Presentation is loading. Please wait.

Presentation is loading. Please wait.

African Regional Patent Systems and the PCT: Brief Overview of the ARIPO Patent System WIPO REGIONAL FORUM ON THE ROLE OF PATENTS AND THE PATENT COOPERATION.

Similar presentations


Presentation on theme: "African Regional Patent Systems and the PCT: Brief Overview of the ARIPO Patent System WIPO REGIONAL FORUM ON THE ROLE OF PATENTS AND THE PATENT COOPERATION."— Presentation transcript:

1

2 African Regional Patent Systems and the PCT: Brief Overview of the ARIPO Patent System WIPO REGIONAL FORUM ON THE ROLE OF PATENTS AND THE PATENT COOPERATION TREATY (PCT) IN RESEARCH IN DEVELOPING COUNTRIES NAIROBI, KENYA, MARCH 30 TO APRIL 1, 2009 By ARIPO Secretariat

3 Presentation overview ARIPO Background; ARIPO Background; ARIPO, its Major Activities and Objectives; ARIPO, its Major Activities and Objectives; ARIPO and the PCT; ARIPO and the PCT; Functions of ARIPO as a Regional Patent Office; Functions of ARIPO as a Regional Patent Office; Challenges Challenges

4 Brief History of ARIPO Lusaka Agreement was signed on 9 December 1976; Lusaka Agreement was signed on 9 December 1976; Lusaka Agreement came into force on February 15, 1978; Lusaka Agreement came into force on February 15, 1978; ARIPO Secretariat was established in Nairobi Kenya on June 1, 1981; ARIPO Secretariat was established in Nairobi Kenya on June 1, 1981; 1982 ARIPO Secretariat moved to Harare, Zimbabwe; 1982 ARIPO Secretariat moved to Harare, Zimbabwe; Harare protocol was signed on 10 December 1982; Harare protocol was signed on 10 December 1982; Harare Protocol in force on 25 April 1984; Harare Protocol in force on 25 April 1984; Harare Protocol was amended and linked to the PCT on 1 July 1994; Harare Protocol was amended and linked to the PCT on 1 July 1994; Banjul Protocol on Marks – 24 November 1993; Banjul Protocol on Marks – 24 November 1993; Banjul Protocol came into force on 6 March 1997; Banjul Protocol came into force on 6 March 1997; Harare Protocol was amended to include utility models on 1 January Harare Protocol was amended to include utility models on 1 January 2001.

5 IP Systems Before ARIPO FORMATION OF ARIPO LUSAKA AGREEMENT (1976) HARARE PROTOCOL (1982) BANJUL PROTOCOL (1993) MARKS PATENTS INDUSTRIAL DESIGNS UTILITY MODELS Copyright & Related Right, Related Right,+TK

6 The ARIPO Office

7 Geographical Distribution of Member States of ARIPO Botswana Kenya Mozambique Somalia The Gambia Lesotho Sierra Leone Swaziland Tanzania Ghana Zimbabwe Malawi Zambia Uganda Sudan Namibia West Africa Central & Southern Africa East Africa

8 STAFF Affairs Committee GOVERNANCE

9 Financing of ARIPO Fees Received from the two Protocols; Self sustaining, Since January 1, 2008 ); Annual Contributions ( Self sustaining, Since January 1, 2008 ); ot in cash but in Activities & Equipment Donor Funds ( Normally not in cash but in Activities & Equipment).

10 The Main Objectives of ARIPO The main objective among others is to Pool Resources of its Member States together in solving IP related issues by; The main objective among others is to Pool Resources of its Member States together in solving IP related issues by; – Harmonizing IP Laws and Coordinating IP Activities among the Member States; – Centrally handling most of the matters related to IP including Grant & Registration of IP Rights on behalf of the Member States; – Dissemination of Information Relating to IP; – Capacity building; – Stimulation Business, Human Resources and Institutional Building of IP in the Member States, etc.

