Further to our previous article on this website concerning renewal fee payments due in Samoa, the Samoan Ministry of Commerce, Industry, and Labour (MCIL), which administers the patent system in Samoa, has now advised that patent maintenance fees under the Intellectual Property Act 2011 which fell due between 1st October 2012 (when the 2011 Act commenced) and 1st January 2017 (when the official fees under the Act were first set) are also now payable. The MCIL had previously advised us that maintenance fees that fell due before 1 January 2017 were not payable.

 

The MCIL has also now advised that, for overseas patents registered in Samoa under the old Patents Act 1972, the duration of protection under the 2011 Act is the same as the duration of protection for the overseas patent and that maintenance fees under the 2011 Act are due every five years from the date the period of protection commences. Hence, for Samoan patents based on corresponding EP/UK patents, the duration of protection in Samoa is 20 years from the filing date of the EP/UK patent and maintenance fees are payable every five years from the filing date of the EP/UK patent.

 

We would point out that, in November 2019, the MCIL had indicated that they were considering the earliest priority date of the overseas patent to be relevant for the calculation of renewal fees. However, the most recent advice we have received from the MCIL in relation to overseas patents registered in Samoa under the old Act no longer indicates that maintenance fees and patent term are calculated based on the priority date. This volte face is confusing and frustrating, but we are currently basing our assumption on the fact that the mention of priority dates in previous correspondence received from the MCIL was in error and should be disregarded.

 

In view of the above, please now check your records and let us know if you wish for us to attend to the payment of any maintenance fees that fell due between 1st October 2012 and 1st January 2017, which are now payable. The MCIL has not given, and we have not asked for, a deadline by which these maintenance fees must be paid. The MCIL appreciates that it will take time for us to obtain instructions, but will likely be expecting us to pay the fees on patents that are to be maintained promptly. We do not recommend asking the MCIL for a specific deadline by which these fees must be paid. Rather, we recommend simply paying the fees due as soon as possible, and preferably before the MCIL closes for the Christmas holidays.