Our
firm files Trademark and Patent applications through the African Regional
Intellectual Property Organization (“ARIPO”). The filing of
an ARIPO application allows for a single filing that has effective
protection in the relevant African ARIPO member states.
The African Regional Intellectual Property Organization (ARIPO)
(hereinafter referred to as “the Organization”), is an intergovernmental
Organization that grants and administers Intellectual Property (IP)
titles on behalf of its Member States and provides IP information to its
clientele in the form of search services, publications and awareness
creation. Membership of the organization is open to all Member States
of the African Union (AU) or of the United Nations Economic Commission for
Africa (ECA).
The present members of the Organization are: Botswana, The
Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda,
Sao Tome and Principe, Sierra Leone, Somalia, Sudan, Swaziland, Uganda,
United Republic of Tanzania, Zambia and Zimbabwe. (Total: 19
states)
The ARIPO Secretariat is based in Harare, Zimbabwe.
ARIPO TRADEMARKS
In
terms of the Banjul Protocol on Marks a single filing may be done for the
registration of a Trademark in any (or all) of the member states to the
protocol. A single filing is done wherein any number of the member
states are designated.
The
member states to the Banjul Protocol are: Botswana, Zimbabwe, Lesotho, Liberia, Namibia, Uganda, Swaziland,
Tanzania (Mainland)
and Malawi.
[17 May 2020] The
Government of the Republic of Mozambique deposited its Instrument of
Accession to the Banjul Protocol on Marks with the Director General of ARIPO
on 15 May 2020. In accordance with the provisions of the Protocol, the latter
will enter into force, with respect to the Republic Mozambique, on 15 August,
2020.
Pursuant to the above, with effect from 15 August 2020, Mozambique
will be eligible for designation.
It is worth noting that Mozambique had already enacted provisions in
its Intellectual Property Code (Decree Nr.
47/2015 of 31 December 2015) that would allow the
immediate implementation of the Banjul Protocol if it became party to the
Protocol (domestication of the Protocol).
The accession to the Banjul Protocol by the Republic of Mozambique
brings the number of Member States party to the Protocol to eleven (11).
As
Namibia is a contracting state to the Banjul Protocol, our firm is able to
file ARIPO Trademark applications on behalf of clients. We further act
as ARIPO agents for a number of international institutions.
The
filing requirements for an ARIPO Trademark application is:
- The full particulars of the
applicant, including the full registered name, country of
incorporation, street address and description of the applicant;
- A power of attorney (ARIPO does
not require authentication of the signatures on a power of attorney);
- The device trade mark (not exceeding 9cm x 9 cm) (our office prefers
if a copy of the device is provided in an electronic format);
- A list of the goods and/or
services applicable to the proposed ARIPO Trademark (keeping in mind that a USD5.00
surcharge is application for all descriptions exceeding 50 words);
- A list of the ARIPO contracting
states to be designated on the ARIPO Trademark application;
- If convention priority under the
Paris Convention is claimed, a certified copy of the priority document
(together with a certified English translation thereof, if the priority
document is not in English) is required.
In
terms of the Banjul Protocol, once a Trademark has
been registered by ARIPO, it is protected in each designated state as if the
mark had been filed and registered in such state. Many clients see this
aspect as an advantage to using an ARIPO Trademark application.
An ARIPO Trademark is
valid for ten years from date of application and renewable for further
periods of ten years. The renewal of an ARIPO Trademark is done
through the ARIPO office.
ARIPO PATENTS
In
terms of the Harare Protocol, patent and industrial design applications may
be lodged through single filing. By filing a single application, an
applicant is able to designate contracting states and thereby obtaining an
industrial property right in more than one state. Member states in which
protection is required must be selected at the time of filing an ARIPO
application. Patent protection can
also be obtained by filing a direct patent application in individual member
states, but in many instances it is preferable to file an ARIPO application.
The member states
to the Harare Protocol are: Botswana, Ghana, Gambia, Liberia, Lesotho, Kenya,
Malawi, Mozambique, Liberia, Namibia,
Sierra Leone, Sao Tome and Principe, Rwanda, Swaziland, Sudan,
Uganda, Tanzania, Zimbabwe and Zambia.
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Information:
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Paris Convention: Yes
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PCT: Yes (national phase
deadline is 31 months from the priority date)
The filing requirements
for a patent at ARIPO:
Convention application
- Specification,
claims, abstract and drawings (required on day of filing);
- English
translation of specification, claims, abstract and drawings if published
in a different language (can be filed within 2 months);
- Copy of
Power of Attorney, simply signed (can be filed within 2 months);
- Copy of
Assignment of Invention, simply signed (can be filed within 4 months);
- Certified
priority document with English translation (can be filed within 3
months).
PCT national phase
application (in addition to above documents)
- Published
PCT specification, claims, abstract and drawings (required on day of
filing);
- English translation
of specification, claims, abstract and drawings if published in a
different language (can be filed within 2 months);
- Copy of
Power of Attorney, simply signed (can be filed within 2 months);
- Copy of
Assignment of Invention, simply signed (can be filed within 4 months);
- International
Search Report and International Preliminary Report on Patentability.
Novelty: Absolute
novelty is required.
Excess Fees: Excess
fees are incurred for specifications in excess of 30 pages and claims in excess
of 10, payable at requesting search and examination for applications filed
from 2020 (Excess fees for applications filed before 2020 are payable when
paying grant and publication fees);
Examination: Section
3(3) of the Protocol and Rule 18(1)(a) of the Regulations requires an applicant
to request substantive examination and pay an examination fee within three
(3) years from the date of filing. This three-year time period is
calculated from the international filing date in the case of a PCT
application designating ARIPO. In the case of a Paris Convention application,
the time period is calculated from the ARIPO filing date. The request for
examination shall be deemed to have been filed when the examination fee has
been lodged. Where no request is made within the prescribed period, the
application shall lapse.
Term of Patent: Mostly 20 years from the effective filing.
Renewals: Payable
annually in advance from the first anniversary of the effective filing date.
Renewal costs are based on the number of member states designated.
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