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Benefits of Regional Patent Systems

Adams & Adams - PretoriaSeptember 13, 2017

FERNANDO DOS SANTOSDIRECTOR GENERAL

Administration of IP Systems in Colonial Africa Patent Examination Systems in Colonial Africa Genesis of Dysfunctional IP Examination Systems In Africa Challenges Facing Developing Countries in IP Management Options in Addressing Challenges in Patent Examination A Case for Substantive Patent Examination in Africa A Glimpse on the ARIPO System The Link Between the Harare Protocol and the PCT The Link Between the Harare Protocol and the Budapest

Treaty ARIPO Online Services Initiatives on the Improvement of the System

OUTLINE

The Extension System – Extension of Metropolitan IP Laws to the colonies. Almost all British, French and Portuguese Colonies were using this system

Enactment of IP Laws on behalf of the Colonies - colonial powers enacted, on behalf of the colonies, IP laws that were applicable only in the colonies. Eg: Belgian Decree on Patents of 29 October 1886 made valid only in Congo by an Order in May 1889

Mixed Approach - with elements of the ‘the extension system’ and exceptions allowing to the colony the adoption of its specific IP legislation

ADMINISTRATION OF IP SYSTEMS IN COLONIAL AFRICA

African IP Offices built around and to serve the metropolitan IP Offices in Belgium, France, Portugal, Spain or United Kingdom African IP offices were lacking technical expertise Local patent applications were very few or non-

existent Role of the patent offices in Africa was to:

• serve as mailboxes for the local applications to be channelled to Europe

• re-register the already granted patents in the metropolitan IP offices – Re-registration system

PATENT EXAMINATION SYSTEMS IN COLONIAL AFRICA

With the prevailing situation it was felt that the complex work of examining and granting patents could be done in Europe, thus removing the burden and the need to establish examination offices or even develop a local capacity to administer patent applications in Africa

As a result, colonial Africa never developed skills for examination and granting of patents

That anomaly is still affecting Africa in the current days and need to be addressed

GENESIS OF DYSFUNCTIONAL IP EXAMINATION SYSTEMS IN AFRICA

Adoption of Substantive Examination Systems – Egypt, Ethiopia and Kenya

Adoption of Depository Systems – Majority of African countries including South Africa

Reliance on Regional Patent systems - (OAPI – 1962; ARIPO – 1976)

Adoption of Substantive Examination Systems and reliance on Regional System for actual examination -ARIPO examines national Patent applications from Botswana, Ghana, Lesotho, Uganda, Swaziland (occasionally), Namibia (occasionally)

OPTIONS IN ADDRESSING CHALLENGES IN PATENT EXAMINATION

Outdated IP legislation and lack of adequate regulations for the management of IP rights

Lack of awareness of the importance of IP for development

Lack of capacity and skills in IP institutions

Lack of adequate infrastructure for the operations of the IP Offices

Lack of examiners to perform high quality substantive examination

Cumbersome Procedures in a number of IP offices

Backlogs and unclear workflows which refrain users from relying on the systems

Non automated systems in the majority of IP offices

CHALLENGES FACING DEVELOPING COUNTRIES IN IP MANAGEMENT

ADVANTAGE: Patent will have due consideration of national public interestVery strong valid inventions rightsValid IP rights are licensedAvoid expensive future litigations Prior art in search reports can be used for reverse engineering, patent

information & IP exploitationWell established & expensive IP Litigations can be avoided Governments & Industry can avoid paying royalties for invalid patents; Protection of the Public & local Industry, etc.

DISADVANTAGES: Longer periods to prosecute the patent High costs Backlogs System may become unattractive

A CASE FOR SUBSTANTIVE PATENT EXAMINATION IN AFRICA

ARIPO Patent System established by the Harare Protocol in 1982 (entry into force 1984) – 33 years of experience!

18 out of 19 Member States are membersApplicant can file application with either his national

office or directly with the ARIPO Office One application can designate all member statesApplicant uses only one language – EnglishApplicant pays fees in one currency – US dollarsApplicant employs only one agent Centralized processing, grant and renewalARIPO application can be converted into a national

application without loosing the filing date

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A GLIMPSE ON THE ARIPO SYSTEM

ARIPO Conducts Substantive Examination and grant stronger patents

Low costs if compared with individual filings

More efficient and streamlined procedures than national systems

On average takes about 21 months from filing to grant

Uniform duration of rights in all States- 20 years!

The system is simple, cost effective and user-friendly.

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A GLIMPSE ON THE ARIPO SYSTEM

18 Member States of ARIPO are members of PCT

Harare Protocol was linked to the PCT

The link took effect on July 1, 1994

Any applicant filing a PCT application may designate ARIPO

By designating ARIPO all 18 Member States are designated

ARIPO Office act as a receiving office under the PCT

ARIPO Office may be elected in any PCT application

95% of ARIPO applications

come through PCT!

