Patent Regional Protection
The regional patent protection system that applies to Tanzania and Zanzibar is the protection system administered by African Region Industrial Property Organization (‘ARIPO’). From 01 September 1999, when Tanzania signed the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982), ARIPO patent applications designating United Republic of Tanzania may be filed. A patent granted by virtue of the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) in respect of which the United Republic of Tanzania is a designated state, have the same effect in Tanzania and Zanzibar as a if a patent was granted under the local patent legislation. If the local Patent Office communicates to ARIPO office indicating its objection to grant of patent, the grant by ARIPO has no effect in the United Republic of Tanzania until a decision is made in accordance with the provisions of the Harare Protocol.
The following is a procedure for filing ARIPO patents:
- Filing of Applications: Applications for grant of patents can be lodged at the local Patent Office, referred to as the Receiving Office or directly with ARIPO. An applicant need not be represented by a patent agent, when lodging an application. However, an applicant whose ordinary residence or principal place of business is outside the contracting state in which lodging is done must be represented by a patent agent. Where the applicant is represented by an agent, such an agent should be an authorized representative. The appointment of a representative must be lodged on filing or within two months from the filing date of the application. Filing of a patent application can be by personal delivery or by registered mail.
- Request for Grant: The request must be made using ARIPO prescribed form obtainable from any local patent office of any contracting state or directly from ARIPO office. These forms can also be downloaded from ARIPO website. Applications not lodged in a prescribed form can be accepted provided there is an indication that the request is made for grant of a patent under the Protocol with at least one designated state. However, the prescribed form must be submitted as soon as possible, thereafter.
- Numbering of the Application: When the application is filed at Receiving Office, ARIPO application is accorded the application number, the date of receipt is marked and the application is embossed with a Receiving Office official stamp. The number consists of a two letter Country Code of the Receiving Office, a slant, the letter AP, a slant, the letter P, a slant, the digit year in which the application is lodged, a slant, and the number allotted internally by the Receiving Office. For example in case of Tanzania being the Receiving Office the numbering would be “TZ/AP/P/2006/1”.
- Acknowledgement of Receipt: The applicant will be notified of receipt of the application by the Receiving Office. The notification will indicate the date of receipt of the application and the number allotted by the office.
- Transmittal to ARIPO: Applications must be transmitted to ARIPO within 14 days form the date of receipt or from the date on which a request for transmission to ARIPO is made. Where an undertaking of payment of fees is the outstanding document, transmission must be made within seven days form the date the undertaking is lodged. Three copies of the application must be transmitted to ARIPO. The Receiving Office must notify the applicant of the transmission of the application to ARIPO.
- Numbering of application: Upon receipt of an application, the ARIPO Office will assign an application number which consists of the letters AP, a slant, the letter P, a slant, the four digit year in which the application was received, and a five digit number allotted in sequential order corresponding to the order in which applications are received. Subsequently, all documents making up the application will be marked with the allotted application number, the actual date of receipt of the application and the ARIPO official stamp. For example the number would be “AP/P/2006/00001”.
- Filing Date Requirements: A filing date will be accorded to an application which contains at least a request, description, one or more claims as required by Rule 5 (1)(a)(b) and (c) of Regulations for Implementing the Protocol on Patents and Industrial Designs. The applicant and the Receiving Office will be notified of such a filing date. However, if the application does not comply with Rule 5 (1)(a)(b) and (c) of Regulations for Implementing the Protocol on Patents and Industrial Designs, the applicant will be notified of the nature of the deficiency and will be requested to correct such deficiency within two months from the date of notice. Failure to do so and to furnish reasonable grounds for the delay will result in treating the application as if it has not been filed.
- Physical Requirements: Documents should be so presented so as to admit direct reproduction by photography, electrostatic processes, photo-offset and micro-filming and should be in this manner: Size of Sheets (A4); Minimum Margins of Sheets (A4 (29.7 x 21 cm) Page 1 upper margin 30mm, Upper margin of other pages 20mm, side margin adjacent to the binding 25mm, other side margin 20mm); Required Type of Paper (Flexible strong white, smooth, non shiny durable); Number of Copies to be filed (3 copies); Required Drawings (Drawings defined less in black, dense & thick, No coloring); Diagrams Required (Graphic reproductions, black or colored) and Description (10X20 size type written or hand written text).
- Examination as to Form: This will be carried out as soon as the filing date has been accorded. Its objective is to determine whether the mandatory requirements have been met. The request for grant of a patent must indicate the title of the invention which must be short and concise and indicate the subject matter of the invention for which protection being sought. The request for a patent must contain the applicant’s name and address. If the applicant is not the inventor, the name of the inventor and his address should be indicated and a deed of assignment should also be furnished to the ARIPO Office. Applications for the grant of patents should designate the Contracting State(s) in whose territory protection for the inventions is required. Designation of a state not party to the Harare Protocol and a designation made after the filing date of an application will be disregarded. However, a designated state may be withdrawn from the designation list at any time.
- Priority Declaration: Declaration in respect of an earlier application (if any) should be made. If such a declaration is not made, prior rights will be disregarded. The priority declaration should indicate the applicant number and filing date of the earlier application as well as the Industrial Property Office in which it was filed. The priority declaration must also be accompanied by a certified copy of earlier application or an undertaking to furnish the ARIPO Office with such as a copy within three months from the filing date. If the earlier application is in a language other than English, its English translation should be submitted within six months from the filing date.
