At the 40^th Session of the ARIPO Administrative council held from 5^th to 7^th December, 2016, the Council adopted changes to the Harare Protocol which take effect from 1^st January, 2017. The Amended Protocol together with the Regulations implementing the Protocol are accessible here. The changes are highlighted below:

a) Patentable inventions

Besides providing that an invention is patentable if it is new, involves an inventive step and is susceptible to industrial application, the Protocol, under Section 3(10), now sets out matters excluded from patentability in line with the provisions of the national laws of the Contracting States. The Protocol expressly excludes:

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers;
4. presentation of information;
5. inventions the commercial exploitation of which would be contrary to “ordre public” or morality;
6. plant or animal varieties or essentially biological processes for the production of plants or animals;
7. methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

b) Introduction of Request for Substantive Examination

Section 3(3) of the Protocol has been amended to require an applicant to make a request for substantive examination of a patent application. Thereafter, if the application is found not to satisfy the grounds for patentability the application shall be refused. This provision now makes substantive examination compulsory for all patent applications.

c) Re-establishment of Rights

The new section 5bis allows an applicant who, in spite of taking all due care required by the circumstances, was unable to observe a time limit to make a request for the establishment of rights where the non-observance of the time limit has the direct consequence of causing the refusal of the ARIPO application or of a request, or the deeming of the application to have been withdrawn, or the loss of any other right or means of redress. Once the request has been granted, the legal consequences of the failure to observe the time limit are deemed not to have ensued.

The Request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit. However, where the request relates to a claim of priority provided under section 2(8) of the Protocol, the request must be made within two months of expiry of the period for claiming priority. The omitted act must also be completed within the period of filing the request.

d) Post-grant amendments

Section 5ter of the Protocol now allows the proprietor of a registered patent or utility model to limit the scope of protection by way of amendment. It is required that the amendment to the claims must fall wholly within the scope of the claims before the amendment. The Request must contain the following:

1. particulars of the proprietor of the ARIPO patent or utility model making the request and an indication of the Contracting States for which the requester is the proprietor of the patent;
2. the number of the patent, whose limitation is requested,
3. the complete version of the amended claims and, as the case may be, of the amended description and drawings;
4. particulars of the representative, if any.

e) Multiple Dependent claims

Rule 7(4) of the Regulations implementing the Protocol allows for the inclusion of multiple dependent claims provided that the claim refers to such claims in the alternative only and that they do not serve as a basis for any other multiple dependent claim.

f) Revised Patent fees

The Fee schedule for patents has been revised to increase the existing fees as well as include fees for restoration of rights and post grant amendments which were not previously provided for under the Protocol. The schedule also includes a new fee for the replacement of a destroyed or lost certificate.

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