PROTOCOL ON PATENTS AND INDUSTRIAL
DESIGNS WITHIN THE FRAMEWORK OF
THE INDUSTRIAL PROPERTY
ORGANIZATION FOR ENGLISH-SPEAKING
AFRICA (ESARIPO) (RATIFICATION)
LAW, 1985 (PNDCL 137)
ARRANGEMENT OF SECTIONS
Section
1. Provisions of Protocol to have
Force of Law in Ghana.
2. Interpretation.
3. Commencement.
WHEREAS the Protocol on Patents
and Industrial Designs within the
Framework of the Industrial
Property Organization for
English-Speaking Africa (ESARIPO),
the text of which together with
the Regulations made thereunder is
set out in the Schedule and
referred to in this Law as "the
Protocol", was adopted at Harare,
Zimbabwe on 10th December, 1982;
AND WHEREAS by virtue of section 8
of the Provisional National
Defence Council (Establishment)
Proclamation, 1981 the Protocol
shall come into force on
ratification by the Provisional
National Defence Council;
AND WHEREAS the Protocol was
ratified by the Government of
Ghana on the 30th day of
September, 1983;
AND WHEREAS it is necessary to
give effect to the Protocol in
order that the provisions hereof
shall have the force of law in
Ghana;
NOW THEREFORE in pursuance of the
Provisional National Defence
Council (Establishment)
Proclamation, 1981, this Law is
hereby made:
Section 1—Provisions of Protocol
to have Force of Law in Ghana.
(1) Subject to the provision of
any enactment for the time being
in force relating to patents or
industrial designs, the provisions
of the Protocol set out in the
Schedule to this Law shall have
the force of law in Ghana and
shall apply:
(a) to any patent granted by the
Industrial Property Organization
for English-Speaking Africa (ESARIPO)
under the Protocol and in respect
of which Ghana is a designated
state; or
(b) any industrial design
registered by the Industrial
Property Organization for
English-Speaking Africa (ESARIPO)
under the Protocol and in respect
of which Ghana is a designated
state;
(2) Notwithstanding subsection (1)
of this section a patent granted
or an industrial design
registered, by the Industrial
Property Organisation for
English-Speaking Africa (ESARIPO)
shall not have effect in Ghana if
the Registrar-General communicates
to the Industrial Property
Organization for English Speaking
Africa (ESARIPO) in respect of the
application for grant of such
patent or registration of such
industrial design a decision in
accordance with the provisions of
the Protocol that the patent, if
granted or the Industrial design
if registered shall have no effect
in Ghana.
Section 2—Interpretation.
In this Law "Protocol" means the
Protocol on Patents and Industrial
Designs within the framework of
the Industrial Property
Organization for English-Speaking
Africa (ESARIPO) and the
Regulations made thereunder.
SCHEDULE
PART I—PROTOCOL
On Patents and Industrial Designs
within the framework of the
Industrial Property Organization
for English-Speaking Africa (ESARIPO)
Preamble:
THE CONTRACTING STATES OF THIS
PROTOCOL,
Having regard to the Agreement on
the Creation of an Industrial
Property Organization for
English-Speaking Africa, concluded
in Lusaka (Zambia) on December 9,
1976, and in particular to its
Article III (c), in accordance
with which the objectives of the
Organization include the
establishment of such common
services or organs as may be
necessary or desirable for the
co-ordination, harmonization and
development of the industrial
property activities affecting its
members,
Considering the advantages to be
gained by the pooling of resources
in respect of industrial property
administration hereby agree as
follows:
Section 1—General.
The Industrial Property
Organization for English-Speaking
Africa (ESARIPO) is empowered to
grant patents and to register
industrial designs and to
administer such patents and
industrial designs on behalf of
the Contracting States in
accordance with provisions of this
Protocol, through its Secretariat
(hereinafter referred to as "the
Office").
Section 2—Filing and Transmittal
of Applications.
(1) Applications for grant of
patents or the registration of
industrial designs by the Office
shall be filed by the authorised
representative of the applicant
with the industrial property
office of a Contracting State.
Every applicant shall be
represented by an attorney, agent
or legal practitioner who has the
right to represent applicants
before the industrial property
office of the Contracting State
with which the application is
filed.
(2) The industrial property office
with which the application is
filed shall, without delay,
transmit that application to the
Office.
Section 3—Patents.
(1) A patent application shall:
(i)
identify the applicant;
(ii) contain, as prescribed, a
description of the invention, a
claim or claims, a drawing or
drawings, where necessary, and an
abstract;
(iii) designate the Contracting
States for which the patent is
requested to be granted;
(iv) be subject to the payment of
the prescribed fees.
