Volume 1: Establishing the Law and Ownership of Patents
- The Laws that regulate patents
- The rights and duties attached to patent holding
- How to Apply for a patent in Tanzania and ARIPO (African Regional Intellectual Property Organization)
Intellectual property refers to the legal rights which result from intellectual creations in the industrial, scientific, literary and artistic fields.
Intellectual property law aims at safeguarding intellectual creators and other producers of intellectual goods and services by granting them certain time-limited rights to own and in so doing, control the use, reference and possession of those creations. Those rights do not apply to the physical object in which the creation may be embodied but instead to the intellectual creation.
Intellectual Property is divided into two. These are:
- Industrial Property, which includes,
- Industrial designs
It is imperative at this juncture to point out that, this article will specifically focus around the subject on Intellectual property procedural law governing Patents.
In Tanzania Mainland the laws that govern Patents are as follows:
- The Patents (Registration) Act of 1995 (Chapter 217 of the Laws)
- The Patents Regulations GN. 190 of 1994
In Zanzibar the laws that govern Patents are:
- Patents Decree, Cap 157 (11 of 1930, Cap 9 of 1934, 27 of 1935, S. 5, 11 of 1958) Laws of Zanzibar.
- Patent Rules (Schedule to Decree No. 11 of 1930) in the Laws of Zanzibar.
Definition of Patent:
A Patent is an exclusive right for an invention. It is a set of exclusive rights granted by a sovereign state (and with the development of the law and concept, registered by multinational intellectual property organizations such as WIPO and ARIPO) to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a specific technological problem and is a product or a process.
It is trite that in order for one to enjoy the exclusive recognition, right or protection, there must be an invention. Under S. 7 of The Patent Act which we will hereon forward refer to it as “The Act”, an invention means a solution to a specific problem in the field of technology and may relate to a product or process.
Thus, a patent is generally intended to cover products or processes that possess or contain new functional or technical aspects. Patents are therefore concerned with, for example, how things work, what they do, how they do so, what they are made of or how they are made. The vast majority of patents are for incremental improvements in known technology. Thus, basically patents law centers around the concepts of novelty (or lack of anticipation) and inventive step (or lack of obviousness). In other words, not every invention is patentable unless it is new, could not be easily anticipated and is industrially applicable. Specifically, S. 8 of the Act provides that, an invention is patentable if it is new, involves an inventive step and is industrially applicable.
Who enjoys the right to patent?
A patent for an invention is granted to the inventor, giving the inventor the right for a limited period to stop others from making, using or selling the invention without the permission of the inventor. When a patent is granted, the invention becomes the property of the inventor, which – like any other form of property or business asset – can be bought, sold, rented or hired.
Patents are territorial rights in the sense that they are only recognized and enforced in the territory/country or jurisdiction under which they have been registered.
As per S. 14(1) of The Act, the right to a patent shall belong to an inventor. To be recognized as an inventor one should apply to be granted a patent. A Patent application may be a National Patent Application or an International application. If a country has ratified an international treaty for instance Patent Cooperation Treaty, an applicant can lodge an international application with a national or regional patent office or World Intellectual Property Organization (WIPO) and thus seek patent protection for his invention simultaneously in a large number of countries by that single application. (See Section 2 (b) and 3 of the Harare Protocol on Patents and Industrial Designs Within the Framework of ARIPO as well as Article 7 – 12 of the Washington International Patent Cooperation Treaty of 1970 in the WIPO Framework)
Section 18 of the Act provides for the grant of patent. According to the provision, in the application, the applicant should prove that the invention is novel/new and that it has never appeared anywhere in the world. (See Section 7 of the Act). According to S. 7(2) the invention in this respect should not be:
- Discoveries and mathematical theories.
- Plant or animal varieties or biological processes other than microbiological and the product of such processes.
- Schemes, rules or methods of doing business or performing purely mental acts
- Methods for treatment of the human or animal body surgery or therapy, diagnostic methods but not products for use in any of those methods.
Rights of the owner of a patent (Including Disposition and Assignment)
According to S. 35 of The Act, the owner of the patent acquires the following rights which if done by anybody other than the owner constitute an infringement. These are:
- If in respect of a product;
- Making, importing or offer for sale, assignment, selling and using the product
- Stocking the product for sale or for using
- If in respect of a process;
- The use of that process
- Doing acts in (i) above in respect to the product obtained directly by means of the process.
However, under S. 68(1) and (2) of the Act, a person showing legitimate interest may request the court to declare that the performance of certain act does not infringe the patent and the owner or licensee shall have the right to be defendant in the proceedings. But such declaration shall not be made if:
- The acts to which the request is made are already the subject of infringement proceedings.
