New substantive examination requirement in ARIPO

African Regional Intellectual Property Organization (“ARIPO”) provides a useful regional system to obtain patent protection in African countries which are contracting states of ARIPO. ARIPO is empowered by the Harare Protocol (“the Protocol”) to grant patents and to register industrial designs on behalf of contracting states in accordance with the provisions of the Protocol. The system enables an applicant to file a single application at the ARIPO offices designating one or more contracting states. Upon grant, the application culminates in a bundle of corresponding national patents in the designated contracting states. The current contracting states are: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. During December 2016, ARIPO’s Administrative Council adopted important amendments to the Protocol and its Regulations, which amendments came into effect on 1 January 2017.

These amendments relate to section 3(3) of the Protocol and Rule 18(1)(a) of the Regulations, which now require applicants 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.

It is our understanding that the above amendments only apply to applications filed after 1 January 2017. In still pending applications which were filed before this time, the applicant is not required to request examination. We further understand that the above amendments also apply to PCT applications which, on 1 January 2017, were still in the international phase and which thereafter enter the ARIPO regional phase.

KISCH IP’s foreign patent department specializes in the preparation and prosecution of ARIPO applications and recently opened an alternative and cost effective channel for filing these applications at the ARIPO offices. Through this department and assistance with careful designation of contracting states, KISCH IP enables clients to obtain quality protection in the ARIPO contracting states in a very cost effective manner.