ARIPO’s Harare Protocol 10th Amendments - Changes and Implications

The African Regional Intellectual Property Organization (henceforth, ARIPO) is a supranational organization in Africa, for the cooperation of among African states in all matters related to Intellectual Property, first established by the Lusaka Agreement in 1976. At the moment, this supranational organization is comprised of nineteen member-states and four treaties for different Intellectual Property rights:

• The Harare Protocol for the creation of a unified Patent and Utility Model system for all ARIPO member states;
• The Banjul Protocol, which created a common, to all its member-states, trademark application system, in which an applicant applies for an ARIPO trademark and must designate the member states in which it will be introduced;
• The Arusha Protocol, related to the protection of plant varieties;
• The Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.

An amendment to the Harare Protocol has been in force in every ARIPO Member-State as of January 1st, 2017. This amendment was approved by the Resolutions of ARIPO’s Administrative Council on its 40th Session, which was held in Harare, Zimbabwe, last December.

This is the 10th amendment to the Harare Protocol since it was adopted, on the December 10th, 1982. With the goal of strengthening the protection available for patent and utility model holders, the Administrative Council of ARIPO organized its’ 40th meeting session from December 5th to 7th, 2016. The treaty currently in force expands the rights of an ARIPO patent to include six changes to the existent treaty:

1. Changes to the substantive examination;
2. In-depth list of inventions excluded from protection;
3. Post grant amendments;
4. Restricted use of multi-dependent claims;
5. Re-Establishment of Patent / Utility Model rights;
6. Update of the official fees.

1. Changes to the substantive examination:

The previous Section 3, (3) stated that “The Office shall undertake, or arrange for, the substantive examination of the patent application”, while the new rule adds the term “on request”. As such, the current lettering of Section 3, (3) is “The Office shall, on request, undertake, or arrange for, the substantive examination (…)”

According to the previous version of the Harare Protocol, the ARIPO Institute initiated the substantive examination of any patent application by default. This regulation forced the Institute to provide patentability examination to all applications, without any fees being charged for these services.

With the new rule, this examination, which remains mandatory, must now be requested by the applicant within 3 years counting from the ARIPO or international filing date, designating the ARIPO Institute.

This change to the rule will have a larger impact on patent applications filed through the Patent Cooperation Treaty as the applicants must now pay the examination fees in order to file the examination request, while such fees were not applicable in the previous legislation.

One consequence of such a provision is to convert the request for substantive examination into a patent or utility model application’s formal requirement. With this said, should the request for examination not be filed and paid, the application shall be refused.

2. Detailed list of non-patentable inventions:

The previous version of the Harare Protocol had no provision listing the non-patentable inventions. Previously, it only described the requirements that an invention must fulfill in order to be patentable, such as the absolute novelty and the inventive step.

This new provision, Section 3, paragraph 10, which described the concept of invention, now explicitly excludes some subject matters’ patentability, as per article 10. According to paragraph h), the following are not considered to be inventions: Discoveries, scientific theories, mathematical methods, aesthetic creations, games’ rules, business methods, computer programs or presentations. Furthermore, while some other subject matters may be regarded as inventions, these are still excluded from patent applications, according to paragraph J), which determines that inventions whose subject is contrary to morality or the law and varieties of plants and animals are not patentable.

With these new specifications the ARIPO’s patent system is now on par other multinational treaties, such as the European Patent Convention, promoting unity and coherence for patents and utility models’ application system, on an international level.

3. Post grant amendments:

A new provision, implemented with this revision of the Harare Protocol, established the rules for post grant amendments, or limitations, on the Section 5ter. Within the previous legislation, an applicant was able to amend or limit his application once, which severely limited the possibility of maintaining the application through limitations and restrictions.

While the previous legislation didn’t allow for more than one change to a patent or utility model application, with the new Section 5ter, it is now possible to limit a patent or utility model application. A patent or utility model owner is now able to amend the claims, description and drawings, provided that the amendment of the claims is limiting, this means that any amended claim may only be accepted as valid if it falls wholly within the scope of the original claims.

This change is a very welcomed opportunity for all current, and future, ARIPO patent and utility model owners as they may now restrict or correct their applications to ensure that it remains valid.

4. Restricted use of multi-dependent claims:

Previously, following the system established by the Protocol, it was possible to create multi-dependent claims upon other multi-dependent claims. A multi-dependent claim is one such which content refers to various other claims, further limiting their scope.

According to the new rule 7, no. 4, it is no longer possible for multiple dependent claims to serve as basis for other multiple dependent claims. From 2017 onwards, any dependent claim may only refer to multiple claims as alternatives. Furthermore, it establishes that a dependent claim must expressly refer any previous claim as its basis, preferably at the beginning of the text.

The prohibition of basing multi-dependent claims on another such claim is a welcomed change. The applicants must now simplify the patent or utility model’s application, making these less complex and easily understandable. This new rule has the positive effect of allowing anyone to understand the state of the art at any given time, promoting public knowledge of inventions and further innovation.

5. Re-Establishment of Patent / Utility Model rights:

One other new rule has been added to the treaty. An applicant, who acted with all due care, may now request the re-establishment of a right that is no longer in force due to the lapse of any time frame that results either in the refusal of the application by the ARIPO, the withdraw of the application or the loss of any other right. This means that an applicant, who saw its application revoked or withdrawn due to no fault of his actions, may now request the re-establishment of the rights. Should this request be granted, the legal consequences of the time limit lapse are deemed as not having taken place in the first place.

The request of such a re-establishment and the omitted act must be filed within two months from the moment the cause of non-compliance has ceased to exist.

The objective of this new provision is to allow the applicant to correct the existence of an omitted act due to an extraneous cause. The creation of this provision now allows the applicant to file any missing document, within a reasonable time.

6. Update of the official fees:

Finally, the 10th Harare Protocol amendment also reviews the applicable official fees regarding patent and utility model applications.

The schedule of the official fees regarding the ARIPO’s patents and utility models applications has been updated as of the new treaty. This new schedule of fees reflect the changes made to the procedures, not only establishing fees for the changes brought into force by the amendment, such as the re-establishment of rights and post-grant amendments, but also an increase to all the existent fees, which includes the patent application filing fees.

In summary, the 10th amendment, which came into force in 2017, introduced some much needed provisions. The aforementioned amendments and new rules allow the ARIPO’s patent and utility model application system to be tantamount to other national and multinational’s systems such as the European patent system. Further encouraging inventors and applicants to develop, invest and explore their inventions in Africa, by better safeguarding their rights.