(2) (a) The Office shall
examine whether the formal
requirements for applications
have been complied with and shall
accord the appropriate filing date
to the application.
(b) If the Office finds that the
application does not comply with
the formal requirements, it shall
notify the applicant accordingly,
inviting him to comply with the
requirements within the prescribed
period. If the applicant does not
comply with the requirements
within the said period, the Office
shall refuse the application.
(c) The Office shall notify each
designated State of the fact that
a patent application has been
filed which complies with the
prescribed formal requirements.
(3) The Office shall undertake, or
arrange for the substantive
examination of the patent
application. If it finds that the
invention claimed in the
application does not comply with
the requirements of patentability
referred to in subsection (9), it
shall refuse the application.
(4) Where under subsection (2)(b)
or (3) the Office refuses the
application, the applicant may,
within the prescribed period,
request the Office to reconsider
the matter.
(5) If the Office decides to grant
the patent, it shall notify the
applicant and each designated
State. Where the examination was
based on a search report or an
examination report, a copy of the
same shall be attached to the said
notification.
(6) Before the expiration of six
months from the date of the
notification referred to in
subsection (5), a designated State
may make a written communication
to the Office that, if a patent is
granted by the Office, that patent
shall have no effect in its
territory for the reason
(i)
that the invention is not
patentable in accordance with the
provisions of this Protocol, or
(ii) that, because of the nature
of the invention, a patent cannot
be registered or granted or has no
effect under the national law of
that State.
(7) After the expiration of the
said six months, the Office shall
grant the patent, which shall have
effect in those designated States
which have not made the
communication referred to in
subsection (6). The Office shall
publish the patent granted.
(8) If the Office refuses the
application notwithstanding a
request for reconsideration under
subsection (4), the applicant may,
within three months from being
notified of such refusal, request
that his application be treated,
in any designated State, as an
application according to the
national law of that State.
(9) Inventions for which patents
are granted by the Office shall be
new, shall involve an inventive
step and shall be industrially
applicable. An invention is new if
it is not anticipated by prior
art. Everything made available to
the public anywhere in the world
by means of written disclosure
(including drawings and other
illustrations) or by use or
exhibition shall be considered
prior art provided that such
making available occurred before
the date of filing of the
application or, if priority is
claimed, before the priority date
validly claimed in respect thereof
and further provided that a
disclosure of the invention at an
official or officially recognised
exhibition shall not be taken into
consideration if it occurred not
more than six months before the
date of filing of the application
or, if priority is claimed, before
the priority date validly claimed
in respect thereof.
(10) On each anniversary of the
filing of the application, the
Office shall collect the
prescribed annual maintenance fee,
part of which shall be distributed
among the designated States
concerned. The amount of the fee
shall depend on the number of
States in respect of which the
application or patent is
maintained. Provided it is
maintained, a patent granted by
the Office shall in each
designated State have the same
effect as a patent registered,
granted or otherwise having effect
under the applicable national law
but not beyond the maximum
duration provided for under the
said law.
(11) A patent granted by the
Office shall in each designated
State be subject to provisions of
the applicable national law on
compulsory licences, forfeiture or
the use of patented inventions in
the public interest.
Section 4—Industrial Designs.
(1) An application for the
registration of an industrial
design filed shall:
(i)
identify the applicant;
(ii) contain a reproduction of the
industrial design;
(iii) designate the Contracting
States for which the registration
is requested to have effect;
(iv) be subject to the payment of
the prescribed fees.
(2) (a) The Office shall
examine whether the formal
requirements for applications have
been complied with and shall
accord the appropriate filing date
to the application.
(b) If the Office finds that the
application does not comply with
the formal requirements, it shall
notify the applicant accordingly,
inviting him to comply with the
requirements within the prescribed
period. If the applicant does not
comply with the requirements
within the said period, the Office
shall refuse the application.
(c) The Office shall notify each
designated State of the fact that
an application for the
registration of an industrial
design has been filed which
complies with the prescribed
formal requirements.
(3) Before the expiration of six
months from the date of the
notification referred to in
subsection (2)(c), each designated
State may make a written
communication to the Office that,
if the industrial design is
registered by the Office, that
registration shall have no effect
in its territory for the reason
(i)
that the industrial design is not
new,
(ii) that, because of the nature
of the industrial design, it
cannot be registered or a
registration has no effect under
the national law of that State, or
(iii) that, in the case of a
textile design, it is the subject
of a special register.
(4) After the expiration of the
said six months, the Office shall
effect the registration of the
industrial design, which shall
have effect in those designated
States which have not made
communication referred to in
subsection (3). The Office shall
publish the registration.
(5) If the Office refuses the
application, the applicant may,
within three months from being
notified of such refusal, request
that his application be treated,
in any designated State, as an
application according to the
national law of that State.
