(1) Where compulsory licences are granted, the following provisions shall apply:
(i) Licences shall be granted by the National Industrial Property Office;
(ii) the particular circumstances of each case shall be taken into consideration;
(iii) compulsory licences shall extend to patents for such components and
processes as enable them to be exploited;
(iv) the grant of a licence shall be non-exclusive;
(v) licences shall be non-assignable, except with that part of the enterprise or its
goodwill in which they are incorporated;IP/C/W/285/Add.1
Page 22
(vi) licences shall be granted predominantly for the supply of the domestic
market, except in the cases specified in Articles 41 and 46;
(vii) the patent owner shall be paid reasonable remuneration, in accordance with
the particular circumstances of each case, account being taken of the
economic value of the authorization.  In determining the amount ofremuneration in cases in which compulsory licences have been granted to
remedy anti-competitive practices, the need to correct such practices shall be
taken into account and termination of the grant may be refused if it is
considered that the conditions which led to the granting of the licence are
likely to recur.
(2) A person granted a compulsory licence must begin exploiting it within two years of the
licence being granted.
(3) where the patent protects some form of semiconductor technology, compulsory licences shall
be granted only for public non-commercial use, or to remedy a practice declared to be anti-
competitive.
(4) A compulsory licence may be terminated, in whole or in part, by the competent authority, at
the request of the owner, if the circumstances which led to its being granted ceased to exist and are
unlikely to recur, provided that such termination doe s not adversely affect legitimate interests of the
licensee.
(5) A compulsory licence may be modified by the competent authority, at the request of an
interested party, where justified by new facts or circumstances.
Article 45.  Compulsory licence in the event of dependent patents.
(1) Where an invention claimed in a later patent cannot be exploited in the country without
infringing an earlier patent, the National Industrial Property Office, at the request of the owner of that
patent or his licensee or the beneficiary of a compulsory licence on that patent, may grant a
compulsory licence with respect to the earlier patent  insofar as is necessary to avoid the infringement.
(2) A compulsory licence shall be granted only when the invention claimed in the later patent
involves an important technical advance and is of considerable economic significance with respect to
the invention claimed in the earlier patent.
(3) Where a compulsory licence is granted in accordance with paragraph (1) above, under the
same circumstances a compulsory licence may be granted with regard to the later patent, on request
by the owner of the earlier patent, his licensee or the beneficiary of a compulsory licence to the earlier
patent.
(4) A compulsory licence under this Article cannot be granted exclusively.  The compulsory
licence may be transferred only at the same time as the dependent patent whose industrial use requires
the licence.  The transfer of the compulsory licence shall be subject to the provisions of Article 32(2),
where appropriate.
(5) Licences under the present Article shall be subject to the provisions of Articles 43 and 44, as
appropriate.
Article 46.  Public interest licences.IP/C/W/285/Add.1
Page 23
On the grounds of public interest and, in particular, an emergency or national security
declared by the Executive, the National Industrial Property Office, at the request of an interested party
or the competent authority, or ex officio, shall at any time order the following:
(l) That an invention forming the subject of a patent or a current patent application shall
be exploited by a State body or by one or more persons under public or private law
designated for that purpose;  or
(m) that an invention forming the subject or a current patent application is open to the
granting of public interest licences, in which case the National Industrial Property
Office shall grant a licence to exploit it to anyone who so requests and is capable of
exploiting it in the Dominican Republic.
Article 47. Conditions of public interest licences.
(1) Every public interest licence shall give rise to a payment to the owner of the patent.  After
hearing the parties, and failing an agreement, the amount and modalities of the payment shall be
established by the National Industrial Property Office, in accordance with Article 44(g).
(2) A public interest licence may relate to the performance of any of the acts referred to in
Article 29(1).
(3) The granting of public interest licences is subject to the provisions of Articles 43 and 44,
where appropriate.
(4) The granting of a compulsory licence on the grounds of public interest shall not impair the
right of the patent owner to continue to exploit it".
35. Please explain how your legislation explicitly ensures that a proposed user has made
efforts to obtain authorization from the righ t holder on reasonable commercial terms and
conditions and that such efforts have not been successful within a reasonable period of time.  In
this context, how do you define "reasonable period of time".  Please also explain how your
legislation ensures the use of a compulsory li cence shall be authorized  predominantly for the
supply to the domestic market of the Member authorizing such use.
This provision is explicitly set out in Article 40(1) of Law 20-00 (see response to Question
No. 34).
As to the reasonable period of time, Article 40(1) establishes that a compulsory licence shall
be granted only where a potential user has made efforts to obtain a licence from the patent owner onreasonable commercial terms and conditions and such efforts have not been successful within two
hundred and ten (210) days of the licence being requested.
Article 40(2) establishes that, in determining what is to be understood to be reasonable
commercial terms and conditions, account shall be taken of the particular circumstances of each caseand the economic value of the authorization, bearing in mind the average fees for the sector in
question established in commercial licensing agreements between independent parties.
Article 44 of Law 20-00, on the conditions for granting compulsory licences, states in
subparagraph (f) that they shall be granted predominantly for the supply of the domestic market,except for the cases specified in Articles 41 and 46, on compulsory licences on grounds of non-use
and public interest licences, respectively.  This provision is in conformity with TRIPS Article 31(f).IP/C/W/285/Add.1
Page 24
36. Please state if your legislation grants addi tional protection for innovations after the
20 years of patent protection has lapsed.
Law 20-00 does not include a period of protection beyond the non-extendible 20 years
established in Article 27.
37. Please explain how your legislation provide s for the enhanced patent protection of
patents or patent applications pending on 1 January 1995.
Law 20-00 does not include additional protection in terms of the date of submission of the
patent application.  Patent protection is granted, under equal conditions, for any application that fulfils
the requirements set forth in our domestic legislation and in the TRIPS Agreement.
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
Article 170 of Law 20-00 establishes the presumption, until proven otherwise (presumption
iuris tantum ) that any like product obtained by a third party without the consent of the patent owner
has been obtained by the patented process, provided the product obtained is new under the terms ofthe law.
