ARIPO Board of Appeal Issues First Patent Decision
ARIPO (African Regional Intellectual Property Organization) is a regional patent filing system in Africa. It is similar to the regional patent filing system in Europe, in that a patent is applied for centrally at the ARIPO office, which is situated in Zimbabwe. The ARIPO office then examines and grants the patent, which automatically extends to all the member countries that have been selected and designated by the patentee. The patent is then subject to the respective national laws of each country.
Membership of ARIPO is open to all member states of the United Nations Economic Commission for Africa. At present there are fifteen ARIPO states which may be designated in an ARIPO patent application, namely: Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
ARIPO member countries indicated in red.
The ARIPO patent system can be used to obtain patent protection in a large number of African countries in a cost-effective manner.
The other regional patent system in Africa is OAPI (the African Intellectual Property Organization). OAPI is unique in that its member countries have revoked their own national intellectual property laws and have adopted the OAPI agreement (the “Bangui Agreement”) as their national intellectual property law.
Designation of member countries is not required, as all OAPI applications are automatically in respect of all member countries. There are currently 16 member states of OAPI, namely: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo.
OAPI member countries indicated in red.
As is the case with the ARIPO patent system, the OAPI patent system allows one to obtain patent protection in a large number of African countries in a cost-effective manner.
Questions frequently arise regarding the procedural steps for obtaining patents and the enforceability of patents in Africa. While patent infringement cases in Africa (outside South Africa) are rare, most African countries have courts that can deal with matters pertaining to patent infringement and there are examples of the successful enforcement of patents in Kenya and Nigeria.
Although not a question of patent enforcement, the ARIPO Board of Appeal recently issued its first decision on a patent on 30 August 2007.
Sanitam Services (EA) Limited, a Kenyan company, lodged an appeal against the decision of ARIPO to remove the appellant's patent (No. AP 773 entitled "Foot Operated Sanitary/Litter Bin") from the ARIPO Register due to non-payment of annual maintenance fees.
The appellant had paid maintenance fees, but after the due date. ARIPO advised the appellant that late payment surcharges were also payable. The amounts paid had been applied to the preceding shortfalls and the appellant was advised by ARIPO to engage an agent in order to receive a reminder whenever fees fell due.
ARIPO admitted to being lenient in accepting the late payment of fees on the basis that it has a discretion to extend the periods for payment. The ARIPO (internal) Aministrative Instructions also provide that the periods prescribed by the Regulations and the Administrative Instructions for doing any act may be extended by the Director General if he thinks fit, upon such terms as he may direct.
The appellant pleaded that if it had defaulted in the payment of fees, ARIPO had contributed towards this by creating the impression that the fees had been paid, or that such fees could be paid at any time. Even though ARIPO claimed that the patent had lapsed in 2002, it continued to receive and accept fees until 2005.
The ARIPO Board of Appeal found that ARIPO had not followed strictly the provisions of the Harare Protocol and Rules. The Board was of the view that notwithstanding the need to be lenient to nationals of member states of ARIPO, lenience should be exercised in moderation. ARIPO does have the discretion to make the rules of ARIPO easy to administer, but that this should not be overstretched to the point of absurdity by for instance, allowing extension in the period of payment of annual maintenance fees from seven months to thirty-one months. Where extensions are necessary, they must be reasonable.
Irregular payments of the renewal fees by the appellant were mainly due to the failure by ARIPO to comply with Rule 21(3) of the Regulations of the ARIPO Protocol which provides that the ARIPO Office shall, at least one month prior to the date on which the annual maintenance fee falls due, issue a reminder to the applicant or the owner of the patent. ARIPO, instead of complying with this requirement, requested the appellant to appoint an agent to remind it whenever maintenance fees became due. ARIPO never gave the appellant notice of its intention to remove the patent from the register due to non-payment of annual maintenance fees.
The Board held that ARIPO unfairly removed the patent from the Register and ordered that the patent be reinstated on the Register subject to the payment of all fees and surcharges that may have fallen due, excluding the surcharges for the period when it had been removed from the Register. The Board also requested that the ARIPO office should observe strictly the ARIPO Protocol, with particular reference to information delivery, the adherence to time limits, procedure related to applications and their processing, the procedure on appeals and the rules of natural justice.
Spoor & Fisher