A previous post explored the possibility of a sui generis right for importation of a known technology into Kenya (or anywhere else, really) - a so-called "importation right" that would require only local novelty but would provide a very limited time period of exclusivity.
This blogger was very surprised to learn that ARIPO may have implemented (almost) exactly what was hypothesized. At a recent training session in Nairobi, sponsored by ARIPO and hosted by KIPI, an ARIPO official explained that Utility Model applications (of which there are, he admitted, very few) are subjected to a substantive examination, but that the novelty requirement is only based on a regional search of the prior art. If this is really the case, then anyone can obtain patent-like protection for up to 10 years for a technology that is well known outside of the region. Insert appropriate surprisedcat lion image here!
Section 3ter of the Harare Protocol makes no mention of the scope of search for evaluation of novelty during examination. Similarly, in the Guidelines for Examination at ARIPO (see prior link), this blogger could not find any indication that novelty should be regional for UMs. It would be appreciated if any official from ARIPO, who might be reading this blog, could verify the situation (preferably on the record!). Or perhaps a reader has experience - e.g., has filed a UM application to a technology known elsewhere but not regionally?
One theoretical situation to consider. Imagine an inventor in the US or EU files an application on day X, and discloses the invention to the public in the US or EU on day X+1. Then a competitor, having seen the disclosure, files a UM application in ARIPO on day X+2. The inventor, following the normal PCT and national phase procedure to obtain ARIPO patent protection, would likely wait well over 3 years to receive any ARIPO patent. The competitor, however, would likely have obtained UM protection by then. How would this situation be reconciled?
This blogger was very surprised to learn that ARIPO may have implemented (almost) exactly what was hypothesized. At a recent training session in Nairobi, sponsored by ARIPO and hosted by KIPI, an ARIPO official explained that Utility Model applications (of which there are, he admitted, very few) are subjected to a substantive examination, but that the novelty requirement is only based on a regional search of the prior art. If this is really the case, then anyone can obtain patent-like protection for up to 10 years for a technology that is well known outside of the region. Insert appropriate surprised
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| Excuse me? Did I hear correctly? Source: Wikipedia (public domain) |
Section 3ter of the Harare Protocol makes no mention of the scope of search for evaluation of novelty during examination. Similarly, in the Guidelines for Examination at ARIPO (see prior link), this blogger could not find any indication that novelty should be regional for UMs. It would be appreciated if any official from ARIPO, who might be reading this blog, could verify the situation (preferably on the record!). Or perhaps a reader has experience - e.g., has filed a UM application to a technology known elsewhere but not regionally?
One theoretical situation to consider. Imagine an inventor in the US or EU files an application on day X, and discloses the invention to the public in the US or EU on day X+1. Then a competitor, having seen the disclosure, files a UM application in ARIPO on day X+2. The inventor, following the normal PCT and national phase procedure to obtain ARIPO patent protection, would likely wait well over 3 years to receive any ARIPO patent. The competitor, however, would likely have obtained UM protection by then. How would this situation be reconciled?
