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Updating patent law necessary

In this 57th instalment, we advocate the update of certain provisions of our patent law to appropriately capture our national aspirations.

Report by Richard Pasipanodya

Historical origins

Our Patent Act (CAP 26:03) has its roots in our British colonial legacy. In this context, though it is plausible that patent protection  has been around  for quite  some time in  Zimbabwe,  the sad reality  is that its concepts and aspirations  served foreign interests devoid of homegrown principles which would have administered by the promoted  local innovativeness and creativity.

It is thus no wonder  the local intellectual property (IP)-consciousness levels remain pitifully  close to nil as this was a preserve of a minority  group of entrepreneurs and their representatives .

Intervening period
Despite efforts to craft homegrown regional protection of patents by way of  the Harare Protocol  on Patents  and Industrial Designs (1982) administered by the African Regional Intellectual Property Organisation (Aripo), this same regional instrument  did not achieve much in terms of  domesticating concepts  and principles to suit local stakeholders’ needs and  aspirations. As a consequence, this instrument did not have much impact on domestic laws, which in themselves varied in their coverage and application to patent protection. As such, most national laws have stagnated in their development.

Current status
The advent of the World Intellectual Property Organisation (Wipo) — governed Agreement on Trade Related Aspects of Intellectual Property Rights (Trips Agreement), somewhat transformed the outlook, scope and course of development of national laws.

But still, lack of IP policy and legislative formulation experience and exposure resulted in again a somewhat oblivious update of domestic laws for the sake of compliance with TRIPS minimum standards of protection without meaningful contextualisation of the concepts and principles to local needs and aspirations.
Compliance commendable, but …

Following the update of our Patent Act to compliance with the Trips Agreement, our law became comprehensively harmonious with most laws  of developed countries in many crucial aspects, namely, exclusions to patent subject matter, effect of grant and scope of protection, parallel importation, compulsory  licences  and licences of right, Anton Piller orders  as competent  remedies, and  the incorporation  of the Patent  Co-operation  Treaty (PTC),

While these compliance efforts are commendable, the lack of foresight and visionary approach in doing so turned out to be essentially the entrenchment of the old order of promoting foreign interest at the expense of local creativity and entrepreneurship in the following salient aspects:

Language deficiencies: The language used in crafting and updating of our Patent Act remained too technical and was written in legalese for the common man to be able to grasp the postulated concepts and principles. By and large, the phraseology is thus somewhat vague and difficult for most laymen to understand.

Definitional deficiencies: Apart from the insertion of the new provision on exceptions to patentability, the rest of the definitions were left unamplified, making them user-unfriendly for the majority. There was no apparent regard to their low levels of IP-consciousness.

Article:  For instance, the Act defines “article” in terms of the vague phraseology of the repealed 1957 Act as including  “any substance or material and any equipment, machinery or apparatus, whether affixed to land or not”.

Our submission is that not only does such a definition make difficult reading, but is vague and vexatious to the common person. In our view it would have been more educative and user-friendly had the definition been simplified to “any created product or process over which a patent or invention is claimed or granted”.

Invention: The definition of what an invention is  is also similarly couched in a rather vague  and rambling fashion as contained in the repealed colonial acts. It states “invention means any new and useful art, whether producing  a physical effect or not, process, machine, manufacture or composition of matter which is not obvious or any new  and useful improvement thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged invention”.

With all due respect, how many of our IP-untutored populace would have an inkling of the concepts enshrined in this kind of definition? Would it not have been more effective and better understood to simply say “an invention is any new solution to a technical problem or technical improvement not previously known, whether for products or process?”

Patentable subject matter: In equal measure, we find the Act deficient insofar as it fails to provide for a stand-alone provision of what constitutes patentable subject matter. It is not enough to leave the reader to deduce what is referred to by provisions relating to “exclusions to patentability”.

Article 27 of the Trips Agreement and related provisions in  other jurisdictions succinctly state that “patentable subject  matter is any invention, whether product or process, in all fields of human endeavour,that is new, involves an inventive step and is capable  of industrial application and provided  that these do not fall foul of stipulated statutory exclusions”.

So too should our law  have embraced such a useful definitive or at best separate provision immediately prior to stating what is excluded from patentability. For, what constitutes patentable subject matter is the pith and marrow of patent law. Therefore, it must first be identified and its requirements known as the basis of protection. What then will be protected if this is not identified, defined and circumscribed with clarity?

Perchance, this oversight could be attributed  not only to the unabated myopic rush to comply with the rest of the world, but to the fact that our inherited legal system  did not undertake substantive examination by virtue of it being a re-registration system.

However, this argument is made lame in light of the fact the Aripo Harare Protocol  clearly defines what patentable  subject matter is. Thus it should have been easier for Harare to have  comparative provisions in her patent law as a state party to Aripo.

Ironically, Zimbabwe has been host nation to Aripo since 1981 and to date she is yet to find reason to accordingly approximate her laws to the Harare Protocol in these aspects.

Agent’s qualification and registration

The provisions relating to  patent agent qualifications and registration (S.64.) leave a lot to be desired as these clearly became redundant upon the advent  of our  Independence.

They ridiculously  continue to require qualification  for registration of patent agents  based on the British Chartered Institute of Patent Agents qualifying examinations. This automatically disqualifies the bulk, if not all locally-trained and practising legal practitioners. And this is despite practical realities on the grounds which are in line with Wipo and Aripo capacity-building initiatives.

Utility models in the cold

Though utility models require lesser creative acumen, in particular as regards the novelty requirement, it is a well-known  reality the world over that our people’s creative potency predominantly lies in the creation of utility models as opposed to inventions. And yet, surprisingly, our laws do not provide for utility model protection, despite the Harare  Protocol  so  providing.

Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775 053 007 or e-mail: henripasi@gmail.com

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