RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/275/Rev.1
8 October 2001
(01-4864)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Revision
Responses from Dominica to the questions posed by Canada, the European Communities
and their member States, Japan, Switzerland and the United States
By means of communications from the delegation of Dominica dated 20 September 2001, the
Secretariat has received the following responses  to questions posed by Canada, the European
Communities and their member States, Japan, Switzerland and the United States, as circulated indocuments IP/C/W/261, 261/Add.1, 274, 258, 263 and 268, respectively.
_______________
CANADA
1. Please describe how the enforcement obligations (Articles 41-61 of the TRIPS Agreement and
throughout) have been implemented.
Article 41
Section 31 of the Copyright Bill states that the Copyright in a protected work is infringed by
any person who not being the owner of the Copyright in that work, and without the licence of suchowner does or authorises the doing in relation to that work.
The Article in section 32 prohibits the importation of an infringing copy.Section 37 provides for infringement to be actionable by a copyright owner and section 38
provides for an order for delivery in civil proceedings.
Part IX – This part provides for a person who owns copyright in a work by written notice to
the Comptroller to request him to detain any such  pirated copy as may come into the control or
custody of customs.
Section 102  gives the power to the Court upon application to make an order that:(a) a notice be discharged;
(b) an item detained be released;
(c) determine whether an item which the Comptroller has determined to be a pirated copy
is indeed such a copy
It further provides for notice of proceedings to be served on the Comptroller.IP/C/W/275/Rev.1
Page 2
Further it provides that in proceedings under sub section 1 (e) the Court shall issue directions
as to the service of notice on any person having an interest in the item, the subject of the proceedings,
and any such interested person shall be entitled to:
(a) appear in those proceedings whether or not he was served with a notice under
section 61; and
(b) appeal against any order made in those proceedings, whether or not that person
appeared in the proceedings;
(c) no order made in the proceedings under subsection (3) shall take effect until the end
of the period within which notice of an appeal may be given or, if before the end of
that period notice of appeal is duly given until the end of the final determination orabandonment of the proceedings on appeal.
Section 91 provides for an application to th e Court for review of order as to licence.
Article 44
Section 41 Patents "a Plaintiff in proceedings for infringement shall be entitled to relief by way of:
(a) an injunction;
(b) the seizure forfeiture and destruction of an infringing product or any thing by means
of which an infringing product was produced;
(c) damages;
(d) an account of the profits derived from the infringement; or
(e) any other relief provided for in general law."
Copyright Act
Section 35 provides that the permission for use of premises for an infringing performance is
an offence.
The following remedies are available to the Plaintiff:(a) damages;
(b) an injunction;
(c) seizure or destruction of an infringing copy and its packaging as well as of any
implements used to commit an infringement;
(d) accounts;
(e) expenses and legal costs incurred as  a result of the infringement or
(f) any other remedy which is available to the plaintiff in respect of the infringement of
any other property right.
Section 38 provides for an order for delivering up in civil proceedings.IP/C/W/275/Rev.1
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Section 39 gives the right to seize infringing copies.
Section 40 and 41 provide for the rights and remedies of exclusive licence and the exercise of
concurrent rights.
Section 20 gives the Registrar the power to grant an extension of time for doing any act under
the legislation.
Section 24 of the Industrial Designs Act 2 of 1998 provides for the (section 2(1)) delivering
up or destruction of any infringing product, article or product which the infringing product form an
inseparable part.
Section 13 provides for inspection of registered designs.
De minimis  imports
Section 21 provides that no copyright shall subsist in any official text of a legislative
administrative or legal nature or any translation thereof:
Article 61:  Criminal procedures
In the Trade Marks Legislation section 29:
(1) any person who performs an act constitutes an infringement is liable to a fine not less
than ten thousand dollars but not more than thirty thousand dollars or to
imprisonment for a term of not less than three years but not more than ten years or to
both such fine and such imprisonment;
(2) any person who forges a mark or collective mark.
Any person who makes false representations to the Registrar are all liable on
conviction to a fine or both fine and imprisonment.
Article 42:  Fair and Equitable Procedures
Section 99(2) provides for notice containing such particulars as may be prescribed in support
of the claim that the item is pirated.
This provides for a period for which the notice shall be in force, that is no longer than five
years.
Where the copyright in the work to which the notice relates will expire within the five year
period referred to not be longer than the period for which the copyright will last.
Patents
A protection for an offence under the Patents Act has a time limit of five years for
prosecution.
Section 62 any person who has been aggrieved by:
(2) a decision of the Minister or the Registrar under this Act, may within two months of
that decision appeal to the Court.IP/C/W/275/Rev.1
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Section 63 in proceedings for an offence under this section it shall be a defence for the
accused to prove that he used due diligence to prevent the commission of the offence.
2. What protection does your Copyright le gislation afford to "foreign works"?
Section 9 (3) of the Copyright Act on the protection of performers states "the provisions of
this Act on the protection of performers" shall apply to:
(a) performers who are not nationals of Dominica but whose performance:
(i) take place in Dominica;
(ii) are incorporated in sound recordings that are protected under this Act; or
(iii) have not been fixed in a sound recording but are included in broadcasts
qualifying for protection under this Act;
(b) A cable programme shall qualify for copyright protection if it is sent from a place in
Dominica or in a country prescribed in accordance with this Act or any law in force
regulating transmission by cable, provided that copyright shall not submit in anycable programme if:
(i) it is included in a cable programme service by reception and
immediate re transmission of a broadcast; or
(ii) it infringes, or to the extent that it infringes, the copyright in another cable
programme or in a broadcast.
Section 7: "the provisions in this Act shall also apply to performers, producers of sound
recordings and broadcasting organisations that are eligible for protection by virtue of, and in
accordance with any international convention or other international agreement to whichDominica is a party."
Section 9 (1): "the provisions of this Act relating to the protection of literary and artistic
works shall apply to:
(a) works of authors who are nationals of or have their habitual residences in Dominica.
(b) Works first published in Dominica, and works first published in another country and
also published in Dominica within thirty days of publication in that other country,
irrespective of the nationality or residence of their authors."
3. We understand that legislation on patents has been passed, but is not yet in force.
(a) When is this legislation likely to be effectively implemented?
The legislation will be implemented within the next three months.(b) What are the key improvements introduced by this legislation in respect of TRIPS
obligations?
On the new patent legislation, patent protection is available for any invention whether product
or process, in all fields of technology subject only to the test of novelty, inventiveness and industrialIP/C/W/275/Rev.1
Page 5
applicability.  The owner of a patent has exclusive right to exploit the product or process including the
right to assign and transfer.   Further, in civil proceeding for infringement where the subject matter of
the patent is a process, the defendant has the burden of establishing that the product was not made by
the patented process.  While the statute provides for compulsory licensing, the conditions outlined in
Article 31 of the TRIPS Agreement are also required by the statute.  Finally, an important
improvement is the enforcement regime included in th e regulation.  Provision is made for both civil
and criminal action.  Remedies include injunctions, damages, seizure, forfeiture, destruction, accountof profits, fines, and imprisonment.
4. We understand that there is draft legislation on copyright.
(a) When is this legislation likely to be effectively implemented?The legislation will be implemented within the next three months.
(b) What are the key improvements introduced by this legislation in respect of TRIPS
obligations?
The draft copyright legislation incorporates Articles 1 – 21 of the Berne Convention (1971) as
well as Article 6 bis (moral rights).  Computer programs and data compilations (databases) are also
protected as literary works.  The bill also protects the rights of performers, producers of sound
recordings and broadcasting organizations.  Infringement is actionable by the copyright owner.Further the owner of copyright may make a written request to the Comptroller of Customers to detain
suspected infringing goods.  The court has authority to award injunctions, damages, seizure,
forfeiture, destruction, account of profits, and in cases of criminal proceedings, fines, and
imprisonment.
5. We understand that there is draft legislation on the enforcement of intellectual property
rights, addressing issues such as the seizure of infringing goods.
(a) When is this legislation likely to be effectively implemented?
The legislation will be implemented within three months.
(b) What are the key improvements introduced by this legislation in respect of TRIPS
obligations?
Enforcement of IP legislation as regards to patents, geographical indications, plant varieties,
layout-designs (topographies) of integrated circuits, and trademarks have been enacted.  As regards
copyright, the legislation remains in draft form awaiting enactment.  In relation to trademarks/service
marks/utility models, patents, industrial designs, plant varieties and layout-designs of integrated
circuits the registered owner of the rights or the registered licensee has the right to institute civilaction.
1
In the case of geographical indications any interested person or group of interested persons or
any group of consumers or any competent authority may institute proceedings in the High Court.2
Competent authority is not defined in the Geographical Indications Act but this would
normally be an institution which have standing in the particular matter i.e. suffered loss or likely to
                                                     
1 Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2); Marks,
Collective Marks and Trade Names Act 1999 §28(2);Industrial Designs Act 1998 §24(1);Patents Act 1999
§41(1) & (6); Protection of New Plant Varieties Act 1999 Act §44(1).
2 Geographical Indications Act 1999 §13.IP/C/W/275/Rev.1
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suffer loss or is otherwise affected by an infrin gement. The institution would also need to have the
capacity to sue and be sued.
As to Copyrights it will be anyone claiming as owner of the copyright as a result of creation,
assignment or other transmission rights, or an exclusive licensee may institute civil action.3
In addition to the available civil actions listed above, intellectual property infringement also
constitutes criminal offences with corresponding penalties that include mandatory fines and or
imprisonment.4
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES
A. G ENERAL PROVISIONS
1. Please describe if your legislation includes measures necessary to protect public health and
nutrition, and to promote the public interest in sect ors of vital importance to your socio-economic and
technological development as mentioned under Arti cle 8 of the TRIPS Agreement.  If yes, please
explain how such measures are consistent with the provisions of the TRIPS Agreement.
As agreed pursuant to Article 8 of the TRIPS Agreement, Dominica, in formulating protection
for owners of intellectual property, has adopted measures necessary to protect public health and
nutrition, and to promote the public interest in sectors of vital importance to Dominica's socio-
economic and technological development.  Safeguards are incorporated in the IP legislation relating to
patents, layout-designs (topographies) of integrated circuits and new plant varieties.5  Compulsory
licences are granted on individual merits wherein the IP holder or indeed any interested party has theright to contest.
6  A recipient of a non-voluntary licence must pay adequate remuneration to the holder
of the right.  Where a decision to grant a non-voluntary license is made by the attorney general, the
owner of IP protection or any interested party, may appeal to the court.7  In any event the decision of
the High Court may be appealed.
B. C OPYRIGHT 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 1-21 of the Berne Convention and the Appendix to the
Berne Convention (1971)).
Under the Draft Copyright Bill that will come into effect within three months the author or
owner of copyright has exclusive right to do, authorize or prohibit:
- reproduction of the work;
- translation of the work;
                                                     