In this case established by the law, it is for the defendant marketing the like product to prove
that the process used to obtain the product is different from the patented process.  In the submission of
evidence to the contrary, account shall be taken of the legitimate interests of the defendant regardingprotection of his business or manufacturing secrets.
G. L
AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects topographies.
The protection of rights in layout-designs of integrated circuits will be governed by special
legislation in the process of being reviewed by the Executive before being submitted to Congress.
The Preliminary Bill on Legal Protection of Layout-Designs of Integrated Circuits now under
examination by the competent authorities establishes a level of protection in conformity with TRIPS
requirements and with the provisions of the Treaty on Intellectual Property in Respect of Integrated
Circuits.
40. Please explain what protection your national  legislation grants to right holders against
the unlawful importation, sale or distribution for commercial purposes of topographies
including integrated circuits or other articles in which a topography is incorporated in
accordance with Article 36 of the TRIPS Agreement.
See the response to Question No. 39.
41. Please explain how your legislation provi des for the derogation from Article 36 as
specified in Article 37 of the TRIPS Agreement where a person has no knowledge or reasonable
grounds to know when acquiring an integrated circuit or an article incorporating such an
integrated circuit that it contains an unlawful topography.
See the response to Question No. 39.IP/C/W/285/Add.1
Page 25
42. Please state the term of protection granted by your legislation to topographies.
See the response to Question No. 39.
H. P ROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislatio n grants a defined period of time for the
protection of undisclosed information.  If so, please give the time-span.
Dominican legislation on unfair competition (which encompasses protection of undisclosed
information) does not establish periods of time for the protection of undisclosed information.  The
authority with the data in its possession must protect the data for an unspecified time against unfair
commercial use and against disclosure under the terms and conditions established by law.  In this
respect, at no time may the authority or organization with the data in its possession allow a third party
access to undisclosed data, nor shall it communicate them or issue them to a third party in order forthe latter to make commercial use of them.
While such data or information are secret, the national authority will not allow unauthorized
third parties to have access to them.  It is understood that the above obligation does not restrict the
competent national authority's power to make any use of the data or information in its possession inorder to comply with its statutory function of authorizing pharmaceutical and agrochemical products
that fulfil the established sanitary conditions.  Such  internal use of information for the legal purposes
in question does not in any sense imply unfair commercial use of information, for such use is ordered
by law and is for non-commercial public use.
44. Please explain how your legislation defines undisclosed information.
Article 178 of Law 20-00 defines a trade secret as any undisclosed commercial information
possessed by a natural or legal person that can be used for a productive, industrial or commercial
activity and is capable of being transmitted to a third party.
For protection purposes, a trade secret is recognized as such where the constituent
information:
(a) Is not, as a body or in the precise configuration and assembly of its components,
generally known among or readily accessible to persons within the circles that
normally deal with such information;  and
(b) has been subject to reasonable steps by the person lawfully in possession thereof to
keep it secret.
45. Please explain how your legislation de fines data submitted to governments or
governmental agencies.
Dominican legislation on industrial propert y does not contain any definition of "data
submitted to governments or governmental agencies".  Article 181 of Law 20-00, concerning
information for authorization to sell, establishes that, where a process has been submitted to a
competent national authority for authorization to market or sell a pharmaceutical or agro-chemicalproduct containing a new chemical component, an d requires the submission of secret data or
information, the latter shall be protected against unfair commercial use by third parties.
The Article establishes that such secret data or information shall also be protected against
disclosure.  They may only be disclosed by the competent national authority where necessary toIP/C/W/285/Add.1
Page 26
protect the public or where appropriate measures have been adopted to ensure that the data or
information are protected against unfair commercial use by third parties.
I. Enforcement
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
The stipulations in TRIPS Article 41.1 are contained in several articles in our legislation on
industrial property.
A. The expeditious administrative procedure to prevent infringements is set out in Article 154 of
Law 20-00, on proceedings before the National Industrial Property Office.
"Article 154.  Proceedings before the National Industrial Property Office.
Proceedings before the National Industrial Property Office shall be conducted in accordance
with the following rules:
(b) Complaints shall be made, in writing, to the head of the relevant department, who
shall rule thereon with the assistance of  two examiners from his own department;
(c) the head of the relevant department shall, within ten (10) days of the date of receipt,
notify the complaint to the right holder who shall have thirty (30) days from the date
of notification in which to respond;
(d) all those entered in the register and anyone having any registered right relating to the
industrial property right forming the subject of the complaint shall be notified of the
complaint within ten (10) days of the date of receipt;
(e) the initiator of the proceedings shall be notified of the right holder's response within
ten (10) days of receipt in order that he may exercise his right of reply, within thirty(30) days of receipt of the notification.  The head of the relevant department shall
issue a duly reasoned resolution within two (2) months of the expiry or the final time-
limit accorded to the parties;
(f) once the arguments have been presented and the evidence taken, the case shall be
submitted to the head of the department and the examiners for a decision and, if the
nature of the complaint so requires, one or more technical reports will be carried out;
(g) the head of the relevant department shall issue a duly reasoned resolution within three
(3) months of the expiry of the final time-limit accorded to the parties;
(h) the parties shall be notified of the resolution issued by the head of department in the
manner prescribed by the regulations".
B. Infringements and judicial procedures are the subject of Articles 166 and 167 of Law 20-00.
A violation of this Law is categorized as an offence punishable by imprisonment and a fine.
