A report of a (virtual) ARIPO meeting that took place on 15 July 2020 has recently been published. Entitled Working Group on the Improvement of ARIPO Protocols relating to Industrial Property, the report sets out a number of proposals that were presented at the meeting, and which will now be considered by member states.
Patents (the Harare Protocol)
In an attempt to clarify just what is meant by ‘disclosure’, the proposal is to amend Section 2 bis by making it clear that disclosure of an invention ‘shall be entirely effected by an enabling description as read in conjunction with optional accompanying drawings.’
Third party observations
The proposal, contained in Section 2 quater, is to allow for third party observations to ARIPO patent and Utility Model applications. The observer will not become a party to the proceedings.
Request for grant
Section 3 (1) is to be amended by specifically requiring the application to contain ‘a request for the grant of an ARIPO patent’ rather than simply ‘identify the patent’
Converting to a national
A Section 3(6)(b) is to be added. This will state that ‘if the designated State refuses the application, the application may, within three months from being notified of such refusal, request that his application be treated, in the designated State, as an application according to the national law of that State.’
Novelty and industrial applicability
Section 3 ter, which provides that a utility model must be new and industrially applicable, is to be amended by providing that ‘a utility model shall be considered to be new if it is not anticipated by the prior art within the jurisdiction of the Contracting States of the Protocol.’ As for industrial applicability, this will be present ‘if it can be made or utilized in any kind of industry including agriculture.‘
Request for registration
Section 4 (1) is to be amended by providing that an application shall contain ‘a request for registration of an industrial design… and be subject to the payment of the prescribed fees.’
Section 6 is to be amended to provide that the duration shall be 15 years (previously 10) from the filing date, ‘except for designated States with a shorter term of protection’, where the term ‘will expire at end of term of protection provided for under their respective national design laws.’
Regulations under the Harare Protocol (patents)
Rule 11 bis is to be amended by making it clear that the additional fee payable for an ARIPO patent application will be ‘calculated on the basis of the pages of the description, claims , any drawings and abstract.’ It further says that ‘if an amendment filed after payment of additional fees introduces more claims and pages than those paid for, fees shall be payable on/for the extra claims and pages.’
Rule 15(bis), which sets out the time limit for the applicant to request the Office to reconsider a matter, shall be ‘not less than two months and not more than six months’ after the date of notification of the decision of the Office that the application has been refused.
In a move that is presumably linked to Covid-19, Rule 15ter – which deals with extensions of time limits- is to be amended to make provision for extensions 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.’
Examination as to substance
Rule 18 will be amended to regulate, inter alia: how an applicant can respond to examination through comments, corrections or amendments; how an applicant must identify amendments and indicate the basis for them; how the Office can grant the applicant a two – month period to correct failures to do so; and how 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.
A Rule 19 ter will be introduced. This will provide that, following publication of an ARIPO patent application, any person will be entitled to present observations concerning the patentability of the invention. Further points include:
- The observations can be considered if they relate to novelty, inventive step, claims clarity, sufficiency of disclosure, patentability of subject matter and allowable amendments.
- The observations must be in English, although supporting evidence may be in another language.
- The person filing the observations does not become a party to the proceedings.
- The observations should preferably be electronic.
- If the observations relate to patentability of the invention the Office must consider them in any proceedings that are pending before the Office.
- Where observations are filed during the international phase, ARIPO as the designated Office will consider them upon entry into the Regional phase.
Rule 23 will be amended to provide that where a Contracting State which is bound by the PCT is designated the applicant has a period of 31 months from the filing date of the application or priority date to do various things, such as furnish an English translation of the international application and pay the fees.
Trade marks (the Banjul Protocol)
Publication of refusals
Section 6 bis will be amended to include a 6bis.1(B) reading: An application for registration of mark which has been refused by the office… or by a designated state…shall be published in the Marks Journal as having been refused.’
Section 7 currently allows for the restoration of a trade mark registration that had been removed due to non-payment of renewal fees. The proposed amendment was to remove this wording from Section 7, and introduce Section 7bis to amplify on the restoration provisions and also allow for the restoration of any lapsed applications due to failure on the applicant’s part to comply with any formalities. Comments on the proposed amendments have been provided, and these are now under review.
Rule 3 will provide that the surcharge for all words over 50 in a specification must be paid at the time of filing. The amendment simply provides clarity on the timing of the payment.
Cancellation of designated states
Rule 13 will provide that an applicant will be entitled to cancel the number of designated states at any time, subject to the payment of a fee. The proposed changes relate only to the fee and prescribed forms.
We will report on further developments as they arise.
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