Registering a Patent in the Dominican Republic

Patent registration in the Dominican Republic is governed by Law 20-00 on Industrial Property.

To start the process, the following information and documents are required:

1.    Applicant’s full name, address, occupation, and identity document (copy).

2.    Inventor’s full name, address, occupation, and identity document (copy).

3.    If the applicant is not the inventor, deed of assignment of the invention, authenticated at the nearest Dominican Consulate or apostilled.

4.    Title to the invention or utility model.

5.    Power of Attorney granted to the local representative, authenticated at the nearest Dominican Consulate or apostilled.

6.    Two copies of the description. As for the description itself, it must depict the invention in such clear and complete terms so as to allow for its evaluation, as well as permit any person skilled in the art to which it pertains to be able to use it. The description of the invention shall state the name of the invention and shall include the following information: (a) the technological, agricultural, scientific or other field to which the invention refers to or applies; (b) the previous technology known to the applicant that may be considered useful for understanding and examining the invention, and any reference to previous documents and publications related to said technology; c) a description of how the invention provides a solution to a certain technical problem, and the advantages of this invention compared to previous inventions that solved the same problems;(d) a brief description of the drawings, if applicable; (e) the best way known by the inventor to execute or implement the invention using examples and making references to the drawings; (f) the manner in which the invention is capable of industrial application, unless clearly evident from the description or nature of the invention;

When the invention relates to biological material that cannot be described in a manner that enables any person skilled in the subject area to use the invention, and when such material is not available to the public, the description shall be supplemented by depositing such material at an institution designated by the National Office for Intellectual Property. This must be indicated in the description, along with the name and address of the deposit institution, the date of deposit and the receipt number.

7.    One or more claims. The subject matter for which protection is sought through a patent is described by claims. The claims must be clear and concise and shall be entirely supported by the description. The claims shall contain: (a) a preamble that defines the object of the invention (this preamble shall include all known aspects of the invention considered to be state of the art); and (b) a description of the elements that make the invention novel, focusing on the aspects you want to protect.

Each main claim may be followed by one or more dependent claims, with reference to the main claim and specifying the additional features to be protected.

8.       Drawings. The applicant shall furnish a drawing whenever necessary for the understanding, evaluation and use of the invention submitted for a patent.

9.       Summary. The summary shall include a synthesis of the information disclosed in the description, an outline of claims and drawings, and, if applicable, the chemical formula or drawing best characterizing the invention. The summary shall facilitate the undestanding of the technical problem and solution contributed by the invention, as well as the principal use of the invention. The summary shall be for technical information and publication purposes, and shall not be used to determine or interpret the scope of the protection granted by the patent

10.   Date, number and filing office of any patent application or of any other type of protection that has been filed, or of registration issued by another country which refers, in whole or in part, to the same invention claimed in an application filed in the Dominican Republic or abroad.

11.   Certified copy of foreign applications for the same patent, authenticated at the nearest Dominican Consulate or apostilled, in case of claiming priority rights (PCT Applications).

12.   Electronic copies of the description, abstract, claims, drawings, or nucleotide sequences that were provided on paper.

The above documents must be provided as originals, unless otherwise specfied, and translated into Spanish. English and Spanish versions must be authenticated or apostilled separately.

Registering a Trademark in the Dominican Republic

Trademark registration in the Dominican Republic is governed by Law 20-00 on Industrial Property.

The process to register a trademark is as follows:

(1) Preliminary searches are optional to determine if the mark requested is available for registration in the desired class, under the international classification of goods and services. The search may take up to 5 business days. If time is a factor, faster service is available for a higher fee.

(2) If the search results do not preclude the registration of the mark, the applicant may proceed to file a petition to record the mark. Government fees must be paid in full with the filing.

(3) If the application complies with the legal requirements, the National Office of Industrial Property (ONAPI) will allow the petitioner to pay for the publication of an excerpt of the application in its Journal. Third parties have 45 days from the date of publication in the Journal to file an opposition to the application. If the application is not opposed within 45 days, or if the opposition is rejected, the Office will issue the Certificate of Registration, which is valid for 10 years and may be renewed. The whole process, without opposition and including the search, takes approximately 4 to 5 months.

To proceed to file the petition for registration, the applicant must provide the following information and documents:

(1) Full name and address of the applicant.

(2) Power-of-attorney signed by the applicant, authenticated at the nearest Dominican Consulate or apostilled. The original copy of this document should be sent to us, since it is required to be filed jointly with the trademark application.

