Patent Examination system in Madagascar. Narisoa RABENJA Technical Manager

Transcription

1 1

2 Patent Examination system in Madagascar Narisoa RABENJA Technical Manager

3 IP Office overview OMAPI is an autonomous statutory body under the Ministry of economy and industry Missions : - Receives applications and grants industrial property right (Patents, Trademarks, Industrial Designs and trade names - Screen technology transfer agreements and licenses - Fostering and supporting invention and creativity

4 Law governing the grant of patents in Madagascar Ordinance No Establishing Arrangements for the Protection of Industrial Property in Madagascar (of July 31, 1989) Decree No Implementing Ordinance No of July 31, 1989

5 The International Treaties and Agreements that Madagascar adhered 1963 : Paris Convention on the Protection of Industrial Property 1978 : Patent Cooperation Treaty (PCT) 1995 : TRIPs Agreement 2008 : Madrid Agreement Concerning the International Registration of Marks

6 Staffing at OMAPI Patent Service There are 3 people in patent service, they are in charge of: Advising and assisting applicants for: * Learn about procedures * Guide for the research on the State of the art * The descriptive memory drafting * Proceed to the formal and substantive examination of patent applications

7 Examination system Formal examination Substantive examination

8 Examination of Application - The office shall undertake a formal examination of the application -When, upon formal examination, the application is not in conformity with the requirements laid down in the proclamation and in the regulations, the office shall call upon the applicant to amend the application. - If the applicant fails to amend as required within a period of two months the application shall be considered withdrawn. -When the office determines that the application is acceptable, it shall undertake or cause to be undertaken a substantive examination of the invention.

9 Formal examination Title, abstract, description, claims and figures verification Tax payment verification The invention Unity verification Classification of the application according to International patent classification (IPC)

10 Substantive examination Each application filed for a patent shall be subject to a state-of-the-art search report State-of-the-art search report: In accordance of the current law this report shall: either be replaced by an international-type search either be drawn up by an authority other than the Office; either be replaced by a search report drawn up in respect of an application for a patent relating to the same invention.

11 Technical means at the disposal of the Patent Service : Databases: AIPN, Patentscope, Espacenet and USPTO, Patbase, Orbit Other sources: ARDI, ASPI In cooperation with WIPO, the database of the Office is administered by IP Administration System (IPAS)

12 Exclusion of patentability inventions contrary to public policy or morality; plant or animal varieties or essentially biological processes for the production of plants or animals; software; methods, systems, schemes, discoveries and scientific theories

13 Requirements for a patent The invention must : 1. Be new : the invention must be novel over prior art i.e. must never have been made public in any way, anywhere in the world, before the date on which an application for a patent is filed. 2. Involve an inventive step : an invention involves an inventive step if, when compared with what is already known, it would not be obvious to a person with a good knowledge and experience of the subject. 3. Be capable of industrial application : an invention must be capable of being made or used in some kind of industry.

14 Patent prosecution

15 STATISTICS ON EXAMINATION ( ) 15

16 FOREIGN AND LOCAL APPLICATIONS LOCAL FOREIGN TOTAL Nb % Nb % APPLICATION ,3 989 GRANT , ,

17 Patent examination Context : Insufficiency Examiner number The majority of patent application is via the PCT system Objective : Reduced work and faster turnaround time Better search and examination quality

18 Patent examination (cont.) For PCT application in national phase : utilization of the international preliminary examination report, the written opinion, Supplementary International Search Reports, PCT Third Party Observations. Examiners must verify that positive or negative novelty/inventive step findings in this report applicable under Malagasy law

19 Patent examination (cont.) For resident application, in cooperation with WIPO via ICE (International Cooperation for Patent Examination), the substantive examination is conducted by another office, like Canada, Swiss, French. The examiner may perform further search and examination if he/she thinks it is necessary.