(6) On each anniversary of the
filing of the application, the
Office shall collect the
prescribed annual maintenance fee,
part of which shall be distributed
among the designated States
concerned. The amount of the fee
shall depend on the number of
States in respect of which the
application or registration is
maintained. Provided it is
maintained, the registration of an
industrial design effected by the
Office shall in each designated
State have the same effect as a
registration effected or otherwise
in force under the applicable
national law but not beyond the
maximum duration provided for
under the said law.
(7) An industrial design
registered by the Office shall in
each designated State be subject
to the provisions of the
applicable national law on
compulsory licences or the use of
registered industrial designs in
the public interest.
Section 5—Regulations.
(1) The Council of ESARIPO shall
make Regulations for the
implementation of this Protocol
and may amend them, where
necessary.
(2) The Regulations shall in
particular relate to
(i)
any administrative requirements,
matters of procedure, or any
details necessary for the
implementation of the provisions
of this Protocol and any relevant
international treaties;
(ii) the fees to be charged by the
Office and the details of the
distribution of part of those fees
among the Contracting States.
Section 6—Entry into Force and
Final Provisions.
(1) (a) Any State which is a
member of the Organization or any
State to which
membership of the Organisation is
open in accordance with Article
IV(1) of the Agreement on the
Creation of an Industrial Property
Organization for English-Speaking
Africa may become party to this
Protocol by:
(i)
signature followed by the deposit
of an instrument of ratification,
or
(ii) deposit of an instrument of
accession.
(b) Instruments of ratification or
accession shall be deposited with
the Government of the Republic of
Zimbabwe.
(c) This Protocol shall enter into
force three months after three
States have deposited their
instruments of ratification or
accession.
(d) Any State which is not party
to this Protocol upon its entry
into force under subsection (1)(c)
of this section shall become bound
by this Protocol three months
after the date on which such State
deposits its instruments of
ratification or accession.
(2) (a) Ratification of, or
accession to, this Protocol shall
entail acceptance of the
Agreement on the Creation of an
Industrial Property Organization
for English-Speaking Africa.
(b) The deposit of an instrument
of ratification of, or accession
to, this Protocol by a State which
is not a party to the Agreement
referred to in paragraph (a) of
this subsection shall have the
effect that the said State shall
become party to the said Agreement
on the date on which it deposits
its instrument of ratification of,
or accession to, this Protocol.
(3) (a) Any Contracting
State may denounce this Protocol
by notification addressed
to the Government of
the Republic of Zimbabwe.
(b) Denunciation shall take effect
six months after receipt of the
said notification by the
Government of the Republic of
Zimbabwe.
(c) Denunciation shall take effect
six months after receipt of the
said notification by the
Government of the Republic of
Zimbabwe. It shall not affect any
patent application or application
for the registration of an
industrial design filed with the
Office prior to the expiration of
the said six-month period or any
patent granted or registration of
an industrial design effected upon
such an application.
(4) (a) This Protocol shall
be signed in a single copy and
shall be deposited with the
Government of the
Republic of Zimbabwe.
(b) The Government of the Republic
of Zimbabwe shall transmit
certified copies of this Protocol
to the Contracting States, other
States members of the Industrial
Property Organization for
English-Speaking Africa, and the
States to which membership of the
Organization is open in accordance
with Article IV(1) of the
Agreement on the Creation of an
Industrial Property Organization
for English-Speaking Africa, the
World Intellectual Property
Organization and the United
Nations Economic Commission for
Africa.
PART II—REGULATIONS FOR
IMPLEMENTING THE PROTOCOL ON
PATENTS AND INDUSTRIAL DESIGNS
Within the Framework of the
Industrial Property Organization
for English-Speaking Africa (ESARIPO)
Rule 1—Interpretation.
In these Regulations, unless the
context otherwise requires,
"Administrative Instructions"
means the Administrative
Instructions established by the
Director of the ESARIPO Office in
accordance with Rule 2(5);
"application" means an application
for the grant of a patent or for
the registration of an industrial
design, as the case may be, under
the provisions of the Protocol;
"Contracting State" means any
State that adheres to the
Protocol;
"designated State" means a State
designated, in accordance with
Rule 5(1)(f), in an application;
"ESAPADIC"
means the Patent Documentation and
Information Centre of ESARIPO;
"The ESARIPO Journal" means the
Journal published by ESARIPO as
required in Rule 2(4);
"ESARIPO
Office" means the Office of the
Industrial Property Organization
for English-Speaking Africa (ESARIPO);
"Paris Convention" means the Paris
convention for the Protection of
Industrial Property of March 20,
1983 as last revised;
"Protocol" means the Protocol on
Patents and Industrial Designs
within the framework of the
Industrial Property Organization
for English Speaking Africa (ESARIPO)
adopted at Harare, Zimbabwe, on
December 10, 1982.
