by Peter JAMES
REGIONAL PATENT SYSTEMS IN AFRICA
Apart from South Africa and perhaps a few other countries such as Zimbabwe, Nigeria and Egypt the number of patents applications filed annually in African countries is not large. While Africa remains somewhat of a "backwater" insofar as world economies are concerned this is likely to remain the case. There is however increasing talk of an "African Renaissance" and certainly there are some countries where improved economic policies appear to be bearing fruit. Tanzania and Uganda are well known examples of this. As owners of Intellectual Property Rights generally adopt a medium to long term view patent protection in Africa is an important factor which must be considered by an increasing number of businesses if the economic predictions in Africa are to be believed.
Africa has a long history of being subjected to external influences the vast majority of which was unwelcome at the time and is still considered as having been such today. However, apart from unwelcome imperialist activities and the slave trade the colonising powers of Europe brought with them tools which have enabled Africa to compete in the global economy. One of these tools is of course Intellectual Property.
If a political map of Africa which shows the colonising powers (Figure 1) is considered it will be noted that the French and English occupied a dominant position. Of course the Portuguese, Spanish, Italians, Germans and Belgians were also there but their colonising role was significantly smaller. The map further indicates that the French influence was concentrated on the western bulge of Africa while the English influence was concentrated on the eastern side of Africa and particularly from the southern tip to the horn. As a result of this colonisation the indigenous peoples in these areas spoke predominantly French or English as the case may be as a second language. This is still the case today. It is natural that insofar as Intellectual Property co-operation is concerned that the francophone countries should co-operate with each other on the one hand and the anglophone with each other on the other hand. This has given rise to two regional intellectual property systems in Africa.
The francophone system is the Organisation Africaine de la Proprie Intellectuelle commonly known as OAPI or the African Union and sometimes known as the African Intellectual Property Organisation. The anglophone regional intellectual system is the African Regional Industrial Property Organisation commonly known as ARIPO. In line with its heritage this organisation was formerly known as the English speaking African Regional Industrial Property Organisation (ESARIPO). Thus, if one looks at a political map of Africa (Figure 2) showing the OAPI and ARIPO countries one cannot but help notice how they mirror the francophone and anglophone countries resulting from French and English colonisation respectively.
The members of OAPI are Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Djibouti, Gabon, Guinea, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo and Guinea-Bissau (Figure 3).
The members of ARIPO are Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Sierra-Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia, Zimbabwe (Figure 4). As may be seen a number of South African neighbours are members and speculation has been rife for a number of years as to whether or not South Africa will eventually join ARIPO. My personal feeling is that the chances are good, that it will.
The OAPI regional system came into being as a result of the Libreville Accord of September 13, 1962 effective 1st January 1964 as revised by the Bangui Accord of 2nd March 1977 and the Regulations made in terms of the revision which were effective the 8th February 1982. The system deals not only with patents but trademarks and registered designs as well.
An interesting innovation recently introduced is a provision in terms of which the existing OAPI patent, trademark and design registrations may be extended to new territories which join the Union. This may be done within 18 months of the date of joining and on payment of an extension fee. Currently this provision effects Mali, Guinea-Bissau and Guinea although this indicates a special retroactive provision insofar as Mali and Guinea are concerned as they joined OAPI some time ago. The provisions furthermore provide for the existing Intellectual Property Rights in new countries joining OAPI to be extended to the other members of the Union.
An apparently unique feature of OAPI is that the OAPI patent is a single patent which extends to each member country. There is a single Patent Law that is applied by Courts of each country. As such there is no so-called national phase or national patent as is the case of other regional systems.
The OAPI Patent Office is in Yaounde in the Republic of Cameroon where the applications from outside the union countries are filed. Insofar as patent applications originating within OAPI member states are concerned some of these countries require "indirect filing" which means that the applications must be filed at their National Patent Office or transmitted from these to Yaounde or alternatively "direct filing" in terms of which the country requires that local applications must be filed directly with the OAPI office in Yaounde.
While the application language of OAPI applications used to be exclusively French this is no longer the case and documentation in either French or English is now generally accepted. In fact the official application form is now in both languages.
The Patent system in OAPI is a "first to file system" and to be patentable inventions must be novel on an absolute basis, involve an inventive step, and be capable of use in industry/agriculture. It is interesting to note that amongst the inventions which are not patentable are included methods of treatment of humans or animals and computer programmes.
While OAPI may be designated as a Paris Convention country and as a member of PCT not all of the OAPI member countries are in themselves members of PCT. From this it follows that any PCT application filed will only, when granted, extend to PCT member countries of the Union.
Insofar as patent application procedures are concerned an application should be filed at Yaounde Patent Office, either as an independent application, a convention application or a PCT National phase application. The application must be accompanied by an application form, a Power of Attorney, a Deed of Assignment (where relevant) 3 copies of the specification in French or English, priority documents together with sworn translations in French or English where applicable (Figure 5). In the case of a PCT application the normal PCT requirements are the PCT Request Form, search report, international preliminary examination report and an international publication sheet should also be included and the priority document excluded (see Figure 6). Official filing fees are relatively high and there is a surcharge for claims exceeding 10 and pages of specification exceeding 10.
