The Administrative Council of ARIPO has recently adopted various amendments to the Harare Protocol on Patents and Industrial Designs and to the Banjul Protocol on Marks. These amendments came into effect on 1st January 2020, but they are not retroactive in respect of applications filed before 1st January 2020.

 

As far as trade mark protection in ARIPO is concerned, the situation remains that only four of the member states have enacted the Banjul Protocol and make specific provision for the recognition of rights flowing from ARIPO registrations. None of the remaining states have enacted amendments to their national legislation to give effect to ARIPO registrations. Accordingly, it is our continued recommendation that applicants should protect their trade marks by filing national applications in each member state of interest, rather than via the ARIPO regional route.

 

As far as patents are concerned, and whilst the amended Protocol and Forms are yet to be published, the following changes are of particular significance:

 

- The designation of a contracting state may, in any application filed under the Harare Protocol, be withdrawn at any time during its pendency, subject to payment of the prescribed fee.

- An applicant may add to the number of states designated in their application before publication of the application. However, this provision specifically excludes PCT national phase applications.

- The ARIPO Office is now required to publish a patent application as soon as possible after expiry of the 18 month period from the date of filing, or if priority has been claimed, from the date of priority. The publication shall include the description, claims, abstract and drawings (if any) as filed.

- An applicant can request the early publication of a patent application before expiry of the 18 month period, subject to payment of the prescribed fee.

- The applicant must pay additional fees for pages of the specification (but not including any sequence listings, if these comply with WIPO Standard ST.25) in excess of 30 and claims in excess of 10, on or before filing the request for substantive examination. Until now, such surcharges have been payable later, at the time of paying the publication and grant fees. Under the new Regulations, if the additional fees are not paid on or before the request for substantive examination, the excess claims shall be deemed to be withdrawn.

- If a divisional application is filed, and any maintenance fees are already due in respect of the parent application, such fees will also be payable along with the filing fees of the divisional application.

 

Please do not hesitate to contact us should you require any further information or assistance.