3 Draft Copyright Bill §37(1).
4Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §25; Marks, Collective
Marks and Trade Names Act 1999 §§17(3), 18, 28, 29;Industrial Designs Act 1998 §§24(5), 25;GeographicalIndications Act 1999 §§13, 23;Patents Act 1999 §§33, 36, 40, 63;Draft Copyright Bill§§51, 54, 55, 58;
Protection of New Plant Varieties Act 1999 Act §45.
5 5 Protection of New Plant Varieties Act 1999 Act § 51; Protection of Layout-Designs (Topographies)
of Integrated Circuits Act 1999 § 17; Patents Act 1999 §§ 35 & 38.
6 Id.
7 Id.IP/C/W/275/Rev.1
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- adaptation, arrangement or other form of transformation of the work;
- distribution to the public by sale, rental or public lending or otherwise of the original
or a copy of the work that has not already been subject to a distribution authorized by
the owner of copyright;
- rental or public lending of the original or a copy of an copyright work irrespective of
the ownership of the original or the copy concerned;
- importation of copies of the work;
- public display of the original or a copy of the work;
- public performance of the work;
- broadcasting of the work or including it in a cable programme service; and
- other communication of the work to the public.8
Original literary and artistic works are protected by their creation irrespective of mode of
expression content, quality and purpose.  Copyright in a literary, dramatic, musical or artistic work is
protected during the life of the author and for fifty years after her death.9  In the case of a work of
joint authorship, the economic rights shall be protecte d during the life of the last surviving author and
for fifty years after his death.10  In the case of a collective work11 other than a work of applied art, in
the case of audiovisual work,12 and in the case where the work is published anonymously, or under a
pseudonym,13 the economic rights is protected for fifty years from the date on which the work was
either made or first made available to the public or first published, whichever date is latest.  In the
case of computer generated works,14 sound recording  and film ,15 broadcast  or cable programme16
copyright expires fifty years from the year in which the work was made.  Copyright in the
typographical arrangement of a published edition expires twenty-five years after being first published.
Independent of her economic rights, and even where she is no longer the said owner or those
rights, Dominica's IP legislation provides the author with moral rights.17  These include the right –
- to have his name indicated prominently on the copies and in connection with any
public use of the work;
- to use a pseudonym;
- not to have a literary and artistic work falsely attributed to him as its author;
- not to have a film falsely attributed to him as its director; and
- to object to any distortion, mutilation or other modification of or other derogatory
action in relation to, his work which would be prejudicial to his honour or
reputation.18
While the above moral rights are not transmissible during the life of the author, they are transmissible
by testamentary disposition following his death.19
                                                     
8 Draft Copyright Bill §10(1).
9 Draft Copyright Bill §11(1).
10 See Draft Copyright Bill §11(2).
11 Draft Copyright Bill §11(3).
12 Id.
13 Draft Copyright Bill §11(4).
14 Draft Copyright Bill §11(5).
15 Draft Copyright Bill §12.
16 Draft Copyright Bill §13.
17 Draft Copyright Bill §15.
18 Id.IP/C/W/275/Rev.1
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3. Please describe the protection accorded to authors of computer programs, databases or
compilations of data.
Under the Draft Copyright Bill, a literary work includes a table or compilation and a computer
program.20  As such authors of computer programs or databases receive all rights listed in response to
question 2 above.
4. Please state whether your legislation provides for a rental right and, if so, the works to which
it applies.
Exclusive rental rights are available for audiovisual works, sound recordings, computer
programs, databases and musical works in the form of notations.21
5. Please describe the rights granted to performers, producers of phonograms (sound
recordings) and broadcasting organisations under your legislation.
Performers
Under the copyright legislation, a performer has the exclusive right to execute or authorize:
- broadcasting or other communicating of his performance to the public;
- the fixation of his unfixed performance;
- direct or indirect reproduction of a fixation of his performance;
- the first availability of a fixation or copy thereof of his performance to the public
through sale or transfer of ownership
- rental to the public or public lending of a fixation of his performance
- the availability to the public of his fixed performance by wire or wireless means, in
such a way that members of the public may access them from a place and at a timechosen individually by them.
22
Independent of the economic rights listed above and even after the transfer of those rights, the
copyright legislation guarantees oral rights.  As regards to live aural performances and performances
fixed in phonograms, the performer has the right to be identified as the performer of her
performances, and the right to object to any distortion, mutilation or other modification of herperformance that would be prejudicial to her reputation.
23
Producers of Sound Recordings
Producers of sound recordings have the exclusive right to execute or authorize:
- direct or indirect reproduction of the sound recording in any manner or form;
- import copies of the sound recording;
- make the sound recording available to the public by sale or other transfer of
ownership;
- rental or public lending of  the sound recording irrespective of ownership of the copy
rented or lent; and
                                                                                                                                                                    
19 Id at (3).
20 Draft Copyright Bill §2.
21 Draft Copyright Bill §10(e).
22 Draft Copyright Bill §26(1).
23 Draft Copyright Bill §26(3).IP/C/W/275/Rev.1
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- make the sound recording available to the public by wireless means.24
Broadcasting Organizations
Broadcasting organizations have the exclusive right to execute or authorize:
- re-broadcasting of its broadcast;
- communicating its broadcast to the public;- fixation of its broadcasts; and- reproducing a fixation of its broadcasts.
6. Please state whether your legislation provides for any limitation or exception in relation to
each of the rights described above in accordance with the relevant provisions of the Berne and Rome
Conventions and in light of Articles 13 and 14.6 of the TRIPS Agreement.
Notwithstanding the above outlined rights entitled to performers, sound recording producers
and broadcast organizations, the following acts are permitted:
(a) using short excerpts for reporting current events;
25
(b) reproduction solely for scientific research;26
(c) reproduction solely for face-to-face teaching activities except for performances and
phonograms that have been published as teaching or instructional materials;  and27
(d) private reproduction of a single copy by someone for his own personal use.28
7. Please state the terms of protection of each right described above and the work or subject
matter to which it applies.
The above performers rights are protected for fifty years after the performance took place, or
was fixed in a phonogram.29  Rights for the producers of sound recordings subsist for fifty years
following publication of the sound recording and where the sound recording has not been published,then for fifty years following the year of fixation.
30  The rights outlined for broadcast organizations
subsist for fifty years following the moment the broadcast takes place.31
8. Please state how your legislation grants the retroactive protection provided pursuant to
Article 18 of the Berne Convention (the obligation of which derives from Article 9 of the TRIPS
Agreement) and Article 14.6 of the TRIPS Agreement.
                                                     
24 §27(1) Draft Copyright Bill.
25 §30 Draft Copyright Bill.
26 Id.
27 Id.
28 §63(1) Draft Copyright Bill.
29 §26(6) Draft Copyright Bill.
30 Id at (2).
31 §29 Draft Copyright Bill.IP/C/W/275/Rev.1
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The new copyright legislation in Dominica applies to all works which at the moment of its
coming into force enjoyed copyright protection under prior legislation.32
C. T RADEMARKS
9. Please give the definition of a sign under your national legislation and explain under what
conditions it is protectable.
Under the laws of Dominica, while a "sign" is not specifically defined, a "mark" is defined as
any visible sign that is capable of distinguishing  the goods or services of an enterprise.33
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 laws of Dominica a sign that distinguishes the services of an enterprise – a service
mark – is protectable.34  So too are trade names – a name or designation by which a business or
enterprise is identified or distinguished.35  However, the requirement that the sign be visible, limits the
registrability of  elements such as sounds and perfumes.  To the extent that a container is capable of
distinguishing the goods and services of an enterprise, it too can be validly registered pursuant to the
laws of Dominica.
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.
There is no use requirement for the initial registration of a mark. However, on the application
of an interested party, the court may order the removal of a mark from the Register where in respect to
goods and services, the mark has not been used by the registered owner or licensee during acontinuous period of at least three years prior to application to the court.
36  The owner may contest the
order with evidence of special circumstances and that she does not intend to abandon the mark.37
Dominica trademark legislation does not define "use".
12. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
Yes.38  Registration expires after ten years from filing date and can be renewed for
consecutive periods of ten years.
13. Please describe the special requirements, if any, prescribed by your legislation concerning
the use of a trademark.
Dominica IP legislation has no special requirements concerning the use of a trademark.
                                                     
32 §108 Draft Copyright Bill.
33  §2 Marks Collective Marks, and Trade Names Act 1999.
34 Id.
35 Id.
36 §12 Marks Collective Marks, and Trade Names Act 1999.
37 Id.
38 §10 Marks Collective Marks, and Trade Names Act 1999.IP/C/W/275/Rev.1
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D. G EOGRAPHICAL INDICATIONS
14. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
There is no automatic bar on trademarks that incorporates a geographical indication, however,
registration will be refused where mark is likely to mislead the public or trade circles as regards to the
geographical origin of the goods or services concerned.39  Further, as regards trademarks that include
geographical indications for wines and spirits, the Registrar either ex officio or upon application of an
interested party, will refuse or invalidate an indication which misrepresents the origin of the wine or
spirit.40
15. Please give the definition of a geographical indication in your legislation.
Pursuant to Dominica IP laws, a "geographical indication" is an indication which identifies
any goods as originating in the territory of a country, or a region or locality in that territory, where agiven quality, reputation or other characteristic of the goods is essentially attributable to their
geographical origin.
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 laws of Dominica do not require a link between the characteristics of an indication and its
geographical origin, however, the indication must identify the geographical origin of the goods.
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.
Any interested person or interested groups of persons may institute proceedings in the High
Court to prevent, the use of a geographical indi cation identifying wines for wines not originating in
the place indicated by the geographical indication in question, or identifying spirits for spirits not
originating in the place indicated by the geographical indication in question, even where the true
origin of the goods is indicated or the geographical indication is used in translation or accompanied byexpressions such as "kind", "type", "style", "imitation" or the like.
41  In court proceedings, the High
Court is authorized to issue an  injunction, award damages and grant any other appropriate civil
remedy.42
18. Please explain how 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.
The laws of Dominica incorporate the exceptions available in Article 24.4 to 24.9 of the
TRIPS Agreement.43
                                                     
39 §14 Geographical Indications Act 1999.
40 §15 Geographical Indications Act 1999.
41 §13 Geographical Indications Act 1999.
42 Id.
43 See §§16 and 5(c) Geographical Indications Act 1999.IP/C/W/275/Rev.1
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E. I NDUSTRIAL DESIGNS
19. Please explain whether or not your legislation extends to the protection of designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are
protected.
Designs that provide a technical result and leaves no freedom as regards arbitrary features of
appearance cannot be protected as an industrial design.44  Notwithstanding, "any material whether or
not associated with lines or colours, which gives a special appearance to a product of industry or
handicraft and can serve as a pattern for a product of industry…." is inter alia  an industrial design.45
20. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
Under the laws of Dominica the owner of a registered design has the exclusive right in
Dominica to import any article bearing or embodying the protected design.46  As such, the registered
owner of the protected design has the right to institute court proceedings against any person who
infringes the design, wherein the court may grant relief by way of damages, injunction, delivery up for
destruction, and account of profits.47
21. Please state whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
Dominica's IP legislation does not provide for compulsory licensing for industrial designs.
22. Please indicate for what period of time your  legislation grants protection for industrial
designs.
Dominica's IP legislation provides for an initial  protection period of five years with option of
renewal for two further consecutive five-year periods for industrial designs.48
F. P ATENTS
23. Please describe how your legislation defines the notions of: novelty, inventiveness and
industrial application.
Under the Patent regulation of Dominica the novelty requirement is achieved if prior to the
filing date or priority date, whichever is applicable, the subject invention has not been disclosed to the
public anywhere in the world by oral or written description or by use or by any other way.49
However, the Act will disregard a public disclosure which occurred during the 12 months
immediately preceding the filing or priority date whichever applicable, where the disclosure is a direct
consequence of acts committed by the applicant or his predecessor in title or an abuse committed by a
third party with regard to the applicant or his predecessor in title.50
                                                     