- Unity of Invention: Applications should relate to a single invention only or to a group of inventions so linked as to form a single general inventive concept. However, an application derived from an initial invention which does not comply with the unity of invention i.e. an initial application which does not relate to only one invention or a group of inventions so linked as to form a single general inventive concept, shall be considered as a divisional application and must be filed directly with ARIPO. The number and the date of filing the initial application will be indicated on the request form. The text of the application should be clear to enable the person skilled in the art to understand the manufacturing of the product, or in the case of a process, the carrying out of the process and should at least include the following:
- the title of the invention;
- the description of the invention;
- one or more claims;
- any drawings referred to in the description or the claims; and
- The Protocol and the Budapest Treaty: In order to ensure that patent applications involving micro-organisms are protected by ARIPO, the Protocol incorporates the Budapest Treaty by insertion of the provision to the effect that where the patent application describes or claims as an invention a micro-biological process or a product thereof, and requires for the performance of the invention the use of a micro-organism which is not available to the public on the filing date of the application and which cannot be made or obtained on the basis of the description in the application, the micro-organism must before acceptance of the application be made available to any person on request and to the expert recognized as such by ARIPO Director General.
- Communication of Deficiencies: The applicant will be invited to correct deficiencies in the application within two months from the date of such notice. Failure to do so the application will be refused by ARIPO. The Applicant, the Receiving Office and the designated states will be notified of such a refusal. However, the applicant may still request for reconsideration. The applicant and the Industrial Property Offices of the designated states will be notified of the compliance with the prescribed formal requirements of an application. Such compliance will be followed by examination as to substance.
- Conversion into National Application(s): Within three months of a refusal of an application by ARIPO, a request for conversion of that application into national application may be made. The ARIPO Office will transmit the copies of such an application to the designated states upon receipt of the request and payment of the prescribed fee.
- Examination as to substance: This is carried out by ARIPO or an Examination authority arranged by ARIPO. It will include searching for prior art, and the determination of novelty, inventive step and industrial applicability. The ARIPO Office will compile a search and examination report on the basis of information obtained through its inquiries made under Rule 16 and or the search report compiled by a specific search authority. Where there are amendments and observations to be complied with, the applicant will be invited to do so within six months. Such invitation will be accompanied by a copy of the search and examination report. The refusals to grant the patent will be based on the report, taking into account the amendments and observations if any.
- Refusal, Reconsideration or Conversion into a National Application: The ARIPO Office will notify the applicant of the refusal of an application and the reasons for such refusal will also be furnished. However, the applicant may within two months of notification, request for reconsideration by ARIPO. The ARIPO Office will decide whether or not the reasons given in the request merit alteration of the decision already made. Despite the request for reconsideration, the applicant may within three months of the refusal notification, request the ARIPO Office to convert the application into national applications.
- Board of Appeal: Refusal by the Office on grounds of non compliance with formal and substantive examination requirements and other matters pertaining to the Harare Protocol can be reconsidered or reviewed upon application by the applicant to the Board of Appeal.
- Decision to Grant: The applicant or his representatives and the Industrial Property Office of each designated state will be notified of a decision to grant a patent. This notification will be accompanied by a copy of the search and examination report and specification or amended specification. Within six months from the date of the notification to grant a patent, a designated state may decline to protect the patent in its territory on the basis that it does not comply with the provisions of the Protocol and or its national laws.
- Grant and Publication: The ARIPO Office will grant and publish a patent six months after the notification of decision to grant on behalf of those designated states which have not declined to protect the patent. This is subject to payment of the grant and publication fee. Grant and publication will be followed by recordal of the registration of the patent in the patent register, publication of the patent in the journal and issuance of the certificate to the applicant. Copies of the certificate and the patent specification will be transmitted to the designed states, where they will be registered into the national register and published in the national journals or gazettes.
- Annual Maintenance Fee: Maintenance fees are payable annually on the eve of the anniversary of filing of the application to the ARIPO Office. Each Designated State may on request receive fees due to it from the ARIPO Office. Designated States will be notified of the extension of the validity of applications and patents. Non-payment of maintenance fees will result in the invalidation of applications and patents. Designated states will be informed of the invalidation.
Registration of License, Assignment and other Rights: Designated states are required to furnish, if any, information relating to the registration of licenses, assignments and other rights pertaining to patents, to the ARIPO Office.
The Protocol and the Patent Co-operation Treaty (PCT): In order to ensure that there is interaction between the Harare Protocol and the Patent Co-operation Treaty (PCT), the Protocol incorporates the PCT by inclusion of the provision to the effect that an international application in which a Contracting State which is also bound by the Patent Co-operation Treaty is designated for the purposes of obtaining a patent under the provisions of this Protocol must be considered to be an application for the grant of a patent under this Protocol. The provisions of the Patent Co-operation Treaty apply to such international application in addition to the provisions of the Protocol and the Regulations under the Protocol; in case of conflict, the provisions of the Patent Cooperation Treaty apply.
The ARIPO Office can act as Receiving Office under Article 2 (xv) of the Patent Co-operation Treaty in relation to an international application filed by an applicant who is a resident or national of a Contracting State which is also bound by the Patent Co-operation Treaty. The ARIPO Office can act as designated Office under Article 2 (xiii) of the Patent Co-operation Treaty in relation to an international application referred to in subsection (2). The ARIPO Office can act as elected Office under Article 2 (xiv) of the Patent Co-operation Treaty in relation to an international application referred to in subsection (2) where a Contracting State is elected for the purposes of international preliminary examination under Article 31 (4) of the Patent Co-operation Treaty .