Processing of an industrial design application by the receiving office (Part 1)
1.1 Filing of Applications
(1) Applications for the registration of industrial designs can be lodged at the R 10(1)(2) Industrial Property Office of any contracting State, referred to as the Receiving Office or directly with ARIPO. A patent attorney need not represent an applicant when lodging an application. However, an applicant whose ordinary residence or principal place of business is outside the contracting state in which lodging is done, must be so represented. Filing can be done by personal delivery or by registered mail.
1.2 Request for Registration
R9 The request must be made on ARIPO Form No. 28 obtainable from any contracting state. Applications lodged without Form No. 28 could be accepted provided there is an indication that the request is made under the Protocol with at least one designated state. However, form No. 28 will have to be submitted as soon as possible, thereafter.
1.3 Numbering of Application
R 9, 13 (iii) The ARIPO application received will be accorded an application number and a date of receipt, and stamped with the Receiving Office's stamp. The application number which will consist of a two letter Country code of the Receiving Office, a slant, the letters AP, a slant, the letter D, a slant, the four digit year in which the application is lodged, a slant and the numbers allotted internally by the Receiving Office. For example in the case of Zimbabwe being the receiving office the numbering would be "ZW/AP/P/1991/1"
1.4 Acknowledgement of Receipt
R 13 The applicant will be notified of receipt of the application by the Receiving Office. The notification will indicate the date of receipt of the application including the number allotted by the office (Form No. 8)
1.5 Checking of Formal Requirements
R13 The Receiving Office will check whether the prescribed formal requirements for according a filing date have been met. These are identification of an applicant and his address, reproduction of the design and application and designation fees, or an undertaking to pay such.
1.6 Invitation to correct
The applicant will be invited to correct deficiencies relating to formal requirements within two months from the date of such notice (Form No. 29). However, if such correction are not made within the prescribed time limit, the applicant may request the Receiving Office to transmit the application to ARIPO. Failure to comply with any of the above requirements with in the prescribed time limit will have the application refused.
1.7 Transmittal to ARIPO
S 2 An application in three copies will be transmitted to the ARIPO Office R 9, expeditiously. Transmittal will be effected with in 14 days from the date I 34, 63 of a complete application is received or from the date on which a request for transmittal is made or within 7 days from the date of filing an undertaking to pay (Form No. 30). Receiving Office will notify the applicant of such transmittal (Form No. 31).
Processing by ARIPO (Part II)
2.1 Numbering of Application
The ARIPO Office upon receipt of an application will assign an application number which will consist of letters of AP, a slant, D, a slant, the four digit year of receipt of that application, a slant and a five digit number in sequential order of applications as filed at ARIPO. The application will be stamped by the ARIPO stamp against the date of receipt of the application.
2.2 Notification of Filing Date
The ARIPO Office will verify if the application complies with requirements to accord a filing date. Where such requirements are not complied with the applicant will be invited to submit corrections, within two months of such invitation (Form No. 32). Where the requirements have been met, a filing date will be accorded and the applicant and the Receiving Office will be so notified (Form No. 33)
Examination as to Form
S 4(2)(a) This will be carried out as soon as the filing date has been accorded and its (R 15) objective is to determine whether the mandatory application requirements have been met.
2.3.1 Title of the Design
R 5(5)(b) This should be short and precise, indicating the subject matter of the design.
2.3.2 The Applicant and the Creator
R 5(5)(e) The application must disclose the applicant's name and address. Where the applicant is not
I66 the creator, the name and address of the creator should be disclosed, and a statement specifying the basis of the applicant's right to the design should be furnished (Form No. 28).
S 2(2) This should be undertaken by a duly qualified representative. A power of R 10(2) attorney to that effect should be lodged within two months of the filing date of the application (Form No. 4).
2.3.4 Designation of States
S 4(7) An applicant must state the contracting states in whose territory protection is sought. Only contracting states may be designated and designation after the filing date will be disregarded. However, any state may be withdrawn from the designation any time.
2.3.5 Reproduction of Design
An application must be accompanied by a reproduction of the design. Three-dimensional design will require all different graphic reproductions of the design. However, one reproduction will be required for a two-dimensional design.
2.3.6 Priority Declaration
Priority declaration should indicate the filing date, the office and the number of the earlier application(s). A copy of the earlier application(s) should be furnished within three months form the filing date. An English translation of a priority document not in English should be submitted with six months from the filing date.
2.3.7 Physical Requirements
Application documents should be easy to reproduce by photography, electrostatic processes, photo-offset, and micro-filming and should be in the manner prescribed in the table below:-
Required Type of Paper Number of copies to be filed Required Drawings & Diagrams Required Description (if any) Flexible strong white, smooth, non-shiny durable 4 copies (a) Drawings defined less in black, dense and thick. No colouring(b) Graphic reproductions (i) black or coloured (ii) Z 10 X 20 cm size Type written or hand-written text
2.3.8 Invitation to Correct
The applicant will be invited to correct deficiencies in the application within two months from the date of such notice (Form No. 32). Failure too correct will result in the refusal of the application. The applicant, the Receiving office and the designated states will be notified (Form No. 35).