"Article 166.  Penalties.A penalty of three months' to two years' imprisonment or a fine of 10 to 15 minimum wages,
or both, shall be incurred by anyone who wilfully:IP/C/W/285/Add.1
Page 27
(i) Without the consent of the owner of a distinctive sign makes commercial use of an
identical sign or a registered trademark, or a direct copy or fraudulent imitation
thereof, in relation to products or services that it distinguishes or to related products
or services:
(j) without the consent of the owner of a distin ctive sign performs any of the following
acts in relation to a trade name, label or emblem:
(i) Makes commercial use of an identical distinctive sign, for an identical or
related business;
(ii) makes commercial use of a similar distinctive sign when it is likely to create
confusion;
(k) makes commercial use in relation to a product or service of a geographical indication
that is false or likely to mislead the public as to the origin of that product or service or
as to the identity of the producer, manufacturer or supplier of the product or service;
(l) makes commercial use in relation to a product of a false or misleading appellation of
origin, or an imitation of an appellation of origin, even where the true origin of the
product is indicated, or the appellation is used in translation or accompanied byexpressions such as "type", "kind", "style", "imitation" or the like;
(m) continues to use an unregistered trademark confusingly similar to another registered
trademark or after an administrative penalty imposed for this reason has become
final;
(n) offers products for sale or introduces them into circulation or provides services with
the trademarks referred to in the preceding paragraph;
(o) manufactures or develops products protected by a patent or utility model, without the
consent of the owner or without the appropriate licence;
(p) offers for sale or introduces into circulation products covered by a patent or utility
model, knowing them to have been manufactured or developed without the consent ofthe owner of the patent or registration or without the appropriate licence;
(q) uses patented processes without the permission of the patent owner or without the
appropriate licence;
(r) offers for sale, sells or uses, imports or stocks products that are the direct result of the
use of patented processes, knowing them to have been used without the consent of the
owner of the patent or the licensee;
(s) reproduces or imitates industrial designs protected by registration without the consent
of the owner or without the appropriate licence;
(t) without being the owner of a patent or util ity model or enjoying the rights conferred
thereby, makes use in his products or his advertising of appellations that could
mislead the public as to the existence thereof;IP/C/W/285/Add.1
Page 28
(u) conceals information from the National Industrial Property Office or furnishes it with
false information in order to obtain the patent that does not meet the requirements of
patentability.
PARAGRAPH.  Liability for the acts describe d above extends to persons who order them or
arrange for them to be carried out, the legal representatives of corporate entities and all thosewho, knowing the act to be unlawful, take part in, facilitate or conceal it.
Article 167.  Proceedings.(1) Proceedings for the imposition of the penalties indicated in the preceding article shall
be initiated by the right holder.
(2) The provisions of ordinary criminal law shall be residually applicable, provided that
they do not conflict with the present law.
(3) None of the procedures to which the application of the present law may give rise shall
be subject to posting prior security as laid down in Article 16 of the Civil Code and Articles 166 and167 of the Code of Civil Procedure and amendments thereto."
C. Civil proceedings are described in Article 168 and the penalties of ordinary law and
provisional measures in Articles 173, 174 and 175 of Law 20-00, which stipulate:
"Article 168.  Civil remedies for infringement.
(1) A right holder protected under this law may bring a civil action before the competent
court against anyone who infringes that right.  He may also proceed against anyone who performs acts
that clearly reveal the imminence of an infringement.
(2) In the event of co-ownership of a right, any of the co-owners may bring an action for
infringement of that right, without need to obtain the consent of the others, unless otherwise agreed.
Article 173.  Enforceable measures in actions for infringement.In an action for infringement of rights protected under this law, one or more of the following
measures may be requested:
(a) Cessation of the infringing acts;(b) indemnification for damage suffered;(c) seizure of the products of the infringement, of the advertising material referring to
those products and of the means used exclusively for committing the infringement;
(d) the transfer of ownership of the products and means referred to in subparagraph (c),
in which case the value of the products will be deducted from the damages;
(e) measures necessary to prevent the continuation or repetition of the infringement,
including the destruction of the means seized under subparagraph (c), if
indispensable.IP/C/W/285/Add.1
Page 29
Article 174.  Provisional measures.
(1) Whoever initiates or is about to initiate an action for infringement of an industrial
property right may request the court to order immediate provisional measures, for the purpose of
ensuring the effectiveness of the action or the payment of any damages.
(2) The court shall order provisional measures only if the person requesting them can
show, by producing evidence deemed sufficient by the court, that an infringement has been committed
or is imminent.
(3) Provisional measures may be requested before, after or concurrently with the
initiation of an action for infringement.  If the measures are ordered before the action is initiated, theyshall be rendered null and void if an action is not brought within ten (10) days of the order being
issued.
(4) The competent court may order as provisional measures those which are appropriate
to ensure the enforcement of the judgement hand ed down in the corresponding proceedings.  The
following provisional measures, among others, may be ordered:
(a) The immediate cessation of the acts which allegedly constitute an infringement,
except where the defendant opts to continue performing the said acts by providing
such security or other assurance as shall be prescribed by the court;
(b) the preventive seizure, inventorying or deposit of samples of the articles forming the
subject of the infringement and of the m eans intended exclusively for committing the
infringement;
(c) the competent court shall order the plaintiff to provide security or equivalent
assurance sufficient to indemnify the defendant, should the final decision be in the
latter’s favour, for any damage he may have suffered as a result of the complaint;
(d) if the holder of a trademark right has good reason to suspect that goods are about to
be imported under conditions such that his rights would be impaired, he may request
the court to order the Republic’s customs authorities to suspend, as a precautionarymeasure, the release of the said goods into free circulation or their exploitation, as the
case may be.
(5) The court shall accept the request and adopt measures only if the petitioner supplies,
together with the request and in writing, a sufficiently detailed description of the goods to make themreadily recognizable by the customs authorities.
(6) The court shall order the deposit with the court registry of a sum of money or security
equivalent to not less than three times the value of the import operation in question, in the form of
cash or a certified cheque, to cover any damage suffered by the defendant, should the plaintiff lose thecase.
Article 175.  Calculation of damages.In calculating damages, the portion corresponding to loss of income for which compensation
is required may be computed on the basis of any of the following criteria:
(a) The profits that would predictably have accrued to the right holder in the absence of
competition from the infringer;IP/C/W/285/Add.1
Page 30
(b) the profits earned by the infringer as a result of the infringing acts;
(c) the price that the infringer would have paid the right holder for a contractual licence,
with due regard for the commercial value of the subject-matter of the right infringedand the contractual licences already granted.