Rule 2—Registers; The Journal;
Administrative Instructions.
(1) The ESARIPO Office shall
maintain a Patents Register and an
Industrial Designs Register in
which shall be recorded,
respectively, all patents granted
and all industrial designs
registered under the Protocol, and
which shall contain the
particulars the recording of which
is provided for in these
Regulations.
(2) The recording of a granted
patent shall be effected, in the
order of grant, by the insertion
in the Patents Register of a copy
of the Patent.
(3) Any recording other than that
of the granted patent shall be
effected by recording, under the
appropriate heading of a page in
the Patents Register reserved for
each patent, the fact or
instrument to be recorded.
(4) The ESARIPO Office shall
publish a Journal in which it
shall effect all the publications
provided for in the Protocol and
in these Regulations. The Journal
shall be published quarterly.
(5) (a) The Director of the
ESARIPO OFFICE shall establish
Administrative
Instructions which shall deal with
details in respect of the
application of these Regulations
and which shall not be in conflict
with the provisions of the
Protocol and these Regulations.
(b) The Administrative
Instructions shall be modified by
the Director of the ESARIPO Office
upon the request of the ESARIPO
Council.
Rule 3—Inspection of Files.
(1) Subject to paragraph (2), any
person may, upon payment of the
prescribed fees, consult the
Patents Register and the
Industrial Designs Register or
obtain copies of extracts
therefrom.
(2) (a)The file relating to
a patent application may be
inspected and extracts
therefrom obtained before the
grant of the patent only with the
written permission of the
applicant.
(b) Even before the grant of the
patent, the ESARIPO Office shall,
on request, communicate the
following bibliographic data:
(i)
the name and address of the
applicant and the name and address
of the agent;
(ii) the number of the
application;
(iii) the filing date of the
application and, if priority is
claimed, the priority date, the
number of the earlier application
and the name of the State in which
the earlier application was filed
or, where the earlier application
is a regional or international
application, the name of the State
or States for which it was filed
as well as the office with which
it was filed;
(iv) the title of the invention;
(v) any change in the ownership of
the application and any reference
to a licence contract appearing in
the file of the application.
(c) Where an application is
withdrawn in accordance with Rule
17, the file relating to it may be
inspected only with the written
permission of the person who
withdrew the application, and
sub-paragraph (b) shall not apply.
(3) The inspection of files of the
ESARIPO Office by the Courts or
authorities of Contracting States
shall be by the provision of
copies of the relevant documents
or extracts of the relevant
entries.
Rule 4—Patent Information
Services.
The ESARIPO Office shall, through
ESAPADIC, provide upon request,
patent information services to
users of patent information in
member and potential member States
or ESARIPO for the purpose of
facilitating the adaptation,
transfer and acquisition of
appropriate technology, the
development of local research and
the creation of endogenous
technology.
Rule 5—Form and Contents of Patent
Application.
(1) The application for a patent
shall contain:
(a) a request;
(b) a description;
(c) one or more claims;
(d) one or more drawings (where
necessary);
(e) an abstract; and
(f) a designation of the
Contracting States in respect of
which the patent is requested to
be granted.
(2) The application shall be in
the English language and any
document forming part of the
application and which is in a
language other than English shall
be accompanied by an English
translation.
(3) The request shall be made on a
printed form copies of which shall
be obtainable from the ESARIPO
Office and from the industrial
property offices of Contracting
States.
(4) (a) The printed form
shall contain a list which, when
filled in, will show:
(i)
the total number of sheets
constituting the application and
the number of the sheets of each
element of the application
(request, description, claims,
drawings; abstract);
(ii) whether or not the
application as filed is
accompanied by a power of
attorney, a priority document, a
receipt for the fee paid or an
undertaking to pay the requisite
fees, a statement justifying the
applicant's right to the patent
and any other document (to be
specified in the check list);
(iii) the number of the most
illustrative drawing which the
applicant suggests should
accompany the abstract when the
abstract is published.
(b) The list shall be filled in by
the applicant, failing which the
ESARIPO Office shall fill it in
and make the necessary
annotations.