11 ACHIEVING A REGIONAL APPROACH THROUGH ARIPO Harmonization IP Integration Industrial & Economic Development Capacity Building Promotion, Protection & Promotion, Protection & Exploitation of IP Exploitation of IP

12 ACHIEVING A REGIONAL & GLOBAL APPROACH Main Areas of Action Standards, Norms setting and Training United Industrial,Economic & IP Policy Strategy United Developmental Strategy Information & Data Exchange System

13 Cooperation with other IP Offices and Organizations ARIPO EAC SADC Member States States COMESA WIPO OAPI WTO Potential Member States Other IP Offices ECOWAS AU

14 The Harare Protocol Empowers ARIPO to grant Patents and register Utility Models and Industrial Designs on behalf of its Member States.Empowers ARIPO to grant Patents and register Utility Models and Industrial Designs on behalf of its Member States. All Member States of ARIPO (except Somalia) are party to the Harare Protocol and to the Patent Cooperation Treaty (PCT).All Member States of ARIPO (except Somalia) are party to the Harare Protocol and to the Patent Cooperation Treaty (PCT).

15 The Main Objectives of The Harare Protocol Promote, Harmonize & Develop Industrial Property among the Member States of ARIPO; Promote, Harmonize & Develop Industrial Property among the Member States of ARIPO; Facilitates the protection and management of patents, Industrial Designs and Utility Models in the Contracting States; Facilitates the protection and management of patents, Industrial Designs and Utility Models in the Contracting States; ARIPO Patents, Industrial Designs & Utility Models are equivalent to a bundle of national registrations and their management is centralized and made easier; ARIPO Patents, Industrial Designs & Utility Models are equivalent to a bundle of national registrations and their management is centralized and made easier; Only one Filing, one Grant, one publication, one agent is needed and Only one Filing, one Grant, one publication, one agent is needed and All procedures like: renewals, amendments, representation, etc. are Centralized. All procedures like: renewals, amendments, representation, etc. are Centralized.

16 The Harare Protocol and the Patent Cooperation Treaty (PCT) The Harare Protocol was effectively linked to the PCT on July 1, 1994 and had the following effects: a)Any applicant filing for a PCT application automatically designates ARIPO and its Member States ; a)Any applicant filing for a PCT application automatically designates ARIPO and its Member States ; b)The ARIPO Office acts as a Receiving Office under the PCT for such states and c)The ARIPO Office may be elected in any PCT application and all contracting states of the Harare Protocol which are also party to the PCT.

17 Traditional Patent System Before The PCT Worldwide filing had to be done within 12 months from priority date (Paris Convention); Worldwide filing had to be done within 12 months from priority date (Paris Convention); Multiple formality requirements undertaken; Multiple formality requirements undertaken; Multiple searches; Multiple searches; Multiple publications; Multiple publications; Multiple examinations & prosecutions of applications; Multiple examinations & prosecutions of applications; Translations & national fees payable within 12 months, etc. Translations & national fees payable within 12 months, etc.

18 Member States of ARIPO and the PCT Except Somalia, all ARIPO Member States are party to the PCT; Except Somalia, all ARIPO Member States are party to the PCT; Somalia is neither party to the PCT nor to the Harare Protocol; Somalia is neither party to the PCT nor to the Harare Protocol; ARIPO is a Receiving Office for all Member States party to PCT; ARIPO is a Receiving Office for all Member States party to PCT; NA, TZ & UG are not Receiving Offices of PCT applications & ARIPO & WIPO are their only Receiving Offices; NA, TZ & UG are not Receiving Offices of PCT applications & ARIPO & WIPO are their only Receiving Offices; SZ closed her national route with regard to PCT applications & all PCT applications can only lodged through ARIPO; SZ closed her national route with regard to PCT applications & all PCT applications can only lodged through ARIPO;

19 Structure of a Patent Specification Specification Description Claims Drawings Optional Best Mode Examples (Optional) Manner of Production & Utility Abstract

20 Elements of an International PCT Patent Application Request/Application form; Request/Application form; Description; Description; One or more claims One or more claims Abstract (May be filed later without affecting the international; filing date); Abstract (May be filed later without affecting the international; filing date); Drawings where applicable; Drawings where applicable; Sequence listing where applicable and Sequence listing where applicable and Indications containing references to deposited microorganisms. Indications containing references to deposited microorganisms.

