Zambia and the Commencement Orders on new IP Acts

This article was published on November of 2017, on IPPro.

The Republic of Zambia is currently under a major restructure in industrial property and, following the issuance of the commencement orders on new intellectual property acts, these have now become operational. The major changes consist of the following new acts:  The new Patents Act, No. 40 of 2016, which replaces the previous act on patents (Chapter 400 of the Laws of Zambia)  The new Industrial Designs Act, No. 22 of 2016, which replaces the previous Registered Designs Act (Chapter 402 of the Laws of Zambia)  The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, No. 16 of 2015 Even though the laws have already come into force, their regulations are still to be issued and, until then, the previous regulations under the repealed acts shall be applicable, pending the issuance of the new regulations. These new regulations consider the provision of Section 15 of Chapter 2 of the Laws of Zambia, which determines: “Where any act, applied act or ordinance or part thereof is repealed, any statutory instrument issued under or made in virtue thereof shall remain in force, so far as it is not inconsistent with the repealing written law, until it has been repealed by a statutory instrument issued or made under the provisions of such repealing written law, and shall be deemed for all purposes to have been made thereunder. Effect of repeal of written law on statutory instrument made under it.” At this moment, it is deemed necessary to analyse the new package of industrial property legislation in Zambia.

The new Patents Act, No. 40 of 2016

The new Patent Act determines for some important modifications regarding the protection of inventions, starting with the provision of novelty. The new law now provides for absolute novelty of the invention object of protection. In addition, the exclusions on the patentability are currently in line with the international regulations, which did not occur until today. The previous act missed a provision on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, determined by the Budapest Treaty, which is currently determined under the new act. In this context, the new law determines for the disclosure requirements of inventions involving genetic resources and traditional knowledge. The new law also recognises international applications under the Patent Cooperation Treaty (PCT) and the enforceability of the same through the national phase for Zambia, a situation which was not foreseen under the previous patent act. The duration of the patent was also subject to modification. The new law determines that the duration of a patent in Zambia is 20 years, with an option to extend the term in certain circumstances. Contrarily, the previous legislation determined that the duration of a patent was 16 years, with the possibility of being extended for a period of five years and, in exceptional cases, for a period of 10 years. The new patent act also provides changes in relation to the possibility of restoring a patent, in addition to the possibility of registration of utility models, previously not foreseen.

The new Industrial Designs Act, No. 22 of 2016

As for the new Industrial Designs Act, No. 22 of 2016, which replaced the previous Registered Designs Act (Chapter 402 of the Laws of Zambia), it is possible to also appoint a few major alterations in relation to the previous legislation on the subject. The major contribution of this law resides on the fact that the owner will be able to rely on an effective industrial property right, contrarily to what occurred with the previous Design Act of 1958, considering that the registration of a design in Zambia only conferred, until the approval of the current law, the protection by copyright. Despite this significant change, other innovations of the present law may be summarised in a few points. To begin with, the new act provides detailed information on the requirements and procedures involved in design registration, as well as the cancellation of registered designs. The current legislation on designs is now very clear about the registration procedure, offering detailed provisions regarding the examination, publication and opposition proceeding of design applications. As for the requirements of protection, there have been amendments regarding the criteria of protection. As per the new law, “absolute novelty” is required so that a design could be subject to protection, thereby modifying the previous criteria of novelty. In addition to this requirement, the new law introduces the requirement of the design’s individual character, which was not determined in the previous act. In what the procedures of registration refer to, apart from the detailed registration process, it seems relevant to point out that it is now possible for a third party, including the state, to oppose the registration of a design within a period of two months from the publication date, determined under article 43. The duration of the design protection was also modified, and at this moment it is no longer possible to renew the registration of a design for more than two consecutive periods of five years, but only for one. Therefore, the total duration of registration of a design in Zambia shall be 10 years rather than the period of 15 years.

Two more important notes on licensing, and the creation of designs by employees during the course of the employment contract. Licence contracts are now mandatory to be registered before the registrar, which has the power to refuse the registration of the license in case the contract imposes unjustified restrictions on the licensee. Moreover, unless the contract is not registered, this shall not be effective against third parties, in accordance to article 78 of the new law. As for the creation of designs by employees during the course of the employment contract, it is determined that this belongs to the employer. However, as per article 45, in the circumstance the design acquires a much greater economic value than that the parties could have foreseen at the time of the conclusion of the contract, the employee shall be entitled to an equitable remuneration to be agreed upon by the parties or in default, to be determined by the court. In addition, one note on the possibility of filing international design applications under the Harare Protocol adopted by African Regional Intellectual Property Organization (ARIPO), previously not foreseen under the law.

The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, No.16 This law is a main innovation in the country, intended to protect indigenous knowledge, expression of folklore and the indigenous genetic resources of Zambia. The act encourages members of indigenous communities to register their industrial property rights in order to benefit from the cultural background the country has to offer. Finally, the new Trademarks Act is expected to be issued before the end of 2017 and shall introduce service trademarks along with the international registrations. The approval and entry into force of the new package of legislation on industrial property in Zambia is a major development for the country that keeps constantly seeking to keep up with the international regulations in order to obtain the confidence of foreign investors. It is now certain that a country that provides for legal certainty in matters of industrial property is seen by stakeholders as a place to invest.