(5) The request, which shall be
signed by the applicant, shall
contain:
(a) a petition which shall appear
on the printed form;
(b) the title of the invention
which shall be short (preferably
from two to seven words) and
precise;
(c) the name, address (including,
where applicable, telegraphic and
telex address and telephone
number) and nationality of the
applicant and the State in which
his residence or principal place
of business is located; names of
natural persons shall be indicated
by the person's family name and
given name(s), the family name
being indicated before the given
name(s); name of legal entities,
shall be indicated by their
official designations; addresses
shall be indicated in such a way
as to satisfy the customary
requirements for prompt postal
delivery at the indicated address;
they shall in any case comprise
all the relevant administrative
units, including the house number,
if any;
(d) the name, address and place of
business of the applicant's
representative (particulars as in
(c) above);
(e) where the applicant is the
inventor, a statement to that
effect and where he is not, the
name and address of the inventor
accompanied by a statement
specifying the basis of the
applicant's right to the patent;
and
(f) where applicable, a
declaration of priority.
Rule 6—Contents of the
Description.
(1) The description shall:
(a) first state the title of the
invention as appearing in the
request;
(b) specify the technical field to
which the invention relates;
(c) indicate the background art
which, as far as known to the
applicant, can be regarded as
useful for the understanding,
searching and examination of the
invention, and, preferably, cite
the documents reflecting such art;
(d) disclose the invention in such
terms that it can be understood,
and state its advantageous
effects, if any, with reference to
the background art;
(e) briefly describe the figures
in the drawings, if any;
(f) set forth at least the best
mode contemplated by the applicant
for carrying out the invention;
this shall be done in terms of
examples, where appropriate, and
with reference to the drawings, if
any; and
(g) indicate explicitly, when it
is not obvious from the
description or nature of the
invention, the way in which the
invention is industrially
applicable and the way in which it
can be made and used, or, if it
can only be used, the way in which
it can be used.
(2) The manner and orders
specified in this Rule shall be
followed except when, because of
the nature of the invention, a
different manner or a different
order would result in a better
understanding and a more concise
presentation.
Rule 7—Contents of the Claims.
(1) The claims shall define the
matter for which protection is
sought in terms of the technical
features of the invention. The
number of the claims shall be
reasonable, taking into account
the nature of the invention, and
where there are several claims,
they shall be numbered
consecutively in arabic numerals.
Wherever appropriate, claims shall
contain:
(a) a statement indicating
those technical features of the
invention which are
necessary for the definition of
the latter but which, in
combination, are part of the prior
art, and
(b) a characterizing
portion—preceded by the words
"characterized in that",
"characterized by", "wherein the
improvement comprises", or any
other words to the same
effect—stating concisely the
technical features which, in
combination with the features
stated under (a), it is desired to
protect.
(2) Claims shall not, except where
absolutely necessary, rely, in
respect of the technical features
of the invention, on references to
the description or drawings. In
particular, they shall not rely on
such references as: "as described
in part . . . of the description,"
or "as illustrated in figure . . .
of the drawings."
Rule 8—Declaration of Priority.
(1) The application may contain a
declaration claiming, in respect
of one or several designated
States, the priority, as provided
for in the Paris Convention, of
one or more earlier national,
regional or international
applications filed by the
applicant or his predecessor in
title in or for any State party to
the Paris Convention. The
declaration shall indicate:
(i)
the date of the earlier
application;
(ii) the number of the earlier
application, subject to paragraph
(2);
(iii) the name of the State in
which the earlier application was
filed or where the earlier
application is a regional or an
international application, the
name of the States for which it
was filed; and
(iv) where the earlier application
is a regional or an international
application, the office with which
it was filed.
(2) Where, at the time of filing
the declaration referred to in
paragraph (1) the number of the
earlier application is not known,
that number shall be furnished
within three months from the date
on which the application
containing the declaration was
filed.
(3) The applicant may, at any time
before the grant of the patent,
amend the contents of the
declaration.
(4) The applicant shall, within a
period of three months from the
filing of the application
containing the declaration,
furnish a copy of the earlier
application, certified as correct
by the office with which it was
filed.
(5) Where the earlier application
is in a language other than
English, the applicant shall
within a period of six months from
the filing of the application
containing the declaration,
furnish an English translation.
(6) If the requirements under the
Rule have not been complied with,
the declaration shall be
disregarded.
Rule 9—Applications for the
Registration of Industrial
Designs.
The Rules relating to patent
applications shall, mutatis
mutandis , apply to applications
for the registration of industrial
designs filed under Section 4 of
the Protocol.
Rule 10—Filing of Application;
Authorization of Representative.
(1) Subject to Rule 11, any
application may be filed with the
industrial property office of any
Contracting State.
(2) The authorization of the
applicant's representative shall
be evidenced by a power of
attorney issued and signed by the
applicant and filed together with
the application or filed within a
period of two months after the
filing of the application.
Rule 11—Fees to be Paid.
(1) The fees to which applications
are subject, and the amounts of
such fees, shall be as set out in
the Schedule of Fees which is
annexed to these Regulations and
forms part thereof, as well as in
the Administrative Instructions.
