ARIPO contributes to development of industrial property in Africa
Inês Monteiro Alves and João Pereira Cabral of Inventa International examine the reasons behind the setting up of ARIPO as well as its functions, composition, relationship to other agreements and benefits
The creation of ARIPO and the reasons behind its establishment
The African Regional Intellectual Property Organization (ARIPO) is an inter-governmental organisation created by the Lusaka agreement, which was adopted by a diplomatic conference held in Lusaka, Zambia, on December 9 1976.
As the preamble of this Agreement states, it was signed by governments that were "aware of the advantages to be derived by them from the effective and continuous exchange of information and the harmonization and co-ordination of their laws, policies and activities in intellectual property matters," and recognised that "the creation of an African regional intellectual property organization for the study and promotion of and co-operation in intellectual property matters in collaboration with the Economic Commission for Africa, the World Intellectual Property Organization and other appropriate organizations would best serve this purpose (…)".
Currently there are 19 member states (Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Liberia, Rwanda, São Tomé and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe) and membership is open to the state members of the United Nations Economic Commission for Africa or the African Union.
The objectives of ARIPO
The objectives of ARIPO are well defined in Article III of the Lusaka agreement. They are the following:
a) to promote the harmonisation and development of the intellectual property laws, and matters related thereto, appropriate to the needs of its members and of the region as a whole;
b) to foster the establishment of a close relationship between its members in matters relating to intellectual property;
c) to establish such common services or organs as may be necessary or desirable for the co-ordination, harmonisation and development of the intellectual property activities affecting its members;
d) to establish schemes for the training of staff in the administration of intellectual property laws;
e) to organise conferences, seminars and other meetings on intellectual property matters;
f) to promote the exchange of ideas and experience, research and studies relating to intellectual property matters;
g) to promote and evolve a common view and approach of its members on intellectual property matters;
h) to assist its members, as appropriate, in the acquisition and development of technology relating to intellectual property matters;
i) to promote, in its members, the development of copyright and related rights and ensure that copyright and related rights contribute to the economic, social and cultural development of members and of the region as a whole; and
j) to do all such other things as may be necessary or desirable for the achievement of these objectives.
It is clear from the above objectives that the common thread running through them is the idea of cooperation. The concept of cooperation plays an important role in the functions of the Organisation.
Article II of the Lusaka agreement lists the organs that form ARIPO: "the Council of Ministers, the Administrative Council, the Secretariat, and such other subsidiary organs as may be established by the Administrative Council in accordance with the provisions of this Agreement." The composition and functions of these organs are then defined.
The Council of Ministers (Article VIbis) is composed of ministers of member states and is the supreme body of the Organisation, responsible for, among other tasks, giving "(…) directions to the Administrative Council or the Secretariat concerning the orientation of the Organization or the development of its activities" (Article VIbis, 3, e)).
Article VII provides that the Administrative Council will consist of the heads of offices dealing with the administration of intellectual property in members of the Organisation. To fulfil its tasks of formulating and directing the execution of policy with respect to the activities of the Organisation, the Administrative Council has subsidiary committees for matter such as finance, audit, staff affairs and technical issues.
The provisions of Article VIII determine the composition and functions of the Secretariat. The director general of the Secretariat shall be appointed for a fixed term of four years and is the principal executive officer of the Organisation. One of the functions of the director general is to "examine ways in which the objectives of the Organization may be achieved and may act in relation to any particular matter which appears to merit examination either on its own initiative or upon the request of a member of the Organization (…)."
In pursuit of the objectives laid down in Article III of the Lusaka agreement, ARIPO adopted four protocols: the Banjul Protocol on Marks within the Framework of the African Regional Industrial Property Organization (ARIPO); the Harare Protocol on Patents and Industrial Designs within the Framework of the African Regional Industrial Property Organization (ARIPO); the Arusha Protocol for the Protection of New Varieties of Plants within the Framework of the African Regional Intellectual Property Organization (ARIPO) and the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore within the Framework of the African Regional Intellectual Property Organization (ARIPO).
ARIPO is a centralised and highly specialised intellectual property office, in which the applicant has the opportunity to, by way of filing only one application, obtain protection in several territories
The Harare Protocol was adopted in the capital of Zimbabwe in December 1982 by the Administrative Council of ARIPO and entered into force in 1984. This Protocol provides that an applicant for a patent or a design registration can designate any one of the Harare Protocol contracting states.