21 ARIPO as Receiving Office –PCT Initial Formality Examination Applicants residence; Applicants residence; Request form must be properly completed; Request form must be properly completed; Applicants & inventors must be identified; Applicants & inventors must be identified; Specification must have a description & at least 1 claim; Specification must have a description & at least 1 claim; Three copies should be lodged; Three copies should be lodged; Fees or undertaking to lodge fees and Fees or undertaking to lodge fees and ARIPO Office helps applicants to correct defects. ARIPO Office helps applicants to correct defects.

22 Actions after Initial Formality Examination of PCT applications at ARIPO Accord international filing date; Accord international filing date; Assign International application number e.g. PCT/AP/2009/000001; Assign International application number e.g. PCT/AP/2009/000001; Make final formality checks; Make final formality checks; identify record, search and home copies identify record, search and home copies undertake correspondence with applicant, IB & ISA and receive fees on theirbehalf, etc. undertake correspondence with applicant, IB & ISA and receive fees on their behalf, etc.

23 What is NOT immediately required for obtaining an International filing date Payment of fees on filing; Translation of the international application; Applicants signature; Title of the invention and Abstract and drawings.

24 Functions of ARIPO as a Receiving Office for PCT applications Specifies the ISA(s) for PCT applications in the International phase; Specifies the ISA(s) for PCT applications in the International phase; Specifies the IEA (s) for PCT applications; Specifies the IEA (s) for PCT applications; Prescribes the languages in which PCT applications must be lodged at ARIPO; Prescribes the languages in which PCT applications must be lodged at ARIPO; Fixes the amount of transmittal fee; Fixes the amount of transmittal fee; Undertakes formality checks & accords filing dates, etc. Undertakes formality checks & accords filing dates, etc.

25 PCT Procedures at ARIPO PCT Procedures at ARIPO Checks document list on PCT Request Form; Checks document list on PCT Request Form; Further Checks the physical requirements Further Checks the physical requirements ARIPO advises applicant of application number, filing dates and defects if any; ARIPO advises applicant of application number, filing dates and defects if any; Record Copy plus fees is sent to IB; Record Copy plus fees is sent to IB; Search copy plus fees is sent ISA; Search copy plus fees is sent ISA; Home copy plus receiving office fees kept by ARIPO; Home copy plus receiving office fees kept by ARIPO; ISA for AP are EP, AT & SE ISA for AP are EP, AT & SE

26 PCT Fees ARIPO Receiving Office Fees USD 50 (or equivalent in local currency); ARIPO Receiving Office Fees USD 50 (or equivalent in local currency); Basic fee to IB: 10% of USD1102; Basic fee to IB: 10% of USD1102; Search Fee to ISA 25% of the fee charged by EPO, About USD200; Search Fee to ISA 25% of the fee charged by EPO, About USD200; PCT-Easy reduction by Sfr.200- =USD 190 from Basic fee PCT-Easy reduction by Sfr.200- =USD 190 from Basic fee

27 Main Objectives of the PCT Lodging one application, with one Office & in one language; Lodging one application, with one Office & in one language; Formal examination by a single patent office; Formal examination by a single patent office; Good International search & examination reports; Good International search & examination reports; Provides more time (31 months at ARIPO) to the applicant; Provides more time (31 months at ARIPO) to the applicant; Strong patents are granted; Strong patents are granted; Facilitates the provision of patent information, etc. Facilitates the provision of patent information, etc.