- The person making the request is unable to prove that he has previously demanded from the owner a written acknowledgment of the lawfulness the acts referred to and he refused or failed to reply in a reasonable time.
How is a patent granted?
Under the Tanzanian Law, a person who needs to secure patent for his or her invention has two options. These are:
- By lodging an application with the Registrar of patents at BRELA,
Under the Patent Act, the inventor or any person who has a right over an invention files an application for registration of a patent with the office of the Registrar of Patents. (See S. 18(1) of the Act). The said application should be made by filling FORM NO.2 as provided by The Patents Regulations. Patents are granted by the Registrar via the Government authority called BRELA (Business Registrations and Licensing Agency).
According to S.18 of The Act, the Application should contain the following particulars;
- A title of the invention,
- A description of the invention and stating the technical field under which the invention falls.
The description should be in clear language to be understood by a person with average understanding in the field such that they can work on the invention basing on the description. More elaborations such as drawings should be made and should also state what is claimed in the invention.
- By filing an application with the African Regional Intellectual Property Organization (ARIPO)
African Regional Industrial Property Organization (ARIPO) based in Harare, Zimbabwe is empowered by the Harare Protocol on Patents and Industrial Designs to grant patents and to register utility models and industrial designs on behalf of contracting states. Applications for the grant of patents may be filed either directly with the ARIPO office or with the industrial property office of a contracting state. The application is subject to payment of the prescribed fees.
An applicant may be represented by an attorney, agent or legal practitioner who has the right to represent applicants before the industrial property office of any Contracting State.
Where an application is filed directly with the ARIPO Office but the applicant’s ordinary residence or principal place of business is not situated in the host country of the Office; or an application is filed with the industrial property office of a Contracting State by an applicant whose ordinary residence or principal place of business is not situate in a Contracting State, the applicant should be represented by an agent.
Upon receipt of an application by a contracting state, the industrial property office must, within a period of one month after the filing of the application, transmit the application to the ARIPO office.
The following information and documents are required:
- full particulars of the applicant
- power of attorney (prescribed form; simply signed)
- specification (including claims, drawings and abstract), in English
- indication of the contracting states to be designed
- assignment document (if the applicant is not the inventor)
- Certified copy of the priority document (if priority is claimed).
All documents must be in English. However, it is possible to obtain a filing date in ARIPO with a specification, claims and drawings in a foreign language provided the English translation is filed without delay.
A patent granted by virtue of the Protocol on Patent and Industrial Designs within the Framework of African Region Industrial Property Organization (the Harare Protocol), 1982) in respect of which the United Republic of Tanzania is a designated state, have the same effect in Tanzania and Zanzibar as if a patent was granted under the local patent legislation. If the local Patent Office communicates to ARIPO office indicating its objection to grant of patent, the grant by ARIPO has no effect in the United Republic of Tanzania until a decision is made in accordance with the provisions of the Harare Protocol.
What is the duration under which patent protection operates?
In Tanzania, specifically under S. 38(1) of The Act, a patent is protected for 10 years from the date of grant. Furthermore, under S. 38(2),the owner or licensee of the patent may request for an extension of the term of the patent for another 5 years provided that the request have been made not more that twelve months and not less than one month before the expiration of the patent.
The ARIPO Protocol provides that the duration of a patent in each member country will be 20 years (as required by WTO/TRIPS). However, the national legislation in some ARIPO member countries has not been amended to give effect to this provision, and thus in countries like Tanzania where the national law provides for the duration to be for a different term then the position becomes confusing. Hence the position in Tanzania, being a dualist state (that presupposes an international law need to be incorporated in the domestic law for the international law to be effective) the law of the state prevails until the incorporation of the ARIPO position is complete.
Patent infringement and Remedies
As per S. 65 of the Act, a person infringes a patent by making, using, offering to sell, selling or importing any patented invention without the owner’s authority during the term of the patent.
A person aggrieved by infringement of patent may institute a suit at the High Court as stipulated by Section 66 of the Act. The Court is mandated to grant the following relief for infringement if infringement is proven as per S. 66 of the Act:
- An injunction to prevent infringement or to prohibit continuation
- Damages and any other remedies.
Breakthrough Attorneys offers a competitive intellectual property team studded with experienced lawyers in patents registration, ownership rights, infringement, prosecution and defense of patented rights and attached matters.
This publication has been prepared for general guidance on matters of interest only, and does not constitute professional advice. You should not act upon the information contained in this publication without obtaining specific professional advice. No representation or warranty (express or implied) is given as to the accuracy or completeness of the information contained in this publication, and, to the extent permitted by law, Breakthrough Attorneys, its members, employees and agents do not accept or assume any liability, responsibility or duty of care for any consequences of you or anyone else acting, or refraining to act, in reliance on the information contained in this publication or for any decision based on it.