(3) Description of the goods and services covered by the mark, grouped by classes, according to the international classification of goods and services.

(4) If the application is to be based on a foreign registration, a certified copy of such registration, authenticated at the nearest Dominican Consulate.

(5) If a design is to be filed, 6 samples of the design of at least 6 in. x 6 in. (15 cm. x 15 cm.) in size.

(6) If the applicant is an individual copies of his/her passport’s first page and Identification Card. If the foreign applicants are companies, copies of the company’s incorporation certificate and passport of its signing legal representative (President, Vice President, etc…). (No authentication needed)

(7) Copy of the Trademark’s certificate of registration in the foreign country, even if the registration is not going to be based directly on a foreign registration. (No authentication needed).

Intellectual property in the Dominican Republic

Constitutionally-Protected Intellectual Property Rights

Article 52 of the Constitution of the Dominican Republic recognizes and protects the exclusive  property rights of authors and inventors over their work, trade names, trademarks, distinctive signs and any other creation of their intellect, as established by law.

Legislation

Inventions, utility models, industrial designs, trademarks, trade names, signs, logos, geographical indications and designations of origin are governed by Industrial Property Law 20-00 and its enabling regulations. Copyright protection is governed by Copyright Law 65-00 and its enabling regulations, which also protects the rights of performers, phonogram producers and broadcasters.

International Treaties on Intellectual Property Recognized in the Dominican Republic

The Dominican Republic is a party to and has ratified many international treaties related to intellectual property, including the Berne Convention for the Protection of Literary and Artistic Works, the Paris Convention for the Protection of Industrial Property, and the World Intellectual Property Organization treaties on copyright, patent rights, and performances and recordings.

Administration of Industrial Property Rights

The National Agency for Industrial Property (known locally as ONAPI, its Spanish acronym), a dependency of the Ministry of Industry and Trade of the Dominican Republic, is in charge of the administration and registration of industrial property rights. Industrial property records are public and can be consulted free of charge at ONAPI.

Administration of Copyrights

The National Copyright Agency (known locally as ONDA, its Spanish acronym), a dependency of the Ministry of Culture of the Dominican Republic,is in charge of the administration and registration of copyrights. Copyright records are public and can be consulted free of charge at ONDA.

Protection and Registration of Industrial Property Rights

Inventions, utility models, industrial designs, trademarks, trade names, signs, logos, geographical indications and designations of origin must be registered at ONAPI in order to be protected. Nonetheless, priority rights are recognized for industrial property registered in other countries on the basis of international agreements ratified by the Dominican Republic.

Inventions

Patents are granted to protect the rights of inventors, giving them exclusive rights to exploit their inventions for a specific period of time. The law defines invention as any novel idea or creation of the human mind susceptible of industrial application. An invention is considered novel when it is not within the state of the art of the relevant industry. Certain matters such as scientific theories, business  principles or methods, games,  computer programs, medical treatment methods, and animals are not patentable.

ONAPI classifies patents for inventions in accordance with the Strasbourg Agreement Concerning the International Patent Classification of 1971, as amended in 1979.

Patents for inventions are granted for a period of twenty years from the application date, with a possible extension of up to three more years in case of unreasonable delay by ONAPI in the approval process.

Patent applicants in a country that grants reciprocity to patent applicants in the Dominican Republic benefit from priority rights for a period of twelve months from the date of their application abroad to apply for registration in the Dominican Republic.

Patent infringement is subject to penalties consisting of six months to three years in prison, fines ranging from 50 to 1000 times the legally-established minimum monthly salary, and civil damages.

Utility Models and Industrial Designs

Patents are also granted by ONAPI to protect utility models and industrial designs. Utility models are new forms of objects, tools, instruments or mechanisms that allow for its better or different industrial use. Industrial designs consist of the presentation or packaging of a product or object that gives it a unique appearance.

ONAPI classifies industrial designs according to the Locarno Agreement Establishing an International Classification for Industrial Designs of 1968, as amended in 1979.

Patents for utility models are granted for a period of fifteen years from the application date. Patents for industrial designs are granted for a period of five years from the application date, but can be extended for two additional periods of five years each.
    
Trademarks, Service Marks, Tradenames and Slogans

A mark is legally defined as any visible sign or combination of signs, susceptible of graphic representation, used to distinguish the products or services of a business from those of other businesses. Words  (real or made-up), names, slogans, letters, numbers, monograms, figures, labels, coats-of-arm, pictures, trimmings, combinations of colors, shapes, among others, may be registered as marks. No registration is granted, however, to marks that may be confused with others already registered or pending registration, or consisting of just common words or geographical names, or of usual or necessary shapes of products, among others.

