The patent granting process at ARIPO - a practical guide

Inês Monteiro Alves of Inventa explains the patent registration process at the African Regional Intellectual Property Organization (ARIPO).

Introduction

ARIPO (African Regional Intellectual Property Organization) is an inter-governmental organization that facilitates cooperation among Member States in intellectual property matters, and, in ARIPO’s words, has the objective of pooling financial and human resources and seeking technological advancement for economic, social, technological, scientific, and industrial development.

The regional system was established by the Lusaka Agreement on December 9, 1976, and it is ruled by five Protocols:

-       The Harare Protocol on Patents and Industrial Designs.

-       The Banjul Protocol on Marks.

-       The Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.

-       The Arusha Protocol for the Protection of New Varieties of Plants.

-       The Kampala Protocol on Voluntary Registration of Copyright and Related Rights.

The accession to the Protocols is within the discretion of each Member State and this is why not all the States that are signatory member of the Harare Protocol are members of the Banjul Protocol, for example. There are some Protocols that have more signatory members than others, which is the case for the Harare Protocol that is the one with more signatory members. 20, to be exact: Botswana, Cape Verde, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Seychelles, Sierra Leone, Sudan, Uganda, Tanzania, Zambia, and Zimbabwe.

The implemented system by the Harare Protocol has some similarities with the Patent Cooperation Treaty (PCT), considering the applicant is requested to designate the States in which intends to seek protection of the patent. ARIPO is then responsible for receiving the patent application, examining it formally and substantially and granting the same, unless one of the member states that has been designated notifies ARIPO that a patent shall have no effect in that jurisdiction.

Indeed, the national states that have been designated in an application will have six months counted from the communication on the filing made by ARIPO, to issue a written notification stating that a patent shall have no effect on that jurisdiction. The grounds for refusal may be:

      i.         that the invention is not patentable by the provisions of the Harare Protocol, which comprises the provisions about the patentability requirements.

     ii.         or that, because of the nature of the invention, a patent cannot be registered or granted or has no effect under the national law of that State.

ARIPO is a signatory member of the PCT and therefore, ARIPO may be designated on an international patent application. The time limit to enter the regional phase of the PCT in ARIPO is 31 months counted from the priority date, which is more than the majority of the jurisdictions that are signatory members of the Patent Cooperation Treaty, that have a time limit of only 30 months.

Apart from the clear advantage that, by way of filing one application, the patent owner will have protection in 20 jurisdictions, another advantages may be pointed out: the fact that the office’s official language is English and that no translations are required to be submitted in any of the designated states; the fact that the maintenance of the right is centralized, considering that the annuities are paid directly to ARIPO and not to each of the designated states.

The purpose of this article is to analyze the different phases of the patent granting process in ARIPO on a practical level, particularly the administrative process, phases, and forms to be submitted in each situation.

Filing

The process of patent protection in ARIPO is initiated by way of submitting Form 3 [Request for Grant of Patent] directly before ARIPO or before the Registry of one of the designated states, that then transmits the application to ARIPO to process the same. One important note is the fact that a divisional application may only be filed with the ARIPO Office and not in one of the designated states. The application is required to be submitted by a registered IP agent before ARIPO and it may be filed directly at the ARIPO’s platform (e-filing), by e-mail, in person, by registered mail or by courier.

This form shall have to be accompanied by the following documentation:

-       Form 4 [Appointment of Representative (Power of attorney)].

-       Form 13A [Request for Examination] – that may be submitted with the application or requested within 3 years counted from the priority date.

-       The title, abstract, claims, description, and drawings of the invention in English.

-       A statement specifying the basis of the applicant's right to the patent, in other words, an assignment from the inventor(s) to the applicant(s), if this is the case.

-       A copy of the priority document, with a translation in English, if necessary.

-       The receipt of the payment of the official fees (may be paid within 21 days counted from the filing date).

After receiving the application, ARIPO will then issue Form 12 [Notification of Filing Date (Rule 14(2); Instruction 36(3))], in which informs the filing date and number of the patent. This notification is sent by ARIPO to the applicant's representative and to the industrial property office of  each designated State.

Examination

After the formalities related to the filing, the examination phase will take place. ARIPO is responsible for conducting a formal and a substantial examination.

Initially, a formal examination is conducted by ARIPO, in which the office will confirm if the application complies with all the necessary formalities. The possible outcomes of this examination may the following:

-       In case the formalities are not met, ARIPO will notify the applicant and Form 15 [Request to Reconsider Decision Refusing Application for Grant of Patent on Grounds of Non-Compliance with Formal Requirements] shall have to be filed.