20 Patent examination (cont.) Concerning direct application, from non resident, we use external databases for patent search an examination. We use principally AIPN(Advanced Industrial Property Network), in cooperation with the JPO. AIPN provides the JPO examination results to foreign IPOs in English ; WIPO, US, European, french patent databases are also consulted by the examiner. An applicant claiming priority shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with Malagasy patent

21

22 22

23 The Patent System In Ethiopia Processing Patent Application in Ethiopia By Ermias Yemanebirhan RSA, Pretoria September 13, 2017

24 PROCESSING PATENT APPLICATION IN ETHIOPIA Content The Ethiopian IP System Major features of the Ethiopian Patent system Prosecution of patent application in Ethiopia Figures and status of patent application Challenges and Impediments

25 THE ETHIOPIAN IP SYSTEM THE LEGAL FRAMEWORK THE CONSTITUTION OF Every one has the right to own property (Article 44) - The Federal government shall patent inventions and protect Copyrights {Article 51(19)} PATENT - Inventions, Minor Inventions and Industrial Designs Regulation: Proc. No 123/1995 TRADE MARK - Trade Mark Registration and Protection Law: Proc.No.501/2006 COPY RIGHT - Copyright and Related Rights Protection Law: Proc.No.410/2004

26 TOP LEADERSHIP The Prime Minister S&T Council Execution MOST S&T Related Ministries Innovation Support & Research System Financial Support Universities S&T University National IP System incubation Centre GRI TVTE LI SMME National Quality System The Base Quality General Education People and Culture IP In The National Innovation System

27 IP SYSTEM cont d Ethiopian Intellectual Property Office (EIPO) Prior 2003 IP Administration in Ethiopia was Fragmented Patent was administrated by the then Science and Technology Commission Copyright and related matter was Administrated by the former Youth, Sport and Culture Ministry Management of Trade mark was handled by the then Ministry of Trade and Industry EIPO was established by Proclamation No. 320/2003

28 Regional IP Councils MOST Director General National IP Council Internal Audit Special Advisor Reform Ethics Patent and Technology Transfer Directorate IP Legal Affairs HRM Plan Trademark, Protection and Development Directorate Copyright and Communities right Directorate Communicati on Finance Property and Service EIPO s Organizational Structure Gender and Women Affairs

29 IP SYSTEM cont d EIPO s Objectives EIPO s Objectives Protect IPRs, Create an information system and provide service to users, Develop and submit policy and legislation proposal to the Government on IP, Render advisory services on IPRs matters & undertake popularization activities to create awareness among the general public, Support and strengthen inventors, authors and musicians associations and other similar societies, Establish relationship with national, regional and international IPRs.

30 The Ethiopian Patent System Patent Proclamation No 123/1995 Objectives To encourage local inventive and creative activities To encourage the transfer and adoption of foreign technology The Proclamation includes Four forms of protection: - Patents - Patents of Introduction - Utility Model - Industrial Design

31 IP SYSTEM cont d Utility model protection is given to inventions which are: - New in Ethiopia and Industrially applicable Reasons for inclusion UM in the law: Most of the inventions involve small adaptations of existing technologies that fall short of qualifying for patent protection On the assumption that small adaptations can have a positive impact on the growth of productivity in the country. To encourage local inventors Patent of Introduction granted to inventions which are: o patented abroad o not expired o not been patented in Ethiopia The term of protection of Patent of Introduction is for a period of 10 year.

32 Patent application process in Ethiopia Follows the principles of the Paris Convention Applicant who file his/her patent application in one of any foreign national patent office can file the same application within twelve months at EIPO; Application can be filed at EIPO in any language; However, as the working languages of the office are Amharic and English, application that is not filed in one of these languages, shall be translated to such an official language within a specified period of time(usually within two months).

33 Patent application process cont d. Currently, based on Ethiopian patent proclamation there are three modes of patent application at the office. These include: Patent ( for Novel, No-Obvious and Useful invention) PI (for invention that has been patented in foreign country but not lapsed in its country of origin) and; UM (for minor invention that can be filed to protect technical innovations which might not qualify for a patent).

34 Patent application process cont d. An applicant who wants to file his/her Ethiopian application must come up with detailed description of the invention which may consist of: a request for grant; abstract; drawings (if any); a description of the invention (Detailed description of the invention including the working procedures, examples, best mode of practicing etc ); claim(s) After receiving the proper application, the office conducts an examination as to novelty, non obviousness and utility of the filed application and concomitantly notifies the examination results to the applicant.

