Gambia - Implementation of Industrial Property Act 1989The Industrial Property Act 1989 entered into force in Gambia on 2 April 2007. The new act repeals the 1916 Act and introduces the International Classification of Goods and Services.
Despite the effective date of 2 April 2007, the relevant Regulations have yet to enter into force, but in a communication issued on 25 March 2008, the Registrar states that applications will be accepted in the international classes with immediate effect. Applications following the former classification will be accepted up to 2 April 2008; thereafter, they will be refused unless filed in international classes.
We are also advised that all applications received from 2 April 2007 will be reclassified into the International Classification by the Registrar, although at present it is unclear what the process for reclassification will be. We understand that the Registrar has decided that she will reclassify existing applications, rather than the agents who filed the applications. Given the staff shortages at the Registry, and the speed at which matters are normally handled in Gambia, we are not at all optimistic that the reclassification of existing cases will take place in the foreseeable future. Furthermore, we are not convinced that the Registrar will reclassify the applications correctly, and it is presently not known whether we will be able to appeal against any reclassifications which are obviously incorrect. It is also unclear as to which version of the International Classification will be used, although we believe that it is likely to be the ninth edition.
Nevertheless, the written confirmation that the International Classification is in use, and that service marks are being accepted, must be welcomed. Gambia is one of the few countries in the region with a significant tourism industry, and we recommend that trade mark owners active in the service classes should file their trade marks in Gambia as soon as possible.
26th March 2008
Gambia - Publication of Trade Marks JournalWe are very pleased to report that for the first time in 26 years, Gambia is beginning to publish the Trade Marks Journal again. This will come as a relief to applicants whose trade marks have been pending for over a quarter of a century, simply because publication has not taken place.
The Registry has indicated that it intends to deal with the considerable backlog of pending cases by publishing a significant number of Bulletins this year. Further information will be posted on this website as and when it has been received.
7th March 2008
Gambia - Revised Industrial Property Law - Patent ReregistrationsAs previously posted on this website, we have been aware since November 2007 that the Industrial Property Act (1989) was published in the Gambia on 2 April 2007. Unfortunately, however, this fact was not made known either to local agents in the Gambia or internationally at the time of publication of the law, and there is a great deal of confusion as to whether the new law is actually in force now that it has been published. As the necessary implementing Rules and Regulations have yet to be prepared and published, it is believed by some that the law is not yet in full force and effect. However, others have been led to believe that the new law is indeed fully effective and that the provisions of the old laws are no longer applicable. We are currently awaiting urgent written clarification from the Gambian Registrar to this effect, but unfortunately the situation is still, at the time of writing, unresolved.
The new Act, once in effect, will repeal the following intellectual property Acts:
• The Registration of United Kingdom Patents Act 1925
• The United Kingdom Designs (Protection) Act 1936
• The Trade Marks Act 1916
The main implications of the new law, from a patent perspective, are as follows:
Requirements for patentability
• An invention must now satisfy the requirements of absolute novelty, inventive step and industrial applicability, and it must not relate to "excluded" subject matter (please see below).
Reregistration of granted UK patents
• A requirement of absolute novelty of inventions is specified in the new law. Thus, the new law does not provide for the filing of applications for reregistration of granted UK or EP(UK) patents in the Gambia.
• However, the new Act does include transitional provisions, which set a period of 12 months from entry into force of the revised Act, during which proprietors of UK or European(UK) patents may still apply for reregistration of their patents. The transitional period will expire on 2 April 2008, if it is deemed that the new law came into force on 2 April 2007. As stressed above, this is not yet clarified, and the deadline may well prove to be irrelevant or may be extended under the discretion of the Registrar. Please do, however, bear this date in mind should you have any UK patents that you wish to reregister in the Gambia, as it may well be that the date of 2 April 2008 is in fact strictly adhered to by the Registry.
Term of Protection and Annuity Payments
• The new law specifies that a patent will be granted for a term of 15 years, extensible by a further five years upon request and upon provision of proof of working of the invention in the Gambia. Annuities are now payable annually, commencing on the first anniversary of the filing date of a patent application. Under the old law, maintenance fees were payable every four years from the date of registration of a patent in the Gambia.
• Whilst it appears that annuities will be payable annually in respect of both UK-based reregistration patents and local independent patents, it is not yet clear whether back annuities will be payable in respect of existing cases, or indeed how existing cases will be treated under these new provisions. We are still awaiting clarification in this regard.
Exclusions from patentability
• The new Patents Act lists several exclusions from patentability in the Gambia. Of particular note is the exclusion of methods of treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the human or animal body. This exclusion does not extend to products for use in any of these methods. We therefore suggest that claims relating to methods of treatment be drafted in the form: "Substance X for use in a method of treating disease Y" (in cases where Substance X has not been disclosed for use in the treatment of any such method in the prior art), or as Swiss-style claims ("Use of Substance X in the manufacture of a medicament for treating disease Y").
Utility Models
• The revised Act provides for the grant of utility model certificates and independent design registrations in the Gambia.
We will post further information on this website as soon as we have any news to report.
Please do not hesitate to contact us should you require any clarification of the above matters.
27th February 2008
Gambia - Industrial Property Act (1989)Whilst having recently become aware the that the Industrial Property Act (1989) came in to force in Gambia on 02 April 2007, we have been informed by our local associate that until such time as the implementing Rules and Regulations have been published, provisions contained in the new Act are not able to be followed.
With regard to the filing of trade marks, the new Act introduces the use of the International Classification system and also service marks. However, for the time being the Registrar is only able to accept applications using the old classification system (pre-1938 U.K. Classification - Schedule III). Once the Rules and Regulations have been published in Gambia, the new Act will take full effect, and any applications filed since 02 April 2007 will be re-classified by the Registry to comply with the International Classification system.
It is hoped that publication of the implementing Rules and Regulations may happen fairly soon, but this cannot be guaranteed. Gambia's track record in this area is not good, so we would anticipate a delay of 6-12 months or possibly even longer.
Further information will be posted on this website as and when it becomes available.
5th December 2007
Gambia - Industrial Property Act (1989)We have recently become aware that the Industrial Property Act (1989) came in to force in Gambia on 02 April 2007.
This new Act repeals the following I.P. Acts:
The Registration of United Kingdom Patents Act 1925
The United Kingdom Designs (Protection) Act 1936
The Trade Marks Act 1916
The necessary implementing Rules and Regulations have yet to be prepared and published, so while the new law is officially in force, in practice the absence of implementing regulations means that the law is not yet in full force and effect.. All our clients will be contacted by e-mail as soon as we have definite news regarding the implementation of the new law, and a notice will also be published on this web site at that time.
29th November 2007
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