(2) Subject to paragraph (3), fees
shall be paid in U.S. dollars
direct to the ESARIPO Office and
the application shall be
accompanied by an undertaking
signed by the applicant that he
will effect payment to the ESARIPO
Office within a period of 21 days
from the date on which the
application is filed with the
industrial property office of a
Contracting State.
(3) (a) Notwithstanding
paragraph (2), where the applicant
is a national of the
Contracting State in which the
application is filed, the
industrial property office
concerned may
(i)
accept payment of the fees in
local currency equivalent, at the
prevailing official rate of
exchange to the prescribed fees;
and
(ii) request the ESARIPO Office to
debit its account in ESARIPO with
the amount of such fees.
(b) The ESARIPO Office shall be
bound by the decision taken by the
industrial property office of a
Contracting State concerning the
applicability of this paragraph
with regard to the nationality of
the applicant.
Rule 12—Distribution of Fees.
(1) The distribution of fees
between the ESARIPO Office and
Contracting States shall be as
follows:
(a) 5% of the application fee
shall be due to the Contracting
State in which the application is
filed and 95% shall be due to the
ESARIPO Office;
(b) 50% of the designation fee
shall be due to each designated
State and 50% shall be due to the
ESARIPO Office.
(c) 50% of the annual maintenance
fee shall be due to the designated
State and 50% shall be due to the
ESARIPO Office.
(2) Fees due to Contracting States
shall be held in their favour or,
on request, transmitted to them by
the ESARIPO Office.
Rule 13—Transmittal of
Application.
The industrial property office
with which the application was
filed shall:
(i)
verify that the application on the
face of it fulfils the
requirements of Rule 5(1)(a), (b)
and (c);
(ii) verify that the undertaking
with respect to fees has been
submitted or that the fees have
been paid and a receipt issued
therefor;
(iii) mark on each document making
up the application the actual date
of receipt, and appropriate number
and its official stamp;
(iv) issue to the applicant's
representative an acknowledgement
of receipt of the application; and
(v) promptly transmit all document
making up the application to the
ESARIPO Office.
Rule 14—Filing Date.
(1) The ESARIPO Office shall
accord as the filing date the date
on which the application was
received by the industrial
property office with which the
application was filed, provided
that the application on the face
of it fulfils the requirements of
Rule 5(1) (a), (b) and (c); if on
the date on which the application
was received by the industrial
property office with which the
application was filed the
application on the face of it did
not fulfil the requirements of
Rule (5) (1) (a), (b) and (c), the
ESARIPO Office shall accord as the
filing date the date on which the
application on the face of it
fulfilled the requirements of Rule
(5) (1) (a), (b) and (c).
(2) The ESARIPO Office shall
notify the applicant and the
industrial property office of each
designated State of the filing
date of the application.
Rule 15—Examination as to Formal
Requirements.
(1) Upon receiving the
application, the ESARIPO Office
shall examine it for compliance
with the requirements of Section
3(1) of the Protocol, Rules 5, 6,
7, 8, 10 and 11, and the
Administrative Instructions, and
ascertain whether the requisite
fees have been paid.
(2) Where the ESARIPO Office finds
that the application does not
comply with the said requirements,
it shall invite the applicant to
correct the application within a
period of two months.
(3) If the applicant fails to
comply with the invitation
referred to in paragraph (2) and
the ESARIPO Office refuses the
application under Section 3(2)(b)
of the Protocol, a request by the
applicant, pursuant to Section
3(4), that the ESARIPO Office
reconsider its decision may be
submitted in writing within two
months and shall state the
applicant's grounds for requesting
such reconsideration.
Rule 16—Information Concerning
Corresponding Foreign
Applications, Patents or Other
Titles of Protection.
(1) The applicant shall, at the
request of the ESARIPO Office, and
within the period specified in
such request, furnish it with the
date and number of any application
for a patent or other title of
protection filed by him with a
national industrial property
office or with a regional
industrial property office
(foreign application) relating to
the same or essentially the same
invention as that claimed in the
application being processed by the
ESARIPO Office.
(2) (a) The applicant shall,
at the request of the ESARIPO
Office and within the
period specified in such request,
furnish it with the following
documents relating to one of the
foreign applications referred to
in paragraph (1):
(i)
a copy of any communication
received by the applicant
concerning the results of any
search or examination carried out
in respect of the foreign
applications;
(ii) a copy of the patents or
other title of protection granted
on the basis of the foreign
application;
(iii) a copy of any final decision
rejecting the foreign application
or refusing the grant requested in
the foreign application.
