Patent Cancellation & Infringement

In Tanzania, any interested person, may, in proceedings instituted by him against the owner of a patent or in proceedings instituted against him by the said owner, request the court to invalidate the patent. The court can invalidate the patent on any of the following grounds– (a) that the claimed invention is not patentable; (b) that the claimed invention is excluded from protection; (c) that the description and the claims does not comply with the requirements prescribed by law; and (d) that the person to whom the patent was granted, had no right to the patent. 

The court may require the owner of the patent to submit to it for the purpose of examination publications and other documents showing the prior art which has been referred to either in connection with an application for a patent or other title of protection filed in Tanzania or at any other national or regional or international industrial property office, for the same or essentially the same invention, or in connection with any proceedings relating to the patent or other title of protection granted upon such application. Where, before or during the proceedings, it is alleged, or it appears to the court, that the right to the patent belongs to a person who is not a party to the proceedings, notice will be send to the owner who will be entitled to join the proceedings. 

Any invalidated patent, or claim or part of a claim will be regarded as null and void from the date of the grant of the patent. As soon as the decision of the court is no longer subject to appeal, the court will inform the Patent Office and register it in the patent register the invalidation order and publish it as soon as possible. 

According to part XV of the Tanzanian Patents Act, unless otherwise provided by the law, the following acts if performed by a person other than the owner of the patent and without the authorisation of the owner of the patent, in relation to a product or a process falling within the scope of a validly granted patent, constitutes an infringement of the patent: (a) when the patent has been granted in respect of a product– (i) making, importing, offering for sale, selling and using the product; (ii) stocking such product for the purposes of offering for sale, selling or using; or (b) when the patent has been granted in respect of a process– (i) using the process; or (ii) doing any of the acts referred to in paragraph (a) of this section, in respect of a product obtained directly by means of the process. 

The scope of the protection under the patent is determined by the terms of the claims although the description and the drawing included in the patent may be used to interpret the claims. 

On the request of the owner of the patent, the court can grant the following relief– (a) an injunction to prevent infringement where infringement is imminent, or to prohibit the continuation of the infringement, once infringement has started;(b) damages; and (c) any other remedy provided for in contract or law of torts. 

In addition, there are penal sanctions for intentional infringement of a patent. Unless otherwise provided by the patent legislation, any person showing a legitimate interest may request the court to declare that the performance of any specific act does not infringe the patent and the owner of the patent and any licensee under the patent will have the right to be defendant in the proceedings. No declaration of non-infringement can be made - (a) if the acts to which the request relates are already the subject of infringement proceedings; or (b) if the person making the request is unable to prove that he has previously demanded from the owner of the patent a written acknowledgement of the lawfulness of the acts referred to and that the owner of the patent has refused such demand or has failed to reply within a reasonable time. 

Any person threatened with infringement proceedings who can prove that the acts performed or to be performed by him do not constitute infringement or the patent may request the court to grant an injunction to prohibit such threats and to award damages for financial loss resulting from the threats. However, the mere notifications of the existence of a patent doest not constitute threat. 

Any exclusive licensee may request the owner of the patent to institute legal proceedings for a specified relief with request to any infringement specified by the licensee. The licensee may, if the owner of the patent refuses or fails to institute the said proceedings within three months from the request, after giving notice to the owner of the patent, institute such proceedings in his own name; the owner of the patent may join in the proceedings and the licensee may also join the owner in the proceedings. Even before the end of the three month period, the court may, on the request of the licensee, grant an appropriate injunction to prevent infringement or to prohibit its continuation, where the licensee shows that immediate action is necessary to avoid substantial damage. 

The rights under the patent shall extend only to acts done for industrial or commercial purposes and in particular not to acts done for scientific research. The rights under the patent do not extend to acts in respect of articles which have been put on the market in the United Republic of Tanzania by the owner of the patent or with his express consent. The rights under the patent do not extend to the use of articles on aircraft, land vehicles or vessels of other countries which temporarily or accidentally enter the United Republic of Tanzania.

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6th Floor, Nyerere Pension Tower, Bibi Titi Street/Morogoro Road, P.O. Box 78934, Dar es Salaam, Tanzania Email: info@lawcastles.co.tz - Phone: +255 22 2124127 - Fax: +255 22 2124128