Despite being an intergovernmental organization for cooperation among African states, pooling resources among its member, as it as is clearly evident, ARIPO is not just an administrative agreement. Each of the 4 protocols (Harare, Banjul, Swakopmund and recently, Arusha) provide substantive law provisions. Indeed, the protocols allow the reception and processing of applications on behalf of the designated states. Once granted, industrial property rights protected through ARIPO are equivalent to national rights of the designated states.
ARIPO patents may be filed directly at the main ARIPO office or through the national IP offices of contracting states. The effects of filing the application at the national IP offices or at the main ARIPO office are no different. National offices should transmit the application to the ARIPO office within 1 month from the initial application. As ARIPO is also a party to PCT, it may act as a receiving office and the deadline to enter the regional phase is set at 31 months.
Representation is possible by attorneys or legal practitioners that are qualified to act before national IPOs of any contracting state and that are given powers by a simply signed Power of Attorney. Applications are able to be submitted in any language, but translation to English is required, accompanied by a statement signed by the applicant or translator that establishes that the translation is correct. Other requirements include the assignment of invention and a certified priority document with a verified English translation for non-PCT applications. For PCT based applications, the international search report and international preliminary report should also be filed.
Furthermore, the application for patent protection should contain i) the application form, ii) the patent description, iii) claims, iv) drawings (if applicable), v) abstract, vi) designation of the Contracting States where protection is sought and vii) sequence listing if the patent contains mention to nucleotide or amino acid sequences.
After filing, the application will be formally examined in order to understand if it meets the Implementing Regulations and the Administrative Instructions, further notifying member-states that the initial formalities were attended to. Afterwards, additional examinations are conducted in order to review if the patent meets substantive requirements.
In this sense, the ARIPO office carries out a substantive examination, ensuring that inventions are new, involve an inventive step and are capable of industrial application. These are much of the same requirements as provided for in the TRIPS Agreement and most worldwide jurisdictions. Particularly, as for the novelty requirement, which is often different from one jurisdiction to another, ARIPO takes the broader approach, establishing that the prior art on patents shall comprise “everything made available to the public anywhere in the world by means of a written disclosure (…), an oral disclosure or by use or an exhibition” (absolute novelty) undertaken before the date of filing (or before the priority date if it is claimed). We think it was a good option to avoid providing for a local novelty solution which is nothing less than a form of old fashioned protectionism. Regarding the requirement of inventiveness, unfortunately the Protocol does not clearly define its meaning. We believe that a better way to interpret this requirement is to understand it in same way as it is understood in most jurisdictions worldwide: the invention must have a proper distance beyond or above the state of the art, that is, it should not be obvious.
If the Office concludes that the patent does not respect these requirements, it will issue a provisional refusal to which the applicant may reply to. If the response by the Office remains negative, the applicant may lodge an appeal with the Board of Appeal which provides final decisions when reviewing administrative decisions by the Office regarding protocols within the ARIPO framework.
Afterwards, if the patent meets patent requirements, the Office grants the patent. However, it is important to note that when the patent is granted by ARIPO, its office shall notify each designated state which will have six months to respond. The office of the designated state can only refuse the patent in its territory for two reasons:
a) If it considers that the invention is not patentable taking into account the provisions of the Harare Protocol;
b) If, considering the nature of the invention, it cannot be granted or shall have no effect in its territory.
This last possibility can occur when, for instance, a software patent is granted, considering that most of the member-states do not protect computer programs as patents, but only as copyright. It is also the case of methods of treatment since some ARIPO member states do not accept their patentability.
Although the patent requirements are established in the Harare Protocol, national jus imperii continues to play a central role in the ARIPO system.
This assumption is also ascertainable when we analyze the applied legal framework during the life of the patent. Apart from maintenance and assignments, matters such as compulsory licenses, cancellation, invalidation or infringement are dealt with at the national level. As for the term of protection, there is a discrepancy. Despite the fact that section 3 (11) of the ARIPO protocols provides the same term of 20 years in each member-state, the legislation of some ARIPO members, such as Zambia, Malawi or Lesotho, may contradict this, as these have not enacted rules in order to incorporate the provision. This can be a problem especially for the so called dualist systems (mostly predominant in common law jurisdictions), which require that all treaties must be incorporated to national legislation in order to be domestically applicable. We believe that an urgent clarification is needed so that the Harare Protocol is not undermined.
All in all, ARIPO provides a system of regional patent protection that differs from other regional systems, such as the European Patent Organization (EPO) – which provides great autonomy to national legislation – or the African Intellectual Property Organization (AIPO/OAPI) – which largely stands in for national legislation. ARIPO thus establishes middle ground between the relevance of its protocols for procedural application purposes, noticeably increasing the efficiency of the road until grant, which is very helpful for patent owners, while having safety valves for national policy of its member-states.