The Harare Protocol on Patents and Industrial designs was adopted in 1982, and it empowers ARIPO to grant and register patents, industrial designs, and utility models on behalf of contracting states. The Banjul Protocol adopted in 1993, deals with the registration of trademarks submitted either to the ARIPO Office or to the industrial property office of a member state under a centralized trademark registration system. Currently, there are 20 contracting States of the Harare Protocol and 13 contracting States of the Banjul Protocol in Africa.
These Protocols have been amended from time to time, to take into account the changing environment in the world of patents, industrial designs, utility models, and trademarks.
With effect from 1 January 2023, the 2023 Harare Protocol on Patents and Industrial Designs and the Banjul Protocol on Marks adopted by the ARIPO Administrative Council at the recently held 46th Session in Maputo, Mozambique, on the 21st to the 25th November 2022 shall come into effect. The Administrative Council adopted the following amendments to these Protocols:
Harare Protocol on Patents and Industrial designs.
Claims under Rule 7
Rule 7 of the Protocol has been amended to now provide that for patent applications that do not comply with the unity of invention requirement, the ARIPO Office shall now only deal with that 1 invention or a group of closely-related inventions first mentioned in the claims. Any additional inventions are now required to be filed as divisional applications.
Generally speaking, an ARIPO application should relate to only one invention. In cases of more than one invention the inclusion of those inventions in one ARIPO application is only permitted if all inventions are so linked as to form a single general inventive concept.
The impact of this amendment is that Applicants have to now limit an ARIPO patent application to the invention first cited in the Claims and any additional inventions shall be filed as divisional applications.
This will result in an Applicant ending up with a collection of patents, each protecting different subject matter whilst incurring additional costs for filing the divisional applications.
Additional Non-Patentable subject matter
Rule 7 bis 3 of the Harare Protocol has been amended to include patents for plants or animals exclusively obtained by means of an essentially biological process as non-patentable matter.
In our view, this amendment has the potential to cause several legal problems, for example, the ambiguous meaning of “essentially biological process” and in particular whether plant breeding processes containing the steps of crossing and selection could avoid the exclusion from patentability simply by including any other feature of a technical nature.
Banjul Protocol on marks.
New Form M11D for Cancellation of registered trademarks
Rule 13 of the protocol has been amended to include the cancellation of registered marks. Consequently, a new Form M11D has been introduced to deal with the cancellation of registered marks, which the form was previously not provided for. Previously, cancellation of a registered mark was dealt with under the national laws of each Contracting State which would then notify ARIPO of the cancellation within 1 month of receiving the same.
A centralized ARIPO Form to deal with the cancellation of registered marks has been introduced. This is a widely accepted change as it will definitely make life a little bit easier for Applicants to cancel their trademarks by reducing the amount of time taken to cancel a registered trademark.
Part B of the fees Schedule has been amended by the addition of subsequent designation fees as follows:
(a) Subsequent designation per D/S is US$ 100 in Form No. M 3
(b) for one mark
(i) in one class per D/S is US$ 50 in Form No. M 3
(ii) in every additional class per D/S is US$10 in Form No. M 3
Previously, the subsequent designation fee was US$100 regardless of the number of designated states and classes. There was no clarity as to whether the fee would apply to 1 designated state or 1 class. This amendment therefore addresses the anomaly that existed in the previous 2022 Banjul Protocol on Marks.
This article is provided for informational purposes only. Please seek legal advice from our Intellectual Property law and Technology team