São Tomé and Príncipe, officially the Democratic Republic of São Tomé and Príncipe, is an African Archipelago located in the Equatorial Atlantic, in the Gulf of Guinea. In the 15th century these uninhabited islands were settled by the Portuguese.
Until 1975, the date of independence from Portugal, all legal instruments were Portuguese. After independence, the country went through a major democratic reform which led to the implementation of a new constitution and, consequently, new laws.
On May 20, 1998, São Tomé, which wanted to define industrial property for itself, acceded to the Paris Convention. Upon accession, the country was obliged, as per article 25 of the Paris Convention, to adopt certain measures, which resulted in the creation of the first post-independence legal act concerning industrial property, specifically Law 4/2001. This law and subsequent legislation including Decree 6/2004, have many influences from the Portuguese Industrial Property Law.
From that moment, industrial property has been one of the priorities of the state, as it is clearly a vehicle for the development of a country’s economy. In fact, the desire to evolve has been clearly demonstrated in the continuous accession to international treaties on industrial property.
On July 3, 2008, São Tomé acceded to the Patent Cooperation Treaty (PCT), and on December 8 the same year it joined the Madrid Protocol and Hague Agreement. In 2014, São Tomé deposited its instruments of accession to the Harare Protocol on Patents and Industrial Designs and in 2015 to the Banjul Protocol on Marks within the framework of the African Regional Intellectual Property Organization (ARIPO).
There is no doubt that the IP Law of 2001 was a huge milestone in the protection of industrial property rights in the country, but 15 years later, and after four accessions to international and regional treaties on IP, it became clear that the previous law was outdated and lacked the necessary regulation that the integration of the international system on industrial property protection requires.
The industrial property law of 2001 lacked sufficient regulation as it only contained 36 articles. The new IP law—Decree Law 23/2016 – revokes the previous law and decree on industrial property and contains more than 300 articles. It demonstrates the necessity to comply with the high standards of the international regulations regarding industrial property matters.
The major changes between the previous and the current law may be summed in a few points.
In contrast to the previous law, the new one is exhaustive on the definition of the terms, namely the definition of the industrial property rights subject to protection. In addition, rights such as utility models, logos, establishment names and insignias, and semiconductor topographies are now regulated under the current law. They were not listed in the previous one whatsoever.
The new IP law extensively regulates matters that were not determined in the previous one and is currently divided into six main titles, specifically a general part, a part related to the applicable regime on industrial property rights, a part regulating IP infringements, a part related to the applicable proceedings on IP infringements, a part corresponding to official fees, and finally a part regarding the IP Bulletin.
Unlike the previous law, it is adapted to embrace international and regional applications for patents, trademarks and industrial designs. It contains specific provisions on how these applications should be processed.
Similarly, the new law determines a renewed administrative process and from now on it shall be possible to use electronic means to submit applications before the Industrial Property National Service (SENAPI). This is a massive improvement as before it was only possible to file applications on paper. However, it is important to note that the system of electronic filings is not yet implemented and will probably take some time.
At the same time, the opposition period became uniform for all industrial property rights, with article 22 of the new law determining that third parties, who consider themselves adversely affected by the granting of any industrial property right, have three months to file an opposition after the publication of the application in the IP Bulletin. Likewise, a period of three months shall be applicable to the other party to file a reply to the opposition.
The previous laws, namely Decree 6/2004, which regulated some aspects of the IP law of 2001, determined a three-month opposition period for patents and industrial designs and a 90-day opposition period for trademarks.
Moreover, the new IP act states, in article 21, that the notification of SENAPI decisions shall be made public. Until now, the publication of administrative decisions was not determined by law. Decisions on opposition proceedings or any other act that may affect industrial property rights will now have to be published in the IP Bulletin.
Furthermore, article 27 of the new law determines that parties can appeal against SENAPI decisions. In this instance, the interested party has three months from the publication of the decision to file a request with facts deemed relevant for the modification of the decision.
The new law also determines a more rigorous formal examination conducted by SENAPI and, if formal requirements are not met, the application shall be refused. The law determines a number of mechanisms that enable the applicant to correct any inaccuracies, specifically by way of SENAPI notifying the applicant or by the applicant’s initiative. This change is regulated in articles 13, 14, 17, 19 and 20 of the new law.
Another change is that it is now mandatory that all authorised representatives submit a power of attorney to file an application, in accordance with article 30. Until now, all authorised representatives who were recognised by the Ministry of the Industry of São Tomé were exempt from the presentation of the document.
The re-establishment of rights is one more novelty to the system and in accordance with article 49 it shall be possible to re-establish an industrial property right until two months after the deadline to practise the act, if the applicant presents facts surrounding its inability to practise and pays an additional fee to SENAPI.
Another significant change is related to the issuance of certificates. Until now, registration certificates were automatically issued by SENAPI and only registration certificates were made available. The new law, however, determines that along with the registration certificates, SENAPI will also issue other certificates, such as recordal certificates, and that it will only proceed to make these available upon the request of the applicant.
It is important to mention that trademarks shall be subject to a careful substantial examination, under articles 165, 178 and 179, where trademarks shall be refused based on absolute and relative grounds. In addition, well-known and prestigious trademarks are now determined under the new law.
As for patents, the main alterations rely on the adoption of the legal mechanisms for regional applications under ARIPO and international applications under PCT to produce effects in the country, as the previous law was designed before accession to both treaties.
SENAPI will have to take necessary steps in order to create all the technical support to analyse national, regional and international patent applications as, even until the time of writing, patents are not being subject to analysis by SENAPI and so there are no records of patents being granted in the jurisdiction.
The new IP law is a major advance in the regulation of industrial property rights. It will certainly become an asset in the development and advance of the protection of the interests and rights of stakeholders that intend to invest in the country, once it creates stability and legal certainty in the industrial property system.
Just to check: SENAPI is not currently assessing any patent applications?
Indeed. SENAPI has no patent examiners and therefore there are no patents being granted whatsoever. It is possible to file applications and to pay annuities, however, patents are not being examined.