44 §2 Industrial Designs Act 1998.
45 Id.
46 Id at §10.
47 Id at §24.
48 Id at §11.
49 §9 Patents Act 1999.
50 §9(3) Patents Act 1999.IP/C/W/275/Rev.1
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Under the Patent regulations, an inventive step is defined as non-obvious to a person having
ordinary skill in the art.51
Further, under the Act, industrial application requires the invention be capable of being made
or used in industry.52
24. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how theseexclusions are applied in legal as well as practical terms.
The Patents Act 1999 recognizes a patent as personal property with the owner having
exclusive authority to exploit it.
53  Exploitation of a patented invention by any person other than the
patent owner requires the latter's authorization.54  Section 33(2) of the Act defines "exploitation" as:
(a) making, importing in the Country, offering for sale, selling, using, stocking for the
purposes of offering for sale or selling or using a patented product; or
(b) using a patented process and doing any act in paragraph (a) in respect to any product
obtained from the patented process.
In addition, the patent owner has a right to assign, mortgage, or sublicense the patent.55
To secure rights pursuant to Article 28 of the TRIPS Agreement, the patent owner has the
right to bring a civil action against any person who exploits his patented invention in Dominica
without his authorization subject to the following exclusions:
- acts of infringement which occur on vehicles of other countries that temporarily or
accidentally enter the airspace, territory or waters of Dominica;
- acts done for experimental purposes only;- acts pertaining to articles which have been put on the market in Dominica by the
patent owner or with his consent
- extemporaneous preparations of medicine for individual cases in pharmacy; or- acts performed by any person who in good faith was using the invention before the
patent owner filed for protection.
56
25. Please explain whether your legislation provides 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.
Dominica patent legislation incorporates certain exclusions to patentable subject matter in
accordance with Article 27.2 of the TRIPS Agreement.  Patent protection will not be granted where it
is necessary to prevent the commercial exploitation of an invention to protect public order or moralityincluding to protect human, animal or plant life or health; or to avoid serious prejudice to the
environment.
57  To date the provision has not been applied in practice.
                                                     
51 §10 Patents Act 1999.
52 §11 Patents Act 1999.
53 §§31 & 33 Patents Act 1999.
54 §33(1) Patents Act 1999.
55 §31Patents Act 1999.
56 §33(3) Patents Act 1999.
57 §12(3) Patents Act 1999.IP/C/W/275/Rev.1
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26. Please explain whether or not diagnostic, th erapeutic and surgical methods are excluded
from patentability in your legislation. If so, please explain the relevant section of your legislation and
explain its formulation.
In accordance with Article 27.2 of the TRIPS Agreement, in Dominica there will be no grant
of patent for methods for the treatment of the human or animal body by surgery or therapy, as well asdiagnostic methods practiced on the human or animal body.
58
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 your
legislation and explain its formulation.
The Patents Act 1999 does not directly address the protection of micro-organism and non-
biological and micro-biol ogical processes, patent protection will not be available for discoveries.59
However, Dominica has instituted the 1999 Protection of New Plant Varieties Act to give plant
breeder's rights in respect of plant varieties that are new, distinct, homogenous and stable.60
28. Please describe how micro-organisms, non-essentially biological processes, microbiological
processes and plant varieties are protected in your legislation. Please explain, in this respect, the
relevant sections of your legislation.
The Patents Act 1999 provides that any international treaty in respect of industrial property to
which Dominica is party, will apply to matters dealt within the Act, and in case of conflict with the
provisions of the Act, the provisions of the international treaty will prevail.61  Micro-organisms, non-
biological and micro-biol ogical processes as provided for in Article 27.3(b) of the TRIPS Agreement
are thus protected.
29. Please explain how your legislation protects patent right holders against the importing and
against the offering for sale of a patented invention.
Under the IP statutes of Dominica, the patent holder has exclusive right to import and offer
for sale, the patented invention.62  The patent holder or the registered licensee has the right to institute
civil action to protect those rights.63 On the application of the right holder, or of a licensee, the court
may:
- grant an injunction to prevent infringement or an imminent infringement;- order the seizure, forfeiture or destruction of:
- any infringing product or article or any product or article of which the
infringing product or article forms an integral part; or
- any article, instrument or thing by means of which any such infringing
product or article was produced.
64
                                                     
58 §12 Patents Act 1999.
59 §12(1) Patents Act 1999.
60 §5 Protection of New Plant Varieties Act 1999.
61 §54 Patents Act 1999.
62 §33 Patents Act 1999.
63 §§41(1) & (6) Patents Act 1999.
64 §41(2) Patents Act 1999.IP/C/W/275/Rev.1
Page 15
30. Please state if your legislation provides for patent product protection of pharmaceutical and
agricultural chemical products.  In the affirmative, please indicate the legal reference.
Dominica IP legislation does not specifically provide for product protection of pharmaceutical
and agricultural chemical products.
31. Please clarify if the patent protection of a process, as provided for in your legislation, covers
the product obtained directly by that process.
Yes, under Dominica IP legislation, an invention may be a product or process.65
32. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TR IPS Agreement (e.g. submission of justification for
access to genetic material or prior inform consent to its use).  If such additional conditions exist,
please point out the relevant legislations and describe the additional conditions in detail.
There are no other conditions.
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 relevant legislation.
Dominica IP legislation does provide for limited exceptions to the exclusive rights conferred
by a patent.  The details can be found in Sections 33(4), 34,35 and 38 of the Patents Act 1999.
34. Please explain whether or not your legislation provides for compulsory licensing. If so, please
explain in detail the conditions under which a compulsory licence may be granted.  In particular,
please explain how your national le gislation considers individual merits in the authorization of such
use.
Exploitation authorized by the Attorney General:
The Patents Act 1999 permits the Attorney General, to authorize a government agency or a
designated third party to exploit the patented in vention, without the agreement of the patent owner,
where:
- the public interest so requires; or
- the Attorney General has determined that exploitation by the owner is anti-
competitive and the authorized exploitation would remedy such practice.66
A person who seeks a non-voluntary license under this provision must produce evidence that
the patent owner has declined to award a contra ctual license under reasonable commercial terms and
conditions, and within a reasonable time.67
Exploitation of the patent under the above terms is limited to the authorized purpose,
predominantly for the supply of the Dominican market, and, subject to adequate remuneration to the
patent owner.68  Further the Attorney General's decision is made after hearing from the patent owner
and other interested persons.69
                                                     
65 §8(2) Patents Act 1999.
66 §35(1) Patents Act 1999.
67 See §35(4) Patents Act 1999.  This evidence is not required in cases of national emergency or other
cases of extreme emergency; public non-commercial use; and anti-competitive practices as determined by theAttorney General.
68 §35(2) & (9)Patents Act 1999.
69 §35(3) Patents Act 1999.IP/C/W/275/Rev.1
Page 16
Non-voluntary licences authorized by the Court
Four years after a patent application has been filed, or three years after the patent has been
granted, whichever happens later, an interested person may apply to the Court for the grant of a non-
voluntary license on the grounds that the patented invention is not being sufficiently exploited in
Dominica.70  Where a non-voluntary license is issued, the Court will fix the scope, function, and time
limit for the license; and the amount and conditions of payment to the patent owner.71
The patent owner may avert the issuance of such non-voluntary licence if he provides
justification for the non-exploitation to the Court.72
Where the invention claimed in a later patent cannot be exploited without infringing on an
earlier patent, and, the later invention involves an important technical advance of considerable
economic importance vis-à-vis the earlier patent, the Court may issue a non-voluntary license to the
owner of the later patent to avoid infringement of the earlier patent.73
35. Please explain how your legislation explicitly ensures that a proposed user has made efforts
to obtain authorization from the right 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 that the use of acompulsory licence shall be authorised predominantly for the supply to the domestic market of the
Member authorizing such use.
The Patent legislation of Dominica requires the proposed user to furnish such evidence to the
court.
74
Notwithstanding, the regulation does not indicate the length of a "reasonable period of time".
Patents Act 1999 stipulates that "the exploitation of the patented invention by the Government
agency or third person designated by the Minister shall be predominantly for the supply of the market
in Dominica."75
36. Please state if your legislation grants additional protection for innovations after the 20 years
of patent protection has lapsed.
Dominica patent legislation makes no provision for protection beyond 20 years.76
37. Please explain how your legislation provides for the enhanced patent protection of patents or
patent applications pending on 1 January 1995.
Pursuant to Dominica legislation, patents granted under prior patents acts, and patent
applications pending under the prior patent act, are deemed to have been granted under the current
Patents Act 1999 and enjoys all additional rights.77
38. Please explain how your legislation provides for the reversal of the burden of proof in
relation to process patents.
                                                     
70 §38(1)( a) Patents Act 1999.
71 §38(2) Patents Act 1999.
72 §38(1)( b) Patents Act 1999.
73 §38(4) Patents Act 1999.
74 §35(4) Patents Act 1999.
75 §35(9) Patents Act 1999.
76 §28 Patents Act 1999.
77 §§ 72(1), (4) & (5) Patents Act 1999.IP/C/W/275/Rev.1
Page 17
In civil proceeding for infringement where the subject matter of the patent is a process, the
defendant has the burden of establishing that the product was not made by the patented.78
G. L AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
39. Please describe how your legislation protects Topographies.
The IP legislation of Dominica grants the creator of a layout-design (topography), the right to
protection as regards to reproduction, importation, sale or other commercial distribution.79  T h e
creator or owner of the topography also holds th e property right of assignment or transfer by
succession.  To be protected, the layout-design must be original.80  If the layout-design consists of a
combination of elements and inter-connections that are commonplace, then the combination as a
whole must be original in order to receive protection.81   A person wishing to register a layout-design
of integrated circuit must apply to the Registrar.  Protection is available only where the layout-design
has not been commercially exploited anywhere in  the world for more than two years prior to
application.82  Notwithstanding the above, reproduction of the protected layout for private purposes or
for the sole purpose of evaluation, analysis research or teaching is permitted.83
40. Please explain what protection your national legislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies includingintegrated circuits or other articles in which a topography is incorporated in accordance with
Article 36 of the TRIPS Agreement.
It is unlawful to reproduce the protected layout-design (topography) or integrated circuit; or
import, sell or distribute the same for commercial purposes, without the authorization of the rights
holder.
84  All of the aforementioned acts constitute an infringement of the laws of Dominica whereby
the rights holder may institute court action.85
41. Please explain how your legislation provides 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 thatit contains an unlawful topography.
Under the laws of Dominica, where someone has without authorization imported, sold or
otherwise commercially distributed a protected integrated circuit and that person has no knowledge or
reasonable grounds to know of unlawful topography, then an unlawful act has not been committed.
86
42. Please state the term of protection granted by your legislation to topographies.
The term of protection is 10 years after the date of commencement of protection.87
                                                     