PARAGRAPH.  Anyone filing suit for infringement of rights shall be liable for any injury
caused to the alleged infringer in the event of malicious or negligent actions or complaints.
As for copyright, Law 65-00 is a law of  ordre publique  and of social interest and, for the
purposes of guaranteeing protection of copyright and related rights, right holders are granted theoption of deciding which procedure (civil, criminal or administrative) to use in exercising their rights
(Article. 168).
Under Article 169, the penalties for copyright infringements are three months' to two years'
imprisonment and a fine of fifty to one thousand minimum wages.  Article 170 goes on to establish afine of ten to fifty minimum wages for anyone who is authorized to use the work but infringes the
conditions under which it has been authorized, and both articles make lengthy but not exhaustive
enumerations of cases in which the penalties shall apply.
Some provisions of Law 65-00 make for more effective action against copyright
infringements, including:
Article 175 of the Law, which establishes that criminal proceedings as a result of an
infringement of Law 65-00 may be instituted by anyone in all cases and shall be initiated ex officio
even though there is no accusation or complaint.
Article 107(6)  and Article 118 of Regulation No. 362-01 implementing Law 65-00 enables
the National Copyright Office (ONDA) to submit, where deemed relevant, a criminal complaint when
it learns of an act constituting an alleged offence.  Similarly, the provisions of Article 187(4) of the
Law and Articles 115 and 116 of Regulation No. 362-01 allow ONDA to impose the following
penalties administratively, ex officio, or upon the request:
(1) Warning;
(2) Fine of 5-200 minimum wages;(3) Reparation of omissions;
(4) Temporary or final closure of the establishment where the infringement has taken 
place;
(5) Seizure or forfeiture of the goods and equipment used in the infringement;
(6) Destruction of the unlawfully reproduced goods;
(7) Publication of the resolution at the expense of the infringers.IP/C/W/285/Add.1
Page 31
47. Please explain whether or not your legislation provides for a mechanism to appeal to
judicial bodies of final administrative decisions.
Administrative decisions by both the National Industrial Property Office and the National
Copyright Office are not open to appeal to judicial bodies.  However, their administrative character
means that they are open to appeal in accordance wi th the Domincan administrative law in the Higher
Administrative Court.
48. Please describe how your legislation authorizes judges to order production of evidence
by the opposing party.  Please give precise information on what measures are taken to ensure
the protection of confidential information.
In the Domincan courts, any documentation or item relating to the case that is submitted as
evidence shall be submitted for the knowledge of both parties, either amicably from lawyer to lawyer
or by depositing it with the clerk of the court, so that the other party may learn of it.  The court may
not rule on the basis of evidence that has not been  communicated or submitted at the appropriate time,
in such a way as to preserve the right to a defence.
Under the rules of civil procedure, if documents have not been communicated amicably to
lawyers or by depositing them with the clerk of the court, the court may order them to be
communicated without any further formality if so requested by any of the parties.
With respect of copyright and the provisions of Law 65-00, Article 179(1) of the Law
establishes that a right holder recognized by the Law who fears that his rights are being disregarded
by a third party or fears that some or all of th e elements of the unlawful act could disappear may
request the court to authorize the attachment or seque stration, in his own custody or in that of a third
party, of the unlawfully reproduced objects, the equipment and devices used in the infringement, as
well as any information or business documents relating to the act.
Law 65-00 specifies that complaints of infringements of law made to the National Copyright
Office (ONDA) shall be treated confidentially and, in  this respect, Article 189 stipulates that  ONDA
and its personnel shall be required to deal confiden tially with the origin of  any complaint about any
infringement of the law that they receive, for whic h reason they may not inform the enterprise or its
representative, or any other person that it will carry out an inspection or seizure as a result of the
information received.
Article 170 of Industrial Property Law 20-00 specifies in Article 170 that, where the subject
of a patent is a process to obtain a new product under the terms of the law, the competent court may
order the defendant marketing a like product to prove that the process used to obtain the product is
different from the patented process.  It is a iuris tantum  presumption and it is for the defendant to
submit evidence to the contrary.  The Article also  establishes that, in submitting evidence to the
contrary, account should be taken of the legitimate interests of the defendant in regard to protection of
his trade or manufacturing secrets.
49. Please quote provisions of your legislation that authorize judges to order a defendant to
desist from an infringement.
The civil remedies described in Copyright Law 65-00 provide for the affected right holder's
right to request the court, in addition to attach ment, to order immediate suspension of the unlawful
activity, especially any unlawful reproduction, distribution, communication to the public orimportation (Article 179, Paragraph).IP/C/W/285/Add.1
Page 32
Again, Article 180(I) establishes that the right holder who has reason to fear infringement of
his rights may request the court of first instance, before the main action is initiated, to issue a warrant
for the judicial inspection of the place where the infr inging acts are presumed to be taking place.  The
court may specify in the warrant that, if the inspection reveals a serious presumption of an
infringement, the items constituting the violation of copyright shall immediately be attached orsequestered and the infringers shall be ordered to cease the unlawful activity immediately.
With reference to industrial property, Law 20-00 stipulates in Article 173, on measures
required in infringement proceedings, that cessation of the acts infringing the holder's rights may be
requested.  Similarly, a request may be made for the requisite measures to prevent continuation or
repetition of the infringement.
Article 174, on provisional measures, establishes that the competent court may order any
appropriate provisional measures to ensure the enforcement of the judgement.  The measures include
immediate cessation of the acts which allegedly constitute the infringement, except where the
defendant opts to continue performing the said acts by providing such security as shall be prescribed
by the court.
50. Please quote what provisions of your legislation authorize judges to order the payment
to the right holder of adequate damages to compensate the injury he suffered.
