ARIPO Working Group: Harare, June 2017

Working Group on the Improvement of the ARIPO Protocols relating to Industrial Property Sixth Session at ARIPO Headquarters in Harare, Zimbabwe 12-13 June 2017

Claire Brown from Rouse Africa attended the Working Group in Harare on 12 and 13 June and found it to be a very productive session.

The working group agenda focused on proposals submitted by stakeholders and member states, the operation and status of both the Harare Protocol on Patents and Industrial Designs and the Banjul Protocol on Marks as well as any amendments to the respective Protocols. A large portion of the working group session focused on the Banjul Protocol.

Outlined below are some of the comments and amendments that were mentioned.

Some of the comments submitted from stakeholders:

  • A number of issues were raised regarding the online facilities, including the way notifications are sent as well as the e-filing hours. ARIPO agreed to look into these issues and find a solution, where possible.
  • Queries regarding the opposition procedure as this is not addressed in the Banjul Protocol. (This is covered below and is still under consideration)

Some of the proposed amendments and additions to the Harare Protocol are outlined below:

  • The addition of a new section – Section 6(4)(c) and (d) : Entry into force and final provisions. The addition is proposed to give legal basis to amendments that are brought to the Protocol from time to time.
  • Various amendments to Rule 7 to cater for the unity of invention as provided for in Section 2bis 1 (a) as well as amendments in respect of the claims.
  • The amendment of Rule 18(7) to cater for expedited examination subject to an official fee.
  • The amendment of Rule 15(1) to include examination in respect of formalities.
  • The amendment of Rule 21(1) to include utility models and industrial designs.
  • The correction of Rule 23(2) in relation to international applications.

Some of the proposed amendments and additions to the Banjul Protocol are outlined below:

  • The amendment of Section 3 in order to clarify the list of requirements for filing an application
  • The addition and amendment of Section 3(bis) was introduced to ensure that action must be taken by ARIPO where the application does not comply with the filing requirements.
  • Section 5bis should be amended in relation to appeals. It was suggested that Section 4bis of the Protocol on Patent and Industrial Designs be used. This was not confirmed or finalised.
  • The amendment of Section 6:4 in order to keep ARIPO in the loop for any substantive examination conducted by a member state.
  • Section 6bis was proposed to be amended so that any notice of opposition must be filed directly with ARIPO.
  • The amendment of Section 9 in respect of later designations. The proposed amendment was proposed to avoid having multiple filing dates for the same registration that has later designations. Where priority is claimed in the earlier registration, the priority right may not applying in the later designated state/s. The concept of claiming priority may not apply if multiple filing dates are maintained on the basis of later designations.
  • There was a proposal to include the Board of Appeal established under Section 4bis of the Protocol on Patent and Industrial Designs in Rule 1. This was however undecided.
  • The amendment of Rule 5 in relation to the application procedure.

A further update regarding the above proposals, amendments and additions should be addressed at the Administrative Council Meeting which will be held in Malawi on 20-22 November 2017.

If you would like further information on any of the above, please contact us.