INTRODUCTION

A number of changes to the ARIPO system will come into effect on 1 January 2022. These changes affect the two major ARIPO protocols, namely:

  • the Harare Protocol that deals with patents, utility models and industrial designs;
  • the Banjul Protocol that deals with trade marks.

These changes were agreed at a meeting of the ARIPO Administrative Council that took place in Kampala, Uganda, 23-26 August 2021. Details of these changes are set out below.

AMENDMENTS TO THE HARARE PROTOCOL – PATENTS, UTILITY MODELS AND INDUSTRIAL DESIGNS

The amendments deal with:

The disclosure requirement in an ARIPO patent application – description and drawings
At present Section 2bis provides that an ARIPO patent application shall disclose the invention in a manner that is clear.

The proposed amendment adds a sub-section (1)c which provides that ‘disclosure of an invention… shall be entirely effected by an enabling description and read in conjunction with accompanying drawings if any.’

Observations by third parties.
A new section 2 qater provides that ‘in any proceedings before the Office, following the publication of the ARIPO patent or Utility Model application any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That party shall not be a party to the proceedings.’

Various issues relating to patent, utility model and design applications

Patents

Request for grant
Section 3(1) is amended to make specific provision for a request for grant:
An ARIPO patent application shall contain a request for the grant of an ARIPO claim …. and be subject to the payment of prescribed fees.’

Conversion
A new paragraph 6(b) is inserted to make provision for conversion:
‘If the designated State refuses the application the applicant may, within 3 months from being notified of such refusal, request that his application be treated as an application according to the national law of that State.’

Utility models

New and industrially applicable
Section 3 ter is amended to clarify the terms ‘new’ and ‘industrially applicable’ in the context of a utility model.

A utility model shall be considered to be new is it is not anticipated by the prior art within the jurisdiction of the Contracting States of the Protocol.’

The section goes on to provide that a utility model ‘shall be considered as susceptible of industrial applicability if it can be made or utilised in any kind of industry including agriculture.’

Content of an application
Section 3 ter is further amended to provide that an application shall contain ‘a request for registration of a utility model’, as well as ‘a description of the utility model, a claim, a drawing or drawings, and an abstract.’

Points iii) and iv) of the section are deleted.

Industrial designs

Content of an application
Section 4 is amended to provide that an application shall contain ‘a request for registration of an industrial design’ as well as ‘a reproduction of the industrial design.

Points iii) and iv) of the section are deleted.

Term of protection
Section 6 is amended to extend the term of protection from 10 years to 15 years:

‘The duration of such a registration shall be 15 (previously 10) years from the filing date, except for designated States with a shorter term of protection, (where) the registration shall expire at end of (the) term of protection provided for under their respective national design laws. Where an Industrial Design was registered before the commencement of the amendment of this Section, the registration period shall be as provided before this amendment.’

AMENDMENTS TO THE IMPLEMENTING REGULATIONS

Inspection of files
Rule 3 deals with the inspection of files.

Rule 3(2) © is amended to provide that applications withdrawn before publication can only be inspected with the written permission of the applicant.

Additional fees
Rule 11 bis relates to additional fees.

A new subsection 1(b) provides that ‘the additional fee is calculated on the basis of the pages of the description, claims, any drawings and the abstract. The pages forming part of a sequence listing… shall not be counted, provided the sequence listing complies with WIPO Standard ST.25.’

A new subsection 1(c) provides that ‘where formal deficiencies in the documents making up the ARIPO patent application need to be corrected, the number of pages complying with the physical requirements shall be the basis for calculation of the additional fees.’

A new subsection 4 says that ‘if an amendment filed after payment of additional fees introduces more claims and pages than those paid for, the fees for the newly introduced claims and pages shall be payable at the time of paying grant and publication fees.’

Time limit for re-consideration
Rule 15bis is amended to provide that ‘the prescribed period referred to in Section 3(4) of the Protocol within which the applicant may request the Office to reconsider the matter shall be not less than 2 months and not more than 6 months after the date of notification of the decision of the Office that the application has been refused.’

Extensions of time where there are exceptional circumstances
Rule 15 ter relating to Extension of Time Limits is amended by amending sub-paragraph c) to read that the Director General may extend a time limit ‘due to an exceptional occurrence such as a pandemic, a natural disaster, war, civil disorder or a general breakdown in any means of electronic communication.’

