At the African Regional Intellectual Property Organization (ARIPO) Administrative Council Meetings held 6 to 9 December 2021 in Victoria Falls, Zimbabwe amendments were approved for the Harare Protocol on Patents and Industrial Designs and the Banjul Protocol on Marks. Below is a brief summary of some of the amendments which will be effective 1 January 2022.

Amendments to the Banjul Protocol:

The following amendments were made the Banjul Protocol on Marks:

Early publication of Marks: In instances where all designated Member States on a trademark application have issued their acceptance notices earlier than the 9-month period, it will now be possible for the applicant to request earlier publication of the mark for opposition purposes subject to the payment of prescribed fees. Furthermore, ARIPO has also introduced a rule to allow the separate publication of refused and conditionally refused applications which was not currently provided.

Failure to submit registration fees within 12 months: ARIPO under the new Section 6bis:5 has introduced a rule mandating that a proprietor has 12 months within which to submit the registration fees for a trademark application after the mark has been accepted and published. Failure to do so will result in the trademark application being deemed to have been withdrawn. This rule has been in discussion for some time and seeks to make it mandatory for proprietors to complete the registration process. Prior to this rule a proprietor could decide to delay the submission of registration fees or not submit the fees at all and the application would remain on the ARIPO trademark register.

Strict adherence to time limits required: A new clause under Section 10:3 has introduced a rule requiring the strict adherence of all time limits under the Banjul Protocol. The rule stipulates that where an applicant fails to honor a time limit specified in the Protocol, Regulations or Administrative Instructions and fails to request for extension of time to honor such time limit, the application or registration shall be deemed lapsed 1 month from the date the time limit expires. While there are other specific time limits that apply to various procedures within the Protocol, this amendment seeks to specify an action to be taken where a time limit is not observed.

Amendments to the Harare Protocol:

The following amendments were made the Harare Protocol on Marks:

Disclosure requirement: A new amendment adds a Sub-section (1)(c) which states that “disclosure of an invention… shall be entirely effected by an enabling description and read in conjunction with accompanying drawings if any”. Previously, the Protocol required that an ARIPO patent application should disclose the invention in a manner that is clear.

Observations by Third parties: The Harare Protocol currently does not provide for a procedure or method whereby an interested third party can make submissions against the registration of a patent at ARIPO. A new Section 2quater states that ‘in any proceedings before the office, following the publication of the ARIPO patent or utility model application any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That party shall not be a party to the proceedings.’ These observations will then be considered by ARIPO before the grant and publication of the patent application.

Clarification of terms: “new” and “industrially applicable” Utility Models: Section 3ter was amended to clarify the terms ‘new’ and ‘industrially applicable’ pertaining to utility models: “A utility model shall be considered to be new if it is not anticipated by the prior art within the jurisdiction of the contracting states of the protocol.” This is moving away from the regional industrial applicability that ARIPO used to consider.

Term of protection of Industrial Designs: Section 6 has been amended to extend the term of protection for Industrial Designs from 10 years to 15 years. However, designated Member States may still require their own time periods as stipulated by national law.

The Republic of Seychelles accession to Harare Protocol effective January 1, 2022…

The Republic of Seychelles joined ARIPO as its 21^st Member State under the Lusaka Agreement. It acceded to the Harare Protocol on Patents and Industrial Designs becoming the 19^th Member State eligible for designation under that Protocol. The signed instrument of accession was received by the ARIPO Director General on 1 October 2021.  Accordingly, it will be possible to designate Seychelles in an ARIPO patent, industrial design or utility model applications filed on or after 01 January 2022.