ARIPO - Amendments made to Harare Protocol and Regulations

Various amendments have recently been made to the Harare Protocol on Patents and Designs and the Implementing Regulations, which came into force on 1 January 2022.

Some points of particular significance to note about these amendments are as follows:

Contracting States

As reported elsewhere, the Seychelles has recently deposited its instrument of accession to the Harare Protocol on Patents and Industrial Designs, and this law came into force there on 1st January 2022. Therefore, an ARIPO application filed on or after 1st January 2022 may designate Seychelles as a Contracting State, and any international application filed under the Patent Cooperation Treaty on or after 1st January 2022 will include Seychelles as a state designated for every kind of regional protection available upon entry into ARIPO.

The total number of Contracting States which may now be designated in an ARIPO patent or design application is 19.  The total number of Contracting States which may be designated in a utility model application in ARIPO is only 14 (including Seychelles) because not all of the ARIPO member States have national utility model laws.

Industrial designs

The term of an industrial design has been increased from 10 years to 15 years from the filing date.   This change in the term is applicable to applications which are registered in ARIPO after 1 January 2022.

Where the national law of a designated state provides for a shorter term of protection, the ARIPO design registration in that state will expire at the end of the term prescribed in the national law.

Fees for excess claims and pages of the specification 

The Regulations have been amended so as to clarify the basis on which the additional fee for an application which comprises more than 30 pages is calculated.  This additional fee is calculated on the basis of the pages of the description, claims, any drawings and the abstract. The pages forming part of a sequence listing shall not be counted provided that the sequence listing complies with WIPO Standard ST.25

If the claim fee for claims in excess of 10 is not paid on or before the deadline for requesting substantive examination, the 11th and subsequent claims shall be deemed to be withdrawn.  If an amendment filed after payment of additional fee or claims fee introduces more pages and claims, the fees for the additional pages and claims shall be paid at time of paying grant and publication fees.

Substantive examination of patent applications

The Regulations now provides that a request for substantive examination of a patent application must be filed within the following deadlines:

-              Convention (non-PCT) applications: 3 years from earliest priority date;

-              Non-PCT applications without priority date: 3 years from filing date;

-              PCT regional phase applications with priority claim: 31 months from earliest priority date;

-              PCT regional phase applications without priority claim: 31 months from PCT filing date.

These new deadlines apply to all patent applications in ARIPO filed after 1st January 2022.