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Legislative Implementation of Flexibilities - Dominica

Title:Sections 35, 38 and 39 of the Patent Act No. 8 of 07/10/1999
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

35. (1) Where:

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

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

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

(2) The exploitation of the patented invention shall be limited to the purpose for which it was authorized and shall be subject to the payment to the said owner of an adequate remuneration therefor, taking into account the economic value of the Minister's authorisation, as determined in the said decision, and, where a decision has been taken under subsection 1 (b), the need to correct anti-competitive practises.

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

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

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

national emergency or other circumstances of extreme urgency provided, however, that in such cases the owner of the patent shall be notified of the Minister's decision as soon as reasonably practicable;

public non-commercial use, and

anti-competitive practices determined as such by the Minister in accordance with subsection (1) (b).

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

(7) The authorisation shall not exclude -

the conclusion of license contracts by the owner of the patent; or

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

the grant of a non-voluntary license under section 38.

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

(9) 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 of Dominica.

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

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

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

38. (1) (a) At any time after the expiration of four years from the date of filing of a patent application or three years from the date of grant of the patent, whichever happens later, any interested person may apply to the Court for the grant of a non-voluntary licence under the patent on the grounds that the patented invention is not being exploited or is being insufficiently exploited by working the invention in Dominica, or by importation into Dominica.

(b) Notwithstanding paragraph (a), a non-voluntary licence shall not be issued if the owner of the patent satisfies the Court that circumstances exist which jusitfy the exploitation or insufficient exploitation of the patented invention in Dominica.

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

the scope and function of the licence;

the time limit within which the licensee must begin to exploit the patented invention; and

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

The beneficiary of the non-voluntary licence shall:

have the right to exploit the patented invention in Dominica in accordance with the Court's order;

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

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