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THE LINK BETWEEN THE HARARE PROTOCOL AND THE PCT

A deposit of biological material must be made in a recognized institution in the case of inventions involving micro-organisms

Applications should contain name of Institution, date when the culture was deposited and reference number

Deposited culture shall be available to third parties from the date of publication of the ARIPO application

ARIPO publishes the list of depository institutions

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LINK HARARE PROTOCOL AND BUDAPEST TREATY

• Accessible to public• State of the Art Searches• E-filing• Online payment(e-

payment)• Access IP Journals• IP Forms• Fees• Information on IP

ARIPO Services• Regional Databaseshttp://regionalip.aripo.org

ARIPO ONLINE SERVICES

Polite +: From 2015

A Working Group composed by ARIPO experts, Member States and patent agents is convened every year to propose improvements to the Harare Protocol

A Patent Drafting Course for patent agents is organized every year at ARIPO

Polite+, the Online System is continuously improved and now covers: 95% e-payments and 73% patent e-fillings

Go-green: Online filings attracts 20% discount

ARIPO in collaboration with IP Australia is developing a tailored course for patent examiners at ARIPO

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INITIATIVES ON THE IMPROVEMENT OF THE SYSTEM

Address:11 Natal Road, Belgravia, Harare, Zimbabwe

Tel: +263 4 794 065 /6/8/54/74 Fax: +263 4 794 072 Email: fsantos@aripo.orgmail@aripo.orgWebsite: www.aripo.org

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WERE GAZAROCHIEF OF THE DEPARTMENT FOR PROMOTION AND

VALORISATION OF INVENTION AND INNOVATION

INTRODUCTION OF OAPI

The African intellectual Property Organization (OAPI)is an intergovernmental organization with seventeenmembers states;

Created by the Libreville agreement of September 13, 1962;

Revised successively on:i. March 2, 1977. At this occasion, Libreville Agreement

became Bangui Agreement;ii. February 24, 1999;iii. December 14, 2015.

Located in Yaoundé, Republic of Cameroon.

8- OAPI HEADQUARTER

STATES MEMBERS : 17

BENIN

BURKINA FASO

CAMEROON

CENTRALAFRICA

COMORES

CONGO

COTE D’IVOIRE

GABON

GUINEA

GUINEA-BISSAU

EQUATORIAL GUINEA

MALI

MAURITANIA

NIGER

SENEGAL

CHAD

TOGO

In accordance with the common administrative procedures, based on Bangui Agreement and others regulations,

1. Examine applications and grant industrial property rights for:-Patents for inventions;- utility models for innovations;-Industrial Designs for aesthetic features of products;-Trade marks for goods and services;-Varieties of plants for the new varieties of plants.

2.To provide industrial property information to the public.3. To promote inventiveness and innovativeness, 4. To organize and conduct IP training.

Core Functions

For each of the state member, OAPI serves as the Nationalindustrial property service and as the «National office»;

In this respect, OAPI acts on behalf and on the account ofits states members;

Core Functions Cont’

WHICH PROTECTION SYSTEM?

The Bangui agreement established a common office and theuniform system for the protection of IP titles;

The procedures for granting protection titles arecentralized at the headquarter;

The filing of an application has the effect of as a nationalfiling in each of the member states.

Titles granted by OAPI are valid in all member states;

There is no national system of granting of titles whichcoexists with the regional system of protection;

The working language are French and English.

INFRINGMENT

Acts to be introduced in the country where theinfringement occurs;

The final judicial decisions rendered on the validityof titles in one of the Member States, areauthoritative in all other States, except those basedon public order and good morals;

BANGUI AGREEMENT :10 A NN EXES FOR 10 PROTECTION

SUBJECT M A TTERS

Annex I: Patent; Annex II: Utility model; Annex III: Trademarks

and service marks; Annex IV: Industrial

design; Annex V: Trade names; Annex VI: Geographical

indications;

Annex VII: Literary and artistic property;

Annex VIII: Protection against unfair competition;

Annex IX: Layout designs (topographies) of integrated circuits;

Annex X: Plants varietyprotection.

THE ORGANIZATION’S ORGANS

The Bangui Agreement established three organs forthe conduct of its action:

1. The Administrative Council which is the highestauthority who determines the general policy andregulates and controls the activities;

2. The High Commission of Appeal, responsible forruling on appeals following the decisions ofrejection of the applications;

3. The Directorate General.

FILING OF APPLICATIONS

Any application addressed to the Organization isdeposited either directly at the OAPIheadquarters, based in Yaoundé, Cameroon, orthrough the ministry in charge of intellectualproperty issues in each of the member states (Forthe national applicants only);

Applicants domiciled outside the territory of themember states shall file trough an agent selectedin one of those member states;

The exercise of the profession of agent accreditedto the Organization is governed by special rules.

