We refer to our correspondence over recent months regarding the requirement to pay annuities in respect of all pending patent applications and granted patents in Dominica, following the announcement by the Registrar that she is finally accepting annuity payments under the new Patents Act. 

As we have detailed previously, there has been a great deal of ambiguity and conflicting information given out by the Registrar in Dominica regarding the due dates for the payment of annuities under the Patents Act, as the law simply states that annual fees are payable in advance 'starting one year after the filing date of the application for the grant of the patent'. As we have explained previously, the law does not clarify what is deemed to be the 'filing date' of an application, especially in view of the different types of patent applications available in Dominica (i.e. local applications, PCT national phase applications and reregistration applications based on granted UK or EP(UK) patents). At first, the Registrar indicated that all annuity due dates were to be calculated from the local filing date in Dominica, for all types of patent cases. Subsequently, she decided that the effective 'filing date' of PCT national phase applications should be deemed to be the PCT filing date, such that annuity due dates on these cases are now to be calculated from the PCT filing date. To date, conversely, annuity due dates in respect of local and reregistration patents have been calculated from the local filing date in Dominica. 

We have been in lengthy correspondence with the Registrar to date, to try and clarify this discrepancy between the treatment of PCT national phase applications, local applications and reregistration applications (and for the latter type of case, we have argued that the due dates should be calculated from the EP(UK) filing date rather than the local filing date). We have finally, after much resistance, received the attached letter which advises that, contrary to her previous decision, the Registrar now agrees with our contention that annuities on reregistration patent cases should be calculated from the EP(UK) filing date rather than the local filing date. This now meets with our own interpretation of the Patents Act, as the EP(UK) filing date should rightly be considered as being the 'effective' filing date of reregistration patents. 

However, this new development does mean that the annuity fees which have been paid on reregistration patents to date under the previous calculation method (i.e. on each anniversary of the local filing date) are now incorrect, and that additional fees are therefore payable in order to regularize these cases. We believe that, as with the regularization of PCT cases that became necessary previously, any additional fees that are now payable in respect of reregistration cases may be paid without penalty. Furthermore, we are not aware of any deadline for the regularization of reregistration cases at this time.

We are currently determining which of our clients' Dominican cases require additional annuity fees to be paid. 

We trust you will appreciate that these changes in the policy decisions of the Dominican Registry are entirely beyond our control. Should you have any questions in this matter, please do not hesitate to contact us.