For trade marks, there is the Banjul Protocol, adopted in 1993. Just as the Harare Protocol provides for patents and design registrations, the Banjul Protocol allows applicants for a trade mark registration to designate any one of the Banjul Protocol contracting states.
Varieties of plants are also the object of a protocol: the Arusha Protocol for the Protection of New Varieties of Plants within the Framework of the African Regional Intellectual Property Organization (ARIPO), adopted in Tanzania on July 6 2015.
The fourth protocol is the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore, adopted in a diplomatic conference held on August 9 2010, in Namibia.
The system of protection of industrial property rights through ARIPO
For the purposes of this article, we shall focus our attention on the Harare and the Banjul Protocols, referring to the protection of patents, designs and trade marks, respectively.
When analysing how the system for the protection of patents, designs and trade marks in ARIPO operates, it is common to compare it to the Madrid system. For instance, ARIPO functions in a similar way to a receiving office. The national offices are notified of the applications filed through the regional system. These decide if the application can or cannot be effective in that state. In fact, each member state will have the autonomy to decide whether an industrial property right should or should not be valid in its territory.
One of the requirements for filing an application in ARIPO is to designate the states in which the protection is intended. In the circumstance that the applicant fails to designate the states in the application, ARIPO (or any receiving national office), will not consider that the protection was intended for all member states of either the Harare of Banjul Protocols. On the contrary, the applicant will be notified to complete the formalities and indicate in which countries the application should be valid.
Regarding trade marks, after the application is filed, either directly at ARIPO or at a national office (which then transmits the application to the regional organisation) a formal examination will be conducted by the Organisation, after which national offices have 12 months to proceed with substantial examination and inform ARIPO if the trade mark can or cannot be valid in its territory. The examination by the national office is then followed by the publication of the trade mark application in the Journal of ARIPO, along with a notice in the national journal of each designated member state, for the filing of oppositions from third parties who consider themselves adversely affected by the registration of the trade mark. After the opposition period is over, the trade mark proceeds to registration.
The applicant will be able to choose protection from the following signatory members for trade marks: Botswana, Lesotho, Liberia, Malawi, São Tomé and Príncipe, Swaziland, Tanzania (Tanganyika), Uganda and Zimbabwe.
As for patents, after the application is filed, either directly at ARIPO or at a national office (which is then required to transmit the application to the regional organisation), a formal examination will be conducted by the Organisation. ARIPO will then accept the application and notify the designated states, after which the applicant is required to request substantive examination, then conducted by ARIPO. Six months after the notification to the states of the formal examination, the states may make a written communication that the patent shall have no effect in their territory, either because the invention is not patentable in accordance with the provisions of the Harare Protocol, or, because of the nature of the invention, the patent cannot be registered or granted, or has no effect under the national law of that state.
The applicant will be able to designate the following member states in the application for the protection of patents: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, Tanzania (Tanganyika), Uganda, Zambia and Zimbabwe.
The ARIPO system differs from the system of OAPI (Organisation Africaine de la Propriété Intellectuelle) created in 1977 by the Bangui Agreement which comprises 17 member states (mostly French-speaking countries). This African regional system has one central office (currently located in Yaoundé, Cameroon) responsible for the granting of industrial property rights that shall be automatically effective in all its member states. The national states from OAPI do not have national offices nor do they have national laws for ruling on matters and for this reason, the states have no autonomy to unilaterally grant or refuse an industrial property right in their own territory.
ARIPO and other international agreements
ARIPO is a member of a bundle of international treaties, in which the Paris Convention and the Patent Cooperation Treaty (PCT) are included. The relation between ARIPO and the Paris Convention allows an applicant to seek the protection of industrial property rights through this African regional system claiming priority of the first application filed. On the other hand, as a result of also being a signatory member of the PCT, all ARIPO member states can be designated at the national phase of a PCT International application.
