Article by Paddington Matsanura

At its 40th Session in Harare, Zimbabwe from 5 to 7 December, 2016 the ARIPO Administrative Council adopted among others the amendments to the Harare Protocol on Patents and Industrial Designs as well as its implementing Regulations. The amendments came into force on January 1, 2017. Section 3(3) and Rule 18 (1) (a) were amended while two new sections, Section 5bis and 5ter were added. This brief excerpt focuses on some of the most notable amendments to the Harare protocol namely substantive examination, re-establishment of rights, limitation of ARIPO patent or utility model (Post grant amendment), extension of time limits and fee changes.

Substantive examination

In terms of the amendment to Section 3(3) and Rule 18(1) (a) all applicants are now required to make formal requests for substantive examination. The application is to be made through Form 13a. An examination fee has to be paid. In terms of Rule 18(1) (a) the application for examination has to be done within three years from the date of receipt of the application by the ARIPO Office failure of which the application shall lapse.

Previously, applicants only had to lodge applications with the ARIPO Office which would ensure the transmission of such application to the relevant office for examination. The substantive examination process of patent applications is thus no longer automatic. One has to make a formal request for the examination to be conducted.

Section 3(3) of the Harare Protocol has been amended to exclude the provision where a patent would be refused on the basis of failure to comply with requirements. It should be noted however, that the new proviso does not remove the need for patent applications to comply with requirements. The major effect seems only grant latitude to make amendments to the applications within a period of three years as opposed to immediate refusal. A reading of the amended section 3(3) with Section 5bis shows that an applicant whose patent application fails to meet requirements can still make necessary amendments to the application within three years from the date of lodging of the application.

Re-establishment of rights.

Section 5bis is a new section altogether. It relaxes the strictness of time limits. However, it does so only where an applicant or proprietor for an ARIPO patent who has taken all due care required by circumstances fails to observe a time limit and such failure results in either of the following:

    1. The refusal of the ARIPO application or of a request, or
    2. The deeming of the application to have been withdrawn, or
    3. The loss of any other right or means of redress.

The condonation is not automatic though. The applicant has to make a request in writing for the re-establishment of the lost rights. Further, the applicant will have to pay a prescribed fee in terms of Rule 24 of the Implementing regulations.

In summary, for one to use Section 5bis they:

  • Must be an applicant for or a proprietor of an ARIPO patent;
  • Must have taken all due care required by the circumstances of their case to comply with the time limits;
  • Must have failed to observe the time limit;
  • Failure to observe the time limit should have resulted in either the refusal of the ARIPO application or of a request, or the deeming of the application to have been withdrawn, or the loss of any other right or means of redress; and
  • The applicant must require a re-establishment of his rights.

Limitation of ARIPO patent (post grant amendment)

Section 5ter, another new addition, allows proprietors of ARIPO patents or utility models to request limitation by an amendment of rights of their granted patents for all designated states. The request must be made through the ARIPO Office and a limitation fee must be paid. The request for such limitation must be in writing and it is only deemed to be filed upon payment of the limitation fee.

Extension of time limits

Rule 15 has been amended to provide for extensions of time limits. Such requests for extension must be in writing and the applicable fee must be paid. Rule 15bis (1) give an applicant two months, from date of notification of the decision of the ARIPO office, within which to make a request for the reconsideration of an application that has been refused.

In terms of Rule 15teran applicant may request for extension of time limits subject to the payment of the applicable fee and where such extension of time limit is granted, it shall be extended for 3 months.

Fees

The fees schedules have also been amended to introduce new fees whilst also amending existing ones. It is thus prudent for an agent to peruse the new fees structure before discussing fees with clients to avoid unnecessary embarrassments.