Article 177 of Copyright Law 65-00 establishes that anyone who, without the consent of the
right holder, performs acts in violation of the moral or economic rights recognized by law shall be
liable to the right holder for the injury caused to him by the violation, regardless of whether or not he
was aware of the violation committed.  Under the terms of Article 178, the owner, partner, manager,
director or head of the place at which the unlawful ac tivities are carried out shall be jointly liable for
any violations of rights that occur in that place.  The damages shall in no case be lower than the
minimum fine established as a criminal penalty for the relevant infringement, for each violation.
Article 102 of Regulation 362-01, on the implementation of Law 65-00, establishes that,
without prejudice to the appropriate award of ec onomic damages, indemnification for moral injury
shall be ordered, without any need to prove the existence of economic injury, and the assessment shall
take account of the circumstances of the violation, the seriousness of the injury and the extent of
unlawful dissemination of the work.
In the assessment of economic damages caused to the right holder, Article 103 of Regulation
No. 362-01 establishes that particular account should be taken of the benefit that the injured party
would predictably have obtained if the violation had not taken place, his remuneration if the use of the
work had been authorized and all of the infringer's direct or indirect profits from the unlawful activity.
In regard to industrial property, Article 167 of Law 20-00 establishes that the provisions of
ordinary law are applicable residually, provided they are not inconsistent with the Law itself.  In other
words, in the event of an infringement, the principle of civil liability under ordinary law is applicable.
Moreover, Article 168 stipulates that the right holder protected under Law 20-00 may bring civilproceedings in the competent court against any person infringing that right.
Article 175 sets out the criteria for calculating the compensation for the infringement.  The
loss of earnings to be made good shall be calculated in terms of:
(a) The profits that would predictably have accrued to the right holder in the absence of
competition from the infringer;
(b) the profits earned by the infringer as a result of the infringing acts;IP/C/W/285/Add.1
Page 33
(c) the price that the infringer would have paid the right holder for a contractual licence,
with due regard for the commercial value of the subject-matter of the right infringed
and the contractual licences already granted.
51. Please quote what provisions of your legislation authorize judges to order the payment
of the right holder's expenses by the infringer.
Article 130 of the Code of Civil Procedure, which is the ordinary law, relates to the costs of
proceedings and establishes that the party losing the case is sentenced to the payment of costs.
In the particular case of copyright, Article 183 of Law 65-00 stipulates that, at the request of
the interested party, the court may order that the judgement be published at the cost of the losing
party, in one or more newspapers to be indicated in the court's decision.
52. Please explain if and how judges have the authority to order that infringing goods are
placed outside channels of commerce or destroyed.
Under Article 183 of Law 65-00, in the final judgement establishing the existence of the
violation, the court shall order that the unlawfully reproduced or used objects, as well as the
instruments used for reproduction, shall be destroyed or delivered over to the plaintiff or right holder.
Article 118(11) of Regulation No. 362-01, on the implementation of Law 65-00, confers on
the National Copyright Office (ONDA) the right to or der, in a reasoned resolution, the destruction of
the objects constituting the infringement, with a detailed record of the goods to be destroyed.
In the case of industrial property, Law 20-00 includes among the measures that may be
requested and ordered by a court in the event of an infringement, as established in Article 173:
seizure of the objects resulting from the infringement and advertising material referring to those
objects and the means used exclusively to commit the infringement, and, all measures necessary to
avoid the continuation or repetition of the infringement, including the destruction of the goods seized,
where indispensable.
Under Article 174 of Law 20-00, the provisiona l measures that may be ordered by the
competent court include preventive seizure, an inventory or deposit of samples of the subject-matter
of the infringement and the means intended exclusively to carry out the infringement.
53. Please quote what provisions of your legislation authorize judges to indemnify a
defendant in the event of abuse by the plaintiff.
Law 65-00 includes no specific provision on the indemnification of defendants wrongfully
enjoined, nor does it provide for remedial measures applicable to public authorities or officials in such
cases.  The general rules of our legal system must therefore apply.
Civil procedure provides remedies for protecting the defendant from being wrongfully sued or
enjoined;  one example of this is where the defendant seeks damages by filing a counter-claim against
the plaintiff.
Generally speaking, Article 1382 of the Dominican Civil Code provides for liability in tort or
for negligence by stipulating, in general terms, that any act by one person that harms another obliges
the person responsible for that act to make reparation.IP/C/W/285/Add.1
Page 34
In regard to industrial property, Article 174 of  Law 20-00 stipulates that, in the event of a
provisional measure of suspension of customs clearance for free circulation in Republic, the court
issuing the suspension order shall order the deposit of  a sum or security not less than three times the
value of the importation in question, in cash or by certified cheque, to guarantee any damage or injury
suffered by the defendant if the plaintiff loses the case.
Again, Article 175 establishes that any one filing an application for infringement of rights
shall be liable for injury caused to the alleged infringer in the event of malicious or negligent
proceedings or complaints.
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.
Under Article 179 of Law 65-00 a holder of rights  recognized by the law who fears that his
rights are being disregarded or that some or all of the elements of the unlawful act could disappear is
entitled to request the court, without the ot her party first being summoned, authorization for
attachment or sequestration, in his own custody or in that of a third party:
(a) Of objects reproduced without the authorization of the holder, of equipment or
devices used to commit the unlawful act and business information or documents
relating to the act;
(b) of the proceeds of the sale, rental or other form of distribution of unlawful objects;(c) of the income obtained from unauthorised acts of communication to the public;(d) of devices to deactivate systems intended to prevent the making of unlawful copies or
intended to prevent or control unauthorised reception or retransmission.  In additionto these measures, the right holder may request the court to suspend the unlawful
activity.
In addition to the above measures, the right holder can request the court to suspend the
unlawful activity.
Under Article 180, the right holder can, where he fears that his rights are being disregarded
and after he has initiated the main action, request th e court to issue a warrant for an inspection of the
place where it is presumed that acts infringing Law 65-00 and Regulation 362-01 are taking place.
The same warrant may be requested to order suspension of customs clearance of infringing goods and
equipment.
The intention, or the legal basis for these measures , is to afford the right holder an expeditious
and effective method of preventing an infringement from being committed, preventing economic
injury to the right holder as well as preventing irreparable harm and acting promptly so that, among
other things, the unlawful goods do not disappear.
