Benefits of Regional Patent Systems

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2 Benefits of Regional Patent Systems FERNANDO DOS SANTOS DIRECTOR GENERAL Adams & Adams - Pretoria September 13, 2017

3 OUTLINE Administration of IP Systems in Colonial Africa Patent Examination Systems in Colonial Africa Genesis of Dysfunctional IP Examination Systems In Africa Challenges Facing Developing Countries in IP Management Options in Addressing Challenges in Patent Examination A Case for Substantive Patent Examination in Africa A Glimpse on the ARIPO System The Link Between the Harare Protocol and the PCT The Link Between the Harare Protocol and the Budapest Treaty ARIPO Online Services Initiatives on the Improvement of the System

4 ADMINISTRATION OF IP SYSTEMS IN COLONIAL AFRICA The Extension System Extension of Metropolitan IP Laws to the colonies. Almost all British, French and Portuguese Colonies were using this system Enactment of IP Laws on behalf of the Colonies - colonial powers enacted, on behalf of the colonies, IP laws that were applicable only in the colonies. Eg: Belgian Decree on Patents of 29 October 1886 made valid only in Congo by an Order in May 1889 Mixed Approach - with elements of the the extension system and exceptions allowing to the colony the adoption of its specific IP legislation

5 PATENT EXAMINATION SYSTEMS IN COLONIAL AFRICA African IP Offices built around and to serve the metropolitan IP Offices in Belgium, France, Portugal, Spain or United Kingdom African IP offices were lacking technical expertise Local patent applications were very few or nonexistent Role of the patent offices in Africa was to: serve as mailboxes for the local applications to be channelled to Europe re-register the already granted patents in the metropolitan IP offices Re-registration system

6 GENESIS OF DYSFUNCTIONAL IP EXAMINATION SYSTEMS IN AFRICA With the prevailing situation it was felt that the complex work of examining and granting patents could be done in Europe, thus removing the burden and the need to establish examination offices or even develop a local capacity to administer patent applications in Africa As a result, colonial Africa never developed skills for examination and granting of patents That anomaly is still affecting Africa in the current days and need to be addressed

7 OPTIONS IN ADDRESSING CHALLENGES IN PATENT EXAMINATION Adoption of Substantive Examination Systems Egypt, Ethiopia and Kenya Adoption of Depository Systems Majority of African countries including South Africa Reliance on Regional Patent systems - (OAPI 1962; ARIPO 1976) Adoption of Substantive Examination Systems and reliance on Regional System for actual examination - ARIPO examines national Patent applications from Botswana, Ghana, Lesotho, Uganda, Swaziland (occasionally), Namibia (occasionally)

8 CHALLENGES FACING DEVELOPING COUNTRIES IN IP MANAGEMENT Outdated IP legislation and lack of adequate regulations for the management of IP rights Lack of awareness of the importance of IP for development Lack of capacity and skills in IP institutions Lack of adequate infrastructure for the operations of the IP Offices Lack of examiners to perform high quality substantive examination Cumbersome Procedures in a number of IP offices Backlogs and unclear workflows which refrain users from relying on the systems Non automated systems in the majority of IP offices

9 A CASE FOR SUBSTANTIVE PATENT EXAMINATION IN AFRICA ADVANTAGE: Patent will have due consideration of national public interest Very strong valid inventions rights Valid IP rights are licensed Avoid expensive future litigations Prior art in search reports can be used for reverse engineering, patent information & IP exploitation Well established & expensive IP Litigations can be avoided Governments & Industry can avoid paying royalties for invalid patents; Protection of the Public & local Industry, etc. DISADVANTAGES: Longer periods to prosecute the patent High costs Backlogs System may become unattractive

10 A GLIMPSE ON THE ARIPO SYSTEM ARIPO Patent System established by the Harare Protocol in 1982 (entry into force 1984) 33 years of experience! 18 out of 19 Member States are members Applicant can file application with either his national office or directly with the ARIPO Office One application can designate all member states Applicant uses only one language English Applicant pays fees in one currency US dollars Applicant employs only one agent Centralized processing, grant and renewal ARIPO application can be converted into a national application without loosing the filing date 10

11 A GLIMPSE ON THE ARIPO SYSTEM ARIPO Conducts Substantive Examination and grant stronger patents Low costs if compared with individual filings More efficient and streamlined procedures than national systems On average takes about 21 months from filing to grant Uniform duration of rights in all States- 20 years! The system is simple, cost effective and user-friendly. 11

12 THE LINK BETWEEN THE HARARE PROTOCOL AND THE PCT 18 Member States of ARIPO are members of PCT Harare Protocol was linked to the PCT The link took effect on July 1, % of ARIPO applications come through PCT! Any applicant filing a PCT application may designate ARIPO By designating ARIPO all 18 Member States are designated ARIPO Office act as a receiving office under the PCT ARIPO Office may be elected in any PCT application 12