Apart from that and on an important note, on October 1 2018, ARIPO, OAPI and the World Intellectual Property Organization (WIPO) signed a Memorandum of Understanding (MoU), establishing a tripartite cooperation framework between the Organisations to undertake and provide joint technical assistance programmes to the member states within the scope of their respective cooperation activities and mandates. Article 3 of the MoU determines that the Organisations "(…) shall enhance cooperation in order to better coordinate and deliver joint programs/projects, which may include, but not limited to, the following:
1. The development of joint activities to address issues of mutual relevance, including coordinating and conducting joint studies on regional and international developments on the IP landscape, organizing joint seminars and workshops to build capacity of stakeholders and address topical IP rights (IPRs) issues, including on management and administration of IPRs;
2. Collaboration in providing technical assistance for development of national IP policies and strategies; skills development for small and medium sized enterprises; access to and utilization of technological and scientific information for innovation; including institutional capacity building for the IP Offices of Member States;
3. The joint programs of work shall specify the respective responsibilities and financial obligations of the Organizations and specify any other sources of funds, as well as staffing responsibilities."
ARIPO's digital revolution
ARIPO has recently launched a free online database – ARIPO Regional IP Database – in which it is possible to confirm regional and national IP assets from its member states. The announcement of the launching of the database, a project that began in 2014, was made in Harare, Zimbabwe.
It is ARIPO's intention to enhance the efficiency of business processing and other administrative work at ARIPO and its member states, to facilitate the accessibility and use of IP information in the region, as well as to strengthen IT's capacity in its member states.
For this reason, any stakeholder now has the opportunity to freely access information which was extremely difficult to obtain up until now and not often free of charge, as interested parties were required to request official searches at national offices.
In the words of ARIPO's director general, Mr Fernando dos Santos: "The Regional IP Database is designed to serve multiple purposes, including online provision of published IP data, encouragement of regional trade, IP scientific research, IP rights protection and enforcement in the ARIPO region, as well as sustainable development of IP."
Advantages of ARIPO
The advantages of filing through ARIPO rather than opting for the national route are easy to enumerate. We shall focus our attention on a few.
On the one hand, ARIPO is a centralised and highly specialised intellectual property office, in which the applicant has the opportunity to, by way of filing only one application, obtain protection in several territories. ARIPO is responsible for conducting a formal examination, a situation which relieves immensely backlog of national offices in the member states. Despite the centralisation of some administrative work in ARIPO, it is certain that the member states still have the autonomy to decide whether a trade mark, a patent or a design will be effective in their own territory. This situation differs from other regional agreements in Africa, namely OAPI, in which the states do not have any autonomy when it comes to the decision of granting or refusing an industrial property right in their territory.
Moreover, as for patents, stakeholders have the certainty of having specialised staff analysing the patents in contrast to what occurs in some of the member states of ARIPO, which sometimes do not have the necessary means and support to analyse such rights.
Finally, filing through ARIPO may be extremely economically advantageous, in contrast to filing directly with national states. In situations where the applicant seeks protection in more than one country of ARIPO, it is indeed certain that opting for ARIPO will be particularly profitable.
The future of ARIPO
Looking back at the history of ARIPO from 1976 until today, it is more than certain that in order to continue to exist, a lot has been achieved by the Organisation. From our perspective, considering the evolution of the Organisation and the fact that membership is open to the state members of the United Nations Economic Commission for Africa or the African Union, it is not a surprise that we will be seeing the integration of more member states in ARIPO, leading to the development of intellectual property in Africa, by permitting the progress of innovation and the economy of a rising continent such as Africa.
In light of the fact that ARIPO seeks constantly to be in the vanguard of the protection of intellectual property, consistently accessing fundamental international agreements and being an active participant in new treaties and conferences and constantly providing training seminars on the matter, it is not difficult to say that ARIPO is currently the most important organisation in Africa when it comes to the protection of intellectual property.
Inês Monteiro Alves
Inês Monteiro Alves is a trade mark and patent attorney in the African department at Inventa International. She has a degree in law and is currently doing a master’s degree in intellectual property law. She specialises in all IP matters, including patents, trade marks, copyright and domain names. She may be contacted at firstname.lastname@example.org.
João Pereira Cabral
João Cabral is a patent and trade mark attorney at Inventa International. He specialises in all IP matters, including patents, trade marks, copyright and domain names. He has a master’s degree in intellectual property law from Lisbon University School of Law. He may be contacted at email@example.com.