African patent options: Roads less travelled

Africa, the world’s second largest continent, is home to some of the fastest-growing economies.  It has over 50 countries, each with its own set of intellectual property law systems, offering investors some interesting options for protecting intellectual property rights.

Inventors often favor the legal certainty of patents granted by patent systems with substantive examination.  Substantive examination ensures compliance with the patentability requirements under an applicable national law.  Due to a lack of resources and capacity only a few countries in Africa conduct any form of substantive examination.  Most countries form part of the regional frame works of ARIPO or OAPI allowing for the filing of only one patent application to obtain protection in several territories.  These regional frame works reduce the administrative burden of member countries and support a better output of their patent system. 

An applicant may designate the following member countries in an ARIPO patent application: Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Eswatini (formerly known as Swaziland), Tanzania (Tanganyika), Uganda, Zambia and Zimbabwe. ARIPO member countries retain their own national laws allowing for patent protection to be obtained by direct national filing in the member country or through designation in an ARIPO patent application.  With the exception of Kenya, more than 94% of patent applications are filed in member states through designation in an ARIPO patent application as opposed to direct national filing, based on statistics received from member states in ARIPO’s Annual Report of 2018.

ARIPO patent applications are subjected to substantive examination in terms of the provisions of the Harare Protocol in addition to the national laws of designated member states.  ARIPO notifies national designated offices of patent applications filed through the regional system.  Allowing national designated offices, after issuance of ARIPO’s decision to grant, an opportunity to decide if the patent application will be effective in the designated state.  In addition to the provisions of the Harare Protocol an application may not be valid and cannot be granted in a designated state because of the nature of the invention.  For example, the national patent offices of Uganda and Rwanda raise objections to inventions of pharmaceutical products which may be overcome through amendment.

Eswatini and Sierra Leone are member countries of ARIPO; however, they have not implemented the Harare Protocol into these national laws causing uncertainty as to the validity of an ARIPO patent application designating these member countries.  Until such time as the necessary amendments have been made, it may be advisable to obtain patent protection by way of extension of a patent in the United Kingdom.  Similar provisions are made for the registration of patents in the United Kingdom, in the Seychelles and St Helena.

 OAPI provides the only route to obtain patent protection in the 17 member countries (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo).  At present OAPI patent applications are examined as to form only.  However, the revised IP Law of OAPI (Bangui Agreement) which is yet to come into force will provide for substantive examination.

Interestingly, Morocco and Tunisia opted not to be come member states of the regional frame works of ARIPO or OAPI, but to enter into bilateral agreements with the European Patent office providing for the validation of European patents in Morocco and Tunisia.  These bilateral agreements allow the national offices to take advantage of the search and examination capacity of the European Patent Office and European applicants an opportunity to incorporate these African countries into the European patent application process well outside the normal time limits for obtaining patent protection. 

Opportunities are also available for applicants to obtain patent protection well outside the normal time limits in Ethiopia and the Democratic Republic of Congo (DRC) by respectively filing patents of introduction and importation for inventions which have been patented in a foreign country.

The various routes to obtaining patent protection on the African continent provide investors with opportunities not generally available in territories outside of the continent.  KISCH IP has an entrenched history in Africa and has over the last 145 years, gained extensive knowledge and experience to assist clients in navigating the various legal systems and structures throughout Africa.