28 Correction of Defects AP helps applicants to correct defects; AP helps applicants to correct defects; Bad defects-Application withdrawn,IB Informed; Bad defects-Application withdrawn,IB Informed; Fees already received- refunded to applicant Fees already received- refunded to applicant

29 Refund of Fees by ARIPO as a PCT Receiving Office If no filing date accorded or If no filing date accorded or If application withdrawn If application withdrawn Before transmittal of Record Copy, Before Transmittal of Search Copy to the ISA Before Transmittal of Search Copy to the ISA Transmittal Fees refundable if none of the documents has been transmitted.

30 Time limits for ARIPO REGIONAL/NATIONAL phase of PCT Applications 31 months if no demand lodged before 19 months ( Chapter I); 31 months if no demand lodged before 19 months ( Chapter I); 31 months if demand lodged [Chapter II); 31 months if demand lodged [Chapter II); Applicant has 60 days to comply with formality requirements; Applicant has 60 days to comply with formality requirements; International filing date is also the filing date accorded by ARIPO; International filing date is also the filing date accorded by ARIPO; Priority data remain the same, Priority data remain the same,

31 Processing of PCT applications in the Regional/national phase Initial Formality Examination; Initial Formality Examination; Accord Filing Date; Accord Filing Date; International filing date is also the ARIPO filing date; International filing date is also the ARIPO filing date; Open Technical & Administrative files Open Technical & Administrative files Accord AP Application Number e.g. AP/P/1998/ Accord AP Application Number e.g. AP/P/1998/ Request for translations if necessary; Request for translations if necessary; Capture bibliographic data in the ARIPO AFPAT database; Capture bibliographic data in the ARIPO AFPAT database;

32 Mandatory Requirements for according a filing date and application number for ARIPO Patent Application Completed ARIPO Request Form 3; Completed ARIPO Request Form 3; Something like a description; Something like a description; One or more Claims; One or more Claims; Designation of at least one contracting state and Designation of at least one contracting state and Fees or undertaking to pay fees in 21 days. Fees or undertaking to pay fees in 21 days.

33 Formality requirements in the Regional Phase Patent agent, if applicant is not resident in aqny member state; completion of the ARIPO Request Form; Assignments of invention needed only if applicants are not the same ( not needed for PCT in regional phase); At least one Member State must be designated; Fees or undertaking that fees to be paid in 21 days; Physical requirements must be acceptable.

34 Substantive Search & Examination at ARIPO PCT search & Examination results are consulted & used; PCT search & Examination results are consulted & used; Applications must follow Administrative Instructions of the Harare Protocol; Applications must follow Administrative Instructions of the Harare Protocol; Patentability Criteria of Designated States are considered; Patentability Criteria of Designated States are considered; Amendments are acceptable Amendments are acceptable

35 Objectives of Search and substantive Examination at ARIPO Harare Protocol, Administrative Instructions must be adhered to; Harare Protocol, Administrative Instructions must be adhered to; Limitations to Patentability in Member States are considred; Limitations to Patentability in Member States are considred; Invention must be new, not obvious and industrially applicable; Invention must be new, not obvious and industrially applicable; local databases consulted before grant; local databases consulted before grant; Invention (claims) must be clear & concise; Invention (claims) must be clear & concise; Infringement & Litigation can be avoided; Infringement & Litigation can be avoided; Monopoly Rights correctly given; Monopoly Rights correctly given; Strong internationally recognized patents issued by the ARIPO Office. Strong internationally recognized patents issued by the ARIPO Office.

36 Grant & Publication of an ARIPO Patent Six months after search & examination;if positive; Six months after search & examination;if positive; Any Designated state can refuse the Grant of a patent; Any Designated state can refuse the Grant of a patent; Grant & publication fees must have been paid; Grant & publication fees must have been paid; Has effect in all designated states ; Has effect in all designated states ; patent Valid for 20 years in all designated States patent Valid for 20 years in all designated States

37 Systematic presentation of Processing of patent applications at ARIPO

38 ARIPO Fees Application fees; Application fees; Designation fees; Designation fees; Annual Maintenance fees; Annual Maintenance fees; Grant & Publication fees; Grant & Publication fees; Any other fees as requested. Any other fees as requested.

