In this 73rd instalment, we canvass the African Regional Intellectual Property Organisation (ARIPO)’s mandates on utility model and industrial design protection.
The ARIPO Secretariat is entrusted with the mandate to register and administer utility models and industrial designs on behalf of its members in terms of the relevant provisions of the Harare Protocol on Patents and Industrial Designs and Implementing Regulations thereto. Our Patents Act does not provide for utility model protection. As such, this is done from a regional perspective. However, we have enacted the Industrial Design Act for the protection of industrial designs.
Often termed petty patents; utility models constitute a bridge between inventions and industrial designs. They do not have a universally acknowledged definition, except that they are recognised as creative products of lesser inventivity than that of inventions. In other words, they are measured in terms of localised standards of inventive effort, hence their varied nationalistic character.
For our immediate purpose however, Section 3 of the Harare Protocol is the relevant provision. It defines a utility model very broadly and pervasively as meaning; “… any form, configuration or disposition of elements of some appliance, working tools and implements as articles of everyday use, eg electrical and electronic circuitry, instrument, handicraft, mechanism or other object or any part thereof insofar as they are capable of contributing some benefit or new effect or saving in time, energy and labour or allowing a better or different functioning use, processing or manufacture of the subject matter or that gives utility advantages, environmental benefit and includes macro-organisms or self-replicable material, products of genetic resources, herbal as well as nutritional formulations which give new effects.”
From this definition it follows then that to be protectable under the Harare Protocol a utility model must be new and industrially applicable in any field of human endeavour. In other words, utility models have to meet and satisfy the requirements of novelty (newness) and industrial applicability (utility) within the regional context. These requirements are geographically limited to national and regional creative potential and exploits. This is to be applauded insofar as it thereby recognises local creative ingenuity in the context of our cultural, environmental and political milieu.
Filing and examination
As with patent applications, an application for the registration of a utility model is lodged with either the national office of a contracting state for onward transmittal to the ARIPO office or directly with the ARIPO office. Upon receipt of the application, the ARIPO office undertakes examination as to formality requirements, then the substantive requirements. Unlike patents, however, the substantive examination of utility models is with regard to the novelty and industrial applicability only. Non- obviousness or inventive step are not an issue here as this is considered irrelevant. Upon registration, the ARIPO office would each year receive renewal or maintenance fees that it distributes to the designated states.
Upon receipt of the application, the ARIPO office notifies all designated contracting states that it is in receipt of an application for a utility model registration. The said designated states have up to six months from the date of receiving the notification to object to the registration with respect to their countries. Pursuant to undertaking substantive examination, the ARIPO Office may refuse to register the utility model if it does not meet the novelty and industrial applicability requirements.
The refusal notification is served to the applicant, who has three months within which to request that the application be converted into a national application for each designated state. The conversion into a national application means that the application will be treated in accordance with the national laws of the designated states. Conversely, an applicant is bestowed with the opportunity to, before the application is refused, request that it be converted into a patent application.
ARIPO protects industrial designs in terms of Section 4 of the Harare Protocol. These provisions do not define what constitutes an individual design. Instead it leaves the determination thereof to national laws of the contracting states. The ARIPO office simply receives and examines the application as to formalities and notifies the interested parties as to its findings.
Examination as to formalities
As with patents and utility models, an application for industrial design registration must contain a request for registration, a statement describing the industrial design, a reproduction of the industrial design(s), designation of the contracting states, and fees payment or an undertaking thereof. Where these are met at the time of lodging the application, the filing date to be accorded would be that of receipt of the application. Otherwise the filing date would be that day upon which all outstanding formalities have been met. Once the office is satisfied that all the formalities have been complied with it notifies the applicant accordingly. Where these are not met notice is sent to the applicant advising them to comply within prescribed time limits or else the application would be refused. The designated states have six months from receipt of notice within which to object that such registration would be of no effect or force within their territory upon grounds such as that the design is not new or original within its territory, or by its very nature it cannot be registered in its territory, or in the case of textile designs, that it is the subject of a special register and not that of design.
Where, upon the lapse of six months notice there has been no objection received, the ARIPO office will proceed to register and publish the registration of the industrial design. Such registration will then have the same force and effect as designs registered under the national laws of the designated countries. The registration shall be extant (or remain in force) for a period of at most 15 years so long as the requisite annual maintenance fees are timeously honoured and paid in full. Where the ARIPO office refuses the application, the applicant has the right to convert it into a national application of the various designated states. In which event the application will be treated in accordance with the national laws of the designated states.
Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775 053 007 or e-mail: email@example.com'