78 § 41(7) Patent Act 1999.
79 §5 Protection of Layout-Designs (Topographies) of Integrated Circuits.
80 § 4 requires originality meaning – a creation of the creator's own intellect and not commonplace
among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
81 Id.  Thus the combination must be a creation of the creator's own intellect and not commonplace
among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
82 §8 Protection of Layout-Designs (Topographies) of Integrated Circuits 1999.
83 §6(3) Protection of Layout-Designs (Topographies) of Integrated Circuits 1999.
84 §6 Protection of Layout-Designs (Topographies) of Integrated Circuits Act 1999.
85 §24 Protection of Layout-Designs (Topographies) of Integrated Circuits Act 1999.
86 §6(3) Protection of Layout-Designs (Topographies) of Integrated Circuits Act 1999.
87 §7 Protection of Layout-Designs (Topographies) of Integrated Circuits Act 1999.IP/C/W/275/Rev.1
Page 18
H. P ROTECTION OF UNDISCLOSED INFORMATION
43. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information. If so, please give the time span.
Dominica has not drafted legislation to protect undisclosed information.
44. Please explain how your legislation defines undisclosed information.
Dominica has not drafted legislation to protect undisclosed information.
45. Please explain how your legislation defines da ta submitted to governments or governmental
agencies.
Dominica has not drafted legislation to protect undisclosed information
I. E NFORCEMENT
46. Please describe how your legislation provides for effective action against infringement of
intellectual property rights.
Civil and Administrative Action
As regards to trademarks, patents, industrial designs, plant varieties and layout-designs
(topographies) of integrated circuits the registered owner or licensee of the right has the right to
institute civil action.88
In the case of geographical indications any interested person, group of interested persons or
any competent authority may institute proceedings in the High Court.89
Competent authority is not defined in the Geographical Indications Act 199, but this would
normally be an institution which have standing in the particular matter i.e. suffered loss or likely to
suffer loss or is otherwise affected by an infrin gement. The institution would also need to have the
capacity to sue and be sued.
As regards to copyrights, anyone claiming as owner of the copyright as a result of creation,
assignment or other transmission rights, or an exclusive licensee may institute civil action.90
Criminal Action
In addition to the available civil actions listed above, intellectual property infringement also
constitutes criminal offences with corresponding penalties that include mandatory fines and or
imprisonment.91
                                                     
88 §24(2) Protection of Layout Designs of Integrated Circuits Act 1999; §28(2) Marks, Collective
Marks and Trade Names Act 1999; §24(1) Industrial Designs Act 1998; §§41(1) & (6) Patents Act 1999; §44(1)
Protection of New Plant Varieties Act 1999.
89 §13 Geographical Indications Act 1999.
90 §37(1) Draft Copyright Bill.
91 §25 Protection of Layout Designs of Integrated Circuits Act 1999;  §§17(3), 18, 28, 29 Marks,
Collective Marks and Trade Names Act 1999; §§24(5), 25 Industrial Designs Act 1999;  §§13, 23 Geographical
Indications Act 1999; §§33, 36, 40, 63 Patents Act 1999;  §§51, 54, 55, 58 Draft Copyright Bill;  §45 Protection
of New Plant Varieties Act 1999.IP/C/W/275/Rev.1
Page 19
47. Please explain whether or not your legislation provides for a mechanism to appeal to judicial
bodies of final administrative decisions.
As regards to all intellectual property protected in Dominica, any decision made by the
Attorney General or the Registrar may be brought to appeal before the Court.  Jurisdiction over IP
rights is exercisable by The Eastern Caribbean S upreme Court, which is a superior Court of Record
and comprises two divisions -the High Court, presided over by a single Judge and the Court of
Appeal. Final appeals are to the Judicial Committee of the Privy Council in England.
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.
The Civil Procedure Rules gives the Court authority to require a party to disclose and inspect
documentary evidence before trial, and to produce su ch evidence at the trial. Generally in requiring
production of evidence, the Court must take into account the legitimate interest of the defendant in not
disclosing his manufacturing and business secrets.
There are no statutory provisions respecting the identity and protection of confidential
information. The Court may in its discretion treat as confidential any information produced asevidence.  An application may be made to the court for such information to be treated as confidential.
The Court has discretion whether or not to grant the application.
49. Please quote provisions of your legislati on that authorize judges to order a defendant to
desist from an infringement.
The Intellectual Property (IP) Statutes provide for the granting of injunctive relief for
infringement of an IP right.
92  The Court will grant an interim injunction if the matter is urgent or
necessary in the interest of justice and damages would be an inadequate remedy in the circumstances.
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.
Remedial damages are consistently available in Dominica IP statutes.93  Damages generally
include the recovery of commercial losses occasioned by the infringement. In determining Damages
the Court must take into account reasonable royalty which may have been payable by a licensee.
Further damages, such as aggravated damages may be awarded if the circumstance in which theinfringement was committed was so scandalous as to merit such award.
51. Please quote what provisions of your legislation authorize judges to order the payment of the
right holder's expenses by the infringer.
An Order for Damages is normally accompanied by an Order for Payment of legal cost to the
successful party who is generally entitled to such costs.
                                                     
92 §24(2)(a) Protection of Layout Designs of Integrated Circuits Act 1999; §28(2)(a) Marks, Collective
Marks and Trade Names Act 1999; §24(2)(b) Industrial Designs Act) 1998; §13(2) Geographical IndicationsAct; §41(2)(a) Patents Act 1999; §37(2)(b) Draft Copyright Bill 1999; §44(2)(a) Protection of New PlantVarieties Act 1999.
93 §24(2)(b) Protection of Layout Designs of Integrated Circuits Act 1999; §28(2)(b) Marks, Collective
Marks and Trade Names Act 1999; Act §24(2)(a) Industrial Designs 1998; §13(2) Geographical Indications Act
1999; §41(2)(c) Patents Act 1999; §37(2)(a) Draft Copyri ght Bill 1999; §44(2)(c) Protection of New Plant
Varieties Act 1999.IP/C/W/275/Rev.1
Page 20
52. Please explain if and how judges have the authority to order that infringing goods are placed
outside channels of commerce or destroyed.
Under the Intellectual Property statutes the Court has power to make an Order on the
application of the IPR holder for the seizure, forfeiture or destruction of infringing products or
articles.94
53. Please quote what provisions of your legislation authorize judges to indemnify a defendant in
the event of abuse by the plaintiff.
The Court has the power to award damages or order the payment of compensation in favour
of a party which as been wrongfully enjoined as a party.  Generally, the successful party is entitled to
legal costs.  Further the applicant for an interim inj unction is required to give an undertaking that will
compensate the respondent if it is later determined that the grant of injunction was unjustified.95
54. Please explain how your legislation impl ements Article 50 of the TRIPS Agreement.
Part 17 of the Civil Procedure Rules, 2000 lists the interim remedies that may be granted by
the Court.  These include:
- interim injunctions;
- interim declarations;
- orders for the detention, custody or inspection of relevant property;
- orders to deliver up goods;
- freezing orders;
- orders to provide information about property or assets subject of a freezing Order;
- search orders;
- order for interim payment;
- any other interim Order as dictated by the circumstances of the case.
The High Court, in cases of urgency, will grant an  ex parte  injunction i.e. inaudita altera
parte .  However, the Court will only do so if it is satisfied that the matter is urgent and not doing so
would defeat the purpose of the application.  An e x parte  injunction Order may only be granted for a
maximum period of 28 days.
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 customs authorities.
                                                     
94 §24(2)(c) Protection of Layout Designs of Integrated Circuits Act 1999; §28(2)(c) Marks, Collective
Marks and Trade Names Act 1999; §24(2)(c) Industrial Designs Act 1998; §41(2)(b) Patents Act 1999;§37(2)(c) Draft Copyright Bill; §44(2)(b) Protection of New Plant Varieties Act 1999.
95 §24(2)(a) Protection of Layout Designs of Integrated Circuits Act 1999; §28(2)(a) Marks, Collective
Marks and Trade Names Act 1999; §24(2)(b) Industrial Designs Act 1998; §13(2) Geographical Indications Act
1999; §41(2)(a) Patents Act 1999; §37(2)(b) Draft Copyright Bill; §44(2)(a) Protection of New Plant Varieties
Act 1999.IP/C/W/275/Rev.1
Page 21
The Comptroller of Customs.96
56. Please indicate whether or not procedures are available to suspend the exporting of
counterfeit goods.
While special border protection measures have been adopted to curtail the importation of
counterfeit goods, there is no similar regime to suspend the export of counterfeit goods.
57. Please quote what provisions of your legislation authorize the competent authorities to order
the destruction or disposal of infringing goods.
Under all IP legislation the Court has exclusive authority to order disposal or destruction of
infringing goods.
58. Please indicate whether or not your legislation provides for a de minimis imports exception.
Yes.  Imports for personal use are not unlawful.
59. Please explain how your legislation impl ements Article 61 of the TRIPS Agreement.
Under the laws of Dominica, intellectual property infringement may constitute a criminal
offence with corresponding penalties that include mandatory fines and/or imprisonment.97  The High
Court has jurisdiction over criminal acts of infringement and the Court of Appeal has jurisdiction over
appeals while final appeal lies with the Judicial Committee of the Privy Council.
As regards to geographical indications, layout-designs of integrated circuits  and patents ,
persons who knowingly infringe on the protected intellectual property are liable to a minimum fine of
fifteen thousand dollars and/or a minimum term of imprisonment of five years.98
As regards to industrial designs, any person who intentionally commits an infringing act
commits an offence and is liable to a fine of twenty thousand dollars and imprisonment for fiveyears.
99
As regards to new plant varieties, any unautho rized person who wilfully offers for sale or
markets, propagating material of a variety protecte d in Dominica, is liable to a minimum fine of five
thousand dollars.100
As regards to trademarks, infringement of the protected mark, collective mark or trade name
constitutes an offence and is liable to a minimum fine of ten thousand dollars and/or minimum
imprisonment term of three years.101  Further, any person who performs the following commit an
offence and is liable to a minimum fine of fifteen thousand dollars and/or a minimum term ofimprisonment for five years:
- forge a mark or collective mark;
                                                     
96  §99 Draft Copyright Bill.
97 §25 Protection of Layout Designs of Integrated Circuits Act 1999; §§17(3), 18, 28, 29 Marks,
Collective Marks and Trade Names Act 1999; §§24(5), 25 Industrial Designs Act 1998; §§13, 23 Geographical
Indications Act 1999; §§33, 36, 40, 63 Patents Act 1999; §§51, 54, 55, 58 Draft Copyright Bill 1999; §45
Protection of New Plant Varieties Act 1999.
98 §23 Geographical Indications Act 1999; §63 Patents Act 1999; §25 Protection of Layout Designs of
Integrated Circuits Act 1999.
99 §24(5) Industrial Designs Act 1999.
100 §45 Protection of New Plant Varieties 1999.
101 §29 Marks, Collective Marks and Trade Names Act 1999.IP/C/W/275/Rev.1
Page 22
- make a die, block, machine or other instrument for the purpose of forging or of being
used for forging a mark or collective mark;
- dispose of, or has in his possession, any such die, block, machine or other instrument;
or
- import, sell or has for sale, goods that bear a forged mark or collective mark.102
In the case of protected copyright, any unauthorized person who infringes a copyright, in the
first case, is liable to a fine of twenty-five hundred dollars for each article to which the offence relates,
and, in the case of subsequent offences, the aforementioned fine plus imprisonment of twelve
months.103  Additionally, someone who knowingly makes or possesses an article specifically designed
or adapted for making copies of a particular copyright work, commits an offence and is liable in the
case of the first offence to a fine of fifteen thousand dollars, and, in the case of subsequent offences,
the aforementioned fine plus imprisonment of six months.104
JAPAN
A. C OPYRIGHT AND RELATED RIGHTS
1. Please explain exceptions or exemptions of the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbou ring Rights Law, if any, as permitted in
Articles 3 and 4 of the TRIPS Agreement.
There are no exceptions in the Copyright Act that applies only to foreigners and foreigners
from certain countries will not receive any particular treatment under the law.  All men will be
considered equal.
SWITZERLAND
A.G EOGRAPHICAL INDICATIONS
1. Please explain in detail how your legislation provides protection for geographical
indications.
Section 6 of Geographical Indications Act 1999 makes provisions for the following
person/parties to file an application for registration of a geographical indication.
(a) any person or group of persons carrying on an activity as a producer in the
geographical area specified in the application,  with respect to the goods specified in
the application;
(b) any group of consumers; or
(c) any competent authority.
Further, interested persons may within the prescribed period of time and in the prescribed
manner, give notice to of opposition to the registration of a geographical indication to the Registrar.105
In addition, geographical indications have protection in Dominica regardless of whether or
not they are registered.106
                                                     