ONAPI classifies marks according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 1957, as revised and amended.

Registration of marks is granted by ONAPI for a period of ten years, renewable for additional periods if applied for within six months from its expiration date. Proof of use of the mark must be filed with the renewal application. Registration of a mark may be cancelled if it is not used for three consecutive years.

Infringement of a registered mark is subject to penalties consisting of six months to three years in prison, fines ranging from 50 to 1000 times the legally established minimum monthly salary, and civil damages.

Tradenames are words used to identify individuals or entities in connection with their business activity. Slogans are words used to supplement a trademark. To be protected, tradenames and slogans must be distinctive. The provisions regarding the registration of marks apply to tradenames and slogans.

Protection and Registration of Copyrights

Dominican Copyright Law 65-00 protects the rights and interests of authors of any intellectual work of a creative nature, whether literary, artistic, or scientific in character, including, among others, novels, short stories, plays, lectures, speeches, sermons, musical compositions, choreography, paintings, sculptures, drawings, illustrations, maps, architectural designs, photographs, computer programs, data bases, audiovisual works and phonograms. Ideas, processes and mathematical operations, however, are expressly excluded from copyright protection.

Protection without Registration

The author of an original work has, by the mere fact of its creation, exclusive rights over it, enforceable against third parties, without need of registration or any other formality. Unlike patents and trademarks, copyright will be automatically granted from the work’s creation without registration. Nonetheless, most authors voluntarily register their works with the competent authority for the purpose of providing preliminary evidence to resolve future copyright disputes. Copyright registration at the National Copyright Agency (ONDA) does not create the copyright; it only makes public its existence.

Nature and Extent of Copyright Protection

Authors have both property rights and moral rights over their work. Property rights entitle them to all economic benefits derived from their work, including rights of sale, usage or exploitation of any kind, rights of reproduction, translation, adaptation, performance and broadcasting.  As a general rule, property rights are protected for the benefit of the author, his heirs and assignees during the life of the author plus 70 years. However, foreign authors who are not Dominican residents are protected for the period of time indicated by the copyright laws of the country where the work was first published or protected, or for the period applicable under Dominican law, whichever is shorter. At the expiration of the copyright, the work enters the public domain.

Moral rights entitle authors to make their work known publicly, to make public their name or to use a pen name, and to defend their work against plagiarism, defamation or mutilation. Moral rights are not subject to a time limit and cannot be assigned to a third party.

Works Produced under a Service Contract

Unless agreed otherwise, the copyright for works created under a service contract belong to the individual or entity that hired the author, and not to the latter. Authors are entitled only to the fee agreed for their service.

Translations, Adaptations and Arrangements

Translations, adaptations or arrangements of works done with the authorization of their original authors constitute personal creations and are deemed to be intellectual works distinct from their originals, and, as such, subject to copyright protection for the benefit of their translators, adapters and arrangers.

Copyright Infringement

Copyright infringement is subject to criminal and administrative penalties, as well as payment of damages to the copyright holder. Criminal penalties range from three months to three years imprisonment and fines from 50 to 1000 times the minimum monthly wage. Administrative penalties, enforced by ONDA, and in certain cases by the Customs Agency, may include temporary or permanent closing of the business infringing the copyright, confiscation of equipment, destruction of illegal reproductions, and fines.

An Overview of Trademarks and Intellectual Property

Trademark registrations in the Dominican Republic are governed by Industrial Property Law # 20-00. The National Office for Industrial Property (ONAPI) is the government entity in charge of processing all trademark-related filings in the Dominican Republic, the local equivalent to the United States Patent and Trademark Office (USPTO).

Since ONAPI’s main offices are located in the city of Santo Domingo, our firm handles all trademark matters through our Guzman Ariza office in Santo Domingo. This way we can assure our clients that their trademark applications will be submitted directly to the office responsible for making the final decision.

Guzman Ariza attorneys believe that specialization leads to maximizing efficiency and service value for our trademark clients. In an effort to reach this goal, we have limited our Intellectual Property practice to three complementary areas: trademark registration, trademark litigation and sanitary registration (Drug Marketing Approval).

Our specialized trademark lawyers provide trademark owners and international attorneys with an all-inclusive service covering all aspects of Dominican Trademark Law, ranging from the drafting and filing of the trademark applications to client representation in trademark infringement litigation. The services offered by our firm include: