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Guest post: ARIPO proposes Harare Protocol amendments



Guest author


In a guest post, Gunther Roland of Rouse Africa reports from the 40th session of ARIPO’s Administrative Council where a number of amendments to the Harare Protocol on the granting of patents, utility models and designs were approved

Roland-Gunther_Rouse-200
Gunther Roland
The Harare Protocol on Patents, Utility Models and Industrial Designs empowers the African Regional Intellectual Property Organisation (ARIPO) to grant patents, register utility models and industrial designs and to administer such patents, utility models and industrial designs on behalf of contracting states.

The Protocol has since its adoption been amended a number of times to address specific issues affecting the grant, registration and administration of industrial property titles processed by the ARIPO office.

Definition of invention and patent examination

ARIPO contracting states
Last week at the Fortieth Session of ARIPO’s Administrative Council, the ARIPO Secretariat proposed the amendment of Section 3 and Rule 18 of the Harare Protocol in order to provide for a better definition of patentable inventions and to make provision for requesting examination of all patent applications.

In terms of the amendment to Section 3(3), a request for substantive examination must now be filed for all patent applications. The request must be made within three years from the ARIPO filing date or within three years from the international filing, which is deemed to be the ARIPO filing date for PCT regional phase applications. The request is subject to a fee for substantive examination. Failure to make such a request within the prescribed period will cause the application to lapse.

This brings a major change for PCT regional phase applications since these were previously automatically examined by ARIPO and request for examination and the applicable fees were only applicable for priority founding or convention applications.

International alignment

In addition, Section 3 has been amended to provide for a better definition of patentable inventions that is in line with most jurisdictions around the world.

Section 3(10) has been amended to provide:

(a) Patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(h) The following in particular shall not be regarded as inventions within the meaning of paragraph (a):

i)            discoveries, scientific theories and mathematical methods;i

ii)            aesthetic creations;

iii)            schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

iv)            presentations of information.

(i) Paragraph (h) shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a patent application relates to such subject-matter or activities as such.

(j) Patents shall not be granted in respect of:

i)            inventions the commercial exploitation of which would be contrary to “ordre public” or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;

ii)            plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply microbiological processes or the products thereof;

iii)            methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

Re-establishment of rights introduced

Under the new Section 5bis of the Harare Protocol, 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 have been withdrawn, or the loss of any other rights or means of redress, may apply for the re-establishment of their rights. 

ARIPO shall grant the request provided the requirements in terms of the section and the implementing regulations have been met.

Once granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued. However, in the event that a person who, in a designated contracting state, has in good faith used or made effective and serious preparations for using an invention or design that is subject to an ARIPO patent, utility model or industrial design in the period between the loss of rights and publication of the re-establishment of those rights, may continue such use.

A request for the re-establishment of rights must be filed within two months of the removal of the cause of non-compliance within the period, but at least within one year of expiry of the unobserved time limit. Nevertheless, a request for the re-establishment of rights in the event of a failure to claim priority, must be filed within two months of expiry of the priority period.

The request must set out the grounds on which it is based as well as the facts on which it relies. In addition, an official fee for the restoration of $100 will be payable.  

This amendment brings about a much sought after provision in the Harare Protocol, which previously did not provide for the re-establishment of rights for failing to meet a deadline.

Post-grant amendments and use of multiple dependent claims

The new Section 5ter and Rule 21ter of the Harare Protocol provides that, upon application, an ARIPO patent or utility model may be amended post grant. The amended application may amend the claims, description and drawings, provided that the amendment of the claims is limiting in that any amended claim must fall wholly within the scope of the claims prior to amendment.

The official fee for a post-grant amendment of a patent will be $300. For utility models no fee has been set thus far.

Further, Rule 5 of the Protocol has been amended to specify that in the event that a patent application contains the disclosure of one or more nucleotide and/or amino acid sequences and a sequence listing must be contained in the patent application, then such sequence listing shall also be submitted in electronic form that conforms to WIPO Standard ST. 25.

Finally, Rule 7(4) has now been included in the Protocol and sets out that a dependent claim must indicate the claims from which it depends. In addition, the Rule also provides that multiple dependent claims shall refer to such claims in the alternative only and that a multiple dependent claim may not serve as a basis for another multiple dependent claim.

The amendments includes a useful provision for patentees and owners of utility models who want to ensure their right’s validity by amending their patents or utility models post grant in the event of problematic prior art coming to the fore post grant.

Nevertheless, applicants who make use of multiple dependent claims should consider amending the claims of their applications at the time of filing in ARIPO, or shortly thereafter, to amend the claims of their applications to ensure that multiple dependent claims are not dependent on multiple dependant claims. An official fee for filing a voluntary amendment of a patent application has also been introduced and has been set at $200.

Patent fees increased

Item Old fee ($) New fee ($)
Application fee (20% discount when filed electronically) 250 290
Designation fee per country 75 85
Search and examination 500 600
Grant and publication 600 700
Excess page fees: for pages 31-100 15 20
Excess claim fees: for 11th claim onwards 40 50
Voluntary amendment 200
Request for post-grant amendment 300
Re-establishment of rights 100
Conversation of utility model application to a patent application 300

Finally, the ARIPO office proposed an increase in the official fees for patents and patent applications. Fees were last amended in 2006.

In addition to increasing the existing fees, the ARIPO Office proposed introducing new fees for certain acts previously not offered, such as post-grant amendments and re-establishments of rights, but also to introduced a fee for filing a voluntary amendment which was previously free of charge. Furthermore, and in line with ARIPO Office’s proposal to amending the Harare Protocol to now require applicants of PCT regional phase applications to request examination, a search and examination fee will now also be payable for such applications.

The new fees are shown in the table (right). In addition, each renewal fee per designated state has also been increased by $10.

The proposed increases may be quite significant for applicants of PCT regional phase applications where at least one renewal fee is due upon filing and where now a fee for substantive examination is payable. The request for substantive examination nevertheless only needs to be made within three years from the international filing date, or in the case of a convention application, three years from the ARIPO filing date.    

Proposals approved

The Administrative Council approved all these proposed amendments to the Harare Protocol, and they will come into force on January 1 2017.

Gunther Roland is an attorney qualified in Namibia and South Africa and manages the ARIPO practice of Rouse Africa

Comments






Article Comments

1.The Request for Examination will have to be undertaken for all applications lodged after January 1, 2016 and not only for PCT applications in the regional phase.
2.The last increase in fees were in 2006 and due to to increased operational costs, the increase which did not affect all fees was overdue.
3. The fees for post grant amendment of utility models has also been set.
4. As from 16 December, the new amended Harare Protocol will be on the official website www.aripo.org/
4. If you need further information, please kindly contact me

C.J.Kiige, ARIPO Dec 15, 2016

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