We write to notify you of a recent development in the treatment of Madagascan patent applications by the Madagascan Patent Office (OMAPI).

We have quite recently started to receive notices of rejection from OMAPI in respect of certain of our clients' PCT national phase patent applications, on the grounds of lack of novelty and/or inventive step of the claimed subject matter. Previously, OMAPI were not conducting any sort of substantive examination of patent applications, but it now appears that they have started to issue such notices of rejection based on the objections raised during the international preliminary examination (IPE) of the respective PCT applications. It appears that OMAPI has started to rely on the provisions of Article 40(1) of the Implementing Regulations (Decree No. 92-993) of the Madagascan law, which give OMAPI the power to carry out a patentability examination where an international preliminary examination has been carried out under Article 33 of the PCT. Article 40(2) of the Regulations provides that, for other (i.e. non-PCT) applications, the patentability examination shall initially be limited to checking the compliance of the application with the provisions of Articles 8 and 18 of that Ordinance (which relate to unpatentable subject matter and sufficiency of the specification). 

We expect that the OMAPI officials do not have sufficient technical knowledge to understand the subject matter of patent claims in great detail and therefore to judge their patentability themselves. This is therefore presumably why they are relying on the international preliminary examination report (IPER) for an indication of the patentability of the claims, and simply reiterating the objections raised therein. 

Importantly, where OMAPI has issued a notice of rejection of a patent application, the only means of recourse is by filing an appeal to the Court within one year from the date of issuance of the notification of rejection. Such an appeal obviously requires a lengthy and complicated legal procedure to be followed, and bears significant associated costs.

We are concerned that OMAPI might now start to reject numerous other PCT national phase applications on the basis of Article 40(1), and we therefore wish to forewarn our clients that their Madagascan patent cases are at risk of being rejected outright. We are currently trying to ascertain from OMAPI whether this is likely to be the normal course of events in the future, and if so, how such rejections are going to be handled. We are also pointing out to the Director General (DG) of OMAPI that it is highly inequitable that the applicant is not given any chance to try and overcome the rejection of their patent applications by submitting argumentation to the examiner, and that the only recourse is by filing an appeal before the Court. In addition, it now appears that the Court is unwilling to accept any amendments to the claims during the appeal process. This therefore gives the applicant no opportunity to overcome the novelty/inventive step objections by amending their claims. 

The impermissibility to argue directly against any observations raised by OMAPI, coupled with the non-allowance of any amendments to the claims during an appeal filed against any rejection before the Court, means that the applicant has no way of being able to put their patent application into a form that will be acceptable to OMAPI once it has been rejected. As our clients will no doubt agree, this is both inequitable and unfair towards the applicant, and we are pointing out to the DG that it does not comply with the generally-accepted principles of other patent laws around the world, which invariably allow applicants to respond to any official actions which have been raised and/or to make amendments as they see fit in order to try and overcome those objections. Furthermore, we are pointing out to the DG that, in those countries in which the Patent Office staff do not have sufficient technical know-how to understand and comment on the patentability of inventions, it is generally accepted that the provision of one or more corresponding patents (which have been granted abroad by Patent Offices that have carried out a technical examination of the same invention and have accepted the patentability of that invention) is sufficient to prove the allowability of the patent.

In view of the above discussion, and unless and until the DG agrees to change the way that PCT national phase applications are being treated by OMAPI, we would strongly recommend that any amendments to the claims of pending Madagascan patent applications be made at the earliest possible opportunity, in case OMAPI decides to issue a notice of rejection of the application in the meantime. This course of action is particularly important if any objections to the novelty and/or inventive step of the claims were raised during the PCT international phase. If applicants do wish to make any such amendments, we will emphasise to OMAPI that they are being made so as to overcome the objections raised during international preliminary examination, so as to obviate the issuance of a notice of rejection.

We are liaising with our associated office in Madagascar and the advocate that we instruct to handle our appeals before the Court, to ask that they try and persuade OMAPI that the most logical approach, moving forward, would be to allow applicants to submit copies of corresponding patents which have been granted by an examining Patent Office elsewhere, and to allow the applicants to amend the claims of their Madagascan patent applications so as to conform with such foreign granted patents. We hope that OMAPI will agree to alter their practice so as to follow our proposal, as this would mean that the OMAPI staff would not need to be involved in any technical examination of patent applications themselves.