The provisional measures that the court may order in criminal proceedings are described in
Article 173 of the Law, which establishes that all objects reproduced, transformed, communicated or
distributed to the public in breach of copyright or related rights, and all material and equipment used
for the unlawful acts, as well as business information or documents relating to the commission and the
offence, may be provisionally seized, without summoning or hearing the other party, at any stage inthe case, even before the initiation of the criminal  proceedings, at the request of the holder of the
infringed right, regardless of the person in whose custody they are, by the Office of the Prosecutor of
the judicial district in which the goods are located.IP/C/W/285/Add.1
Page 35
The Prosecutor may, at any time and even before the criminal proceedings are initiated,
without the presence of the other party, conduct investigations or expert examinations deemed
necessary to determine the existence of the infringi ng material, and the places at which it is to be
found.
Article 174 of the Law establishes that, in the pre-trial and in the trial proceedings, the
formalities laid down in Code of Criminal Procedure shall be observed, for which reason all judicial
measures falling within the competence of the criminal courts may be ordered in cases of breaches of
Law 65-00.
In regards to industrial property, Law 20-00 sets out provisional measures in Article 174.
"Article 174.  Provisional measures
(1) Whoever initiates or is about to initiate an action for infringement of an industrial property
right may request the court to order immediate provisional measures, for the purpose of ensuring the
effectiveness of the action of the payment of any damages.
(2) The court shall order provisional measures only if the person requesting them can show, by
producing evidence deemed sufficient by the court, that an infringement has been committed or is
imminent.
(3) Provisional measures may be requested before, after or concurrently with the initiation of an
action for infringement.  If the measures are ordered before the action is initiated, they shall be
rendered null and void if an action is not brought within 10 (ten) days of the order being issued.
(4) The competent court may order as provisional measures those which are appropriate to ensure
the enforcement of the judgement handed down in  the corresponding proceedings.  The following
provisional measures, among others may be ordered:
(a) The immediate cessation of the acts which allegedly constitute an infringement,
except where the defendant opts to continue performing the said acts by providing
such security or other assurance as shall be prescribed by the court;
(b) The preventive seizure, inventorying or deposit of samples of the articles forming the
subject of the infringement and of the m eans intended exclusively for committing the
infringement;
(c) The competent court shall order the plaintiff to provide security or equivalent
assurance sufficient to indemnify the defendant should the final decision be in thelatter's favour, for any damage he may have suffered as a result of the complaint;
(d) If the holder of a trademark right has good reason to suspect that goods are about to
be imported under conditions such that his rights would be impaired, he may request
the court to order the public's customs authorities to suspend, as a precautionarymeasure, the release of the goods into free circulation or their exploitation, as the case
may be.
(5) The court shall accept the request and adopt measures only if the petitioner supplies, together
with the request and in writing, a sufficiently detailed description of the goods to make them readilyrecognisable by the customs authorities.
(6) The court shall order the deposit with the court registry of a sum of money or security
equivalent to not less than three times the value of the import operation in question, in the form ofIP/C/W/285/Add.1
Page 36
cash or a certified cheque to cover any damage suffer ed by the defendant, should the plaintiff lose the
case."
55. Please identify the competent authorities in your jurisdiction who receive requests from
right holders for an application to suspend the release of counterfeit goods by the customsauthorities.
Under Law 65-00 the right holder has an effective means of avoid, without delay, any harm
that will later become irreparable by taking the requisite steps to avoid such abuse.  Consequently, the
application to suspend customs release must be made to the Directorate-General of Customs or to the
relevant Office of the Prosecutor, and the former shall be competent to order suspension of the release
of allegedly unlawful goods, either as a result of the request or ex officio.
As to industrial property, Article 174(d) establishes that the competent authority to order the
suspension of customs release is the court hearing the application.
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
The right holder may request the Directorate-General of Customs or the appropriate Office of
the Prosecutor to suspend customs release of goods, provided he has reasonable grounds for
suspecting that preparations are being made to import or export goods that will injure the rightholder's rights.
In the case of industrial property, Article 174 establishes that for a court to accept the request
made by a right holder who suspects that his rights are being impaired and for measures to be taken to
suspend customs release, the petitioner needs to subm it, together with the re quest and in writing, a
sufficiently detailed description of the goods to make them readily recognisable by the customs
authorities.
57.   Please quote what provisions of your le gislation authorise the competent authorities to
order the destruction or disposal of infringing goods.
With reference to the judicial authorities, under Article 183 of Law 65-00 the court may, in
the final judgement establishing the existence of a violation, order that the unlawfully reproduced or
used objects be destroyed or handed over to the plaintiff or right holder.
As the administrative authority, the National Copyright Office (ONDA may, pursuant to
Article 108(11) of Regulation 362 on the implementa tion of Law 65-00, order in a reasoned resolution
the destruction of the objects constituting the infr ingement, with a record setting out in detail the
goods to be destroyed.
Article 173(e) of Industrial Property Law 20-00 specifies the necessary measures to avoid
continuation of the infringement, including the destruction of the means seized if this is essential.
58. Please indicate whether or not your legislation provides for a de minimis imports
exception.
Law 65-00 does not make any reference to de minimis  import exceptions.
59. Please explain how your legislation implements Article 61 of the TRIPS Agreement .IP/C/W/285/Add.1
Page 37
With reference to criminal proceedings and penalties, including imprisonment and/or
monetary fines sufficient to provide a deterrent for cases of copyright infringement on a commercial
scale, it is Articles 168 to 172 of Law 65-00 that implement Article 61 of the TRIPS Agreement.
Firstly, Article 168 gives the right holder the option to decide between civil or criminal
proceedings.  Under Article 169, the penalty is three months' to three years' imprisonment and a fine
of 50 to 1,000 minimum wages.  Article 170 also es tablishes a fine of 10 to 50 minimum wages in the
case of improper use of the work over and above that authorised by the holders of rights protected by
the law.