-       In case all the formalities are complied with, ARIPO will issue Form 13 [Compliance with Formal Examination] in which notifies the applicant that, pursuant to Instruction 41, the application complies with the prescribed formal requirements. It requests, within this notification, that the applicant submits Form 13A [Request for Examination]pursuant to Section 3(3), Rule 18(1)(a), in case it has not done upon the filing. The notification is then transmitted to the designated member states by ARIPO.

Following the formal examination, the substantive examination is the subsequent phase. The request of substantive examination shall be deemed to have been filed when the search and examination fees have been lodged, along with Form 13A [Request for Examination]. Where no request is made within the prescribed period, the application shall be deemed to have lapsed.

Subject to meeting certain provisions, the applicant may request for an expedited or delayed examination of an application. The request is filed under Form 48 [Request for expedited/delayed examination].

ARIPO will proceed with the search and the substantive examination within their internal Guidelines for Examination. The guidelines give instructions about the practice and procedure to be followed in the various aspects of the examination of ARIPO applications and registrations of patents.

The results on the search report and substantive examination may have the following outcomes:

-       Form 18 [Notification of Non-Compliance with Substantive Requirements and Invitation to Submit Observations and/or Amended Application (Rule 18(3); Instructions 50(2))]: in case the application does not meet the necessary requirements to be granted, the applicant is invited to file observations and, where applicable, an amended application, together with a request for reconsideration of decision through Form 19 [Request to Reconsider Decision that Substantive Requirements have not been complied with], within 6 months. Where the Office still refuses the application after reconsideration, the applicant may either lodge an appeal with the Board of Appeal or request that the Office convert the application into a national application proceeding under the laws of the of one state among the designated states, by way of submitting Form 23 [Request for Conversion of Application into National Application].

-       Form 21 [Notification of Decision to Grant or Register (Rule 18(4); Instruction 52)]: in case the application meets the substantive requirements to be granted and the applicant is invited to proceed with the payment of the grant/registration and publication fees, within 3 months.

The designated states may, within 6 months from the notification of filing of a patent in ARIPO, raise objections to the granting of the same stating that a patent cannot be registered or granted or has no effect under the national law of that State. In case this situation occurs, the applicant will be able to file Form 22A [Notification or Request by Applicant to Designated State to Accept or Reconsider the Decision by Designated State that Patent or Utility Model shall have no Effect in its Territory (Section 3(6); Rule 18(5); Instruction 53)] and overcome the objection. In the circumstance the objection is not overcome for that jurisdiction, the patent may still be granted on the other designated states.

Granting and publication/issuance of registration certificate

Upon the reception of Form 21 [Notification of Decision to Grant or Register (Rule 18(4); Instruction 52)], the applicant is invited to proceed with the payment of the grant/registration and publication fees within 3 months. No special formalities are required at this stage, apart from the payment of the official fees.

The patent application will then be published in the ARIPO Journal, and a certificate of grant will be issued by ARIPO stating in which Member States the patent is valid.

Recordals/alterations and withdrawal/reduction of states of the patent

The applicant may request recordals/alterations or the withdrawal/reduction of states of the patent. To request the registration of a license, Form 42 [Application to Register License or other similar right] should be filed. In case the applicant is seeking to register the transfer of the patent to a different owner, Form 41 [Application to Register Assignment, Transmission, or other form of Transfer] will be the suitable way to do so.

ARIPO also admits the possibility of requesting the correction of errors made within the course of the granting of the patent. If necessary, the applicant may file Form 1 [Request for Alteration of Name or Address or for Correction of Error] so that clerical errors are corrected. As for the withdrawal or the reduction of designated states of the patent application, the applicant is required to fill Form 17 [Declaration of Withdrawal of Patent Application (or Patent) or Utility Model or Reduction of Designated States] and submit the same before ARIPO.

Annuities

Annuities in ARIPO are paid directly to the regional organization rather than paid to each designated state. The applicable costs will depend on the designated states and a late payment surcharge will be applicable within 6 months. The 1^st and 2^nd annuities are paid upon the filing and the calculation is the following:

-       For PCT applications: the annuity payment is calculated from the source PCT date (the year of the source PCT date is not included).

-       For other patent applications: the annuity payment is calculated from the date of filing in ARIPO (the year of the filing is not included).

Official fees

The official fees related to patent applications in ARIPO is annually revised by the Organization and it is published in the official website. The applicable currency of ARIPO is USD. All the official fees related to the above proceedings may be consulted here - https://www.aripo.org/wp-content/uploads/2022/01/Patent-Fees.pdf

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, any other of its practitioners, its clients, or any of its or their respective affiliates. This article is for general information purposes only and is not intended to be and should not be taken as legal advice. Please contact the author(s) if you have any questions about this article.

Author

Inês Monteiro Alves is a trade mark attorney and legal services manager at Inventa. She is based in Lisbon, Portugal.