Registering A Patent in the AIPO & ARIPO Intellectual Property Areas
Basically, a patent is a title granted by an intellectual property (patent) office for the protection of an invention, which is an idea which permits a specific problem in the field of technology to be solved in practice. An invention may consist in or relate to a product, a process or to a use thereof.
The title granted for the protection of an invention is subject to the patentability of the invention, that is, to the three cumulative criteria that the invention be new (novelty), involve an inventive step (non-obviousness), and that it be industrially applicable.
The invention which forms the subject matter of the patent may not fall in the class of non-patentable subject matters such as discoveries, scientific theories, mathematical methods, inventions whose use is contrary to public policy, inventions relating to plant varieties (protected under the law of new plant varieties), animal species, schemes, rules or methods for doing business, medical treatment methods, mere presentations of information, works of an exclusively ornamental nature (protected under the law of industrial designs), computer programs and databases (protected under copyright law), literary, architectural and artistic works or any other aesthetic creation (protected under copyright law, etc.).
Patent law protects only inventions which meet the three criteria listed above (novelty, inventive step and industrial applicability) and which are not in the class of non-patentable subject matters, as mentioned above. This does not, however, mean that non-patentable original ideas are not protected by intellectual property law altogether. Many intellectual property rights which are non-patentable subject matters may be protected either as utility models, industrial designs, trade or service marks, trade names, integrated circuits, geographical indications, new plant varieties, copyrights, etc., which are not the subject of this article. The term of protection of patents is generally twenty (20) years, provided that maintenance (annuities) fees are paid by the anniversary date of the patent. It is also important to note that patent rights are territorial, that is, they are protected strictly within the territories in which they have been registered. Patent protection within the AIPO and ARIPO area will afford protection strictly within the thirty five (35) members states of these African countries.
I – Direct Application to AIPO
The AIPO (the African Intellectual Property Organisation) comprises the following seventeen (17) member states: Benin, Burkina Faso, Cameroon, Central African Republic, Comoros Islands, Cote d’Ivoire, Gabon, Guinea-Conakry, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Tchad and Togo. The OAPI zone is a market of 183 million consumers.
The AIPO serves as the national office for each of the 17 member states, meaning that applicants do not have to lodge patent applications in each of the seventeen (17) member states. A single application is lodged with the Organisation (regional office) which examines the application and issues an invention patent which is valid in all seventeen (17) member states. This is a fundamental difference between the AIPO patent system and the ARIPO patent system, as we shall see below.
Where there is a priority claim, the patent applicant is requested to provide documents to that effect within six (06) months from the date of filing of the application for the registration of the patent. While nationals or residents of one of the seventeen (17) member states of the AIPO may directly file their applications for the registration of their patents (inventions) without using the services of licensed patent agents/attorney, foreigners are obliged to use the services of these licensed IP professionals to file their patent applications with the regional office.
1 – Patent Filing Requirements
The information and documents required for this includes:
- Filled application form 101
- a detailed description of the subject matter of the invention to enable the person skilled in the art to reproduce the said subject matter.
- any drawing sheets.
- a descriptive abstract of the object of the invention.
- Proof of priority or priority documents in English or French.
- Priority assignment document (where the applicants are not identical).
- Proof of payment of the official fees (see 2 Official fees below).
- Power of attorney.
2 – Official Fees
Regarding the official fees, here is the detailed breakdown:
- Patent Filing fee: XAF 225,000
- Certificate of Addition: XAF 285,000
- Fee for priority claims, per priority: XAF 63,000
- Publication fee: XAF 365,000
- Claim fee for each claim in excess of 10: XAF 45,000
- Fee for acceptance of description and drawings on A4 sheet:
– for 11 to 20 sheets XAF 120,000
– for 21 to 30 sheets XAF 300,000
– for 31 to 40 sheets XAF 600,000
– after 40 for each set of 10 sheets XAF 80,000
3 – Other Attendances
- Maintenance fees (annuities):
Per year from 2nd to 5th year = XAF 220,000
Per year from 6th to 10th year = XAF 375,000
Per year from 11th to 15th year = XAF 500,000
Per year from 16th to 20th year = XAF 650,000
- Search fees:
Prior search on special patent register = XAF 110,000
Documentary search on state of the art = XAF 120,000
Search on a specific patent/certificate of addition = XAF 110,000
The amounts above are in Francs CFA (or XAF) which is the local currency of the AIPO area. The fixed exchange rate between the Euro and the FCFA is as follows: 655,957 FCFA = €1.
Professional or agency fees are freely negotiated with the licensed agent (lawyer/law firm).
II – Direct Application to ARIPO
The African Regional Intellectual Property Organisation (ARIPO) zone which is a similar regional intellectual property organisation regroups 19 member states mostly in North-East, East, West & Southern Africa, 18 of which are members of the Harare Protocol (Botswana, Eswatini, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Somalia, Sudan, Tanzania, Uganda, Zambia, and Zimbabwe). ARIPO’s consumer population is 166 million large. The seat of the organisation is in Harare, Zimbabwe.
Contrary to AIPO, although the ARIPO is the national office of all nineteen member states, patent applications have to be communicated by the regional office to each member state for their written objection, where applicable, within six (06) months. Otherwise, the regional office proceeds to issue the right/title in respect to those designated states from whom no written objection was received.
1 – Filing Requirements
- Power of Attorney (simply signed – no need to notarize) (can be late filed within 2 months)
- Specification, claims and abstract in English (required on the day of filing)
- Formal drawings, if applicable (required on the day of filing)
- International Patent Classification (required on the day of filing)
- Copy of PCT International Publication (required on day of filing)
- Copy of International Search Report (can be filed late, no set deadline)
- Copy of International Preliminary Examination Report (can be filed later, no set deadline)
2 – Official Fees & Professional (Agency) Fees
|Application Fees||Computation of ARIPO Fees|
|Application for 1Patent||US$232.00|
|US$85 x 18 states
The official fees are subject to currency fluctuations. Professional or agency fees are freely negotiated with the licensed agent (lawyer/law firm).
3. Other attendances:
|Maintenance fees (1st anniversary)
(Usually payable upon filing, depending on priority date)
|Search and Exam Report||US$600.00|
|Grant and sealing fees||US$350.00|
4. Extra Costs
Where the Claims are more than 10, a surcharge of $50.00 is paid for each additional claim beyond the 10th claim, while a surcharge of $20.00 is charged for each additional page after 30 pages.
III – Our Role
As a full-service law firm with a battery of qualified and experienced intellectual property lawyers, we offer strategic counsel to clients touching on a variety of intellectual property issues. We assist clients to prosecute their patent applications with patent offices and litigate patent issues before several intellectual property jurisdictions in Africa.
Our legal services in the area of patent law include, but are not limited to the following:
- providing advisory services on patent law worldwide;
- overseas applications;
- technical and legal drafting;
- preparing and filing patent/utility model/certificates of addition applications/documents;
- amendments and corrections;
- maintaining patent rights or annuities;
- restoration of rights (including priority claims);
- enforcement of patent rights and objections;
- patent revocation and voluntary surrender;
- infringement analysis and patent infringement proceedings;
- patentability investigations;
- license negotiation and NDAs;
- royalty agreements;
- worldwide patent rights;
- intellectual property tax, etc.