ARIPO: Important Developments
There have been some significant developments regarding ARIPO patents, designs and trade marks, including fee increases that took effect from 1 January 2016. This is as a result of an ARIPO Administrative Council Session that took place in Zambia in November 2015.
PATENTS AND INDUSTRIAL DESIGNS
ARIPO patents, utility models and industrial designs are governed by the Harare Protocol on Patents and Industrial Designs, as well as the implementing Regulations. Both were updated on 17 November 2015.
Here are the most important changes and clarifications.
- An ARIPO patent must relate to one invention only or to a group of inventions ‘so linked that they form a single general concept’, and it must disclose the invention in a manner ‘sufficiently clear and complete for it to be carried out by a person skilled in the art – Section 2 bis (1).
- The claims must define the matter for which protection is sought. The claims must be ‘clear and concise’ and ‘supported by the description’ - Section 2 bis (2).
- The abstract must ‘merely serve for use as a source of technical information’ and ‘not for the purposes of interpreting the scope of protection sought’ - Section 2 bis (3).
- An ARIPO patent application must do the following: identify the applicant; contain a description of the invention, a claim or claims, drawings where necessary, sequence listing where necessary, and an abstract; designate the contracting states for which it is requested – Section 3(1)(a).
Biological Material: Where the patent application contains claims that relate to biological material, and requires for the performance of the invention the use of biological material which is not available to the public and which cannot be made or obtained on the basis of the description in the application, the biological material must before acceptance be dealt with as described in the Regulations - Section 3(1)(b).
Sequence Listing: An application must contain ‘sequence listing if the patent application contains the disclosure of one or more nucleotide and/or amino acid sequences’ - Rule 5(1).
Divisional Applications: An applicant may file a divisional application relating to any pending earlier ARIPO patent application - Rule 18 bis.
Extensions: The Registrar may extend a time limit if the applicant or proprietor requests it, provided that the request complies with the ‘relevant requirements of rules’. Any extension will attract fees as prescribed - Rule 22.
International Applications: In cases where an international application is filed with the ARIPO office as a receiving office under the PCT, and an ARIPO contracting state which is also bound by the PCT is designated, an international search report will be considered, as will an international preliminary examination report - Rule 23.
ARIPO trade marks are governed by the Banjul Protocol on Marks and the implementing Regulations. The Regulations were updated on 17 November 2015, and the following changes and clarifications were made:
Mark: The definition of a ‘mark’ has been broadened to include ‘a sign, name, word, device, brand, heading, level signature, letter, numeral or a combination thereof’ - Rule 1.
Specifications: Specifications must be confined to 50 words. Additional words will incur a surcharge of US$5 per word - Rule 3.3
- Electronic filing of marks will in future be possible, although paper filing will remain an option - Rule 5 bis (1).
- The Regulations will apply to electronic filings as they do to paper-based applications, but ‘Administrative Instructions’ will be created to deal with specific issues regarding electronic applications, such as acknowledgments of receipt, the allocation of filing dates, and the signature of documents - Rule 5 bis (2) and (3).
- No member state is obliged to receive or process ARIPO applications filed electronically unless it has notified the ARIPO Office that it is prepared to do so in compliance with the provisions of the Administrative Instructions. Once it has done so, however, it cannot refuse to process an application filed electronically - Rule 5 bis (4) and (5).
Time Limits: An applicant will have a period of two months to respond to a notice informing it that its ARIPO application has been refused in a particular state. The state in question will then have a period of two months to respond to the applicant’s representations. If the state fails to respond in time, ARIPO will proceed with registration of the mark in that country - Rule 11.3.
As of 1 January 2016, the official fees also changed.
Whilst the ARIPO system provides an effective mechanism for obtaining patent and design protection in the member states, we would not recommend relying on an ARIPO trade mark registration. ARIPO trade mark registrations should be treated with some caution. Click here for further details.
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