(b) The applicant shall, at the
request of the ESARIPO Office,
furnish it with a copy of any
final decision invalidating the
patent or other title of
protection granted on the basis of
the foreign application referred
to in paragraph (a).
(3) The applicant shall, at the
request of the ESARIPO Office,
furnish it with the following
documents relating to any foreign
application other than the one
referred to in paragraph (2):
(i)
a copy of any communication
received by the applicant
concerning the results of any
search or examination carried out
in respect of the foreign
application and in which
publications or other documents
establishing the prior art are
mentioned;
(ii) a copy of any final decision
rejecting the foreign application
or refusing the grant requested in
the foreign application.
(4) The documents furnished under
this Section shall merely serve
the purpose of facilitating the
evaluation of the novelty and
inventive step of the invention
claimed in the application being
processed by the ESARIPO Office or
in the patent granted on the basis
of that application.
(5) The applicant shall have the
right to submit comments on the
documents furnished under this
Rule.
Rule 17—Withdrawal of Application.
The applicant may withdraw the
application at any time during its
pendency by submitting a written
declaration to the ESARIPO Office.
Rule 18—Examination as to
Substance.
(1) For the purposes of the
examination under Section 3(3) of
the Protocol, the ESARIPO Office
may transmit the application
together with all relevant
documents to an authority
specified in the Administrative
Instructions.
(2) A search and examination
report shall be established by the
ESARIPO Office or by the authority
referred to in paragraph (1) and
shall contain the conclusions of
the examination of the
application.
(3) Where, taking due account of
the conclusions of the search and
examination report referred to in
paragraph (2), the ESARIPO Office
reaches the conclusion that any of
the requirements referred to in
Section 3(3) of the Protocol are
not fulfilled, it shall notify the
applicant accordingly and invite
him to submit within a specified
period, his observations and,
where applicable, an amended
application together with a
request in accordance with Section
3(4) of the Protocol that the
matter be reconsidered.
(4) Where the ESARIPO Office,
taking due account of the search
and examination report, decides to
grant the patent pursuant to
Section 3(5) of the Protocol, it
shall, by a notification to which
shall be attached a copy of the
search and examination report upon
which the decision is based,
communicate the decision to the
applicant and the industrial
property office of each designated
State, and request the applicant
to make payment of the grant and
publication fee, within the period
it shall specify.
(5) A communication by designated
State pursuant to Section 3(6) of
the Protocol shall be made on its
behalf by its industrial property
office.
(6) Within two weeks of receiving
any such communication, the
ESARIPO Office shall promptly
transmit a copy thereof to the
applicant.
Rule 19—Request for Conversion
into a National Patent
Application.
(1) A request by the applicant,
pursuant to Section 3(8) of the
Protocol, that the application be
treated as an application under
the national law of one or more of
the designated States, may be
filed within three months from the
date of the refusal by the ESARIPO
Office of the request for
reconsideration, and shall specify
the designated States in which the
procedure for the grant of a
national patent is desired.
(2) Within two weeks of receiving
the request, the ESARIPO Office
shall transmit copies of the
application, and all relevant
documents, to the industrial
property offices of the designated
States specified by the applicant.
Rule 20—Grant; Recordal and
Publication.
(1) Upon the expiry of the period
of six months provided for in
Section 3(6) and subject to
payment of the grant and
publication fee, the ESARIPO
Office shall in accordance with
Section 3(7) of the Protocol:
(a) grant the patent;
(b) publish in the ESARIPO Journal
a reference to the grant;
(c) record the patent in the
Patents Register;
(d) issue to the applicant a
certificate of the grant of the
patent and a copy of the patent;
(e) transmit to each designated
State for which the patent is
granted a copy of the certificate
and a copy of the patent.
(2) The publication of a reference
to the grant in the ESARIPO
Journal shall include the
following:
(a) the number of the patent;
(b) the name and address of the
owner of the patent;
(c) the name and address of the
inventor;
(d) the name and address of the
applicant's representative;
(e) the filing date of the
application;
(f) if priority has been claimed
and the claim has been accepted, a
statement of that priority, the
priority date and the name of the
country or countries in which or
for which the earlier application
was filed;
(g) the effective date of the
grant of the patent;
(h) the title of the invention;
(i)
the abstract;
(j) if there are drawings, the
most illustrative drawing;
(k) the symbol of the
International Patent
Classification;
(l) the Contracting States for
which the patent is granted.
(3) The Certificate of Grant,
which shall be signed by the
Director of the ESARIPO Office,
shall contain:
(a) the number of the patent;
(b) the name and address of the
owner of the patent;
(c) the filing date and priority
date, if any, of the application;
(d) the effective date of the
grant of the patent;
(e) the title of the invention;
(f) the Contracting States for
which the patent is granted.