13 LINK HARARE PROTOCOL AND BUDAPEST TREATY A deposit of biological material must be made in a recognized institution in the case of inventions involving micro-organisms Applications should contain name of Institution, date when the culture was deposited and reference number Deposited culture shall be available to third parties from the date of publication of the ARIPO application ARIPO publishes the list of depository institutions 13

14 ARIPO ONLINE SERVICES Polite +: From 2015 Accessible to public State of the Art Searches E-filing Online payment(epayment) Access IP Journals IP Forms Fees Information on IP ARIPO Services Regional Databases

15 INITIATIVES ON THE IMPROVEMENT OF THE SYSTEM A Working Group composed by ARIPO experts, Member States and patent agents is convened every year to propose improvements to the Harare Protocol A Patent Drafting Course for patent agents is organized every year at ARIPO Polite+, the Online System is continuously improved and now covers: 95% e-payments and 73% patent e-fillings Go-green: Online filings attracts 20% discount ARIPO in collaboration with IP Australia is developing a tailored course for patent examiners at ARIPO 15

16 Address:11 Natal Road, Belgravia, Harare, Zimbabwe Tel: /6/8/54/74 Fax: fsantos@aripo.org mail@aripo.org Website:

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18 WERE GAZARO CHIEF OF THE DEPARTMENT FOR PROMOTION AND VALORISATION OF INVENTION AND INNOVATION

19 INTRODUCTION OF OAPI The African intellectual Property Organization (OAPI) is an intergovernmental organization with seventeen members states; Created by the Libreville agreement of September 13, 1962; Revised successively on: i. March 2, At this occasion, Libreville Agreement became Bangui Agreement; ii. February 24, 1999; iii. December 14, Located in Yaoundé, Republic of Cameroon.

20 8- OAPI HEADQUARTER

21 STATES MEMBERS : 17 BENIN BURKINA FASO CAMEROON CENTRALAFRICA COMORES CONGO COTE D IVOIRE GABON GUINEA GUINEA-BISSAU EQUATORIAL GUINEA MALI MAURITANIA NIGER SENEGAL CHAD TOGO

22 In accordance with the common administrative procedures, based on Bangui Agreement and others regulations, 1. Examine applications and grant industrial property rights for: -Patents for inventions; Core Functions - utility models for innovations; -Industrial Designs for aesthetic features of products; -Trade marks for goods and services; -Varieties of plants for the new varieties of plants. 2.To provide industrial property information to the public. 3. To promote inventiveness and innovativeness, 4. To organize and conduct IP training.

23 Core Functions Cont For each of the state member, OAPI serves as the National industrial property service and as the «National office»; In this respect, OAPI acts on behalf and on the account of its states members;

24 WHICH PROTECTION SYSTEM? The Bangui agreement established a common office and the uniform system for the protection of IP titles; The procedures for granting protection titles are centralized at the headquarter; The filing of an application has the effect of as a national filing in each of the member states. Titles granted by OAPI are valid in all member states; There is no national system of granting of titles which coexists with the regional system of protection; The working language are French and English.

25 INFRINGMENT Acts to be introduced in the country where the infringement occurs; The final judicial decisions rendered on the validity of titles in one of the Member States, are authoritative in all other States, except those based on public order and good morals;

26 BANGUI AGREEMENT : 10 A NNEXES FOR 10 PROTECTION SUBJECT MA TTERS Annex I: Patent; Annex II: Utility model; Annex III: Trademarks and service marks; Annex IV: Industrial design; Annex V: Trade names; Annex VI: Geographical indications; Annex VII: Literary and artistic property; Annex VIII: Protection against unfair competition; Annex IX: Layout designs (topographies) of integrated circuits; Annex X: Plants variety protection.

27 THE ORGANIZATION S ORGANS The Bangui Agreement established three organs for the conduct of its action: 1. The Administrative Council which is the highest authority who determines the general policy and regulates and controls the activities; 2. The High Commission of Appeal, responsible for ruling on appeals following the decisions of rejection of the applications; 3. The Directorate General.

28 FILING OF APPLICATIONS Any application addressed to the Organization is deposited either directly at the OAPI headquarters, based in Yaoundé, Cameroon, or through the ministry in charge of intellectual property issues in each of the member states (For the national applicants only); Applicants domiciled outside the territory of the member states shall file trough an agent selected in one of those member states; The exercise of the profession of agent accredited to the Organization is governed by special rules.