PATENTS PROTECTION SYSTEM1. Under the Bangui Agreement, an invention means a solution

to a specific problem in the field of technology;

2. It may relate to a product or process;

3. For patentability the invention must:i. Be new (not anticipated by prior art);ii. Involve an inventive step (not obvious to a person skilled in the

art to which the invention pertains)iii. Be industrially applicable (can be made or used in any kind of

industry)

PROTECTION OF PATENTSProtection is conferred for a period of 20 years from the date of

filing of the application for patent;The following inventions are not patentable:i. Plant varieties as provided for in the Annex X for the protection of

plants varieties;ii. Inventions contrary to public order, morality;iii. Methods for the treatment of the human or animal body by surgery

or therapy including diagnostic method;iv. A discovery, scientific theory or mathematical method;v. A literary, dramatic, musical or artistic work, or any other aesthetic

creation;vi. A scheme, rule or method for performing any mental act, playing a

game or doing business, orvii. Mere presentation of information.

PATENT EXAMINATION

Formal examination of patentable subject matter, equitable basis of claims, requirements of unity and formality check.

Substantive examination not yet implemented.

Formality examination Request form (IB101)

i. Title of the invention.ii. Signature.iii. Name and address of applicant,iv. Residence of applicant, etc

Descriptioni. State the technical fieldii. Give background informationiii. State the problem to be solved by the inventioniv. State the titlev. Give the best embodiment

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Formality examination

Claims Should be set in 2 parts; Numbered consecutively; Should not make reference to drawing;

Drawings only if necessary; They make the understanding of an invention easy; no unnecessary text matter on drawings; Reference in description should be indicated in drawing.

ABSTRACT

BENEFITS OF THE REGIONAL PROTECTION OF PATENT AT OAPI

The Bangui agreement gives a number ofadvantages, especially for small and medium-sizedenterprises, such as:

i. Single application for a patent;ii. single patent with unitary effect on the entire area of OAPI;iii. single patent court (provided in the last version of Bangui

Agreement;iv. reduced costs;v. simplified procedures.

BENEFITS Cont’ The OAPI system provides a relatively inexpensive, easy and

efficient way to extend patent protection to a total of 17African countries.

As a designated office, the system provides importantadditional advantages for applicants wishing to protect theirinventions in countries party both to the regional patentsystem of OAPI and to the PCT.

CHALLENGES FACING THE IP SYSTEM AT OAPI

The current examination system for patents and utility model(Formal examination), must be reviewed, corrected andreinforced by practices that give more credibility toendogenous inventions and at the same time, contribute tocapacity building at all levels;

CHALLENGES FACING THE IP SYSTEM ATOAPI

Combating counterfeits: Unauthorised use of protectedmaterial (piracy);

Low level of IP awareness by the public;

Few judicial precedents in IP to guide protection andenforcement agencies;

Lack of proper understanding of IP by judicial officers as wellas other enforcement agencies such as the police and customs;

The expenses involved in IP processing sometimes too high forpotential applicants.

Limited patent drafting capacity;

Poor linkage between research institutions, inventors andindustry which has led to low levels of commercialization ofmost inventions;

Poor coordination amongst users and enforcement agenciesand Judicial bodies with regard to Intellectual Property;

IP is not entrenched in the Constitution of majority of the

members states and the policies are not explicit on IP issues.

This has resulted in lack of creativity as there is no incentiveto create.

CHALLENGES Cont’

WAY FORWARD1) Satisfy OAPI users:To satisfy OAPI users, the following four strategies will be put in

placei. Shorten processing times;ii. Simplify procedures;iii. reduce protection costs;iv. Ensure staff development and capacity building;v. A real modernization of services and procedures will be undertaken;2) In the field of communication, publicize OAPI and popularize

intellectual property in member states;3) An ambitious program of administrative reforms with reorganization in

line with the new managerial vision;4) Implementation of a secure and publicly accessible virtual

infrastructure;5) Implementation of electronic filings of IP applications.

WAY FORWARD1) One of the priorities of the new Director General of OAPI

is: to setting up of the substantive examination ofapplications for the protection of inventions;

2) To provide capacity building on substantive examination forpatents by: Reinforcing the team of patents examiners; Strengthening their capacity building; Setting up the training programs on the patent examination for

OAPI examiners and in the member states; Promote a body of patent attorneys; establishing partnerships with other offices;3) A strong cooperation with the universities and research centers

will be established; The purpose is to encourage them to protecttheir search results.

The members states should embark on encouraging the private sector to do R &D for value addition of their products;

Private sector should be active in initiating IP reforms in the member states;

The Governments should set up agencies to fight trade insubstandard and counterfeit goods (Ant-Counterfeit Agencies);

Industries should encourage their staff to come up with, orpropose innovations to improve their product;

Financial institutions need to appreciate the value of IP as anasset and provide loans using IPR as collateral or security;

Incubation centers around the countries and universities mustbe developed in line with the innovation policies.

Way Forward

Way Forward

The DG intends to develop a culture of intellectual property inthe Member States through awareness-raising and continuoustraining programs on the importance of intellectual propertyand respect for the rights of innovators and creators;

States will be encouraged to include intellectual propertytraining modules in the training programs of justice, economicpolice and customs officers;

A COOPERATION ALL AZIMUTS

An offensive policy of cooperation will be deployed in thedirection of all the institutions to accompany the OAPI in itsdevelopment efforts

The end…

Thank you so much for your kind attention !!!