IP developments in Africa’s OAPI region

The African Intellectual Property Organisation commonly known by its French acronym OAPI is governed by the Bangui Agreement of March 2, 1977. The Agreement has since its adoption been amended several times with the most recent amendment being the Act of December 14, 2015 (hereinafter the “Act”). To come into effect, the Act must be ratified by at least 12 of OAPI’s 17 member states. In 2020, Cameroon became the 12th member state to do so.

The Act has resulted in several significant changes to OAPI registration procedures especially to prosecution and litigation procedures regarding patents and trademarks.

Substantive examinations have been introduced as well as pre-grant opposition procedures. Divisional applications have also been formally introduced.

For all patent applications, an examination will be conducted to establish whether the subject matter of the invention is not excluded from protection, the claims sought does not exceed the contents of the specification and there is unity of invention. A search report will be prepared to establish the patentability of the invention in terms of novelty, inventive step, and industrial applicability.

Following the publication of a patent application, any person may oppose the grant of the patent within three months by submitting a written statement setting out the reasons for the opposition which must be based on the grounds provided in Articles 2, 3, 4, 5, 9 or 17 of Annex I of the Act or on a prior registered right belonging to the opposing party. The applicant may submit a reasoned reply within three months, renewable once on application. Before ruling on the opposition, the Organisation will hear the parties or their agents on request.

Divisional applications have now been formally introduced in Article 22, Annex I of the Act. This provides that any patent application may be divided into several applications, called divisional applications at least until the decision on the grant of the patent, during examination, opposition or claim of ownership proceedings in respect of the patent application and during any appellate proceedings concerning the decision on the claim of ownership.

The closest provisions in the Bangui Agreement as amended on February 24, 1999, is in its article 24(3) which provides that an application which does not fulfil the provisions of Article 15 (on unity of invention) may be divided into a number of applications. The applicant has six months if called to file a divisional application pursuant to Article 24(3). For PCT based applications, applicants may file voluntary divisional applications, however, they must do so within the 30-month PCT deadline. It is unclear whether a divisional application filed after the 30-month deadline will be accepted. The situation is also not clear for divisional applications based on a conventional patent application or a patent application which does not claim priority.

With the formal introduction of divisional applications, applicants are no longer expected to decide at the time of PCT regional phase entry whether they also wish to file any voluntary divisional applications.

The laws surrounding trademarks have seen the most significant changes. There is an extension of the definition of a trademark to include non-traditional marks (e.g., sound and musical phrases, audiovisual signs and series of signs), the introduction of protection for certification marks; goods and services can now be included in a single application; substantive examination on absolute grounds (e.g. a mark may not be registered if it is composed of signs or matter constituting the necessary or genetic designation of the product or its composition); publication of trademark applications and the provision for third-party opposition after publication; a five-year prescription term for infringement claims; and customs watch provisions, just to name but a few examples.

Also, it will now be possible for customs to detain suspected counterfeit goods on application by the owner of a registered trademark or by the beneficiary of an exclusive right of exploitation supported by documentary proof of his/her right. The detention measure shall be lifted ipso jure within 10 working days, or within 3 working days in the case of perishable commodities, if the applicant fails to provide proof of interim measures ordered by a competent court or an application to the competent national judge providing, where applicable, the requisite guarantees to compensate the holder of the goods where alleged counterfeiting is ultimately not found to exist.

The Act has also resulted in changes in Annex VI with the extension of Geographical Indications to include agricultural, natural, and artisanal products, Annex VII on Literary and Artistic Property with the overall modernisation of the laws in line with digitisation, and data protection, and finally it has resulted in the formal introduction of arbitration and mediation proceedings to promote extra-judicial resolution of intellectual property disputes.

Although the Act has been ratified by 12 of OAPI’s members states, not all the Annexes are currently in force. Annex VI on Geographical Indications, Annex VII on Literary and Artistic Property, Annex VIII on the Protection Against Unfair Competition and Annex X on Plant Variety Protection came into force on 14 November 2020. Annex III on Trademarks and Service Marks, Annex IV on Industrial Designs and Annex V on Trade Names came into force on 1 January 2022.

It is expected that Annex I on Patents, Annex II on Utility Models, and Annex IX on Layout-Designs (Topographies) of Integrated Circuits will come into force in 2023.

For more information, please contact us at service@vonseidels.com