We write with regard to some discrepancies that have recently come to light in respect of the terms of Patents and Patents of Importation, and the payment of annuities, in the Democratic Republic of Congo.

 

On recently receiving conflicting information from our associate in the DRC, and on further review of the Industrial Property Law No. 82-001, it has come to our attention that there are certain provisions in the Law which appear to conflict with advice previously provided to us by our associate.

 

Specifically, regarding the term of patents, we note that whilst Article 36 of the current Law specifies that patents of invention have a term of 20 years from the filing date, patents of invention relating to pharmaceuticals have a term of just 15 years from the date of filing.

However a separate article (Article 37) is provided specifically to cover Patents of Importation.  This article specifies that patents of importation have a term which comes to an end at the same time as the primary patent to which they are attached.

 

As Article 37 is independent of Article 36, we consider that it should be treated in its own right, independently of Article 36, and therefore any Patent of Importation relating to any subject matter will expire when the primary patent expires, including Patents of Importation relating to pharmaceuticals.

This is contrary to advice we have previously received.  However it is our opinion that if the legislators had intended for Patents of Importation specifically relating to pharmaceuticals to expire after 15 years from the filing date instead of upon expiry of the primary patent, Patents of Importation would have been included in Article 36 and not treated under a separate article of the law.

 

Secondly, regarding annuity payments, it has come to our attention that the provisions of Article 62 simply state that “the maintenance in force of the patent shall be subject to payment of the annual fees” and Article 25 implies that the filing fee includes the payment of the first annuity. 

 

We can, however, see no mention in the law of when annuities actually become payable (e.g. on the first anniversary of the filing date), and also we cannot locate any Regulations that would accompany this law. 

 

It is therefore our understanding that the due date for annuities is something that has been decided in a Practice Direction or the like issued by the Patent Office. 

 

Contrary to advice that we have previously received from our associate in the DRC, we believe that the first due annuity is that falling on the second anniversary of the local filing date – e.g. for a patent application filed on 1st December 2015, the fee falling on 1st December 2016 is included in the filing fee and the first annuity fee payable post-filing, would therefore fall due on 1st December 2017.

 

We had previously been advised that annuities were only due commencing on the third anniversary of the national filing date of an application in the DRC, rather than the second.

 

We have recently been in contact with our associates, and have asked them to attend at the Registry to discuss these matters in detail with the Minister, however, we have yet to receive their further advice.

 

Furthermore a search of the Registry records has been requested, to ensure that all annuities have been paid to date on all of our pending applications, and we have requested confirmation that payment of any annuities that may now be overdue will be accepted without question, bearing in mind the conflicting instructions that have been received from the Registry in the past.  Based on our experience, we believe that the Registry will indeed allow us to pay any overdue annuities in order to regularise these cases.

 

Please rest assured that we continue to closely monitor this matter, and will report any further developments as and when they arise. 

 

We will also be writing to our clients on a case-by-case basis on any affected applications or registrations.