ARIPO Amends Protocol On Patents, Utility Models And Designs

The Harare Protocol on Patents, Industrial Designs and Utility Models has been amended. The amendments were adopted by the 40th Session of the African Regional Intellectual Property Organization (ARIPO) Administrative Council, and came into operational effect from 1 January 2017.

ARIPO’s Administrative Council held a meeting from 5-7 December in Harare, Zimbabwe. The Administrative Council is composed of heads of offices responsible for industrial property and copyright in member states.

The Harare Protocol empowers ARIPO to grant patents and register industrial designs as well as utility models on behalf of the contracting states. The protocol was first adopted in December 1982 and came into force in April 1984.

Currently, the Protocol is in force in all the organisation’s 19 member states except Somalia.

This is the 10th time the protocol is being amended, the last amendment having been in 2015.

In 1993, the protocol was amended to incorporate the Patent Cooperation Treaty (PCT), which is governed by the World Intellectual Property Organization (WIPO), a global forum for intellectual property services, policy, information and cooperation. This enabled the ARIPO Office to act as a receiving office for Harare Protocol contracting states that are party as well to the PCT. The PCT assists applicants in seeking patent protection internationally for their inventions.

The Administrative Council amended the Harare Protocol in 1998 by incorporating provisions of the Budapest Treaty on International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. This aimed to increase legal security of patent applications for microorganisms.

According to ARIPO Annual Report 2015, the protocol was further amended in 2015 in order to improve and harmonize it with the new automated Industrial Property Business Processing ICT System (POLite+) and with international treaties like the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The 2016 amendments, according to a response obtained from ARIPO, are due to international developments in the sphere of intellectual property and also due to requests by their users.

“We have annual working group meetings that sit to discuss the protocols and issues related to their implementation,” the ARIPO statement adds. “The working groups are attended by representatives of Member States, legal practitioners, applicants and any interested groups. The stakeholders discuss pertinent issues and advise ARIPO on how to improve the system and Protocols. The amendments to the Harare protocol were proposed and agreed upon during these meetings.”

The Amendments

The amendments include: Section 3, sub section 3 which provides for filing for a request for examination. A request for substantive examination must now be filled for all patent examinations. The request must be made within three years from the ARIPO filing date or within three years from the international filing.

Amendments to Section 3, sub section 10 provide for definitions of a patent invention and exclusions from patentability. Section 5 introduces the Re-establishment of rights.

Under the new section 5bis, an applicant for or owner of an ARIPO patent, utility model or industrial design who has, in spite of all due care taken, failed to meet a time limit that had the effect of causing the refusal of the application, the deeming of the application to been withdrawn, or the loss of any other rights or means of redress, may apply for the re-establishment of rights. This must be within two months of the removal of the cause of non-compliance, but within a year of expiry of the unobserved time limit, after paying of a restoration fee of $100.

Other amendments include: provisions for post-grant amendments, and provisions for multiple dependent claims. A new fee schedule is also included in the new amendments.

The amendments increase the existing fees and also introduce new fees for acts previously not catered for. These include voluntary amendment, post-grant amendment, re-establishment of rights, and conversation of utility model application to a patent application.

According to a press statement released by ARIPO secretariat days before the meeting, “This year the Session will discuss pertinent issues including the review of ARIPO Protocols, Establishment of a Regional Voluntary Copyright registration and notification system and adoption of policies for the operation of the organization.”

Groundswell of Concern

Prior to the council meeting, civil society organizations and farmer representatives in the region expressed displeasure for being blocked from ARIPO deliberations on regional Protocol on Protection of New Varieties of Plants law.

A press release from the African Centre for Biodiversity and PELUM Association in collaboration with the Alliance for Food Sovereignty in Africa stated, “ARIPO will host an Administrative Council meeting 5-8 December 2016 in Harare, Zimbabwe for its 19 ARIPO Member States, to adopt deeply troubling draft Regulations to implement a highly contested and controversial regional law on seeds – the Arusha Protocol on Protection of New Varieties of Plants (PVP).”

The concerns raised by the civil society group in the press statement “include the impingement of national sovereignty; the failure to safeguard Farmers’ Rights and farmer seed systems; the failure to prevent bio-piracy and undermining the implementation of international Treaties such as the Convention on Biological Diversity.”

“ARIPO has refused point blank to allow any African farmer representative or civil society to attend the December meeting on the spurious and frivolous grounds that ARIPO has no cooperation agreement with such civil society,” the release states.

The Arusha PVP Protocol, which is modeled on the 1991 Act of the International Union for the Protection of New Varieties of Plants (UPOV 1991), was adopted by ARIPO member states in July 2015.

“Farmer representatives and African CSOs were deliberately shut out of the Diplomatic Conference held in Arusha, Tanzania when the Protocol itself was adopted,” the groups said.

An expert’s review meeting produced the final PVP draft regulations report in June 2016, and submitted it to the administrative council for adoption.

The 2016 Administrative Council meeting also marked the end of a weeklong celebration for ARIPO’s fortieth anniversary. As part of the celebrations, ARIPO inaugurated its new head quarters building. The theme for the anniversary was “Shaping the IP landscape in Africa.”

 

Image Credits: ARIPO