102 Id.
103 §51(4) Draft Copyright Bill.
104 §§51(5) Draft Copyright Bill.
105 §9 Geographical Indications Act 1999.
106 §3 Geographical Indications Act 1999.IP/C/W/275/Rev.1
Page 23
Interested person/persons may institute court proceedings to prevent the unlawful use of
geographical indications, including the any use that c onstitutes an act of unfair competition within the
meaning of Article 10 bis of the Paris Convention.107  In court proceedings, the High Court is
authorized to issue an injunction, award damages and grant any other appropriate civil remedy.108
B.P ATENTS
2. Does your legislation grant patent protection to all categories of products or are there any
exceptions?  If so, please explain in detail what kind of exceptions exist  and how they comply with
Article 27 of the TRIPS Agreement.
As required by Article 27 of the TRIPS Agreement, Dominica Patents Act 1999 will grant a
patent for an invention which is new, involves an inventive step, and is capable of industrialapplication.
109
Exceptions
In accordance with Article 27.2 of the TRIPS Agreement, patent protection will not be
granted where it is necessary to prevent the commercial exploitation of an invention to protect public
order or morality including to protect human, animal or plant life or health; or to avoid seriousprejudice to the environment.
110
In addition there will be no grant of patent for:
(a) a scientific theory or mathematical method;
(b) a scheme, rule or method of doing business, performing a mental act or playing a
game; and
(c) methods for the treatment of the human or animal body by surgery or therapy, as well
as diagnostic methods practiced on the human or animal body.111
Dominica has also introduced the Protection of New Plant Varieties Act 1999 to give plant breeder'sright in respect of plant varieties that are new, distinct, homogenous and stable.
3. Does your legislation, in accordance with Article 27.1 in combination with Article 31 of the
TRIPS Agreement, consider impor tation as "working" a patent (and therefore preclude compulsory
licensing, if a product is being imported)?
Yes.
112
4. Does your legislation make the granting of a compulsory license subject to all the conditions
enumerated in Article 31 of the TRIPS Agreement?  Please cite the relevant provisions of law.
Yes.  Conditions are stipulated in Section 38 Patents Act 1999.
5. Does your legislation provide for the principle of the reversal of burden of proof in a process
patent litigation?  Please cite the relevant provisions of law.
                                                     
107 §13 Geographical Indications Act 1999.
108 Id.
109 §8 Patents Act 1999.
110 §12(3) Patents Act 1999.
111 §12 Patents Act 1999.
112 §38 Patents Act 1999.IP/C/W/275/Rev.1
Page 24
Yes.  The provision can be found in Section 41(7) Patents Act 1999.
C.P ROTECTION OF UNDISCLOSED INFORMATION
6. Please explain in detail if your legislation ensures that undisclosed test or other data
submitted by an applicant to the responsible State agency in the procedure for market authorisation of
a pharmaceutical or of an agricultural chemical product is protected against disclosure and againstunfair commercial use by a competitor, for example by prohibiting a second applicant from relying
on, or from referring to the original data of the first applicant, when applying subsequently for market
authorisation for his own product.  Does your legisl ation provide for exceptions to this? If yes, under
what conditions would such exceptions apply?  Does your legislation set a specific term of protection
for undisclosed test or other data of the first applicant?
Dominica has no provisions for undisclosed information.
D.E NFORCEMENT
7. Please indicate remedies provided by your legislation, which constitute effective deterrents to
infringements of intellectual property rights.
Civil and Administrative Action
In relation to trademarks/service marks/ utility models, patents, industrial designs, plant
varieties and layout-designs of integrated circuits the registered owner of the rights or the registered
licensee has the right to institute civil action.113
In the case of geographical indications any interested person or group of interested persons or
any group of consumers or any competent authority may institute proceedings in the High Court.114
Competent authority is not defined in the Geographical Indications Act but this would
normally be an institution which have standing in the particular matter i.e. suffered loss or likely tosuffer loss or is otherwise affected by an infrin gement. The institution would also need to have the
capacity to sue and be sued.
As to Copyrights it will be anyone claiming as owner of the copyright as a result of creation,
assignment or other transmission rights, or an exclusive licensee may institute civil action.
115
Civil remedies:
- Injunctions
The Intellectual Property (IP) Statutes provide for the granting of injunctive relief for
infringement of an IP right.116  The Court will grant an interim injunction only if the matter is
urgent or it is necessary to do so in the interest of justice and damages would not be an
adequate remedy in the circumstances. The applicant for an interim injunction is required to
                                                     
113Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2); Marks,
Collective Marks and Trade Names Act 1999 §28(2);Industrial Designs Act 1998 §24(1); Patents Act 1999
§41(1) & (6); Protection of New Plant Varieties Act 1999 Act §44(1).
114Geographical Indications Act 1999 §13.
115Draft Copyright Bill§37(1).
116Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(a); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(a);Industrial Designs Act 1998 §24(2)(b);Geographical
Indications Act 1999 §13(2);Patents Act 1999 §41(2)(a);Draf t Copyright Bill§37(2)(b); Protection of New Plant
Varieties Act 1999 Act §44(2)(a).IP/C/W/275/Rev.1
Page 25
give an undertaking to compensate the respondent is it is later determined that the granting of
the injunction was not justified.
- Damages
Remedial damages are consistently available in Dominica the IP Statutes.117  D a m a g e s
generally include the recovery of commercial losses occasioned by the infringement. Indetermining Damages the Court must take into account reasonable royalty which may have
been payable by a licensee. Further damages, such as aggravated damages may be awarded if
the circumstance in which the infringement was committed was so scandalous as to merit
such award. An Order for damages is normally accompanied by an Order for payment of legal
cost to the successful party who is generally entitled to such costs.
- Seizure, forfeiture or destruction
Under the Intellectual Property (IP) Statutes  the Court has power to make an Order on the
application of the IPR holder for the seizure, forfeiture or destruction of infringing products or
articles.
118
- Account of profits and any other provision provided for in general law
The IP Statutes also allow a right holder to seek any other remedies provided for in the
general law.119  For instance, as an alternative to seeking an award of damages, a plaintiff may
seek an account of profits.  The Court in such circumstances is required to make an
assessment of the profits gained by infringer consequent on the infringement and to pay this
over to the right holder.
Criminal Action
In addition to the available civil actions listed above, under the laws of Dominica, intellectual
property infringement may constitute a criminal offence with corresponding penalties that includemandatory fines and/or imprisonment.
120  The High Court has jurisdiction over criminal acts of
infringement and the Court of Appeal has jurisdiction over appeals while final appeal lies with the
Judicial Committee of the Privy Council.
As regards geographical indications, layout-designs of integrated circuits  and patents , persons
who knowingly infringe on the protected intellectual property are liable to a minimum fine of fifteen
thousand dollars and/or a minimum term of imprisonment of five years.121
                                                     
117Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(b); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(b);Industrial Designs Act 1998 §24(2)(a);Geographical
Indications Act 1999 §13(2);Patents Act 1999 §41(2)(c);Draf t Copyright Bill§37(2)(a); Protection of New Plant
Varieties Act 1999 Act §44(2)(c).
118Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(c); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(c);Industrial Designs Act 1998 §24(2)(c);Patents Act 1999§41(2)(b);Draft Copyright Bill§37(2)(c); Protectio n of New Plant Varieties Act 1999 Act §44(2)(b).
119Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(d); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(d);Industrial Designs Act 1998 §24(2)(d);Geographical
Indications Act 1999 §13(2);Patents Act 1999 §41(2)(d) & (e);Draft Copyright Bill§37(2)(d), (e) & (f).
120 §25 Protection of Layout Designs of Integrated Circuits Act 1999; §§17(3), 18, 28, 29 Marks,
Collective Marks and Trade Names Act 1999; §§24(5), 25 Industrial Designs Act 1998; §§13, 23 GeographicalIndications Act 1999; §§33, 36, 40, 63 Patents Act 1999; §§51, 54, 55, 58 Draft Copyright Bill; §45 Protection
of New Plant Varieties Act 1999.
121 §23 Geographical Indications Act 1999; §63 Patents Act 1999; §25 Protection of Layout Designs of
Integrated Circuits Act 1999.IP/C/W/275/Rev.1
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As regards industrial designs, any person who intentionally commits an infringing act
commits an offence and is liable to a fine of twenty thousand dollars and imprisonment for five
years.122
As regards new plant varieties, any unauthorized person who wilfully offers for sale or
markets, propagating material of a variety protecte d in Dominica, is liable to a minimum fine of five
thousand dollars.123
As regards trademarks, infringement of the protected mark, collective mark or trade name
constitutes an offence and is liable to a minimum fine of ten thousand dollars and/or minimum
imprisonment term of three years.124  Further, any person who performs the following commit an
offence and is liable to a minimum fine of fifteen thousand dollars and/or a minimum term of
imprisonment for five years:
- forge a mark or collective mark;
- make a die, block, machine or other instrument for the purpose of forging or of being
used for forging a mark or collective mark;
- dispose of, or has in his possession, any such die, block, machine or other instrument;
or
- import, sell or has for sale, goods that bear a forged mark or collective mark.125
In the case of protected copyright, any unauthorized person who infringes a copyright, in the
first case, is liable to a fine of twenty-five hundred dollars for each article to which the offence relates,
and, in the case of subsequent offences, the aforementioned fine plus imprisonment of twelve
months.126  Additionally, someone who knowingly makes or possesses an article specifically designed
or adapted for making copies of a particular copyright work, commits an offence and is liable in thecase of the first offence to a fine of fifteen thousand dollars, and, in the case of subsequent offences,
the aforementioned fine plus imprisonment of six months.
127
8. Please describe any new initiatives that are planned to improve enforcement of intellectual
property rights in your country, particularly initiatives related to criminal enforcement.
As evidenced above, criminal legislation in regards to infringement of intellectual property
rights are comprehensive.  The challenge now lies in the financial and human capacity necessary to
enforce the regulations.  In that regard, Dominica is committed to continuous review of the system to
ensure appropriate enforcement.
                                                     
