The African Regional Intellectual Property Organisation (ARIPO) is an intergovernmental organisation established in 1976 for the cooperative management of intellectual property (IP) matters amongst English-speaking African countries. Since its establishment, ARIPO has developed a few key legal instruments for meeting its objectives, including the Harare Protocol on Patents and Industrial Designs, the Banjul Protocol on Marks and the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.

ARIPO has recently amended portions of the Harare Protocol on Patents and Industrial Designs (hereinafter “the Protocol”), which amendments came into effect on 1 January 2017. The Protocol empowers the ARIPO office to receive, process and grant applications for patents, and receive, process and register applications for industrial designs and utility models on behalf of its contracting states.

The most recent amendments to the Protocol include provisions for filing a request for substantive examination in respect of patent applications, provisions specifically setting out the exclusions from patentability, provisions for re-establishment of rights, provisions for post-grant amendments, provisions addressing claim dependencies and multiple dependencies in patent claims, provisions allowing the extension of time limits, as well as an updated fee schedule. The updated fee schedule increases some existing official fees and introduces new fees for some of the provisions now included in the amended Protocol.

Substantive examination:

Under section 3(3) of the Protocol, it is now compulsory to file a request for substantive examination for every ARIPO patent application filed after 3 January 2017. The request, which is to be accompanied by the payment of a prescribed examination fee, has to be made within three years of the earliest priority date, or of the filing date in the case where no priority is claimed. Therefore, ARIPO patent applications will be examined upon request only. Failing the timeous filing of a request for substantive examination, and the payment of the corresponding examination fee, a patent application will lapse.

Exclusions from patentability:

Sections 3(10) (h), (i) and (j) were introduced to define more clearly what matter would be excluded from patentability in terms of the Protocol.  Besides an invention having to meet the novelty, inventiveness and industrial application requirements, the newly added sections expressly exclude the following from patentability:

  • discoveries, scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and
  • presentation of information.

However, the above exclusions only relate to the subject matter “as such”.

Further exclusions are:

  • inventions the commercial exploitation of which would be contrary to "ordre public" or morality;
  • plant or animal varieties or essentially biological processes for the production of plants or animals (this provision shall not apply to microbiological processes or the products thereof); and
  • methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Rule 7 of the Regulations to the Protocol has been amended to introduce guidelines on biotechnological inventions and exclusions from patentability specifically relating to biotechnological inventions.

Re-establishment of rights:

The amended Protocol further introduces provisions whereby rights in a patent, utility model or industrial design can be restored should an applicant have been unable to meet a deadline as per the Protocol, in spite of taking all due care to comply with the deadline (section 5bis). Said applicant can file a written request for the re-establishment of rights within two months of the removal of the cause of non-compliance, but no later than one year from the expiry of the deadline. Should the re-establishment of the specific right be granted, an applicant shall, however, not have any recourse against third parties who have, in good faith, used or made preparations to use the invention or design in the period between the loss of the right and the publication of the re-establishment by ARIPO.

Post-grant amendments:

The section on post-grant amendments relates to the limitation of an ARIPO patent or utility model after the grant thereof. According to section 5ter, post-grant amendments are to be applied for in writing and a limitation fee is payable. It allows a proprietor to limit the scope of protection of a granted patent or utility model for all the designated states. Any amendment to the claims should not go beyond the scope of the claims before amendment.

Claim dependencies and multiple dependent claims:

The Protocol requires that dependent claims refer to an independent claim. Rule 7 of the Regulations to the Protocol addresses multiple dependent claims and states that any dependent claim, which is a multiple dependent claim (i.e. a claim which refers to more than one other claim), shall refer to such claim in the alternative only. Multiple dependent claims cannot serve as the basis for other multiple dependent claims.

Extension of time limits:

Rule 15ter of the Regulations to the Protocol provides that an applicant may request for extension of time limits subject to the payment of the applicable fees. Where an extension of time limit is granted, it shall be extended for a period of three months.

Eighteen out of the nineteen ARIPO member states currently are contracting states of the Harare Protocol, namely Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.

Bredenkamp Attorneys is available for consultation regarding ARIPO applications; and should you have any specific questions relating to the amendments to The Protocol, or the impact that these amendments will have on pending or future ARIPO applications, that is not clearly explained above, please do not hesitate to contact either Mitzi Klobbie or Jinel Fourie.