The ARIPO Protocols
When the Lusaka Agreement created ARIPO in 1976, the treaty established objectives of the Organization in Article III which laid a foundation for the Organization’s reason d’etre, i.e., development of further legal instruments that should elaborate operational details of the work of the Organization within the ambit of those objectives. So far, the Organization has evolved the following protocols:
- Protocol on Patents and Industrial Designs within the Framework of the African Regional Industrial Property Organization (the Harare Protocol);
- Banjul Protocol on Marks; and
- Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.
The Harare Protocol
In December 1982, in Harare, Zimbabwe, the Administrative Council of ARIPO adopted the Harare Protocol. The protocol empowers the ARIPO Office to receive and process patent and industrial design applications on behalf of States party to the protocol. The protocol entered into force in 1984.
Currently, there are 17 Harare Protocol Contracting States, namely Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. This group will be joined by the Democratic Republic of São Tomé and Príncipe as from August 19, 2014, when the protocol comes into operation with respect to that State.
Under the protocol, an applicant for the grant of a patent for an invention or the registration of an industrial design can, by filing only one application, designate any one of the Harare Protocol Contracting States in which that applicant wishes the invention or industrial design to be accorded protection. The protocol requires the filing of the application to be made with any one of the Contracting States or directly with the ARIPO Office.
The ARIPO Office, on receipt of the patent application, undertakes a substantive examination to ensure that the invention which is the object of the application is patentable (i.e., it is new, involves an inventive step and is capable of being applied in industry). When the application complies with the substantive requirements, copies thereof are sent to each designated Contracting State which may, within six months, indicate to the ARIPO Office that, according to grounds specified in the protocol, should ARIPO grant the patent that grant will not have effect in its territory.
The substantive examination of ARIPO applications makes an ARIPO patent a particularly strong one as the examination substantially raises its presumption of validity.
For industrial design applications, only a formality examination is performed. If the application fulfills the formal requirements, the ARIPO Office registers the industrial design which has effect in the designated States. However, the same right to communicate to the ARIPO Office within six months that the registration may not have effect in the designated States concerned is reserved.
The Administrative Council, at its Second Extra-ordinary session held in April 1994, adopted amendments to the Harare Protocol and its Implementing Regulations to create a link between the protocol and the WIPO-governed Patent Cooperation Treaty (PCT). This link commenced operation on July 1, 1994, and has the following effects:
- any applicant filing a PCT application may designate ARIPO which in turn means a designation of all States party to both the Harare Protocol and the PCT;
- the ARIPO Office acts as a receiving office under the PCT for such States; and
- the ARIPO Office may be elected in any PCT application.
All current Harare Protocol Contracting States are also signatory to the PCT. As mentioned earlier, the Democratic Republic of São Tomé and Príncipe, which is also party to the PCT, will as from August 19, 2014, become the eighteenth Harare Protocol Contracting State.
In 1999, the Administrative Council amended the Harare Protocol to make provision for patent applications involving micro-organisms in accordance with the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure.
In November 1999, the Council further adopted amendments to provide for choice of office of filing applications, period of protection for patents and industrial designs and protection for utility models.
The Banjul Protocol
The Banjul Protocol on Marks, adopted by the Administrative Council in 1993, establishes a trademark application filing system along the lines of the Harare Protocol. Under the Banjul Protocol, an applicant may file a single application either at one of the Banjul Protocol Contracting States or directly with the ARIPO Office. The application should designate Banjul Protocol Contracting States as the States in which the applicant wishes the mark to be protected once the ARIPO Office has registered it.
States currently party to the Banjul Protocol are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe. (Total: 9 States.)
Since 1997, the protocol has been extensively revised in order to make it compatible with the TRIPs Agreement and the Trademark Law Treaty as well as make it more user-friendly.
The Swakopmund Protocol
The Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore was adopted by a diplomatic conference of ARIPO on August 9, 2010, held in Swakopmund, Namibia. Although the protocol still awaits a few signatories to usher it into operation, its regulations came into force as from January 1, 2012. It will come into operation once a sixth State has signed it.
The protocol may be signed by–
- any ARIPO Member State not already party to it;
- any non-member State of ARIPO which is, however, a member of the African Union or the Economic Commission for Africa.
However, the signing by any State belonging to the category in (ii) will signify the acceptance of the full effect to it of the Lusaka Agreement. This means that even if the effect of the protocol to that State (assuming that the protocol is operational at the time of signing) begins three months after the date of deposit of the instrument of ratification or accession, as the case may be, the State’s membership in ARIPO will take immediate effect with a one year grace period on membership subscription.
The main objectives of the protocol are listed in the protocol’s preamble. These objectives aim, inter alia, to ensure recognition of holders of rights over traditional knowledge and expressions of folklore and the protection of their rights to those intellectual properties as well as ensuring a very equitable balance between the owners and users of the items so protected.