As we have previously posted on this website, a new Industrial Property Act (1989) was published in the Gambia on 2 April 2007. However, as the Implementing Regulations were not published at that time, there was a great deal of confusion as to whether the new law was yet in full force and effect. 

Inter alia, the new Act specified that patents would 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. The new Act also provided that annuities would be payable annually, commencing on the first anniversary of the filing date of a patent application in the Gambia. However, to date, the Registrar has not been accepting any annuities under the new law.

We have just learnt that the Implementing Regulations were finally published in the Gambia on 1 January 2011, and we understand that annuities are therefore now payable as from that date onwards, in respect of all granted patents and pending patent applications. A grace period of 6 months is provided for late payment of annuities, on payment of a late fine.

As far as the extension of the term of a patent is concerned, the Act provided that a patentee can request an extension of the 15 year term of their patent for a further 5 years, by lodging a formal request for extension not more than twelve months and not less than one month before the expiration of the 15-year term. The extension will be granted provided that the patentee pays the prescribed fee and proves to the satisfaction of the Registrar that the invention is being worked sufficiently in the Gambia at the date of the request or that there are other circumstances (other than importation) which justify the failure to work the invention. Annual fees will be payable during the five year extension period, up to the 20th annuity.

The new Act stipulates that an invention is deemed to have been worked if the patented product is made or the patented process if used, as the case may be. It is not yet clear as to the precise type of evidence that will be required in practice in order to demonstrate working satisfactorily, and the law is silent on this point. However, it may be pertinent to note that the Act does contain provisions for the grant of compulsory licences on the grounds of non-working of an invention, and from those provisions it may be assumed that the evidence that must be supplied would be that which is deemed sufficient to prove an adequate supply of the patented product and on reasonable terms to the market in Gambia. We understand that this could take the form of evidence of the marketing, promotion or advertising of the product, sales invoices, evidence of purchases of the product, evidence of suppliers or those who stock the product, and evidence of awareness of the article in the market through surveys, media reports and the like. 

We are currently compiling a list of all of our clients' Gambian patent cases, and we will write on each case to advise our clients of the due dates for the payment of annuities and the filing of term extension requests. Please, however, check your own records to ensure that all of your cases are accounted for.