Patents of Invention

– The Patents Act (Cap. 26:03) of 1971, and subsequent amendments (1983, 2002).
– The Patents Regulations 1971.
– The Intellectual Property Tribunal Act 2001, with effect from September 10, 2010.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 18, 1980.
– Convention Establishing the World Intellectual Property Organization (WIPO), since December 29, 1981.
– ARIPO, Harare Protocol, since April 25, 1984.
– WTO’s TRIPS Agreement, since March 5, 1995.
– Patent Cooperation Treaty (PCT), since June 11, 1997.

Filing

Applicant: the inventor, an assignee, an applicant in a Convention country, or the legal representative of any of the foregoing who had died or is under disability or who has become insolvent.

Foreign applicants: since June 16, 2002, it has been a requirement of the Office that all foreign applicants/patentees must pay all official fees in U.S. dollars at the prescribed rates.

Notion of 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 applied or used in trade or industry and includes an alleged invention.

Non-patentable: scientifically impossible inventions, those contrary to natural laws, substances consisting of a mere mixture of known ingredients to produce a food or medicine and inventions generally expected (i) to endanger public order or public safety; or (ii) to encourage offensive, immoral or anti-social behavior; or (iii) to endanger human, animal or plant life or health; or (iv) to promote serious prejudice to the environment. Specifically, patents will not be granted for (a) diagnostic, therapeutic or surgical methods for the treatment of human beings or animals; or (b) plants and animals, other than microorganisms; or (c) essentially biological processes for the production of plants or animals, other than microbiological processes. The Office will generally accept claims drafted in the “Swiss” format.

Novelty: absolute novelty prevails.

Patents of addition: obtainable in respect of an improvement in or modification of the main patent.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, simply signed;
2. Specification, in English, in triplicate, on A4 one side only with 39 mm on left side and 13 mm each other side; provisional specification may be filed initially and complete specification within twelve months with three months extension only allowed;
3. An abstract of not more than 200 words and drawings, if any;
4. Drawings, original (formal) on tracing linen or pure white tough drawing paper A4 size, and true copy on plain white paper A4 size;
5. Assignment deed from inventor, where necessary;
6. Certified copy of basic application with verified English translation if Convention priority claimed, within six months of application date. An application claiming Convention priority must be accompanied by a complete specification.

PCT applications: requirements for PCT national phase applications: (under Chapter I: 30 months; under Chapter II: within 31 months of the earliest priority date), a copy of the International Publication; the Preliminary Search Report (together with copies of any citations); the Preliminary Examination Report and any amendments made during prosecution of the International application – all documents to be in English or accompanied by a certified translation. Time limit for entering the regional phase of ARIPO under both Chapters I and II: 31 months.

Minimum requirements on filing date: name of applicant, particulars of priority document, if any, and informal copy of specification and drawings.

Examination

Examination procedure: both formal and, to a limited extent, substantive.

Post-dating of applications: may take place, on request, or by the Registrar in certain amendment cases.

Conversion of complete specifications to provisionals, and dividing out are permissible, before acceptance. Cognating is possible and both multiple and partial priorities are obtainable. A complete specification must be accepted within a maximum of twenty-one months of its filing. Applicant must advertise acceptance within one month and patent then open to inspection.

Protection

Granting: sealing must be requested within six months from the date of acceptance; advertisement and one extension of three months allowed for this purpose.

Oppositions to grant: must be filed within three months of advertisement of acceptance. This period can be extended.

Term of patent: twenty years and no extension possible. Term runs from date of local filing in all cases.

Renewal fees: are payable before the end of the third year and annually thereafter, all being payable in advance.

Restoration and licenses: there are provisions covering restoration (within three years), revocation, licenses of right and compulsory licenses. N.B. with the 2002 amendments there are substantial expanded opportunities for the granting of compulsory licenses and/or for State use of inventions. Applicants concerned with the possible consequences should consult their IP practitioner for further information.

Marking: not compulsory, but if articles are not marked with the patent number, an infringer may escape liability for damages.

Appeals: from the Registrar are heard by the Intellectual Property tribunal.

Infringement: actions therefor may be brought before a Magistrate’s Court or before the High Court, or before the Intellectual Property Tribunal, as are actions to restrain threats. With the 2002 amendments it is now possible in certain circumstances to obtain “Anton Piller” orders.

Declaration of Period of Emergency on HIV/AIDS

By the powers conferred on the Minister of Justice, Legal and Parliamentary Affairs by Section 34 as read with Section 35 of the Patents Act (Cap. 26:03), the Minister has declared an emergency for a period of five years with effect from January 1, 2003 to December 31, 2008, for the purposes of enabling the State or a person authorized in writing by the Minister under Section 34 of the Act: (a) to make or use any patented drug, including any antiretroviral drug, used in the treatment or persons suffering from HIV/AIDS or HIV/AIDS-related conditions; (b) to import generic drugs used in the treatment of persons suffering from HIV/AIDS or HIV/AIDS-related conditions.