Navigating the patent landscape in Africa (II)

By Tyron Grant, Craig Kahn, Jacky He,[Patent]

Acquiring patent rights in Africa can be a complex process, as an applicant is required to interpret the various laws of each of the different states in which it requires protection. Further, in many instances, a shortage of or complete lack of IP practitioners in a specific country can impede an applicant’s attempts to obtain patent rights.


It is important to consider the various routes which an applicant has in order to obtain rights in Africa, as well as whether a particular country is a member of any form of international and/or regional arrangement.


Paris convention and patent cooperation treaty
When considering a filing strategy in Africa it is important to note that Burundi, Cape Verde, Democratic Republic of Congo, Djibouti, Eritrea, Ethiopia, Mauritius, South Sudan, St
Helena, Somalia and Somaliland are not members of the Patent Cooperation Treaty.


Burundi, the Democratic Republic of Congo, Djibouti and Mauritius are members of the Paris Convention and it is possible to file Convention applications in these countries within 12 months of filing a priority application. Ethiopia, although not a signatory to the Paris Convention, also recognises claims to priority.


Regional systems

There are two regional patent systems in Africa, namely the African Regional Intellectual Property Organisation (ARIPO) and the Organization Africaine de la Propriété Intellectuelle (OAPI). Several African states are not members of either of these regional systems. In these non-member states, depending on the specific legislation, patent rights can be obtained either by claiming convention priority, filing national phase applications based on a PCT application, patents of importation and/or reregistration of granted patents in other jurisdictions.


ARIPO patents

The Harare Protocol, which was adopted in 1982, empowers ARIPO to grant patents and utility models and also to register industrial designs on behalf of its contracting member states. There are currently seventeen member states to the Harare Protocol and these countries may be designated in an ARIPO patent application. The member states include: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania (Tanganyika), Uganda, Zambia and Zimbabwe. Nine member states may be designated in an ARIPO utility model application and thirteen member states may be designated in an ARIPO design application.


The ARIPO patent system works in a similar manner to the European Patent System. At the time of filing its application with ARIPO, the applicant is required to designate the member states in which it will ultimately require patent rights. The patent offices of each of the designated States are notified once the ARIPO patent is granted. In each designated state, an ARIPO patent has the same effect as a patent granted under the applicable national law of that country.


OAPI patents

OAPI is the other regional system in Africa for filing patent applications. OAPI was established in 1962 and in terms of the enabling legislation for this organisation each of the member states have repealed their individual national intellectual property laws in favour of the Bangui Agreement. This makes it possible for a single application to provide patent protection rights in all of the member states. The members of OAPI include: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros (except Mayotte), Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.


Under the OAPI patent system, a single patent application automatically covers all of the member states and it is not possible to designate individual member states of interest. Furthermore, once granted the patent automatically becomes effective in all of the member states.


Summary

As the world’s focus turns to Africa as an investment destination and partner in economic growth, it is important to be aware that there are various obstacles that can stand in the way of registering and obtaining granted patent rights on the continent. Careful consideration of the various IP laws, routes for obtaining patent rights and deadlines for doing so are essential to ensure that one’s rights are protected.

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