2.4 Conversion into National Applications
A request for conversion of a refused application into national application may be mad within three months from date of refusal by ARIPO (Form No. 38). Such a request must be signed by the applicant and accompanied by a conversion fee. Where all the requirements have been met, the ARIPO office will transmit copies of the application to all the designated states (Form No. 24).
2.5 Notification of Compliance
S 4(3) The applicant and designated states will be notified of compliance with form requirements. This notification will be accompanied by a copy of the design. Designated states may within six months of such notification decline to protect the design in their territories on the basis that it does not comply with provisions of the Protocol and or their national laws (Form No. 37).
2.6 Registration and Publication
S 4(4) The ARIPO office will after six months from the date of notification of (R 20) compliance with form requirements, register and publish the design on behalf of the designated states, which did not decline to protect the design (From No. 39). However, this is subject to payment of the registration and publication fee by the applicant.
The design will be registered in the Design Register and such registration will be published in the ARIPO Journal. A certificate of registration will be issued and copies of the certificate together with copies of the reproduction of the design will be transmitted to the designated states. Designated states will be required to register the design in their national registers and publish the registered design in their national journals or gazettes.
GENERAL PROVISIONS PART III
3.1 Annual Maintenance Fee
R 21 On the eve of each anniversary of filing of the application maintenance fees shall be payable to ARIPO. Each designated state may request for remittance of maintenance fees due to it (Form No. 5). Notification of extension of validity of the registration will be sent to the designated states (Form B). Notification of invalidation will also be sent (Form C).
3.2 Registration of Licence, Assignment and other Rights
R 22(4)(5) Designated states are required to furnish (if any) information relating to the registration of licences, assignments and other rights pertaining to design registrations (Form No. 40)
3.3 Mode Communication
Appropriate ARIP Forms should be used in communications on design matters.
3.4 Time Limits
Strict adherence to time limits should be observed. The Director General on request, may grant extensions where necessary.
Board of Appeal
Reconsideration and review of decisions made by the office can be made by the Board of Appeal empowered to decide on all matter pertaining to the ARIPO Protocols.
Check list of actions
A. RECEIVING OFFICE
(i) CHECKING OF DOCUMENTS FILED
Verify if the application contains the following documents:-
Form 28 being a request for the registration of industrial design or any document indicating that any application for the registration of an industrial design under the Protocol is sought. (See details on Annex I);
Reproduction of the design with a complete reproductions of all facets;
Payment of application and designation fees or an undertaking to pay;
Four copies of documents making up the application (one set to be retained by the receiving office).
(ii) OFFICE ACTION OF THE RECEIVING OFFICE
Indicate the date of receipt
Allot the receiving office number;
Stamp the application with the official receiving office stamp;
Acknowledge receipt of application (Form 8);
Transmit the application to the ARIPO office (Form 30);
Notify the applicant of transmittal (Form 31).
B. ARIPO OFFICE
(iii) ARIPO OFFICE ACTION
Upon receipt of application the office shall:-
Indicate the date of receipt of application;
Accord a filing date
Allots ARIPO number;
Mark the application with an ARIPO official stamp;
Publish the filing in the Journal
Notifies the applicant and designated state of the filing date
(iv) FORMAL REQUIREMENTS
The ARIPO office shall verify if the following requirements are indicated:
The title of the industrial design;
The name and address of the applicant;
The name and address of the representative (if any) including the power of attorney;
Designation of states (all of which should be contracting states);
The name and address of the creator if he is not the applicant and a statement specifying the basis of the applicant's right to the registration of the design;
The nature of the design i.e. two-dimensional or three dimensional (the graphic reproductions should accompany the application);
Priority declarations (if any) to be accompanied by the certified copy of earlier applications.
(v) OFFICE ACTION
If the prescribed formal requirements are met the office shall notify the application, the receiving office and the designated states of this compliance. Upon expiration of six months an industrial design will be registered on behalf of those countries who have not declined protection of the design
(vi) REGISTRATION AND PUBLICATION
Registration and publication will entail the following:
Issuance of certificate of registration
Recordal of the design in the design register
Publication of the design in the Journal
Transmittal of copies of the design to designated states
C. DESIGNATED STATES
(vii) OFFICE ACTION OF RECEIT OF NOTIFICATION OF COMPLIANCE WITH FORMAL REQUIREMENTS
Confirmation receipt of notification;
Verify whether the design can be protected under the nation laws;
If protectable, debit ARIPO account with part fees due to the contracting state as a designated state;
Record the design in National Register;
Publish the design in the National Gazette or Journal.
(viii) OFFICE ACTION ON NOTIFICATIONS ON EXTENSION OF VALIDITY AND INVALIDATION
Upon receipt of such notification;
Record in the national register
Publish in the Gazatte or Journal of designs;
Debit ARIPO account with part of the maintenance fee due to the designated state (if extension is affected).
Licences and transmission of rights should be recorded
Notification of such licences and transmissions of rights should be communicated to ARIPO.