35

36 Patent Application Processing Status as of 2017 Status Patent Utility Model Patent of Introduction RECEIVED GRANTED

37 Legal lacuna existed Challenges and Impediments High turn over of skilled man power Lack of experienced IP attorney (legal and technical) that may help the patent applicants in drafting standard and valid patent application, especially for domestic applicant and represent the applicant in any case regarding IP; Low level IP culture among the general public including the learned once. Seamless coordination and Collaboration that optimize resources at the local level has not yet been realized.

38 Challenges and impediments cont d Lingering of the country (Ethiopia) in signing international IP treaties including the Paris convention and the PCT etc. Lack of online patent application system/service, searchable EIPO- filed patent documents; Dependency with donors (mainly WIPO) in major technical equipment and training is observed, even if the country is a member.

39 Thank You

40 40

41 A LOOK AT OTHER OPTIONS FOR PROCESSING PATENT APPLICATIONS INNAUGRAL SUMMIT ON PATENT EXAMINATION SYSTEMS IN AFRICA PRESENTED BY SARAH NORKOR ANKU (MRS) ASSISTANT REGISTRAR/STATE ATTORNEY GHANA SEPTEMBER 13, 2017

42 OUTLINE Patent processing in Ghana IP Office Current challenges Other options for processing patent applications Conclusion

43 Patent Processing In Ghana IP Office In Ghana, the state institution responsible for granting patents is the Registrar-General s Department (RGD). The Registrar-General is the Registrar of Patents. She is assisted by 14 Assistant Registrars. RGD is a Department under the Ministry of Justice. The Department has a staff strength of about 260, of which 16 are Industrial Property support staff. There are additional 10 temporary staff at the industrial property unit. Currently the Patent Unit has 3 permanent support staff. RGD is also responsible for the registration of Trademarks, Industrial Designs and Businesses; Administration of Estates and Registration of Marriages under Special License

44 Patent Processing In Ghana IP Office Cont Patent processing in Ghana is governed by the Patent Act, 2003 (Act 657) and the Patent Regulations LI1616. The law provides for Formality and Substantive Examination of applications before the grant of patents. Currently the office does not conduct substantive examinations due to lack of capacity.

45 Patent Processing In Ghana IP Office Cont Fortunately, the laws permit, in sec9(8) of Act 657, reliance on: (a) results of any international search report and any international preliminary examination report established under the Treaty in relation to the application; (b) a search and an examination report relating to a corresponding foreign application; or (c) a final decision on refusal to grant a patent on a corresponding foreign application; (d) a search and an examination report which was carried out upon the request of the Registrar by an external search and an examination authority

46 Patent Processing In Ghana IP Office Cont Pursuant to sec 9(8)(d) the Patent office transmits local applications and amendments to foreign applications to the African Regional Intellectual Property Organization (ARIPO) for search and examination. Applicants are allowed to request for transmission to other recognized search and examination authorities for search and examination. There is heavy reliance on the resulting written opinion on patentability

47 Patent Processing In Ghana IP Office Cont Reports with positive written opinion on patentability are further examined by Assistant Registrars to determine conformity to the Patent laws of Ghana Patents granted are published before certificates are issued. The law requires applicants to maintain their applications and grants by paying specified amounts as annuities

48 Current challenges Lack of control over the whole process A lot of discretionary powers with lack of certainty Delayed examination reports from ARIPO Reports from Search and Examination Authorities and other IP Offices limit the reports to only patentability and do not examine based on the laws of Ghana unlike ARIPO Lack of IP experts / agents Lack of training of staff in IP Office Disinterest in patents as a result of intense technicality

49 Possible options available Establishing an expedited patent processing system at IP Offices with similar systems at ARIPO for interested applicants Flexibility in laws to allow for grants based on grants from other jurisdictions Expedited actions for requested services at ARIPO Basic training in patent examination for key IP staff of National Offices Need for trained personnel at the IP Office to conduct both formality examination; some level of substantive examination and to interpret Search and Examination Reports

50 CONCLUSION Africa cannot remain a dark continent where IP is concerned. It is in our interest as stakeholders to continue developing the patent systems on the continent. Thank you

51