122 §24(5) Industrial Designs Act 1999.
123 §45 Protection of New Plant Varieties 1999.
124 §29 Marks, Collective Marks and Trade Names Act 1999.
125 Id.
126 §51(4) Draft Copyright Bill.
127 §§51(5) Draft Copyright Bill.IP/C/W/275/Rev.1
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UNITED STATES
A.G ENERAL
1. Please describe, in relation to each form of intellectual property covered by the TRIPS
Agreement, including plant variety protection, the manner in which nation treatment and most
favoured nation treatment are provided to nationals of other WTO Members and cite to the relevantprovisions of law.
In regards to patents, the laws of Dominica allow "any person" to apply for a patent
128 with no
discrimination based on nationality.
With regards to trademarks, industrial designs , layout-designs (topographies) of integrated
circuits, and new plant varieties , the nationality of the applicant affects neither the registrability of the
intellectual property right,129 nor the rights conferred.130  Further, Dominica's legislation provides
where Dominica is a signatory state of an international treaty in respect of marks, collective marks,
trade names, and protection against unfair competition, the provisions of the international treaty
prevails.131
With regards to geographical indications, any person or group of persons , carrying on
producer activities in the geographical area specified in the application, any group of  consumers; or
any competent authority may file an application to register a geographic indication.132
B.C OPYRIGHT AND RELATED RIGHTS
2. Please explain how the copyright law of Domi nica  protects computer programs as literary
works  and complications of data as required by Article 10 of the TRIPS Agreement.
Under the Draft Copyright Bill that will come into effect within three months, a literary work
includes a table or compilation and a computer program.133  All original literary works are protected
by the sole fact of their creation irrespective of mode of expression content, quality and purpose.  The
author or owner of copyright has exclusive right to do, authorize or prohibit:
- reproduction of the work;
- translation of the work;
- adaptation, arrangement or other form of transformation of the work;
- distribution to the public by sale, rental or public lending or otherwise of the original
or a copy of the work that has not already been subject to a distribution authorized by
the owner of copyright;
- importation of copies of the work;
- public display of the original or a copy of the work;  and
- other communication of the work to the public.134
                                                     
128 Patents Act 1999 §13.
129 See §4 Marks, Collective Marks, and Trade names 1999; §10 Protection f New Plant Varieties 1999;
§4 Industrial Designs Act 1998; and §5 Protection of Layout-Designs (Topographies) of Integrated Circuits.
130 See §9 Marks, Collective Marks, and Trade names 1999; §17 Protection f New Plant Varieties 1999;
§10 Industrial Designs Act 1998; and §6(2) Protection of Layout-Designs (Topographies) of Integrated Circuits.
131 See §32 Marks, Collective Marks, and Trade names 1999.
132 See §6 Geographic Indications 1999.
133 §2 Draft Copyright Bill.
134 Draft Copyright Bill §10(1).IP/C/W/275/Rev.1
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3. Article 11 of the TRIPS Agreement requires that rental rights for computer programs and
cinematographic works be available.  Please cite to the corresponding provision of the copyright law
of Dominica.
Under the Draft Copyright Bill, in respect to co mputer programs or an audiovisual, the author
or owner of copyright has the exclusive right to authorize or prohibit rental of the original or copy ofthe work.
135
4. Please state the length and terms of protection the copyright law of Dominica provides  for a
work other than a photographic work or a work of applied art and cite to the relevant provision of
law.
Under the Draft Copyright Bill, copyright in a literary, dramatic, musical or artistic work is
protected during the life of the author and for fifty years after her death.136  In the case of a work of
joint authorship , the economic rights shall be protected during the life of the last surviving author
and for fifty years after his death.137  In the case of a collective work138 other than a work of applied
art, in the case of audiovisual work,139 and in the case where the work is published anonymously, or
under a pseudonym,140 the economic rights is protected for fifty years from the date on which the
work was either made or first made available to the public or first published, whichever date is latest.
In the case of computer generated works,141 sound recording  and film ,142 broadcast  or cable
programme143 copyright expires fifty years from the year in which the work was made.  Copyright in
the typographical arrangement of a published edition expires twenty-five years after being first
published.
Independent of economic rights, and even where the author is no longer the owner of those
rights, Dominica's IP legislation provides the author with moral rights.144
5. Please describe the protection the copyright law of Dominica provides for performers, and
the term of the protection.
Under the Draft Copyright Bill that will come in to effect within three months, a performer has
the exclusive right to carry out or authorize:
(a) broadcasting or other communicating of his performance to the public;(b) the fixation of his unfixed performance;(c) direct or indirect reproduction of a fixation of his performance;(d) the first availability of a fixation or copy thereof of his performance to the public
through sale or transfer of ownership;
(e) rental to the public or public lending of a fixation of his performance;
                                                     
135 Draft Copyright Bill §10(1)(e).
136 Draft Copyright Bill §11(1).
137 Draft Copyright Bill §11(2).
138 Draft Copyright Bill §11(3).
139 Id.
140 Draft Copyright Bill §11(4).
141 Draft Copyright Bill §11(5).
142 Draft Copyright Bill §12.
143 Draft Copyright Bill §13.
144 Draft Copyright Bill §15.IP/C/W/275/Rev.1
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(f) the availability to the public of his fixed performance by wire or wireless means, in
such a way that members of the public may access them from a place and at a time
chosen individually by them.145
Further, independent of the performer's economic rights and even after the transfer of those
rights, as regards to her live aural performances and performances fixed in phonograms, the performer
has the right to claim to be identified as the performer of her performances, , and the right to object to
any distortion, mutilation or other modification of her performance that would be prejudicial to her
reputation.146
The above rights are protected for fifty years after the performance took place, or was fixed in
a phonogram.147
Notwithstanding the rights of the performer outlined above, the following acts are permitted:
(a) using short excerpts for reporting current events;148
(b) reproduction solely for scientific research;149
(c) reproduction solely for face-to-face teaching activities except for performances and
phonograms that have been published as teaching or instructional materials;150
(d) private reproduction of a single copy by someone for his own personal use.151
6. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to enjoy the
right to authorize or prohibit the direct or indirect reproduction of their phonograms.  Article 14.2
requires that producers of phonograms are to have the right to authorize or prohibit the commercial
rental to the public of originals or copies of their phonograms.  Please describe how the copyright
law of Dominica implements these obligat ions and indicate the term of protection.
Under the Draft Copyright Bill that will come into effect within three months  2001, the
producer of a sound recording has the exclusive right to execute or authorize:
(a) direct or indirect reproduction of the sound recording, in any manner or form;  and
(b) rental to the public or public lending of a copy of the sound recording irrespective of
the ownership of the copy rented or lent.152
The above rights are protected for fifty years after publication of the sound recording or
fixation of an unpublished sound recording.153
C.T RADEMARKS
7. Please describe the subject matter that can comprise a trademark under the trademark law of
Dominica.
                                                     
145 Draft Copyright Bill §26(1).
146 Draft Copyright Bill §26(3) notwithstanding, the author does not have a right to be so named where
omission is dictated by the manner of the use of the performance.
147 Draft Copyright Bill §26(6).
148 Draft Copyright Bill §30.
149 Id.
150 Id.
151 Draft Copyright Bill §63(1).
152 Draft Copyright Bill §27.
153 Draft Copyright Bill §26(6).IP/C/W/275/Rev.1
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Under the laws of Dominica any visible sign which is capable of distinguishing the goods or
services of an enterprise can comprise the subject matter of a mark.
8. Please describe the procedure that must be followed to register a trademark in Dominica,
citing the relevant provisions of the law, and descri be the rights that the owner of a registered mark
can exercise.
Pursuant to Marks, Collective Marks, and Trade Names 1999 §5, an application for
registration of a mark must be filed with the Registrar on a prescribed form and accompanied with the
prescribed application fee.  Upon receipt of the application, the Registrar will examine whether the
application contains:
(a) a request the mark be registered;
(b) a reproduction of the mark;  and
(c) a list of the goods or services for which registration of the mark is requested, listed
under the applicable class or classes of the international Classification.
Where the Registrar finds that the requirements for registration have been fulfilled and the
registration of the mark has not been opposed154 within the prescribed time limit or the registration of
the mark has been opposed but has been decided in the applicant's favour, s/he shall register the mark
in the Register, publish a reference to the registra tion in the Journal, and issue to the applicant a
certificate of registration.
The owner of a registered mark, has exclusive right to the mark.155  Thus, no other person
may use the mark without the authorization of the owner.  The owner of the mark has a right to
institute a High Court proceedings against any pe rson who uses the mark without his authorization.156
The High Court may award the any remedies provided for in the general law as well as following
remedies pursuant to Marks, Collective Marks and Trade Names:
(a) injunction;(b) damages;(c) order the seizure, forfeiture or destruction of any infringing product or any instrument
used to produce the infringing mark.
In addition to the rights that may be exerci sed by the owner, any person who infringe on a
mark or who does the following commits an offence and is liable to a fine or imprisonment or both:
(a) makes any die, block, machine or other instrument for the purpose of forging a mark
or collective mark;
                                                     
154 Pursuant to Marks, Collective Marks and Trade Names 1999, an interested party may give notice of
opposition to the Registrar within the prescribed period of time on the ground that the mark is:
(a) incapable of distinguishing the goods or services of one enterprise from those of the other
enterprises;
(b) contrary to public order or morality;(c) likely to mislead the public or trade circles;(d) identical to or in an imitation of or contains an …
155 §3 Marks, Collective Marks and Trade Names 1999.
156 §9 Marks, Collective Marks and Trade Names Act  1999.IP/C/W/275/Rev.1
Page 31
(b) disposes of,  or has in his possession, any such die, bloc, machine or other instrument;
(c) sells, or has in his possession for sale any goods which contain a forged mark or
collective mark; or
(d) imports into the State any product bearing a forged mark or collective mark.
9. Please provide the length and terms of protection the trademark law of Dominica provides for
a trademark.
Registration of a mark expires 10 years from the date of filing the application.
D.G EOGRAPHICAL INDICATIONS
10 . Please describe in detail how the laws of Dominica provide for the recognition and protection
of geographical indications required by Article 22.2 of the TRIPS Agreement, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications so protected.
Section 6 of Geographical Indications Act 1999 makes provisions for the following
person/parties to file an application for registration of a geographical indication.
(a) any person or group of persons carrying on an activity as a producer in the
geographical area specified in the application, with respect to the goods specified in
the application;
(b) any group of consumers;  or
(c) any competent authority.
Further, interested persons may within the prescribed period of time and in the prescribed
manner, give notice to of opposition to the registration of a geographical indication to the Registrar.157
In addition, geographical indications have protection in Dominica regardless of whether or
not they are registered.158
Interested person/persons may institute court proceedings to prevent the unlawful use of
geographical indications, including the any use that c onstitutes an act of unfair competition within the
meaning of Article 10 bis of the Paris Convention.159  In court proceedings, the High Court is
authorized to issue an injunction, award damages and grant any other appropriate civil remedy.160
11. Please describe in detail the manner in which the additional protection required for wines
and spirits under Article 23.1 of the TRIPS Agre ement is implemented, citing to the relevant
provisions of law or regulation, and provide examples of geographical indications for such products.
Any interested person or interested groups of persons may institute proceedings in the High
Court to prevent, the use of a geographical indi cation identifying wines for wines not originating in
the place indicated by the geographical indication in question, or identifying spirits for spirits not
originating in the place indicated by the geographical indication in question, even where the true
origin of the goods is indicated or the geographical indication is used in translation or accompanied by
expressions such as "kind", "type", "style", "imitation" or the like.161  In court proceedings, the High
                                                     