In the event of an infringement of the continued existence of the right holder, the fine may be
up to three times the amount of the material injury caused, in keeping with Article 172, and in the case
of insolvency the infringer shall pay with one day's imprisonment for ever peso he has not paid.
As to solutions for appropriate cases, which include seizure, loss or destruction of counterfeit
materials and implements which have been pred ominantly used in committing the infringement,
Article 173 prescribes that any unlawful reproduction will be confiscated and given under the terms ofthe judgement to the right holder who has been defrauded, unless he asks for them to be destroyed.
The materials and implements used in the unlawful acts will be forfeited and destroyed or handed
over to the injured party, without prejudice to any civil proceedings he brings against the infringer for
damages.
In order to provide practical solutions to prevent clearly unlawfully reproduced materials
from remaining indefinitely in storage, or for an  unnecessary length of time under the powers of the
National Copyright Office (ONDA), Regulation No. 362-01 on the implementation of Law 65-00,
specifies in Article 116.7 that the Office may proceed to destroy unlawfully reproduced copies, as
well as moulds, plates, printing blocks, negatives and other articles intended for unlawful production,further to a reasoned resolution and after offering the party the right to submit allegations and
evidence; it shall first make a detailed record of the goods to be destroyed.  In such cases, the ONDA
shall always retain several unlawful copies for submission to the court as evidence of the
infringements.
Again, with reference to criminal proceedings and penalties in the event of voluntary
infringements of other types of intellectual property rights, Law 65-00 enumerates the various formsof infringements that are a violation of the rights protected by the law, but does not specifically
classify cases in which the penalties are aggravated, with the exception of the following:
In the case of a repeated offence covered by Article 171(I), which establishes that the
maximum penalty shall apply to the repeat offender;
Article 172 increases the fine to three times the amount of the material damage.Regulation 362-01 on the implementation of Law 65-00 specifies in Articles 119 and 120
what the Regulation regards as serious faults and determines the seriousness of the infringement inArticle 119, with account being taken of the dissemination or significance of the infringement.IP/C/W/285/Add.1
Page 38
UNITED STATES
B. PATENTS
22.2Please explain whether Article 2(1) or any other provisions of the Industrial Property
Law of the Dominican Republic provide for the protection of new uses for known products, asrequired by Article 27.1 of the TRIPS Agreement.
Under Article 2, paragraph 1(i) of Industrial Property Law 20-00, a product or process could
not be newly patented because of a use different from the one covered in the original patent.  It is one
of the matters excluded from patent protection because it is not deemed to be an invention.
However, it is understood that if the new use is in keeping with the definition of an invention
under Article 1 and meets the patentability requirements set out in the law it constitutes an invention
and is therefore patentable.
Follow-up questions
3
1. Please clarify whether purifications or isolations of materials found in nature are
considered patentable subject-matter.  If not, please explain which provisions of the TRIPS
Agreement authorize their exclusion from patentable subject-matter.  Also, if purifications or
isolations are not considered inventions, please explain why they cannot be solutions to technical
problems.
The materials found in nature are not patentable, even though they have been purified or
isolated, unless they are intrinsically modified.  The materials found in nature are not man-made
products.  Only man-made products may constitute inventions.  The act of purifying or isolating a
material found in nature does not convert it into an invention.  For an invention, it is necessary for thenatural material to be modified by the intervention of man, in other words, for the product of nature to
be essentially transformed by man's actions.  Mere purification or isolation of a material found in
nature does not entail such an essential transformation.  In addition, neither the TRIPS Agreement nor
any international agreement defines what is considered to be an invention.  Every country is free to
define that concept in its domestic legislation.
Article 27.1 of the TRIPS Agreement requires Members to protect inventions by patents.  The
TRIPS Agreement does not contain any obligation to grant patents to materials that do not constitute
inventions.  Since the materials found in nature do not constitute inventions there is no obligation to
protect them by patents.
Not every technical solution constitutes an invention.  The materials (inert or living) found in
nature are the product of nature and not the product of man.  Even though those materials may be used
to solve a technical problem they cannot be looked on as inventions.  This situation is not changed
because the material found in nature has been purified or isolated.  For example, copper found in the
earth in the natural state can be isolated from the earth and purified for use as a raw material in
manufacturing electric cables for efficient transmission of electricity.  Copper's high conductivityoffers a solution to the technical problem of findin g the best means to transmit electricity efficiently.
Nevertheless, this property of copper would not allow anyone who discovers copper in nature and
isolates and purifies it to claim copper as an invention of his own, since such a person would not have
                                                     
2 Initial question circulated in document IP/C/W/268/Add.1.  The responses by the Dominican
Republic to the other initial questions posed by the United States were circulated in document IP/C/W/285.
3 The follow-up questions were circulated in document IP/C/W/268/Add.2.IP/C/W/285/Add.1
Page 39
invented copper.  He would simply have found it in nature and recovered and concentrated it for use,
without modifying its essence.
It is understood that if the technique of isolation, separation or purification of the material
from its natural state complies with patentability requirements, it can be claimed to be a specificinvention.
2. Please explain how the Dominican Republic has implemented the requirement in
paragraph 7 of Article 70 of the TRIPS Agreement to permit applicants to have claims drawn to
pharmaceutical products in applications that were pending on the effective date of the
Industrial Property Law and that disclosed the products as well as the process of making them.
Pursuant to Article 70.7 of the TRIPS Agreement and as a result of the Dominican Republic's
accession to the Agreement Establishing the World Trade Organization (WTO), the national industrial
property authority can be requested to modify a patent application pending so as to add claims to one
or more products disclosed in the descriptive memorandum initially submitted but not claimed at that
time.  This broadening of claims would be accepted only to the extent that it did not involvebroadening the subject-matter disclosed in the initial application.
C. 
PROTECTION OF UNDISCLOSED INFORMATION
3. Please explain what measures are being taken to protect certain test and other data
mentioned in Article 181 of the Industrial Property Law against unfair commercial use.  Pleaseclarify the duration of protection against unfair commercial use.