39 Schedule of Fees PATENTS Type of feesAmount (US Dollars, Applica Application fee Designation fees per Country designated 75 *3. Examination Report fee (if no Examination report) 250 *4. Search Report fee (if no Examination report) Publication fee 300 Surcharge for each additional page after 40 pages 15 Surcharge for each additional claim after 10 claims Grant fee Annual maintenance fees in respect of each designated State increasing by USD 20 per year 1st anniversary 40 2nd 60 3rd 80 4th 100

40 Schedule of Fees Utility Models in USD Schedule of Fees Utility Models in USD Application fee 100 Application fee 100 Designation fee (per country) 20 Designation fee (per country) 20 Registration & Publication fee 50 Registration & Publication fee 50 Maintenance fees (per designated State): Maintenance fees (per designated State): First year 20 First year 20 second year 25 second year 25 Third year 30 Third year 30 Fourth Year 40 Fourth Year 40 Fifth year 50 Sixth year 60 Fifth year 50 Sixth year 60 Seventh year 70 Seventh year 70

41 General Advantages of the PCT system to ARIPO & the Region Increase of the number of applications; Increase of the number of applications; Simpler examination procedures; Simpler examination procedures; Local applicants have more time before filing world wide; Local applicants have more time before filing world wide; PCT offers foreign & local investors with patentable technology; PCT offers foreign & local investors with patentable technology; Free Technical Information & equipment; Free Technical Information & equipment; Training of local staff, etc. Training of local staff, etc.

42 Specific Advantages of using the PCT/ ARIPO Route Simplified procedure; Simplified procedure; Single application, protection in many states; Single application, protection in many states; Centralized renewal; Centralized renewal; Single representation in all states; Single representation in all states; Cheaper if compared to individual filings; Cheaper if compared to individual filings; Possibility of conversion to utility model or national patent ; Possibility of conversion to utility model or national patent ; Uniform duration of rights in all states, etc Uniform duration of rights in all states, etc

43 Major Challenges to ARIPO & Its Member States Harmonization of IP laws of the Member States; Harmonization of IP laws of the Member States; Limited Resources to undertake all the Objectives & Projects of the Organization & its member States; Limited Resources to undertake all the Objectives & Projects of the Organization & its member States; Limited Capacity particularly in the National Offices to undertake & adopt Policies Developed in the Region; Limited Capacity particularly in the National Offices to undertake & adopt Policies Developed in the Region; Limited knowledge & Information relating to IP among the citizens of the Member States; Limited knowledge & Information relating to IP among the citizens of the Member States; Limited Infrastructure e.g. Communication, in the Region; Limited Infrastructure e.g. Communication, in the Region; High cost of Obtaining,Promoting & Enforcing IP Rights; High cost of Obtaining,Promoting & Enforcing IP Rights; Perceptions that IP is too cumbersome and is therefore for the Rich, Developed Countries, etc. Perceptions that IP is too cumbersome and is therefore for the Rich, Developed Countries, etc.

44 Challenges continued Limited number of Schools with IP in their curricular in the region; Lack of National IP Strategies; Lack of IP Strategies in most institutions including universities in the region; Lack of adequate market & qualified personnel for IP Services; Lack of resources for capacity building in IP, etc.

45 African Regional intellectual Property Organization (ARIPO ) Physical Address: 11 Natal Rd Belgravia-Harare; Physical Address: 11 Natal Rd Belgravia-Harare; Tel: to ; Tel: to ; Fax: /3; Fax: /3; Website: Thank you


Download ppt "African Regional Patent Systems and the PCT: Brief Overview of the ARIPO Patent System WIPO REGIONAL FORUM ON THE ROLE OF PATENTS AND THE PATENT COOPERATION."

Similar presentations


Ads by Google