Voluntary amendments following issuance of non-compliance and patentability requirement.
There is a significant change to Rule 18, Examination as to Substance. A new 3(b) reads as follows:

b) Voluntary amendments to applications shall be subject to the following:

i) These provisions shall not apply to voluntary amendments made before a search report and/or an examination report is communicated to the applicant.

ii) Together with any comments, corrections or amendments made in response to communications made by the Office under Rule 18(3), the applicant may amend the description, claims and drawings of his own volition with each response to be an office action by the Office that raises objections or requirements for corrections.

iii) Each amendment may only be incorporated in the application through a written examination report consenting to such amendments by the Office.

iv) When filing any amendments referred to in paragraphs i) to iii), the applicant shall identify them and indicate the basis for them in the disclosure as filed. If the Office notes a failure to meet either requirement, it may request the correction of this deficiency within a period of 2 months.

v) Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.

vi) Provided that the introduction of unsearched and/or unexamined claims shall be allowable subject to payment of new search and examination fees as stipulated in Schedule I to the Rules.

vii) Voluntary amendments after an application has been recommended for grant by the Office shall be considered under Section 5 ter of the Protocol.’

Examination of Utility Model as to Substance
An important ‘green technology’ amendment to Rule 18 ter is contained in 3©. This provides that the Office will acknowledge a request to modify the examination timeline and provide direction upon receipt of a request to ‘confirm in writing that the Office concurs with the applicant’s request of modified examination timeline since the application relates to one of the fields of green technologies defined in the Administrative Instructions.’

Third party observations
A new and important Rule 19 ter relates to third-party observations and reads:

1) Following publication of the ARIPO patent application any person may submit observations concerning the patentability of the invention.

2) The observations by a third party may be considered if they are made in respect to novelty, inventive step, claim clarity, sufficiency of disclosure, patentability of subject matter and unallowable amendments.

3) The observations shall be filed in English and shall include a statement of the grounds on which they are based.

4) Documentary evidence and, in particular publications submitted in support of the arguments may be filed in any language. However, the Office may request that a translation into English be filed within a period to be specified; otherwise the evidence will be disregarded.

5) The person filing the observations may not become a party of the proceedings before the Office.

6) The observations shall be filed preferably in electronic means such as email and the web interface provided by the Office.

7) Although the third party is sent acknowledgment of the receipt of his observations (if these were not filed anonymously), the Office does not specifically inform him of any further action it takes in response to them beyond subsequent published office actions such as publication of a grant.

8) The Office shall make every effort to issue the next office action to communicate such observations to the applicant for or proprietor of the patent provided the observations are substantiated.

9) If the observations call into question the patentability of the invention in whole or in part, they must be taken into account in any proceedings pending before the Office until such proceedings have been terminated. If the observations relate to alleged prior art available other than from a document, eg. from use, this is taken into account only if the alleged facts either are not disputed by the applicant or proprietor or are established beyond reasonable doubt.

10) Observations received after the decision to grant/refuse the application shall be included in the file without taking note of the content.

11) Where an observation was filed during the international phase, ARIPO as designated/elected Office will consider its content upon entry into the Regional phase once this becomes available.’

Modified examination timelines
Rule 23 (2) relating to International Applications is to be amended to specify that the time limit for a PCT application to enter ARIPO regional phase is 31 months:

‘Where, in an international application, a Contracting State which is also bound by the Patent Cooperation Treaty is designated for the purpose of obtaining a patent under the provisions of the Protocol, the applicant shall perform the following acts within 31 months from the date of filing of the application or, if priority has been claimed, from the priority date.’

The acts referred to above relate to the furnishing of an English translation, paying fees and appointing a representative. Two new acts are added:

d) file the request for examination provided for in Section 3(3) and Rule 18(1);

e) specify the application documents, as originally filed or as amended, on which the ARIPO grant procedure is to be based. ‘

TRADE MARKS – AMENDMENTS TO THE BANJUL PROTOCOL ON MARKS

These deal with:

Appointment of representatives
The title of Rule 2 is amended to read: Filing: Appointment of Representative and Transmittal of Application.

Publication in the Marks Journal of an ARIPO mark refusal by the Office or a designated state
Rule 11bis is amended by the addition of a point b) which reads:

‘Where an application for registration of a mark has been refused by ARIPO under Section 5 or in respect of which a designated state has made the communication referred to in Section 6.2, the Office shall, as soon as possible, cause the application to be published as refused.’

Cancellation of a designated State or reduction of classes.
The heading of Rule 13 is changed to read Changes in Registered Particulars, Withdrawal of Application or Cancellation of Designated States of Reduction of Classes.

The text changes as follows:

The present 13: 1 becomes 13:1 (a) and the words ‘voluntary cancellation in respect of some of the countries concerned’ are deleted.

The following is added:

‘b) The applicant may, subject to the payment of the prescribed fee, cancel the number of designated states at any time by submitting a written declaration to the Office.

c) Requests for the cancellation of the registration, voluntary cancellation/cancellation in respect of some of the countries concerned, shall be filed in a single copy, dated and signed by the applicant or his representative on Form M11B.’

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