157 §9 Geographical Indications Act 1999.
158 §3 Geographical Indications Act 1999.
159 §13 Geographical Indications Act 1999.
160 Id.
161 §13 Geographical Indications Act 1999.IP/C/W/275/Rev.1
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Court is authorized to issue an  injunction, award damages and grant any other appropriate civil
remedy.162
 E.I NDUSTRIAL DESIGNS
12. Please describe the procedure that must be followed to obtain protection for textile designsand cite to the relevant provisions of law or regulation.
Pursuant to the Industrial Design Act 1998 "any material whether or not associated with lines
or colours, which gives a special appearance to a product of industry or handicraft and can serve as a
pattern for a product of industry…." is inter alia  an industrial design.
163
To obtain protection for an industrial design, an application for registration must be filed with
the Registrar accompanied with the required application fee.164
F.P ATENTS
13. Please describe in detail the way in which the patent law of Dominica implements Article 27
of the TRIPS Agreement, indicating any exceptions pr ovided for, and including details regarding the
protection for micro-organisms and non-biological and microbiological processes and plant varieties.
Please cite to the relevant provisions of the law.
As required by Article 27 of the TRIPS Agreement, Dominica Patents Act 1999 will grant a
patent only for an invention which is new, involves an inventive step, and is capable of industrial
application.165
An invention is considered new if prior to the filing date or priority date, whichever
applicable, the subject invention has not been disclosed to the public anywhere in the world by oral orwritten description or by use or by any other way.
166  However, the Act will disregard a public
disclosure which occurred during the 12 months immediately preceding the filing or priority date
whichever applicable, where the disclosure is a direct consequence of acts committed by the applicant
or his predecessor in title or an abuse committed by a third party with regard to the applicant or his
predecessor in title.167
Under the Patent regulations, an inventive step is non-obvious to a person having ordinary
skill in the art.168
Further, under the Act, industrial application requires that he invention can be made or used in
industry.169
Exceptions:
In accordance with Article 27.2 of the TRIPS Agreement, patent protection will not be
granted where it is necessary to prevent the commercial exploitation of an invention to protect public
order or morality including to protect human, animal or plant life or health; or to avoid serious
prejudice to the environment.170
                                                     
162 Id.
163 §2 Industrial Design Act 1998.
164 §5 Industrial Design Act 1998.
165 §8 Patents Act 1999.
166 §9 Patents Act 1999.
167 §9(3) Patents Act 1999.
168 §10 Patents Act 1999.
169 §11 Patents Act 1999.
170 §12(3) Patents Act 1999.IP/C/W/275/Rev.1
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While the Patents Act 1999 does not directly address the protection of micro-organism and
non-biological and micro- biological processes, patent protection will not be available for
discoveries.171  In addition there will be no grant of patent for:
(a) a scientific theory or mathematical method;
(b) a scheme, rule or method of doing business, performing a mental act or playing a
game; and
(c) methods for the treatment of the human or animal body by surgery or therapy, as well
as diagnostic methods practiced on the human or animal body.172
Plant varieties
Dominica has also instituted Protection of New Plant Varieties Act 1999 to give plant
breeder's right in respect of plant varieties that are new, distinct, homogenous and stable.
14. Please describe in detail the rights provided patent holders under the patent law of Dominica
and cite to the relevant provisions of law.
The Patents Act 1999 recognizes a patent as personal property with the owner having
exclusive authority to exploit it.173  Exploitation of a patented invention by any person other than the
patent owner requires the latter's authorization.174  §33(2) of the Act defines "exploitation" as:
(a) making, importing in the Country, offering for sale, selling, using, stocking for the
purposes of offering for sale or selling or using a patented product; or
(b) using a patented process and doing any act in paragraph (a) in respect to any product
obtained from the patented process.
The patent owner has the right to bring a civil action against any person who exploits his
patented invention in Dominica without his authorization.175
15. Please describe in detail any provisions in the laws of Dominica permitting unauthorized useof a patent, citing to the relevant provisions of law, and describe in detail the conditions under which
such use can occur.
Exploitation authorized by the Attorney General:
The Patents Act 1999 permits the Attorney General, to authorize a government agency or a
designated third party to exploit the patented in vention, without the agreement of the patent owner,
where:
(a) the public interest so requires;  or(b) the Attorney General has determined that  the manner of exploitation by the owner is
anti-competitive and the authorized exploitation would remedy such practice.
176
                                                     
171 §12(1) Patents Act 1999.
172 §12 Patents Act 1999.
173 §31 Patents Act, §33 Patents Act.
174 §33(1) Patents Act 1999.
175 §33(3) Patents Act 1999.
176 §35(1) Patents Act 1999.IP/C/W/275/Rev.1
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In certain circumstances, a person who seeks the Minister's authorization must produce
evidence that the patent owner has declined to award a contractual license under reasonable
commercial terms and conditions, and within a reasonable time.177
Exploitation of the patent under the above terms is limited to the authorized purpose,
predominantly for the supply of the Dominican market, and, subject to adequate remuneration to thepatent owner.
178  Further the Attorney General's decision is made after hearing from the patent owner
and other interested persons.179
Non-voluntary licences authorized by the Court
In addition, four years after a patent application has been filed, or three years after the patent
has been granted, whichever happens later, an interested person may apply to the Court for the grant
of a non-voluntary license on the grounds that the patented invention is not being sufficientlyexploited in Dominica.
180  Where a non-voluntary license is issued, the Court will fix the scope,
function, and time limit for the license; and the amount and conditions of payment to the patent
owner.181
The patent owner may avert the issuance of such non-voluntary licence if he provides
justification for the non-exploitation to the Court.182
Where the invention claimed in a later patent cannot be exploited without infringing on an
earlier patent, and, the later invention involves an important technical advance of considerable
economic importance vis-à-vis the earlier patent, the Court may issue a non-voluntary license to theowner of the later patent to avoid infringement of the earlier patent.
183
16. What term of protection does the patent law of Dominica provide for patents?  Please
describe any provisions for extension of the term of protection and cite to the relevant provisions of
the law.
A patent will expire 20 years after date of filing the application.  To maintain the patent, the
owner or applicant must pay a prescribed annual fee in advance to the registrar every year starting one
year after filing date.
G.L AYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
17. Please describe in detail the protection for layout-designs of integrated circuits providedunder the laws of Dominica, including the term of protection, and cite to the relevant provisions of
law.
The right to protection of a layout-design belongs to the creator.
184  Within that right is the
right of assignment or transfer by succession.  The term of protection is 10 years after the date of
commencement of protection.185  To be protected, the layout-design must be original.186  If however,
                                                     
177 See §35(4) Patents Act 1999.  This evidence is not required in cases of national emergency or other
cases of extreme emergency; public non-commercial use; and anti-competitive practices as determined by theAttorney General.
178 §35(2) & (9)Patents Act 1999.
179 §35(3) Patents Act 1999.
180 §38(1)( a) Patents Act 1999.
181 §38(2) Patents Act 1999.
182 §38(1)( b) Patents Act 1999.
183 §38(4) Patents Act 1999.
184 §5 Protection of Layout-Designs (Topographies) of Integrated Circuits.
185 §7 Protection of Layout-Designs (Topographies) of Integrated Circuits.IP/C/W/275/Rev.1
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the layout-design consists of a combination of elements and inter-connections that are commonplace,
then the combination as a whole must be original in order to receive protection.187   A person wishing
to register a layout-design of integrated circuit must file an application form with the Registrar.
Protection is available only where the layout-design has not been commercially exploited anywhere in
the world for more than two years prior to application.188  It is unlawful to reproduce the protected
layout; or import, sell or distribute the protec ted layout for commercial purposes, without the
authorization of the rights holder.189  Notwithstanding the above, reproduction of the protected layout
for private purposes or for the sole purpose of evaluation, analysis research or teaching is permitted.190
H.P ROTECTION OF UNDISCLOSED INFORMATION
18. Please describe in detail how the laws of Dominica provide for the protection of undisclosedinformation as required by Article 39.2 of the TR IPS Agreement and provide citations to the relevant
provisions of law.
Dominica has not drafted legislation to protect undisclosed information
19. Please describe in detail the manner in which protection is provided test data regarding
pharmaceutical and agricultural chemical products submitted to the government in order to obtain
marketing approval in Dominica and cite to the relevant provisions of law.
Dominica has not drafted legislation to protect undisclosed information
20. Are other applicants for marketing approval for their own versions of a previously approved
pharmaceutical or agricultural chemical products pe rmitted to rely on data submitted by the earlier
applicant?  If so, how long a period of exclusivity is given the earlier applicant before such reliancebecomes possible.
Dominica has not drafted legislation to protect undisclosed information
I.E NFORCEMENT
21. Please describe in detail the manner in which the laws of Dominica provide for effective
action against infringement of intellectual property rights as required by Article 41.1 of the TRIPS
Agreement.
Civil and Administrative Action
In relation to trademarks/service marks, utility models, patents, industrial designs, plant
varieties and layout-designs of integrated circuits the registered owner of the rights or the registeredlicensee has the right to institute civil action.
191
In the case of geographical indications any interested person or group of interested persons or
any group of consumers or any competent authority may institute proceedings in the High Court.192
                                                                                                                                                                    
186 § 4 requires originality meaning – a creation of the creator's own intellect and not commonplace
among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
187 Id.  Thus the combination must be a creation of the creator's own intellect and not commonplace
among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.
188 §8 Protection of Layout-Designs (Topographies) of Integrated Circuits 1999.
189 §6 Protection of Layout-Designs (Topographies) of Integrated Circuits 1999.
190 §6(3) Protection of Layout-Designs (Topographies) of Integrated Circuits 1999.
191Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2); Marks,
Collective Marks and Trade Names Act 1999 §28(2);Industrial Designs Act 1998 §24(1);Patents Act 1999
§41(1) & (6); Protection of New Plant Varieties Act 1999 Act §44(1).
192Geographical Indications Act 1999 §13.IP/C/W/275/Rev.1
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Competent authority is not defined in the Geographical Indications Act but this would
normally be an institution which have standing in the particular matter i.e. suffered loss or likely to
suffer loss or is otherwise affected by an infrin gement. The institution would also need to have the
capacity to sue and be sued.
As to Copyrights it will be anyone claiming as owner of the copyright as a result of creation,
assignment or other transmission rights, or an exclusive licensee may institute civil action.193
Criminal Action
In addition to the available civil actions listed above, intellectual property infringement also
constitutes criminal offences with corresponding penalties that include mandatory fines and or
imprisonment.194
22. Please describe in detail all of the civil remedies that are available to right holders under thelaws of Dominica, citing to the relevant provisions of law or regulation.
Injunctions
The Intellectual Property (IP) Statutes provide for the granting of injunctive relief for
infringement of an IP right.
195  The Court will grant an interim injunction only if the matter is urgent
or it is necessary to do so in the interest of justice and damages would not be an adequate remedy inthe circumstances. The applicant for an interim in junction is required to give an undertaking to
compensate the respondent is it is later determined that the granting of the injunction was not justified.
Damages
Remedial damages are consistently available in Dominica the IP Statutes.196  D a m a g e s
generally include the recovery of commercial losses occasioned by the infringement. In determining
Damages the Court must take into account reasonable royalty which may have been payable by a
licensee.  Further damages, such as aggravated damages may be awarded if the circumstance in which
the infringement was committed was so scandalous as to merit such award.  An Order for damages isnormally accompanied by an Order for payment of legal cost to the successful party who is generally
entitled to such costs.
Seizure, forfeiture or destruction
Under the Intellectual Property (IP) Statutes  the Court has power to make an Order on the
application of the IPR holder for the seizure, forfeiture or destruction of infringing products or
articles.197
                                                     