29 PATENTS PROTECTION SYSTEM 1. Under the Bangui Agreement, an invention means a solution to a specific problem in the field of technology; 2. It may relate to a product or process; 3. For patentability the invention must: i. Be new (not anticipated by prior art); ii. Involve an inventive step (not obvious to a person skilled in the art to which the invention pertains) iii. Be industrially applicable (can be made or used in any kind of industry)

30 PROTECTION OF PATENTS Protection is conferred for a period of 20 years from the date of filing of the application for patent; The following inventions are not patentable: i. Plant varieties as provided for in the Annex X for the protection of plants varieties; ii. iii. iv. Inventions contrary to public order, morality; Methods for the treatment of the human or animal body by surgery or therapy including diagnostic method; A discovery, scientific theory or mathematical method; v. A literary, dramatic, musical or artistic work, or any other aesthetic creation; vi. vii. A scheme, rule or method for performing any mental act, playing a game or doing business, or Mere presentation of information.

31 PATENT EXAMINATION Formal examination of patentable subject matter, equitable basis of claims, requirements of unity and formality check. Substantive examination not yet implemented.

32 Request form (IB101) Formality examination i. Title of the invention. ii. Signature. iii. Name and address of applicant, iv. Residence of applicant, etc Description i. State the technical field ii. Give background information iii. State the problem to be solved by the invention iv. State the title v. Give the best embodiment 32

33 Formality examination Claims Should be set in 2 parts; Numbered consecutively; Should not make reference to drawing; Drawings only if necessary; They make the understanding of an invention easy; no unnecessary text matter on drawings; Reference in description should be indicated in drawing. ABSTRACT

34 BENEFITS OF THE REGIONAL PROTECTION OF PATENT AT OAPI The Bangui agreement gives a number of advantages, especially for small and medium-sized enterprises, such as: i. Single application for a patent; ii. iii. iv. single patent with unitary effect on the entire area of OAPI; single patent court (provided in the last version of Bangui Agreement; reduced costs; v. simplified procedures.

35 BENEFITS Cont The OAPI system provides a relatively inexpensive, easy and efficient way to extend patent protection to a total of 17 African countries. As a designated office, the system provides important additional advantages for applicants wishing to protect their inventions in countries party both to the regional patent system of OAPI and to the PCT.

36 CHALLENGES FACING THE IP SYSTEM AT OAPI The current examination system for patents and utility model (Formal examination), must be reviewed, corrected and reinforced by practices that give more credibility to endogenous inventions and at the same time, contribute to capacity building at all levels;

37 CHALLENGES FACING THE IP SYSTEM AT OAPI Combating counterfeits: Unauthorised use of protected material (piracy); Low level of IP awareness by the public; Few judicial precedents in IP to guide protection and enforcement agencies; Lack of proper understanding of IP by judicial officers as well as other enforcement agencies such as the police and customs; The expenses involved in IP processing sometimes too high for potential applicants.

38 CHALLENGES Cont Limited patent drafting capacity; Poor linkage between research institutions, inventors and industry which has led to low levels of commercialization of most inventions; Poor coordination amongst users and enforcement agencies and Judicial bodies with regard to Intellectual Property; IP is not entrenched in the Constitution of majority of the members states and the policies are not explicit on IP issues. This has resulted in lack of creativity as there is no incentive to create.

39 WAY FORWARD 1) Satisfy OAPI users: To satisfy OAPI users, the following four strategies will be put in place i. Shorten processing times; ii. Simplify procedures; iii. reduce protection costs; iv. Ensure staff development and capacity building; v. A real modernization of services and procedures will be undertaken; 2) In the field of communication, publicize OAPI and popularize intellectual property in member states; 3) An ambitious program of administrative reforms with reorganization in line with the new managerial vision; 4) Implementation of a secure and publicly accessible virtual infrastructure; 5) Implementation of electronic filings of IP applications.

40 WAY FORWARD 1) One of the priorities of the new Director General of OAPI is: to setting up of the substantive examination of applications for the protection of inventions; 2) To provide capacity building on substantive examination for patents by: Reinforcing the team of patents examiners; Strengthening their capacity building; Setting up the training programs on the patent examination for OAPI examiners and in the member states; Promote a body of patent attorneys; establishing partnerships with other offices; 3) A strong cooperation with the universities and research centers will be established; The purpose is to encourage them to protect their search results.

41 Way Forward The members states should embark on encouraging the private sector to do R &D for value addition of their products; Private sector should be active in initiating IP reforms in the member states; The Governments should set up agencies to fight trade in substandard and counterfeit goods (Ant-Counterfeit Agencies); Industries should encourage their staff to come up with, or propose innovations to improve their product; Financial institutions need to appreciate the value of IP as an asset and provide loans using IPR as collateral or security; Incubation centers around the countries and universities must be developed in line with the innovation policies.

42 Way Forward The DG intends to develop a culture of intellectual property in the Member States through awareness-raising and continuous training programs on the importance of intellectual property and respect for the rights of innovators and creators; States will be encouraged to include intellectual property training modules in the training programs of justice, economic police and customs officers;

43 A COOPERATION ALL AZIMUTS An offensive policy of cooperation will be deployed in the direction of all the institutions to accompany the OAPI in its development efforts

44 The end Thank you so much for your kind attention!!!