Pursuant to Article 181 of the Industrial Property Law, the competent national authority for
authorizing the marketing or sale of a pharmaceutical or agrochemical product containing a new
chemical component will protect that information against unfair commercial use by third parties.  Theauthority will not allow third parties access to that information.  Since third parties are not allowed
access to the information in question, they cannot use it in any way.
The competent national authority's obligation not to allow third parties to access to secret data
or information does not have any duration.  So long as the data or information is secret in character,
the national authority will not allow access to it by unauthorized third parties.  It is understood that the
above obligation does not place any restriction on the competent national authority's power to use anydata or information at its disposable in order to fulfil its statutory function of authorizing a
pharmaceutical and agrochemical products that meets the established sanitary conditions.  This
internal use of information for the legal purposes mentioned, in other words, strictly for the purposes
of public management, does not in any way entail unfair commercial use of the information, for such
use is permitted by law and is for non-commercial public purposes.
D. T
RADEMARKS
4. Please explain any procedures for rene wing a trademark registration that may be
available under the laws of the Dominican Republic.
The renewal of trademark registrations is governed by Articles 82 and 83 of the Industrial
Property Law (No. 20-00).  The Articles stipulate as follows:
"Article 82.  Renewal of registration.
A trademark registration may be renewed for consecutive periods of ten years, as from the
date of expiry of the previous periodIP/C/W/285/Add.1
Page 40
"Article 83.  Registration renewal procedure
(1) An application to renew a registration must be accompanied by a sworn declaration
setting out the frequency and form of use of the trademark, as well as evidence of useas determined by the regulations.  The registration shall be renewed by payment of
the renewal fee within the six months preceding the date of expiry of the previous
period.  It may also be renewed within a grace period of six months from the date of
expiry of the registration, with in such cases, the payment of the established
surcharge, in addition to the appropriate renewal fee.  The registration of the
trademark shall be fully operative during the period of grace.
(2) When the renewal is made, no change may be made in the trademark nor may the list
of products or services for which the trademark is registered be expanded, but the
trademark owner may reduce or limit the list.
(3) Certification shall be issued that renewal has been entered in the register and the
renewal shall mention any reduction or limitation of the list of products or services
that the trademark distinguishes.  After the issue of the certification, the office shall
publish renewals in the Official Journal, at the applicant's expense."
SWITZERLAND
4
E. PROTECTION OF UNDISCLOSED INFORMATION
Ad response to Question 6
A. Referring to the issue of unfair commercial use of data submitted by an applicant to the
responsible State Agency and the procedure fo r market authorization for a pharmaceutical or
of an agricultural committal product, please explain the expression "[ … ] a tereceros hacer
referencia a autorizaciones anteriores [ … ]".  Does this mean that a second applicant can
actually rely on or refer to th e original data of the first applicant when applying subsequently
for market authorization for his own product?  If so, please explain how this complies with
Article 39.3 of the TRIPS Agreement.
Article 39.3 of the TRIPS Agreement establishes only two obligations, namely, (i)  to protect
data against unfair commercial competition, and (ii) to protect such data against disclosure.  The
TRIPS Agreement does not contain any obligation to prevent third parties from obtaining market
authorization for goods identical or similar to those approved previously, or to prohibit third parties
from referring to previous authorizations.  Health authorization for a product is publicized and anyonecan refer to it.
Everyone is entitled to apply for and obtain from the competent authorities a permit to market
his own version of a previously-approved pharmaceutical or agro-chemical product, provided he
complies with the provisions of the law.  The authority issuing the market authorization cannotdiscriminate between earlier and subsequent applicants and all must be treated equally in accordance
with the law.  If a product has been authorized by  the health authority and then someone else applies
for authority to market a like product, that person can indicate that the product has already been the
subject of a previous authorization.  From the health standpoint, if the health authority has approved
                                                     
4 The responses by the Dominican Republic to the initial questions formulated by Switzerland were
circulated in document IP/C/W//285IP/C/W/285/Add.1
Page 41
product "A" and product "B" is identical in health terms to product "A", which has been already
approved, the health authority would have no le gal reason to deny approval of product "B".
This summary procedure for approval does not in any way infringe Article 39.3 of the TRIPS
Agreement.  Generally speaking, this procedure does not require any test or other kind of datamentioned in TRIPS Article 39.3, for which reason this provision is not applicable.  However, in
cases where the first health approval did require the submission of such data to the health authority,
the approval of a second or subsequent like product by that authority does not involve "unfair
commercial use" or "disclosure".  There is no unfair commercial use because the health authority is
not a commercial organization nor does it engage in commercial activities.  Its function is regulated
by law for which reason it is de jure  lawful and cannot be considered unfair.  Again, any undisclosed
information kept by the health authority is not accessible to third parties nor is it disclosed in any wayduring the product approval procedure.  Consequently, there is no disclosure of the data in question.
B. Please explain in this context the passage in your answer "[ … ]  autoridad podrá
internamente tomar en cuenta cu alquier información a su disposicion, cualquiera sea su origen
[ … ]" and whether a second applicant would have to submit the same amount of test data formarket authorization to the responsi ble State Agency as the first one.
See the response to the previous question.  The health authority has a legal function to
perform.  Its function is regulated by law and must be carried out technically, objectively and without
discrimination.  It consists in giving health approval for pharmaceutical (or agro-chemical) products.
The effect of the approval is simply to confirm that, from the purely health standpoint, the product is
suitable for consumption (efficacy, safety, etc.).  The health authority may use any information in its
possession to fulfil its legal function, including information involved in its previous decisions.  Once
the health authority has approved a particular product for one person, it is obliged to approve the same
product for other persons.  Otherwise, it would be practising unlawful discrimination.  Once theproduct has been authorized, this fact is publicized.  The suitability of the product from the health
standpoint has already been demonstrated and it does not need to be demonstrated yet again.  In the
case of a subsequent application for the same product, it would only be necessary to show that the
subsequent product to be marketed is identical, in composition, formulation and application, to the
one approved earlier.
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