Highlights from the 6th Session of the ARIPO Protocols Working Group (2017).
The session was hosted at the ARIPO headquarters in Zimbabwe and 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 major difference in this meeting as compared to the previous sessions is that a large portion of the working group session focused on the Banjul Protocol on Marks. This being significant as the protocol has faced various implementation challenges and is thus not as effective as the Harare Protocol which covers the filing of Patents through ARIPO.
Outlined below are some of the comments and amendments that were discussed at the meeting.
The two major point of discussion in this session were around issues experienced when using the online filing facilities and the opposition procedures for a trade mark filed through ARIPO.
The main issues around online filing included the way notifications are sent as well as the e-filing hours. After the discussion on how to resolve these issues, ARIPO agreed to further review the matter at the Secretariat level and improve the online service where possible.
The discussions around the opposition procedure were based on looking at a uniform procedure for oppositions as this is not addressed in the Banjul Protocol. (This is covered below and is still under consideration)
Some of the further proposed amendments and additions to the Banjul Protocol on Marks are as follows:
The amendment of Section 3 in order to clarify the list of requirements for filing an application.
An 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.
An amendment of Section 5bis in relation to appeals, with the suggestion that Section 4bis of the Harare Protocol on Patent and Industrial Designs be used for Section 5bis, however this was amendment was not confirmed or finalised.
The amendment of Section 6:4 was also introduced 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 was also suggested 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 apply in the later designated state/s. The concept of claiming priority may also 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.
While the focus of the meeting was on the Banjul Protocol, the meeting also set aside a session to discuss the Harare Protocol in which the following amendments and additions were proposed:
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.
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 Rouse Africa.