193Draft Copyright Bill§37(1).
194Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §25; Marks, Collective
Marks and Trade Names Act 1999 §§17(3), 18, 28, 29;Industrial Designs Act 1998 §§24(5), 25;Geographical
Indications Act 1999 §§13, 23;Patents Act 1999 §§33, 36, 40, 63;Draft Copyright Bill§§51, 54, 55, 58;
Protection of New Plant Varieties Act 1999 Act §45.
195Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(a); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(a);Industrial Designs Act 1998 §24(2)(b);GeographicalIndications Act 1999 §13(2);Patents Act 1999 §41(2)(a);Draf t Copyright Bill§37(2)(b); Protection of New Plant
Varieties Act 1999 Act §44(2)(a).
196Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(b); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(b);Industrial Designs Act 1998 §24(2)(a);GeographicalIndications Act 1999 §13(2);Patents Act 1999 §41(2)(c);Draf t Copyright Bill§37(2)(a); Protection of New Plant
Varieties Act 1999 Act §44(2)(c).
197Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(c); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(c);Industrial Designs Act 1998 §24(2)(c);Patents Act 1999
§41(2)(b);Draft Copyright Bill§37(2)(c); Protectio n of New Plant Varieties Act 1999 Act §44(2)(b).IP/C/W/275/Rev.1
Page 37
Account of profits and any other provision provided for in general law
The IP Statutes also allow a right holder to seek any other remedies provided for in the
general law.198  For instance, as an alternative to seeking an award of damages, a plaintiff may seek an
account of profits.  The Court in such circumstances is required to make an assessment of the profitsgained by infringer consequent on the infringement and to pay this over to the right holder.
23. Please describe in detail the provisional procedures and remedies available to right holders
under the laws of Dominica, citing to the relevant provisions of law and regulation, and indicate any
condition under which a right holder may avail itself of those procedures and remedies.
Part 17 of the Civil Procedure Rules, 2000 lists the interim remedies which may be granted by
the Court.  These include:
- interim injunctions;
- interim declarations;
- orders for the detention, custody or inspection of relevant property;
- orders to deliver up goods;
- freezing orders;
- orders to provide information about property or assets subject of a freezing Order;
- search orders;
- order for interim payment;
- any other interim Order as dictated by the circumstances of the case.
The Court will grant an interim injunction only if the matter is urgent or it is necessary to do
so in the interest of justice and damages would not be an adequate remedy in the circumstances. The
applicant for an interim injunction is required to give an undertaking to compensate the respondent is
it is later determined that the granting of the in junction was not justified.  Specific intellectual
property regulations provide for interim remedies as follows:
Protection of Layout-Designs,
199 Marks, Collective Marks and Trade Names,200 Industrial
Designs,201 Geographical Indications,202 Patents, 203 Copyright,204 Protection of New Plant
Varieties205:  On the application of the right holder, or of a licensee, the court may as soon as possible-
                                                     
198Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(d); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(d);Industrial Designs Act 1998 §24(2)(d);Geographical
Indications Act 1999 §13(2);Patents Act 1999 §41(2)(d) & (e);Draft Copyright Bill§37(2)(d), (e) & (f).
199Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2).
200 Marks, Collective Marks and Trade Names Act 1999 §28(2).
201Industrial Designs Act 1998 §24(2).
202Geographical Indications Act 1999 §13(2).
203Patents Act 1999 §41(2).
204Draft Copyright Bill§37(2).
205 Protection of New Plant Varieties Act 1999 Act §44(2).IP/C/W/275/Rev.1
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(a) grant an injunction to prevent infringement or an imminent infringement;
(b) order the seizure, forfeiture or destruction of:
- any infringing product or article or any product or article of which the
infringing product or article forms an integral part;  or
- any article, instrument or thing by means of which any such infringing
product or article was produced.
J.S PECIAL REQUIREMENTS RELATED TO BORDER MEASURES
24. Please describe in detail the procedures under the laws of Dominica that provide for borderenforcement at least for trademark counterfeiting and copyright piracy, identifying the competentauthority and citing to the relevant provisions of law or regulation.
Marks Collective Marks and Trade Names
Any person who imports into Dominica a product or article bearing a forges mark or
collective mark, or any other infringing article commits an offence and is liable to a mandatory fine
and/or imprisonment.206  Furthermore, the regulation provides for the grant of injunction to prevent
infringement, and the order of seizure, forfeiture or destruction of any infringing product, on
application of the owner.207  However there is no regulation pertaining specifically to border
measures.
Copyright
As regards to copyright material, where there is reasonable grounds to believe that a pirated
copy of work is being imported into Dominica, the copyright owner may, provide written notificationto the Comptroller and request him to detain any su ch pirated copy as may come into the control or
custody of Customs.
208  Part IX, section 99-102 of the Draf t Copyright Bill deals with border
protection measures.
25. Please indicate if border enforcement is avai lable to owners of other forms of intellectual
property and, if so, please describe the procedures and remedies available in relation to each form of
intellectual property, citing the relevant provisions of law.
There are no similar provisions in the legislation dealing with Trade Marks or any other IPR
legislation.
26. Article 58 of the TRIPS Agreement specifies procedures to be followed where the competent
authorities can act ex officio.  Please explain whet her the competent authorities in Dominica are
empowered to act ex officio and, if so, please iden tify the intellectual property areas subject to ex
officio action.
There is no provision requiring ex officio  action by Customs officials.  All actions must be
initiated by the copyright owner or exclusive licen see or by the owner (or authorised user) of the
industrial property right.
                                                     
206 § 29 Marks Collective Marks and Trade Names Act 1999.
207 § 28 Marks Collective Marks and Trade Names Act 1999.
208 § 99 Draft Copyright Bill.IP/C/W/275/Rev.1
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K.C RIMINAL PROCEDURES
27. Please describe in detail how the laws of Dominica implement Article 61 of the TRIPSAgreement that requires Members to have criminal  procedures and penalties, including imprisonment
and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark
counterfeiting and copyright infringement on a commercial scale.  Please cite to the relevant
provisions of law and regulation.
Under the laws of Dominica, intellectual property infringement may constitute a criminal
offence with corresponding penalties that include mandatory fines and or imprisonment.
209  The High
Court has jurisdiction over criminal acts of infringement and the Court of Appeal has jurisdiction over
appeals while final appeal lies with the Judicial Committee of the Privy Council.
As regards geographical indications, layout-designs of integrated circuits  and patents , persons
who knowingly infringe on the protected intellectual property are liable to a minimum fine of fifteen
thousand dollars and/or a minimum term of imprisonment of five years.210
As regards industrial designs, any person who intentionally commits an infringing act
commits an offence and is liable to a fine of twenty thousand dollars and imprisonment for fiveyears.
211
As regards new plant varieties, any unauthorized person who wilfully offers for sale or
markets, propagating material of a variety protecte d in Dominica, is liable to a minimum fine of five
thousand dollars.212
As regards trademarks, infringement of the protected mark, collective mark or trade name
constitutes an offence and is liable to a minimum fine of ten thousand dollars and/or minimum
imprisonment term of three years.213  Further, any person who performs the following commit an
offence and is liable to a minimum fine of fifteen thousand dollars and/or a minimum term ofimprisonment for five years:
- forge a mark or collective mark;
- make a die, block, machine or other instrument for the purpose of forging or of being
used for forging a mark or collective mark;
- dispose of, or has in his possession, any such die, block, machine or other instrument;
or
- import, sell or has for sale, goods that bear a forged mark or collective mark.
214
Concerning protected copyright, any unauthorized person who infringes a copyright, in the
first case, is liable to a fine of twenty-five hundred dollars for each article to which the offence relates,
and, in the case of subsequent offences, the aforementioned fine plus imprisonment of twelve
months.215  Further someone who knowingly makes or possesses an article specifically designed or
adapted for making copies of a particular copyright work, commits an offence and is liable in the case
of the first offence to a fine of fifteen thousand dollars, and, in the case of subsequent offences, the
                                                     
209 §25 Protection of Layout-Designs Topographies) of integrated Circuits Act 1999; §§17(3), 18, 28,
29 Marks, Collective Marks and Trade Names Act 1999; §§24(5), 25 Industrial Designs Act 1998; GeographicalIndications Act 1999 §§13, 23;Patents Act 1999 §§33, 36, 40, 63; §§51, 54, 55, 58  Draft Copyright Bill; §45
Protection of New Plant Varieties Act 1999.
210 §23 Geographical Indications Act 1999; §63 Patents Act 1999; §25 Protection of Layout-Designs
Topographies) of integrated Circuits Act 1999.
211 §24(5) Industrial Designs Act 1998.
212 §45 Protection of New Plant Varieties Act 1999.
213 §29 Marks, Collective Marks and Trade Names Act 1999.
214 Id.
215Draft Copyright Bill§51(4).IP/C/W/275/Rev.1
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aforementioned fine plus imprisonment of six months.216
28. Article 61 also requires that remedies in appropriate cases include the seizure, forfeiture and
destruction of infringing goods and any materials and implements the predominant use of which has
been the commission of the offence.  Please describe the provisions in the laws of Dominica that
provide for such remedies, and describe the circumstances in which those remedies would beimposed, citing to the relevant provisions of law or regulation.
Under the Dominica IP Statutes, as regards to patents, industrial designs
, layout-designs of
integrated circuits, copyright  and trademarks  the Court has power to make an Order on the application
of the IPR holder for the seizure, forfeiture or destruction of infringing products or articles, as well as
instruments by means of which the infringing product was produced.217
L.S TATISTICAL QUESTIONS
29. Please provide statistical information related to civil copyright, trademark, geographical
indication, industrial design, patent, integrated circuit layout-design, and trade secret enforcement
for 2000, including the number of cases filed;  injunctions issued;  infringing products seized;
infringing equipment seized;  cases resolved (i ncluding settlement);  and the amount of damages
awarded.
There is no statistical data available.
30. Please provide statistical information related to  criminal enforcement in the area of copyright
piracy and trademark infringement for 2000, including the number of raids, prosecutions,convictions, and the amount of fines and/or jail terms (including whether the fines were paid and
whether the jail term was actually served or was suspended) and any other information establishing
that the criminal system operates effectively to deter copyright piracy and trademark counterfeiting.
There is no statistical data available.
__________
                                                     
216Draft Copyright Bill§§51(5).
217Protection of Layout-Designs Topographies) of integrated Circuits Act 1999 §24(2)(c); Marks,
Collective Marks and Trade Names Act 1999 §28(2)(c);Industrial Designs Act 1998 §§24(5), 25;Patents Act
1999 §41(2)(b);Draft Copyright Bill§37(2)(c).