Rule 21—Payment of Annual
Maintenance Fees.
(1) The amount of annual
maintenance fees payable under
Section 3(10) of the Protocol
shall be as prescribed in the
Schedule of Fees.
(2) The annual maintenances fees
shall fall due on the eve of each
anniversary of the date of filing
of the application and shall be
paid in advance to the ESARIPO
Office.
(3) The ESARIPO Office shall, at
least one month prior to the date
on which an annual maintenance fee
shall fall due, issue a reminder
to the applicant or the owner of
the patent.
(4) Subject to the payment of the
prescribed surcharge, a period of
grace of six months shall be
allowed for the payment of the
annual maintenance fee.
(5) If an annual maintenance fee
is not paid in accordance with
this Rule, the application shall
be deemed to have been withdrawn
or the patent shall lapse.
(6) The ESARIPO Office shall
record each lapsed patent in the
Patents Register and publish a
notification of the lapse in the
ESARIPO Journal.
Rule 22—General Provisions.
(1) Communications between the
ESARIPO Office and the industrial
property offices of Contracting
States on matters relating to the
Protocol and these Regulations
shall be effected direct and by
registered air mail.
(2) Communications between the
ESARIPO Office and the Courts or
other authorities of Contracting
States on matters relating to the
Protocol and these Regulations
shall be effected through the
intermediary of the industrial
property office of the said States
and shall be subject to Rule
22(1).
(3) The industrial property
offices of designated States of
which the national laws provide
for the registration of licences,
assignments and other similar
rights pertaining to patents and
industrial designs shall, upon
registering such rights with
respect to a patent or an
industrial design granted,
registered or applied for under
the Protocol, promptly provide the
ESARIPO Office with particulars or
such registrations.
(4) The ESARIPO Office shall
record in the Patents Register or
the Industrial Designs Register,
as the case may be, all
notifications made under Rule
22(3).
(5) The ESARIPO shall, in
accordance with the procedure set
out in the Administrative
Instructions, register
assignments, licences and other
similar rights pertaining to
patents or industrial designs
granted, registered or applied for
under the Protocol with respect to
designated States of which the
national laws do not provide for
such registrations.
SCHEDULE OF FEES
PATENTS
Kind of Fees Amount
(US Dollars or, where Rule
11(3)(a) applies, the
equivalent)
1. Application fee ..
.. .. .. ..
150
2. Designation fee per country
designated .. 50
3. Grant and Publication fee
.. .. ..
250
4. Annual maintenance fee in
respect of each designated
State
1st anniversary .. ..
.. .. ..
40
2nd anniversary .. ..
.. .. ..
50
3rd anniversary .. ..
.. .. ..
60
4th anniversary .. ..
.. .. ..
70
5th anniversary .. ..
.. .. ..
80
6th anniversary .. ..
.. .. ..
90
7th anniversary .. ..
.. .. ..
100
8th anniversary .. ..
.. .. ..
110
9th anniversary .. ..
.. .. ..
120
10th anniversary ..
.. .. ..
130
11th anniversary ..
.. .. ..
140
12th anniversary ..
.. .. ..
150
13th anniversary ..
.. .. ..
160
14th anniversary ..
.. .. ..
170
15th anniversary ..
.. .. ..
180
For each year thereafter an
additional US$10.
Surcharge for late payment of
annual maintenance fee (Rule 21(4)
20% of the fee specified).
5. Consultation of
Registers ..
.. .. .. ..
.. 2
6. Request for copies of extracts
from Register or from files
.. .. 0.50 per page.
INDUSTRIAL DESIGNS
Kind of Fees Amount (US Dollars
or, where Rule 11 (3) (a) applies,
the equivalent)
1. Application fee ..
.. .. ..
.. 50
2. Designation fee per country
designated .. 10
3. Annual maintenance fee in
respect of each designated
State
1st anniversary ..
.. .. .. ..
10
2nd anniversary ..
.. .. .. ..
12
3rd anniversary ..
.. .. .. ..
14
4th anniversary ..
.. .. .. ..
16
5th anniversary ..
.. .. .. ..
18
6th anniversary ..
.. .. .. ..
20
7th anniversary ..
.. .. .. ..
24
8th anniversary ..
.. .. .. ..
28
9th anniversary ..
.. .. .. ..
32
10th anniversary ..
.. .. .. ..
36
Section 3—Commencement.
This Law shall be deemed to have
come into force on the 25th day of
April, 1984.
Made this 5th day of November,
1985.
FLT. -LT. JERRY JOHN RAWLINGS
Chairman of the Provisional
National Defence Council
Date of Gazette Notification: 24th
December, 1986.
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