After about 2 weeks an official filing receipt is issued and after a further period of 3 months the applicant is sent a Request for Search reports and Examination reports for corresponding patent applications in other countries. Although the preparation of a Search report is a requirement of OAPI legislation generally the office relies on the Search report prepared as above. Some concern has been expressed as to the procedure adopted by the Patent Office when such a Search report is not available. It is known that in such instances the Patent Office has granted a patent when no Search report in any forms exists.
Although the Bangui Accord provides for substantive examination, following on what has been stated above this in fact does not take place and some 3 months after submission of the Search and Examination reports the application is accepted and thereafter publication of Grant takes place. The actual certificate of Grant may take a further 6 to 8 months to dispatch to the patentee or agent. Renewal fees are payable on an annual basis from the date of filing with the first annuity being paid together with the filing of the application. Thus annuities are payable prior to Grant. It is interesting to note that the duration of an OAPI patent is in the first place 10 years from the date of filing. This term may be extended by two further periods of 5 years each. However proof of exploitation of the invention in at least one of the member states must be provided and furthermore the extension must be applied for within 6 months of and not later than 1 month prior to the expiration of the previous period.
The OAPI legislation provides for an action for an infringement of a patent but only where the patentee has exploited the patent in one of the member states within 5 years of the date of Grant unless legitimate reasons for non exploitation can be shown. Damages are not provided for, however penalties as well as the seizure of infringing articles are. The action for infringement must take place in the Courts of the country where infringement is alleged and it is interesting to note that the legislation specifically provides that the provisions of any national legislation with regards to extenuating circumstances shall apply.
The ARIPO regional system came into existence as a result of the Lusaka Agreement on the Creation of an Industrial Property Organisation for English speaking Africa (7 December 1976) the Harare Protocol on Patents and Industrial Designs within the framework of ARIPO (10 December 1982 and the Regulations for Implementing the Protocol (25 April 1984). The later Bangui Accord deals with Trade Marks only.
The ARIPO office is in Harare, Zimbabwe although ARIPO applications may be lodged in the Patent Offices of any of the member states. An important aspect of the ARIPO system is that at the time of application the applicant must designate which states he wishes the application to extend to. Contrary to the situation in OAPI in the majority of ARIPO states independent patents are available and hence the ARIPO procedure provides for a National Phase and the granting of National patents is of course similar to some other regional systems such as the European patent system. Swaziland is an exception and it is not possible to apply for an independent application there.
ARIPO may be designated both under the Paris Convention and PCT although as is the case with OAPI a PCT patent application will not extend to those member states who are not PCT members in themselves.
All procedures are conducted in English and commence with the filing of an application including an Application designating the relevant countries, a Power of Attorney, Deed of Assignment where relevant, five copies of the specification in English, a Priority document and a sworn English translation where relevant. Where the application is PCT application the normal additional PCT Request form, Search report, International Preliminary examination report and the International publication sheet will be required (Figure 7).
Official filing receipt is received after about 4 weeks and about 6 to 9 months thereafter, examination takes place. Conveniently the ARIPO office calls for the Research and Examination results in corresponding applications in examining countries. Where these are not available it is common practice for a Search report to be prepared by the European Patent Office.
In practice examination does not take place but the application is accepted once a satisfactory search report has been filed.
Six months after Acceptance publication of Grant takes place and the Certificate of Grant follows after about 3 months.
The interesting innovation in the ARIPO procedure is that should an application be refused by the ARIPO office for any reason the applicant may within 3 months of being notified of the refusal request that the application be treated in any ARIPO state as an application according to the National Law of that state.
Although National patents are granted under the ARIPO system the annual renewal fee is payable to the ARIPO office which then transmits a portion of that fee to the countries in question. Although for most of the ARIPO countries the duration of patents is 20 years from the date of application there are some exceptions with Malawi and Zambia being 16 years and Kenya being an initial period of 7 with a further 10-year period and thereafter two further 5-year extension of term periods.
The ARIPO legislation does not provide for infringement proceedings as these are the preserve of the countries in which the patent is operative. Generally speaking however interdicts against infringement, seizure of goods and damages are available. The Courts are however relatively untutored in Intellectual Property Law and this is a factor that must always be borne in mind.
As mentioned in the introduction the number of patents filed in ARIPO and OAPI is not large. However the statistics indicate a positive trend as can be seen from Figures 8 and 9. The filing and prosecution of patent applications in Africa can be somewhat daunting. This is because of different cultures, poor systems in the postal and communications arena and sometimes and overly easy going attitude are concerned. For OAPI countries the OAPI regional system must be used however the use of the ARIPO regional systems can alleviate the problem to some extent. Both the OAPI and ARIPO Patent Offices are in themselves relatively well organised and helpful. Unfortunately however the low volume of Intellectual Property work in most African countries means that local associates often have little or no understanding of the importance or processes of Intellectual Property Law.
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