Wednesday 31 October 2012

Darren Olivier

Moyo furthers debate on PAIPO

Sara Moyo from Zimbabwe Law firm Honey & Blanckenberg has written to Afro-IP following Jeremy's post "Piping up on PAIPO (with a letter from Caroline Ncube)" to comment on the debate surrounding the establishment of PAIPO (for previous posts click here). She makes a compelling argument for focusing efforts and resource toward the creation, training and commercialisation of IP rights by Africans within existing structures but do you agree? You can join the debate by commenting directly on this post, using the Afro-IP Linkedin group or by sending us an email here.

"I read with interest Darren Olivier’s post concerning the 2006 decision of the Conference of the African Ministers of Council in Science and Technology to establish a Pan –African Intellectual Property Organization (PAIPO).

Kingsley Egbuonu responded to Olivier’s post with a caution against rushing to condemn the concept of a continental intellectual property (IP) body and provided a link to the final draft Statute establishing PAIPO which will be presented before the 5th African Union (AU) Ministerial Conference on Science and Technology scheduled to take place from 6 to 12 November 2012 in the Democratic Republic of Congo.

As commented by Caroline Ncube, Senior Lecturer in the Department of Commercial Law University of Cape Town, the news is alarming not least because there appears to have been little public debate about the benefits of establishing a continental IP body whose mandate appears to be a duplication of the current objectives and activities of the regional IP Offices on the continent, ARIPO and OAPI.

Egbuonu suggests that “we…see….what laws PAIPO would go for… and how many countries would sign up for membership”.

I beg to differ. I do not see how Member States of the AU, African IP agents and other stakeholders can be expected to make a rational decision on the benefits of establishing a new continental IP body within the AU, and especially a continental registration Office, if the constitutive Protocol for such registration Office and the implementing regulations have not been formulated.

In other words, without any details/information as to the

 legal system that will govern the grant, term, opposition procedure, infringement proceedings, revocation, cancellation, compulsory licensing and transmission of each category of industrial property that PAIPO will be empowered to handle, and

 the costs of proceedings before the new continental registration IP Office, and

 the relation of PAIPO with the Harare Protocol, the Banjul Protocol, the Bangui Agreement and the Patent Cooperation Treaty, and

 the territorial effect of industrial property titles granted by PAIPO, and

 the seat of the proposed IP Office

it is impossible to have an informed debate on the merits of constituting PAIPO as an IP registration Office.

Secondly, unlike ARIPO’s IP Protocols, the final draft Statute of PAIPO does not provide for ratification or accession by the Member States of the AU.

Article 20 of the draft Statute provides that the Statute establishing PAIPO will automatically come into force on the day of endorsement by the Assembly and Head of States of the AU.

Decisions of the AU are made by consensus or by a two-thirds majority of the Member States (Article 7 of the Constitutive Act of the AU).

In my view Article 20 of the draft Statute appears problematic as some Member States of the AU do not provide for automatic ratification or accession to a convention or treaty or agreement, or automatic recognition of the legal status of an international body, without approval by the national Parliaments of Member States.

In Zimbabwe, for instance, any convention, treaty or agreement acceded to, concluded or executed by the Executive with foreign states or governments or international organisations, and which imposes fiscal obligations upon Zimbabwe, is subject to approval by the Parliament of Zimbabwe and shall not form part of the law of Zimbabwe unless it has been incorporated into the law by or under an Act of Parliament.

Secondly, the draft Statute does not permit reservations in relation to the term or validity of registered industrial property titles insofar as they may relate, for example, to patents in pharmaceuticals. This, as observed by Ncube, would appear to be contrary to the principle that IP legislation must be complementary to the developmental goals of individual Member States.

Article 5 of the draft Statute lists the objectives of PAIPO and provides in Article 5(iv) that the Organization shall “[p]rovide common services to Member States and/or regional economic communities in the administration and management of intellectual property rights that maximizes and builds upon the solid achievements of ARIPO, OAPI and/or WIPO.”

Article 6 of the draft Statute sets out the functions of the Organization and provides in Article 6(ii) that PAIPO “shall grant and register industrial property titles”.

Apart from the fact that the draft Statute does not define what such industrial property titles will be called (African patent, PAIPO trademark, etc.), the establishment of a supranational registration Office would appear to be a costly duplication of the registration function of current national and regional IP Offices.

Thirdly, the draft Statute does not specify the basis on which natural or legal persons may prosecute IP matters directly in PAIPO. Neither does it specify which legal representatives of IP owners may prosecute IP matters in PAIPO.

In spite of the above reservations, the establishment of multiple think tanks or fora for policy discussions and formulation of African positions on issues concerning IP matters is welcome and should be encouraged.

Examples of this are ongoing efforts by African IP agents to convene an Africa IP Forum (in spite of the scuttling of the inaugural meeting) which will discuss the dynamic role of IP protection and enforcement in promoting knowledge based economies through innovation, trade and investment. The forum will also focus on practical approaches to the utilization, management, and protection of IP in Africa.

South African IP firm Adams & Adams recently launched its Africa Meeting which it hopes will become an annual IP event.

The preamble of the draft Statute states that PAIPO will serve as a cost effective way of streamlining IP management in Africa. This however appears to ignore the fact that the ownership, registration, and exploitation of IP rights by residents/nationals of Member States of the AU is so miniscule (at this time) as to be unworthy of creating a continental IP Office.

WIPO statistics for filings in the national IP Offices of Member States of the AU in the 10 year period from 2002 to 2010 show that the total number of patent filings (direct and PCT national phase entries) were less than 100 000.

Of that number, Kenya had 1 078 patent filings, Egypt had 15 037 and South Africa had 63 599 patent filings.

Both anecdotal accounts by African IP agents and WIPO statistics on IP activity in Africa show that more than 90% of applications for registration of IP rights in Africa are by foreign IP applicants.

There is therefore urgent need, in my view, for African governments to focus, not on creating another registration entity in circumstances where the current volume of IP activity by African nationals/residents does not justify the cost, but to apply resources towards

 increasing the creation and exploitation of IP by African residents/nationals in all technical fields

 funding research and development, and

 training patent agents and patent examiners in Member States, and

 creating capacity within Member States for commercial management of IP rights."

Darren Olivier

Darren Olivier

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