Amendments to the Harare Protocol from the Fortieth Session of ARIPO’s Administrative Council Meetin
The Fortieth Session of ARIPO’s Administrative Council meeting was held in the second week of December, 2016 in Harare Zimbabwe. ARIPO’s Administrative Council meeting brings together heads and representatives of the organisation’s 19 member state IP offices. The Administrative Council meeting is held annually and is responsible for recommending policies to the Council of Ministers (Ministers from member states who approve recommendations) and reviewing the implementation of those policies by the ARIPO Secretariat.
In attendance was Rouse Africa’s Gunther Roland and Claire Brown. As Rouse Africa's ARIPO Agent and Patent Attorney, Gunther was at the meeting for the second time and took a keen interest in the reviewing and providing suggestions to the meetings Patent discussions, Throughout the meeting the ARIPO secretariat proposed several amendments to the founding ARIPO Patents Agreement “ The Harare Protocol” which we have summarized below
Post grant amendments
The ARIPO Secretariat proposed an amendment of the Harare Protocol in order to provide for post-grant amendments of patents and utility models
The new Section 5ter and Rule 21ter provides that, upon application, an ARIPO patent or utility model may be amended post grant. The amended application may amend the claims, description and drawings, provided that the amendment of the claims is limiting in that any amended claim must fall wholly within the scope of the claims prior to amendment. The official fee for a post-grant amendment of a patent will be USD 300. For utility models no fee has been set thus far.
Further, Rule 5 of the Protocol has been amended to specify that in the event that a patent application contains the disclosure of one or more nucleotide and/or amino acid sequences and a sequence listing must be contained in the patent application, then such sequence listing shall also be submitted in electronic form that conforms to WIPO Standard ST. 25.
The amendments thus include a very useful provision for Patentees and owners of utility models to amend their patents or utility models post grant in order to ensure their validity.
Restrict use of multiple claims
The ARIPO Secretariat proposed an amendment of the Harare Protocol in order to limit the use of multiple dependent claims and to require the submission of a sequence listing, where appropriate.
Rule 7(4) has now been included in the Protocol and sets out that a dependent claim must indicate the claims from which it depends. In addition, the Rule also provides that multiple dependent claims shall refer to such claims in the alternative only and that a multiple dependent claim may not serve as a basis for another multiple dependent claim.
Re-establishment of rights
The ARIPO Secretariat also proposed an amendment of the Harare Protocol on Patent, Utility Models and Industrial Designs in order to provide for the re-establishment of rights in the event of failing to meet a deadline.
In terms of the new Section 5bis, an applicant for or proprietor of an ARIPO patent, utility model or industrial design who has, in spite of all due care taken, failed to meet a time limit that had the effect of causing the refusal of the application, the deeming of the application to have been withdrawn, or the loss of any other rights or means of redress, may apply for the re-establishment of his rights.
This amendment brings about a much sought after provision in the Harare Protocol, which previously did not provide for the re-establishment of rights for failing to meet a deadline.
Better Definition of Patentable Inventions
The ARIPO Secretariat proposed the amendment of Section 3 and Rule 18 of the Harare Protocol in order to provide for a better definition of patentable inventions and to make provision for requesting examination of all patent applications.
Provision for requesting examination of all patent applications.
In terms of the amendment to Section 3(3), a request for substantive examination must now be filed for all patent applications. The request must be made within 3 years from the ARIPO filing date or within 3 years from the international filing, which is deemed to be the ARIPO filing date for PCT regional phase applications. The request is subject to a fee for substantive examination. Failure to make such a request within the prescribed period will cause the application to lapse.
This brings a major change for PCT regional phase applications since these were previously automatically examined by ARIPO and request for examination and the applicable fees were only applicable for priority founding or convention applications.
In addition, Section 3 has been amended to provide for a better definition of patentable inventions that is in line with most jurisdictions around the world.
Official fee’s increase
In addition to increasing the existing fees, the ARIPO Office proposed introducing new fees for certain acts previously not offered, such as post-grant amendments and re-establishments of rights, but also to introduced a fee for filing a voluntary amendment which was previously free of charge.
Furthermore, and in line with ARIPO Office’s proposal to amending the Harare Protocol to now require applicants of PCT regional phase applications to request examination, a search and examination fee will now also be payable for such applications.
The meeting was insightful experience for the Rouse Africa team who will be looking out for the implementation of the amendments in 2017.
For more information on the amendments to the Harare protocol kindly contact Gunther Roland